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Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Langdon Industries Ltd -v- People's Net Ltd [2003] DRS 989 (24 June 2003)
URL: http://www.bailii.org/uk/cases/DRS/2003/989.html
Cite as: [2003] DRS 989
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Nominet UK Dispute Resolution Service
DRS 989
Langdon Industries Limited v. People’s Net Limited
Decision of Independent Expert
1. Parties
Complainant: Langdon Industries Limited
Country: UK
Respondent: People’s Net Limited
Country: UK
2. Domain Name
chillnet.co.uk
3. Procedural Background
The Complaint was lodged with Nominet on May 6 2003. Nominet validated the Complaint and notified the Respondent on May 9, 2003 and informed the Respondent that it had 15 working days within which to lodge a Response. On May 23 a Response was received. On May 27th the Complainant provided a written reply to the Response.
On June 11 2003 Nominet informed the Complainant and the Respondent that it had not been possible to achieve a resolution of the dispute by Informal Mediation..
On June 19 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 June 19, 2003 Andrew Goodman, 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. On the same day Andrew Goodman was appointed as the Expert.
4. Procedural Issues
There are no outstanding procedural issues of which I am aware or which have been brought to my attention.
5. The Facts
On May 6 1999 the Domain Name was registered by People’s Net Services Ltd for the Respondent. The registration was updated on May 16, 2002. As at the date of the complaint the Domain Name was not in use. It appears as one of several hundreds of domain names currently (as at the date of this determination) offered to the public for free e-mail use on a website operated by the Respondent as an isp at http://www.peoplesnet.net within a section entitled “Cool”.
6. Contentions of the Parties
Complainant:
6.1 The Complainant is a company which operates a temperature controlled transport and distribution network featuring modern cold/chilled storage facilities at five nation-wide depots, trading as the Chillnet Distribution Network, having registered the trademark “Chillnet” as a Class 39 registration on September 17, 1997 and a design featuring the word Chillnet as a Class 39 registered Mark on March 18, 2000. It holds the domain name “chillnet.net”
6.2 The Complainant asserts that the Domain Name is identical to its registered trade mark; and that its acquisition and use by another, including a potential trade rival, would cause confusion in the minds of its customers and be a potential wrongful use of its trade mark; that when requested to sell it to the Complainant the Respondent by an e-mail sent on April 26 2003 at 19.23hrs informed the Complainant that it would have to put forward an offer of “say £5K” for Mr Rosen of the Respondent to recommend its sale.
6.3 The Complainant asserts that, while the Respondent does not appear to be engaged in a pattern of abusive registration, in this instance the demand for an excessive sum is abusive since the domain name is the only co.uk domain which exactly matches the Complainant’s trademark and trading name.
6.4 The Complainant requests that the Domain Name is transferred.
Respondent:
6.5 The Respondent contends that it is making legitimate commercial and fair use of the Domain Name; that the Domain Name is generic or descriptive; that it has never used the Domain Name in any connection with the Complainant’s trademark; that it did not acquire the domain name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant for valuable consideration. It asserts that there was no blocking registration; that it was not registered primarily for the purpose of unfairly disrupting the business of the Complainant; and that it has not been used 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.
6.6 The Respondent makes the point that it has offered to exchange the Domain Name for the domain “chillnet.net”.
7. Discussion and Findings:
General
(1) The complaint is founded on an implicit allegation of abusive registration. Under the Nominet Dispute Resolution Service Policy an abusive registration is defined as
“a Domain Name which
i was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage or was unfairly detrimental to the Complainant’s Rights; or
ii has been used in a manner which took unfair advantage or was unfairly detrimental to the Complainant’s Rights.”
For the purpose of this definition “Rights” includes but is not limited to rights enforceable under English law. However a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business.
(2) Part 3 of the Nominet Dispute Resolution Service Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. I set out the relevant sections as follows:
I Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A: primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or 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.
(3) Part 4 of the Nominet Dispute Resolution Service Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. I set out the relevant sections as follows:
I Before being informed of the Complainant’s dispute, the Respondent has
A: used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods and services;
B: been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C: made legitimate non-commercial or fair use of the Domain Name; or
II The Domain Name is generic or descriptive and the Respondent is making fair use of it.
Complainant’s Rights
(4) To succeed on this complaint the Complainant has to prove pursuant to paragraph 2 of the Policy that on the balance of probabilities first that it has rights as defined in paragraph 1 of the Policy in respect of a name identical or similar to the Domain Name and secondly, that the Domain Name in the hands of the Respondent is an Abusive Registration as defined in paragraph 1 of the Policy.
(5) The Domain Name uses the mark “chillnet”. The Complainant trades as Chillnet Distribution Network and has done so since 1997; has used its trademark “Chillnet” since March, 1998 and its distinctive registered mark which is the word ”Chillnet” in a circular logo surrounding a map of the British Isles since 2000. I consider it reasonable to infer that the Complainant has substantial goodwill associated with that name sufficient to mount an action for passing off. Contrary to the Respondent’s contentions the name is neither generic nor descriptive. There is no evidence that the single word “Chillnet” has any commercial, geographical or etymological connection with the word “chill” when applied to youth culture.
(6) Accordingly I find that the Complainant has rights in respect of a name which is identical or similar to the Domain Name.
Abusive Registration
(7) There is no evidence before me concerning the purpose for which the Respondent registered or otherwise acquired the Domain Name. In particular there is no evidence upon which I can make a finding that the Respondent registered or otherwise acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or 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; nor is there any or any sufficient evidence from which I can properly infer that the Domain Name was registered or otherwise acquired as a blocking registration against a name or mark in which the Complainant has Rights.
(8) Since there is no evidence of any use at all since registration there is likewise no evidence that the Respondent’s use of the Domain Name is primarily for the purpose of unfairly disrupting the business of the Complainant.
(9) For the same reason there is no evidence of actual confusion in the minds of the Complainant’s customers concerning the present use of the Domain Name. I can foresee circumstances in which such confusion might occur in the future since I consider it reasonable to infer that members of the public who searched the web by use of the Domain Name expect to find a site connected with the Complainant’s business and not connected with the Respondent’s business but I am not in a position to act on such speculation.
(10) There is evidence to be found (but not adduced by the Respondent) at http://www.peoplesnet.net that the Respondent, before being informed of the Complainant’s dispute, made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods and services as part of a substantial number of other domain names to which the same offering of goods and services applied: however the Respondent has not been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name
(11) Although there is no evidence that the Respondent registered or otherwise acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or 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, once the Respondent became aware of the potential confusion caused between the Complainant's trade mark and the Domain Name, after April, 2003 it sought to leverage that difficulty by either obtaining from the Complainant in excess of £5,000 for the Domain Name or requiring the Complainant to give up “chillnet.net” in exchange for it. I consider that in so doing the Respondent was using the Domain Name in a manner which took advantage of or was unfairly detrimental to the Complainant’s Rights within the meaning of paragraph (ii) of the definition of Abusive Registration under Part 1 of the Dispute Resolution Service Policy. I recognise that this finding is outside the list of factors which may be evidence that the Domain Name is an Abusive Registration under Part 3, however such list is non-exhaustive and the DRS Policy must be permitted, in my view, to cover a situation where the registration was not of itself abusive but post-registration use by the Respondent made it become so.
8. Finding
Accordingly I find that the Domain Name in the hands of the Respondent is an Abusive Registration as defined in paragraph 1 of the Policy. I am further satisfied that after April, 2003 in the absence of any legitimate use the only use which the Respondent may have for the Domain Name in the absence of a direction for transfer by me is either as a blocking registration against a name or mark in which the Complainant has Rights, or, for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or 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.
9. Decision
In light 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, I direct that the Domain Name “chillnet.co.uk” be transferred to the Complainant.
Andrew Goodman LL.B., FCI.Arb., Barrister.
Date: 24 June 2003