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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> "Keramag" Keramische Werke AG v Designer Bathrooms [2004] DRS 1440 (16 February 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1440.html Cite as: [2004] DRS 1440 |
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“KERAMAG” KERAMISCHE WERKE AG
= v =
DESIGNER BATHROOMS
Nominet UK Dispute Resolution Service
DRS 01440
Decision of Independent Expert
Dated this 16th day of February 2004
1. Parties:
Complainant’s Details
Complainant: Keramag Keramische Werke AG
Country: DE
Contact Details
Contact: Mr Tibor Gold
Business Name: Kilburn & Strode
Country: GB
Respondent’s Details
Respondent: Designer Bathrooms
Country: GB
2. Disputed Domain Name
keramag.co.uk
This domain name is referred to below as the "Domain Name".
3. Procedural Background
The Complaint was lodged with Nominet on 5 December 2003. Nominet validated the Complaint and notified the Respondent on 15 December 2003 and informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 30 January 2004 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).
Sallie Spilsbury, the undersigned (“the Expert”) has 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 appear to call into question her independence and impartiality.
4. Formal/procedural issues
Under Paragraph 5a of the Dispute Resolution Service (“the Procedure”) the Respondent was required to submit a Response to the Complaint to Nominet by 9 January 2004. The Respondent has failed to do so.
Paragraph 15b of the Procedure provides as follows:
If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.
Are there exceptional circumstances which would suggest that it is not appropriate to proceed to a Decision?
It is the view of the Expert that there are no exceptional circumstances. The Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.
The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties’ submissions (which consist of the Complaint and its Annexes) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent’s non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure).
5. The facts
The Complainant
The Complainant is one of Europe’s leading manufacturers of sanitary equipment. It was incorporated 100 years ago. In 2002 Keramag’s exports to the United Kingdom amounted to 1.7m euros. In 2001 they amounted to 1.2m euros (ex works prices).
The Complainant owns:
(i) The URLs www.keramag.com and www.keramag.de.
(ii) Nine United Kingdom trade marks including the stylised word marks “KERAMAG” (Number 1227973 in Class 11 for a range of ceramic sanitary apparatus and Number 1227974 in Class 20 for a range of bathroom fittings, both dated 19 April 1984);
(iii) 56 International (Madrid) registrations including Numbers 172194, 172195, 497118, 500237 and 693808 consisting or of prominently displaying the word “KERAMAG” in variously stylised forms.
Annex 1 of the Complaint contains printouts from the United Kingdom Patent Office and World Intellectual Property Office websites evidencing the registrations at (ii) and (iii) above. The printouts show that all of the UK trade marks were registered between 1984 and 1987.
The Respondent
The identity of the Respondent is not entirely clear.
The Register entry for the Domain Name show that the registrant is Designer Bathrooms Limited (confirmed by a WHOIS search). The Domain Name was registered on 28 March 2000.
A search carried out at Companies House by the Expert on 14 February 2004 shows that Designer Bathrooms Limited was incorporated as recently as 15 October 2003 under company registration number 04933622. The registered office is situated in Barnsley. On the face of the search there is no apparent connection between Designer Bathrooms Limited and the Respondent.
A company called Design Bathrooms Limited was incorporated on 22 January 1987 under company registration number 02092281. A search at Companies House on 14 February 2004 shows that an order to wind up Design Bathrooms Limited was made on 30 January 1991 (although the company still appears on the Register of Companies). On the face of the search there is no apparent connection between Design Bathrooms Limited and the Respondent.
The Respondent operates a website at www.designer-bathrooms.com. The Expert carried out a search on 14 February 2004. The strapline for the homepage of the website reads “Designer Bathrooms- Suppliers of Bathroom Suites, Sanitary Ware, Shower, Cubicles…….” For the purposes of this decision the Expert has accordingly identified the Respondent as “Designer Bathrooms” in line with its description of itself on the website.
The Respondent has been the subject of an earlier Expert Decision under the Policy (DRS 00663- 20 December 2002). The earlier decision is not directly related to the Complaint in this matter although it does turn on similar facts. Under the earlier decision the Respondent was directed to transfer two domain names to the complainant in that decision.
The Domain Name
As stated above the Respondent registered the Domain Name through its ISP on 28 March 2000.
The Complaint records that entering “keramag.co.uk” into a search engine dissolves to www.designer-bathrooms.com which, as stated above, is a website operated by the Respondent. The Expert confirmed this on 14 February 2004. The Respondent’s website offers bathroom equipment for sale and states “The best bathroom equipment at the lowest prices”. The Complainant’s products do not form part of the ranges on offer.
6. The Parties’ contentions
Complainant
The Complainant contends that the Domain Name is contrary to the Policy and, in particular paragraph 3 A (i), B and/or C. The Complainant asserts that it has rights in respect of a name or mark which is similar to the Domain Name. It points out that the Complainant’s use and registration of “KERAMAG” predates the date of registration of the Domain Name by the Respondent. The Complainant asserts that the reputation of the Complainant and its trade mark “KERAMAG” is substantial and is still growing. It states that by virtue of its registrations and use of the KERAMAG mark, the Complainant and its trade marks enjoy substantial goodwill.
The Complaint states that the Respondent “is no stranger to Nominet disputes. In case DRS 00663 the complainant Villeroy & Boch AG obtained a decision dated 20 December 2002 in its favour in respect of villeroyboch.co.uk (inter alia). It is submitted that the decision of the Independent Expert in DRS 00663 is legitimate ‘similar fact’ evidence”, pointing to DB’s lack of good faith”.
The Complainant further contends that the Domain Name is an abusive domain name registration because:
· The Respondent is not commonly, or at all, known as Keramag and would be prohibited by the Complainant from trading under that name.
· The Respondent was not authorised or licensed to effect registration of the Domain Name nor is it authorised or licensed to use the Complainant’s trade marks.
· The use by The Respondent of the Domain Name is a misrepresentation of a business connection with, approval or authorisation by the Complainant. In support of this assertion the Complainant refers to the European Court of Justice judgment in Case C-63/97 BMW v Deenik: and asserts that the Respondent wishes to create “an impression that there is a commercial connection between the Respondent and the Complainant”.
· The Respondent trades in a wide range of sanitary goods and cannot fail to have been aware of the Complainant’s corporate name and trade marks at the time of registration of the Domain Name. The Complainant refers to the European Court of Justice judgment in Case 87/97, Consorzio per la Tutela del Formaggio Gorgonzola v Käserei Champignon Hofmeister GmbH & Co. KG [1999] E.T.M.R. 454, in relation to the term “good faith”. In that case the European Court of Justice opined that the presence of good faith “depended on whether the registered proprietor [here, the Respondent] had taken all reasonable steps at the time of registration [of the Domain Name] to satisfy itself that use of the mark was compatible with national law then in force”. The Complainant also refers to the dictum of Lindsay J. in Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1997] R.P.C. 367: “…dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined”. Even if the Respondent were to contend that, at the time of registration of the Domain Name, it was – subjectively – not aware of the Complainant and its rights to “KERAMAG”, it did not behave prudently by making the appropriate searches that would have revealed those rights.
· The Respondent’s use of the Domain Name diverts business from the Complainant and confuses seekers of the Complainant’s products or is liable to do so. The Complainant asserts that the use of the Domain Name is thus an infringement of the Complainant’s registered trade marks and represents an “instrument of fraud” capable of being prevented by the law of passing-off. In relation to “instrument of fraud”, the Complainant refers to the Court of Appeal judgment of BT and others v One in a Million Ltd [1999] FSR 1. Reference is also made to Musical Fidelity Ltd v Vickers [2003] F.S.R. 898 (50). The addition “.co.uk” to the Complainant’s is not distinctive and does not alter the essential identity of the Complainant’s trade mark and the Domain Name. The Complainant refers to paragraph 2 of the Policy in this regard.
· In addition to Nominet decision 00663 (see above), the Complainant also refers to the decision DRS 00248 Seiko UK Ltd v Designer Time/WanderWeb (this reference is not expanded).
· The Complainant also refers to Article 6septies of the Paris Convention which is incorporated into UK law by section 60 of the Trade Marks Act 1994, according to which a mere agent/representative (assuming that the Respondent was such, which is denied) is not allowed to appropriate its principal’s mark.
Respondent
The Respondent has made no submissions.
7. Discussion and findings
In its submissions the Complainant makes numerous references to legal authority as well as to previous DRS decisions under the Policy. Whilst these can assist the Expert, they do not bind her. In particular the legal authorities cited do not necessarily address the criteria under the Policy.
Clause 2 of the Policy provides that a Complainant must prove 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.
The onus of proving both of the above elements is borne by the Complainant who must prove them on the balance of probabilities (Clause 2b of the Policy).
The term “Rights” is defined by the Policy to include, but not be limited to, rights enforceable under English law but the term does not extend to a name or term which is wholly descriptive of the Complainant’s business.
Abusive Registration is defined in Clause 1 of the Policy to mean;
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.
The first criterion under clause 2 of the Policy- the Complainant’s Rights
The Complainant has supplied evidence of its trade mark registrations in the UK and elsewhere. The Complainant draws particular attention to its UK registrations for the stylised word KERAMAG (registration 122797319 registered on April 1984 for various items of ceramic sanitary apparatus and installations including washbins, bidets, bath tubs in Class 11 of the register and registration 122974 registered on the same date for bathroom furniture in class 20). A black and white reproduction of these stylised trade marks has been supplied to the Expert as an Annex to the Complaint. The trade marks consist simply of the word KERAMAG in a particular typeface. The typeface is quite simple such that the word KERAMAG is an essential feature of the mark. There is no disclaimer preventing the registration of the word in a plain form. In the light of these factors it is the view of the Expert that the word KERAMAG is sufficiently unusual to mean that the trade mark registrations confer protection on the mark whether the word is written in plain or stylised form. As such the registrations confer Rights in the name KERAMAG.
The Complainant’s evidence shows that the Complainant’s goods have been available in the UK under the KERAMAG mark since at least 1999 and that the turnover in relation to exports to the UK is not insignificant and has increased substantially over the period 1999-2002 (the most recent figures referred to in the Complaint). The Complainant has therefore also acquired rights in the goodwill generated by its use and marketing of the KERAMAG mark in the UK. There is no evidence before the Expert about whether the mark has been used in a plain form as well as in its stylised form. However for the reasons set out above this is not determinative of the existence of goodwill in the mark.
The Complainant is able to establish that it owns rights in the KERAMAG mark in connection with the marketing and sale of items of sanitary ware in the UK.
The Domain Name is identical to the KERAMAG mark in which the Complainant has demonstrated Rights (it being customary in Domain Name disputes to disregard the suffix “.co.uk”).
The first criterion under the Policy has therefore been satisfied. The Complainant has demonstrated that it has Rights in a mark which is identical or similar to the Domain Name.
The second criterion under clause 2 of the Policy- Abusive Registration
Abusive Registration is defined by reference to two alternative limbs relating to (a) registration or acquisition of the Domain Name on the one hand and (b) to use made of the Domain name on the other.
Registration or acquisition
The Domain Name was registered on 28 March 2000. The Expert must therefore consider whether the registration took unfair advantage or was detrimental to the Complainant’s Rights in the KERAMAG mark at the time of registration.
Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain name is an Abusive Registration. The factors which may be relevant to the registration or acquisition of the Domain Name are as follows:
There are 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 Respondent.
Clause 2(b) of the Policy clarifies that the Complainant has to prove that a Respondent’s registration is abusive on the balance of probabilities. There is also no evidence before the Expert about the Respondent’s motives for registering the Domain Name.
· There is no indication that the Respondent has attempted to sell the Domain Name. Ground A above has not been made out.
· The Expert is unable to infer from the facts before her that on the balance of probabilities the Respondent secured the Domain Name as a blocking registration to prevent the Complainant from securing the Domain Name. Ground B has not been made out.
· This leaves the question whether the Domain Name was registered primarily to disrupt the Complainant’s business or more generally under clause 1 of the Policy whether the registration took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
At the time that the Domain Name was registered in 2000 the Complainant has been trading in the UK since at least 1999. The Respondent is itself a supplier of bathroom equipment. It seems to the Expert to be inconceivable that the Respondent would not have been aware of the Complainant and its KERAMAG mark at the time of registration in 2000. The Expert agrees with the Complainant that in the absence of evidence from the Respondent it is difficult to envisage that the Respondent was acting in good faith when it secured the registration. However the Expert must assess the Respondent’s motivation at the time of registration (clause 1 of the Policy). The Expert is in no position to do so. In particular she has no information about when the respondent began to link the Domain Name to its own website. Was the link operative shortly after registration or is it a more recent innovation? In the absence of such information the Expert is unable to find that the Respondent’s primary motivation in registering the Domain Name in March 2000 was to cause disruption to the Complainant’s business or that the registration at that time took unfair advantage or was unfairly detrimental to the Complainant’s Rights.
The Complainant has therefore been unable to discharge its burden of proving that at the time of registration, the Domain Name was abusive.
The Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name has been used in a manner which took unfair advantage of or was wholly detrimental to the Complainant’s Rights. The Complainant relies on the following ground set out in Clause 3:
(iii) There are circumstances indicating that the Respondent is using the Domain Name in a way that has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with The Complainant.
(iv) 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.
Ground (ii)
There is no evidence of confusion before the Expert. Nevertheless the Expert is prepared to infer that a customer seeking the Complainant’s products who keys in the Domain Name, would expect to be referred to a website which was operated by the Complainant or which at the very least had some kind of business connection to the Complainant. The Expert finds that the Respondent’s website is unlikely to dispel that expectation. The products on offer through the Respondent’s website are the same type of product as those supplied by the Complainant (even though the Complainant’s products are not sold). The identity of the Respondent is not made clear on its website. It is simply identified by the descriptive reference to “Designer Bathrooms”- a description that applies equally to the Complainant’s product range and which could easily be understood to refer to the Complainant.
Even if a customer were to realise that the Respondent’s website was not connected to the Complainant, the Respondent’s website is likely to divert customers away from purchasing the Complainant’s products. This is clearly an example of an activity which takes unfair advantage and is unfairly detrimental to the Complainant’s Rights under clause 1 of the Policy (the definition of Abusive Registration). The factors listed in clause 3 of the Policy are expressed to be a non exhaustive list of factors which can prove Abusive Registration. But other types of activity- such as the operation of the unauthorised link in this matter- can fall within the overall definition of Abusive Registration in clause 1 of the Policy. Accordingly the Expert makes a finding of Abusive Registration based on the use of the Domain Name to link to the Respondent’s site.
Ground (iii)
The Complainant seeks to show that the Respondent is engaged in making a pattern of Abusive Registrations. It relies on the earlier DRS decision referred to above. The Expert has been supplied with a copy of that decision. The complainant in this decision was Villeroy & Boch AG. In substance its complaint was the same as the issues currently before the Expert. The complainant’s marks were also being used to link to the Respondent’s website. Whilst the earlier decision does not amount to “similar fact evidence” in the technical sense, the Expert finds that the earlier decision is something that she can legitimately have regard to as a matter of fact when assessing whether the Respondent’s conduct in the present case is part of a pattern.
The Expert finds that the Respondent is engaged in a pattern of Abusive Registrations. Whilst such a pattern would not in itself be sufficient to make a finding of Abusive Registration under the Policy (the Policy refers to the pattern as evidencing Abusive Registration in combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration), it provides further support for the Expert’s decision in this case.
9 Decision
The Expert finds that the Complainant has proved on the balance of probabilities that the two elements in paragraph 2 of the Policy are present, namely that there are 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.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name be transferred to the Complainant.
Sallie Spilsbury
16 February 2004