1404
NOMINET UK DISPUTE RESOLUTION SERVICE
DRS01404
DECISION OF INDEPENDENT EXPERT
800Contac Limited and Phonenames Limited -v- Iris Online Limited
1. Parties:
Complainants : 800 Contac Limited and Phonenames Limited
Country : GB
Respondent : Iris Online Limited
Country : GB
2. Domain Name
0800contacts.co.uk (“the Domain Name”)
3. Procedural Background
3.1 The Complaint was lodged with Nominet on 17 November 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 21 November 2003. The Respondent was advised that it had 15 working days to respond to the Complaint, that is, until 15 December 2003.
3.2 A Response was received from the Respondent on 15 December 2003. The Complainants’ representatives were sent a copy of the Response on the same day, giving until 24 December 2003 to file a Reply if they so wished. On 24 December 2003 the Complainants’ representatives duly filed a Reply on their behalf. Nominet acknowledged their Reply, notified the Respondent of the same, and initiated its mediation procedure on 29 December 2003.
3.3 On 16 January 2004 Nominet notified the Complainants and the Respondent that mediation had been unsuccessful, and provided the Complainants paid the appropriate fee by 20 January 2004, Nominet would refer the case to an independent expert for a decision. The Complainants duly paid the fees on 30 January 2004.
3.4 On 3 February 2004 Bob Elliott, the undersigned, (“The Expert”) confirmed to Nominet that there was 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. Nominet duly appointed the Expert with effect from 6 February 2004.
4. Outstanding Formal/Procedural Issues:
Non-Standard Submissions
4.1 In addition to the Complaint, Response and Reply referred to above, both parties have sought to file further non-standard submissions, and the file provided to the Expert appears to contain some of such material. Some of the material appears to have been generated after the commencement of the mediation procedure on 29 December 2003. The Expert is conscious that the informal mediation procedure is expressly without prejudice and confidential (paragraph 7d of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”)). Furthermore, the letters generated by Nominet and sent to the parties in respect of the informal mediation procedure expressly provide that “in the event that the matter proceeds to the Expert Decision stage, the Expert will not be given access to any of the materials, records or correspondence generated during the informal mediation stage”. Although it would appear that non-standard documents have nevertheless been included in the file provided to the Expert, the Procedure further provides (in paragraph 13) that “The Expert will not be obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or this Procedure or which he or she has not requested”. The Expert considers that it is desirable that the informal mediation procedure should be entirely without prejudice and confidential, and therefore does not propose to have any regard to non-standard submissions made after 29 December 2003.
4.2 There is, however, one non-standard submission by the Respondent dated 18 December 2003 (in other words, before the start of the informal mediation procedure) to which the Expert will have regard. It is essentially a correction of an error in the Response (and in turn reflects the Complainants pointing out that error in their Reply).
Joint Complainants
4.3 The Complaint is, as noted above, filed on behalf of two Complainants. The Complaint explains that the First Complainant is a “sister company” of the Second Complainant. It appears that the First Complainant has entered into a Licence Agreement with a third party for the use of an alphanumeric phone name and a trade mark which are referred to below. However, the connection between the Complainants is not fully explained, nor indeed is the requirement for the First Complainant to be party to the Complaint. Although it is undesirable to have joint Complainants where the relationship between them is not properly explained, the Complaint is clear in that it seeks transfer of the Domain Name to the Second Complainant, which in turn appears from the Complaint to be the principal holder of any relevant rights. Furthermore, although the Dispute Resolution Service Policy (“the Policy”) and the Procedure both appear to envisage a Complainant being “a third party” there is nothing in the Policy or Procedure which expressly excludes joint Complainants.
4.4 According to the Expert’s researches, there appear to have been only two previous instances under the DRS of joint Complainants. In the first of these decisions Bliss World Limited and Bliss World LLC –v- Bliss World (DRS 0444 – blissworld.co.uk) the expert essentially disregarded the issue. In the latter decision QVC Inc and QVC –v- Sticky Dickys (asseenonqvc.co.uk and justlikeqvc.co.uk – DRS0784), the expert permitted the Complaint to proceed, essentially on the assumption that the Complainants would be able to resolve any difficulties as between each other.
4.5 Although, in this case, the Expert also proposes to allow the Complaint to proceed he proposes only to do so on the basis that the effective Complainant is the Second Complainant (as this seems to be the substance of the Complaint, and there is specifically a request for the Domain Name to be transferred into the Second Complainant’s name). The Expert would nevertheless observe that a Complaint where the interrelationship of the joint Complainants is not fully explained is clearly undesirable, and other Experts may well take a different view in future cases.
5. The Facts:
5.1 The Second Complainant has been developing a business around the concept of alphanumeric telephone numbers over the past 9 years. Alphanumeric telephone numbers are those where a number can be dialled with reference to words as well as numbers, using the letters which now commonly appear on telephone key pads. This assists the public to remember them.
5.2 The Second Complainant has registered a number of alphanumeric telephone numbers (“phone names”), and has registered a number of trade marks, domain names and company names associated with those phone names. The object of the business is to license and franchise the use of the phone names and the associated trade marks, domain names, and company names.
5.3 One of the phone names to which the Second Complainant has subscribed is the freephone number 0800 266 822 (which it describes as 0800 Contacts, although it will be observed that only the first six letters of “contacts” need in fact be dialled). The Second Complainant first subscribed to this telephone number in 1994, and has been (and still is) the subscriber since that time. The Complaint does not, however, say when the number began to be actively used either by it or on its behalf. Although the Respondent has speculated in its Response that it would appear that 0800 266 822 was only activated at around the end of 2002, the Complainants in their Reply have not volunteered any applicable date.
5.4 The Second Complainant has also registered 800 CONTAC as a UK registered Trade Mark in Class 9, dated 10 February 1995, and has a pending application for 800 CONTAC to be registered as a Community Trade Mark, in Classes 9, 35 and 29. The CTM application dates from 4 December 2002.
5.5 The Second Complainant says that it has also “set up the First Complainant as its sister company called 800 Contac Limited”, but does not give further detail. The Respondent believes that the Company was only incorporated on 6 December 2002, but again the Reply fails to provide further clarification on behalf of the Complainants.
5.6 As noted above (paragraph 4.3), there is also said to be a licence agreement between the First Complainant and “an opticians business under which the opticians are licensed to use the 0800 CONTACTS phone name and the 0800 CONTAC mark. All calls made to the phone name are answered “0800 CONTACTS”. Again, this is unsubstantiated by the Complainants.
5.7 The Respondent in its Response volunteered the information that the phone line to which 0800 266 822 has been ported is answered by an independent opticians in Hertfordshire, presumably the licensee. In their Reply the Complainants state (somewhat evasively) “it is correct that the First Complainant’s licensee currently answers calls made to the 0800 CONTACTS phone name”. No further details are provided either as to the ability of the First Complainant to license the third party, nor as to what is in fact licensed (and the terms of such licence).
5.8 The Respondent’s name is given as “Iris Online”. The address given, however, is a company called Iris Optical Limited, and it would appear that Iris Online (or Iris Online Limited) is a trading name for the internet arm of Iris Optical Limited, or an associated company. The Response refers to the business of selling replacement contact lenses by mail order having been set up in the summer of 1999.
5.9 In connection with setting up the Respondent’s business, the Respondent purchased a free phone number 08000 266 822 or “08000 Contacts” (although, again, it is to be noted that only the first six letters of “contacts” need in fact be dialled). Mr Spencer Scher of Iris Optical then apparently incorporated 08000 Contacts Limited as “a wholly owned subsidiary on [sic] Iris Online Limited”.
5.10 It would appear that the Respondent has traded in the mail order sale of replacement contact lenses since the summer of 1999, and the website found at the Domain Name (which resolves to Iris-online.co.uk) appears to show an active and current site advertising the sale of contact lenses and solutions at discount prices.
5.11 Later in 1999 Mr Scher appears to have applied for and obtained a registered Trade Mark for a device mark in the United Kingdom which includes 08000 CONTACTS. The Response initially also referred to a Community Trade Mark, but it appears that this was incorrect (as was subsequently clarified by the non-standard document from the Respondent dated 18 December 2003 referred to at paragraph 4.2 above).
5.12 The Domain Name was registered on 14 November 1999 by the Respondent. The Respondent has also registered the domain name 08000contacts.co.uk, which redirects to the same website as the 0800contacts.co.uk Domain Name. The Respondent also uses the domain name 800contacts.co.uk (which is registered in the name of Spencer Scher).
6. The Parties Contentions
The Complainants
6.1 As to Rights, the Complainants seek to say that they have relevant Trade Mark rights in two respects. Firstly, the Second Complainant is the registered owner of the UK Registered Trade Mark 800 CONTAC, which it applied for in February 1995. This is said to be a “nationality neutral” equivalent to the phone name 0800 Contacts. The Complainants believe that the 800 CONTAC mark would be recognised by members of the public as relating to the 0800 Contac[ts] phone name, which is similar to the Domain Name.
6.2 Secondly, the Complainants believe that common law trade mark rights arise from the alphanumeric telephone number itself, and refer in support to a case decided under ICANN’s Uniform Dispute Resolution Policy, Gorstew Limited & Unique Vacations Inc –v- Berkshire Trust (Claim Number FA000800095430) (1800beaches.com).
6.3 As to Abusive Registration, the Complainants reply solely upon paragraph 3a(ii) of the Policy (being one of the non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration). This provides as follows:- “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”.
6.4 In support of this assertion the Complainants rely upon the following matters:-
a) The Domain Name is redirected to the website located at iris-online.co.uk, advertising the Respondent’s business of supplying contact lenses;
b) Looking at the Respondent’s website the Respondent is clearly aware of the concept of alphanumeric telephone numbers, as it itself uses the phone name 08000 Contacts. The Respondent has also registered the domain name 08000contacts.co.uk (which redirects to the same website) and uses the domain name 800contacts.co.uk registered in Mr Scher’s name.
c) The wording contained in the Respondent’s website “free phone 08000 contacts (08000 266 822 87) (please note – freephone number is 08000 not 0800)”, is an acknowledgement that the Respondent has no rights in the 0800 Contacts phone name, and that there is a likelihood of confusion between 0800 Contacts and 08000 Contacts;
d) Despite the recognition of the risk of confusion, and the absence of any rights to use the 0800 Contacts phone name in the UK, the Respondent has proceeded to register the Domain Name five years after the Second Complainant first subscribed to the 0800 Contacts phone name;
e) There has been confusion, because the Second Complainant’s licensee has received calls made to the Complainants’ 0800 Contacts phone number from callers who intended to contact the Respondent, which the Complainants claim is in the mistaken belief that the Respondent is the subscriber of the 0800 Contacts phone name. When members of the public access a website using the Domain Name, they will expect to be taken to a website operated by the Complainant or its licensee “i.e. the subscriber to the 0800 CONTACTS phone name”.
f) Despite such confusion being drawn to the Respondent’s attention by the Complainant’s solicitors, the Respondent has refused to transfer the Domain Names to the “Complainant” (the Expert notes that the correspondence in fact appears to have asked for transfer to the Zockoll Group Limited, or possibly its subsidiary, the Second Complainant);
g) Again relying upon the UDRP case of Gorstew Limited & Unique Vacations Inc –v- Berkshire Trust, the Complainants argue that the Respondent, given the similarity between the Domain Name and the Complainants’ Trade Mark and telephone number, “must have known that registration of the Domain Name would prevent the Complainants from reflecting their telephone number, which incorporates the Complainants’ phone name and mark, on the Internet and thus the Domain Name is an Abusive Registration”;
h) In their Reply the Complainants assert that they believe that the Respondent was aware of the risk that the 0800 Contacts phone name had already been allocated to a third party, but notwithstanding this went ahead and advertised 08000 Contacts and registered the Domain Name regardless of any rights the third party may have in the 0800 Contacts mark. “A scrupulous businessman” would have been able to ascertain from BT or OFTEL at the time whether the 0800 Contacts telephone number had already been allocated to, or reserved by, the third party. This was particularly the case, since the Respondent admitted that he used the services of a Telecoms Advisor at the time;
i) Furthermore, the Respondent has admitted in its Response that it was aware that the Complainant’s 0800 Contacts telephone number had been in use since at least December 2002, and therefore, even if the Respondent was not aware of the Complainants’ Rights prior to December 2002 (which the Complainants do not accept), the Respondent’s continued use of registration of the Domain Name after December 2002 is an Abusive Registration.
The Respondent
6.4 Although the Response deals only relatively briefly with the extent of the Complainants’ alleged Rights, the Response also expressly refers to a letter from Iris Optical to the Zockoll Group Limited dated 24 September 2003 (in response to a demand for transfer of the Domain Name), which deals more fully with the question of the Complainants’ Rights.
6.5 As to the use of 800 Contac by the Second Complainant, the Respondent does not accept that the 800 CONTAC registered Trade Mark is merely a “nationality neutral” mark which continues to bear a relationship to the national free phone number. The Respondent points out that it is the policy of the UK Patent Office to refuse applications to register alphanumeric phone numbers as Trade Marks and presumes that 800 CONTAC is the closest the Complainants can achieve by way of registration to the alphanumeric 0800 Contacts.
6.6 The Respondent has not been able to find any examples of use by the Complainants or on their behalf of the 800 CONTAC mark predating December 2002. Although copies of advertisements have been produced by the Complainants which show use of the registered Trade Mark 800 CONTAC, and an entry in what is apparently the Surrey edition of Thomson Directories (the latter of which also claims 0800 Contacts as a Trade Mark), both are undated. Both are placed in the name of 800 Contac Limited, which the Respondent points out was not incorporated until 6 December 2002. The phone line to which 0800 266 822 has been ported is now answered by an independent opticians in Hertfordshire. There is no evidence of any earlier use of the 800 CONTAC mark, or the 0800 Contacts phone name. The domain name 800contac.co.uk was not applied for by the Second Complainant until 12 December 2002.
6.7 The Second Complainant has subscribed to the standard freephone number 0800 266 822 for which “0800 contacts” is one of a number of non-exclusive alphanumeric possibilities, which does not give the Complainants any rights to the 0800contacts.co.uk Domain.
6.8 As to Abusive Registration, the Respondent’s position is as follows:-
a) Although the Complainants subscribed to 0800 266 822 in 1994, the Respondent had no way of knowing this. The Respondent started trading in the summer of 1999 selling replacement contact lenses by mail order, either on the internet, or by telephone. The internet arm was named “Iris Online”. As a long-standing fan of the alphadial concept as used in the USA, Mr Scher of the Respondent purchased what he believed to be the only UK freephone “contacts” phone number available in 1999, 08000 266 822, or 08000 Contacts;
b) 08000 Contacts Limited was incorporated as a wholly owned subsidiary of “Iris Online Limited”;
c) 0800 266 822 or “0800 contacts” rang dead in 1999 and continued to do so when checked on a regular basis by Mr Scher until late 2002;
d) In 1999 BT was no longer releasing 10 digit freephone numbers (and had not done so since 1997). The Respondent refers to having received advice in 1999 from a “Telecoms Advisor”. In the light of that advice as to OFTEL’s announcement that it would not release any more 10-digit freephone numbers after 1997, Mr Scher says “that to my mind, if it did not exist, it could not exist”.
e) The Respondent produces an extract from issue 1 of what is called Number News (apparently produced by Windsor Telecom) which contains an article about Mr Scher and Iris Online, referring to the setting up of the Iris Online business, including the 08000 Contacts Limited company, and the use of the 08000 Contacts number. The article apparently dates from late 1999 and although some of its accuracy is disputed by the Complainants (particularly the claim by Mr Scher and a business partner to be “opticians”, which appears inaccurate from biographies available elsewhere), the article is presumably put forward by the Respondent as evidence of having established a bona fide business selling replacement contact lenses through the internet, in late 1999;
f) In connection with the setting up of its business, the Respondent “successfully applied for UK and Community Trade Marks for “08000 CONTACTS””). The reference to Community Trade Marks was inaccurate, and as noted above has been corrected, and the UK registration in fact appears to be of a stylised device including 08000 CONTACTS;
g) The Respondent explains the note on the “contact us” section of its website, to the freephone number being 08000 not 0800 as “simply that up until very recently, the Complainant’s 0800 266 822 number rang dead, and I did not want my customers to miss-dial [sic], hear a dead dial tone, and think that we had gone out of business. This is why our website also gives our main switchboard number (020 7407 7951)”.
h) Had the Respondent known that the 0800 number existed in 1999, Mr Scher says that he “certainly would not have subscribed to my 08000 number, nor used this as a cornerstone of my business (we have been actively promoting this number since 1999, and it would have been daft for a start-up to invest heavily in a potential contentious area). Similarly, I would not have gone to such lengths to trade mark 08000 Contacts in the UK and throughout the most of Europe”.
i) The Respondent says that it did not register the Domain Name abusively: it did so “on the off chance that 0800 266 822 was ever released by British Telecom, oblivious to the fact that it had been sold and then put on ice 5 years earlier”.
7. Discussion and Findings
General
7.1 For the Complainants to succeed according to paragraph 2 of the Policy, the Complainants must prove to the expert on the balance of probability both of the two elements set out in paragraph 2a of the Policy, namely that:-
i) The Complainants have 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.
Complainants’ Rights
7.2 The definition of Rights under the Policy “includes, but is not limited to, rights enforceable under English Law” but excludes rights in a name or term which is wholly descriptive of the Complainants’ business.
7.3 The Expert discounts the first (.uk) and second (.co) levels of the Domain Name for the purposes of comparison, on the basis that these are generic.
7.4 As to the Complainants’ claim to have rights in the 0800 Contacts phone name itself, the Expert proposes to treat this as being a claim that such rights, if any, as they are, belong to the Second Complainant.
7.5 As has been asserted by the Respondent (and not contradicted by the Complainants), an alphanumeric phone name is not, in itself and without evidence of distinctiveness, registerable as a trade mark in the United Kingdom. Further, as the Respondent also points out (which is again not disputed by the Complainants) the subscription is to the freephone telephone number 0800 266 822. 0800 itself denotes nothing more than a freephone number in the United Kingdom. “Contacts” is descriptive of the product which is apparently being sold by the Complainants’ licensee and by the Respondent. In the circumstances, the Expert considers he should be slow to find that the Second Complainant has Rights which arise solely out of the use of the 0800 Contacts phone name.
7.6 The Gorstew Limited & Unique Vacations Inc –v- Berkshire Trust UDRP decision relied upon by the Complainant is of relatively little assistance in this respect. Firstly, it was a decision in a proceeding which was not contested by the Respondent. Secondly, the Complainant in that case appears to have been able to establish extensive use of the “Beaches” name for a chain of all-inclusive hotels that do business under the name Beaches Resorts. This is to be compared with the paucity of evidence of use supplied by the Complainants in this case, and their apparent reluctance to provide details of such use beyond the two undated advertisements, and unnamed current licensee. Thirdly, the common law trade mark – 1-800 BEACHES - referred to by the Complainant is referred to by the panellist in her decision as being “not a generic number, but rather it is stylised to include the name of the Complainant’s business”.
7.7 In the circumstances, the Expert does not consider that the Second Complainant has established that it has Rights within the meaning of paragraph 2 of the Policy in the phone name itself.
7.8 As to the registered UK mark 800 CONTAC, it appears that the validity of the registration itself is not contested by the Respondent. Although the Respondent seeks to cast some doubt upon any ensuing use of that mark, the Expert considers that the registration gives the Second Complainant Rights which are enforceable under English Law. The question is therefore whether the name or mark is similar to the Domain Name?
7.9 Although the Expert has already noted that caution is to be applied in dealing with rights said to arise from alphanumeric phone names, in this instance, the appropriate comparison is between the registered Trade Mark 800 CONTAC and the Domain Name 0800contacts.co.uk. Although there are obviously differences between the registered mark and the Domain Name, in the Expert’s view those are not sufficient to render those dissimilar for the purposes of the Policy, and therefore the Expert concludes that the Second Complainant has established that it has rights in a name or mark 800 CONTAC which is similar to the Domain Name. The Expert considers that the argument that the Domain Name is essentially a representation of an alphanumeric phone name is not relevant to the comparison which has to be made with the Trade Mark, and overall the Expert considers that there is sufficient similarity for the purposes of the Policy. The Expert would note, however, that the Complainants’ assertion that members of the public would think that 800 Contac is a number within the UK’s telephone system which they can dial is not of assistance in deciding similarity in this respect, and the Expert has proceeded solely on the basis of a direct comparison of the names.
Abusive Registration
7.10 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”.
7.11 The Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration in paragraph 3(a) of the Policy. As noted above, the only one of such factors relied upon by the Complainant is that contained in paragraph 3(a)(ii) concerning use by the Respondent of the Domain Name in a way which has confused businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
7.12 Although there are areas of disagreement between the Complainants and the Respondent as to Abusive Registration, it seems to the Expert that the relevant areas of dispute are relatively few.
7.13 On the basis of the parties’ submissions, and the evidence provided the salient facts appear to the Expert to be as follows.
7.14 The Second Complainant subscribed to the 0800 266 822 telephone number in 1994, and has been the subscriber since then. This number is capable of being used to make the alphanumeric phone name 0800 Contac(ts). The Second Complainant obtained a UK registered Trade Mark for 800 CONTAC in 1995. However, the Second Complainant has produced no evidence of trading or other use of the 0800 Contacts phone name or the 800 CONTAC mark between 1994 and 2002.
7.15 The Respondent set up in business trading on-line in the sale of contact lenses in the middle of 1999. It set up a company 08000 Contacts Limited, subscribed to the telephone number 08000 266 822 (which can be used for the alphanumeric phone name 08000 Contac(ts)), and Mr Scher of the Respondent applied for an associated UK Trade Mark being a stylised representation of 08000 CONTACTS with a device in November 1999. The Domain Name was registered by the Respondent on 14 November 1999, and has remained registered in the Respondent’s name since.
7.16 The Complainants refer first to the Respondent’s motive in registering the Domain Name in 1999; essentially they dispute the Respondent’s contention that the Domain Name was registered “on the off chance that 0800 266 822 was ever released by British Telecom, oblivious to the fact that it had been sold and then put on ice 5 years earlier”. The suggestion particularly in the Complainants’ Reply is that the Respondent must have been (or should have been) aware that the 0800 Contacts phone name was already subscribed to by a third party. The Respondent claims genuine ignorance: Mr Scher says that he would have been daft to build up a business at least partially on the basis of a contentious domain name.
7.17 An Expert determination under the Nominet DRS Policy is not an ideal way of resolving such factual disputes. On balance, the Expert considers that the Respondent’s explanation of the position is the more probable. However, even if the Respondent did in fact know that the 0800 266 822 number had been subscribed to by a third party when it set up its business in 1999, and registered the Domain Name, it seems clear that the number was not actively being used at that stage by anyone, and therefore was presumably being held by the Second Complainant on the basis that it might be a number which could be licensed or franchised in line with the Second Complainant’s business. However, there is no suggestion that the Respondent would have been aware of that business or intention. The Expert does not therefore believe that the Complainants have established that the Respondent used the Domain Name between 1999 and 2002 “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 Complainants”. There is no suggestion that the Respondent in fact knew that the Second Complainant was the subscriber to the number in question. Instead, if anything, the Respondent appears to have taken advantage of the availability of a Domain Name which fitted in well with the remainder of its business.
7.18 Therefore, the Expert concludes that the Complainants have failed to establish that the use of the Domain Name by the Respondent between 1999 and 2002 was an Abusive Registration within the meaning of the Policy.
7.19 There is a separate argument put forward on behalf of the Complainants, to the effect that the continued use of the Domain Name by the Respondent after 2002 when it became aware that the 0800 266 822 (0800 Contacts) phone name had been activated constituted an Abusive Registration in itself.
7.20 However, the Expert considers that this argument, too, fails. By the end of 2002 the Respondent already had more than 2 years of trading behind it, including use of the Domain Name, connected to the iris-online.co.uk website. Users of the Domain Name would, therefore, have been familiar with its use for the Respondent’s business. The Iris Online site itself makes it clear that the freephone number to be used is 08000 266 822, not 0800 266 822, for reasons which the Respondent explains as being in order to avoid confusion (and which the Expert regards as plausible).
7.21 It appears that there may be some confusion being caused in the market place, by telephone calls intended for the Respondent’s business being made to the Complainants’ licensee. However, it seems to the Expert that such confusion as there may be is likely to have been caused by the recent entry of the Complainants (or their licensee) into the market using a phone name which is very similar to that of the Respondent (about which the Complainants can have no legitimate complaint, given that the Respondent’s phone name appears to have been actively in use since 1999). Such confusion does not, it seems to the Expert, arise out of any intention on the part of the Respondent to use 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 Complainants.
7.22 The Expert concludes that the Domain Name is not, in the hands of the Respondent, an Abusive Registration.
8. Decision
8.1 The Second Complainant has Rights in respect of a name or mark which is similar to the Domain Name (but not Rights in respect of a name or mark which is identical to the Domain Name). However, the Expert decides that the Domain Name is not an Abusive Registration in the hand of the Respondent. The Expert therefore declines to order transfer of the Domain Name to the Second Complainant.
Bob Elliott
Date: 19th February 2004