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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> V&S Vin & Spirit AB -v- O'Connor [2003] DRS 726 (14 February 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/726.html Cite as: [2003] DRS 726 |
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Nominet UK Dispute Resolution Service
DRS 00726
V&S Vin & Spirit AB -v- Sean O’Connor
Decision of Independent Expert
1. Parties:
Complainant: V&S Vin & Spirit AB
Country: SE
Respondent: Sean O’Connor
Country: UK
2. Disputed Domain Name:
absolutescorts.co.uk
3. Procedural Background:
A complaint (“the Complaint") was received in full by Nominet on 29 November 2002. Nominet forwarded the Complaint to the Respondent on 4 December 2002 and notified him that he had 15 working days (i.e. until 30 December 2002) to respond. The Respondent failed to respond. Mediation not therefore being possible Nominet notified the Complainant that the Complaint would be referred to an independent expert upon payment of the requisite fee. The Complainant paid the fee on 27 January 2003 for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy"), following an agreed extension to the normal time limit for paying the fee.
On 28 January 2003 and in accordance with paragraph 9 of the Nominet Dispute Resolution Service Procedure ("the Procedure") I, Simon Chapman, ("the Expert") confirmed to Nominet that I was impartial and independent and new of no reason why I should not accept an appointment to act as Expert in this matter.
I was subsequently appointed by Nominet on 3 February 2003 and my decision is due by no later than 17 February 2003.
4. Outstanding Formal/Procedural Issues:
The Respondent has not submitted a Response to the Complaint. From the papers that have been submitted by Nominet to me it is apparent that efforts have been made to send the Complaint to the Respondent by post and e?mail to the contact details held on Nominet’s Register. As far as I can tell from the file of papers, there is no reason to believe that either of these means of delivery failed to bring the Complaint to the attention of the Respondent.
When registering a UK domain name applicants agree to be bound by Nominet's Terms and Conditions. Clause 2.3 of those terms and conditions provides that:?
'You must inform us promptly of any change in your registered details, and those of your Agent if applicable. It will be your responsibility to maintain and update any details you submit to us and to ensure that your details are up to date, and accurate. In particular, it is your responsibility directly or by your Agent to ensure that we have your full and correct postal address.”
In addition paragraph 2(e) of the Procedure states that:?
"Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i. if sent by facsimile, on the date transmitted; or
ii. if sent by first class post, on the second Day after posting; or
iii. if sent via the Internet, on the date that the communication was transmitted; and
iv. where communications are received by more than one method, at the earliest date received;
and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.”
In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.
I now move on to consider the consequences of the Respondent not submitting a response?
The Procedure envisages just such a situation and provides in Paragraph 15 that:
“c. If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate."
I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision.
I will draw such inferences from the Respondent's failure to respond as I think appropriate, but must bare in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say, or that the Complaint has not in fact come to his attention.
5. The Facts:
The Complainant asserts that it is a substantial seller of alcohol and the world’s eighth largest in sales volume. From the information contained on its website, I note that the company was founded in 1917 to “give the State control over alcohol management in Sweden”. The company continues to be owned by the Swedish Ministry of Finance. In 1979, the Complainant commenced marketing vodka under the trade mark ABSOLUT in the US, and Sweden and the rest of Europe followed in 1980/81.
Documentation exhibited to the complaint asserts that the Complainant’s trade mark is ranked as the 93rd most valuable brand in the world (Business Week Survey – Aug 2001) and the third best selling brand of premium spirit (Impact magazine - Feb 2001). Although the documentation is rather dated, I have no reason to believe that the status of the Complainant’s brand has changed to any significant degree.
As one might expect, the Complainant has registered their trade mark in a number of territories and I have been provided with a list of over 100 registrations ranging from Anguilla to Yugoslavia. The registrations encompass trade marks for the word ABSOLUT on its own but also, in conjunction with other words, for example ABSOLUT COUNTRY OF SWEDEN, ABSOLUT VODKA and ABSOLUT REFLEXIONS. The registrations cover various classes of goods, but are predominantly in Class 33 (alcoholic beverages). In addition to their trade mark registrations the Complainant also holds a substantial number of domain names incorporating the trade mark.
The Complainant also asserts that its trade mark is particularly well known in the UK and refers in support of this contention to a market survey of 488 consumers in London, Manchester and Edinburgh. The survey appears to have been carried out by Research International in February 2001, and records that there is 68% “aided brand awareness” and 39% “unaided brand awareness”.
From the information that I have available to me, the Respondent holds the registration for the Disputed Domain Name absolutescorts.co.uk having registered it on 25 May 2000. The domain name is directed at a website which appears to have as its main URL academy-girls.co.uk. The site advertises girls who will act as “personal companions”, and contains pornographic content. On the home page is the following statement “We look forward to hearing from you TS, Sean and Carole” (my emphasis).
On 13 September 2002 a representative of the Complainant e-mailed the Respondent, asserting the Complainant’s rights and requesting that its complaint be resolved in an amicable manner. The Respondent’s response was sent on 14 September and said that he would be agreeable to “an amicable exchange”. This led to a discussion between the parties where the Complainant offered to acquire the domain name for $1,000, with the Respondent holding out for $5,000.
6. The Parties Contentions:
Complainant
The Complainant submits that the Disputed Domain Name is identical or similar to its trade mark. It says that it is identical because the dominant portion of the Disputed Domain Name is the word ABSOLUT, or is confusingly similar because the additional word ESCORTS is generic and has no impact on the overall impression given by the dominant portion. It says that confusion and or association is likely to arise because of the world wide fame that the Complainant’s mark has.
The Complainant asserts that registration of the Disputed Domain Name was Abusive because it has been used in a manner which takes unfair advantage and is detrimental to the Complainant’s rights. No specific reasons are given for this assertion although the Complainant refers to the fame of its trade mark and indicates that there is a risk of the public believing that there is a connection or co-operation between the companies.
In addition the Complainant also refers to the Respondent’s offer to sell the Disputed Domain Name, and the fact that the whois details for the Respondent are incomplete.
The Respondent's requested remedy is that the Disputed Domain Name be transferred.
Respondent
As stated above the Respondent has not served a Response.
7. Discussion and Findings:
General
To succeed in this Complaint the Complainant must, in accordance with Paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that (1) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and (2) the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).
Burden
The absence of a response from the Respondent does not mean that the Respondent is deemed to have no answer to the Complaint, but rather the Complainant must still make out its case to the Expert on the balance of probabilities. Where a Respondent does not avail himself/herself of the opportunity to respond to the Complaint it might be said that the Complainant's task is all the easier, but as I have previously indicated, notwithstanding the absence of a Response, it is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).
Complainant's Rights
As indicated above, the Complainant has asserted that it has Rights in a name or mark which is identical or similar to the Disputed Domain Name.
The first (.uk) and second (.co) levels of the Disputed Domain Name should be discounted for the purposes of comparison as being of a generic nature.
The Complainant has asserted that it has Rights in respect of a mark that is identical to the Disputed Domain Name. I do not find that this is so. I see no reason why the word ESCORTS should be discounted when comparing the Complainant’s mark to the Disputed Domain Name.
The Complainant has also asserted that it has Rights in a mark that is similar to the Disputed Domain name. The Complainant has a substantial number of registered trade marks for the word ABSOLUT in many territories around the world. In my view the Complainant’s mark is similar to the Disputed Domain Name insofar as the Disputed Domain Name includes the word ABSOLUT.
For the reasons set out above, I find that the Complainant has established that it has Rights in respect of a name or mark which is similar to the Disputed Domain Name.
Abusive Registration
An Abusive Registration is defined in Paragraph 1 of the Policy 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 of an Abusive Registration are set out in Paragraph 3. They are:?
“i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily 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; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
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. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. It is independently verified that the Respondent has given false contact details to us.
The Complaint covers most of these factors, and I therefore deal with each one in turn.
Selling etc – Notwithstanding the exchange of correspondence between the parties in which the Respondent indicated that it would be willing to sell the Disputed Domain Name, I do not believe that the evidence submitted supports a finding that the primary purpose was to sell, rent or otherwise transfer the Disputed Domain Name.
Blocking ? Similarly the evidence does not go far enough in proving that the registration was to block the Complainant, and indeed given the number of registrations held by the Complainant that has not been so, and no assertion has been made that the Complainant intended to use the Disputed Domain Name.
Unfair Disruption ? Again, there is no evidence that the Respondent’s use of the Disputed Domain Names has led to any disruption of the Complainant’s business.
Confusion ? Evidence required under this head is that of actual confusion. There is no evidence that the public has been confused into believing that they are dealing in some manner or means with the Complainant.
Pattern of Abuse ? No evidence of any further registrations in the hands of the Respondent has been provided.
False Contact Details – Whilst the Complainant refers to inadequate whois information being available in respect of the Disputed Domain Name, as far as I am aware the information held by Nominet is complete and there is no evidence to suggest that the information is false, let alone independent verification.
The factors contained in Paragraph 3 of the Policy, are expressly non?exhaustive and it is necessary to remember the general definition of what an Abusive Registration is (see above). What has troubled me in this matter is that the Complainant’s mark, is particularly distinctive in the written form when considered in the English Language because it is a made up word, or perhaps more accurately is the word ABSOLUTE with the E missing. In that respect I can quite accept that third parties would want to use the word ABSOLUTE in conjunction with an offering of goods or services, for example ABSOLUTEESCORTS, but insofar as the use omits the E, I question the motive of any user.
It is common practice for users of the Internet to locate particular products or companies by using search engines. Because of the way in which search engines operate unscrupulous parties are prone to incorporating well known brands in their domain names or by other means on their website, the intention being that the search engines will find their site and offer it up in the search results. The unscrupulous party thereby has an opportunity to come to the attention of the searcher, which he would not otherwise have.
In my view such practice is obtaining an unfair advantage and/or is unfairly detrimental to the brand owner’s Rights. Not only is the unscrupulous user riding off the back of the investment made by the brand owner, but in addition, there is the possibility of the good reputation of the brand being tarnished by its unauthorised use. With regard to the latter this is far more likely to be the case where such unauthorised use is in relation to pornography.
The Respondent has chosen not to file a Reply and in the absence of a credible explanation for its selection and use of the Domain Name, I am of the view that the Complainant has discharged its burden of proving that the Domain Name in the hands of the Respondent is an Abusive Registration. In this respect I have had due regard for the list of factors set out at Paragraph 4 of the Policy which may demonstrate that the Domain Name is not Abusive, and particularly Paragraph 4(a)(i)(A) which states that –
“A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:
i. Before being informed of the Complainant’s dispute, 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”
It is my belief that when interpreting this Paragraph, one must read into it that the use must have been with an honest intention at the outset, otherwise any use linked to the sale of goods or services would not be found to be Abusive, and that cannot be right. As I have indicated above, I believe that the Complainant has made out a case that the use of the Disputed Domain Name by the Respondent was not, on the balance of probabilities, honest.
8. Decision:
For the reasons set out above, in my opinion the Complainant has proven on the balance of probabilities that (i) it has Rights in respect of a name or mark which is similar to the Domain Name; and (ii) the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds and I direct that the Domain Name be transferred to the Complainant forthwith.
Simon Chapman
14 February 2003