813
NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 813
Turner Engineering –v- Europower UK Limited
Decision of Independent Expert
1. Parties
Complainant: Turner Engineering
Country: GB
Respondent: Europower UK Limited
Country: GB
2. Domain Name
turnerengineering.co.uk (“Domain Name”)
3. Procedural Background:
The Complaint was lodged with Nominet on 22 January 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 29 January 2003 and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent filed a Response, which was received on 30 January 2003, which was forwarded to the Complainant on the same day. It was not possible to resolve the Complaint through Mediation. Nominet so informed the parties and on 19 February 2003 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”).
On 19 February 2003, Cerryg Jones, 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. He also 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:
There are no outstanding or procedural issues.
5. The Facts
The Complainant specialises in re-manufacturing Land Rover engines and retailing replacement engine parts. It is the current registrant of the domain name turner-engineering.co.uk, which is linked to a website that the Complainant uses to promote its business. The Complainant claims to have traded under the name “Turner Engineering” for 23 years. The Complainant promotes its business under this name on its website. The Complainant is also a member of the Retail Motor Industry Federation.
A WHOIS search shows that on 25 October 2000 the Respondent registered the Domain Name.
The Respondent incorporated on 17 July 2000. It also specialises in re-manufacturing Land Rover engines. The Respondent operates a website at the URL http://www.europoweruk.co.uk. The Domain Name was linked to this URL until 15 January 2003. On that date, Sapphire Technologies Limited, who hosted the site, suspended the link on its webserver, after being informed of the Complainant’s allegations by the Retail Motor Industry Federation, acting on behalf of the Complainant.
6. The Parties’ Contentions
Complainant
The Complainant asserts that the Domain Name is identical or similar to a name in which it has rights. The Complainant alleges that the Domain Name is an Abusive Registration because the Respondent’s reason for registering the Domain Name and linking this to its own site at www.europoweruk.co.uk could only be to pass of its business as linked or authorised by the Complainant.
The Retail Motor Industry Federation wrote to the Respondent on 7 January 2003 on behalf of the Complainant, alleging passing off and requesting a series of undertakings. The Respondent does not appear to have replied. This correspondence is attached to the Complaint. The Complainant has also adduced evidence in the form of an email sent to the Complainant from Paul Crook and a record of telephone bill itemisation.
According to Mr Crook, he was considering buying a reconditioned engine and had been given the Complainant’s telephone number by a friend as the Complainant was “…well known as the Rolls Royce of engine manufacturers”. Mr Cook says he contacted the Complainant just before Christmas and states that he was told to call again in January as the office was about to close for the Christmas break. Mr Cook lost the Complainant’s telephone number. He therefore typed the Domain Name into his browser, which directed him to the Respondent’s website.
Mr Crook says he then called the number given on the Respondent’s website at 12.47 on 3 January 2003. Mr Crook alleges that during this call he mentioned that he had spoken to someone prior to Christmas. Mr Crook claims that he was given a quote by the Respondent of £750 for supplying a reconditioned engine and told that he would need to organise a shipping pallet to Scotland.
When Mr Crook returned to his office he recalled that in his conversation with the Complainant just before Christmas, he had been advised that the Complainant was based in Surrey. He therefore searched the internet for Turner Engineering based in Surrey which directed Mr Crook to the Complainant’s site. Mr Crook called the number on this website to ask whether it had another branch in Scotland. He says “…the rest is, thankfully, history.”
The Respondent
The Respondent says that the Domain Name is not being used and therefore causes “...no harm to any business or presents no threat to anyone’s business”. The Respondent goes on to say that there are other businesses who trade under the Complainant’s name “…and may be willing to purchase the domain name from us which I am currently considering”. The Respondent denies that Turner Engineering has any rights in this name because it has no “legally registered trade mark” and concludes that the Complainant is “desperately trying to obtain this name for free”.
7. Discussion and Findings:
General
Paragraph 2 of the Policy requires that for the Complainant to succeed it has to prove to the Expert on the balance of probabilities, that it has rights in respect of a name or mark identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant’s Rights
The Complainant in this case has asserted that is the proprietor of unregistered trade mark rights in the name “Turner Engineering” which is distinctive of the Complainant in the area of re-manufacture of Land Rover engines. The evidence supports this; the Complainant is known to the Retail Motor Industry Federation by this name. The Complainant’s website uses this name as a business identifier. The Complainant has also submitted business stationery, which substantiates the Complainant’s use of this name as a common law mark.
In the Expert’s view, the Complainant has rights in respect of a name or mark, which is identical to the Domain Name.
Abusive Registration
The Complainant also has to show that the Domain Name is an 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 acquisition took place, took unfair advantage 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."
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in paragraph 3a of the Policy. However, these are only examples of conduct that may be evidence that a Domain Name is an Abusive Registration.
It is not asserted that the Respondent has given false contact details, or has registered the Domain Name as a blocking registration, or is engaged in a pattern of abusive registrations. Accordingly, the only potentially relevant factors are contained in subparagraphs 3 a i, A and C and 3 ii that is:
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;
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.
The Respondent in its Response admits that it is “considering” selling the Domain Name to other businesses which trade under the Turner Engineering name. On the evidence it is difficult to determine whether the Respondent’s primary purpose in registering the Domain Name has been to sell, rent or otherwise transfer the Domain Name to the Complainant or a competitor of the Complainant. However, the Expert does not need to reach a view on this because there is sufficient evidence of an Abusive Registration under 3. a. i. C and 3.a. ii for the following reasons:
1 The Respondent’s business appears to have no connection whatsoever with the name “Turner Engineering”.
2 The Respondent linked the Domain Name to its own URL.
3 The evidence of Mr Crook is strong evidence that the primary purpose in registering the Domain Name was to unfairly disrupt the Complainant’s business. The fact that the link has been suspended merely operates as an illegitimate exploitative threat hanging over the head of the Complainant.
4 Mr Crook’s evidence is also sufficient evidence to prove that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is connected with the Complainant. This is hardly surprising given that the Complainant’s business is identical to the Respondent’s. The fact that the Respondent linked the Domain Name to its own website prior to notification by the Complainant of its concerns does not make the Respondent’s offering of goods and services genuine (being one of the possible grounds for establishing in a Response that the Domain Name is not an abusive registration, under 4 a i A of the Policy). The use of a Domain Name cannot be genuine if it is being used to unfairly disrupt a Complainant’s business, or being used to confuse internet users into believing there is a connection between the Complainant and the Respondent.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.
8. Decision
In view 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, turnerengineering.co.uk, be transferred to the Complainant.
Cerryg Jones
11 March 2003