Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS 3834

Metaplan - Thomas Schnelle Gesellschast Für Planung und Organisation mbH v The Training Shop

Decision of Independent Expert

1. Parties

Complainant: Metaplan - Thomas Schnelle Gesellschaft für Planung und Organisation mbH

Germany

Respondent: The Training Shop

GB

2. Domain Name

metaplan.co.uk

3. Procedural Background

On 14 July 2006 the Complaint was lodged with Nominet. In accordance with the Dispute Resolution Service Policy ("the DRS Policy") hard copies of the Complaint were received in full on 17 July 2006.

On 18 July 2006 Complaint documents were generated for service upon the Respondent. A Response in electronic form was received on 25 July 2006 with hard copies on the same date.

A Reply in electronic form was received from the Complainant on 1 August 2006.

The necessary fees having been received from the Complainant Mr Clive Thorne was selected as the Expert on 26 September 2006. He has confirmed his independence and willingness to act. There are no interlocutory or interim matters outstanding.

4. Facts

The relevant factual background is summarised in the Complaint and in the Response.

The Complainant is a German company registered under the full name Metaplan-Thomas Schnelle Gesellschaft für Planung und Organisation mbH but which is apparently known as Metaplan GmbH. It has a wholly owned subsidiary in the United Kingdom; Metaplan Limited. Metaplan Limited was registered on 2 July 1993 at the UK Companies Registry see exhibit 1 to the Complaint. Evidence is adduced by the Complainant that Metaplan Limited trades in the UK under the name Metaplan and has done so since 1993 (see the bank statement exhibited at Exhibit 4 and the invoices and the correspondence exhibited at Exhibits 5 and 6 to the Complaint).

Metaplan Limited provides "moderating equipment" under the name "Metaplan". This is evidenced by the brochure exhibited at Exhibit 8 to the Complaint. The Complainant also provides business management assistance and business consultancy services also in the United Kingdom. This is evidenced by the invoices exhibited at Exhibit 9 to the Complaint.

The brochure exhibited at Exhibit 8 explains in some detail the operation of the Metaplan Group. "Metaplan" is the trading name used for group moderation facilities and technique. This appears to be an established and recognised process for achieving consensus or developing action plans and achieving cost effective results from business meetings. The Metaplan Group provides organisations throughout Europe including the UK with professional moderators to plan and facilitate strategic meetings and events dealing with sensitive issues. As part of this facility the Metaplan Group also provides professional designed visualisation equipment for purchase and rental for facilitators to achieve the maximum benefit from the Metaplan technique. Examples include pinboards, colour cards of various shapes and sizes and marker pens. These appear to be in a distinctive format. For example, set out at Exhibit 8 are Metaplan "Visu-Cases" containing various distinctive items of stationery. The Visu-Case utilises a "cloud" device which is also used prominently upon Metaplan notepaper and in the brochure exhibited at Exhibit 8.

The Complainant is the owner of a number of United Kingdom and European Community Trade Marks including UK trade mark number 1311379 for the word "Metaplan" filed on 28 May 1997. A print-out from the UK patent office of this mark is exhibited at Exhibit 10. In addition, exhibited at Exhibit 11 is a print out from the European Community OHIM evidencing Community Trade Mark number 296269 "Metaplan" filed on 28 June 1996.

The subsidiary company Metaplan Limited has also registered the domain name "metaplan.ltd.uk" on 25 March 2000 and this is evidenced by the print out from the Nominet Whois search exhibited at Exhibit 12.

The Expert notes that it is not disputed by the Respondent that the Complainant has trade mark rights in the mark Metaplan.

According to the Response the Respondent is a distributor for the products of a German company called Nitor. It asserts that Nitor were the manufacturers and suppliers of equipment to Metaplan based in Germany and that it also supplies Metaplan Ltd.

It asserts that in May 2006 it signed an agreement with Nitor to become the UK distributor for all their products which explains why their product range is identical to the German Nitor Visu company products that Metaplan was Germany.

At Exhibit 13 to the Complaint the Complainant exhibits an extract from the Respondent's website which illustrates some of the stationery products that it sells including moderation kits bearing the Complainant's cloud device which is referred to above.

There has been correspondence between the parties relating to the use of the domain name in dispute. This is exhibited at Exhibit 19 to the Reply. It begins with an email from Kate Habershon of Metaplan Ltd to Maggie Taylor of the Respondent dated 18 April 2006 pointing out that "Metaplan" is a registered trade mark and only the Metaplan Group of Companies are entitled to use the word "Metaplan". Maggie Taylor replies later on the same date explaining that they have removed the word "Metaplan" from their website.

5. Discussion and Findings

Under paragraph 2(a) of the DRS Policy a Complainant must show that:

1. The Complainant has Rights in respect of a name or mark which is identical or similar to the domain name;

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

The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities. The Expert therefore proceeds to deal with each element in turn.

6. The Complainant has Rights in respect of the name or mark which is identical or similar to the domain name.

The Expert has considered the evidence of trade marks adduced by the Complainant and referred to above and is satisfied that the Complainant has registered rights in respect of the mark "Metaplan". It is also satisfied that these pre-date the date of registration of the domain name on 22 December 2005.

Although unregistered trade mark rights are not specifically referred to in the Complaint the Expert notes that there is evidence adduced by the Complainant referring specifically to the Metaplan technique and Metaplan equipment and that in many cases where Metaplan is used, for example, in the correspondence exhibited at Exhibit 6 and in the brochure exhibited at Exhibit 8 that the ® follows reference to the name "Metaplan".

In its Complaint the Complainant does not dispute that the Complainant has registered rights in respect of the mark Metaplan. Rather it submits that "the term Metaplan is generic and descriptive and I am making fair use of it".

At Paragraph 8 of the Response the Respondent sets out what it describes as information supporting the assertion that the word "Metaplan" is a generic process for problem solving or strategic planning. In addition, at Exhibits A to Z it sets out examples of the use of "Metaplan" which it submits supports this contention. The Expert has considered these examples.

The Expert is not in a position to decide whether or not a particular mark is generic or has become generic through use. That is an issue which may be relevant to the validity of the Complainant's trade mark rights and which would have to be decided in the appropriate Trade Mark Registry or Court. The Expert is entitled to accept bona fide evidence of registered and unregistered trade mark rights at face value. In this case, the Expert is satisfied that the Complainant has adduced sufficient evidence of trade mark registrations in the UK and in OHIM of the mark "Metaplan". Accordingly, it is satisfied that the Complainant has rights in respect of the name or mark which is identical or similar to the domain name "Metaplan.co.uk".

7. The domain name, in the hands of the Respondent is an abusive registration.

An "abusive registration" is defined in paragraph 1 of the DRS Policy as meaning 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.

Paragraph 3 of the DRS Policy provides a non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration.

In its Complaint the Complainant submits:

(i) The domain name was abusive because it was primarily registered to stop the Complainant registering it despite its rights in the name;

(ii) That the registration was abusive because it was primarily registered to unfairly disrupt the Complainant's business.

The Complainant relies upon the fact that the Respondent registered the Complainant's trade mark "Metaplan" as the domain name in dispute to offer exactly the same goods which are being offered by its subsidiary Metaplan Ltd so that people looking for moderation equipment offered by Metaplan Ltd would assume that it is offered under the domain name.

The Respondent uses the domain name to redirect potential customers of Metaplan Ltd via automatic forwarding to its own website "www.thetrainingshop.co.uk" on which it also offers moderation equipment. This is set out at Exhibit 13 to the Complaint. In particular, the Complainant refers to the similarity of moderation kits containing cards in the form of clouds "which look exactly like the clouds" registered by the Complainant as a trade mark. Because of this and because of the identity and close similarity of products offered by the Respondent and the Complainant and the similarity with the moderation services offered by the Complainant a third person accessing the domain name would assume that there is a legitimate connection with the Complainant's business. This is clearly disruptive of the Complainant's business.

The Respondent is open as to its use of Metaplan. It submits at paragraph 4 to the Response that it is using the name in relation to a "genuine offering of goods or services, namely Nitor Equipment which is widely used in the UK amongst facilitators in order to use a Metaplan technique in their business". It points out that the product range offered is identical to the products that Metaplan in Germany use and which it obtains from Nitor. In defence, it appears to rely only upon its submission that it is entitled to do so because of the alleged generic nature of the mark Metaplan.

In essence, the Complainant's Complaint within paragraph 3(a)(i) of the Policy is 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.

Having considered the submissions and the evidence the Expert is in no doubt that the domain name was registered for the purpose of establishing a connection or link between the Respondent and the activities of the Complainant including the moderation equipment sold on-line under the mark "Metaplan". The Respondent submits because of the fact that the Respondent is a UK distributor for Nitor equipment it is entitled to direct the domain name to the Respondent's website "www.thetrainingshop.co.uk".

The Expert is satisfied that this link will inevitably disrupt the business of the Complainant. It therefore finds that the domain name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights. It also takes into account that in construing paragraph 1 of the DRS Policy it is not necessary for the Expert to consider any intention on the part of the Respondent.

Accordingly, the Complainant has satisfied its burden of proof in showing that both elements of paragraph 2(a) of the DRS Policy are present on the balance of probabilities.

8. Decision

The Complainant has requested that the disputed Domain Name should be transferred from the Respondent to the Complainant. Accordingly, the Expert orders that the Domain Name "metaplan.co.uk" be transferred from the Respondent to the Complainant.

Clive Duncan Thorne

Expert

11 October 2006