Nominet UK Dispute Resolution Service

 


Kingspan Group plc v Mercia Flooring [2005] DRS 02807 (01 August 2005)

Nominet UK Dispute Resolution Service DRS Number 02807 Kingspan Group plc -v- Mercia Flooring

Decision of Independent Expert

1. Parties
Complainant's Details

Complainant: Kingspan Group Plc

Country: IE

Contact Details

Contact: Mr Gavan Ferguson

Business Name: F. R. Kelly & Co

Country: IE

Respondent's Details

Respondent: Mercia Flooring

Country: UK

2. Domain Name

kingspanraisedaccessflooring.co.uk, kingspanraisedfloors.co.uk, kingspanaccessflooring.co.uk ("the Domain Names")

3. Procedural Background

The complaint from F. R. Kelly & Co, on behalf of the Complainant, was lodged electronically with Nominet on 23 March 2005. Nominet wrote to both parties informing the Respondent of the complaint on 31 March 2005.

No response was received from the Respondent.

On 26 April 2005 Nominet wrote to both parties inviting the Complainant to refer the matter for an expert decision by 11 May 2005. Nominet received the fee for an expert decision and on 15 July 2005 invited Claire Milne to act in the case. On 18 July 2005 Claire Milne, the undersigned ("the Expert"), confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality. Her appointment as Expert in the case was dated 18 July 2005.

4. Outstanding Formal/Procedural Issues (if any)

None are outstanding. There was a longer than usual gap between Nominet writing to the Complainant and appointing the Expert. This was because Nominet inadvertently failed to take the fee.

The documentation submitted with the Complaint included:

•    Trademark details for Kingspan in the UK and the EU ('Annex 1').

•    Company details for Kingspan in the UK ('Annex 2').

•    Financial statements for Kingspan for 2003 ('Annex 2').

•    Press and other mentions for Kingspan in Ireland, the UK and the EU and on web sites ('Annex 3').

•    Annual reports and financial statements for Kingspan for 2002, 2001, 2000 and 1999 ('Annex 3').

•    Descriptions of products by Kingspan ('Annex 4').

•    Explanations of raised access flooring by Kingspan ('Annex 5').

•    A statutory declaration by T. Newman, Managing Director of Kingspan Access Floors Limited, about the dealings between Kingspan (and Hewetson Floors Limited) and Mercia Flooring ('Annex 6'). This had also six attachments:

•     Press mentions of the acquisition by Hewetson of the raised flooring access business of Thorsman ('Exhibit A').

•     Press announcements about the acquisition by Kingspan of Hewetson ('Exhibit B').

•     Annual sales figures about sales of raised access flooring by Hewetson to Mercia Flooring in 1999, 2000 and 2001 ('Exhibit C').

•     A letter from T. Newman of Kingspan Access Floors Limited to M.Thomas of Mercia Flooring dated 10 May 2001 saying that registering kingspanaccessfloors.com was "NOT exactly a politically sound act" ('Exhibit D').

•     Some sales figures for sales of raised access flooring by Kingspan to Mercia Flooring in 2003 ('Exhibit E').

•     Some sales figures and quotations for sales of raised access flooring by Kingspan to Mercia Flooring in 2004 ('Exhibit F').

•    Letters sent between F. R. Kelly & Co. and Mercia Flooring ('Annex 7').

•    Copies of web site pages including those for the Domain Names ('Annex 7').

•    WHOIS query results for the Domain Names ('Annex 7').

•    The complaint against the Respondent by the Complainant submitted to WIPO ('Annex 8').

•    Nominet decisions DRS 00077, DRS 00153, DRS 00248 (Appeal Panel), DRS 00262, DRS 00488, DRS 00593, DRS 00652, DRS 00784, DRS 01062, DRS 01368, DRS 01764 and DRS 01796 ('Annex 9').

•    A letter from F. R. Kelly & Co. to Nominet stressing the belief that the registrant of the Domain Names is the same legal entity as Mercia Flooring in all cases ('Annex 10').

A later, 'non-standard' submission comprised:

•    A letter from F. R. Kelly & Co. to Nominet referring to the decision in the WIPO case mentioned above.

The decision in the WIPO case has not influenced mine.

5. The Facts

The Complainant has traded under the name 'Kingspan' since 1972. Subsidiaries using extended versions of the name 'Kingspan' have been registered as companies in the UK since 1979; in particular, a subsidiary has been registered under the name 'Kingspan Access Floors Limited' since 31 May 2001, following its acquisition of Hewetson Floors Limited. It has had 'Kingspan' as a registered trade mark in the UK since 4 November 1988.

The Respondent registered the Domain Names on 8 May 2001.

The Complainant sent a fax on 10 May 2001 to the Respondent saying that registering kingspanaccessfloors.com was "NOT exactly a politically sound act".

The Domain Names have components under '.co.uk' that differ from the trade mark only by inserting some of the words 'raised', 'access', 'floors' and 'flooring' after 'Kingspan'.

The web sites for these Domain Names are used to describe the goods and services of the Respondent, including the ability to supply and install Kingspan access floors. They mention Kingspan and display the Kingspan logo.

The Complainant offers a service that includes managing the installation of Kingspan access floors by sub-contractors. Consequently the Respondent is a potential competitor to the Complainant as well as a potential customer of the Complainant.

The Respondent failed to accept an offer by the Complainant to buy the Domain Names for £250 each.

The Respondent also registered domain names under '.com' and '.net' related in the same way to the name of the Complainant.

6. Summary of the Parties' Contentions

The parties' contentions are summarised below, with paragraph numbering matching that used in section 8.

Complainant

The Complainant has Rights in the name 'Kingspan'. It has traded under, and been registered under, extended versions of the name 'Kingspan' for 20-30 years. It has had 'Kingspan' as a registered trademark since 4 November 1988 in the UK; it has also the same trademark in the EC and in several other countries. It is the market leader in raised access floors in the UK.

The Respondent has never had any right to use the trademark of the Complainant as a licensee, agent or distributor. The Complainant provides written permission to some dealers to use the Kingspan logo, but Mercia Flooring has never been one of those dealers. Mercia Flooring has sometimes purchased the products of Kingspan and has sometimes provided sub-contract labour to Kingspan.

The Respondent had at one stage an informal referral relationship with the predecessor of Kingspan Access Floors Limited (Hewetson Floors Limited) whereby the Respondent installed products of the Complainant. Some time after this relationship ended, and while the Complainant was telling customers that it was adopting the name 'Kingspan Access Floors Limited', the Respondent registered the Domain Names.

The Respondent registered the Domain Names to sell to the Complainant for sums much greater than the out-of-pocket expenses.

The Respondent registered the Domain Names to block the Complainant from using these or similar names.

The Respondent registered the Domain Names to disrupt the business of the Complainant by misleading potential customers into employing the Respondent instead of the Complainant. Doing this might even tarnish the reputation of the Complainant.

The Respondent is using the Domain Names in a way which has confused people into believing that the Domain Names are connected with the Complainant.

The Respondent is engaging in a pattern of registrations whereby the Respondent registers domain names, including the Domain Names, that correspond to well known names or trade marks in which the Respondent has no apparent rights.

The Respondent is using the Domain Names in a manner that takes unfair advantage of the rights of the Complainant.

The Respondent is using the Domain Names in a manner that is unfairly detrimental to the rights of the Complainant.

Respondent

The Respondent has offered no formal response.

However, in a letter to F. R. Kelly & Co. on 18 July 2002 the Respondent stated

The addresses have been acquired with a view to selling/marketing the Kingspan access floor products as Mercia Flooring and we will ensure that there is no confusion with any potential clients with regard to our identity and to the identity of the products being offered. The web address will allow us to come up when people search for Kingspan access floors and will therefore allow us the potential opportunity to offer our services

…we have traded for many years with Kingspan Access Floors (formerly Hewetson Floors Limited) and it is not unreasonable for us to purchase the available addresses with a view to growing our sales of Kingspan access floor products… we would have expected the site to have been purchased by your clients [Kingspan] prior to ourselves if the site was considered to have a value to them and we would suggest that the fact that it has taken more than twelve months for you to write to us [shows] that this is a reasonable view to have.

Moreover, in a letter to F. R. Kelly & Co. on 21 October 2004 the Respondent stated

I have found the web site [www.kingspanccessfloors.com] to be a valuable asset in terms of business enquiries. The other sites mentioned in your letter [the Domain Names and other domain names] are used as redirects to www.merciaflooring.com and I would agree that in these instances there may be a confusion as to the relationship between Mercia Flooring and Kingspan Group. I have therefore changed the redirects to go to www.kingspanaccessfloors.com and you will note that there is a clear note stating that the companies are not connected and Mercia Flooring is not a member of the Kingspan Group of companies.

You note that the web site features the unauthorised use of the Kingspan Access Floor Ltd. Logo. In reply I would mention that we have received no notification from your client company to forbid its use in advertising its products.

7. Discussion

Rights in the Name

The Complainant has supplied evidence that the Complainant has Rights in the name 'Kingspan' in the UK through its trademark (Annex 1). In its industry the Complainant is widely known by that name, and a subsidiary is widely known by the name 'Kingspan Access Floors Limited' (Annexes 2, 3, 4 and 5).

The Domain Names have components under '.co.uk' that differ from the trade mark only by inserting the words 'raised', 'access', 'floors' and 'flooring' after 'Kingspan'. These components differ from 'Kingspan Access Floors Limited' only in their choice of particular ones of these words (and the omission of 'Limited'). The words describe some of the goods and services of Kingspan Access Floors Limited: in the present context 'kingspanraisedfloors.co.uk', for example, is similar to 'kingspanaccessfloors.co.uk' in a way in which 'kingspanraisins.co.uk' might not be. Consequently I find that the Domain Names are similar to domain names formed from 'Kingspan Access Floors Limited' by appending '.co.uk' and omitting 'Limited'.

The Respondent has used the Domain Names to identify a web site. However, at no time has it had any claim on the name 'Kingspan', which it used purely because of the association with the Complainant. At the time of registration, even sales of Kingspan products to Mercia Flooring were low (Annex 6 Exhibits E and F). Internet searches show no other uses of 'Kingspan' by the Respondent.

Abusive Registration

The Nominet Dispute Resolution Service Policy ("the Policy") paragraph 1 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."

The Complainant has based the complaint on both clause i and clause ii.

Paragraph 3(a) of the Policy provides a non-exhaustive list of factors that may be evidence that the Domain Names is an Abusive Registration. Paragraph 4(a) of the Policy sets out a similar list of factors that may be evidence that the Domain Names is not an Abusive Registration. As these lists are non-exhaustive, the overriding consideration is the applicability of the definition of Abusive Registration. Still, the discussion below is focussed on relevant factors in the lists.

The Arguments for Abusive Registration

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 Respondent acquired the names at a time when the Complainant was telling people that it would be using the brand Kingspan Access Floors. The Respondent may well have known this. However, no evidence has been presented to indicate that the Respondent acquired the names for the purposes of resale. In fact the Respondent stated openly another reason for the acquisition and did not, according to the evidence, respond to the fax from the Complainant on 10 May 2001 by offering to sell the Domain Names (Annex 7).

A letter from the Complainant to the Respondent on 20 November 2002 shows that by that time the Respondent was willing to sell domain names to the Complainant (Annex 7). (The domain names discussed in the letter were kingspanaccessfloors.com and kingspanaccessfloors.net, not the Domain Names.) However, evidently the Respondent was not by then, willing to sell them for £250 each. This is perhaps not surprising, as the letters from the Respondent of 18 July 2002 and 21 October 2004 show that the Respondent thought that the names had value in generating new business (Annex 7).

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.

This case is much like 3(a)(i)(A). No evidence has been presented to indicate that the Respondent bore the Complainant any ill-will or was acting to restore the referral relationship that had existed some year previously with Hewetson Floors Limited.

3(a)(i)(C): Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.

This case is much like 3(a)(i)(A). No evidence has been presented to indicate that the Respondent bore the Complainant any ill-will or was acting to restore the referral relationship that had existed some year previously with Hewetson Floors Limited.

3(a)(ii): Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people into believing that that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

The Respondent agreed in the letter of 21 October 2004 that there could have been confusion but took steps to rectify this by ensuring that all the Domain Names pointed to a web site which said that the Respondent and Complainant companies were not connected (Annex 7). It is unfortunate that the possibility of confusion had to be pointed out to the Respondent. However, after the possibility was pointed out, the Respondent acted, and I consider that the wording on this web site could well be prominent and unequivocal enough to eliminate confusion, at least on the home page. (Moreover, if the eye were drawn to the hyperlinked logos on the page without reading this wording, as the Complainant suggested in the complaint to WIPO, then visitors might well 'click' on the Kingspan logo, not on the Mercia Flooring logo, if they already believed that they were on a Kingspan web site.)

The presence of the Kingspan Access Floor logo on the web site may not have been confusing or have created the impression of a closer relationship between the Respondent and the Complainant than actually existed. (Logos of other organisation frequently feature on web sites, though they do not tend to do so on home pages other than those funded by advertising.) The Respondent asserted, and the Complainant did not deny, that the Complainant had never forbidden the use of the logo (Annex 7). Nonetheless it would have been courteous of the Respondent to ask the Complainant for permission to display the logo.

Though the possibility of confusion may have been eliminated by the actions of the Respondent, the letters from the Respondent of 18 July 2002 and 21 October 2004 show that the Respondent was taking advantage of the rights of the Complainant in the name. The value of the name derived almost entirely from the business activities of the Complainant. I take the view that the advantage was 'unfair', as it had not been authorised by the Complainant.

I also accept that the use of the name by the Respondent could have been unfairly detrimental to the rights of the Complainant, as it could have attracted installation business away from the Complainant to the Respondent and could even have diverted sales away from the Complainant to other suppliers mentioned on the web site of the Respondent. No evidence has been presented to establish that this happened, but such evidence is even harder to find than evidence of confusion.

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.

There is such a pattern of registrations, comprising domain names under .co.uk, .com and .net related to Kingspan access floors (Annex 8). The Complainant is a UK market leader in access floors and can reasonably claim that its name is 'well known' for this purpose (Annexes 2, 3, 4 and 5). The Respondent has no apparent rights in this name.

The Arguments against Abusive Registration

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 Respondent has been using the Domain Names for genuine offerings of goods or services. Very soon after acquiring the Domain Names the Respondent was warned by the Complainant that acquiring kingspanaccessfloors.com was "NOT a politically sound act" (Annex 6 Exhibit D). Hence the Respondent was aware of the cause for complaint very early in the use of the Domain Names.

8. Findings about the Parties' Contentions

The numbering below matches that used in section 6.

Complainant

I accept that the Complainant has Rights in the name 'Kingspan', which is similar or identical to the Domain Names.

I accept that the Respondent has never had any right to use the trademark of the Complainant.

I accept that the Respondent registered the Domain Names when there was no close relationship between the Respondent and the Complainant.

I do not accept that the Respondent registered the Domain Names to sell to the Complainant for sums much greater than the out-of-pocket expenses.

I do not accept that the Respondent registered the Domain Names to block the Complainant from using these or similar names.

I do not accept that the Respondent registered the Domain Names to disrupt the business of the Complainant.

I do not accept that the way in which the Respondent is using the Domain Names has caused any significant level of confusion, by leading people into believing that the Domain Names are connected with the Complainant.

I accept that the Respondent is engaging in a pattern of registrations whereby the Respondent registers domain names, including the Domain Names, that correspond to well known names or trade marks in which the Respondent has no apparent rights.

I accept that the Respondent has used the Domain Names in a manner that takes unfair advantage of the rights of the Complainant.

I accept that the Respondent has used the Domain Names in a manner that is unfairly detrimental to the rights of the Complainant.

Respondent

I accept the claims by the Respondent about the intended use of the Domain Names.

9. Decision

I find that the Complainant has Rights in a name or mark which is similar to the Domain Names. I find that the Domain Names, in the hands of the Respondent, are Abusive Registrations. I direct that the Domain Names be transferred to the Complainant.

Claire Milne

1 August 2005