Spicer Hallfield Ltd v Paul Schoeller Uk [2005] DRS 02791 (30 August 2005)
Parties:
Complainant: | Spicer Hallfield Limited |
Of: | GB |
Represented by: | Mr. James Cumming |
Respondent: | Paul Schoeller UK |
Of: | GB |
Disputed Domain Name: | spicer-hallfield.co.uk |
Abbreviations used in this decision:
Abbreviation | Definition |
DRS | Nominet UK's Dispute Resolution Service |
DRS Policy | Nominet UK's Dispute Resolution Service Policy as applicable after 25/10/04 |
DRS Procedures | Nominet UK's Dispute Resolution Service Procedures as applicable after 25/10/04 |
The Expert | Kirsten Houghton |
Procedural Background:
(a) The Respondent's address by post for the attention of Mr. Ralf Stahlmann, the contact name provided in Nominet's database;
(b) By e-mail to the Respondent's email address listed in Nominet's database and
(c) By e-mail to postmaster at the Domain Name.
Sorry I could not reply any earlier to you email.
However I had passed on your email to the person on who's (sic) behalf I had registered the domain, the same day I received your email.
I am back in the UK from my holiday on Monday and I will deal with the matter in the days thereafter.
I have no particulars available to me without looking up the details of the on and off attempts from this company over the past 6 years back at my office
PS. Something in your message causes Norto to consider your email as Spam and to remove it from the normal Inbox without asking.
"Respondent called and was angry that the deadline had passed. Wanted [Nominet} to roll back the dispute so he could respond – he has been on holiday.
[Nominet] said not because he sent an email to say he had the complaint and would deal with it on his return.
R said we should have guessed that he needed an extension.
[Nominet] explained 13b and how to make a [non-standard submission]
Outstanding Formal/Procedural Issues (if any):
The Facts:
(1) The Parties – the Complainant
(a) Alnery no. 2111 Limited (at incorporation)
(b) St. Regis Properties Limited (from 6th February 2001) and
(c) Decorprint Limited (between 11th April 2001 and 17th October 2002).
(2) The Parties - the Respondent
"The registrant is the UK Subsidiary of a German Company which used to distribute the Complainant's products in Germany"
but I have not been provided with any contemporaneous evidence to support this assertion.
(3) The Complainant's rights
- The Complainant has rights in the Domain Name because:
1(a) It is registered at Companies House under the name Spicer Hallfield Ltd and has been since 29 12 2000. See printouts from the companies house (sic) website marked a
1(b) It has the following registered Community trade mark Trade Mark No. 000635102 Spicer Hallfield Assigned 23/09/1997 See printout from OAMI website marked b
(4) The Complaint
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 primarily:
A. 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. 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. 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;
iv. It is independently verified that the Respondent has given false contact details to us; or
v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
A. has been using the domain name registration exclusively; and
B. paid for the registration and/or renewal of the domain name registration.
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.
c. There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).
- The registrant is the UK subsiduary (sic) of a German company which used to distribute the Compainants (sic) products in Germany. The UK subsiduary (sic) has never had rights to sell or distribute (sic) the Complainants (sic) products in either the UK or any other territory.
- The Domain Name in the hands of the Respondent is abusive because it was:
(a) primarily registered to unfairly disrupt my business because it was previously directed to a competitor website. www.verka.co.uk
(b) used by the Respondent in a way which already has confused people into thinking that it was controlled by me. The site at the domain name spicerhallfield.co.uk (sic) now displays a message which could confuse people into thinking that our website has closed or is currently unavailable. We have received telephone calls from a number of people who have indicated that they were under the impression that our website was down. See attached printout from the site www.spicerhallfield.co.uk (sic) dated 08 07 2005 marked c.
(5) Abusive Registration?
…the second arm of Paragraph 2(a) … places an effective burden on the Complainant. It is for the Complainant to prove on the balance of probabilities that the Domain Name, in the hands of the Respondent, is an Abusive Registration, that is that the Respondent is taking unfair advantage of, or is unfairly detrimental to the Complainant's rights. Were this Panel to accept the Appellant's contention that: "registration of the trade mark or name of an established business as a domain name by a customer of that business must raise at least a prima facie case of abusive registration", it appears that the second leg of this test would be substantially weakened. Simply by establishing a right in a name or mark in accordance with paragraph 2(a)(i), and a by providing evidence of a previous commercial relationship the burden of proof would switch to the Respondent. This Panel does not believe that simple knowledge of the Complainant and its names or marks is sufficient to attribute that the Respondent that they registered or have used a domain name in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. The Panel therefore rejects this contention. …
The majority Panellists note the argument made in the dissenting Opinion that there are some aspects of the Respondent's case that are less than wholly convincing; however, the majority Panellists consider that it is not for the Respondent to make a convincing justification of her use of the Domain Name, but rather for the Appellant to satisfy the tests in the Policy. It is not for the Panellists to impute or infer intent or make a convincing justification of her use of the domain, but rather for the Appellant to satisfy the tests in the Policy. It is not for the Panellists to impute or infer some adverse motives for selection of a name…
In this case the Complainant asserts that a registrant who registers as a domain name a name or mark belonging to someone else (and without adornment i.e. the identical name) and without any obvious justification for having done so has a case to answer. I tend to agree, but for safety's sake I would add that it has to be the sort of name, which at time of registration the respondent knew or is likely to have known was a name or mark of the complainant...
In my view, a person who registers (or accepts as a gift) a domain name which, to the registrant's knowledge constitutes the name or trade mark of another (and without adornment) has to be ready with a reasonable explanation. The less distinctive the name or trade mark in question, the easier it will be for the registrant to provide a satisfactory explanation. Indeed, in some cases, the circumstances may be such that no explanation is called for. On the other hand, the less likely the explanation, the greater the support that will be required.
(6) Decision
KIRSTEN HOUGHTON FCIArb.
30th August 2005