1092
Nominet UK Dispute Resolution Service
DRS 1092
PPG Industries Ohio, Inc -v- Rejel Automotive Ltd
Decision of Independent Expert
1. Parties
Complainant: PPG Industries Ohio, Inc
Country: US
Respondent: Rejel Automotive Ltd
Country: UK
2. Domain Name
ombrello.co.uk (“the Domain Name”)
3. Procedural Background
The Complaint was lodged with Nominet on 4th July 2003. Nominet notified the Respondent of the validated Complaint on 9th July 2003. The Respondent provided a response within the required time period on 16th July 2003. The Complainant did not file a reply to the response. Informal mediation failed to find a resolution to the dispute. The Complainant paid Nominet the appropriate fee for a decision of an Expert, pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”), before the stated deadline of 22nd September 2003.
Steve Ormand, the undersigned, (“the Expert”) confirmed to Nominet on 15th September 2003, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Procedural Issues
There are no outstanding procedural issues.
5. The Facts
The Complainant is a company trading in the United States supplying chemicals and other products throughout the world. The Complainant sells OMBRELLO (a windscreen rain repellent) into Europe through a German distributor Autoserv.
The Complainant holds the registration of the trade mark “OMBRELLO” in the EC, dated 7th May 2003, under two classes: water-repellent chemical compositions for glass; and water-repellent coatings for glass. The registration was submitted in June 1998 but has been subject to an objection which was cleared in 2003. The Complainant also has a UK Trade Mark registration, dated 12 February 1996, for a “rain drops” graphic design in classes for chemical solutions for making surfaces water repellent.
The Respondent registered the Domain Name on 13th October 1999.
6. The Parties’ Contentions
Complainant
The substance of the Complaint is as follows:
1. The Domain Name is identical to the Complainant’s registered European Community Trademark “OMBRELLO”, a mark which the Complainant has continuously used in connection with water-repellent coatings products since at least June of 1998.
2. The Complainant, a well-known supplier of chemicals and other products throughout the world, sells OMBRELLO into Europe via an exclusive distributor Autoserv who in turn has permitted PMA to distribute OMBRELLO product in the U.K.
3. In September 1999, the Respondent entered into a verbal agreement with PMA to sell OMBRELLO product in the U.K. and Ireland. PMA provided promotional material to the Respondent. PMA knew that the Respondent was forming a website. The Respondent purchased 5,000 units of OMBRELLO product from PMA, subsequently returning 1,000 unsold units in 2000.
4. The Respondent registered the Domain Name in October 1999. Neither PMA, Autoserv nor the Complainant participated in the naming of the website. The Complainant did not give permission to the Respondent to use the Complainant’s mark as part of its Domain Name. The Respondent knew of the Complainant’s use of OMBRELLO in connection with the associated products prior to registration and design of the offending site. The Respondent was and is aware of the identity of the owner of the rights in OMBRELLO.
5. The Complainant has no record of any other purchases of OMBRELLO product by the Respondent from the Complainant or its authorized distributors or agents. The Complainant has asked the Respondent to identify the source of the OMBRELLO product that the Respondent claims they are presently selling on the website and for documentary evidence of sales of OMBRELLO product within the last two years. The Respondent has refused to produce the requested information.
6. The Respondent verbally represented that they purchased product from German BMW dealers. However, this product is labelled “AQUAPEL” by Complainant, not OMBRELLO, and it is intended for sale only by original equipment manufacturers, of which the Respondent is not one. The Complainant has no knowledge of the nature and extent of sales of AQUAPEL by the Respondent. This lack of control damages the Complainant’s AQUAPEL trademark, which is exacerbated by the Respondent’s promotion and alleged sale of AQUAPEL using a website identified by OMBRELLO. Even if the Respondent is somehow selling genuine OMBRELLO product over the website, the Complainant does not authorize these sales, nor is the Respondent authorized to operate a website using two of the Complainant’s registered trademarks.
7. Autoserv contacted the Respondent in August 2002 to investigate transfer of the Domain Name. The Respondent demanded £75,000 for transfer of ombrello.co.uk and ombrello.com. The Complainant has offered to reimburse the Respondent for the cost of the domain registration and also for designing the website in the first place.
8. The Complainant is no longer in any way affiliated with the Respondent, yet a web search on “ombrello” produces search results that direct the public to the Respondent’s website. This is likely to confuse the public into believing that the website is associated with or authorised by the Complainant and to misconceive the Respondent as a manufacturer or authorised distributor of goods bearing the mark. There is no acknowledgment on the website of the Complainant as the owner of the mark and the rain drops device, or as the rightful manufacturer of the OMBRELLO product.
9. The Respondent claims that they sell goods bearing the Complainant’s mark on their website. Even if there were a disclaimer on the website, the Domain Name would remain abusive since the Complainant has no control over the quality of the product, its distribution and associated service and marketing, and it represents a disruption to the Complainant’s business, reputation and goodwill. While the Respondent may argue that they made preparations to use the Domain Name in connection with a genuine offering of goods, the Respondent is no longer making any verifiable sales.
10. The Complainant is also informed that the Respondent has expanded their use of OMBRELLO to cover items such as glass cleaner, applicators, cloths and wiper fluid. The Complainant does not make or sell such products under the OMBRELLO name, and the Complainant has no knowledge of or control over the quality (or lack thereof) of these ancillary products for which the Respondent has misappropriated the Complainant’s mark. The Respondent is clearly trading on the goodwill of OMBRELLO and gaining an unfair advantage from its registration and use of the Domain Name. The Respondent also uses the Complainant’s registered design in connection with the website. This further indicates the Respondent’s intent to trade on the goodwill of the Complainant in an unfair manner.
11. The Respondent has never been commonly known by a name identical or similar to the Domain Name. The Respondent has not made legitimate non-commercial or fair use of the Domain Name, and the Domain Name is neither generic nor descriptive. For these reasons, the Complainant asserts that the Respondent cannot demonstrate that the Domain Name is not an abusive registration.
12. The Complainant quotes DRS Case 0341 (Zippo Manufacturing Company -v- Ronald Robinson) and contends that the facts of the present case are even more compelling. In DRS 0341 the expert, drawing on §3a(ii) of the Policy, found that even though the respondent may have intended to sell genuine Zippo goods from the website, consumers were likely to assume that the respondent was authorized by Zippo to operate the site which would result in the respondent deriving an unfair advantage from use of a domain name similar to Zippo’s mark. Thus, the expert decided that the domain name was an abusive registration and transferred the domain name to Zippo.
13. In summary, the Respondent’s registration and/or renewal of the Domain Name meets more than one of the tests for an “abusive registration”, and the Respondent has taken unfair advantage of the Complainant’s rights in the mark OMBRELLO:
a. The Respondent has renewed and is continuing to maintain the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to Complainant, for consideration well in excess of the Respondent’s out-of-pocket costs directly associated with acquiring or using the Domain Name (Policy §3(i)(A).
b. Due to the Respondent’s actions, the Complainant is blocked from registering the mark with Nominet. Thus, the Respondent has renewed and maintained the Domain Name as a blocking registration (Policy §3(i)(B)).
c. The Respondent has registered the Domain Name to disrupt the business of Complainant and Complainant’s authorized and exclusive distributors and agents (Policy §3(i)(C)).
d. The Respondent’s registration of the Domain Name and the maintenance of a site thereunder will confuse consumers into believing the site is registered to, operated or authorized by, or otherwise connected with the Complainant (Policy §3(ii)).
14. The Domain Name thus constitutes an abusive registration.
Respondent
The substance of the Respondent’s assertion that the Domain Name is not an abusive registration is as follows:
1. The Respondent was offered a verbal agreement to represent PMA (Autoserv agents) in the sale of Ombrello products in September 1999. This offer was accepted and the Respondent subsequently registered the domain names of ombrello.com and ombrello.co.uk in October 1999 with a view to creating a website to promote and sell the Ombrello products.
2. The launch of the website was carried out with the full knowledge of PMA and Autoserv who provided the Respondent with all the information, pictures and promotional material to use on the website, including the “raindrops” device which Respondent did not alter.
3. The Respondent has continued to promote Ombrello through the website resulting in sales within the terms of their agreement. Any enquiries outside of this agreement are always passed to PMA and the Respondent continues to honour the agreement.
4. In August 2002 the Respondent received a call from Autoserv asking if they were prepared to sell the Domain Name. The Respondent declined. Autoserv asked a hypothetical question: if the Respondent was prepared to sell what would be the price? The Respondent stated a price that equated to five years profit from the domain names, based on the three years 1999 - 2002.
5. At all times the Respondent has promoted the Ombrello brand with the total support of PMA. The Respondent has been using the website for the last three years in a bona fide manner with full knowledge and agreement of PMA, Autoserv and the Complainant.
7. Discussion and Findings
General
To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both legs of the test that:
1. it has rights (as defined in §1 of the Policy) in respect of a name or mark identical or similar to the Domain name; and
2. the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in §1 of the Policy).
Complainant’s Rights
The Complainant is the proprietor of registered trademark rights in the name or mark “OMBRELLO” and has used this mark in connection with water-repellent coatings for glass since June 1998. The Domain Name comprises the name or mark <ombrello> and the suffix <.co.uk>. The domain suffix is discounted as it is of no relevant significance and wholly generic.
The Expert finds that the Complainant has rights in respect of a name or mark that is identical to the Domain Name.
Abusive Registration
Except for the evidence of Trademark registrations, screen shots of the ombrello website, and copies of letters exchanged between the Complainant and Respondent, there is no other evidence offered by either party in support of their contentions. The Expert has concluded, therefore, that where the Respondent has not denied or offered alternatives to the Complainant’s contentions then those contentions are accepted by the Respondent. Equally, the Complainant has not replied to the Response and therefore the Expert concludes that the Complainant accepts those aspects of the Response that do not contest the Complainant’s contentions.
Formation of the Website
The Complainant states that although PMA knew the Respondent was forming a website, the Complainant, Autoserv and PMA did not participate in naming the site. The Respondent was provided with promotional materials by PMA. The Respondent states that he has operated the site with the full knowledge and agreement of the Complainant and received the trademark designs from PMA.
The Expert concludes that the Respondent would have quite reasonably assumed that PMA, in supplying the promotional materials and with its knowledge of the Respondent’s intention to create a website, was granting authority to the Respondent to use the materials to promote sales of the product on the website, and that PMA was holding itself out to have such authority.
The DRS does not exist to rule on Trademark infringement but on abusive registration as defined by the Policy. There is no evidence that the Respondent registered the Domain Name in any of the circumstances in §3a i A, B and C of the Policy to indicate abusive registration. The Respondent made demonstrable preparations to use the Domain Name in connection with a genuine offering of goods (§4a i A of the Policy) and the Expert concludes this was a genuine attempt to promote and sell the Complainant’s product.
Subsequent Use of the Website
The Appeal Panel in DRS 00248 (Seiko UK Ltd -v- Designer Time/Wanderweb) concluded that the use of the word “primarily” in §3a i C of the Policy is not the same as “only”. Thus, although the Respondent may have started out with the best of intentions, if the effect of their actions is to give rise to confusion and to disrupt the Complainant’s business then they have fallen foul of this paragraph of the Policy.
The subsequent use of the website is, in the Expert’s view, the crux of this case. While the Complainant cannot show evidence that the Respondent is selling other products and trading on the Complainant’s mark and goodwill, the Respondent does not deny this claim nor explain satisfactorily from where they are obtaining the OMBRELLO product they claim to supply. Examination of the website reveals that the Respondent does not acknowledge the Complainant in any way and implies that they are either the owner of the OMBRELLO mark or an authorised distributor of OMBRELLO products.
The Expert also considers that despite the Respondent’s assertions that they are operating within the terms of the agreement with PMA, they are using the website in a way that is unfairly disrupting the business of the Complainant in contravention of §3a i C of the Policy.
The website represents, or is likely to be perceived as representing, that it is the OMBRELLO site or the official UK OMBRELLO distributor and therefore takes unfair advantage and is unfairly detrimental to the Complainant in contravention of §3a ii of the Policy.
Accordingly, the Expert finds that on the balance of probabilities the Domain Name is an Abusive Registration within the definition of that term in §1 of the Policy on the basis that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
8. Decision
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, ombrello.co.uk, be transferred to the Complainant.
Steve Ormand
Date: 3 October 2003