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URL: http://www.bailii.org/uk/cases/DRS/2004/1405.html
Cite as: [2004] DRS 1405

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DRS 01405

HQUK Ltd. -v- Headquarters

Decision of Independent Expert

Parties:

1. Parties:

Complainant:

HQUK Limited

Country:

Respondent:

Headquarters

Country:

2. Domain Name:

hq-hair.co.uk ("the Domain Name").

3. Procedural Background:

The Complaint was lodged with Nominet on 17 November 2003. Nominet validated and notified the Respondent of the Complaint on 24 November 2003 and informed the Respondent that he had 15 days within which to lodge a response. The Respondent lodged a response on 12 December 2003, which was forwarded to the Complainant on 15 December 2003; at which point Nominet advised the Complainant they had 7 days within which to lodge a reply. The Complainant lodged a reply on 22 December 2003. On 29 December 2003 Nominet advised the parties that the dispute would be sent to the Informal Mediation stage of the Dispute Resolution Service. Unfortunately a settlement could not be reached at the Informal Mediation stage, held between 2 and 16 January 2004, and on 2 February 2004 the Complainant paid the necessary fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Andrew Murray, the undersigned, ("the Expert") has 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 9 February 2004, Nominet invited the undersigned, the Expert, to provide a decision on this case.

4. The Facts

The Complainant is a company registered in England and Wales whose registered office is at 39 Bruton Place, Berkley Square, London W1J 6LF (company number 3381543). The Complainant was incorporated in the United Kingdom on 5 June 1997. Prior to its incorporation, the business of the Complainant was run on a sole practitioner basis. The Complainant has operates a hair salon at 2 New Burlington Street, London. It has traded at this address and previously at 11 Queensway, London using the name HQ Hair since 1991. In February 1999, the Complainant launched its Internet brand "Hqhair". From its Website www.hqhair.com it sells hair and beauty products and provides hair and beauty advice through its "ask Jayne" and "ask Jasmine" pages as well as promoting the its salon at 2 New Burlington Street. The Complainant (via its sister company HQHairdressing Limited (company number 2590715)) has published trade mark applications for the following trade marks: (1) Community trade mark 'Hqhair' (CTM 2046977) - application date 19 January 2001: current status is registered. (2) Community trade mark 'HQbeauty' (CTM 2782761) - application date 17 July 2002: current status is advertised (opposition pending) and (3) Community trade mark 'HQ' (CTM 2901114) - application date 17 October 2002: current status is pending. All CTM applications include an application under class 35 to extend to "Internet retailing of hair care products, hair treatment products, hair treatment equipment and hair face and body cosmetics."

The Respondent operates two hairdressing salons at 71 High Street and 105 The Promenade, Cheltenham, Gloucestershire. They have operated a salon in Cheltenham since 1995. Until about 18 months these salons traded as "Headquarters", at which point it was decided, at the instigation of the Respondent's customers to shorten the name to HQ hair.

The Domain Name was registered on 22 April 2002 through Active ISP.

5. The Parties' Contentions

Complainant:

The Complainant contends that:

1. The Domain Name is extremely similar to the Complainant's domain name

2. The Domain Name, in the hands of the Respondent, is an Abusive Registration as it is being used in a manner which takes unfair advantage and is unfairly detrimental to the Complainant's Rights. The Complainant's grounds are based on the DRS policy together with additional factors.

3. Under Paragraph 3 of the Policy that the Respondent's use of the Domain Name confuses Internet users into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. It is contended that this is evidence of an Abusive Registration under paragraph 3(ii) of the DRS Policy.

4. The Domain Name is confusingly similar to the Complainant's trade marks. The Respondent has simply added a hyphen between "hq" and "hair". The Complainant argues that the addition of the hyphen into the Domain Name does not make the Domain Name significantly different from the Complainant's marks. The Claimant refers to the decision in PDG Graphics Ltd v PDGraphics Ltd (DRS 00526), in which the Independent Expert stated that it was overwhelmingly likely that confusion had been caused by, amongst other factors, the fact that the two parties had virtually identical names.

5. The content of the Respondent's Website is confusingly similar to the content of the Complainant's Website. The Complainant uses the "Hqhair" domain name to sell hair and beauty products and to advertise its hair salon services. The Respondent is also using the Domain Name to sell hair products and to advertise its hair salon services. In addition, the logo of the Respondent, as shown in the top right hand corner of the Respondent's home page is confusingly similar to the complainant's logo. The combination of both sites having 'HQ Hair' in their domain names, both sites being called 'HQ Hair', using similar logos, having the same content on the Website (both sites sell hair products and advertise hair salon services), causes a confusion that the Domain Name is in some way authorised or connected with the Complainant. Web users will be confused into believing that the products and services offered on the Respondent's Website are that of the Complainant.

6. Search engines enhance this confusion. When typing 'HQ Hair' into a search engine the user is faced with a choice between the two Websites. The Internet user is unable to tell which is the HQ Hair he has read about in the press. The Respondent is taking unfair advantage of the Complainant's right to direct Website users to its well-known Website and is unfairly taking advantage of the Complainant's success and the goodwill attached to its name.

7. That this confusion may harm the reputation of its business. The Complainant's products and services are of a very high quality and any association with products or services of a lesser quality will be detrimental to the Complainant's business.

8. The primary purpose of the Domain Name is to unfairly disrupt the business of the Complainant; this is evidence of an Abusive Registration under paragraph 3(i)(c). Customers looking for the Complainant's Website will be confused into purchasing products from the Respondent's site and this will disrupt the Complainant's business by taking away a proportion of its customers.

9. There is clear evidence that the Respondent's use of the Domain Name is an Abusive Registration, and the Claimant asserts that the Respondent cannot validly dispute this. The Complainant does not dispute that the Respondent's Website may be a genuine offering of goods and services, however the use of the Domain Name confuses the Complaint's Website with that of the Respondent's.

10. There is no evidence that, before being aware of the Complainant's dispute, the Respondent had been commonly known as HQ-Hair, or legitimately connected with the mark; the Respondent's business is in fact known as "Head Quarters", not "HQhair". The Respondent should be considered as having no legitimate interests in respect of the Domain Name because the Domain Name was registered after the Complainant's trade mark applications were published and the Complainant had established extensive goodwill in the HQhair name.

11. the fact that the HQhair mark was sufficiently distinctive and well known, not least because of its coverage in the national press, at the time the Respondent registered the Domain Name, is evidence of bad faith on the part of the Respondent. The Claimant refers to PDG Graphics Ltd v PDGraphics Ltd (DRS 00526), in which the Independent Expert stated that one factor leading him to believe that the Complainant had a right in the disputed name (that was similar to the Respondent's name) was that the Complainant had a "long established reputation" for the services in question and that "That established reputation would give rise to rights in the goodwill in the name in that it would be an actionable wrong for any person to use that name in such a manner as to lead to the belief that his services or business were the services or business of the persons entitled to make use of the benefit of that name."

12. Only the Complainant or related companies own trade mark rights in HQ Hair, in the United Kingdom. This can be adduced as evidence that the Respondent has no enforceable, registered trade mark rights in the HQ Hair name and therefore no legitimate interest in the Domain Name.

13. There is no evidence that, before being aware of the Complainant's dispute, the Respondent had made legitimate non-commercial or fair use of the Domain Name. The Respondent's use of the Domain Name is purely commercial. The Respondent's use of the Domain Name is unfair; it has been used to market a Website that is confusing and designed to capture the Complainant's Internet audience.

Respondent:

The Respondent contends that:

1. At the date they registered the Domain Name they were unaware of the Complainant's business. They he only became aware of the Complainant when they received the original complaint on 15 July 2003.

2. Head Quarters and its abbreviation are very common names for hairdressers. The Respondent has been operating a hairdressing salon in Cheltenham since 1995. He now owns two salons. Until about eighteen months ago he traded as Headquarters, at which point he decided to shorten the name to HQ hair. This was at the instigation of his customers.

3. The Domain Name is not an Abusive Registration. It does not take unfair advantage nor does it seek to do so and is not unfairly detrimental to the Complainant's rights.

4. The Respondent's Website is relevant only to two salons in Cheltenham whereas the Complainant has salons in London and sells goods over the Internet.

5. Customers have to go into the Respondent's salon to buy goods. They do not sell products over the Internet and have no intention of so doing. For that reason the Complainant suffers no detriment.

6. The only way people learn about the Respondent's Website is by picking up a business card, reading an advert in the local University or via the Yellow Pages.

7. If one enters hqhair in a Google search the Complainant's site comes up as do references to it in other sites. If one enters hq-hair, the Complainant's site again comes up. Therefore the complainant suffers no disadvantage.

8. As the Respondent does not sell on-line and operates in an entirely different geographical location from the complainant, there is no possibility of any detriment to the Complainant. People searching for the Respondent's business are likely to discover the existence of the complainant's on-line service to the benefit of the Complainant. There is no intention to disrupt the Complainant's business and no evidence that there has been any disruption. The use of the domain name is not unfair. It is not confusing - the hyphen is distinctive and would not be inserted unless someone knew the name of the Respondent's site - and it is not designed to capture the complainant's Internet audience.

9. The Respondent's business is confined to the Cheltenham area and its Website is designed to market its services and the goods that it sells in its salons to local people. There is no truth in the allegation that the Respondent is passing itself off as the Complainant. They are two different businesses offering similar type products but in different areas to a different section of the public and by different means.

10. The Complainant has put forward no evidence of any person having suffered any confusion as between the two sites nor any evidence of any detriment suffered by the Complainant. There can be no suggestion of detriment to the Complainant's business by being associated with products of a lesser quality. No harm can be done to the reputation of the Complainant's business by the existence of the Respondent's site.

Reply:

The Complainant was offered the opportunity to reply to the response and on 22 December 2003 these further replies were entered on behalf of the Complainant:

1. The fact that the Domain Name was available when the Respondent registered it, does not mean that the Respondent is not infringing the Complainant's brand and making unfair use of the Complainant's name by trading from the Website which the Domain Name points to.

2. The Respondent asserts that the Complainant does not have a famous international brand. However the Complainant has registered the trade mark 'HQhair' in the USA (registration number 2,664,312). The UK magazines in which the Complainant is regularly mentioned, are published in the USA and elsewhere. Also, the Complainant has been mentioned in various American magazines, including 'InStyle' and 'Women's Wear Daily'. Further, within the last 3 months alone, the Complainant has received orders from customers in 64 countries around the world. This together with the press cuttings annexed to the Complaint Form are evidence that the Complainant does have a famous international brand.

3. Whether or not 'Head Quarters' and its abbreviation are common in the hairdressing industry is irrelevant. The issue only relates to the Internet. Other businesses that may have a similar name only use the name in relation to their salons and do not trade from a Website which is confusingly similar to the Complainant's. As far as the Complainant is aware, no other hairdressing business with a similar name to the Complainant have issued applications to register trade marks, as the Complainant has done, or otherwise risked being associated with the Complainant and its well known brand.

4. The Respondent's Website does not merely relate to two salons in Cheltenham. The nature of the Internet is such that the Respondent's Website reaches a worldwide audience, not restricted merely to the geographical area of Cheltenham.

5. It is untrue that the Respondent does not sell products over the Internet. The products are advertised on the Respondent's Website. To order a particular product, a customer must click on a link, which says "order over the Web!" The link takes the customer into an email in which the customer is asked to provide the purchase details and a phone number. An employee of the Respondent then calls the customer to confirm the order. For the above reason, the Complainant does suffer detriment. Members of the public wishing to purchase goods from the Complainant's site, may mistakenly log onto the Respondent's site and order goods in the way explained.

6. The Complainant asserts that people may find out about the Respondent's Website in other ways. In any event, it is of no relevance how people find out about the Respondent's Website. What is of relevance is that the Domain Name is confusingly similar to the Complainant's name and points to a Website offering similar goods and services. There is a risk that customers of the Complainant may mistakenly order goods from the Respondent's Website, believing that they are ordering goods from the Complainant.

7. The Respondent offers goods for sale over the Internet and receives orders online. Due to the nature of the Internet, the Respondent can take orders from any person in Britain (and in fact the world). Therefore, the Respondent's Website does not operate in an entirely different geographical location to the Complainant's. Further, in the future, it is likely that the Respondent will process orders online. The use of the Domain Name is confusing and unfair. The addition of the hyphen cannot be seen as distinctive and does not add any originality to the name. The Respondent does not have a registered trade mark incorporating the hyphen and does not provide any evidence that its use of the hyphen in the Domain Name has brought it substantial goodwill and therefore, distinctiveness. It is more likely that people will think the Respondent is connected with the Complainant.

6. Discussion and Findings

General

The Complainant has to establish under paragraph 2 of the Policy 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 and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in paragraph 1 of the Policy. Rights, as defined, "include but are not limited to rights enforceable under English Law." However they cannot be merely "rights in a name or term which is wholly descriptive of the Complainant's business". The Complainant has the burden to prove on the balance of probabilities both that it has the rights and also that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

An analysis of the complainant's rights to the name "hqhair" or "hq-hair" has two components. The first is does the Complainant generally have a right in this name? And secondly is this name a wholly descriptive name?

Does the Complainant generally have a right in this name?

The Complainant relies upon several trade mark applications and registrations and upon an established goodwill which they claim to possess in the name HQHair.

The Complainant posseses a Community Trade Mark in the name 'Hqhair' (CTM 2046977) and a similar US Trade Mark (no. 2664312). When comparing any name or mark in which the Complainant has Rights with the Domain Name the first and second level suffixes of the Domain Name, being generic in nature, are to be discounted. It has been held on several occasions that possession of a trade mark right enforceable under English Law is sufficient to establish rights in a name or mark (see e.g. Nokia Corporation v Andrew Stone DRS 00068; Cheltenham & Gloucester plc v James Ryder DRS 00203). There is here a slight difference between the Complainant's trade mark 'Hqhair', and the name in dispute 'hq-hair'. The Respondent claims the addition of the dash or hyphen in his name is sufficient to make it distinctive of the Complainant's mark (see Respondent's Contention no.8). The Complaint disputes this (see Complainant's Contention no.4; Complainant's Reply Contention no.7). A similar issue was addressed in Nokia Corporation v Andrew Stone DRS 00068 where the expert examined the addition of the three letter term GSM in addition to the registered trade mark of the Complainant. While the expert noted that '[n]ot every combination of three letters added to NOKIA would render the composite word similar to NOKIA for the purpose of making a comparison under these rules' he held that 'the addition of a well known 3 letter abbreviation which describes features closely associated with products sold by mobile telephone manufacturers such as the Complainant is such that word NOKIAGSM is considered similar to NOKIA'. Thus the addition of further letters or punctuation marks into a domain name does not per se make it distinctive. Similarly, and with relevance to the present action, in Consorzio del Prosciutto di Parma v Vital Domains Limited DRS 00359 the expert found that in determing the rights of the Complainant to two names "parmaham" and "parma-ham" there was no distinction to be drawn: "the only difference between the two Domain Names is the hyphen in parma-ham.co.uk. In the circumstances, the Expert does not consider it necessary to carry out a separate analysis in respect of each of the Domain Names. The main issue at this stage is to establish whether, on the balance of probabilities, the Complainant has rights in respect of the name or mark of 'Parma ham'." This finding was not disturbed on appeal. On this basis the Expert rejects the contention of the Respondent that the introduction of the hyphen creates a distinctive name or mark and finds that the Complainant has rights in respect of a name which identical or similar to the Domain Name.

Is this name a wholly descriptive name?

Under paragraph 1 of the Policy the Complainant will be unable to rely upon this general right if it is wholly descriptive of their business. The business of the Complainant is the retail of hair and beauty products and services. The name HQ Hair cannot be described as being descriptive of these services. Although the Respondent contends that "Head Quarters and its abbreviation are very common names for hairdressers" (Respondent's Contention no.2) this does not effect the Complainant's right under paragraph 1. Widespread use of a name does not disqualify it from protection under paragraph 1 (see Flowers Direct Online Ltd v Peter Calvert DRS 00610). The Complainant has therefore established a Right in the name "hq-hair" in terms of paragraph 1 of the Policy.

Abusive Registration

To be an Abusive Registration the Domain Name must be one which "...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 has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights" (Paragraph 1, Nominet UK Dispute Resolution Service Procedure "the Procedure".)

Paragraph 3(a) of the Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These are as follows:

"Evidence of Abusive Registration

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;

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;

iii. 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; or

iv. It is independently verified that the Respondent has given false contact details to us."

In their complaint, the Complainant relies upon paragraphs 3(a)(i)(c) and 3(a)ii.

Paragraph 3(a)(i)(c)

The Complainant bases their claim under this sub-paragraph on their assertion that "Customers looking for the Complainant's Website will be confused into purchasing products from the Respondent's site and this will disrupt the Complainant's business by taking away a proportion of its customers." The policy requires that the Respondent has "registered or otherwise acquired the Domain Name; primarily for the purposes of unfairly disrupting the business of the Complainant."

It is quite clear that this is not the case here. The Respondent has registered the Domain Name as part of their plans to expand their business by trading via the Internet (see The Rug Company v Wonderland Rug Company DRS 00370). The site operated from this address is clearly a commercial Website and it is apparent the Respondent has invested a great deal of time and effort in developing the site and in its promotion. Despite the Complainant's rights in the name it is clearly a name which is in widespread use within the hairdressing industry (see Respondent's Contention no.2). Although in their reply the Complainant asserts "[w]hether or not 'Head Quarters' and its abbreviation are common in the hairdressing industry is irrelevant. The issue only relates to the Internet. (see Complainant's Reply Contention no.3) I must disagree. For the purposes of the claim under paragraph 3i(c) it is of relevance as it demonstrates honest concurrent use. Although there is little doubt confusion may occur it cannot be said that the Respondent acquired the Domain Name for the primary purpose of unfairly disrupting the business of the complainant, in fact the Respondent contends they were not even aware of the existence of the Complainant at the time of registering the Domain Name (see Respondent's Contention no.1) I am convinced the Respondent has not registered the Domain Name primarily for the purposes of unfairly disrupting the business of the Complainant in breach of the conditions of paragraph 3i(c) and reject this part of the Complainant's claim.

Paragraph 3(a)(ii)

The Complainant further contends that "the Respondent's use of the Domain Name confuses Internet users into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant" (see Complainant's Contention no.3) and that "the Domain Name is confusingly similar to the Complainant's trade marks" (see Complainant's Contention no.4). The Complainant further contends that "the content of the Respondent's Website is confusingly similar to the content of the Complainant's Website. The Complainant uses the "Hqhair" domain name to sell hair and beauty products and to advertise its hair salon services. The Respondent is also using the Domain Name to sell hair products and to advertise its hair salon services. In addition, the logo of the Respondent, as shown in the top right hand corner of the Respondent's home page is confusingly similar to the complainant's logo. The combination of both sites having 'HQ Hair' in their domain names, both sites being called 'HQ Hair', using similar logos, having the same content on the Website (both sites sell hair products and advertise hair salon services), causes a confusion that the Domain Name is in some way authorised or connected with the Complainant. Web users will be confused into believing that the products and services offered on the Respondent's Website are that of the Complainant." (see Complainant's Contention no.5).

The Respondent refutes this allegation contending that "The Respondent's Website is relevant only to two salons in Cheltenham whereas the Complainant has salons in London and sells goods over the Internet." (see Respondent's Contention no.4). Further, they contend that "The only way people learn about the Respondent's Website is by picking up a business card, reading an advert in the local University or via the Yellow Pages" (see Respondent's Contention no.6) and that "[a]s the Respondent does not sell on-line and operates in an entirely different geographical location from the complainant, there is no possibility of any detriment to the Complainant. People searching for the Respondent's business are likely to discover the existence of the complainant's on-line service to the benefit of the Complainant. There is no intention to disrupt the Complainant's business and no evidence that there has been any disruption. The use of the domain name is not unfair. It is not confusing - the hyphen is distinctive and would not be inserted unless someone knew the name of the Respondent's site - and it is not designed to capture the complainant's Internet audience." (see Respondent's Contention no.8)

In reply the Complainant asserts that, "[t]he Respondent's Website does not merely relate to two salons in Cheltenham. The nature of the Internet is such that the Respondent's Website reaches a worldwide audience, not restricted merely to the geographical area of Cheltenham." (Complainant's Reply Contention no.4); that "people may find out about the Respondent's Website in other ways. In any event, it is of no relevance how people find out about the Respondent's Website. What is of relevance is that the Domain Name is confusingly similar to the Complainant's name and points to a Website offering similar goods and services. There is a risk that customers of the Complainant may mistakenly order goods from the Respondent's Website, believing that they are ordering goods from the Complainant." (Complainant's Reply Contention no.6), and that "[t]he Respondent offers goods for sale over the Internet and receives orders online. Due to the nature of the Internet, the Respondent can take orders from any person in Britain (and in fact the world). [I]n the future, it is likely that the Respondent will process orders online. The use of the Domain Name is confusing and unfair. The Respondent does not have a registered trade mark incorporating the hyphen and does not provide any evidence that its use of the hyphen in the Domain Name has brought it substantial goodwill and therefore, distinctiveness. It is more likely that people will think the Respondent is connected with the Complainant."

Paragraph 3(a)ii requires 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." Having examined the rather detailed contentions of both parties and the Websites operated by both parties, I find that there is a likelihood of confusion. Firstly, despite the Respondent's contention that they do not sell products over the Internet (see Respondent's Contentions no.5 and 8) they undoubtedly do using a clearly labelled "order over the Web" facility. Secondly the style and presentation of the Respondent's Website is quite similar to the Complainant's. Despite these factors I find that the Complainant's claim under paragraph 3(a)( ii) has not been established. As was made clear in the decision PDG Graphics Ltd v PDGraphics Ltd DRS 00526 "evidence required under paragraph 3(a)(ii) [of] actual confusion." As was contended by the Respondent, "[t]he Complainant has put forward no evidence of any person having suffered any confusion as between the two sites nor any evidence of any detriment suffered by the Complainant." (see Respondent's Contention no.10). In their reply the Complainant offered no rebuttal of this contention. No evidence of actual confusion has been laid before the Expert. As was set out in PDG Graphics Ltd v PDGraphics Ltd DRS 00526 "[t]he difficulty for the Complainant is that although they are able to speculate upon the possibility of confusion arising they have failed to produce any evidence of actual confusion taking place. Paragraph 3(a)(ii) is clear, the Complainant must show evidence of actual confusion." The Complainant's submissions are therefore not sufficient in the Expert's opinion to establish a claim upon paragraph 3(a)(ii).

Other Factors

Paragraph 3 offers a non-exhaustive list of factors which may be evidence of an Abusive Registration. The Expert can therefore consider additional factors, such as whether there is anything else about the conduct of the Respondent or the facts of this case, which can justify the Expert coming to the conclusion that in the hands of the Respondent the Domain Name is an Abusive Registration. In at least two previous decisions Experts have considered whether they are entitled to rely upon the likelihood of confusion and the potential for disruption or detriment to a Complainant business arising out of the use of a Domain Name as being capable of amounting to an Abusive Registration, even though the criteria of paragraph 3(a)(ii) do not apply. In Jackson-Stops and Staff v Michael Jackson Stops Fanzine DRS 00073, the Expert concluded that the use of the domain name was unfairly detrimental to the complainant's Rights, due to the content of the Website being such that a person who was not familiar with the Complainant's business would get an erroneous view of the nature of the Complainant's business and may desist from any further attempt to find the Complainant's Website. In PDG Graphics Ltd v PDGraphics Ltd DRS 00526 the Expert similarly concluded that the likelihood of confusion and the potential for disruption or detriment to the Complainant's business arising out of the Respondent's use of the Domain Name was capable of amounting to an Abusive Registration notwithstanding that the Complainant had shown no actual confusion.

The Expert considers that even though the Complainant does not show actual confusion, it is overwhelmingly likely that there will be confusion. The Expert considers that it is likely that there will be confusion as the Complainant and the Respondent have virtually identical names and are trading in virtually the same products and services in the same geographical location (the Internet). As was noted by the Expert in PDG Graphics Ltd v PDGraphics Ltd DRS 00526 "[u]nder the English laws of passing off there is ample authority that initials or arbitrary combinations of letters may be distinctive, and that the use of confusingly similar letters will be restrained". Further the similarity of style and presentation of the two Websites increases the likelihood of confusion. On the basis of these factors the Expert finds in this case that there exists a likelihood of confusion. This carries the potential for disruption and detriment to the Complainant and on the basis of the decision in PDG Graphics Ltd v PDGraphics Ltd DRS 00526 this is capable of amounting to an Abusive Registration.

The final matter to be decided is whether the Respondent's use of the Domain Name is in fact abusive. On the basis of the above discussion it is clear that there exists a likelihood of confusion and that this may amount to an Abusive Registration on the basis of the decision in PDG Graphics Ltd v PDGraphics Ltd DRS 00526. In some key respects though this Complaint differs from that of PDG Graphics v PDGraphics. In particular, in the present case there is no clear evidence that the Respondent was aware of the Complainant's business at the time they registered the Domain Name or at the time they developed their Website (see Respondent's contention no.1). According to paragraph 4(a)(i)(A), the Respondent may establish that their registration is not abusive by providing evidence that: "before being informed of the Complainant's dispute, the Respondent has 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 or services." Further under paragraph 4(a)(i)(B) evidence that they have been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name can be used to establish that their use of the Domain Name is non-abusive. In this case the Respondent has entered claims under both provisions (see Respondent's Contentions nos. 9 and 2). In reply the Complainant has asserted that "Whether or not 'Head Quarters' and its abbreviation are common in the hairdressing industry is irrelevant. The issue only relates to the Internet" (Complainant's Reply Contention no.3) but does not dispute that the Respondent has used the Domain Name in connection with a genuine offering of goods or services.

Both the Claimant and the Respondent have made strong cases. The Claimant has established that under paragraph 3 of the Policy, and following the decision in PDG Graphics Ltd v PDGraphics Ltd DRS 00526 a prima facia finding of Abusive Registration may be entered. The Respondent asserts that they are making a fair use of the Domain Name to carry out their trade or business and that they are commonly known by the name HQ Hair, both of which may be evidence that the Domain Name is not an Abusive Registration under paragraph 4. The vital question as I see it is whether the Respondent was in good faith when they registered the Domain Name. We are told by the Respondent, in their response dated 12 December 2003, that they shortened their name from Headquarters to HQ Hair "about eighteen months" ago which would suggest the change in the Respondent's trading name occurred circa June 2002. The Domain Name was registered on 22 April 2002 which suggests it was registered contemporaneously with, or even before, the change in the Respondent's trading name. The Respondent claims they were unaware of the Complainant's business at the time they registered the Domain Name and set up their Website, and contends that the Complainant is not a famous international brand (Respondent's Response: Complainant's Reply Contention no.2). In reply the Complainant produces strong evidence to support just such a claim. Producing evidence of a US Registered Trade Mark, various US magazine articles and a list of customer countries of domicile which suggests that orders were received from sixty-four countries in the months 17 September - 17 December 2003 (Complainant's Reply Contention no.2). The question finally to be decided is whether the Respondent was truly unaware of the Complainant at the time of registering the Domain Name. There is no way to tell this for certain, but it is clear that the Complainant was a well known hair and beauty products supplier by April 2002 (Complainant's Contention no.11: In addition the Complainant provided a large media cutting file demonstrating extensive media coverage of the Complainant in the months of December 2001-April 2002). Given such extensive media coverage it is clear that the Complainant would have been well known in the hair & beauty industry. The change of name on the part of the Respondent and the subsequent (or contemporaneous) registration of the Domain Name on 22 April 2002 does seem to demonstrate a shift in the Respondent's business at that time from a small local hairdressing business named Headquarters to a business with an Internet (and therefore international) presence named HQ Hair. I believe that given the high media profile of the Complainant at this time that this cannot be described to be mere coincidence. I believe that consciously or unconsciously the Respondent, given their profession, must have been aware of the Complainant before they received the first letter of complaint from the Complainant's agents on 15 July 2003. Ultimately I find that on the balance of probabilities this is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it has been used in a manner which is designed to take unfair advantage of or is unfairly detrimental to the Complainant's Rights.

7. Decision

For the reasons set out above, namely that the Complainant has Rights in respect of the name or mark which is similar or identical to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name be transferred to the Complainant.

Andrew D. Murray

20 February 2004