Nominet UK Dispute Resolution Service

 
Nominet Dispute Resolution Service DRS 05882 Energy Brands Inc v Willem van Oppens Decision of Independent Expert
1. PARTIES

Complainant: Energy Brands Inc

Country: US

Represented by: Simmons & Simmons

Respondent: Willem van Oppens

Country: Spain

2. DOMAIN NAME

2.1     www.glaceau.co.uk ("the Domain Name")

3. PROCEDURAL BACKGROUND

3.1     On 16 July 2008, Nominet entered on its system the complaint and on 17 July 2008 hard copies of the complaint were received. On 18 July 2008 the complaint was validated and the complaint documents generated. On 4 August 2008 the electronic response was entered on the Nominet system and on 11 August 2008 the electronic reply stage was entered on the system. On 11 August 2008 the response and the reply hardcopies were received. On 26 September 2008 Nominet received the complaint fees from the Complainant.

3.2     On 30 September 2008, Patricia Jones ("the Expert") confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties which might call into question her independence and/or impartiality.

3.3     The Expert was appointed on 30 September 2008.

4. THE FACTS

4.1     The Complainant supplies non-alcoholic, active lifestyle beverages under the GLACEAU mark. The Complainant began trading in GLACEAU drinks in the US in 1996.

4.2     The Complainant registered the domain name glaceau.com on 13 April 1999. The Complainant is the owner of various UK and Community trade marks, including two Community trade marks registered in 2002 for GLACEAU in relation to water, non-alcoholic beverages and fruit drinks.

4.3     In May 2007, the Complainant was acquired by Coca-Cola for $4.1 billion. This acquisition was reported in the Independent newspaper on 26 May 2007. The article described GLACEAU as the second best-selling manufacturer of flavoured water in the US and reported that Coca-Cola planned to push one of the GLACEAU products, VITAMINWATER in overseas markets.

4.4     The Respondent registered the Domain Name on 3 June 2007.

4.5     The website at the Domain Name is titled "Ice, Water and Company Glac-Eau-co, one of the nicest sports to do, icewaterclimbing in the mountains…." The site contains a blog entry dated 7 May 2008 on icewater climbing, which is described as "a sport like no other, especially in the scottisch (sic) and britisch (sic) mountains." The blog entry states "our companions are both French, as english speaking persons so that's why we gave it the name GlacEau/icewater) (&) co (company).uk."

4.6     On 19 May 2008, shortly after the Respondent's first blog entry, the Complainant's GLACEAU VITAMINWATER product was launched in the UK. This was the first time the GLACEAU products were available in Europe.

5. THE PARTIES' CONTENTIONS

The Complainant

5.1     The Complainant has rights in a name or mark that is identical or similar to the Domain Name:

(a) The Domain Name is identical or similar to the Complainant's registered trade marks.

(b) The Complainant has broad rights in the UK, with the consequence that consumers exclusively associate GLACEAU with the Complainant. GLACEAU has no dictionary meaning in the English, French, Spanish, German or Flemish languages and is highly distinctive. There are no registered trade marks other than the Complainant's marks in any class on the UK, CTM or International registers which contain GLACEAU. The Complainant owns substantial goodwill in the GLACEAU name in the UK because of the substantial turnover of GLACEAU goods in the US and the UK.

(c) Any goods or services sold by the Respondent from the website connected to the Domain Name would mistakenly be linked by UK consumers with the Complainant.

5.2     The Domain Name in the hands of the Respondent is an Abusive Registration because:

(a) The Domain Name was registered in a manner which, at the time the registration took place, took unfair advantage of the Complainant's registered Rights in the UK. Given the timing of the registration of the Domain Name and the Complainant's goodwill in the US, the Complainant considers the Respondent knew of the Complainant's business and its use of the GLACEAU name when the Domain Name was registered, selected the Domain Name with the overseas expansion of the GLACEAU products in mind and registered the Domain Name for the sole purpose of unfairly disrupting the business and overseas expansion of the Complainant and/or with the intention of extorting money from the Complainant.

(b) Given the particular distinctiveness of the word GLACEAU and its exclusive use and registration by the Complainant, the use of GLACEAU by another trader would confuse people or businesses into believing that it is registered to, operated or authorised by, or otherwise connected with the Complainant and damage the exclusive association of the term with the Complainant and is therefore unfairly detrimental to the Complainant's Rights in the term GLACEAU. The Respondent set up the website at the Domain Name with the sole intention of diverting attention away from the Complainant, unfairly disrupting its legitimate business and/or with the intention of extorting money from the Complainant.

5.3     There is no sport as "ice water climbing". The Respondent has not made legitimate non-commercial or fair use of the Domain Name. The website does not make a genuine offering of goods or services, but instead offers services that are spurious and a practical impossibility. There is no such UK company as GlacEau/icewater) (&) co (company) uk. The Respondent is holding himself out as a company that does not exist and offering services that are an impossibility. The Respondent is a graphic designer, does not run an icewater business and is improperly using the Domain Name.

The Respondent

5.4     The Respondent states:

(a) "There is a manner of solving this before making a complaint and that is with the use of an ordinary question to an ordinary individual….why didn't they contact me?"

(b) "I started this blog because when I was 14 I made a trip to Switzerland with a group of friends and me and my company learned there mountain river climbing in the ice cold water."

(c) "I bought [the Domain Name] for nostalgic and pleasure and personal reasons."

(d) "There was no energy brands or whatever name they had, glaceau, having a website when I bought it in Britain and as I understand now they are promoting their product for a short while already in Britain now, without the need for this domain….they could have registered this in the first place."

(e) "I never offered services on my blog…it is just a blog that wasn't even developed yet because it was that personal."

(f) "Anyway, I have heard glaceau is now related to coca cola, I don't see a reason to offend this company in general…"

The Reply

5.5     In June 2008, the Complainant's former solicitors sent to the Respondent two cease and desist letters seeking the transfer of the Domain Name. These were sent to the address to which the Domain Name was registered in Antwerp, Belgium. No response was received to these letters nor were they returned. The Respondent has used a different contact address in Spain during this complaint. It has been independently verified that the Respondent gave or has maintained false contact details to Nominet, which is further evidence that the Domain Name is an Abusive Registration.

5.6     The Respondent states that he discovered ice water climbing in Switzerland. His contact address is in Belgium, he appears to reside in Spain and he therefore has no connection with the UK that can explain the need for a .co.uk domain name. The Respondent does not have Swiss, Belgium or Spanish domain names for GLACEAU, which would be more appropriate jurisdictions to hold the Domain Name. This suggests his story is not authentic and that a more plausible explanation is that the Respondent learnt of or predicted the Complainant's launch in the UK and registered the Domain Name.

5.7     It is not for the Complainant to justify why it did not register the Domain Name.

6. DISCUSSION AND FINDINGS

6.1     Paragraph 2 of the Nominet Dispute Resolution Policy ("the Policy") sets out that for the Complainant's complaint to succeed it must prove to the Expert, on the balance of probabilities, 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.

6.2     The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.

Complainants Rights

6.3     Paragraph 1 of the Policy states that "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 which is wholly descriptive of the Complainant's business."

6.4     I am satisfied in view of the Complainant's registered trade marks and trading goodwill that the Complainant has rights in GLACEAU, a mark which is identical to the Domain Name. I do not consider that GLACEAU is wholly descriptive of the Complainant's non-alcoholic, life-style drinks. The Complainant's evidence supports that GLACEAU is not an ordinary English word and that it has a high degree of distinctive character in relation to its products.

6.5     I therefore consider the Complainant has Rights in a name or mark which is identical to the Domain Name.

Abusive Registration

6.6     I have to consider whether the Domain Name, in the hands of the Respondent, 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.

6.7     I must take into account all relevant facts and circumstances that indicate whether or not the Domain Name is an Abusive Registration.

6.8     Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration which include the following upon which the Complainant relies:

- 3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

(A) for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

(B) as a blocking registration against a name or mark in which the Complainant has Rights;

(C) for the purpose of unfairly disrupting the business of the Complainant.

- 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.

- 3(a)(iv) It is independently verified that the Respondent has given false contact details to Nominet.

6.9     There is also a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration, of which I consider the following to be relevant:

- 4(a)(i) Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS) the Respondent has:

(A) 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;

(C) made legitimate non-commercial or fair use of the Domain Name

- 4(a)(ii) The Domain Name is generic or descriptive and the Respondent is making fair use of it.

6.10     Knowledge of the Complainant and/or its rights at the time when the Domain Name was registered or at the commencement of the objectionable use of the Domain Name is a crucial element of an Abusive Registration. The only significant exception is under paragraph 3(a)(iv) of the Policy (see paragraph 6.8) to which I will refer further below.

6.11     The Complainant has established that at the time of registration of the Domain Name, the Complainant enjoyed significant goodwill in the US in the GLACEAU mark and that the US business had grown significantly over the 11 years since it was founded to become the second best-selling manufacturer of flavoured water in the US. This was reflected in the price of $4.1 billion that Coca-Cola paid for the Complainant. The Coca-Cola acquisition was reported in the UK, together with the Complainant's plans for overseas expansion, only about a week before the Domain Name was registered.

6.12     Given the timing of the registration of the Domain Name so very close to the press report on the Coca-Cola deal I consider it very important to carefully consider the reasons given by the Respondent for registering the Domain Name.

6.13     The Respondent says he started his blog at the Domain Name because of a trip to Switzerland when he was 14 when he learned mountain river climbing in the ice-cold water. The Respondent has not given any explanation as to what prompted him, presumably some time after this trip, to set up this blog. His first blog entry was only written almost a year after the Domain Name was registered and just before the Complainant's launch of the GLACEAU products in the UK. This does not mention his trip to Switzerland. Instead it refers to ice-water climbing in the Scottish and British mountains. The web-site asks users to send e-mails if they are interested in joining "climbing adventureous (sic) in the ice-cold britisch (sic) waters." This site content does accord with the Respondent's explanation of why the blog was set up.

6.14     In his blog, the Respondent appears to explain why he chose the Domain Name. He says the name glaceau/icewater was given as his companions were French, English-speaking persons. Although "glaceau" can be considered a combination of the French words for ice ("glace") and water ("eau"), I am satisfied from the Complainant's evidence that there is no sport of icewater climbing. Whilst during any mountain climb, ice and/or cold water could be encountered, it would not be described as icewater climbing. I am wholly unconvinced by the Respondent's explanation for the choice of glaceau.

6.15     The Respondent's blog entry is headed "icewater climbing with Company". In his blog the Respondent appears to suggest that he chose a .co.uk domain name as co stands for company. I am also unconvinced by this explanation, especially given the Respondent appears to have no connection with the UK.

6.16     I do not consider the Respondent's explanation for the registration of the Domain Name is credible. Taken this into account and given the registration of the Domain Name so soon after the announcement of the Coca-Cola deal and the plan for expansion of the GLACEAU brand outside of the US, I am satisfied that the Complainant has established on the balance of probabilities that the Respondent knew of the Complainant and its brand when the Domain Name was registered.

6.17     The Respondent has not made any offers to sell the Domain Name to the Complainant or to the Complainant's competitors. However, I consider that the circumstances as set out above indicate that the Respondent registered the Domain Name as a blocking registration against a name or mark, GLACEAU, in which the Complainant has Rights or for the purpose of unfairly disrupting the business of the Complainant, including its plans for expansion outside the US. In coming to this conclusion I have also considered the factors against this being an Abusive Registration. However, I do not consider the Respondent is offering genuine "ice-water climbing services" nor do I consider that there is any "fair use" of the Domain Name. For completeness, I would add that I do not consider the Domain Name is generic or descriptive.

6.18     I therefore find that the Domain Name in the hands of the Respondent is an Abusive Registration 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.

6.19     The Complainant also complains that the Domain Name has been used in a manner which took unfair advantage or was unfairly detrimental to the Complainant's Rights. However, in view of my findings at paragraph 6.18 above, I do not consider it necessary to consider the complaint relating to the use of the Domain Name further.

6.20     Finally, I deal with the Complainant's contention that it has been independently verified that the Respondent gave false contact details to Nominet. The Respondent gave an address in Antwerp, Belgium to Nominet. The Complainant's former solicitors wrote to the Respondent at this address. Whilst it appears from the Response that the Respondent did not receive this correspondence, it was not returned to the Complainant's solicitors. The Complainant's evidence suggests the Respondent has a connection with Antwerp, Belgium as he was educated there. I therefore do not consider that it has been independently verified that the Respondent has provided false contact details.

7. DECISION

7.1     I find that the Complainant has Rights in a name or mark which is identical to the Domain Name.

7.2     I find that the Domain Name in the hands of the Respondent is an Abusive Registration.

7.3     I direct that the Domain Name be transferred to the Complainant.

Dr Patricia Jones

14 October 2008