Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 03886 Sussex Skips -v-Sussex Waste Recycling Ltd Decision of Independent Expert
1. Parties:

Complainant: Sussex Skips

Country: GB

Respondent: Sussex Waste Recycling Ltd

Country: GB

2. Domain Name:

sussexskips.co.uk

3. Procedural Background:

The Complaint was lodged with Nominet on 1 August 2006. Nominet validated the Complaint and notified the Respondent of the Complaint on 3 August 2006 and informed the Respondent that it had until 25 August 2006 to lodge a Response. A response was received on 25 August 2006 and forwarded to the Complainant on 29 August 2006 with an invitation to make any further submission in reply to the Response by 7 September 2006. The Complainant did not file any further submission by 7 September 2006 and, on 5 October 2006, Nominet informed the parties that it had not been possible to achieve a resolution of the dispute by Informal Mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 19 October 2006. On 9 October 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 12 October 2006, David King, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties, which might appear to call into question his independence and/or impartiality. Nominet appointed the Expert in this matter on 16 October 2006.

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

Following the submissions referred to in paragraph 3 above, the Respondent

made a "non-standard submission" to Nominet under paragraph 13 of

Nominet's Dispute Resolution Service Procedure ("the Procedure"). On 9

October 2006, Nominet forwarded a copy to the Complainant, who has not

made any further submissions.

Paragraph 13 of the Procedure reads as follows:

"13 Further Statement

a. In addition to the complaint, the response and if applicable the reply and any appeal, the Expert may request further statements or documents

from the Parties. The Expert will not be obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or this Procedure or which he or she has not requested.

b. Any communication with us intended to be passed to the Expert which is

not part of the standard process (e.g. other than a complaint, response, reply, submissions requested by the Expert, appeal notice or appeal notice response) is a "non-standard submission". Any non-standard submission must contain as a separate, first paragraph, a brief explanation of why there is an exceptional need for the non-standard submission. We will pass this explanation to the Expert, and the remainder will only be passed to the Expert at his or her sole discretion. If there is no explanation, we may not pass on the document or information."

The papers sent to the Expert contained a summary statement by the

Respondent that it would like to supply a non-standard submission "on the

grounds of partial admission of guilt through error in respect of display".

Whilst the Expert would not always consider it appropriate for one of the

parties to seek to correct its standard submissions in this way, he decided to

exercise his discretion in this case, in which the parties' submissions are

rather brief. The Expert has therefore obtained a copy of the Respondent's

non-standard submission, which is summarised in paragraph 6 below.

5. The Facts

In the Complaint, the Complainant is referred to as "Sussex Skips". This is

the trading name of Sussex Skips Limited, which was incorporated on 27 July

2006 under Company No. 05888347.

The Complainant has supplied evidence that it has traded as "Sussex Skips"

since September 2004 but, otherwise, has not given any details of the nature

of its business in the Complaint itself. However, a print-out of a yell.com

search against "sussex skips" includes an entry for the Complainant's

business at its address shown in the heading to this Decision with the

classification of "skip hire".

The Respondent is a company, which was incorporated on 13 June 1994

under Company No. 02938266 and trades under the name "Rabbit"

or "Rabbit Skips". Its notepaper is headed with a stylised version of "Rabbit"

followed by the company name and the address shown in the heading to this

Decision. A print-out of the Respondent's web-site at www.rabbitskips.co.uk,

provided by the Complainant with the Complaint, refers to "Rabbit Skips" and

indicates that the Respondent is also in the business of skip hire.

The Respondent registered the Domain Name on 27 January 2006.

6. The Parties Contentions

Complainant:

The Complaint can be summarised as follows:

The Complainant has traded under the name "Sussex Skips" since September 2004. Attached to the Complaint are copies of its first year's accounts and a letter from its previous accountant.

A listing from yell.com shows the Complainant's details when a search is made against "sussex skips".

The Complainant can supply photographs of lorries with painted signs, invoices from sign writers, all sales invoices from 1 September 2004, flyers and business cards. The Compainant has been registered for VAT since January 2005.

The Respondent's registration of the Domain Name is abusive because the Respondent trades under the name "Rabbit Skips" which is a competitor.

The Respondent has registered the Domain Name for the sole purpose of directing to itself potential customers using the internet to look for Sussex Skips. The Domain Name web-site is identical to the Respondent's web-site rabbitskips.co.uk and all contact details go direct to info@rabbitskips.co.uk The Complainant discovered this when a customer, who had forgotten the Complainant's contact details, visited the Domain Name to obtain the details and found that the web-site showed Rabbit Skips' details.

Respondent:

The Response can be summarised as follows:

The Respondent registered 16 geographical areas to link to its web-site through Pipex Communications Hosting Ltd t/a 123-Reg.co.uk.

When searching on the internet it is logical to include the geographical location. As the Respondent only provides services within Sussex, the registration of the Domain Name is a logical step.

The Respondent owns other domain names including, lancing skips, eastsussexskips, adurskips, arunskips, brightonandhoveskips, brightonskiphire, cheapestskips, brightonskips, horshamskips, lancingskips, littlehamptonskips, newhavenskips, sussexskiphire, westsussexskips, worthingskips and rabbitskips. These are all linked to the Respondent's web-site and no advertising or trading has been conducted under any of these names except rabbitskips.

No trading has obviously been carried out by Sussex Skips under the Domain Name or any interest shown in it until the Respondent registered it.

The Respondent does not consider its registration to be abusive but merely the disadvantages of a company using a geographical location within its trading name.

Non-standard submission by Respondent.

Although the Respondent denies abusive registration, a point which it missed in its Response, was the url behaviour.

When the Respondent acquired its other domain names, it was on the understanding that it did not pretend to trade as anyone else. If someone visited one of the other web-sites, they were to be redirected to the Respondent's web-site rabbitskips.co.uk, and the other web-site was to be changed but this did not happen and the Respondent did not test it. The Respondent apologises for this and it has now been changed.

The Respondent's submission is based on common practice using location, misspelt and alternative domain names. The Respondent wants customers to find it, hence a list of some 20 other domain names for .co.uk and .com.

As one of the largest and longest serving skip companies in Sussex, the Respondent uses all of the combinations of Sussex, skips, East Sussex, West Sussex, Worthing, Lancing, Brighton, Eastbourne etc, in advertisements and on the web.

Sussex and skips cannot be exclusive terms and it was and still is not the Respondent's intention to mislead.

7. Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it

must prove to the Expert, on the balance of probabilities, both that it has

Rights in respect of 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 as defined in paragraph 1 of the Policy.

Complainant's Rights

The Domain Name is identical to the name used by the Complainant. In

assessing whether or not a name or mark is identical or similar to a domain

name, it is appropriate to discount the domain suffix which is of no

relevant significance and wholly generic.

The term "Rights" is defined by the Policy to include, but is not limited to,

rights enforceable under English law, but a Complainant will be unable to rely

on rights in a name or term which is wholly descriptive of the Complainant's

business. In this case, the Domain Name comprises the combination of a

geographical location, "Sussex" and "skips", which is generic. In the case of

Aldershot Car Spares v Gordon (DRS02464) regarding the Domain Name of

"aldershotcarspares", the appointed Expert was satisfied that that Domain

Name was not wholly descriptive or generic and that the Complainant in that

case, who had traded under the name for over ten years, had unregistered

rights in the form of common law rights, in respect of the name "Aldershot Car

Spares".

In the present case, it is the view of the Expert that the Domain Name is

distinctive and that it is not wholly descriptive or generic. The Complainant

has produced evidence that it has traded under the name "Sussex Skips"

since 1 September 2004. The accounts supplied with the Complaint indicate

sufficient turnover between 1 September 2004 and 5 April 2005 to establish

that the Complaint has acquired goodwill in its trading name and the Expert

has no reason to doubt that the Complainant continued to build up

goodwill in the name in the following nine/ten months prior to the registration

of the Domain Name by the Respondent in January 2006.

The Expert finds that, for the purposes of the Policy, the Complainant does

have Rights in respect of a name or mark which is identical to the Domain

Name.

Abusive Registration

Is the Domain Name, in the hands of the Respondent, an Abusive

Registration? Paragraph 1 of the 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 detrimental to the Complainant's Rights."

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy. The Complainant has not referred specifically to any of the provisions of paragraph 3 but the Expert has considered paragraphs 3 a i C and 3 a ii of the Policy.

Under paragraph 3 a i C of the Policy, there may be evidence of Abusive Registration if circumstance indicate that the Respondent registered the Domain Name primarily "for the purpose of unfairly disrupting the business of the Complainant". Under paragraph 3 a ii, there may be evidence of Abusive Registration if circumstances indicate "that the Respondent is using the Domain Name in a way which has confused people or business into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant".

The Complainant submits that the Respondent registered the Domain Name for the sole purpose of directing potential customers looking for Sussex Skips to its own web-site and that this was brought to the Complainant's attention by a customer who wanted the Complainant's contact details, went to the Domain Name web-site and found that it contained the Respondent's details. The Respondent submits that, in registering the Domain Name, it was a logical business step to include the geographical location and that it had no intention to mislead anyone.

The Domain Name web-site and the Respondent's web-site are identical and both say "Welcome to RABBIT Skips get an Online Quotation or Hire a Skip". Anyone entering the Domain Name is automatically referred to the Respondent's web-site. The Complainant and the Respondent are in the same business and are clearly competitors. They both operate in the same geographical area, namely Sussex. The Expert does not necessarily conclude that the Respondent registered the Domain Name with the prime purpose of disrupting the Complainant's business or that it was the intention of the Respondent to pretend to trade as anyone else. However, the Expert is satisfied that some confusion has occurred and is likely to continue to occur. Although it is debateable whether it can be said that, at present, the Domain Name is exclusively referable to the Complainant, the Expert considers it reasonable to conclude that, when it registered the Domain Name on 27 January 2006, the Respondent must have been aware of the Complainant and the fact that the Complainant was trading under the name Sussex Skips and had been doing so since late 2004. The Expert concludes that, in attracting business to its own web-site in this way, the Respondent has taken unfair advantage of the Complainant's Rights. Accordingly, the Expert upholds the Complaint.

The Expert finds that the Respondent's registration of the Domain Name has taken unfair advantage of the Complainant's Rights. Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.

8 Decision

In light of the above findings, namely that the Complainant has Rights in respect of a name or 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 www.sussexskips.co.uk be transferred to the Complainant.

David King 20 October 2006