999
Nominet UK Dispute Resolution Service
DRS 00999
Terex Corporation -v- A.T. Agency
Decision of Independent Expert
1. Parties:
Complainant: Terex Corporation
Country: US
Respondent: A.T. Agency
Country: GB
2. Domain Names:
terexce.co.uk; terexcompactequipment.co.uk (“the Domains”)
3. Procedural Background:
A brief chronology is as follows:
8 May 2003: Complaint lodged with Nominet electronically
13 May 2003: Hardcopies received by Nominet
16 May 2003: Nominet forwarded complaint to Respondent
9 June 2003: Response lodged with Nominet electronically
10 June 2003: Nominet forwarded response to Complainant
18 June 2003: No reply received
On 11 August 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:
None.
5. The Facts:
Except where otherwise stated the following facts are as asserted by the Complainant. While the Complainant has not provided any supporting documents (apart from an online trade mark printout), the Respondent has not denied the Complainant’s assertions and I have no other reason to question them. I therefore accept the Complainant’s statements of fact.
The Complainant
The Complainant is a manufacturer of various types of lifting machinery and uses “Terex Compact Equipment” as a trading name.
The Complainant and its associated companies have the benefit of a portfolio of registered trademarks relevant to the UK, namely UK and Community trade mark registrations, including a UK trade mark registration no. 934804 for the word TEREX. This was registered on 7 November 1969 in class 12 for goods such as land vehicles, land vehicles incorporating lifting, loading and tipping mechanisms and demountable load-carrying bodies for motor land vehicles, amongst others.
The Complainant has a number of group companies, all of which have permission to use the TEREX trade mark.
The Complainant and/or its related group companies trade from websites at www.terexce.com and www.terexcompactequipment.com and own a number of other domain names including terex.com and terex.co.uk.
The Respondent
The Respondent has no relationship with the Terex Group.
It registered terexce.co.uk on 18 December 2002 and terexcompactequipment.co.uk on 19 December 2002.
Websites at the Domains
At some point, the Respondent established websites at the Domains.
On entering the websites, a page entitled "Product Details" appeared. This was almost identical to the "Product Details" page on the Complainant's sites. The websites purported to but did not in fact provide information about Terex machines.
The photographs on the websites were of “Terex Compact Equipment” and appeared to have been directly copied from the Complainant's websites but with the word “Terex” removed. Users clicking on any of these photographs were taken via a link to the websites of the Terex Group's direct competitors.
On the home page of each website there was an offer to sell the “website” and an email address for interested parties to contact.
The Complainant did not exhibit any printouts of the websites at the Domains or of the parts of the Complainant’s websites which were allegedly copied. However, in accordance with its normal practice, Nominet included a screenshot of the terexce.co.uk home page (as of 16 May 2003) in the bundle. This states: “Welcome. Your Guide To The Best Construction and Compact Equipment in the World. Please select your location.” followed by a series of national flags, including the Union Jack. Then there is this statement: “Interested in purchasing the website? Contact webmaster@terexce.co.uk or AceTechAgency@yahoo.co.uk.”
When I checked on 23 August, the websites at each Domain resolved to the Complainant’s own website at terexce.com. I am not been provided with any reason for this change.
6. The Parties’ Contentions:
Complaint:
The Complainant’s contentions are in essence as follows:
1. The Complainant is well-known and “Terex Compact Equipment” is a well-known trading name within the industry “that relates to specific Terex products such as site dumpers, telehandlers and backhoe loaders”.
2. The Domains are so similar to the Complainant’s own domain names that they are confusing to the Complainant’s customers.
3. The following aspects of the Respondent’s websites are likely to result in members of the public and businesses being confused into believing that the Domains are registered to, or operated or authorised by or otherwise connected with the Complainant:
3.1 they purport to (but do not) provide information about the Complainant’s machines;
3.2 the "Product Details" page is almost identical to that on the Complainant’s sites;
3.3 photographs appear have been directly copied from the Complainant’s sites in breach of copyright; and
3.4 clicking on any of these photographs takes users via links to websites of the Terex Group's direct competitors.
4. The Respondent is not commonly known by the name TEREX, nor has any legitimate connection with the mark which is identical or similar to the Complainant's domain name, nor has the Respondent made any legitimate or commercial or fair use of the domain names.
Response:
The Response states simply as follows: “We agree to the transfer of the above domain names to the complainant as requested by the complainant, Terex Corporation. Please let us know if you require any further information for the transfer to proceed. acetechagency@yahoo.co.uk.”
7. Discussion and Findings:
General
To succeed, the Complainant has to prove in accordance with paragraph 2 of Nominet’s DRS Policy (“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 Domains and, second, that the Domains, in the hands of the Respondent, are abusive registrations (as defined in paragraph 1 of the Policy).
In my view, the statement in the Response agreeing to transfer the Domains is not of itself an unequivocal admission either that the Complainant has rights and/or that the Domains are abusive registrations. However, I draw such inferences from the Respondent’s failure to deny the Complainant’s assertions as are stated below.
Complainant’s Rights
The Complainant identifies only one of its group’s portfolio of UK and Community trade marks relevant to the UK - a UK trade mark in the Complainant’s name registered 7 November 1969 for the word TEREX in class 12 for land vehicles. I cannot draw any conclusions in relation to the unidentified trade marks but I am satisfied that the identified trade mark is sufficient to establish the Complainant’s rights in the name TEREX.
The Complainant appears also to rely on common law rights in the name “Terex Compact Equipment”. It asserts that this is a well-known trading name within its industry. I have no reason to doubt this. However, the Complainant - a US corporation - does not allege, still less provide any evidence of, any reputation or goodwill in the UK. In those circumstances I am not prepared to conclude that the Complainant has common law rights in the name “Terex Compact Equipment” which amount to rights under the Policy.
Nonetheless, I am satisfied that the name TEREX is similar to the Domains. The domain suffixes can be disregarded. TEREX is a made-up word and the first and dominant part of both Domains. The letters “c” and “e” (presumably abbreviations of “compact equipment”) and the descriptive words “compact equipment” themselves do not significantly differentiate the Domains from the name TEREX.
The Complainant has rights in a name which is similar to the Domains.
Abusive Registration
Are the Domains in the hands of the Respondent, abusive registrations? 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 Domains are abusive registrations is set out in paragraph 3a of the Policy.
The Complainant does not specifically refer to paragraph 3a. It relies on the likelihood of confusion due to the similarity between the Domains and the .com versions owned by the Complainant and also due to the nature of the Respondent’s (former) websites at the Domains.
The factor most relevant to the Complainant’s contention is paragraph 3a.ii:
“ 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”
This factor does not apply because it requires that use “has confused” people or businesses. There is no evidence of actual confusion here.
However another factor - paragraph 3a.iA – is also relevant:
“ 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; …”
It is necessary to consider why the Respondent registered the Domains.
The Domains include the Complainant’s registered UK trade mark and comprise the exact .co.uk versions of two .com domains owned and used by the Complainant. The Respondent has no connection with the Complainant and the Complainant has not consented to the Respondent’s use of its trade mark.
There was a statement on the homepages of the websites at the Domains that the websites (which I take to mean the Domains) were for sale.
I have not seen any other pages on the websites but the Respondent has not denied the assertions that parts of them were almost identical to the Complainant’s own sites, that photographs of the Complainant’s machines were directly copied in breach of copyright, that the photographs were altered to remove the Complainant’s name and that the photographs linked to the websites of the Complainant’s competitors.
My view based on the available evidence is that on the balance of probabilities the Respondent registered the Domains for the purpose of sale to the Complainant (of which the Respondent was clearly aware) for valuable consideration in excess of its out of pockets costs associated with acquiring or using the Domains.
Although the statement concerning sale appeared on the Respondent’s websites and was not communicated directly to the Complainant, in my view the websites were essentially a warning from the Respondent to the Complainant that it should buy the Domains or else risk losing customers to its competitors.
While the homepages of the Respondent’s (former) websites at the Domains were branded as “Your Guide To The Best Construction and Compact Equipment in the World”, I do not believe that the Respondent in fact intended the Domains as a genuine guide to construction or compact equipment (leaving aside the unfairness or otherwise of using the Domains for such purpose). The Respondent has not made such a claim in its Response.
Indeed the Respondent offered no explanation at all for its registration or use of the Domains. If there were genuine reasons, I expect that the Respondent would have said so in the Response.
The Complainant has established the factor in paragraph 3a.i.A.
It follows from what I have said above that in my view none of the paragraph 4 factors apply - these are the factors which may be evidence that the Domains are not abusive registrations. In particular, the Respondent has not used the Domains for a genuine offering of goods or services (4a.iA), there is no evidence that the Respondent has been commonly known by the name Terex or similar (4a.iB), the Respondent has not made legitimate non-commercial or fair use of the Domains (4a.iC) and the Domains are not generic or descriptive (4a.ii).
It is unnecessary to consider the other non-exhaustive factors in paragraph 3a or indeed whether the Domains are abusive registrations for other reasons.
I conclude that the Domains are abusive registrations in that they were registered in a manner which took unfair advantage of the Complainant’s rights.
8. Decision:
The Domains should be transferred to the Complainant.
Adam Taylor
Date: 28 August 2003