1717
DRS 1717
NOMINET-UK DISPUTE RESOLUTION SERVICE
B E T W E E N :
FRUIT OF THE LOOM INC.
Complainant
- and -
NEAL FENNA
Respondent
__________________________________________
DECISION OF INDEPENDENT EXPERT
__________________________________________
Appointment
1. I was appointed, by a letter dated the 5TH July 2004 to decide, under the DRS Procedure, a complaint of Abusive Registration. I am required to give my decision by the 23rd July 2004.
Terminology
2. In this Decision:
· “Nominet” means Nominet-UK
· “the DRS Procedure” means Nominet’s current dispute resolution procedure
· “the Policy” means Nominet’s current dispute resolution policy
· “the Domain Name” means the domain name “fruitoftheloom.co.uk”
Materials
3. I was provided with the following initial materials:
(1) Dispute History
(2) Complaint
(3) Response
(4) Reply
(5) Standard correspondence between Nominet UK and the parties
(6) Register entry for fruitoftheloom.co.uk
(7) Nominet WHOIS query result for fruitoftheloom.co.uk
(8) Printout of website at fruitoftheloom.co.uk
(9) Copy of Nominet UK’s Policy and Procedure.
The Complaint
4. The Complainant asserts that the Domain Name in the hands of the Respondent is an “Abusive Registration”.
5. The Complaint, which is dated the 26th April 2004, is made by Clifford Chance, solicitors, acting on behalf of the Complainant. The substance of the Complaint is as follows: -
(1) The Complainant is the manufacturer and distributor in the UK and elsewhere of the extremely well known FRUIT OF THE LOOM range of products.
(2) It is the proprietor of numerous UK and Community Trademark registrations for its FRUIT, FRUIT BRAND and FRUIT OF THE LOOM trademarks and “FRUIT” devices consisting of representations of bunches of fruit.
(3) At all material times, the Complainant’s merchandise has carried the well known FRUIT OF THE LOOM mark and its highly distinctive “FRUIT” logo. The Complainant’s FRUIT OF THE LOOM products have been sold in the UK and elsewhere for many years and have been advertised and promoted on a very substantial scale.
(4) Its products are promoted, in particular, on its websites (at www.fruitoftheloom.com which has links to its USA website: www.fruit.com and its European website: “www.fruitoftheloom.be), through advertisements, point of sale promotional materials, trade publications and catalogues.
(5) The Complainant has established a very substantial reputation and goodwill in its marks. The Complainant, therefore, has Rights in respect of a name or mark which is identical or similar to the domain name www.fruitoftheloom.co.uk (“the Domain Name”).
(6) In February 2004, the Complainant’s legal department became aware of the registration of the Domain Name.
(7) The Domain Name was registered in the name of “CHC” with an address given of 20 Welbeck Road, Worsley, Manchester. CHC’s agent was listed as www.thechc.com. Investigations of this name revealed that it resolved to a website promoting the “Christopher Holland Consultancy” with the same address as given for CHC, namely 20 Welbeck Road, Worsley, Manchester. The Domain Name did not resolve to any active website.
(8) Given the Complainant’s enormous reputation and goodwill in its FRUIT and FRUIT OF THE LOOM marks, it was and remains the Complainant’s view that it is inconceivable that CHC was not aware of the Complainant’s rights at the time it applied for registration of the Domain Name. In the circumstances, the only possible explanation for the registration of the Domain Name is that CHC registered it:
· 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 its out of pocket costs directly associated with registering the Domain Name;
· As a blocking registration against the Complainant’s FRUIT OF THE LOOM name or mark; or
· Primarily for the purpose of unfairly disrupting the Complainant’s business.
Any use of the Domain Name by anyone other than the Complainant will inevitably confuse people or businesses into believing that the Domain Name is operated or authorised by or otherwise connected with it. As a result, there is simply no conceivable legitimate use which could be made of the Domain Name by anyone other than the Complainant.
(9) CHC appears to be engaged in a pattern of making registrations comprising or consisting of well known names or trademarks of third parties. In particular, but without limitation, the Complainant relies on the registrations of the following:
thetweenies.co.uk
pavarotti.co.uk
maseratis.co.uk
thyroxine.co.uk
paypal.me.uk
alsthom.co.uk
jasonnevins.co.uk
scan-paul.co.uk
All of these domain names consist of the names and/or trademarks of persons or entities which appear to be unrelated to CHC.
(10) The Complainant’s solicitors, therefore, wrote to CHC on 12 March 2004 requesting the transfer of the Domain Name.
(11) By its response, dated 12 March but not in fact received at the offices of Clifford Chance until on or about 2 April, CHC asserted, amongst other things:
· That a representative of the Complainant (unnamed) had previously contacted CHC and agreed to purchase the Domain Name for £750 (+VAT) but had subsequently “changed their mind”.
· That it had sold the Domain Name. Subsequent enquiries have revealed that the Domain Name is now (and has been since on or about 27 March 2004, namely some time after Clifford Chance’s initial letter to CHC) registered in the name of Neal Fenna (the Respondent).
(12) The Respondent has not provided any contact details disclosed by the Complainant’s enquiries and the Domain Name does not resolve to any active website.
(13) As to the first of the allegations referred to in paragraph 11 above, no details have been provided as to the circumstances in or date on which the alleged communication between the Complainant and CHC is supposed to have taken place. Even if true, the allegation as well as the alleged sale to the Respondent merely serves to underline that the main or dominant motive of CHC in registering the Domain Name was to sell it for valuable consideration in excess of CHC’s direct out of pocket expenses since those expenses cannot, in the Complainant’s submission, have amounted to £750.
(14) As to the second allegation, even if it is true that the Domain Name has been sold to the Respondent, this, in the Complainant’s submission, in no way alters the Complainant’s assertion that the Domain Name was an Abusive Registration when originally registered.
(15) In any event, it is inconceivable that the Domain name has been purchased by the Respondent in good faith in ignorance of the Complainant’s rights. Given the Complainant’s enormous reputation and goodwill in its FRUIT and FRUIT OF THE LOOM marks. In the Complainant’s submission the only possible explanation for the Respondent acquiring the Domain Name is that it acquired it:
· 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 its out of pocket costs directly associated with acquiring it;
· As a blocking registration against the Complainant’s FRUIT OF THE LOOM name or mark; or
· Primarily for the purpose of unfairly disrupting the Complainant’s business.
(16) Accordingly, the Domain Name, in the Complainant’s submission, remains an Abusive Registration following and notwithstanding the alleged “sale” of it to the Respondent.
(17) The Complainant submits, in all the circumstances, that the www.fruitoftheloom.co.uk domain name is an Abusive Registration within the meaning of Nominet UK’s DRS policy. The Domain Name, for the reasons given above:
(i) was registered in a manner which, at the time when the registration took place, took unfair advantage of and/or was unfairly detrimental to the Complainant’s rights; and/or
(ii) has been used by CHC in a manner which takes unfair advantage of and/or is unfairly detrimental to the Complainant’s rights; and/or
(iii) was acquired by the Respondent in a manner which, at the time when the acquisition took place, took unfair advantage of and/or was unfairly detrimental to the Complainant’s rights and/or
(iv) has been used by the Respondent in a manner which takes unfair advantage of and/or is unfairly detrimental to the Complainant’s rights.
Response
6. The Respondent’s Response is in the following terms:-
“I purchased this domain name with the intention of setting up an ecommerce website to sell Fruit of the Loom products. This website is currently being constructed for me. It has been alleged by the complainant that I registered the domain name abusively but this is incorrect as I did not register the domain name, the domain name was already registered and I purchased the domain name off the original registrant CHC Internet and can produce documentary evidence of this. I have to say that I am disappointed that CHC Internet did not see fit to inform me of any such dispute at the time of my purchase. I have never received any communication whatsoever from Fruit of the Loom or its representatives and was unaware of any complaint or dispute regarding this domain name. I do not want to sell this domain as I have a business plan for the development of the forthcoming website.”
Reply
7. The Respondent’s assertions that he purchased the Domain Name with the intention of setting up an e-commerce website to sell the Complainant’s products and had no knowledge of the Complainant’s dispute with the original registrant of the Domain Name, CHC are challenged by the Complainant. The Reply includes the following assertions and arguments:-
(1) The Respondent does not indicate the nature of his relationship with CHC, nor has he provided any explanation as to how he came to select the Domain Name or how he came to acquire it from CHC.
(2) A review of the original registrant’s internet website prior to the transfer did not reveal any evidence that the Domain Name was publicly being offered for sale. The transfer of the Domain Name into the name of the Respondent took place very shortly after the initial letter from the Complainant’s solicitors dated 12 march 2004 to CHC. In the circumstances, there are strong grounds for a finding that the Respondent is in some way connected with the original registrant.
(3) It is clear that the Domain Name was, when registered by CHC (the original registrant), an abusive registration for the reasons identified in the Complainant’s Complaint. Given the grounds for inferring a connection between the CHC and the Respondent, the Complainant submits that all the grounds applicable to CHC in support of a finding that the Domain Name was and is an abusive registration should be considered to apply equally to the Respondent.
(4) Although the Respondent claims to have documentary evidence of his purchase of the Domain Name and to have a business plan for his proposed e-commerce business, he has not provided copies of any relevant documents nor any supporting evidence to substantiate these claims.
(5) The Complainant has no knowledge of the Respondent and, in those circumstances, considers the Respondent’s claim that he intends to set up a website to sell the Complainant’s products to be highly improbable.
(6) The Complainant submits, therefore, that there is every basis for a finding on the balance of probabilities that the Respondent is in some way connected with the original registrant and that the Domain Name has been transferred into the name of the Respondent solely in order to seek to overcome the Complainant’s Complainant. The Complainant submits that such conduct is, in itself, sufficient for a finding that in the hands of the Respondent the Domain Name is an abusive registration.
(7) Even in the absence of a finding that CHC and the Respondent are connected parties and that they should be treated as such for the purposes of this Complainant in the Domain Name in the hands of the Respondent in an abusive registration in that it takes unfair advantage of and is unfairly detrimental to the Complainant’s rights.
(8) The Respondent has not adduced any evidence of any demonstrable preparations to use the Domain name within para 4 a.i.A of the Policy.
(9) On the balance of probabilities the Respondent acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant (within para 3.a.1.A of the Policy), as a blocking registration (para 3.a.i.B) and/or primarily for the purposes of unfairly disrupting the business of the Complainant (para 3.a.i.C).
(10) The Respondent has asserted that he intends to set up an e-commerce business to sell the Complainant’s products and that this is underway with a website under construction. For the reasons given, the Complainant believes that this is not the real reason for the transfer of the Domain Name into the hands of the Respondent. However, if the Respondent has a website under construction and a business plan for the sale of the Complainant’s products, this will inevitably confuse and have confused people or businesses with whom the Respondent has dealt or might in future deal into believing that the Domain Name is being operated or authorised by or otherwise connected with the Complainant (see, DRS Policy para 3.a.ii).
(11) The Complainant believes it is abundantly clear that members of the trade or public seeing a website used or proposed to be used in connection with the supply of FRUIT OF THE LOOM merchandise under the Domain Name would be bound to assume it to be the official or authorised website of the Complainant. Customers would inevitably see “fruitoftheloom.co.uk” as the Complainant’s UK web presence: it is the most direct and obvious name for the Complainant or its UK subsidiary to use in the UK for a UK-based website. In the event the Domain Name is used for an e-commerce website selling clothing, customers and other members of the trade or public would be bound to assume that this is the Complainant’s own website.
Further Material
8. In a letter to Nominet dated 6 July 2004 I gave a direction in the following terms:-
“The Complainant has filed a detailed Reply making points not made in the original Complaint. The Respondent has not made any response to that Reply.
I would like the Respondent to have a further opportunity to respond to the Reply, and, if he so wishes, to send copies of any supporting documents, such as the documentary evidence which he referred to in his original Response.
Accordingly, I would be obliged if you would inform the Respondent and the Complainant that I am prepared to take into account a response to the Complainant’s Reply and any further documentation which the Respondent would like to rely upon provided that I am in receipt of the same by 6.00pm on 16 July 2004.”
9. The Respondent commented on the Reply in a letter dated 7 July 2004, with which he enclosed a copy of an invoice dated 21 march 2004 issued to CTLD Design Limited, in the sum of £300 plus VAT for “The sale of the domain name fruitoftheloom.uk”. In the letter the Respondent commented:-
“I was offered the domain name from CHC, as in the past I have purchased many names either from CHC or through CHC using CHC nominet tag, yes I do a substantial amount of business through CHC.
I was phoned by CHC who informed me of a name that he had acquired, there was no mention of a DRS, so for sure the CHC used me to offload the name, I agree totally with that, it was my intention to use the name and setup an e-commerce site to sell their products.
CHC knows that I am a web designer as I have built many sites for them, his phone call to me was to ask if I was looking for a good name to use for e-commerce and when he told me the name I jumped as it the cost was £700 + VAT (invoice attached).
After hearing from the DRS I phoned CHC and demanded my money back, NO was the answer and he found it amusing, since then I have moved all .co.uk names away from CHC.
The complainant is wrong in saying my intention was the same as the CHC, I was caught out by CHC, after getting the first notice of a pending DRS I immediately offered the name to the complainant for the price of my payment to CHC.”
The letter is written on the notepaper of CTLD Design Ltd.
10. I gave the Complainant an opportunity to comment upon the Respondent’s letter. Clifford Change provided such comment under cover of a letter dated 9 July 2004. Those comments included the following:-
“1. The Respondent asserts that he was telephoned by CHC to ask him whether he was interested in purchasing the Domain Name to use for e-commerce. On the basis that he felt the cost to be low, the Respondent submits that he then agreed to purchase the Domain Name. This account of the circumstances under which the Respondent obtained the Domain name is, in the Complainant'’ submission, highly implausible. As the Complainant has submitted in greater detail in its previous Reply, the far more likely explanation is that the Respondent is in some way connected with the original registrant and that the transfer of the Domain Name was effected solely in an attempt to seek to overcome the Complainant'’ Complainant. Accordingly, the Complainant submits that these two parties should be treated as connected parties in this manner.
…
3. The Respondent merely reiterates his assertion that it was his intention, in purchasing the Domain Name, to set up an e-commerce website to sell the Complainant’s products, whilst still failing to provide any evidence whatsoever in support of this assertion. No details of the alleged business plan referred to in the Respondent’s previous Response are provided, nor is any documentary evidence adduced to substantiate this claim; neither is any evidence presented in support of the existence of the website - intended to be used for the purpose of selling the Complainant’s products - which the Respondent alleges to be under construction.
4. … The Complainant submits that the Respondent’s bare assertion that he purchased the Domain Name with the intention of setting up an e-commerce website is wholly implausible. …
5. The Respondent asserts that, immediately upon notice of a pending DRS Complaint against him, he offered to sell the Domain Name to the Complainant for £700 plus VAT. This assertion seeks inappropriately to raise in these proceedings negotiations conducted on a without prejudice basis during the mediation process. More fundamentally, it is also misleading in a number of respects. Notice of the Complaint was sent to the Respondent on 30 April 2004. On that same day, the Respondent submitted a Response asserting that he did not wish to sell the Domain Name, as he intended to use it. It was over two weeks later - on 18 May 2004 - that the Mediator contacted the Complainant with an offer by the Respondent to sell the Domain Name for £700. This suggests, in the Complainant’s submission, that this fee was specifically set to be as large as possible while still being less than the cost to the Complainant of proceeding with the Complaint, rather than being a genuine reflection of the Respondent’s out-of-pocket expenses in acquiring the Domain Name.
6. Further, the fact that the Respondent offered to sell the Domain Name to the Complainant does not, as the Respondent appears to suggest, indicate a legitimate intention on the part of the Respondent to use the Domain Name. To the contrary, this assertion serves to reinforce the Complainant’s submission that the real reasons for the Respondent acquiring the Domain Name are those set out in paragraph 15 of the Complaint.
7. No attempt is made in the Respondent’s Response to deal with the Complainant’s contention that any use of the Domain Name by anyone other than the Complainant would inevitably confuse people or businesses into believing that the Domain Name is operated or authorised by or otherwise connected with it. Even if the Respondent`s assertion that he intends to set up an e-commerce business to sell the Complainant`s products were the real reason for the Respondent`s acquisition of the Domain Name -which is not accepted - any such use would inevitably confuse people or businesses with whom the Respondent has dealt or might in future deal into believing that the Domain Name is being operated or authorised by or otherwise connected with the Complainant …”.
Jurisdiction
11. Under paragraph 2a of the Policy the Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that
“i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name: and
ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration”.
12. Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.
Rights
13. Paragraph 1 of the Policy defines “Rights” as including but not being “limited to, rights enforceable under English law”. This definition is subject to a qualification which is not material.
14. The Complainant has provided detailed information as to its registration as proprietor of the trademark FRUIT OF THE LOOM. This is not challenged by the Respondent. Further, the Respondent has not challenged the Complainant’s assertion that it has a website www.fruitoftheloom.com which has links to its USA website www.fruit.com and to its European website www.fruitoftheloom.be. The operation of such websites predicates the existence of contractual rights to operate them under those names. Even those trademarks and contractual rights which are dependant upon foreign law would be “enforceable under English law”.
15. In the circumstances I am satisfied and find as a fact that the Complainant has rights enforceable under English law as proprietors of UK and foreign trademarks in the name FRUIT OF THE LOOM, and as registrants of the domain names referred to in paragraph 14 above.
16. Plainly these are not identical to the Domain Name (“fruitoftheloom.co.uk”), but in my judgment they are similar, and I so find.
Abusive Registration
17. 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;”
18. The Policy provides:
“3. Evidence of Abusive Registration
a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:
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.
b. Failure on the Respondent’s part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.
4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration
a. A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is 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 or 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.
b. Fair use may include sites operated solely in tribute to or criticism of a person or business, provided that if:
i. the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts Rights, without any addition; and
ii. the Respondent is using or intends to use the Domain Name for the purposes of a tribute or criticism site without the Complainant’s authorisation.
then the burden will shift to the Respondent to show that the Domain Name is not an Abusive Registration.”
19. There are some curious features to the Respondent’s account of his activities. He describes himself as a web designer who has purchased many names from or through CHC. He does not assert that hitherto he has been trading in goods.Yet asserts that he purchased the Domain Name with the intention of setting up an e-commerce website to sell Fruit of the Loom products.ie to start a wholly new business,trading in goods. Again, although he states that was his intention, he has not challenged the Complainant’s assertion that it (the source of those products) has no knowledge of him.
20. Nevertheless, it seems to me that the Respondent’s own case establishes that the Registration is Abusive. He does not challenge the Complainant’s claim that its products enjoy an enormous reputation and goodwill. Indeed it is implicit in his asserted desire to trade the Complainant’s products via the Domain Name that he regards it as one which would be associated with those products.
21. In the Reply the Complainant asserted [see paragraph 7(11) above]
“The Respondent has asserted that he intends to set up an e-commerce business to sell the Complainant’s products. Even if, which is not accepted, this is the real reason for the Respondent’s acquisition of the Domain Name, any such use will inevitably confuse people or businesses with whom the Respondent has dealt or might in future deal into believing that the Domain name is being operated or authorised by or otherwise connected with the Complainant, Members of the trade or public are simply bound to assume that a “fruitoftheloom.co.uk” website used or proposed to be used in connection with the supply of FRUIT OF THE LOOM merchandise is the official or authorised website of the Complainant or in some way connected with the Complainant.”
The Respondent has not sought to contradict this assertion, which in my judgment is well founded. I am satisfied that if the Respondent were to put his plan into effect he would be using the Domain Name in a way which would be likely “to confuse people into believing that the Domain Name is registered to, operated, or authorised by, or otherwise connected with the Complainant”.
22. Whilst it is true that paragraph 3ii of the Policy requires evidence of actual use of the Domain Name and of actual confusion, the list of factors in paragraph 3 of the Policy is stated to be “non-exhaustive”. Even if one accepts the Respondent’s assertion that he was innocent of the dispute at the time when he acquired the Domain Name, he plainly acquired it with a view to making use of the goodwill of the name associated with the Complainant without any prior consultation with the Complainant and without the Complainant’s consent. Thus I am quite satisfied that the Domain was “acquired in a manner which, at the time when … the acquisition took place, took unfair advantage of (and) was unfairly detrimental to the Complainant’s Rights” within the meaning of Paragraph 1 of the Policy.
23. In the light of my finding in the preceding paragraph it is not necessary to consider the other grounds on which the Complainant bases its case, all of which questions the Respondent’s veracity.
Decision
24. For the reasons given above, I find that the Domain Name was acquired in a manner which at the time when the acquisition took place took unfair advantage of and was unfairly detrimental to the Complainants’ Rights and, in the hands of the Respondent, is an Abusive Registration.
25. The Complainant has requested the transfer of the Domain Name. On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Name should now be transferred to the Complainant as it requests.
David Blunt QC
Date: 19 July 2004