898
Nominet UK Dispute Resolution Service
DRS 00898
Pickfords Limited v Black Cat
Decision of Independent Expert
1. Parties
Complainant: Pickfords Limited
Country: GB
Respondent: Black Cat
Country: GB
2. Domain Name
pickford-removals.co.uk
(“the domain name”)
3. Procedural Background
Nominet received the complaint on 5 March 2003 and checked that it complied with the Dispute Resolution Service Policy (“the Policy”) and the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”). Nominet notified the Respondent of the Complaint on 11 March and informed the Respondent that it had 15 days within which to lodge a response. The response was received by Nominet on 28 March. The Complainant filed a reply, which was received by Nominet on 9 April. Informal mediation followed. When that did not resolve the dispute, Nominet notified the parties that an Expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 13 May.
On 18 May 2003 I, Mark de Brunner, agreed to serve as an Expert under Nominet’s Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.
4. Outstanding Formal/Procedural Issues
There are no formal or procedural issues outstanding.
5. The Facts
From the little evidence before me, I accept the following as facts.
Pickfords Limited is a removals company, arranging the collection, transportation, storage and delivery of goods. It trades in many countries. Turnover during 2002 for the UK alone amounted to around £72m. The Complainant has used the trademark PICKFORDS in connection with moving services at least since the mid 1600s, and it has registered the mark in many countries. It has also registered around 30 domain names including the words PICKFORDS and PICKFORD.
The Respondent registered the domain name on 18 January 2001. The company Pickford Removals Limited was incorporated on 12 March 2003.
The domain name pickfordsremovals.com was transferred from the Respondent to the Complainant, following a decision by the WIPO Arbitration and Mediation Center on 22 June 2001.
6. The Parties’ Contentions
The Complainant’s contentions can be summarised as follows.
(i) It has rights in the name PICKFORD.
(ii) The Respondent registered the domain name to draw upon the goodwill associated with the Complainant’s name and marks or to prevent the Complainant from registering the name for its own use.
(iii) The Respondent has engaged in a pattern of abusive registrations.
Respondent
The Respondent says that its registration of the domain name is justified for the following reasons.
(i) The domain name contains PICKFORD but the Complainant’s rights cover only the name PICKFORDS.
(ii) The domain name will be used legitimately for a removals company operated from Spain.
(iii) The domain name has not been ‘offered for sale, cyber squatted, used in bad faith or passively held’.
Complainant’s reply
The Complainant further says that
(i) Pickford Removals Limited was incorporated by the Respondent only after the complaint was lodged.
(ii) the incorporation does not of itself confer any rights in the domain name.
7. Discussion and Findings
To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
(i) it 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.
Complainant’s Rights
The Complainant has been trading as Pickfords for many years. It has clearly built up a measure of goodwill in the name PICKFORDS, it evidently has registered rights in that name and I infer that it will have unregistered rights too. It claims those rights cover the name PICKFORD, and by implication that they are reflected in the domain names it has registered which include the name PICKFORD. There is little evidence before me on the point, but as
- PICKFORDS is arguably simply the possessive form of PICKFORD (minus the apostrophe that would be appropriate in ordinary writing)
- the threshold to establish rights, for the purposes of the Policy, is a low one
I accept that the Complainant has rights in the name PICKFORD too. The second word in the domain name, REMOVALS, is generic, simply describing the kind of business to which the word PICKFORD relates. Allowing for that, the name PICKFORD is similar to the domain name. The Complainant therefore has rights in respect of a name which is similar to the domain name.
Abusive Registration
The Dispute Resolution Service rules define an 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.
The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. The only factors that, it might be argued, could apply here are
(i) circumstances indicating that the Respondent registered the domain name
(a) as a blocking registration against a name…in which the Complainant has rights; or
(b) 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) where, 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.
These are essentially the claims of the Complainant and I can take each in turn.
Blocking registration
I regard ‘as’ a blocking registration as meaning ‘for the purposes of’ a blocking registration – in other words that this factor turns on the question of intention. The Respondent says that this was a prudent ‘advance’ purchase. But I can set little store by the mere fact of the subsequent setting up of Pickford Removals Limited. The Respondent also asserts that the domain name ‘has not been cyber squatted’ – but that rather begs the question. Equally, though, there is no direct evidence of the Respondent’s intention at registration.
Unfairly to disrupt the Complainant’s business
In the absence of any hard evidence of motive, I must draw conclusions from the material before me. On that basis, it is difficult to conceive of any reason why the Respondent would choose the domain name except to draw on the goodwill associated with the Complainant and its business. Such a drawing of goodwill would, manifestly, be unfair. As a factor, this seems to me to weigh heavily.
Confusing people
There is no evidence that the domain name has been used for any purpose yet, so actual confusion is not an issue.
Pattern of abusive registrations
The domain name pickfordsremovals.com was transferred from the Respondent to the Complainant, following a decision by the WIPO Arbitration and Mediation Center on 22 June 2001. As a factor in a non-exhaustive list, the Policy is clear that this is not to be weighed in isolation, and in any event I am unconvinced that what that says about the character of the registration, in that one case, could amount to much by way of evidence of a pattern.
Other arguments by the Complainant
The Complainant says that Pickford Removals Limited was incorporated by the Respondent only after the complaint was lodged, and that the incorporation does not of itself confer any rights in the domain name. I agree that the timing of the incorporation is significant, and that the fact of incorporation, in these circumstances, does not assist the Respondent in defending the character of the registration.
Respondent’s case
The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. These are where
(i) before being informed of the Complainant’s dispute, the Respondent has
(a) used the domain name in connection with a genuine offering of goods or services
(b) been commonly known by the name…which is identical or similar to the domain name
(c) made legitimate non-commercial or fair use of the domain name
or where
(ii) the domain name is generic or descriptive and the Respondent is making fair use of it.
None of these factors applies here. The Respondent says it intends to use the domain name in connection with an offering of services - but it has not done so yet, and indeed only incorporated the company that is to use the name after the complaint was lodged. The Respondent is not commonly known by the name PICKFORD and its proposed use of the domain name is not non-commercial. I do not regard the domain name as generic or descriptive in the terms implied by the Policy, and of course whether the proposed use is ‘fair’ begs the question of the character of the registration.
Other arguments by the Respondent
The Respondent asserts that the domain name has not been ‘offered for sale…used in bad faith or passively held’. I accept that there has been no offer to sell the domain name and no actual use of it – so there can have been no use in bad faith. But the domain name has so far been ‘passively held’ – perhaps pending the rather belated incorporation of Pickford Removals Limited. That does not appear to me to assist the Respondent.
Conclusion on the nature of the registration
There has been no use of the domain name, so the character of the registration appears to me to turn on the Respondent’s motive and intention in registering. There is no direct evidence of either, so I am left to infer what I can from the facts before me. It is not clear to me that a single adverse decision on another registration helps much in settling the issue here. But it is difficult to conceive of any reason why the Respondent would choose the domain name except to draw on the goodwill associated with the Complainant and its business.
Neither list of factors in the Policy is exhaustive, and the underlying question remains whether the domain name was registered or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights. I think that even starting afresh with that question, the facts are straightforward and the conclusion is plain. The Respondent, without any evident rights to the name PICKFORD, has registered a domain name that is similar to the name in which the Complainant has clear rights. It proposes using that domain name to trade in the same business as the Complainant. I can only infer that its intention is to take advantage of the Complainant’s name and goodwill, and that such advantage is unfair.
I conclude that the domain name was registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.
8. Decision
I find that the Complainant has rights in respect of a name which is similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.
In the light of that, I direct that the domain name pickford-removals.co.uk be transferred to the Complainant.
Mark de Brunner |
22 May 2003 |