Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 03305

Decision of Independent Expert

1. Parties

Complainant: Arcadia Group Brands Limited

Country: United Kingdom

Respondent: Kwan Jin

Country: Korea

2. Domain Name

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

3. Procedural Background

The complaint of the Complainant was entered in the Nominet system on 19 January 2006. Nominet validated the complaint on 27 January 2006 and on the same day despatched a copy of the complaint to the Respondent. No response was received from Respondent by the due date of 22 February 2006. On 23 February Nominet wrote to both parties indicating that no response had been received. On 6 March 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (the "Policy").

On 8 March 2006 Nominet invited Christopher Gibson to act as Expert in the case. The undersigned ("the Expert") has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality. The undersigned was appointed as Expert in this case on 8 March 2006.

4. Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). Paragraph 15b 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 the Procedure, the Expert will proceed to a Decision on the complaint."

There is no evidence before me to indicate the presence of exceptional circumstances. Nominet has attempted to communicate the complaint to the Respondent by email and post. The efforts made by Nominet are in accordance with the Procedure and accordingly, I will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.

Paragraph 15c of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure . . ., the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate." I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.

5. The Facts

The Complainant is a large fashion goods company for women with many stores throughout the United Kingdom as well as in a number of overseas locations. The Complainant owns the well-known trademark, DOROTHY PERKINS, which has been registered in the United Kingdom, Europe and in other parts of the world in relation to a number of goods and services. While the Complainant states that its DOROTHY PERKINS trade mark dates back some 70 years, the Complainant has submitted documentary evidence to show that it has registered rights in the trademark "DOROTHY PERKINS" as of 1996 in the United Kingdom and 2002 in the EU. The Complainant has a web site located at , which was registered in 1996.

The Respondent is Kwan Jin, an individual located at 119-28 Sang – Do, 1 Dong, Dong Jak Gu, Seoul, 603021, Korea. According to the Whois records, the Domain Name, was registered to the Respondent on 15 May 2004.

The Complainant submitted documentary evidence to show that, at the time of the Complaint, the URL www.dorothyperkin.co.uk resolved to a web page providing an index of clothing web sites which appear to compete directly with the Complainant's business of clothing retail. The Expert visited this web site and confirmed that it contained links to web sites providing women's clothing and accessories.

6. The Parties' Contentions

Complainant

The substance of the Complainant's contentions are as follows: The Complainant has rights in respect of a name or mark which is almost identical to the Domain Name in dispute. The web site associated with the Domain Name includes an index of clothing web sites which compete directly with the Complainant's business of clothing retail. Complainant contends that the Domain Name in the hands of the Respondent is an Abusive Registration and constitutes an infringement of the Complainant's trade mark rights.

Respondent

The Respondent has not responded.

7. Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present:

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

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

Complainant's Rights

Complainant's has established that it has rights in its well-known trade mark DOROTHY PERKINS. The substantive part of the Domain Name contains nearly identical letters to the Complainant's trademark, with the omission only of an "s" at the end of PERKIN. It is thus obvious that the Domain Name is identical or similar to a trademark in which the Complainant has Rights. The Complainant has established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration

As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS Policy 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 in this case relies on the fact that the Domain Name registered by the Respondent takes the user to a web page advertising competing products. This web page permits users to click-through to other web sites offering competing goods. In using the Domain Name as the address of a web site that offers links to other sites offering goods that are directly in competition with the Complainant, it would appear that the Respondent is, and was at the time he registered the Domain Name, aware of the Complainant's trade mark. It is also clear the Respondent is knowingly using the Domain Name for a purpose that is unfairly disrupting the Complainant's business. The Expert is of the view that the registration of the Domain Name which is nearly identical to the well-known trade mark of the Complainant (except for the omission of an "s") and the use of that Domain Name with a view to commercial gain through an web site linking to competing web sites takes unfair advantage of or is unfairly detrimental to the Complainant's Rights.

Accordingly, the Expert finds, on the balance of the probabilities, that the Domain Name in the hands of the Respondent is an Abusive Registration.

8. Decision

The Expert finds that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the disputed Domain Name, dorothyperkin.co.uk, be transferred to the Complainant.

Christopher Gibson

26 March 2006