Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS Number 05427 Silicalia SL and Simmy Ceramics Decision of Independent Expert
1. Parties:

Complainant: SILICALIA SL

Country: Spain

Respondent: Simmy Ceramics

Country: GB

2. Domain Name:

compacmq.co.uk

3. Procedural Background:

The complaint was received on 31/01/2008 and hardcopies received in full on 05/02/2008. A copy of the complaint was sent to the Respondent on 06/02/2008 but no response was received. Mediation was therefore not possible and the Complainant had until 14/03/2008 to pay the fee for an expert decision. The Complainant paid the fee of £750 for an expert decision on 12/03/2008 by bank transfer, although the bank deducted £13 charges from the amount paid. Nominet UK confirmed to the Complainant that it would proceed with the appointment of an expert on the understanding that the Complainant would pay the deducted bank charges on its representative's return to the office on 26/03/2008. I was subsequently selected as the expert.

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

The file sent to me from Nominet UK did not confirm whether or not the Complainant had in fact paid the bank charges deducted from the fee. However, Nominet UK subsequently confirmed by email that the outstanding fee was paid on 3 April 2008.

5. The Facts:

The Complainant is a Spanish company involved in the production, manufacture, distribution and sale of marble. One of its trade marks is C COMPAC MARMOL & QUARTZ. It is used extensively on the website of its subsidiary company, Marmol Compac, S.A. at www.compacmq2.com in the logo form shown below:



The Complainant has a pending application to register the logo as a Community trade mark. This was applied for on 12 July 2006, although the application is being opposed. The Complainant also has Spanish registered trade mark for COMPAC MARMOL & QUARTZ, applied for on 16 February 2004. It also owns registrations for several domain names comprising "compacmq", mostly registered on 13 April 2004.

The Respondent, Simmy Ceramics, is a business based in London. Its website states "we are importers, stockists & distributors of tiles, marble, bathrooms and associated products.". The Complainant says that the Respondent was a non exclusive distributor of its products.

The Respondent registered the Domain Name on 20 July 2004.

The Domain Name currently resolves to page on the Respondent's website at www.simmyceramics.com that offers for sale a range of kitchen tiles under the name "Mirror Diamond" The Respondent's website states that "The Mirror Diamond series is a unique man-made stone, featuring all the wonderful characteristics of natural granite, with superb added advantages". Kitchen tiles is one of the uses for the Complainant's marble and quartz products.

6. The Parties' Contentions:

Complainant:

In summary the Complainant says that:

•    The Complainant is a Spanish company incorporated in 1975 and is dedicated to the production, manufacture, distribution and sale of marble.

•    The Complainant has numerous Rights in respect of the name "compacmq" which makes reference to one if its core trademarks: C COMPAC MARMOL & QUARTZ. These include:

Domain name compacmq.com, registered on April 13, 2004;

Domain name compacmq.net, registered on April 13, 2004;

Domain name compacmq.org, registered on April 13, 2004;

Domain name compacmq.info, registered on April 13, 2004;

Domain name compacmq.biz, registered on April 13, 2004;

Domain name compacmq.com.es, registered on April 13, 2004;

Domain name compacmq.org.es, registered on April 13, 2004;

Domain name compacmq.nom.es, registered on April 13, 2004;

Domain name compacmq.es, registered on April 11, 2007;

Community Trademark application No. 5.194.097 for the C COMPAC MARMOL & QUARTZ logo, applied for on July 12, 2006;

Spanish Trademark No. 2.580.958 for COMPAC MARMOL & QUARTZ, applied for and registered with effect from February 16, 2004.

•    The Complainant's websites at www.silicalia.es and www.compacmq.com automatically redirect to the website of its subsidiary company, Marmol Compac, S.A. at www.compacmq2.com, where the Complainant's products are advertised.

•    The Respondent is a British company dedicated to the importation and distribution of tiles, marble, bathrooms and associated products.

•    The Respondent registered the Domain Name on July 20, 2004, after the registration of the various domain names comprising "compacmq" by the Complainant.

•    The Complainant and the Respondent have had a commercial agreement in recent years for the distribution of the Complainant's products in the UK. This relationship is not exclusive so it allows both parties to trade with other companies in the industry.

•    The Respondent has never had any type of authorisation to register any "compacmq" domain name as the Complainant has wanted direct control of the on-line promotion of its products in order to benefit all of its distributors and commercial partners equally and not only of them.

•    The unauthorised registration of the Domain Name by the Respondent is abusive because it was made to block its registration by the Complainant.

•    The Respondent is not even using the Domain Name to promote the sale of the Complainant's products but redirects to a page of its own website that omits all information about the Complainant or its products and instead promotes competing products called "Mirror Diamond".

•    The commercial origin of the "Mirror Diamond" products is not indicated creating a false connection with the Complainant so that consumers who think they are entering a website at www.compacmq.co.uk will believe that they are reading information about the Complainant's "compacmq" products. Such use cannot be conceived of as a genuine offering of goods and services. On the contrary, it misleads consumers, takes unfair advantage and is unfairly detrimental to the Complainant.

•    In order to establish consumer confusion, there is no need of any evidence of actual confusion having occurred. It is enough to show that on the balance of probabilities, that there is a risk of confusion, as is the case here.

•    The Respondent is using the same "commercial strategy" with the name of a direct competitor of the Complainant in that the website www.technistone.co.uk redirects to the same "Mirror Diamond" page on the Respondent's website. Technistone refers to a Czech company, Technistone A.S. which competes in the same market sector as the Complainant. Therefore, both www.compacmq.co.uk and www.technistone.co.uk, which in fact refer to competing companies and products, both automatically redirect to the same web page of the Respondent's website that offers competing products under the Mirror Diamond name, without any reference to their commercial origin.

•    Consequently UK consumers will think that the "Mirror Diamond" products are manufactured by one or other of the Complainant or Technistone A.S. Hence, the use that is being made of the Domain Name is unfairly detrimental to the Complainant and takes unfair advantage of its Rights and must be considered as abusive.

Respondent:

The Respondent did not respond to the complaint.

7. Discussion and Findings:

General

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

8. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
9. The Domain Name, in the hands of the Respondent, is an Abusive Registration.

These terms are defined in the Nominet UK 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's registered trade mark rights relate to the name COMPAC MARMOL & QUARTZ rather than the name "compacmq". However, in the logo form identified in section 5 above, the dominant part of the name is COMPAC with the MARMOL & QUARTZ part being subsidiary to it. The Complainant's use in this logo form also creates common law rights in the name COMPAC.

The Complainant also has domain names based on and incorporating "compacmq", at least one of which, compacmq.com, resolves to the website of its subsidiary company, Marmol Compac, S.A. at www.compacmq2.com where the Complainant's products are advertised.

On the evidence before me I find that the Complainant does have Rights in the names "compacmq" and "Compac", being a name or mark which are, respectively, identical or similar to the Domain Name, ignoring the .co.uk suffix.

Abusive Registration

From the matters relied on by the Complainant in its submissions, the following parts of paragraph 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;"

The Respondent is in the business of selling tiles, marble, bathrooms and associated products. It is, or has been, a distributor of the Complainant's products. It seems that the Respondent will therefore have been aware of the Respondent and its use of the Compac/Compac Marble & Quartz and compacmq names when registering the Domain Name. The Complainant confirms that it never gave any authority to the Respondent to register any domain name incorporating the compacmq name as it wished to control the use of such domain names for the benefit of all of its distributors.

Registering the Domain Name clearly acts a block to anyone else, including the Complainant, registering the Domain Name but the same can be said of any domain name registration. However, in this case it appears that the Respondent will have been aware that it was merely a non exclusive distributor of the Complainant's products in the UK when registering the Domain Name and it did so without any authority from the Complainant and shortly after the Complainant had registered eight of its nine registrations of domain names comprising "compacmq". I believe that is sufficient to demonstrate, on the evidence before me and on the balance of probabilities, that the Respondent registered the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights, and such action by the Respondent took unfair advantage of and was unfairly detrimental to the Complainant's Rights.

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."

In addition, the Respondent is using the Domain Name, not in order to promote the Complainant's products that it distributes but to resolve to page of its website that exclusively promotes competing products without any indication of the provenance of those goods. The name "compacmq" seems inherently distinctive and it is therefore likely that anyone attempting to enter the website www.compacmq.co.uk will be looking for the Complainant or its products. However, on doing so, the customer is redirected via deep linking directly to a page of the Respondent's website offering kitchen tiles under the Mirror Diamond name. That is likely to lead to a substantial number of such customers wrongly assuming or believing that those products are made by or otherwise connected to the Complainant. There is not even any attempt made to inform the customer that the Mirror Diamond kitchen tiles being promoted and offered for sale have no connection to the Complainant. Such use of the Domain Name clearly takes unfair advantage of and is unfairly detrimental to the Complainant's Rights.

Paragraph 3 a 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."

The Complainant points to the fact that the website www.technistone.co.uk redirects to the same "Mirror Diamond" page on the Respondent's website, Technistone being the name of one of the Complainant's competitors. The WHOIS search undertaken by the Complainant shows that the registrant of the technistone.co.uk domain name is simply recorded as "S.M" and they have opted to omit any address details from the WHOIS service claiming to be a non-trading individual. The Complainant urges me to accept that as this domain name redirects to a web page owned by the Respondent it can be assumed that the Respondent has a right or licence over it. There is obvious force in the Complainant's point, particularly as the printouts from the Respondent's website exhibited by the Complainant show that the Respondent's Simmy Ceramics business was founded and is run by someone with the initials S.M., one Simmy More. The registrant of the technistone.co.uk domain name has of course opted to omit any address details from the WHOIS service on the basis of a claim to be a non-trading individual. If that claim was correct, it would appear to rule out the Respondent as being the person who has registered the technistone.co.uk domain name. However, the Respondent made the same claim to be a non-trading individual in respect of the Domain Name.

On the evidence before me I am prepared to accept that the Respondent is in fact also the registrant of the technistone.co.uk domain name. That domain name also resolves to the same page of the Respondent's website as the Domain Name. On the evidence before me there is nothing to suggest that the Respondent has any connection with Technistone AS that might give the Respondent any rights in the Technistone name. The Respondent had the opportunity to demonstrate if in fact it did have rights to use the Technistone name but chose not to respond to the complaint. Therefore, I am prepared to accept, on the evidence before me, that the Respondent has no apparent rights in the Technistone name.

However, I am not satisfied that registering just two domain names can be said to be a "pattern of registrations". I believe two registrations is insufficient to form any sort of identifiable pattern in the sense of something that forms a consistent or characteristic arrangement.

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;"

The Respondent has used the Domain Name to resolve to a page of its website offering kitchen tiles under the Mirror Diamond name. The Respondent's website shows that the Respondent has a business involved in the sale of tiles, marble, bathrooms and associated products. However, I do not believe that using the Domain Name to resolve to a page of the Respondent's website that exclusively features products that compete with the Complainant's goods can be said to be using it in connection with a genuine offering of goods or services, and certainly not where there is no attempt to inform the consumer about the true provenance of the goods being advertised. There is nothing genuine about misleading customers.

Paragraph 4 a i B "Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;

The Complainant and Respondent have a commercial relationship of manufacturer and distributor. Therefore, the Respondent does have a legitimate connection with the compacmq and Compac/Compac Marble & Quartz names. However, and whilst I have not been provided with a copy of the distribution agreement between the parties, the Complainant says that the Respondent has never had any authorisation to register any "compacmq" domain name as the Complainant wants to control the on-line promotion of its products for the benefit of all of its distributors and commercial partners equally and not just one of them. The Respondent has had the opportunity to respond to that allegation and has chosen not to do so. In any event, the mere fact of being a distributor of the Complainant's products cannot justify the registration and use of the Domain Name when that use is to resolve directly to a page of the Respondent's website exclusively featuring competing products.

10. 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 names "compacmq" and "Compac" 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

8 April 2008