Nominet UK Dispute Resolution Service

 


Nominet.uk Dispute Resolution Service

DRS 03980

Piczo, Inc –v- Realm Solutions, Inc

Domain Name:

Decision of Independent Expert

1. The Parties

The Complainant

The Complainant is Piczo, Inc. of USA.

The Respondent

The Respondent is Realm Solutions, Inc. of Canada.

2. The Domain Name

The disputed domain name is ("the Domain Name").

3. Procedural Background

This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure ("the Procedure") and the Nominet UK Dispute Resolution Service Policy ("the Policy").

The Complaint entered into Nominet's system on 8 September 2006 and was validated on 13 September 2006 and sent to the Respondent. No Response having been received and the Complainant having paid the relevant fee on 13 October 2006, the Complaint was referred to me on 19 October 2006 for a Decision.

4. Outstanding Formal/Procedural Issues

Having reviewed the file I am satisfied that Nominet took all proper steps to bring the Complaint to the attention of the Respondent, including sending the Complaint by airmail to the contact address shown in its domain name register database and sending it in electronic form to rob@realmsolutions.com (paragraph 2a of the Rules).

Under Nominet's terms and conditions of registration, it is the responsibility of the registrant of a domain name to provide Nominet with accurate contact details and to keep such details updated.

Paragraph 15b of the Procedure provides:

"If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down by the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

I am aware of no such exceptional circumstances in this case.

5. The Facts

The Domain Name was registered by the Respondent on 16 February 2005.

6. The Parties' Contentions

The Complaint

The Complainant's contentions as set out in the Complaint may be summarised as follows:

(1) The Complainant is a company based in San Francisco, California, USA Since February 2004, it has been operating a website, www.piczo.com, which offers a free website design and hosting service under the trade mark PICZO. The Complainant's website and service is aimed at teenagers between the ages 13 and 16, and allows them to create personal websites that contain personal photos, journals, movie clips, and favourite music. The Complainant's website has become extremely popular worldwide and has 10 million registered users worldwide, six million of whom are from the UK.

(2) Piczo has applied to register the trade mark PICZO in the United States, the European Union, and elsewhere.

(3) The Respondent is not known as "Piczo". The Respondent is not affiliated with Complainant, nor is it a licensee or distributor of Complainant's services. The Respondent does not have a legitimate, good faith reason to use the domain name, as "Piczo" is a term coined by Complainant and it has no common meaning in the English language other than to refer to the Complainant's business.

(4) At the time the Domain Name was registered, on 15 February 2005, the Complainant had established common law rights in the trade mark PICZO. The Complainant had been offering its services via its website since February 2004. The Complainant began signing up users in the UK in June 2004 and, as of February 2005, it had signed up over 405,000 users worldwide, with approximately 250,000 in the UK.

(5) The Domain Name is being used in a manner which takes unfair advantage of the Complainant and its teenage customers, and is unfairly detrimental to the reputation of the Complainant and the online activity of its customers.

(6) The website which is linked to the Domain Name is a site that prominently uses Complainant's name and trade mark, PICZO, in connection with informational links on "Popular Categories" such as "Make Your Own Website," "Make My Own Free Website," and "Piczo". Teenagers in the UK who visit the Domain Name, thinking it is a UK version of the popular site, are likely to see the "Piczo" name and website-creation information and mistakenly believe that they are at the Complainant's website, rather than a copycat site. This may lead to reputational damage to the Complainant.

(7) The Complainant recently opened an office in the UK, and with increasing press coverage given to Complainant's expanding business, the potential for confusion among UK customers and damage to the Complainant's business reputation will increase if the domain name is not transferred.

The Complainant seeks a transfer of the Domain Name.

The Response

No Response has been filed in this case.

7. Discussion and Findings

Relevant Provisions of the Policy

Under paragraph 2 of the Policy:

"(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, that:

(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.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities."

Under paragraph 1 of the Policy the term "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."

The term "Abusive Registration" is defined in paragraph 1 of the Policy as referring to 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 Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name in the hands of the Respondent is an Abusive Registration. Those factors include, under 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."

A further possible factor, under paragraph 3(a)(ii), relates to:

"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 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name in the hands of the Respondent is not an abusive registration.

Rights

With regard to the first limb of the test, the Complainant is a US company the name of which (without the suffix Inc) is identical to the Domain Name (without the suffix .co.uk). It has provided evidence of trade mark applications for the trade mark PICZO, but no relevant trade mark registrations.

Notwithstanding the lack of any registered trade mark, I accept on the evidence that the Complainant's name has become well known in the UK and is distinctive of the Complainant. On that basis I find that the Complainant's use of the trade mark PICZO has created sufficient reputation and goodwill in that mark to give rise to Rights for the purposes of paragraph 2 of the Policy. In particular, the Complainant's rights in the mark would be sufficient to found an action for passing off.

Accordingly, the first limb of the test under paragraph 2 is satisfied.

Abusive Registration

In this case, the Domain Name consists of the Complainant's trade mark, in an unadorned form, with the suffix .co.uk. The trade mark in question is distinctive of the Complainant, is neither generic nor descriptive and is an invented term that has no meaning in English save to refer to the Complainant's website and business.

Based on the evidence submitted, I find that as at the date of registration of the Domain Name, the Complainant's business was already well established in the UK and was growing rapidly. It is therefore likely, on the balance of probabilities, that the Respondent registered the Domain Name with knowledge of the Complainant's use of, and goodwill in, the name "Piczo". The Respondent has not seen fit to offer any alternative explanation of the reason for registering the Domain Name.

The Respondent has used the Domain Name to link to a website which is headed "Piczo.co.uk", and which purports to offer services similar to those of the Complainant. Further, in view of the nature of the Domain Name as described above, it is likely that a significant number of internet users who access the Respondent's site will do so in the mistaken belief that it is that of the Complainant. This "initial interest confusion" is the result of the Respondent's effective impersonation of the Complainant by use of the Domain Name.

In the circumstances, I find that the Respondent has used the Domain Name in a manner that has confused, or is likely to confuse, people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. I also infer that the Respondent is likely to have registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.

I therefore conclude that the Domain Name was registered and has been used by the Respondent in a manner which took unfair advantage of, or was unfairly detrimental to, the Complainant's rights and is therefore an Abusive Registration in the hands of the Respondent.

The second limb of the test set out in paragraph 2 of the Policy is satisfied accordingly.

7. Decision

The Complainant has established on the balance of probabilities both that it has Rights in a name or mark that is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Accordingly this Complaint succeeds and I direct that the Domain Name be transferred to the Complainant.

Steven A. Maier

2 November 2006