Complainant:
Rolling Center Limited
Country:
UK
Respondent:
Gates Systems Limited
Country:
UK
rollingcentre.co.uk (the "Domain Name")
The Complaint in this case was lodged with Nominet UK ("Nominet") on 4 October 2004, with hard copies received the following day. Nominet validated the Complaint on 8 October 2004 and notified it to the Respondent.
The Respondent submitted a Response on 2 November 2004, and Nominet notified it to the Complainant that same day.
On 8 November 2004 Complainant submitted a Reply.
The Complainant paid the appropriate fee to Nominet on 4 January 2005 for a Decision by an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (the "Policy").
On 11 January 2005 the undersigned, Christopher Gibson (the "Expert"), formally confirmed to Nominet that he knew of no reason why he could not accept the invitation to act as expert in this case and 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. The Expert's appointment was confirmed that same day.
The Complainant, based in Bradford, West Yorkshire, registered the company name Rolling Centre Limited on 7 April 2003. Due to a spelling error this name was subsequently changed to Rolling Center Limited (adopting the American spelling for the word "center"), confirmed by a special resolution of the company on 4 February 2004. The Complainant also subsequently registered the company name Rolling Centre Limited (the English spelling of "centre") on 8 April 2004, stating in the Complaint Form that this was done to prevent any third party from registering a name almost identical to the Complainant's name.
Complainant's agents registered the domain name www.rollingcenter.co.uk (using the American spelling for "center") on behalf of the Complainant on 26 September 2003, and the domain name was subsequently transferred to Complainant in July 2004. The Complainant began trading on-line at this domain name in April 2004 and uses it for its website in the UK.
Rolling Center SpA (Italy) ("Rolling Center Italy") is a business based in Italy that was established approximately 30 years ago. Rolling Center Italy exports gate automation products and accessories to approximately 52 countries. Rolling Center Italy registered the domain name www.rollingcenter.com on 23 October 2002.
Part of the background to this dispute relates to Complainant becoming, in 2004, the exclusive UK distributor for Rolling Center Italy products. Before that, Rolling Center Italy had supplied gate hardware to a number of different distributors in the UK, among them the Respondent and a company called RTS, which was operated by the same parties who established the Complainant.
Rolling Center Italy and RTS entered into negotiations in 2003, with RTS pursuing the objective of becoming the sole importer and distributor in the UK of Rolling Center Italy's hardware and accessories. Following approximately four months of talks, Rolling Center Italy and Complainant in 2004 entered into an exclusive distribution agreement for the import and supply of Rolling Center Italy's products.
The Respondent is Gates Systems Limited, incorporated in January 1997 and based in Membury, Berkshire. Like the Complainant, Respondent is also a distributor of gate automation products and accessories. Respondent states it has sold products manufactured by Rolling Center Italy since 1999, and started purchasing direct from Rolling Center Italy in 2001. Complainant has supplied records which confirm that Respondent purchased products directly from Rolling Center Italy between at least June 2001 and March 2004.
Respondent also confirms it sold a range of products from other suppliers. It appears that RTS, too, at least prior to 2004, had sold a range of gate automation products from suppliers including Rolling Center Italy. Gates Systems' product catalogue contains thirty-four pages of products, and details Rolling Center Italy products on three full pages and two further part pages.
Respondent registered the domain name www.gates.uk.com in January 2000. Respondent registered the domain names www.rollingcentre.co.uk and www.rollingcentre.com on 29 January 2004.
The parties' dispute over the Domain Name is reflected in correspondence dating from March 2004, when Respondent wrote to Rolling Center Italy expressing concerns that "your new UK distribution will sell to our existing customers" and "we do not feel comfortable competing with an official UK distributor who we feel is likely to contact our customers directly."
In the correspondence that followed both between Respondent and Rolling Center Italy, and between Respondent and Complainant, it becomes clear that Respondent continued to have concerns about losing customers to Complainant, and that it viewed the Domain Name as a bargaining chip in negotiations with Complainant and Rolling Center Italy.
On 5 April 2004 the Respondent emailed Rolling Center Italy, acknowledging that UK customers of Rolling Center products mis-spell the name:
"I (or anybody else) do not need authorisation to register a website in any name I want. I simply thought that UK buyers would spell your name wrong – They do! This site could have been registered by one of your competitors at any time… You should be pleased this has not happened and that you are gaining these sales."
In an email of 9 April 2004 to the Respondent, a representative Rolling Center Italy, supporting the position that the Domain Name should be transferred to the Complainant, expressed concerns about potential confusion: "You understand that Rolling Center UK's site has to be unique so that all prospects or customers can be channelled through this site and distributed to each area according to sales partitioning!" The representative of the Respondent replied: "I have no problem with forwarding all traffic from www.rollingcentre.co.uk to www.rollingcenter.co.uk , but that "[a]ll I want is to agree that the business we have developed over the past four or five years will not be interfered with…"
Following a meeting between the parties, Complainant made a written proposal to Respondent on 5 May 2004 concerning how the parties could continue to work together with Respondent continuing to distribute Rolling Center gate automation products. The proposal was specifically conditioned on transfer of two domain names from Respondent to Complainant:
"The conditions only apply if you transfer the domain names www.rollingcentre.co.uk & www.rollingcentre.com to Rolling Center UK Ltd…"
Following this proposal, discussions between the parties broke down. Respondent in an email of 19 May 2004 stated, among other things, that "any relationship we had with Rolling Center Italy or UK is now terminated." Complainant engaged counsel, who sent a letter to the Respondent on 8 June 2004, which engendered an immediate reply from the Respondent. No further progress was made to resolve the dispute between the parties.
A Nominet WHOIS search shows that on 29 January 2004, the Respondent Gate Systems Limited registered the Domain Name www.rollingcentre.co.uk. Throughout the relevant period in this case, it is undisputed that when the Domain Name is entered into an Internet browser, the following web site appears:
Complainant
Complainant submits that it has rights in the name "Rolling Center" because it is known in the UK within the gate automation trade and by customers by this name, and that the Domain Name is almost identical to the domain name used by the Complainant for its business. It is literally similar and phonetically identical. The only difference between the two domain names is the spelling of the word "center". The Complainant's domain name uses the American style of spelling with "er" while the Domain Name uses the English style of spelling with "re".
Complainant asserts that the Respondent's registration of the Domain Name is abusive. Complainant's reasons are summarized as follows:-
i. Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
ii. Complainant has rights to the use of the Domain Name whereas the Respondent has none: Respondent has acquired neither trade mark nor service rights in the Domain Name, cannot be said to be commonly known by the Domain Name (unlike Complainant who is known by a very similar domain name), and Respondent's business has no connection with the name.
iii. Respondent has used and 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. Respondent registered the domain name www.rollingcentre.co.uk on 29 January 2004 (before sending the letter noted above to Rolling Center Italy in March 2004), and until the week beginning 14 June 2004, the Domain Name automatically re-directed to the Respondent's website at www.gates.uk.com. The Domain Name currently re-directs to the website at the domain name www.gates.com and displays the message copied above.
iv. Complainant is aware of and has evidence of confusion having been created amongst its customers by the registration of the Domain Name by Respondent.
v. The Domain Name is not being used in good faith and Respondent has no interest in maintaining the registration of the Domain Name other than to prevent Complainant from registering it.
vi. Respondent is not making any legitimate use of the Domain Name. Respondent's registration of the Domain Name is designed to divert legitimate enquiries away from the Complainant by unfair means and will cause confusion to interested parties. Any interested party accessing the website located at the Domain Name in an attempt to find details of the Complainant's products will instead access details leading to a competitor's website containing competing products.
vii. Complainant is currently unable to put details of its website on marketing and promotional materials because of the risk that customers will be confused by the Respondent's registration of the Domain Name and contact the wrong website. Complainant is thus unable to market to customers and potential customers to its fullest potential as a consequence of the registration of the Domain Name by Respondent.
The Complainant seeks the transfer of the Domain Name.
Respondent
In its Response the Respondent has made a number of contentions (aside from certain points already recited in the background above) which are summarized below:-
i. Gates Systems have promoted Rolling Center Italy products in the UK for over five years and created a large turnover in the south of the UK, with goods purchased and promptly paid for during this period. Over a five year period Gates Systems have spent more than Complainant marketing these products.
ii. The English spelling of 'centre' as opposed to the American 'center' prompted Gates Systems to register the name rollingcentre.co.uk.
iii. Over the past few years Gates Systems has registered UK websites for a number of other Italian manufacturers whose products it markets, including bft.co.uk and seav.co.uk. This is not an unusual practice and helps market products in the UK.
iv. The Domain Name was registered by Respondent prior to the Complainant registering a company of the same name.
v. Having stocked, marketed and sold Rolling Center Italy products for a number of years, Gates Systems was surprised and upset by the Complainant's approach and demands: that Complainant was now the UK importer and Gates Systems would have to purchase from Complainant; and that Gates Systems must transfer the Domain Name to Complainant. Respondent contends that Complainant's "attitude was both arrogant and unacceptable to our company."
vi. Respondent asserts in addition that "[w]e have used the domain name in question to sell products from the manufacturer Rolling Center Spa and for no other reason. Gates Systems Ltd have been selling Rolling Center products longer that the Complainant. Gates Systems Ltd have marketed Rolling Center products at great expense to our company. Gates Systems Ltd still hold Rolling Center products in stock."
vii. Respondent concludes that the Domain Name is not an abusive registration and Respondent is not passing off as another company.
Complainant's Reply
In its Reply Complainant takes issue with several of the points in Respondent's Response, such as which company spent more money marketing Rolling Center Italy products, or which company had been marketing them longer.
Complainant confirms that at no time did Rolling Center Italy consent to the Respondent registering any domain names using their name "Rolling Center" or, with the English spelling, "Rolling Centre".
Complainant asserts that during 2003 the Respondent was aware that Rolling Center Italy was seeking to establish a UK-based exclusive distributor of its products and that it did not come as a surprise to Respondent in 2004 when Complainant was chosen to be this exclusive distributor.
Complainant states that its attitude and approach to Respondent was not arrogant or unacceptable. Instead, a detailed proposal by Complainant to allow for the parties to co-exist within the gate automation industry was discussed and set out in the Complainant's letter of 5 May 2004. The proposals were conditional upon the transfer of the Domain Name by the Respondent to Complainant.
Finally, Complainant takes issue with Respondent's statement in the Response that it used the Domain Name only to sell products from Rolling Center Italy and for no other reason. Referring to the notice copied above, Complainant contends that it has been admitted by Respondent that the Domain Name was used to direct customers and potential customers to the website of the Respondent, and then to sell a range of gate automation products which have not been manufactured by Rolling Center Italy.
General
Under paragraph 2 of the Policy the Complainant must prove, on the balance of probabilities, that:
i. the Complainant has Rights in respect of name or mark which is identical or similar to the disputed Domain Name; and
ii. the Domain Name in the hands of the Respondent is an Abusive Registration.
With respect to the first of these two requirements, there are two specific factors to be considered: first, does Complainant have "Rights" in respect of the name or mark, and second, is the name or mark "identical or similar" to the disputed Domain Name? "Rights" includes but is not limited to rights enforceable under English law.
Complainant's Rights
The Complainant has been doing business as Rolling Center Limited since February 2004 (after correcting an error in the spelling of its name), with its initial registration of Rolling Centre Limited dating back to April 2003. The Complainant registered the domain name rollingcenter.co.uk through its agent in September 2003, and began trading on-line at this domain name in April 2004. In 2004 Complainant and Rolling Center Italy entered into an exclusive distribution agreement for the UK. Rolling Center Italy has consented to Complainant's use of the Rolling Center name in the UK. Complainant is known within the gate automation trade and by customers by that name. Respondent does not seek to dispute this.
Complainant therefore has rights in respect of the name Rolling Center.
Further, it cannot be disputed (and the Respondent has not sought to dispute) that the Complainant's name is similar to the disputed Domain Name. The Domain Name rollingcentre.co.uk comprises the word 'rollingcentre' and the suffix '.co.uk'. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to disregard the domain suffix. Other than the suffix, the only difference between Complainant's name and the Domain Name is the spelling of the word "center". Complainant's name uses the American style of spelling with "er", while the Domain Name uses the English style of spelling with "re".
Accordingly, the Expert finds that the Complainant has Rights in respect of a name which is similar to the Domain Name.
Abusive Registration
The real question is whether Respondent's registration or use of the Domain Name is Abusive. An "Abusive Registration" is defined in paragraph 1 of the Policy as a domain name which either:
i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or
ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
A non-exhaustive list of factors, which may be evidence that the domain name is an Abusive Registration, is set out in paragraph 3(a) of the Policy. In particular, Complainant has asserted facts and contentions which raise the following:
3(a)(i)(B) and (C): Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name "as a blocking registration against a name or mark in which the Complainant has rights" or "primarily for the purpose of unfairly disrupting the business of the Complainant."
3(a)(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.
In this dispute it is clear that there have been some testing commercial tensions between the parties, particularly as Complainant shifted into the role of exclusive distributor for Rolling Center Italy products in the UK. Although the Complainant has effectively alleged bad faith on the part of the Respondent, the Expert is persuaded by the reasoning of the Appeal Panel in Seiko UK Limited -v- Designer Time/Wanderweb, DRS 00248 (19 July 2002) ("Seiko"). There, the Panel stated that "questions of good or bad faith are unhelpful", and instead indicated that "[t]he Policy prefers to base its analysis of abusiveness on 'unfair advantage' and 'unfair detriment'.
The Seiko case is instructive because it involved similar (but not identical) factual circumstances. The respondent in that case was a local distributor of Seiko's products and Seiko was the complainant. The respondent had registered two domain names: seiko-shop.co.uk and spoonwatchshop.co.uk. The domain names incorporated Seiko's respective trade marks, SEIKO and SPOONWATCH. The respondent, however, claimed that its activities were legitimate, that its registration and use of the two domain names was for the purpose of trade in goods which it legitimately sells (Seiko watches), and that this was to the benefit of Seiko's business.
The Appeal Panel stated that the essence of what it had to decide in that case was:
"whether or not the registration and use of a domain name incorporating a supplier's registered trade mark together with other non-distinctive characters, by a legitimate trader in that supplier's goods, but without the approval of the supplier, takes unfair advantage of the Complainant supplier's rights."
The Appeal Panel reasoned first that, if the domain names in question were liable to create the impression that there was something approved or official about their website, this would constitute unfair advantage being taken by the respondent or unfair detriment caused to Seiko. Indeed, there was evidence of some confusion in the case among customers.
The Appeal Panel also expressed its view concerning one of the non-exhaustive factors noted above, which may be evidence that a domain name is an abusive registration: circumstances indicating that the respondent has registered or otherwise acquired the domain name "primarily for the purpose of disrupting the business of the Complainant." The Appeal Panel stated as follows:
"In our view 'primarily' is not the same as 'only' and although a domain name registrant may start out with the best of intentions, if the effect of his actions is to give rise to confusion and to disrupt a Complainant's business then he has fallen foul of this paragraph in the Policy."
The Appeal Panel further noted: "That it is unfair for a mere agent to appropriate to himself the trading style of his principal is a well-established principle of UK and international law." The Appeal Panel thus determined it was unfair for the respondent in that case to appropriate Seiko's trade marks as domain names.
Although the facts in the instant case are somewhat different, the differences only serve to reinforce a conclusion that the Domain Name in the hands of the Respondent is an abusive registration.
First, unlike in Seiko the Domain Name is virtually identical to the Complainant's company name and existing domain name: rollingcenter.co.uk.
Second, Respondent registered the Domain Name at a time when it was still distributing Rolling Center Italy's products and possibly before it was aware of the changes in 2004 to the UK distribution arrangements. Assuming a view most favorable to the Respondent, it presumably considered that its distribution of Rolling Center Italy's products entitled it to register the (mis-spelled) name, although it had no rights to the name, was not commonly known by the name, and had not sought Rolling Center Italy's consent to use the name. Even without more, the Seiko decision above would call into question whether Respondent had taken unfair advantage of, or caused unfair detriment to Rolling Center Italy (if not yet to the Complainant), particularly if we consider that through usage Rolling Center Italy may have acquired rights in the Rolling Center name in the UK.
Under the Policy, however, the Expert considers not only whether the domain name registration took unfair advantage of or was unfairly detrimental to the Complainant's Rights "at the time when the registration or acquisition took place". The Expert also considers whether the Domain Name "has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
Here, the Expert takes guidance from the Appeal Panel's statement in Seiko: "although a domain name registrant may start out with the best of intentions, if the effect of his actions is to give rise to confusion and to disrupt a Complainant's business then he has fallen foul of this paragraph in the Policy."
The facts in this case confirm that this has occurred. Respondent acknowledged in its Response that the English spelling of the word "centre" prompted it to register the Domain Name. In the email of 5 April 2004 to Rolling Center Italy the Respondent's representative states "I simply thought that UK buyers would spell your name wrong – They do!" He then warns of the risk if the site had been registered by a competitor - this is exactly what the Respondent has become. Given the confusion between the two domain names caused by the minor difference between the British and American spellings, Respondent's representative even offered to forward traffic: "I have no problem with forwarding all traffic from www.rollingcentre.co.uk to www.rollingcenter.co.uk. This offer was not put into practice.
Although Respondent has stated that "[w]e have used the domain name in question to sell products from the manufacturer Rolling Center Spa and for no other reason," the notification currently on the web site contradicts this statement. Instead, it invites potential customers not only to consider the remaining "Rolling Center stock which we shall be pleased to supply at discounted rates", but "[f]rom August 2004 onward we will have a comprehensive stock of an alternative range of high quality gate hinges and hardware at very competitive prices."
Respondent may have commercial concerns for preserving its existing customers. These concerns, however, do not justify registering the Domain Name which closely corresponds to the Complainant's name, withholding it from the Complainant, and now using it to attract potential customers in competition with the Complainant. This is not the proper means to address the commercial concerns that stand between the parties.
Accordingly, the Expert finds that the registration of the Domain Name has been used to create confusion, to unfairly disrupt the business of the Complainant, and as a blocking registration against a name in which the Complainant has rights.
The Expert therefore concludes that it has been established, on the balance of the probabilities, that the Domain Name in the hands of this Respondent must be considered an Abusive Registration.
The Expert finds that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the disputed Domain Name, rollingcentre.co.uk, be transferred to the Complainant.
Christopher Gibson 26 January 2005