Nominet UK Dispute Resolution Service

 


Ford Motor Company, Jaguar Cars Ltd, Land Rover v Lee [2005] DRS 02520 (22 June 2005)

Nominet UK Dispute Resolution Service
DRS Number 2520
Ford Motor Company, Jaguar Cars Limited, Land Rover and Mr Danny Lee
Decision of Independent Expert
1. Parties:

Complainants: Ford Motor Company

Country: UK

Jaguar Cars Limited

Country: UK

Land Rover

Country: UK

Respondent: Mr Danny Lee

Country: UK

2. Domain Names:

fordevents.co.uk; jaguarevents.co.uk; landroverevents.co.uk; jaguarmaindealer.co.uk

3. Procedural Background:

05/04/2005 Dispute entered into system

05/04/2005 New dispute manually created

05/04/2005 Hardcopies received in full on: 01/04/2005

05/04/2005 Complaint validated

05/04/2005 Complaint documents generated

28/04/2005 Response due date amended by 1 working days because Response submitted by fax 27/4

03/05/2005 Response due date amended by 2 working days because response received electronically on the 27th but not imported

03/05/2005 Electronic Response entered into system

03/05/2005 Electronic Response matched

03/05/2005 Response hardcopies received on: 03/05/2005

03/05/2005 Forward response to complainant documents generated

05/05/2005 Non-Std electronic reply received: Emailed version of form

05/05/2005 Reply hardcopies received on: 05/05/2005

05/05/2005 Reply received and Initiate mediation documents generated

26/05/2005 Mediation documents generated

01/06/2005 Fees received from complainant on 01/06/2005

03/06/2005 Mr Chris Tulley selected as expert

4. Outstanding Formal/Procedural Issues (if any):

None

5. The Facts:

•    All three Complainants, Ford, Jaguar and Land Rover are world famous car manufacturers.

•    The Respondent registered fordevents.co.uk, jaguarevents.co.uk and landroverevents.co.uk on 7 April 2002 and jaguarmaindealer.co.uk on 26 April 2003.

•    The Respondent's business offers services related to marketing and promotional events for car dealers via a website at www.showroomevent.co.uk. Two of the Domain Names, fordevents.co.uk and jaguarevents.co.uk link to that website, whereas landroverevents.co.uk and jaguarmaindealer.co.uk both link to a domain name registration website at www.ukreg.com.

•    The Respondent's business trades as "Showroom Events" and "Showroom Events & Promotions", the latter name being said to be a trading name of Automotive Events Limited.

•    The Respondent has registered numerous domain names which incorporate famous trade marks owned by car manufacturers around the world.

•    In 2003 their was an exchange of correspondence between the Complainants' solicitors and Mr Daniel Cushway on behalf of Automotive Events Limited trading as Showroom Events & Promotions in which an allegation of passing off was denied. The letters from the Complainants' solicitors referred to two of the Domain Names, (fordevents.co.uk and jaguarevents.co.uk) and also two others (mazdaevents.co.uk and volvoevents.co.uk) which are not the subject of this complaint. The Complainants' solicitors wrote to Mr Cushway offering to reimburse the Respondent for reasonable registration costs in exchange for the transfer of the relevant Domain Names to the Complainants. Mr Cushway replied saying that he wished to deal with the Complainants direct rather than through its solicitors.

•    Accordingly on 12 August 2003 Mr Bob Drakeford of the Complainants telephoned Mr Cushway to discuss the possible transfer of the relevant Domain Names during which Mr Cushway offered to transfer them to the Complainants for around £5,000 being the price of a new Fiesta car that Mr Cushway was considering buying for his wife. That suggestion was confirmed in a subsequent email from Automotive Events Ltd to Mr Drakeford sent 2 days later on 14 August 2003. A printout of the email has been provided by the Complainants. I note that the email refers to a fax from Mr Drakeford sent earlier that day and to attached documents from "the Nominet web site" but these documents have not been provided.

6. The Parties' Contentions:

Complainants:

In summary the Complainants say that:

•    The Complainants have Rights in the marks FORD, JAGUAR and LAND ROVER, which are similar to the Domain Names, the words "events" and "main dealer" being merely descriptive.

•    The Domain Names are Abusive Registrations. In particular, the Complainant relies on several of the heads illustrated in paragraph 3 of the Policy.

•    Paragraph 3(a)(i)(A) - The Respondent's rejection of the Complainants' offer to reimburse reasonable registration costs, and the Respondent's subsequent offer to transfer/cancel the Domain Names in return for £5,000 or a new Fiesta car, strongly suggest that the Respondent registered the Domain Names for the purpose of selling or otherwise transferring the Domain Names to the Complainants for valuable consideration in excess of the Respondent's documented out-of-pocket costs.

•    Paragraph 3(a)(i)(B) - The Respondent has registered the Domain Names as a blocking registration against marks in which the Complainants have rights.

•    Paragraph 3(ii) - The Respondent is using the Domain Names in a way which is likely to confuse people or businesses into believing that it is authorised by or otherwise connected with the Complainants.

•    Paragraph 3(iii) - The Respondent has engaged in a pattern of registering a multitude of domain names which incorporate famous trade marks of car manufacturers around the world.

•    In view of the bad faith and knowledge of the Complainants' use of its Trade Marks the Respondent has not made use of the Domain Names in connection with a genuine offering of goods and services and due to the inclusion of the Complainants' marks, cannot be generic or descriptive or fair.

•    The Respondent has no legitimate connection with the names FORD EVENTS, LAND ROVER EVENTS, JAGUAR EVENTS or JAGUAR MAINDEALER.

•    The Respondent is using the Domain Names to promote and market its commercial services as a dealer event organiser. Accordingly the Respondent is not making a legitimate non-commercial use of the Domain Names.

•    In the circumstances, the Complainants assert that the Domain Names were registered or otherwise acquired in a manner which, at the time when the registration took place, took unfair advantage of or was unfairly detrimental to the Complainants' rights.

Respondent:

In summary the Respondent says that:

•    They have specialised in 'Ford Events' for 16 years and no confusion exists.

•    They have never approached anybody to sell the Domain Names and do not believe them to be Abusive Registrations.

•    New competition laws should be considered for all domain names.

•    Many companies specialise in serving consumers with certain types of product and companies like Ford should not be able to claim names like: fordrepairs - fordspareparts - fordusedparts - fordspares - fordcarrepairs - fordclassics - fordclassicshows - fordevents etc.

•    Passing off should be part of the test for an Abusive Registration.

•    Allowing "corporate bullies" to take over such domains names "spits in the face" of the European Commission's attempts to regulate anti-competitive behaviour.

•    They offer specialised Ford dealer based events to Ford dealers and Jaguar style events to Jaguar dealers.

•    All dealers book through their reputation rather than non-competitive 'forced practices'.

•    fordwheels.com is used by a company specialising mainly in ford wheels.

•    The fact that Ford have an 'event department' does not also mean they can have a claim to fordrepairs.co.uk or fordevents.co.uk.

•    It would be unjust and anti-competitive to allow Ford the right to everything that starts "Fordxxxx".

•    The registrations were not intended to be Abusive Registrations.

•    The fact that "others" are also registered clearly shows the registrations had no connection with any individual department of Ford.

•    Ford have 'direct instant contact' to all it's franchises, if they need to clarify matters.

•    Ford simply now want the Domain Names "for a UK project that seems to have arrived at the .com domains" (I am not exactly sure what this refers to)

The Complainants replied to the Respondent's contentions to say that whilst it was alleged that there were numerous domain names registered by third parties featuring the Complainants' names the Respondent had only put forward one, being fordwheels.com which Ford considers to infringe its trade mark rights and is considering what action to take.

7. Discussion and Findings:

General

In order to succeed the Complainants must prove, on the balance of probabilities, two matters, i.e. that:

8. The Complainants have Rights in respect of a name or mark which is identical or similar to the Domain Names; and
9. The Domain Names, in the hands of the Respondent, are an Abusive Registration.

These terms are defined in the Nominet UK DRS Policy as follows:

•    Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.

•    Abusive Registration means 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.

Complainants' Rights

The Complainants are world famous car manufacturers and have provided details of numerous trade mark registrations they hold for their respective names FORD, JAGUAR and LAND ROVER. I find that the Complainants do have Rights in their names FORD, JAGUAR and LAND ROVER.

The Domain Names are not identical to the names in which the Complainants have Rights as each one also has either "events" or "maindealer" added to the end. However, these additions are descriptive elements that follow the Complainants names of FORD, JAGUAR or LAND ROVER, which are a striking element of the respective Domain Names. The Domain Names are therefore similar. In the circumstances I find that the respective Complainants do have Rights in respect of a name or mark which is similar to the Domain Names.

Abusive Registration

From the matters relied on by the parties in their submissions the following parts of the paragraphs 3 and 4 of the Policy (respectively being factors which may be evidence that the Domain Name is or is not an Abusive Registration) are potentially relevant:

Paragraph 3 a. i. A "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name 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;

The Complainants allege that the Respondent must have had the Complainants in mind when registering the Domain Names and has taken unfair advantage of the goodwill and reputation in their trade marks. There are numerous situations in which it is perfectly acceptable for a third party to use another's trade mark without their express consent and the fact that the Complainants might have been in the Respondents mind when registering the Domain Names is not sufficient. It needs to be shown, on the balance of probabilities, that the Respondent had the Complainants (or their competitors) in mind for the purpose of selling etc the Domain Names to them for an inflated price.

The Complainants also rely on a telephone conversation and subsequent email between the parties representatives in which it was suggested that domain names including two of the Domain Names (fordevents.co.uk and jaguarevents.co.uk) would be transferred for about £5,000 being the cost of a Fiesta car. The other two Domain Names were not the subject of these communications between the parties.

I should note at this point that the correspondence and discussions between the parties prior to the complaint being made to Nominet UK was conducted by Mr Daniel Cushway on behalf of a company called Automotive Events Ltd (trading as Showroom Events and Promotions) whereas the Respondent is actually a "Danny Lee". However, the Respondent's response to the complaint was sent by a Mr Daniel Lee using the title "Events Director" and the business name as "Showroom Events" and quoting his email contact address as "daniel@showroomevents.co.uk". This is the same email address as used in the email exchange relied on by the Complainants when the verbal offer to transfer the Domain Names for £5000 made by Mr Daniel Cushway was confirmed by an email two days later, signed off as "Danny, director, Automotive Events Ltd". Both the verbal offer and the email offer referred to the fact that purchase of the Fiesta car was being considered for his wife.

It is not clear whether Mr Daniel Cushway and Mr Daniel Lee are one and the same person or whether there is a coincidence of two "Daniel's" involved with the events business to which two of the Domain Names link, who share the same email address and who each have a wife that is considering the purchase of a Fiesta car. However, I note that in his response to the complaint the Respondent took no issue with Mr Cushway's previous correspondence and offer to transfer two of the Domain Names and accordingly on the evidence before me I am proceeding on the basis that if they are not one and the same person then Mr Cushway had the Respondent's consent and authority in his dealings with the Complainants and their solicitors in relation to the Domain Names.

The Complainants have to show, on the balance of probabilities, that the Respondent has registered the Domain Names primarily for the purpose of selling them at an inflated price. In my opinion it is not enough to show that sometime after registering them the Respondent was prepared to sell them at an inflated price when the opportunity presented itself if there is reasonable evidence of a different primary purpose for registering the Domain Names.

Three of the Domain Names were registered in April 2002 and jaguarmaindealer.co.uk in April 2003 and the offer to sell was made in August 2003 in response to the Complainants' offer to pay out of pocket expenses. The Respondent said in correspondence that the relevant Domain Names were registered so that they could be directed to a specific section of their events business website relevant to Ford dealers.

I believe a distinction can be drawn between the fordevents.co.uk; jaguarevents.co.uk; and landroverevents.co.uk Domain Names on the one hand and the jaguarmaindealer.co.uk Domain Name on the other. All four have been treated the same by the Respondent but I cannot see any force in the Respondent's contentions that jaguarmaindealer.co.uk was registered a year after the first three for legitimate use in relation to their events business website. The Respondent's business is not a Jaguar main dealership and he offers no separate explanation for his registration of this Domain Name and indeed it is difficult to conceive of any legitimate reason for its registration and use by someone who is not a Jaguar main dealer. I also note that in fact this Domain Name links to a domain name registration website and not to the Respondent's events business website which is the claimed intention when registering it.

In the circumstances, I find on the balance of probabilities on the evidence before me that the jaguarmaindealer.co.uk Domain Name was registered by the Respondent primarily for the purpose of selling it 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.

However, I am not satisfied on the balance of probabilities on the evidence before me that the fordevents.co.uk; jaguarevents.co.uk; and landroverevents.co.uk; Domain Names registered in April 2002 were registered by the Respondent primarily for that purpose.

Paragraph 3 a. i. B "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights;"

Paragraph 4 a ii "The Domain Name is generic or descriptive and the Respondent is making fair use of it;

The Complainants allege that the Domain Names were registered as a blocking registration against marks in which the Complainants have Rights. No further details or argument are given in support of this contention.

The Respondent has given his reason for registering the Domain Names as set out above and effectively says that they are descriptive of his business of organising promotional events for Ford, Jaguar and Land Rover dealers.

For the reasons stated above I do not accept there is any force in the Respondent's stated reason in relation to the jaguarmaindealer.co.uk Domain Name. It is undoubtedly a name or mark in which Jaguar Cars Ltd has Rights and could not be used by the Respondent for any legitimate purpose.

In the circumstances, I find on the balance of probabilities on the evidence before me that the jaguarmaindealer.co.uk Domain Name was registered by the Respondent primarily as a blocking registration against a name or mark in which the relevant Complainant has Rights.

Whilst the Domain Names include a generic or descriptive element i.e. "events" or "main dealer" I do not accept that any of the Domain Names as a whole are generic or descriptive as they incorporate the Complainants' well known names and trade marks.

However, I am not satisfied on the balance of probabilities on the evidence before me that the fordevents.co.uk; jaguarevents.co.uk; and landroverevents.co.uk Domain Names were registered by the Respondent primarily as a blocking registration against a name or mark in which the Complainants have Rights.

Paragraph 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."

Paragraph 4 a i A "Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), 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;

The jaguarmaindealer.co.uk Domain Name links to a domain name registration website. Any Jaguar main dealership business is authorised or connected to the Complainant, Jaguar Cars Ltd, and anyone having any dealings with such a business is likely to be aware of this.

The Policy talks of use which "has" confused people, and the Complainants say that email correspondence had been received showing that "the Domain Names" had deceived people into thinking there was a connection with the Complainants' business but copies cannot now be located. The Complainants refer to all four Domain Names as having caused actual confusion, but no details can be given.

However, I am mindful of the fact that the list of factors set out in paragraph 3 of the Policy is expressly non-exhaustive; it is illustrative. I believe that use of the jaguarmaindealer.co.uk Domain Name by the Respondent would be likely to lead to the confusion envisaged by paragraph 3 a ii of the Policy. If the abuse identified in paragraph 3 a ii indicates an Abusive Registration, then so must anything likely to lead to such a situation.

Indeed it is not easy to envisage the circumstances where the jaguarmaindealer.co.uk Domain Name could be used by a party unconnected with the Complainant without leading to a likelihood of such confusion and infringement of the Complainant's trade mark or other rights in its name.

In relation to the other three Domain Names (fordevents.co.uk; jaguarevents.co.uk; landroverevents.co.uk) the crux of the case is whether the Respondent's use of the Domain Names goes beyond making the simple claim that the business using them is an independent business arranging events relating to Ford, Jaguar and Land Rover cars or whether they are likely to be taken as representing an official connection with or endorsement by the Complainants.

If it is the latter then I believe that would constitute taking an unfair advantage of or be unfairly detrimental to the Complainants Rights.

Paragraph 4 a i A of the Policy talks of use by the Respondent of the Domain Names in connection with a "genuine" offering of goods or services. Whilst the Respondent has a legitimate events business, and has used at least some of the Domain Names in relation to that business, if the use is taking an unfair advantage of or is unfairly detrimental to the Complainants Rights I do not believe that such use can be said to be in connection with a "genuine" offering in the meaning envisaged by the Policy.

The Respondent rightly points out that the Complainants cannot claim every domain name that happens to incorporate their name. There are numerous examples that could be thought of where such domain names would be unobjectionable, for example, "used-ford-cars-for-sale.co.uk". However, I am concerned here with these three particular Domain Names and which side of the line they fall.

The Respondent's contentions of anti-competitive behaviour by car manufacturers and the rather emotive language he uses does not have any relevance to the question to be decided here. Likewise, nor do the contentions that passing off should be a necessary ingredient for a finding of an Abusive Registration and that new competition laws should be considered to regulate domain names. I must base my decision on the evidence before me in accordance with the Policy as it is.

The Complainants say that actual confusion has happened with dealers contacting them to ascertain if they endorsed the Respondent's web site, but they cannot now give any details. I cannot dismiss that evidence out of hand but it is difficult to give it very much weight without details of who has been confused, how and why. The Respondent points out that their events business is aimed exclusively at authorised car dealers who know them well as an independent business and that in any event Ford have 'direct instant contact' to all its franchisees if they needed to clarify matters. There is certainly some force in the former of the Respondent's contentions but I give little weight to the latter. Indeed, if there was a need to clarify matters that would imply confusion is occurring or likely to occur otherwise nothing would need to be clarified.

One important point is that whilst the Respondent's business may be aimed at authorised car dealers who may know the Respondent's business, members of the public may also be interested in seeking information about, for example, new launch events by car manufacturers and their authorised dealers, and could assume that any website accessed via the Domain Names is connected to the Complainants.

On balance, I believe that the Respondent's use of these three Domain Name (fordevents.co.uk; jaguarevents.co.uk; landroverevents.co.uk) is likely to confuse people or businesses into believing that the Domain Names are registered to, operated or authorised by, or otherwise connected with the Complainants and in the circumstances such use takes an unfair advantage of and is unfairly detrimental to the Complainants Rights.

A point to note is that the landroverevents.co.uk Domain Name is currently being used to link to a domain name registration web site rather than to the Respondent's car events business website as in the case of fordevents.co.uk and jaguarevents.co.uk. The policy talks of the use being made by the Respondent causing confusion. This Domain Name was not the subject of the direct communications between the parties in 2003 and there is no direct evidence that the landroverevents.co.uk Domain Name is or ever has been used by the Respondent in connection with his events business. I note that no such point is taken by the Respondent and in the Respondent's response reference is made to the events offered by the Respondent as including "a Land Rover event may include off-road". However, I believe that the Land Rover name is so well known and exclusively associated with Complainant's business in the minds of the public that use by the Respondent in connection with any type of business would be likely to cause the sort of confusion envisaged by the Policy.

Paragraph 3 a iii "The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern."

The Complainants have identified 30 domain names registered by the Respondent that comprise the name of a well known car manufacturer followed by "events" or in two cases "maindealer" (the Complainants say 35 but only 30 are exhibited). They also rely on Mr Cushway's claim to have "200-300" domain names.

As the Complainants point out, they cannot prove beyond all doubt that any or all of these domain names are not authorised by the relevant car manufacturers but seek to infer on the balance of probabilities that so many well known car manufacturers would not have given permission. They point to the fact that the Respondent certainly did not seek permission from the Complainants in relation to the Domain Names. I can also take note of the fact that the Respondent could have responded with evidence of such approvals had there been any. In addition, I note the Respondent's contentions that the holding of such domain names is unobjectionable, which implies that he believes no permissions would be required from the relevant car companies involved.

In the circumstances I find on the balance of probabilities on the evidence before me that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern.

10. Decision:

For the reasons outlined above I find that the Complainants have proved, on the balance of probabilities, that they have Rights in respect of the names FORD, JAGUAR and LAND ROVER, being names or marks which are similar to the Domain Names, and that the Domain Names, in the hands of the Respondent, are Abusive Registrations.

In the circumstances I order that the Domain Names be transferred to the Complainants as requested by the Complainants i.e.

fordevents.co.uk: Ford

landroverevents.co.uk: Land Rover

jaguarevents.co.uk: Jaguar

jaguarmaindealer.co.uk: Jaguar

Chris Tulley

22 June 2005