Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service
DRS 4192
LD Products, Inc. v. 4 Inkjet
Decision of Independent Expert
1. Parties

Complainant: LD Products, Inc.

Country: US

Respondent: 4 Inkjet

Country: GB

2. Domain Name

2.1 4inkjet.co.uk

3. Procedural Background

3.1 Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively).

3.2 Nominet received the hardcopy Complaint in full, with evidence, on 13 November 2006, validated it and sent it to the Respondent the next day, advising the Respondent it had 15 working days to submit a Response. The Respondent failed to submit a Response. In accordance with paragraph 5(d) of the Procedure, both parties were advised the dispute would be referred to an independent expert on payment of the requisite fee within the specified time period and Nominet duly received the fee.

3.3 Confirming there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I was appointed as the independent expert in this dispute on 10 January 2007.

4. Outstanding Formal/Procedural Issues

4.1 Default

4.1.1. Although the Respondent has failed to submit a Response, or make any other submission, the Procedure does not provide for a default decision in favour of the Complainant. The Complainant must still prove its case to the requisite standard, see §15(b) of the Procedure. However, an expert may draw such inferences from a party's default as appropriate, see §15(c), and I indicate below where I am drawing inferences.

5. The Facts

5.1 The Complainant is an internet retailer of printer supplies and accessories such as inkjet and laser cartridges. It has traded since 1999 from the domain name 4inkjets.com. In 2004 it applied for the US registered mark 4INKJETS, and the mark was registered on 20 September 2005. It had sales of $10.3 million in 2004 and $16.4 million in 2005 and spends some $6 million per year on advertising and promotion.

5.2 From the Register and the WHOIS database information, the Respondent registered the Domain Name on 15 September 2005. The printout of the site to which the Domain Name resolved as at 14 November 2006, shows it is a series of links both by type of printer and by brand. These link to the sites of suppliers of printer products -or, as the Complainant puts it, its competitors. The WHOIS report indicates the Respondent is a non-trading individual who has opted to have his or her address omitted from the WHOIS service. We have no further information about the Respondent.

6. The Parties' Contentions

Complainant

6.1 The Complainant says it has rights in a name or mark identical or similar to the Domain Name and that in the hands of the Respondent, the Domain Name is an Abusive Registration.

6.2 As to Rights, the Complainant says (and I have to some extent retained its own words here):

6.2.1. The Complainant has Rights to the Domain Name based on its registration of the Mark as a Service Mark with the United States Patent and Trademark Office. The Complainant holds a registered service mark for the word, "4INKJETS," in the category of retail store services, featuring inkjets, laser toners, and computer related accessories, including paper, electronic media, and camera cards (USPTO Registration No. 2998115). See Exhibit B, a registration certificate and Register search. The registered mark consists of the standard word mark "4INKJETS," ("the Mark"). The Complainant first used the Mark in commerce in November 1999.

6.2.2. The Paris Convention's "national treatment" provisions require member countries to grant the same protection to nationals of other member countries as they grant to their own nationals, see Art. 2(1). Because the United States and United Kingdom are members of the Paris Convention, the Complainant's rights to the Domain Name are enforceable under English law.

6.2.3. The Complainant has rights to the Mark based on its extensive and continuous use of the Mark since 1999.

6.2.3.1. The Complainant has used the Mark as its market identity and brand for nearly seven years, with great success. The Mark is identical to the Complainant's primary domain name for a bulk of its sales and marketing since 1999, and the Mark is used and has been used on signage at the Complainant's headquarters and offices. See Exhibit A, a declaration by Mr Leon, the Complainant's founder.

6.2.3.2. The Complainant has rights to the Mark because the Complainant provides goods and services under the Mark. The service mark, brand and website containing the Mark are famous worldwide. In the computer and printer industry, the brand is widely recognized for its high-quality products and excellent customer service. Furthermore, the Complainant markets and distributes its products primarily through the website www.4inkjets.com. See Exhibit A.

6.2.3.3. Sales under the Mark have grown every year since its inception, and despite the competitive market, the Complainant has grown, under the Mark, to become one of the largest online retailers of printer supplies. Sales under the Mark were $10.3 million in 2004, and $16.4 million in 2005, growth of 58.7%. See Exhibits C, media articles, and A. The Complainant expects this number to increase in 2006, with an expected sales growth of 50%.

6.2.3.4. The Complainant has rights to the Mark based on its extensive expenditures promoting the Mark. The Complainant has spent significant sums on advertising and marketing the Mark and brand to consumers and businesses worldwide in the form of Internet advertising on Google and other major search engines, diversified Internet marketing, partnerships with Internet coupon distributors, and press releases. See Exhibits D, E. The Complainant's advertising and marketing expenditures amount to approximately $6 million per year, and such efforts have directly supported and enhanced the worldwide recognition of the Mark and brand in the printer supplies industry. See Exhibit A.

6.2.4. The Domain Name is identical to the Mark. A domain name does not become dissimilar to a service mark merely because the domain name omits the "s" from the mark, see Miss Selfridge Retail Limited v. ewca.org, DRS 03392 (2006). Furthermore, the addition of the first and second level suffixes,.co.uk., is not enough to distinguish the Domain Name from the Complainant's Mark, see Starbucks Corporation v. James Leadbitter, DRS 02087 (2004).

6.3 As to Abusive Registration, the Complainant says the Domain Name in the hands of the Respondent is abusive as it was registered in a manner which, at the time when the registration took place, took unfair advantage of or was unfairly detrimental to the Complainant's rights; and has since been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights for the following reasons.

6.3.1. The Domain Name was registered as a blocking registration against the Mark in which the Complainant has Rights. (Policy ¶ 3(a)(i)(B)).

6.3.1.1. The Respondent was aware or should have been aware of the Complainant's prior use of the Mark in light of the Complainant's use of the Mark for over seven years. As exemplified in Exhibits A, C, D & E, the Complainant's Mark is recognized globally, especially in North America and Europe, where the Respondent is located. It is very likely the Respondent had come into contact with the Mark due to the heavy traffic the Complainant receives on its website from across the world.

6.3.1.2. The Respondent has never been known by the Domain Name and has never used the name in association with a bona fide offering of goods or services. Further, there is no evidence that the Respondent intended to use the Domain Name in conjunction with a bona fide offering of goods or services. Instead, the Respondent's web page for the Domain Name contains links to products competitive to those of Complainant, from which revenues are being generated through "pay-per-click" commissions. See Exhibit F. This is not a legitimate offering of goods or services. See Wagamama, Ltd. v. Balata.com, LLC, DRS 02370 (2005).

6.3.1.3. The Respondent's registration of the Domain Name does not establish any Rights in the Domain Name. The Respondent refers to its use creating Rights, detailed above. The Respondent only registered the Domain Name on September 15, 2005 – nearly six years after the Complainant began using the Mark. Thus, the Respondent's registration of the Domain Name cannot give the Respondent rights in the Mark due to the Complainant's clear prior rights in the Mark, see Oki Data Americas, Inc. v. Albert Jackson, WIPO Case No. D2004-0087 (2004); The Rockport Company, LLC v. Gerard A. Powell, WIPO Case No. D2000-0064 (2000).

6.3.2. The Domain Name was registered primarily for the purpose of disrupting the business of the Complainant. (Policy ¶ 3(a)(i)(c)). The Respondent's web page for the Domain Name contains links to products competitive to those of the Complainant, including links to competing printer supply companies like 123InkJets at www.123inkjets.com. See Exhibit F. The Respondent's use of the Domain Name to attract Internet users to its website, which promotes products and services competitive to those of the Complainant, constitutes an abusive registration. See Arcadia Group Brands Limited v. Kwan Jin, DRS 03305 (2006).

6.3.3. The Domain Name is used in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorized by, or otherwise connected with the Complainant. (Policy ¶ 3(a)(ii)). Direct evidence of actual confusion is not required. See Liz Claiborne, Inc. v. Safenames, DRS 3167 (2006).

Respondent

6.4 As noted above, no Response has been received.

7. Discussion and Findings

General

7.1 The DRS is designed as a fast, simple alternative to litigation. Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy.

7.2 Paragraph 2(a) of the Policy requires the Complainant to prove 2 elements:

"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."

The Complainant bears the onus of proof and must prove both elements on the balance of probabilities. As mentioned above, even where no Response is submitted, the Complainant must meet this burden.

7.3 The DRS's jurisdiction is limited to these issues and the remedies of cancellation, suspension, transfer or amendment of the Domain Name. The Policy does not provide for the determination of allegations of trade mark infringement or passing-off proper.

Complainant's Rights

7.4 Rights under the Policy include but are not limited to rights enforceable under English law. This includes rights to registered and unregistered trade marks and names and contractual rights to the same. The words emphasised make clear that the Policy extends to Rights to foreign marks, which are to be given equivalent recognition and treatment under the Policy.

7.5 The Complainant relies on its US registered service mark and under the Policy, this is sufficient to create Rights. The Complainant also relies on Art. 2, the national treatment provision, of the Paris Convention, which it contends renders the Mark directly enforceable in English law. The Paris Convention is not self executing and without implementing legislation, although it binds the Crown, it cannot be directly relied upon by individuals. Certain parts of the Convention have been implemented, such as Art. 6bis dealing with well-known marks, enacted in §56 of the 1994 Trade Marks Act. The same is true of the TRIPS Agreement. The national treatment provisions are in any event concerned with non-discriminatory treatment and avoidance of requirements for residence or establishment and not the direct enforceability of marks registered abroad. In so far as the Complainant was advancing an argument that the Mark is a fameous or well-known mark under the Paris Convention and §56 of the 1994 Trade Marks Act, I make no finding. This is academic as I am concerned here with applying the Policy and not the law of trade marks proper, and I am satisfied that based on the Mark, the Complainant has Rights for the purposes of the Policy.

7.6 As noted above, the Policy also recognizes Rights in unregistered marks -arising from actual use of a name in trade under the law of passing-off —and extends equivalent recognition to similar foreign rights. Trade names, particularly fameous ones, are recognised in the US, see Bettinger, Domain Name Law and Practice at p.909. The Complainant has submitted evidence of its use of the Mark as a trade name/brand name and as a domain name since 1999 and of the extensive sales and promotion with regard to the name. I am satisfied from the evidence that the Complainant's actual use in trade of the name also creates Rights for the purposes of the Policy.

7.7 Paragraph 2(a)(i) of the Policy requires that the name or mark in which the Complainant has Rights "is identical or similar to the Domain Name." In determining this, suffixes are to be ignored. We are therefore comparing the relevant aspects of the Domain Name, namely "4inkjet," with the Mark, "4INKJETS". Case is irrelevant and I accept the Complainant's submission that the "s" does not distinguish the Domain Name. I am satisfied the Complainant has Rights in a mark identical to the Domain Name.

Abusive Registration

7.8 The second element the Complainant must prove under §2(a) of the Policy, is that the Domain Name is an Abusive Registration, defined in §1, as follows:

"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."

7.9 §3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration. The listed factors are that the Respondent registered or acquired the Domain Name "primarily" to: sell it above cost to the Complainant (3aiA); block the Complainant's registration of it (3aiB); unfairly disrupt the business of the Complainant (3aiC); or as part of a pattern of abusive registrations (3aiii). Other factors relate to the use following registration, for example, circumstances indicating the use has or may confuse (3aii). Conversely, §4a of the Policy provides a non-exhaustive list of factors which may evidence that a registration is not an Abusive Registration.

8. Unfair Disruption and Blocking Registration

8.1 I will deal with these two factors together as the points made by the Complainant in relation to them invoke the Chivas test, see Chivas Bros Ltd v. D. W. Plenderleith DRS 00658. The test is, where a Respondent registers a domain name: (1) identical to a name in respect of which a Complainant has Rights; (2) that name is exclusively referable to the Complainant; (3) there is no obvious justification for the Respondent having adopted that name; and (4) the Respondent has come forward with no explanation for having selected the domain name; it will ordinarily be reasonable to infer that the Respondent registered the domain name for a purpose and that that purpose was Abusive.

8.2 The second limb of the Chivas test might have been open to question on the basis the Mark has descriptive elements, subject to distinctive meaning acquired from use. That is, the Respondent might have adopted it innocently to describe its services, and therefore without abusive intent. However, it is extremely unlikely the Respondent was unaware of the Complainant in this case.

8.3 Indeed, even on the most favourable interpretation for the Respondent, I find it impossible to believe that before it registered the Domain Name, it did not conduct, at least, some sort of search. As the Google search submitted by the Complainant shows, even the most precursory exercise would have turned up the Complainant's site. Here the position appears to be that the Respondent, concealing its identity, deliberately selected the Complainant's name on the basis that it had not registered the .co.uk version and cynically pointed it at rivals' sites in order to earn the click through revenue.

8.4 The Respondent's silence is deafening. If the Respondent had an innocent explanation for its selection of the Domain Name, one would expect it to have come forward with it.

8.5 I find both blocking registration and unfair disruption made out and that the registration was Abusive. I do not propose to go on and examine the other heads raised.

9. Decision

9.1 I find that the Complainant has Rights in a mark which is identical to the Domain Name, which is an Abusive Registration in the hands of the Respondent. Accordingly, the Domain Name should be transferred to the Complainant.

Victoria McEvedy

24 January 2007