Complainant: The Procter & Gamble Company
USA
Respondent: Ms Anne-Marie Morgan
GB
pringles.co.uk ("the Domain Name")
The Complaint was lodged with Nominet on 22 April 2005. Nominet validated the Complaint and informed the Respondent on 27 April 2005 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days (until 20 May 2005) to submit a Response. A Response was received on 4 May 2005 and a copy was sent to the Complainant on 6 May 2005. The Complainant filed a Reply on 12 May 2005. The informal mediation stage did not result in a resolution and the parties were informed accordingly. On 17 June 2005, the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 7 of the Nominet DRS Policy Version 2 ("the Policy").
On 24 June 2005 Nominet appointed Andrew Clinton ("the Expert"). The Expert has confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as expert in this case, and further confirmed that he knows 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 Response was not signed by the Respondent or her authorised representative. The Expert addresses this issue in paragraph 7 below.
The Domain Name was registered on 1 December 2004 in the name of A Morgan.
6.1 Complaint
The Complaint, so far as is material, is as follows:-
The Complainant has rights in the Domain Name, pringles.co.uk because they are the proprietor of the trade mark PRINGLES which is used in the UK and elsewhere around the world in respect of a range of snack products. The Complainant has registered the PRINGLES name as a trade mark before the UK Trade Marks Registry, the Community Trade Marks Office and many other countries in the world. Full details of the Complainant's UK and Community Trade Mark registrations and applications are attached at Annexe 1 hereto. These details are provided from the online databases of the UK Trade Marks Registry (www.patent.gov.uk) and the Community Trade Mark Offices' online database (www.ohim.eu.int/en/). Although some of these trade marks also contain device elements, it can be seen that the word PRINGLES appears prominently in each of the marks. The earliest of the UK marks dates back to 5 May 1993 (UK registration no.B1535053), more than ten years prior to the registration of the pringles.co.uk domain name by A. Morgan.
Moreover, the complainant has built up very substantive goodwill and reputation in the PRINGLES name as a result of the use they have made of this trade mark in the USA since 1972 and in the United Kingdom since 1991. Attached at Annexe 2 hereto, are samples of the current PRINGLES range of products which is available in the UK and elsewhere in the world. Substantial sums have been spent advertising the PRINGLES products in the United Kingdom including television, radio and print advertisements. Marketing spend is on average between 15-30 million US $ per year and TV advertisements appear on air in the UK on average of 42 weeks out of 52, i.e., 80% of the time. Sales of the Complainants PRINGLES products have been extremely successful. These products are widely available throughout the UK in supermarkets, convenience stores, Off licenses, groceries, cinemas and general stores. There is between 65-70% distribution across all supermarkets, hypermarkets and cash and carrys. Turnover for the UK in the fiscal year July 2003 to July 2004 was GBP 123.8 million with approximately 30 thousand tons of PRINGLES sold. PRINGLES represents more than 8% of the market share of the total snack sales market (see Annexe 3). 5 million Pringles cans are sold each day at Christmas time. We are attaching at Annexe 4 hereto, a presentation prepared by Procter & Gamble of Pringles brand history.
There is to the Complainants knowledge, no prior relationship between the registrant, A. Morgan and The Procter & Gamble Company. We attach at Annexe 5 hereto, a copy of the letter which we sent to the registrant's representative on 24 January 2005 asking for the voluntary transfer of the Domain Name, pringles.co.uk to the Complainant. We confirmed in our letter that the Complainant would be prepared to compensate the registrant for registration and maintenance costs of the Domain Name up to this date. On Friday 4 February 2005, we were telephoned by Pipex Communications who indicated that they were passing our letter onto their client, with their recommendations. A copy of the telephone attendances memo for this conversation is attached at Annexe 6 hereto. On 8 March 2005, having heard nothing from the Complainant, we telephoned Pipex Communications and were advised that they had also heard nothing from the registrant. They promised to chase their client and get back to us with anything to report. We indicated that if we had not received a response by close of business on Friday 11 March 2005, we would be preparing a complaint to file at Nominet the following week. A copy of the telephone attendance memo from 8 March 2005 is attached at Annexe 7 hereto. Having received no response, we are now preparing this complaint.
We believe that the Domain Name pringles.co.uk in the hands of the respondent is abusive for the following reasons. Firstly, it is clear that Pringles is an invented name in which our client has established substantial goodwill and reputation over at least the last ten years. Our client has numerous trade mark registrations as documented at Annexe 1 hereto and has made substantial sales of their product throughout the United Kingdom, considering the extent of these sales and the considerable advertisements of the Pringles products, we believe that the registrant, A. Morgan must have been aware that the name PRINGLES denoted our client's product and trade mark. We therefore believe that the Domain Name pringles.co.uk was registered primarily to stop the Complainant registering this domain name to reflect their trade mark rights. The registrant has ignored the Complainant's reasonable request to take a transfer of the name, reimbursing the registrant for their expenses. The Registrant has established no legitimate business under the pringles.co.uk Domain Name. The website presently points to the website of 123 Reg which is a web hosting page.
We believe that the registration of the Domain Name causes detriment to our client by preventing them from establishing a legitimate website under the pringles.co.uk Domain Name, reflecting their established business activities in the PRINGLES name in the United Kingdom. We are submitting the following documentation with complaint (to be sent by post with hard copy of complaint). Annexe 1 – full details of the Complainant's UK and Community Trade Marks Annexe 2 – samples of current PRINGLES range of products Annexe 3 – Internet information re: PRINGLES Annexe 4 – presentation of Pringles brand history Annexe 5 - copy of the letter sent to the registrant on 24 January 2005 Annexe 6 – copy of the telephone attendance memo dated 4 February 2005 Annexe 7 – copy of the telephone attendance memo dated 8 March 2005.
Remedy requested – transfer of Domain Name.
6.2 Response
The Response, so far as is material, is as follows:-
I only registered this domain name in the last few weeks and I have almost completed a website from which I will be trading as "Pringle Ironing Services". I attempted to secure the domain name "pringle.co.uk" first but that name had already been taken. Notwithstanding the complainant's documented communications with 123-Reg prior to my receipt of these DRS proceedings, I have never been made aware of any correspondence regarding this domain by 123-Reg or the complainant. At no time have I offered to sell this domain to the complainant and have no wish to do so.
The complainant's absurd assertion that the "Pringles" name is "manufactured" and that somehow they possess unilateral global rights in that name is patently false. A very perfunctory Google search reveals literally thousands of businesses and individuals with the name "Pringle" and dozens of businesses in the UK alone with the name "Pringles". These businesses include Pringles Coach Park, Scotland Pringles Snack Bar, Lambeth Pringles Bar, Glenurr, Kirkcudbrightshire Pringles Ingle, a friendly family-run Bed and Breakfast in Edinburgh Pringles Jewellers Haigh Hall, Wigan.
I appreciate that I am only a small sole trader and that Procter and Gamble is one of the largest corporations in the World. I am also aware that the makeup of the DRS panel is comprised almost exclusively of intellectual property solicitors acting for major corporations. This is akin to having juries in criminal law trials comprised of serving police officers and is extremely unfair. I respectfully ask that the appointed pannelist set aside his normal bias towards large multinational corporations and instead judge this case on the facts. As well as rejecting the complainant's request to transfer the domain name to them I respectfully request that the Expert deem this case to have been one of reverse domain name hijacking.
6.3 Reply
The Reply, so far as is material, is as follows
In the response it was alleged that: 1) The relevant domain name had only been registered in the last few weeks. This is untrue because the WHOIS information shows that the domain name was registered on 1 December 2004, more than five months previously (see WHOIS details at Annex 1 hereto). 2) The respondent states that they registered the domain name "pringles.co.uk" as they intend to trade as Pringle Ironing Services, and found that the domain name "pringle.co.uk" was not available. However, it will be noted that the domain names "pringleironing.co.uk" and "pringle-ironing.co.uk", for example, are both available and would seem perfectly apt to describe the respondent's Pringle Ironing services (see details at Annex 2 hereto). 3) The respondent also asserts that notwithstanding the documentation filed with this complaint, they have never been made aware of any correspondence regarding this domain name. It might be noted, however, that since it was the registrant who declined to provide any contact information on the WHOIS database, it was necessary for the complainant to correspond with the registrant's agent which was, at the time, Pipex Communications Hosting Limited (see Annex 3 detailing former WHOIS results). In addition, given Pipex Communications' direct assurances that they would be contacting the registrant, the complainant had every reason to assume that their concerns would be passed on. 4) With regard to the registrant's assertions regarding the Pringles name, whilst it is accepted that "Pringle" is a surname in the United Kingdom, a "Google" search for "Pringles" in the plural form reveals that this name denotes almost exclusively the complainant's products. Attached at Annex 4 hereto is the first 20 results from a search of "Pringles" on the "Google" website. It will be noted that 19 of the first 20 results relate to the complainant's products. Although the respondent has alleged that there are "dozens of businesses in the UK alone with the name Pringles", they have not provided any evidence to this effect and the "Google" search attached hereto would suggest that this is not in fact the case. 5) It is denied that this is a case of reverse domain name hijacking. It is pointed out that the respondent has provided no evidence to this effect. Documentation in Support of Reply: Annex 1: WHOIS details for "pringles.co.uk" Annex 2: WHOIS details for "pringleironing.co.uk" and "pringle-ironing.co.uk" Annex 3: Former WHOIS results for "pringles.co.uk" Annex 4: "Google" search results for "pringles"
7.1 Complainant's RightsUnder paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities: firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and, secondly that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. This is usually demonstrated by reference to a trade mark registration or evidence of active trading using the name or mark in question. In this case, the Complainant relies upon both its registered and unregistered rights in the mark PRINGLES. The Complainant has a series of trade mark registrations at the UK Trade Marks Registry and at the Community Trade Marks Office that include the word PRINGLES. In addition, the Complainant claims, and has provided evidence to substantiate, that it has built up considerable goodwill and reputation in the brand PRINGLES through use of the brand in the UK since 1991. It is clearly a highly successful brand; sales of Pringles represent more than 8% of the market share of the total snack sales market.
The Expert is satisfied that the Complainant has rights in respect of the mark PRINGLES which is identical to the Domain Name (disregarding, for these purposes, the generic domain suffix).
7.2 Abusive Registration
Abusive Registration is defined in paragraph 1 of the Policy to mean 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.
Non-exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy 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 Nominet; 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.
Under paragraph 3b of the Policy failure 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.
It is clear from the wording of the Policy that the list of factors at paragraph 3 is non-exhaustive and that a Complainant can succeed in proving Abusive Registration without the need to prove any of those factors. However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.
Non-exhaustive factors – paragraph 4 of Policy
There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy.
Under paragraph 5(c)(ii) of the Procedure the Response shall include any grounds that the Respondent wishes to rely upon to rebut the Complainant's assertions in the Complaint including any relevant factors set out in paragraph 4 of the Policy.
The one factor relevant to the facts in this case is paragraph 4(a)(i)A of the Policy, which, so far as is relevant, is that 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 in connection with a genuine offering of goods or services.
Discussion and findings regarding Abusive Registration
The Complainant asserts that the Respondent registered the Domain Name primarily as a blocking registration to stop the Complainant from registering the Domain Name and to prevent the Complainant from establishing a legitimate website using the Domain Name. In support of this, the Complainant claims that the name PRINGLES is an invented name, that the Respondent must have been aware that PRINGLES denoted the Complainant's products (given the extent of the sales and advertising of those products) and that the Respondent has not established a legitimate business under the Domain Name. The Complainant points out that the Domain Name points to a website of 123 Reg, which is a web hosting page.
The Complainant also seeks to rely upon the fact that the Respondent ignored its requests to transfer the Domain Name. The Respondent says that she was not aware of the approaches made by the Complainant which (as she had elected to have her address omitted from the WHOIS database) were sent to her agent. The Expert makes no finding on this point.
The Respondent rejects the Complainant's assertion that the PRINGLES name is manufactured as absurd and argues that the Complainant does not have universal global rights in the name PRINGLES. The Respondent says that a Google search against PRINGLES produces dozen of businesses with that name. The Complainant counters that by supplying a Google search for PRINGLES in the plural form (as opposed to PRINGLE, which is a relatively common surname) which, it claims, reveals that the name PRINGLES denotes almost exclusively the Complainant's products.
As a matter of law, the fact that the Complainant has a trade mark for PRINGLES does not mean that the Complainant is permitted exclusive use of that mark for all purposes; that exclusivity is restricted to certain classes within certain territories. It is perfectly possible for more than one business to have rights in the same name. However, what is at issue under the DRS is whether the Domain Name, in the hands of the particular Respondent, is an Abusive Registration. The wider issues raised by the Respondent do not assist in establishing whether the definition of Abusive Registration has, on the facts of the particular case, been satisfied or not.
The Respondent offers an explanation for her choice of the Domain Name. She says that she had almost completed a website from which she intended to trade as "Pringle Ironing Services" and that she tried to register the domain name pringle.co.uk but that had already been registered. The Complainant, in the Reply, points out that the domain names pringleironing.co.uk and pringle-ironing.co.uk (which, it is said, seem apt to describe the Respondent's proposed business) are both available and the Complainant has produced copies of WHOIS searches demonstrating this.
This case involves a domain name that is identical (ie without any adornment) to a very well known brand and a Respondent who makes an assertion that she has made preparations to use the Domain Name in connection with a genuine offering of goods or services. However, the Respondent has not produced any evidence to support that assertion.
These issues are similar to those that were before the Expert, and subsequently the Appeal Panel, in the Viking Office Products, Inc. v Wenda Sparey case (DRS 02201) ("the Viking Case"), which concerned the domain name "Viking Direct". In the Viking case there was an assertion by the Respondent that she had used the Domain Name in connection with a genuine offering of goods and services but the Respondent did not supply any corroborating evidence. The Expert found, on the facts of that case, that the Complainant had failed to demonstrate that the Domain Name, in the hands of the Respondent, was an Abusive Registration.
One of the grounds of appeal was that the Respondent had not substantiated her assertion that she operated a business under the name "Viking Direct". By a majority, the Appeal Panel found that the Expert was right to conclude that the Complainant had failed to prove that the Domain Name was an Abusive Registration. The majority panellists concluded that it is not for the Respondent to make a convincing justification of her use of the Domain Name but it is for the Complainant to satisfy the tests in the Policy. They said that there was no evidence produced by the Complainant to establish that there is no genuine business behind the Domain Name and, even if that was the case, the mere lack of a (business) use of a Domain Name does not, per se, give rise to a finding of Abusive Registration. The minority panellist felt that the Respondent had filed a Response which lacked credibility and was not supported by any corroborating evidence. He took the view that the approach of the majority panellists meant the Complainant was in effect being asked to prove a negative.
It is of course for the Complainant to prove that the two elements of the test set out in paragraph 2a of the Policy are present on the balance of probabilities. The Expert is obliged to decide the complaint on the basis of the Parties' submissions, the Policy and the Procedure (paragraph 16a of Procedure). It is for the Expert to determine the admissibility, relevance, materiality and weight of the evidence (paragraph 12b of the Procedure).
Whilst this case raises similar issues to the Viking Case it is different in two important respects. In this case the Respondent does not rely upon actual use of the Domain Name but on preparations for use. Paragraph 4(a)(i)A refers to both use and preparations for use but in relation to the latter the preparations for use must be "demonstrable". The second difference, the effect of which is addressed below, is that the Response in this case was not signed.
As mentioned above, the Respondent has not provided any supporting evidence to demonstrate the preparations that she says were made to use the Domain Name in connection with a genuine offering of goods or services. Indeed, all that the Expert has before him on this point is a simple assertion in the Response in the following terms:-
"I only registered this domain name in the last few weeks and I have almost completed a website from which I will be trading as "Pringle Ironing Services". I attempted to secure the domain name "pringle.co.uk" first but that name had already been taken."
In most cases the Response is signed by the Respondent (or the authorised representative) to confirm, to the best of the Respondent's knowledge, that it is true and complete and the Expert is able to decide how much weight, if any, to place on the assertions made in the Response. However, in this case, the Response has not been signed by the Respondent or her authorised representative. Nominet does not check Responses for compliance with the DRS Procedure and points out, when forwarding the Response to the Complainant, that it does not thereby make any representations as to the compliance of the Response.
The failure to sign the Response is a breach of paragraph 5(c)v of the DRS Procedure which states:-
The Response shall…conclude with the following statement followed by the signature of the Respondent or its authorised representative:-
"The information contained in this response is to the best of the Respondent's knowledge true and complete and the matters stated in this response comply with the Procedure and the applicable law"
Paragraph 15c of the Procedure states that, in the absence of exceptional circumstances, if a party does not comply with any provision in the Policy or the Procedure the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate. The breach in this case is not merely a technical breach; it means that the Respondent has failed to confirm that the information in her Response (which, as noted above, is the only information before the Expert on the paragraph 4(a)(i)A point) is, to the best of her knowledge, true and complete.
The Respondent has registered a famous brand as a domain name without adornment. The Respondent has put forward an explanation but failed to confirm, by her signature, that the explanation is true. Furthermore, paragraph 4(a)(i)A, which can be relied upon by a Respondent as evidence that the Domain Name is not an Abusive Registration, refers to demonstrable preparations to use the Domain Name. The Respondent has not demonstrated her preparations to use the Domain Name. The Expert is unable to place any reliance on an assertion contained in a Response that does not comply with the Procedure; it is in effect a non-Response.
The Expert finds, on the evidence before him, that the registration of the Domain Name, which consists of the well known mark PRINGLES (without any adornment), amounts to an Abusive Registration since it took unfair advantage of or was unfairly detrimental to the Complainant's rights in that mark. That is not to say that the Complainant has rights in the mark PRINGLES for all purposes (it is not the function of an Expert under the DRS to determine that) or that Respondent could not have succeeded in relying upon paragraph 4(a)(i)A if she had (a) filed a Response that complied with the Procedure and (b) produced evidence to demonstrate her preparations to use the Domain Name in connection with a genuine offering of goods or services. The Expert finds on the evidence before him that, on the balance of probabilities, the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Decision
The Expert finds, on the balance of probabilities, that the Complainant has rights in a name which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert directs that the Domain Name be transferred to the Complainant.
The Expert declines to make a finding of Reverse Domain Name Hijacking against the Complainant.
Andrew Clinton
5 July 2005