Nominet UK Dispute Resolution Service

 
Distillerie Tuoni e Canepa s.r.l -v- Indika Industries Nominet UK Dispute Resolution Service DRS 02934 Distillerie Tuoni e Canepa s.r.l and Indika Industries Decision of Independent Expert
1. PARTIES:

   Complainant: Distillerie Tuoni e Canepa srl

   ITALY

   Respondent: Indika Industries

   BN1 5BZ

2. DOMAIN NAME:

   tuaca.co.uk ("the Domain Name").

3. PROCEDURAL BACKGROUND:

   3.1. A hard copy of the Complaint was received in full by Nominet on 5 September 2005. Nominet validated the Complaint and notified the Respondent of the Complaint.

   3.2. No Response was received by the Respondent and therefore informal mediation was not possible. On 11 October 2005 the Complainant paid the fee to obtain the Expert Decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service ("the Procedure").

   3.3. On 13 October 2005, Nick Phillips, the undersigned ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed 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.

   3.4. Pursuant to Paragraph 13 of the DRS Policy ('the Policy') the Expert asked the Complainant three further questions on 25^th October 2005. These questions were as follows:

   i. Who paid the last renewal fee for the Domain Name?;

   ii. If the answer to i is someone different from the Complainant then what is the relationship of that party to the Complainant?; and

   iii. Has the Domain Name ever been used for any purpose other than to point to the Complainant's website at www.tuaca.com?

   3.5. The Complainant responded to these questions the next day and gave the following answers:

   i. The last renewal fee was paid by Poul Jensen using a personal credit card;

   ii. Poul Jensen is the proprietor of Danes Limited. Danes Limited are the official UK licensee for Tuaca and as such the UK representative of Distillerie Tuoni e Canepa s.r.l;

   iii. Yes – Danes Limited did publish their own website at www.tuaca.co.uk - however when Brown-Forman acquired Distillerie Tuoni the website was closed and the domain pointed to the official Tuaca website at www.tuaca.com.

4. OUTSTANDING FORMAL/PROCEDURAL ISSUES:

   4.1. The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

   4.2. Paragraph 15(b) of the Procedure provides, inter alia, that "If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint".

   4.3. Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. There do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.

5. THE FACTS:

   5.1. The Complainant is Distillerie Tuoni e Canepa s.r.l.

   5.2. The Respondent is Indika Industries. The Respondent registered the Domain Name on 17 November 1999.

   5.3. The Complainant is the manufacturer of an Italian liquor known as Tuaca.

   5.4. The Complainant is the registered proprietor of a number of trade mark registrations in respect of the name Tuaca worldwide. These include a Community Trade Mark registration (which includes the UK).

   5.5. The Complainant's Tuaca product is marketed inter alia, through a website at www.tuaca.com.

   5.6. In 1998 a UK company called Danes Limited was appointed to distribute the Tuaca product in the United Kingdom.

   5.7. Danes Limited engaged Tobias Lee of Indika Industries to register the domain name tuaca.com and to host a website at this domain name on behalf of Danes Limited. The domain name tuaca.com was registered in the name of Indika Industries with Danes Limited being named as the administrative contact.

   5.8. In 1999 Brown-Forman Corporation, a US corporation acquired a 45% interest in the Complainant.

   5.9. In November 1999 Mr Lee of Indika Industries was given instructions by Danes Limited to register the Domain Name. This was also registering the name of Indika Industries with Danes Limited named as the administrative contact.

   5.10. In 2000 the Domain Name tuaca.com was transferred to Indika Industries Limited to Brown-Forman Corporation.

   5.11. In 2003 Brown-Forman Corporation acquired the remaining 55% interest in the Complainant and the Complainant became a wholly owned subsidiary of Brown-Forman Corporation.

   5.12. On 17^th December 2002 a company called Indika Industries Limited, a company which had the same registered office address as the address given to Nominet for Indika Industries, was dissolved.

   5.13. In 2005 Danes Limited lost contact with Mr Lee and despite instructing a company of investigators to establish the whereabouts of Mr Lee, Mr Lee could not be contacted and is believed to be in New Zealand.

   5.14. The Domain Name was renewed in 2003 and the renewal fee was paid by Danes Limited on behalf of the Complainant.

   5.15. Until recently the Domain Name has been pointed at the Complainant's main website at www.tuaca.com. A recent check of the Domain Name reveals that it is not pointed to a website.

6. THE PARTIES' CONTENTIONS:

The parties' contentions can be summarised as follows:

Complainant

6.1. In its Complaint, the Complainant makes the following submissions:

6.1.1. The Domain Name is identical or similar to a name or mark in which the Complainant has Rights;

6.1.2. The Domain Name in the hands of the Respondent is an Abusive Registration;

6.1.3. The Complainant has numerous worldwide trade mark registrations dating back to at least 1967 (in the USA) and other applications for the mark are pending. These registrations include a registered Community Trade Mark;

6.1.4. The Complainant has advertised using the name Tuaca since 1938 in Italy and since 1998 in the United Kingdom;

6.1.5. In October 1998 Mr Poul Jensen of the Complainant's official UK distributor, Danes Limited requested Tobias Lee of Indika Industries to register the domain name tuaca.com and to host a website at this domain on behalf of Danes Limited. Against the instructions given to him Mr Lee registered this domain name in the name, Indika Industries, with Danes Limited as the administrative contact instead of as the registrar;

6.1.6. In November 1999, again on the instructions of Mr Jensen of Danes Limited, Tobias Lee registered the Domain Name on behalf of Danes Limited. Against the implicit instructions of Mr Jensen he also registered the Domain Name in the name of Indika Industries, with Danes Limited at the administrative contact;

6.1.7. In 2000, following repeated instructions from Mr Jensen, the domain name tuaca.com was transferred from Indika Industries to Brown-Forman Corporation which subsequently became the parent company of the Complainant owning 100% of the share capital of the Complainant;

6.1.8. The Domain Name was initially used by Danes Limited to point at its website however when Brown-Forman Corporation acquired the Complainant this website was shut down and the Domain Name pointed to the Complainant's main website at www.tuaca.com;

6.1.9. Between 2000 and 2005 Mr Jensen of Danes Limited sent numerous communications to Tobias Lee requesting the transfer of the Domain Name to Brown-Forman Corporation;

6.1.10. In 2005 Mr Jensen lost contact with Tobias Lee and Magpi International Limited (corporate intelligence and intellectual property investigators) were instructed by Brown-Forman Corporation to establish the whereabouts of Mr Lee and whether Indika Industries (and Indika Industries Limited) was currently trading;

6.1.11. It was subsequently established in July 2005 that Mr Lee was in New Zealand (with no forwarding details) although the Complainant accepts that it is possible that he has since returned to the UK;

6.1.12. The last renewal fee for the Domain Name was paid by Poul Jensen of Danes Ltd using a personal credit card;

6.1.13. The Domain Name is still pointed to the Complainant's main website at www.tuaca.com which is owned and published by Brown-Forman Corporation;

6.1.14. The Domain Name in the hands of the Respondent is abusive because: it was registered with incorrect name and address the details of which are independently proved by the registration on numerous worldwide Tuaca marks held by the Complainant and also by the statement of the official UK distributor of the spirit Tuaca.

Respondent

6.2. The Respondent has not responded to the Complaint.

7. DISCUSSIONS AND FINDINGS

General

Under clause 2 of the Policy the Complainant is required to show, on the balance of probabilities that:

7.1. It has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

7.2. The Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

7.3. The first question I must answer is therefore whether the Complainant has proved on the balance of probabilities that it owns Rights in a name or mark that is identical or similar to the Domain Name.

7.4. The Policy defines Rights as including but not being limited to, "….rights enforceable under English law…..". This has always been treated in decisions under Nominet's DRS as a test with a low threshold to overcome and I think that must be the correct approach.

7.5. The Complainant has a registered Community Trade Mark for the word 'Tuaca'. It also operates a website at the domain name Tuaca.com and there is some evidence that the Complainant has been manufacturing and marketing its Tuaca product for a good many years.

7.6. In the circumstances I have no difficulty in finding that the Complainant has, on the balance of probabilities, Rights in the name 'Tuaca'.

7.7. Ignoring the first and second level suffixes, as I must do, the name in which the Complainant has Rights 'Tuaca' is therefore identical to the Domain Name.

Abusive Registration

7.8. Having concluded that the Complainant has Rights in a name which is identical to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration. An Abusive Registration is defined in the Policy as a Domain Name which either:

(a) was registered or otherwise acquired in a manner which, at this time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR

(b) has been used in a manner which took unfair advantage of, or was unfairly detrimental to the Complainant's Rights.

7.9. This definition allows me to consider whether a Domain Name constitutes an Abusive Registration at any time and not, for example, just the time of registration / acquisition.

7.10. Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may evidence that a domain name is an Abusive Registration. It is worthwhile setting out paragraph 3 of the Policy in full:

"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 website is not in itself evidence that the Domain Name is an Abusive Registration."

7.11. The Complainant has based its Complaint on Paragraph 3 a iv i.e. that it has been, '….. independently verified that the Respondent has given false contact details…….'. The Complainant relies on the fact that the Respondent was, albeit implicitly, told to register the Domain Name in the name of the Complainant or its UK distributor but instead registered the Domain Name in its own name with the UK distributor as the administrative contact.

7.12. The Complainant provides no evidence of what instructions were given to the Respondent in relation to the registering of the Domain Name and indeed the emails that have been provided which are said to evidence the Complainant's attempts to recover the Domain Name are inconclusive even to the fact that the Complainant was asking for the Domain Name back.

7.13. There appears to be a dearth of authority on the precise meaning of this provision of the Policy. In the two cases that I can find (The Leeds Festival (Mela) Ltd v The Preview Channel – DRS 00188 and Harman International Industries Inc v. Patrick Joleys – DRS 00193) where the Expert made a finding that there had been an Abusive Registration based on this provision (or its predecessor provision which required that the Respondent had given to Nominet false details) this was based on the Respondent having given made-up or fanciful details so for example in the Leeds Festival case the Registrant's name and the contact details given did not tally up and in the Harman case the Respondent had given the name, "Ann Nonymous".

7.14. It is not alleged in this case that the Respondent has given fanciful invented or even inaccurate contact details and indeed it does not appear to be disputed that at the time the Domain Name was registered that the address that the Respondent gave was the Respondent's proper address (at least this appears to be the registered office address of the company Indika Industries Limited). The Complainant's submission is more that having been given instructions to register the Domain Name in one name the Respondent proceeded to register it in its own name.

7.15. Even if I could be persuaded that the Respondent did register the Domain Name in its own name against the wishes of the Complainant which I have to say that given the evidence I have seen I am far from convinced about, and there could for example be a number of other reasons why the Respondent registered the Domain Name in its own name. I do not think that it follows that this would be conduct which falls within Paragraph 3 a iv. As I have said this provision seems to me to be more a provision which is directed more towards catching Respondents who give made up or fanciful contact details presumably out of a desire not to be traced.

7.16. This is not to say that the Complaint necessarily fails and I am obliged to consider generally whether the Domain Name is in the hands of the Respondent an Abusive Registration. I am bound to say before I go on to consider this point that the Complainant could have done more to help itself and has made life unnecessarily difficult for itself by basing its complaint just on this one ground which appears to have not been properly thought out or supported by evidence.

7.17. It does however occur to me that there is another factor which may evidence an Abusive Registration which the Complainant may satisfy. This is the factor set out in Paragraph 3 a v of the Policy (see paragraph 7.10 above for the text of this provision). It is clear that there was a relationship between the Complainant and the Respondent as the Respondent clearly acted as registration agent for the Complainant in registering the Domain Name. The Complainant has also confirmed that the Domain Name has always been used by the Complainant (either as a website for the Complainant's UK distributor or to point at the Complainant's website at www.tuaca.com) and that at least the last renewal fee for the Domain Name was paid on behalf of the Complainant by its UK distributor.

7.18. I would have ideally liked to see some evidence of the historic use of the Domain Name and of the payment made by the Complainant's distributor to renew it. I have however seen for myself that the Domain Name was until very recently pointed at the Complainant's website at www.tuaca.com and I am prepared to assume that even when it was pointed at the website of the Complainant's UK distributor that it was being used to promote the Complainant's Tuaca product. I have also read the emails passing between the Complainant and the Respondent and from these it does indeed seem highly likely that it would have been the Complainant (or someone on its behalf) and not the Respondent that would have made any payments in respect of the Domain Name.

7.19. I am therefore satisfied on the balance of probabilities that Paragraph 3 a v of the Policy has been made out and therefore that the Domain Name is an Abusive Registration.

8. DECISION

8.1. In the circumstances, I find that the Complainant has proved on the balance of probabilities that it has Rights in a name or mark which is identical or similar to the Domain Name and that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore decide that the Domain Name should be transferred to the Complainant.

……………………………..

NICK PHILLIPS

28^th October 2005