848
Nominet UK Dispute Resolution Service
DRS 00848
Next Retail Limited -v- nextcard.co.uk
Decision of Independent Expert
1. Parties:
Complainant: Next Retail Limited
Country: GB
Respondent: nextcard.co.uk
Country: GB
2. Domain Name:
nextgifts.co.uk (“the Domain”)
3. Procedural Background:
A brief chronology is as follows:
7 February 2003: Complaint lodged with Nominet electronically
10 February 2003: Hardcopies received by Nominet
12 February 2003: Nominet forwarded complaint to Respondent
10 March 2003: No response received
20 March 2003: Complainant sent fee for expert decision
On 10 April 2003 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.
4. Outstanding Formal/Procedural Issues:
The Respondent has not submitted a response to the complaint to Nominet in time (or at all) in compliance with paragraph 5a of Nominet’s Dispute Resolution Service (“DRS”) Procedure (“the Procedure”).
I have seen the copy communications from Nominet to the Respondent and have no reason to doubt that the Respondent has been properly notified of the complaint in accordance with the Procedure. There is a copy of a cover letter from Nominet dated 12 February 2003 addressed to the Respondent at the whois address. There is also a copy cover email of the same date to the whois email address domains@fasthosts.co.uk (returned with permanent fatal error) and to postmaster@nextgifts.co.uk (returned with “connection timed out” error). These service methods accord with paragraph 2ai and ii of the Procedure. (The Nominet file also includes a copy letter to the Respondent at whois address and an email to domains@fasthosts.co.uk of 10 March 2003 giving notice of the lack of a response.)
Paragraph 15b of the Procedure states that “If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint.” There is no evidence of exceptional circumstances here.
The lack of a response does not entitle the Complainant to the equivalent of a default judgment. The Complainant must still prove its case to the required degree. I will evaluate the Complainant’s evidence on its own merits and draw reasonable inferences from it in accordance with paragraph 12b of Nominet’s DRS Policy (“the Policy): “The Expert shall determine the admissibility, relevance, materiality and weight of the evidence.”
Further, paragraph 15c of the Procedure provides that “If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by … the Expert, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.” I draw such inferences from the Respondent’s non-compliance as are specified below.
5. The Facts:
The Complainant
The Complainant is a wholly owned subsidiary of Next Group Plc, a FTSE 100 Company and household name.
The Respondent
The Respondent registered nextgifts.co.uk on 29 June 2000.
6. The Parties’ Contentions:
Complaint:
The complaint is relatively short and I reproduce it in full:
1. The disputed domain name is www.nextgifts.co.uk. This domain name is registered to nextcard.co.uk and the current status is detagged. Next Retail Limited has made a number of attempts to contact nextcard.co.uk which have all been undelivered. Nominet has been unable to provide postal contact details to Next to enable nextcard to be contacted direct.
2. Next Group Plc is a FTSE 100 Company and owner of the brand Next, a household name. Next Retail Limited is a wholly owned subsidiary of Next Group Plc. Next have rights in respect of the registered trade mark Next. Next was registered as a trademark in class 25 on 9th December 1985, registration number 1256099, and has been in constant use ever since. In fact the first store branded as Next was opened in February 1982 and Next Retail Limited has used the name since 1982 for all Next retail stores. In addition to the trademark Next, Next Interior, Next Directory, Next Originals, Next for Men, Next Basics, Next Nine Months, Next Athletic and Next Flowers are all registered trademarks in a number of trademark classes. The attached schedule demonstrates the various trademarks registered including registered numbers. These marks represent numerous products and product ranges which Next sell both in retail stores, via its mail order service Next Directory, which is published four times a year and via the websites www.next.co.uk and www.nextflowers.co.uk
3. The product ranges sold by Next include clothing for men, women and children, home wares, flowers and gifts including champagne and chocolates. Many of the items that Next sell are considered to be gifts and both the website and the Next Directory market these products as gifts which can be demonstrated from the attached pages showing extracts from the website and the most recent publication of the Next Directory. In addition Next sell gift vouchers and sales of gift vouchers for the financial year to 31st January 2003 totalled £91million. This confirms and establishes Next’s position as a retailer of gifts both by the products themselves and by the sale of gift vouchers.
4. The registration by nextcard.co.uk of the domain name nextgifts.co.uk is an abusive registration. Next is a major brand within the UK and is very well known to the extent that it is a household name. Any use of the brand Next within a domain name either alone or alongside another name such as gifts, suggests that the domain name is registered to, operated or authorised or otherwise connected with Next, which in this case it is not. Next is an established retailer of gifts and the use by nextcard.co.uk of the domain name nextgifts.co.uk is confusing and is detrimental to Next’s rights as owner of the Next trade mark. The prominence of the Next brand is such that any use of the name in connection with the sale of gift, flowers etc is confusing as it implies a link with the Next Brand Due to the fact that nextcard is not contactable, the registration nextgifts.co.uk has effectively become a blocking registration preventing Next from registering the name itself.
Response:
The Respondent has not filed a formal response.
7. Discussion and Findings:
General
To succeed in this Complaint the Complainant has to prove in accordance with paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the domain name nextgifts.co.uk and, second, that that domain name, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the Policy).
Complainant’s Rights
I have no doubt that the Complainant has rights in the name NEXT. It owns a trademark for the word NEXT in class 25 registered on 9 December 1985 (no. 1256099) and has extensive common law rights in that name.
The name NEXT is similar to the Domain. The domain suffixes can be disregarded. The descriptive term GIFTS does not significantly differentiate the Domain from the name NEXT.
The Complainant has rights has in a name which is similar to the Domain.
Abusive Registration
Is the Domain in the hands of the Respondent, 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 is an Abusive Registration is set out in paragraph 3a of the Policy. The Complainant does not specifically refer to paragraph 3a although it does allude to “confusion” and “blocking registration”.
The Complainant says that use of the prominent household brand NEXT within a domain alongside the word GIFTS suggests that nextgifts.co.uk is connected with the Complainant, an established retailer of gifts. This is said to be confusing and detrimental to the Complainant’s rights in the name.
Even if all of this is true – and there is no evidence of confusion or indeed use of the Domain – it does not of itself amount to an abusive registration. It may be passing off but that is not the same thing. Detriment is not enough. It must be unfair.
I do not think it necessary to consider paragraph 3a in detail. I believe that the core issue here is whether on the balance of probabilities the Respondent registered the Domain with the Complainant in mind and for a dishonest purpose, such as blocking the Complainant or disrupting its business or confusing its customers.
The nature of the Domain does not assist me. Unlike say “Nokia”, the word NEXT is in common usage. It is not exclusively associated with the Complainant. I do not infer from the fact of its use in a domain name in conjunction with the word GIFTS that the Respondent must have had the Complainant in mind when it registered the Domain.
The Complainant says that it is an established seller of gifts and it exhibits parts of its mail order brochure showing gifts for sale. The fact that the Complainant sells gifts and gift vouchers - amongst other things - does not of itself convince me that it has a reputation as a seller of gifts or that it is otherwise probable, rather than possible, that the Complainant was in the Respondent’s contemplation on registering the Domain.
The Complainant also exhibits a page from its website with some examples of gifts. In the lower left corner of the webpage, the word NEXT appears in capitals with the word GIFTS below in smaller capitals. I do regard this branding as a potentially significant factor but the Complainant does not assert, let alone provide evidence, that it pre-dated registration of the Domain on 29 June 2000. Nor has the Complainant established any degree of likelihood that the Respondent was aware of the “NEXT GIFTS” branding eg by providing information about its extent and reach, whether on the Complainant’s website or otherwise. So this evidence does not advance matters.
There is no evidence that the Domain has ever been used as a website. If there were, that might have provided clues as to the Respondent’s motives.
The Complainant says nothing about the Respondent or about the significance, if any, of the registration of the Domain in the name “nextcard.co.uk” or about the website at nextcard.co.uk or about the persons behind nextcard.co.uk or otherwise about the activities of such persons. Such information may or may not be available or may or may not be relevant but it is not my role to investigate such matters.
I draw no adverse inference from the Respondent’s failure to respond as I have no evidence that the Respondent has seen the complaint. Nor is it relevant that the Domain has been detagged.
The Complainant says that the registration has effectively become a blocking registration because the Respondent is uncontactable. I do not see how that can be so. It is the Respondent’s registration, not its elusiveness, which is blocking the Complainant. And 3a.i.B (the paragraph in 3a concerned with blocking) only arises if the Domain was registered for the purpose of blocking. The Respondent may be uncontactable for entirely genuine reasons which have nothing to do with its state of mind when registering the Domain. The position would be different if there were evidence (which there is not) that it supplied false contact details.
The Complainant has not done enough to satisfy me that on the balance of probabilities the Domain is an abusive registration.
8. Decision:
No action should be taken in respect of the Domain.
Adam Taylor
Date: 10 April 2003