Complainant: Nextag, Inc
Country: USA
Respondent: Zurna Networks
Country: Turkey
calibex.co.uk ("the Domain Name")
The Complaint was lodged with Nominet on 9 March 2006. Nominet validated the Complaint and informed the Respondent on 9 March 2006 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days (until 31 March 2006) to submit a Response. The Respondent did not file a Response. On 20 April 2006 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 25 April 2006 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.
Under paragraph 15c of the DRS Procedure Version 2 ("the Procedure") if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or Procedure (in this case by declining to file a Response) the Expert will draw such inferences as he considers appropriate.
The evidence before the Expert establishes the following facts:-
January 2001 – the Respondent's first use in commerce of the mark CALIBEX (according to the print-out from the US Patent and Trademark Office).
21 September 2004 – application for a trade mark for CALIBEX filed at the US Patent and Trademark Office by the Complainant.
13 November 2004 – the Domain Name was registered in the name of the Respondent.
15 February 2006 – letter from the Complainant to the Respondent demanding a transfer of the Domain Name. There was no reply to this letter.
The Complainant operates a website from www.calibex.com which promotes its "compare and save" shopping service for a wide variety of goods and services.
The Domain Name is being used for a website that promotes the services of Closo.com which is an on-line marketplace for a wide variety of goods and services.
Complainant
The Complaint, so far as is relevant, is as follows:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; • Nextag, Inc. is the owner of trademark registrations in the United States Patent and Trademark Office for the "CALIBEX" trademark in connection with its comparison shopping services and other services. The "CALIBEX" trade mark is the subject of Registration No. 3011487. A copy of the Certificate of Registration and a screenshot of the Complainant's website are provided as Exhibit 2. In addition, the CALIBEX trade mark has a Community Trade Mark Application (No 004870465), UK Trade Mark Application (No 2411956) and a Benelux Trade Mark Application (No 1101945) pending. • The use of "CALIBEX" in the domain name calibex.co.uk is identical to the CALIBEX trademark. B. The Domain Name should be considered to be an abusive registration because the Respondent registered the domain name to unfairly disrupt the business of the Complainant. The Respondent has no rights or legitimate interests in respect of the Domain Name; • Zurna Networks ("Zurna") has no legitimate business interest in the calibex.co.uk domain. In light of Nextag, Inc.'s longstanding and extensive rights in the CALIBEX trademark, Zurna registered calibex.co.uk in bad faith with an intent to promote its services by trading on the goodwill of Nextag, Inc. through an apparent relationship it has with Closo.com. In addition, the mark CALIBEX being used in a domain name is likely to cause the public to believe, contrary to fact, that Zurna and/or the Closo.com websites are sponsored or approved in some way by Nextag, Inc. • Neither Zurna nor Closo.com has responded to Nextag, Inc.'s good faith attempt to communicate with them on this matter. Copies of the letters sent by Nextag, Inc. to Zurna and Closo.com is provided as Exhibit 3.
Remedies Requested
Transfer
Respondent
The Respondent did not file a Response.
General
Under 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.
Complainant's Rights
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. The Complainant is the registered proprietor at the United States Patent and Trademark Office of the word mark "CALIBEX" for comparison shopping services featuring a search engine for obtaining purchasing information. It is recorded on the document issued by the United States Patent and Trademark Office (a copy of which has been supplied by the Complainant) that the first use of the wordmark "CALIBEX" in commerce was January 2001.
The Complainant has a number of applications for trade mark registrations pending including Community Trade Mark Application (No 004870465), UK Trade Mark Application (no 2411956) and a Benelux Trade Mark Application (No 1101945) for the mark "CALIBEX". The Complainant does operate a website from the domain name calibex.com and a print screen from that website has been supplied. The Complainant asserts that it has long-standing and extensive rights in the mark CALIBEX although further evidence has not been submitted.
The Complainant clearly has established rights in the US dating back to 2001. The Expert sees no reason why rights that are enforceable in a foreign jurisdiction should be disregarded when applying the definition of rights adopted by Nominet. In this case the Complainant has also made applications to register the trademark CALIBEX at the Community and UK Trademark Offices. The Complainant clearly operates a website using that mark.
The threshold for establishing rights is not a particularly high one as was made clear by the Appeal Panel in Seiko UK Limited v Designer Time (DRS 00248). Whilst it would have been desirable for the Complainant to have provided further evidence as to the extent of its rights the DRS has not adopted the strict rules of evidence that apply in Court proceedings. There is no challenge from the Respondent to the Complainant's assertion that it has rights in the mark. Taking into account the factors referred to in the preceding paragraph the Expert is satisfied, on the balance of probabilities, that the Complainant has Rights in respect of a mark that is identical to the Domain Name (disregarding, for these purposes, the generic domain suffix).
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 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.
The list of factors at paragraph 3 of the Policy is non-exhaustive and 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.
This is case in which the Respondent has chosen to register a domain name that is identical (ie without any adornment) to the mark in which the Complainant has rights. The Domain Name has been used for the purposes of a website that offers a service that has no connection to the Complainant and appears to be in direct competition to the Complainant's service. The Respondent has failed to respond to the Claimant's assertion that the Domain Name should be considered an Abusive Registration in the hands of the Respondent.
The Complainant says that the Respondent has no rights or legitimate interest in the mark CALIBEX. It is certainly not apparent from the documents before the Expert that the Respondent has any right to exploit the mark CALIBEX. The mark is neither generic nor descriptive and the Expert finds, on the available evidence, that it is distinctive of the Complainant's comparison shopping service.
The critical question is whether the Complainant has shown, on the balance of probabilities, that the Domain Name was registered or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. In the absence of an explanation from the Respondent one is drawn to ask what conceivable purpose could the Respondent have for registering and using the Domain Name if it were not with the object of trading on the back of the Complainant's reputation and seeking to drive internet traffic intended for the Complainant's services to a website that is in competition with those services.
There is however no direct evidence of actual confusion and the Expert takes the view that paragraph 3aii of the Policy is not made out. The Complainant says, in effect, that an internet visitor will think that he or she is visiting the Complainant's site but will in fact find themselves at a different website which they may believe is connected with the Complainant and which offers a service that is entirely unconnected to the Complainant.
There have been many previous Nominet decisions that have dealt with this type of issue which has been described as initial internet confusion. In the recent Appeal Panel Decision of Epson Europe BV v Cybercorp Enterprises (DRS 03027) the Appeal Panel concluded, on the facts in that case, that the Domain Names in issue were likely to have created a false impression that there was a commercial connection between the Respondent and the Complainant and were acquired and being used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
In accordance with paragraph 16 of the Procedure the Expert has to decide this Complaint on the basis of the Parties' submissions (in fact there is only the Complaint), the Policy and the Procedure. Having considered the Complaint and the available evidence the Expert takes into account the following factors in this case:-
- The Complainant did not give any authority to the Respondent to register or use the Domain Name. The Complainant says that the Respondent has no rights or legitimate interest in the Domain Name and the Respondent has not asserted that it has authority from the Complainant to register and use the Domain Name.
- The Domain Name is identical (ie without any adornment) to the mark in which the Complainant has rights.
- The Domain Name is not generic or descriptive.
- The Domain Name appears to be distinctive of the Complainant's services, in particular, the internet based comparison shopping service.
- The Domain Name has been used to promote a service which has no connection with the Complainant and, in fact, competes with the Complainant's service.
- The Respondent has failed to provide any explanation for the choice of the word CALIBEX as part of the Domain Name.
In the absence of a Response it is difficult to think of a reason why the Respondent would register and use the Domain Name if it were not with the object of trading on the back of the Complainant's reputation and thereby taking unfair advantage of the Complainant's Rights. The Expert is satisfied, on the balance of probabilities, that there are 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 within the meaning of paragraph 3aiC of the Policy. The Expert also finds that the second part of the definition of Abusive Registration is made out in that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Complainant refers to the concept of bad faith but that is not a concept that has been adopted by Nominet. The matter falls to be determined by reference to the terms of the Policy and Procedure.
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. However, there was no Response to the Complaint.
The Expert finds, on the balance of probabilities, that the Complainant has Rights in a mark 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.
Andrew Clinton
Dated 10 May 2006