800
Nominet UK Dispute Resolution Service
DRS 00800
Konica UK Limited – v – ic
Decision of Independent Expert
1. Parties:
Complainant: Konica UK Limited
Country United Kingdom
Respondent: ic
Country United Kingdom
2. Domain Name
konicaminolta.co.uk
3. Procedural Background
The Complaint was lodged with Nominet on 15th January, 2003. Nominet validated the Complaint and notified the Respondent of the Complaint by letter dated 20th January, 2003, sent by post and email informing the Respondent that it had 15 days within which to lodge a response. The Respondent lodged a response on 11th February within the required deadline. A copy of the reply was forwarded to the Complainant who lodged a response to the Respondent’s reply on 14th February 2003. On 17th February, 2003 Nominet wrote to the Respondent providing a copy of the response to the Respondent’s reply lodged by the Complainant and confirming that the dispute would proceed to Informal Mediation. A similar confirmation was also issued to the Complainant on the same day. Informal mediation failed to provide a resolution of the dispute and on 7th March, 2003 Nominet informed the Complainant that it had until 21st March, 2003 to formally request (and pay the appropriate fee for) an expert decision founded on the Complaint. On 12th March, 2003 the Complainant wrote to Nominet confirming its request for an expert decision and paid the appropriate fee pursuant to the Nominet UK Dispute Resolution Service Procedure (the “Procedure”).
On 16th March, 2003 Tom Thomas the undersigned (the “Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as 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:
The Expert finds that there are no outstanding formal or procedural issues which require consideration and this being the case the Expert will now proceed with a decision on the Complaint.
5. The Facts:
The Complainant, a limited company registered in England, is a wholly owned subsidiary of Konica Corporation of Tokyo, Japan a well known manufacturer of various classes of goods including photographic equipment and materials, copiers and other business machines, chemicals and medical apparatus. Konica Corporation is the proprietor of some 20 trade marks registered in the United Kingdom comprising of or including the word “Konica”. The Complainant sells Konica branded goods and services in the United Kingdom. On 7th January 2003 Konica Corporation and Minolta Co., Limited announced their intention to merge their activities under the company name Konica Minolta Holdings, Inc and that the main product brand name for the merged company would be “Konica Minolta”.
The Domain Name was registered for the Respondent on 7th January, 2003, the same day as the announcement of the merger between Konica Corporation and Minolta Co., Limited. It currently resolves to a web site of the Domain Name registrant EasySpace Limited. No other use has been made of the Domain Name.
On 15th January 2003, shortly after the Domain Name was registered, the Complainant filed the Complaint in accordance with the Nominet Dispute Resolution Service Procedure.
6. The Parties’ Contentions:
Complainant:
The Complainant’s contentions are as follows:
1. The Complainant has established rights in the name “Konica”, firstly, as a wholly owned subsidiary of Konica Corporation, it has the benefit of it’s parent company’s various trade mark registrations in the United Kingdom and secondly by virtue of its own business operations in the United Kingdom it has acquired common law rights arising out of usage of and consequent goodwill in the name “Konica”.
2. The Domain Name comprises a combination of names “Konica” and “Minolta” two well known brands. As the Complainant has rights in the “Konica” name it is entitled to raise its Complaint in respect of the Domain Name.
3. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent registered the Domain Name on the same day that the merger between Konica Corporation and Minolta Co., Limited and the new Konica Minolta brand was announced.
4. The Respondent’s registration of the Domain Name is an abusive registration in accordance with Paragraph 3(a)(i) B in that the Respondent has registered the Domain Name “as a blocking registration”.
5. The Respondent’s registration of the Domain Name is an abusive registration in accordance with Paragraph 3(a)(i) C of the Policy in that the Respondent has registered the Domain Name “primarily for the purpose of unfairly disrupting the business of the Complainant”.
Respondent:
The Respondent reply to the Complaint is as follows:-
1. The Respondent conceived the name Konicaminolta on 16th May 2002 before the merger between Konica Corporation and Minolta Co., Limited and the new Konica Minolta brand was announced.
2. The name Konicaminolta means “Wishes of Comedy” in ancient Geez and was conceived by the Respondent as the title of his or her art collection.
3. The respondent owns the copyright in the name Konicaminolta.
Complainant
The Complainant responded to the Respondents reply as follows:-
1. The reasons given by the Respondent for registering the Domain Name as set out in its reply are frivolous and do not constitute a legitimate justification for registration.
2. It is not possible to copyright a name as the Respondent asserts
3. The fact that the registration of the Domain Name took place on the date of the Konica / Minolta merger was more than mere coincidence.
7. Discussion and Findings:
General
In accordance with paragraph 2 of the Nominet UK Dispute Resolution Policy (the “Policy”) the Respondent must submit to proceedings under the Dispute Resolution Service if, in respect of a domain name, the Complainant satisfies the Expert on the balance of probabilities that:-
“(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(ii) the Domain Name, in the hands of the Respondent is an Abusive Registration.”
Definitions of “Rights” and “Abusive Registration” are provided in paragraph 1 of the Policy.
Complainant’s Rights
The Complainant is a wholly owned subsidiary of Konica Corporation, the proprietor of a number of registered trade marks comprising of the word “Konica”. The Complainant was incorporated in October 1984 and has operated as Konica UK Limited since February 1985. The Complainant trades in the United Kingdom under the “Konica” name. The Complainant has no rights in the name “Minolta”. The Respondent, in its reply did not dispute the validity of the Complainant’s Rights in this dispute.
In the Policy “Rights” are said to include but are not limited to “rights enforceable under English law”. In relation to the various registered trade marks comprising the “Konica” name it is clear to the Expert that the rights constituted by the trade marks and the ability to enforce those rights in the event of any infringement vest with the proprietor Konica Corporation and not the Complainant. Nevertheless, (and whilst it could be argued that Konica Corporation holds the rights in the “Konica” for the Konica group of companies as a whole and that each company forming part of that group including the Complainant has rights in the “Konica” name) the Expert is satisfied that by virtue of its longstanding trading history in the United Kingdom under the “Konica” name the Complainant has acquired enforceable rights in that name in its own right.
The Domain Name consists of a combination of two well known and distinctive trading names where the Complainant has rights in respect of one but not the other. Although the combination of additional words to a name in respect of which rights are held could dilute or diminish a complainant’s rights in the relevant domain name, in view of the distinctiveness of both trading names and the fact that the “Konica” name prefixes “Minolta” in the Domain Name the combination of names in this case fact does not in the Expert’s opinion materially affect the Complainant’s right to pursue this Complaint
The Expert is satisfied the Complainant’s proprietary interest in the “Konica” name, the distinctive nature of that name and the goodwill associated with the Konica brand constitute sufficient grounds to conclude that the Complainant has Rights in respect of a name which is similar to the Domain Name.
Abusive Registration
Paragraph 1 of the Policy defines “Abusive Registration” as:-
“A Domain Name which either:-
i was registered or otherwise acquired in a manner which at the time when the registration or a decision took place took unfair advantages of or was unfairly detrimental to the Complainant’s rights; or
ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights”
The Policy provides (at paragraph 3(a)) a non exhaustive list of a factors which may be evidence that a domain name is an Abusive Registration. Of these factors the Complainant asserts that paragraphs 3(a)(i)B and 3(a)(i) C are relevant to this case.
Paragraph 3(a)(i)B refers to:-
“Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:-
B as a blocking registration against a name or mark in which the Complainant has Rights;”
In this regard the only piece of evidence produced by the Complainant was the fact that the Domain Name was registered on the same date as the merger between Konica Corporation and Minolta Co., Limited and the new Konica Minolta brand was announced. The Expert agrees with the Complainant that the coincidence of the two events is highly suspicious however this alone does not in the Expert’s view fully substantiate the Complainant’s claim of a blocking registration.
Paragraph 3(a)(i) C refers to:-
“Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:-
C primarily for the purpose of unfairly disrupting the business of the Complainant”
Again the Complainant sought to rely on the coincidence of the Domain Name registration and the merger announcement to substantiate its claim under paragraph 3(a)(i) C. In particular the Complainant gave no other evidence to show the Respondent’s primary purpose in this respect. Whilst the Expert agrees that the circumstances surrounding the registration of the Domain Name are suspicious the Expert is unable to find that the Respondent’s primary purpose in registering the Domain Name was to disrupt the Complainant’s business.
Turning to the Respondent’s reply to the Complaint the Expert finds that none of the points made in the reply substantially affect the Expert’s findings. The Respondent has supplied no evidence to support its case and therefore the Expert is unable to attribute any significant weight or substance to that case.
As stated above the list of factors contained in paragraph 3(a) of the Policy is non-exhaustive and serves only to illustrate factors which may be evidence of an Abusive Registration. So are there any other factors that suggest an Abusive Registration in this case? The only factor which the Expert identifies as being of assistance to the Complainant (and indeed the only factor which the Complainant has unsuccessfully sought to rely on under paragraph 3(a) of the Policy) is that of the coincidence of the registration of the Domain Name on the same date as the merger between Konica Corporation and Minolta Co., Limited and the new Konica Minolta brand was announced.
The question for the Expert to consider therefore is whether this factor alone amount to evidence of the Respondent taking unfair advantage of the Complainant’s Rights notwithstanding that it falls outwith the list of factors under paragraph 3(a) of the Policy.
The Expert is of the opinion that the registration of the Domain Name on the same day as the merger and new joint brand were announced is more than simple coincidence. Each of the component names forming part of the Domain Name are highly distinctive and in the absence of any credible or plausible purpose for the Respondent’s actions in registering the Domain Name on that date the Expert is drawn to conclude that the registration took place as a result of the merger announcement. The Expert further concludes that at that time the Respondent had no legitimate right or purpose to justify registration of the Domain Name. In the opinion of the Expert it is also clear that following the merger announcement, amongst other domain names throughout the world incorporating the new business name, the merged business would wish to own and control the Domain Name. This being the case the Expert is of the opinion that the registration of the Domain Name by the Respondent took unfair advantage of the Complainant’s Rights.
8. Decision:
The Expert finds that on the balance of probabilities the Complainant has rights in a name which is similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration. The Expert therefore directs that the Complaint in relation to the Domain Name be allowed and the Domain Name transferred to the Complainant.
Tom Thomas
Date: 2 April 2003