Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 04271
COURTESY SHOES LIMITED v. CHAO INVESTMENTS LIMITED Decision of Independent Expert
1. Parties:

Complainant: Courtesy Shoes Limited

Country: GB

Respondent: Chao Investments Limited

Country: NZ

2. Domain Name:

wynsors.co.uk ("the Domain Name")

3. Procedural Background:

The Complaint was received by Nominet electronically on 4 December, 2006 and in hardcopy in full on 5 December, 2006. Nominet validated the complaint and informed the Respondent, via his listed Registrant contact and Admin contact (David Halstead of Domain Administration Limited at the registrant's recorded address in New Zealand) on 5 December, 2006, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 29 December, 2006) to submit a Response. No substantive Response or other reply of any sort was received. Nominet informed the Complainant accordingly on 2 January, 2007, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly received by Nominet on 5 January, 2007.

Nominet invited the undersigned, Keith Gymer ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert on 15 January, 2007.

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

None.

5. The Facts:

The Complainant, Courtesy Shoes Limited, was incorporated in 1956. It has used the WYNSORS trade mark in the UK since at least 1984. It has UK trade mark registrations 2382557A/B for WYNSORS, filed in January 2005 and a Community Registration 4288536 dating from March 2005.

From the WHOIS records and the evidence provided with the Complaint, the Domain Name wynsors.co.uk was actually first registered to Robert Morrison on 16 May, 2004 and was subsequently transferred to the Respondent, Chao Investments Limited, on or about 24 July, 2006. At the time of the Complaint, however, the Nominet Register still showed Mr. Morrison as the Billing Contact. At the time the Complaint was filed, the WHOIS record also showed the "Registrant Type" was supposedly a "Non-UK Corporation".

6. The Parties' Contentions:

Complainant:

The Complainant has asserted that:

1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and

2. The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).

The Complainant made supporting submissions and attached Exhibits as follows:

Exhibit 1: Witness Statement by Company Secretary

Exhibit 2: Trade Mark Registration Details

Exhibit 3: Printout of www.wynsors.co.uk home page

Exhibit 4: Printout from www.wynsors.com, Google search and certain email copies

Exhibit 5: Printout of NZ Companies Register search

1. This is a complaint by Courtesy Shoes Limited (hereafter "Courtesy"), a UK company of Parkside, Park Road Industrial Estate, Bacup, Lancashire, OL13 0BW.

2. Courtesy is a major UK manufacturer, wholesaler and retailer of footwear, bags and accessories.

3. Courtesy is the owner of the trade mark WYNSORS which has been used in the UK since at least 1985 as a retail brand in relation to footwear, bags and accessories. Sales of goods under the WYNSORS brand have exceeded £29 million this year.

4. Courtesy enjoys substantial goodwill and reputation in relation to footwear sold under the WYNSORS trade mark.

5. There is attached hereto marked Exhibit 1 a witness statement from Mr Mark Chalmers, the Company Secretary of Courtesy, which sets out the substantial use made by Courtesy of the trade mark WYNSORS over the last 20+ years.

6. Courtesy is the owner of UK trade mark registration numbers 2382557A WYNSORS and 2382557B Wynsors (stylised) in class 25. Courtesy is also the owner of CTM registration number 4288536 WYNSORS in classes 9, 18, 25 and 35. Details of these registrations are attached marked Exhibit 2.

7. Wynsor is an unusual and distinctive word. A search of the internet via the Google search engine for UK web-sites reveals only 322 hits of which the first two are directly or indirectly Courtesy's. Please see the attached pages of results.

8. On 16th May 2004, the domain name wynsors.co.uk was registered by a Robert Morrison with his address details withheld.

9. We attach Exhibit 3 a copy of pages of the web-site to which wynsors.co.uk currently points. We also attach Exhibit 4 a copy of pages from Courtesy's branded web-site wynsors.com. You will see that the respective sites and the products they offer are in direct competition.

10. When the domain name came to Courtesy's attention, Courtesy wrote an email on 13th January 2005 to the registration agent who had registered the domain name on behalf of Mr Morrison complaining about the registration. A copy of the exchange of emails is attached.

11. Courtesy followed up on this exchange earlier this year and were informed that ownership of the domain name has been transferred on 5th October 2006.

12. The new owner of the domain name is Chao Investments Limited, trading as DHG, of PO Box 37410, Parnell, Auckland, 1151 New Zealand. Courtesy has written to Chao Investments Limited but as of the date of this application, no response has been received.

13. Mr Robert Morrison appears to show a pattern of abusive registrations. We draw your attention to the following Nominet DRS decisions found against him: DRS 03836 DRS 03809 DRS 03719 DRS 03702 DRS 03676 DRS 03578 DRS 03408 DRS 03035 DRS 03028 DRS 03021

14. We have no information about the activities of Chao Investments Limited. We have searched the New Zealand register of companies and cannot find a registered company of that name. We attach Exhibit 5 a copy of the relevant search screen from the New Zealand Companies Office web-site. What we do know is that the domain name wynsors.co.uk continues to point to a web-site offering footwear for sale in clear infringement of the rights of Courtesy.

15. We have found two Nominet DRS decisions found against domain name registrants having exactly the same address as Chao Investments Limited. The reference numbers are DRS 03931 and DRS 03706. This seems to indicate that although the registrant of the domain name wynsors.co.uk has changed, it continues to be an abusive registration, which is part of a pattern of abusive registration of domain names.

16. We point out the following significant factors in this matter:

16.1. The domain name is identical to Courtesy's trade mark WYNSORS;

16.2. The name Wynsor is extremely rare and pluralised in each case;

16.3. The non-UK registrant has chosen to use a UK country specific domain;

16.4. The trade mark WYNSORS is a registered trade mark;

16.5. Courtesy enjoys goodwill and reputation in the trade mark WYNSORS by virtue of the substantial use made of it in the UK;

16.6. The use made of the domain name wynors.co.uk by the present and previous registrants is an infringement of Courtesy's registered rights;

16.7. The use made of the domain name wynors.co.uk by the present and previous registrants is an actionable "passing-off" under UK law;

16.8. The current registrant Chao Investments Limited does not appear to exist

17. Having regard to the above points and to the evidence submitted to support these grounds, we submit that the domain name has been registered with the purpose of disrupting the business of Courtesy.

18. We further submit that the manner in which the domain name is used will be likely to confuse the customers of Courtesy into believing that the web-site to which it points is either operated by Courtesy or is in some way connected with Courtesy's retail business.

19. Chao Investments Limited and Robert Morrison have shown a pattern of registration of domain names which correspond to well-known names or trade marks in which they have no apparent rights, and the registration of wynsors.co.uk appears to be part of that pattern.

20. We can find no record of a New Zealand company by the name Chao Investments Limited, and it appears that Nominet has been supplied with false contact details

21. Having regard to all of the above, we submit that Courtesy has registered and common law rights in the trade mark WYNSORS; and that the domain name in the hands of Chao Investments Limited is an abusive registration.

22. We hereby request that the domain name be transferred to Courtesy.

Respondent:

The Respondent made no Response to, and raised no challenge to, any of the facts and statements submitted by the Complainant.

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 Complainant in this case has asserted that it has rights in the name WYNSORS and that this name is identical or similar to the Domain Name.

The Complainant provided evidence of trade mark registrations for this name. The earliest application for trade mark registration dates from January 2005, which was after the date of registration of the Domain Name originally by Mr Morrison.

However, it is apparent from the evidence, and unsurprising in the light of the number of other DRS cases involving domain names registered by Mr Morrison, that use of the WYNSORS name and mark significantly predates the registration of the Domain Name at issue. Consequently, the Expert has no doubt that the Complainant would have had substantial unregistered common law rights in WYNSORS prior to the original registration of the Domain Name in any event.

As the distinctive element of the Domain Name "wynsors.co.uk" is identical to the Complainant's WYNSORS mark, the Expert concludes that the Complainant does have Rights in this case in respect of a name or mark, which is identical to the Domain Name.

Abusive Registration

The Complainant also has to show that the Domain Name is 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 unfairly detrimental to the Complainant's Rights.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy. Potentially applicable in the present case in particular are the examples in Paragraph 3a(ii), (iii) and (iv):

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."

iii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent  is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv It is independently verified that the Respondent has given false contact details to us [Nominet];

However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

The evidence demonstrates that the Domain Name has been used to redirect surfers seeking WYNSORS to a website with links, which, if clicked through, would generate income for the Respondent, with no reference to the Complainant. These pages provide links to numerous other webpages, including those of competing brands, not connected with the Complainant or its businesses.

In the absence of any attempt by the Respondent to otherwise explain or justify its acquisition and use of this Domain Name, the clear inference must be that the Respondent has no honest explanation to offer and has indeed simply taken the Complainant's name and used it in the Domain Name for the specific purpose of diverting potential customers of the Complainant away from the Complainant and to a website with links which are or purport to be in the same or a similar field to the Respondent's businesses and which would generate income for the Respondent if visited by the potential customer. The Respondent has thereby misappropriated the Complainant's property – their goodwill in the WYNSORS name, with the intention of unfairly profiting from that misrepresentation.

In the Expert's view, this evidence is sufficient to substantiate the Complainant's assertion that the Domain Name is an Abusive Registration for the purposes of the Policy and the Expert's final Decision has been made on that basis.

However, the Complainant has also asserted that there is at least circumstantial evidence to suggest that the Respondent may be party to a pattern of (Abusive) registrations, implying that the presumption under Paragraph 3 (c) of the Policy might apply. Although the evidence is indeed circumstantial, as summarised below, it is sufficient, in the Expert's view to raise concerns, which would justify further enquiries by Nominet to establish the facts.

Under the provisions of Paragraph 3 (c) of the Policy:

"There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c))." [Paragraph 4 (c) puts the onus on the Respondent to prove that the registration of the Domain Name is not an Abusive Registration.].

The original registrant of the Domain Name was Robert Morrison. Mr Morrison has been the Respondent in at least eleven previous DRS cases, generally involving a similar fact pattern of incorporating or adapting (in typographically close variants) the brand names of genuine businesses as domain names and exploiting them in a manner that has repeatedly put Mr Morrison on the losing side in such disputes.

Although apparently having transferred the registration of the Domain Name to "Chao Investments Limited", Mr Morrison nevertheless remains specified as the Billing Contact, which suggests he also retains at least some potential financial interest in the Domain Name.

Additionally, as the Complainant has observed, the address given for "Chao Investments Limited" as registrant has also appeared in a number of previous disputes. In the present case, the Registrant's contact (and Administrative Contact) is actually identified as Mr David Halstead, with the same address as "Domain Administration Limited", which was specified similarly in cases DRS03706 and DRS03931 and also in DRS03700. In two of those cases, the Respondent registrant was ostensibly identified as "Kwan Jin", another Respondent on the losing side in more than three recent DRS disputes. Although it cannot be taken into account for the application of Paragraph 3 (c) under the DRS, it is also to be noted that Domain Administration Limited/Mr Halstead have been cited as losing Respondent in at least two WIPO UDRP Decisions (D2006-1147; D-2006-0921) and at least two NAF UDRP Decisions (FA0611000831176; FA0608000785539).

In the present case, the Complainant has suggested that the registrant "Chao Investments Limited" may in fact have no real existence, leading to the possibility that it may perhaps only have a virtual presence on the Nominet domain register. It is conceivable, in hindsight, that the same may be true of the registrant "Kwan Jin". The possibility therefore arises that a registrant's name and contact details may be simply ciphers to conceal the true beneficial ownership and control of the domain name(s) at issue in such cases, precisely because the use of such domain names in the parasitic exploitation of the rights of others, as in this case, can be expected to attract objection. In the Expert's view, in any case where such suspicions arise, it would merit further investigation by Nominet, to confirm whether or not false or intentionally misleading contact details have been provided to Nominet, regarding the registrant's name on the Register.

In the light of the circumstantial evidence in this case, therefore, the Expert suggests that Nominet should seek appropriate confirmation of the legal existence of "Chao Investments Limited", particularly in relation to any other .uk domain names for which it is the named registrant and, in the absence of proof of identity, should consider invoking sanctions under Paragraph 16 of Nominet's Terms and Conditions (on the grounds that Respondent has provided "significantly inaccurate, not correct, unreliable or false contact details (including names), failed to keep [his] contact details up to date, or failed to give [Nominet] those details at all").

Regardless of whether or not the nominal registrant, Chao Investments Limited, has any real existence, and irrespective of the unanswered questions this raises about the extent to which others may have the real controlling interest in the Domain Name, for the reasons previously given above, the Expert concludes that the Domain Name was originally registered or otherwise acquired, 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 that it is an Abusive Registration for the purposes of the Policy.

8. Decision:

Having concluded that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert orders that the Domain Name, wynsors.co.uk, should be transferred to the Complainant.

Keith Gymer Date January 25, 2007