Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS Number 03835 Framepak Limited and Four x Ninety Limited Decision of Independent Expert
1. Parties:

Complainant: Framepak Limited

Country: GB

Respondent: Four x Ninety Limited

Country: GB

2. Domain Name:

framepak.co.uk

3. Procedural Background:

On 14.07.2006 the Complainant filed the electronic version of its complaint and the hard copy was received in full on 17.07.06. The complaint was validated by Nominet and the relevant documents were sent to the Respondent on 18.07.2006. The date by which any response from the Respondent was due was 09.08.2006. No response was received by this date. The Complainant was informed of this, and, as mediation was impossible in the absence of any response from the Respondent, the Complainant was given until 24.08.2006 to pay the fee if it wished the matter to be referred to an Expert for a decision. On 17.08.2006 an out of time non-standard submission was received from the Respondent. The fee to refer the matter to an Expert was received from the Complainant on 24.08.2006. On 30.08.2006 the Complainant filed a non-standard submission in reply to that of the Respondent. On 31.08.2006 Mr Chris Tulley was selected as the Expert.

4. Outstanding Formal/Procedural Issues (if any):

A non-standard submission was received from the Respondent on 17.08.2006. In accordance with paragraph 13b of the DRS Procedure, Nominet have provided me with the first explanatory paragraph of the Respondent's non-standard submission. It is within my discretion whether or not to view the full non-standard submission and, if so, what weight to attach to it. The explanation put forward by the Respondent is as follows:

"The information below is being submitted to you in regards to this complaint as a non-standard submission. This information was not sent within the standard submission window due to a local internet outage at our location. We submitted our response as soon as connectivity had been restored, which unfortunately was a few hours past the deadline for submission. We respectfully request that you consider our response below despite being outside of the submission window."

Paragraph 5(a) of the DRS Procedure requires the Respondent to submit a response within 15 days of commencement of proceedings under the Dispute Resolution Service. That 15 day period expired on 9 August 2006.

Paragraph 5(c) of the DRS Procedure states as follows :

"The Respondent must send the response to us in hard copy and (except to the extent not available for attachments) in electronic form to us at the addresses as set out in our explanatory cover sheet" (emphasis added).

Also relevant is paragraph 15(b) of the DRS Procedure which states 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. …"

Paragraph 13(b) of the DRS Procedure requires a Party which is to submit a non-standard submission to provide a separate first paragraph giving a brief explanation of why there is an exceptional need for the non-standard submission. The reason given by the Respondent for its failure to submit its response on time was because a "local internet outage" at its location prevented it from doing so. The Respondent says that the response was submitted "as soon as connectivity had been restored" which, the Respondent says, was only a few hours past the deadline for submission.

Nominet have also provided me with non-standard correspondence between Nominet and the Parties. That comprises an email from the Respondent dated 11 August 2006 purporting to serve its response and a Nominet file note dated 14 August 2006 confirming that an out of time response had arrived from the Respondent and that Nominet had telephoned and explained that it was out of time and therefore would not be considered. The note confirms that an explanation was given to the Respondent as to how to make a non-standard submission under Paragraph 13(b) of the DRS Procedure.

It appears, therefore, that the Respondent's email of 11 August 2006 in response to the complaint was in fact two days beyond the 9 August 2006 deadline rather than just "a few hours". However, putting that to one side, what is much more telling, and in my view decisive in the exercise of my discretion, is that the Respondent has put forward no explanation whatsoever for its failure to comply with the mandatory requirement of paragraph 5(c) of the DRS Procedure i.e. to send its response in hard copy form as well as in electronic form. In the circumstances, I am not satisfied that the Respondent has demonstrated an exceptional need for its non-standard submission and accordingly I reject it and will take no account of it.

The Complainant subsequently filed its own non-standard submission on 30 August 2006 in response to that filed by the Respondent. I have again been provided with the first explanatory paragraph of the submission in accordance with paragraph 13(b) of the DRS Procedure which states as follows :

"REPLY by the complainant as per section 6 in response to the non standard submission by the respondent. We believe it is our right to reply to the respondents out of date submission as per section 13b. As per the respondents reply we list below our reply for your consideration"

However, having rejected the Respondent's out of time response by way of a non-standard submission, I have no need to consider the Complainant's out of time reply, also submitted as a non-standard submission, and therefore will not do so.

I will therefore proceed to make my decision based upon the Complainant's complaint.

5. The Facts:

The Complainant company, Framepak Limited, was incorporated on 6 March 1991 and says it has been trading ever since under that name in relation to the manufacture, import, and sale of photo frames, mirrors and wall décor.

The Respondent, Four x Ninety Limited, is a competitor having been incorporated on 6 December 2001. The Domain Name, framepak.co.uk, was registered by the Respondent one year later on 6 December 2002. The Complainant says that it was being used by the Respondent to resolve to the Respondent's website at www.4x90.com. However, a printout of the webpage, which appears to have been taken on 18 July 2006 by Nominet, showed that, as at that date, the Domain Name resolved to a website that has a front page consisting of a list of sponsored and other links to various websites that appear to relate to eyeglasses.

6. The Parties' Contentions:

Complainant:

In summary the Complainant says that:

its business has traded since March 1991 under the Framepak name, manufacturing, importing and selling photo frames, mirrors and clip frames and also wall décor;

all the photo frames and clip frames that it supplies come with inserts that show its company name, address and logo. An example of an insert has been supplied. Whilst it does not show the address, it does state "Chelmsford", the town in which it is based. It prominently displays the Framepak name in two forms - FRAMEPAK and FramePak in stylised fonts;

as a result of 15 years trading its name and logo has become widely recognised within the photo frame business;

the Respondent registered the Domain Name with the direct intention of misleading customers that were looking for the Complainant and seeking to attract business that was meant for the Complainant;

the Domain Name resolves to the Respondent's website at www.4x90.com and there is no reference on that website to say that the Respondent has no association with the Complainant;

both the Complainant and the Respondent are in a very similar line of business in relation to products and markets;

the Complainant used to supply frames and mirrors to the Respondent for approximately 1½ years but suspended their account due to non payment towards the end of 2002. An example of a fax dated 3.11.2002 and a delivery note dated 21.10.2002 received from the Respondent is exhibited;

the Domain Name was registered shortly afterwards;

the registration of the Domain Name was done in a malicious manner as a result of the breakdown of the commercial relationship between the Parties;

the Complainant has recently employed a new sales director and is now targeting internet sales and have just launched their own website. However, it wishes to have what it calls its "correct domain name" to stop any further confusion for its customers;

Framepak is not a generic term used within the framing industry;

the Respondent's website also shows pictures of the inside of the Complainant's factory and the Complainant's staff, which the Respondent has been asked to remove on several occasions.

Respondent:

The Respondent failed to respond within the time limit set out in the DRS Procedure and I have rejected its non standard submission.

7. Discussion and Findings:

General

In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:

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

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

These terms are defined in the Nominet DRS Policy as follows:

Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.

Abusive Registration means 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.

Complainant's Rights

The Complainant does not have any registered trade marks rights in relation to its Framepak name. However, Rights under the DRS Policy specifically includes rights enforceable under English law, such as unregistered passing off rights, although the Complainant cannot rely on rights in any name or term which is wholly descriptive of its business.

The name "Framepak" may elude to the nature of a business selling photo frames and mirrors etc but it cannot be said to be wholly descriptive of such a business. After 15 years of use of the name, including prominent use on all inserts in all the photo frames and clip frames that it supplies, it is likely to have built up a valuable goodwill in the name, protectable under English law.

In the circumstances, I find, on the evidence before me and on balance of probabilities, that the Complainant does have Rights in the name "Framepak", being a name or mark which is identical or similar to the Domain Name.

Abusive Registration

From the matters relied on by the Complainant in its submissions the following parts of paragraphs 3 and 4 of the Policy (being, respectively, factors which may be evidence that the Domain Name is or is not an Abusive Registration) are potentially relevant:

Paragraph 3 a. i. B "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights;"

Paragraph 3 a. i. C "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."

Paragraph 3 a. 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."

Paragraph 4 a i A "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 or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;"

Paragraph 4 a ii. "The Domain Name is generic or descriptive and the Respondent is making fair use of it;"

To my mind, the most telling point is that the Respondent had been a customer of the Complainant before the Domain Name was registered and used. The Complainant says that the Respondent was a customer for approximately 1½ years ending towards the end of 2002. It cannot have been as long as 1½ years as the Respondent was only incorporated on 6 December 2001. However, evidence of the commercial relationship has been provided by the Complainant in the form of a copy fax and delivery note. The relationship came to an end due, according to the Complainant, to the Respondent's non payment of its account.

Very shortly after that, on 6 December 2002, the Respondent registered the Domain Name. When doing so the Respondent must have been well aware of the existence of the Complainant in the same line of business and that the Domain Name, ignoring the .co.uk suffix, was identical to the Complainant's corporate and trading name. Once the Respondent had registered the Domain Name, the Complainant was effectively blocked from registering the same domain name.

The Complainant says that as at the time of filing its complaint on 14 July 2006, the Domain Name had resolved to the Respondent's website offering competing goods. It no longer does so, but, in the absence of any challenge from the Respondent, I accept the Complainant's evidence that it did do so. After 15 years of business, it is likely that the Complainant will have an established customer base who may well visit www.framepak.co.uk when looking for the Complainant or its goods. The fact that it resolves directly to a competitor's website is likely to lead to a disruption to the Complainant's business, that disruption being unfair.

In addition, whilst no evidence of actual confusion has been put forward, those attempting to visit the website at www.framepak.co.uk and who found themselves at the Respondent's website were, according to the Complainant's evidence, met with photographs of the Complainant's factory and staff. I accept the Complainant's evidence on that point in the absence of any response from the Respondent. That use of the Domain name by the Respondent could easily confuse people into believing that the Domain Name is connected with the Complainant. Even though no evidence of any such actual confusion having taken place has been put forward, I am conscious of the fact that the examples set out in paragraph 3 of the DRS Policy (being examples of matters that might be evidence that the Domain Name is an Abusive Registration) are a non exhaustive list. In my view, circumstances which clearly suggest that such confusion is likely to occur are equally indicative of an Abusive Registration.

I do not believe that paragraph 4 a i A of the DRS Policy (which is set out above) is relevant. The Respondent had been a customer of the Complainant and therefore must have been well aware of the Complainant's business, and of its cause for complaint, long before it registered the Domain Name and used it in connection with its own goods. In addition, use which is intended to disrupt a Competitor's business and to cause confusion cannot, in my view, be a genuine offering of goods or services.

The Complainant in its complaint stated that the name Framepak is not a generic term used within the framing industry. Paragraph 4 a ii of the DRS Policy confirms that if the Domain Name is generic or descriptive and the Respondent is making fair use of it, that may evidence that the registration is not an Abusive Registration. Whilst the name "Framepak" may elude to the nature of the Complainant's business it does not strike me as being inherently descriptive of a business selling photo frames and mirrors etc and there is no evidence before me to suggest that it has in fact become a generic term within the industry. In the circumstances, I do not believe that paragraph 4 a ii of the DRS policy is relevant.

8. Decision:

For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the name "Framepak", being a name or mark which is identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

In the circumstances I order that the Domain Name be transferred to the Complainant.

Chris Tulley

18 September 2006