1159
Nominet UK Dispute Resolution Service
DRS 01159
Gluedots.co.uk
Decision of Independent Expert
1. PARTIES:
Complainant: Glue Dots International LLC
Country: USA
Complainant’s Authorised Representative: Mr Daniel E. Kattman
Reinhart Boerner Van Deuren s.c.
Respondent: Fantas-Tak Limited
Country: United Kingdom
Respondent’s Authorised Representative: None
2. DOMAIN NAME:
Gluedots.co.uk (“the Domain Name”)
3. PROCEDURAL BACKGROUND:
3.1 The Complaint was received in full by Nominet on 12th August 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 15th August 2003. A Response was received on 11th September 2003 and forwarded to the Complainant. A Reply was filed on 25th September 2003.
3.2 The dispute was not settled by Informal mediation and on 27th October 2003, the Complainant paid the fee to obtain the Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy (“the Policy”).
3.3 On 28th October, 2003, Nick Gardner, the undersigned (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an expert in this case and further confirmed 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. OUTSTANDING FORMAL/PROCEDURAL ISSUES (IF ANY):
None
.
5. THE FACTS:
5.1 It is convenient to say at this stage that there are serious disputes of fact as to what the relevant background at various dates may have been. Most of the factual background is dealt with under the parties respective contentions, below. The following matters seem undisputed.
5.2 The Complainant, Glue Dots International LLC, is the owner of United Kingdom trade mark registration 2234290 and United Kingdom trade mark application number 3028412 for the mark “GLUE DOTS” for use in connection with “dots and/or lines of extruded hot melt adhesives on a roll; for use in industry; and dots and/or lines of extruded hot melt adhesives on a roll for home or office use”.
5.3 The registered trademark is for the words “GLUE DOTS” combined with a device. The registered trademark was applied for on 30th May 2000.
5.4 The Respondent is a competitor of the Complainant and sells a range of similar products. Entering the URL www.gluedots.co.uk results in a re-direction to the Respondent’s www.superdots.co.uk website.
5.5 On March 5th 2000 the Respondent registered www.gluedots.co.uk.
6. THE PARTIES’ CONTENTIONS:
Complainant
6.1 The Complainant says it has been using its GLUE DOTS mark in the United States since 1996. It says it owns and operates websites located at www.gluedots.com, www.gluedots.net and www.gluedots.org. These were created in 1998, 1998 and 2000 respectively. It carries on business selling its new GLUE DOTS products which, as appears from the details referred to above, are a range of adhesives sold for business and home use.
6.2 In about February 2000 the Complainant says it announced publicly its intention to launch its products in Europe via what is described as a “press release” (see below).
6.3 The Complainant says the Domain Name is identical to the Complainant’s registered GLUE DOTS marks in which it has rights. It says the Domain Name has been registered primarily to unfairly disrupt the Complainant’s business by attempting to convince prospective customers that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. It says the Respondent is trading off the Complainant’s rights and attempting to increase sales of its products in this manner.
6.4 The Complainant says the Respondent has no rights to the GLUE DOTS mark and that the Respondent sells only a product called “Superdots”.
6.5 The Complainant also relies on a pending application it has for a Community Trade Mark although it is not clear to the Expert exactly what this application is in respect of.
6.6 In its Reply, the Complainant says that the material lodged by the Respondent as to the allegedly generic nature of the term “GLUE DOTS” (see below) in fact relates to examples of retailers selling the Complainant’s products.
6.7 It also says in its Reply that even though it concedes that its mark contains descriptive elements, the mark has acquired “secondary meaning” and substantial goodwill in both the United States and the United Kingdom.
6.8 The Complainant also says that the Respondent has not explained why it registered the domain name only after the Complainant began to sell its Glue Dots product in the UK and points out that the Respondent does not use the term glue dots elsewhere on its literature, product packaging or press releases.
Respondent
6.9 The Respondent denies that the Complainant has prior rights in the term “GLUE DOTS” in the United Kingdom and says that the term is generic. It says this term is used to describe any material in circular (“dot”) form which is used to stick one surface to another. It says it has been using the term “glue dots” as a generic term for many years. It does not admit that the Defendant’s evidence as to it announcing its launch in Europe in February 2000.
6.10 It says it has been using the name “gluedots.co.uk” for three years and six months without complaint from the Complainant and that no confusion has arisen. It points out that its use of the term pre-dates the Complainant’s UK trade mark application.
6.11 It says that the later CTM application relied upon by the Complainant, number 3028412, is currently being challenged by the Respondent.
6.12 The Respondent has filed details of material its Trade Mark Agents have lodged with OHIM opposing the Complainant’s application for a trademark. This material comprises a body of documentation which, it is said, evidences the proposition that “GLUE DOTS” is a generic term. A large body of such material is filed.
6.13 It says the Complainant originally began selling its glue dots in the UK under the name “Hot Dots” and only later used the “Glue Dots” name.
6.14 It indicates that one mark it has tried to register is “STICKY DOTS” but this was rejected by the Trade Marks Registry which confirms its view that the term “GLUE DOTS” is unregisterable and generic.
6.15 It says that that if the Domain Name is accessed, it is clear that the website accessed is that of the Respondent and no confusion could result.
7. DISCUSSION AND FINDINGS:
General
7.1 To succeed in its Complaint the Complainant must prove to the Expert on the balance of probabilities:
(1) that it has Rights in respect of a mark identical or similar to the Domain Name, and
(2) that the Domain Name, in the hands of the Respondent, is an Abusive Registration (paragraph 2 a of the Policy).
Complainant’s Rights
7.2 Under paragraph 1 of the Policy, "Rights" are defined as including, but not limited to, rights enforceable under English law. The Policy goes on to say that a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of its business.
7.3 It is clear that as at the date of this Complaint, the Complainant has rights in at least the registered trademark 2234290 which, as indicated above, is for the words “GLUE DOTS” combined with a device.
7.4 The expert therefore concludes that as at the date of the Complaint the Complainant does have Rights (within the meaning of the Policy) in respect of a mark which is similar to the Domain Name.
Abusive Registration
7.5 Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either
(A) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights, or
(B) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
7.6 A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out at paragraph 3 a of the Policy. The list is as follows:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
(A) primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
(B) as a blocking registration against a name or mark in which the Complainant has Rights; or
(C) primarily for the purpose of unfairly disrupting the business of the Complainant;
(ii) Circumstances indicating 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;
(iii) In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
(iv) It is independently verified that the Respondent has given false contact details to [Nominet].
7.7 It is clear that the concept of Abusive Registration requires identifying what the Complainant’s Rights were as at the date of the registration concerned.
7.8 At that date, the relevant UK registered trade mark had not been applied for.
7.9 Accordingly it is necessary to establish what rights the Complainant had by reason of its activities generally. As the Expert understands it the Complainant relies upon (i) the fact it was carrying on business in the United States and since at least 1998 had operated various websites, including the website “gluedots.com”; and (ii) the fact that it announced its European activities in February 2000.
7.10 The evidence about the Complainant’s announcement in Europe is unsatisfactory. It says in its Complaint that there was a press release to this effect which is referred to as Exhibit B to the Complaint. Exhibit B to the Complaint is in fact a newspaper cutting which clearly describes the proposed launch of the Complainant’s products in Europe. The cutting is, however, undated – someone has written on it in manuscript the notation “Feb 2000”.
7.11 No explanation is given of this annotation. The Respondent raised the point in its Response but the Complainant has not addressed it or offered further evidence on it in its Reply. The Expert therefore declines to find that the Complainant has established the date this announcement was made.
7.12 The question of the Complainant’s other activities is more difficult.
7.13 The ownership of the various other websites relied upon by the Complainant has been called into question by the Respondent. It points out that the WHOIS searches exhibited by the Complainant appear to show that gluedots.com belongs to an organisation called Gateway Distributors, whilst gluedots.net appears to belong to ATW Manufacturing Company as does gluedots.org. In its Reply the Complainant appears to confirm that these registrations were effected in the name of its distributor or former distributor, although says that in the case of the “gluedots.com” site it owns and controls the site. This issue seems unsatisfactory, although were this the only point the Expert would take the view that on the balance of probabilities the Complainant establishes these sites do reflect its activities at the dates alleged.
7.14 However and more generally the key issue in dispute is whether the term “glue dots” is generic. Self evidently such a term in respect of “dots…of adhesive…” (to quote from the Registered Trade Mark description) is at least to some degree descriptive of the products concerned. Those who choose to trade under terms that are to some degree descriptive have the advantage that their trading name describes their products. They have the disadvantage that it may be that much harder to prevent others using the same or similar terms.
7.15 The expert concludes that the term “GLUE DOTS” is at least to some degree generic. This much appears to be accepted by the Complainant in its Reply. The Complainant goes on to say that the term has, however, as a result of use, acquired secondary meaning and that such secondary meaning can be relied upon to characterise the Respondent’s registration of the Domain Name as having been abusive.
7.16 In order to determine whether that contention is correct the Expert is faced with a mass of conflicting evidence as to whether the term “glue dots” is or is not entirely generic, or whether it has acquired secondary meaning, who has or has not been using that term and in what context, and disputes as to whether particular uses relied upon do or do not refer to the Complainant’s products.
7.17 Disentangling this type of evidence is notoriously difficult even in large scale litigation. Trying to disentangle it in the context of the Policy and this dispute is impossible.
7.18 In particular the Expert takes the view that this Policy, insofar as it has the potential to result in the compulsory transfer of a domain name from one party to another, should only be applied in clear cases. Where, as here, there are significant conflicts of fact and evidence in relation to a domain name which may (if the Respondent’s contentions are correct) be generic, the Policy should be exercised with caution. Of course, if the Complainant is correct, the Domain Name has acquired secondary meaning and is not generic and the Respondent has been attempting to trade off the Complainant’s reputation by adopting the Domain Name. That is a matter the Complainant will have to pursue elsewhere – it cannot be resolved within the framework of the Policy.
7.19 Overall therefore the Expert concludes that he cannot resolve the conflict in evidence between the parties as to the extent of the Rights enjoyed by the Complainant at the date of registration of the Domain Name and whether those Rights render the registration of the Domain Name Abusive
7.20 This conclusion should not be interpreted as any finding as to whether or not the Complainant or the Respondent have relevant rights under the law as to registered trade marks and/or passing-off in the United Kingdom and, if so, whether such rights have been infringed. Those matters are not for this Policy, but would need to be resolved before the courts.
7.21 Accordingly the Expert declines to make any finding that the registration is Abusive. No action is needed to implement the decision.
Nick Gardner
17th November 2003