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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Ziboh Interiors Ltd -v- Fully Furnished Ltd [2003] DRS 808 (10 March 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/808.html Cite as: [2003] DRS 808 |
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Nominet UK Dispute Resolution Service
DRS 808
Ziboh Interiors Limited –v- Fully Furnished Limited
Decision of Independent Expert
1. Parties:
Complainant: Ziboh Interiors Limited
Country: GB
Respondent: Fully Furnished Limited
Country: GB
2. Domain Name:
Ziboh.co.uk
3. Procedural Background:
The Complaint was lodged with Nominet on 17th January 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 22nd January 2003 and informed the Respondent that it had 15 days within which to lodge a Response.
No response was received from the Respondent.
Accordingly the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
David Flint, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew 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.
4. Outstanding Formal/Procedural Issues (if any):
None
5. The Facts:
Complainant:
The Domain Name in issue is www.ziboh.co.uk The Complainant is an Surrey based interior design company specialising in showhouse interiors for major housebuilders, furnishing properties for investors and landlords, and also domestic interiors. It has been informed by a friend trying to locate the Complainant on the web that if one tries to guess the Complainant’s website URL and tries www.ziboh.co.uk they are taken to the website of a company called Fully Furnished Limited.
Once you enter that site, their URL changes to www.fully-furnished.com. Not only is that company based also in Surrey, their type of business is exactly the same i.e. showhouse interiors and furnishing investment properties. They are, according to the Complainant, “trying to trade off the back of [the Complainant] and pinch potential customers”. Having registered the www.ziboh.co.uk in Sept 2000, this has, according to the Complainant, obviously been going on for nearly 2.5 years, without the Complainant knowing.
The word Ziboh is Persian, meaning beautiful. In Iran (Persia) they use the Arabic alphabet, and so the Complainant chose the letters z-i-b-o-h as being the closest the Complainant felt in English to the way Iranians pronounce it in the Persian language. The Complainant chose the name Ziboh as the father of one of the principals of the Complainant has an interior design and furniture manufacturing company in Iran, and he wanted to carry on his father’s company name in England for nothing more than sentiment. This, according to the Complainant makes the name Ziboh even more distinct, and goes towards proving that Fully Furnished Limited are using the Domain Name www.ziboh.co.uk abusively. According to the information made available to the Expert, when you look on their site, there was no reference to Ziboh.
Since commencement of the DRS process the URL www.ziboh.co.uk has been amended to resolve to a holding page, although as at the date of the Complaint it went to http://www.fully-furnished.co.uk/.
6. The Parties’ Contentions:
Complainant:
The substance of the Complaint is short and reads as follows: -
The Domain Name in dispute is identical or similar to a name or mark in which the Complainant has Rights.
The Complainant confirms that the Domain Name in the hands of the Respondent is an Abusive Registration.
7. Discussion and Findings:
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that 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, secondly, 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
In this case the first limb of that task is straightforward. The Complainant is the proprietor of rights in the name Ziboh. The Domain name comprises the name Ziboh combined with the suffix <.co.uk>. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic.
Ziboh is not a common word and indeed is not a word previously found in the English language. It is, by the Complainant’s description the phonetic anglicised spelling of a Persian word.
Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark, which is identical to the Domain Name.
Abusive Registration
This leaves the second limb. Is the Domain Name, in the hands of the Respondent, 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 is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant ‘factors’ in paragraph 3 are to be found in subparagraphs i and ii, which read as follows:
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.”
The Expert interprets “as” in sub-paragraph i. B as being synonymous with “for the purpose of”. Were it to be interpreted otherwise all domain name registrations would inevitably constitute “blocking registrations” for any later arrival wishing to use the name in question.
Where a domain name is not a word in the English (or other relevant) language, the onus on a Respondent to establish a bona fide reason for selection of such a domain name is high indeed. The fact that the Respondent is in the same business sector as the Complainant, and that in a similar geographic area increases that onus.
The Respondent has offered no explanation for its selection of the name “Ziboh”, nor indeed any response to the allegations of the Complainant such as could justify its registration of such a Domain Name.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s rights.
8. Decision:
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, ziboh.co.uk, be transferred to the Complainant.
David Flint
Date: 10 March 2003