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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Argos Retail Group -v- Brazil [2004] DRS 1877 (23 August 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1877.html Cite as: [2004] DRS 1877 |
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Nominet UK Dispute Resolution Service
DRS 01877
Argos Retail Group -v- Raphael Brazil
Decision of Independent Expert
1. Parties:
Complainant: Argos Retail Group
Country: GB
Respondent: Raphael Brazil
Country: GB
2. Disputed Domain Name:
argosretailgroup.co.uk (the “Domain Name”)
3. Procedural Background:
The Complaint in this case was lodged with Nominet UK ("Nominet") on July 5, 2004. Nominet validated the Complaint on July 9, 2004 and notified the Respondent, giving him 15 working days within which to lodge a response. As of August 2, 2004, no response was received. On August 12, 2004, the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (the “Policy”).
The undersigned, Andrew Murray (the “Expert”), was formally appointed on August 19, 2004. The Expert has formally confirmed to Nominet that he knows of no reason why he cannot properly accept the invitation to act as an expert in this case and further confirmed that he knows 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):
The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”).
The Expert has seen copy communications from Nominet to the Respondent and has no reason to doubt that the Respondent has been properly notified of the complaint in accordance with paragraph 2 of the Procedure.
Paragraph 15b of the Procedure provides, inter alia, that “If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint.”
There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the complaint notwithstanding the absence of a Response.
The lack of a Response does not entitle the Complainant to a default judgement. The Complainant must still prove its case to the required degree. The Expert will evaluate the Complainant's evidence on its own merits and will draw reasonable inferences from it in accordance with paragraph 12b of the Procedure.
Paragraph 15c of the Procedure provides that “If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure ....... , the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate.”
Generally, the absence of a Response from the Respondent does not, in the Expert’s view, entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit. In this case it seems to the Expert that the probable facts speak for themselves and that it is not necessary to draw any special inferences. The Expert finds that the probable facts asserted by the Complainant and set out in the next following section are indeed facts.
5. The Facts
The Complainant is named as Argos Retail Group. The Complainant is one of the main trading divisions of GUS plc (GUS), a retail and business services group. In 1998, GUS acquired Argos Limited, the company which operated the ‘Argos’ stores and in June 2000 the Complainant was established to build on GUS’ experience in the home shopping market and the strengths of the Argos brand. As the Complainant controls, amongst others, Argos Limited. The Complainant was incorporated on the 4th of November 1999 and through Argos Limited is the registered proprietor of numerous trade marks for the word Argos and several graphical marks incorporating the word Argos. It is also the proprietor of numerous Argos domain names, including argosretailgroup.com which forwards to the Complainant’s site at argos.co.uk.
The Nominet Whois search, which was provided to the Expert, shows that the Domain Name was registered on behalf of the Respondent on August 15, 2000 by the Primex Internet Group Ltd.
Several communications, mostly by letter, took place between the Complainant’s legal advisor, Eversheds LLP and the Respondent, and his legal advisor, Goldwater Sender, between the dates of November 28, 2003 and June 22, 2004. At one point during these negotiations it seems a settlement was agreed. On December 9, 2003 the Respondent offered to transfer the Domain Name to the Complainant “in full and final settlement of this matter”. For whatever reason though this transfer has failed to take place, leading to the current action.
On accessing the address www.argosretailgroup.co.uk the user is directed to a holding page supplied by Primex Internet Group Ltd. This states that “this webspace is reserved for a Primex customer”. There seems little doubt that the Respondent is not currently making use of the Domain Name, and there is no contention from the Complainant that the Respondent has ever made use of the Domain Name other than as a holding, or blocking, registration.
6. The Parties' Contentions
Complainant
The Complainant submits that the Domain Name in dispute is identical or similar to a name or mark in which it has rights and that the Domain Name in the hands of the Respondent is an Abusive Registration.
The Complainant states that it has prior rights in the names ‘Argos’ and ‘Argos Retail Group’. In support of these claims, the Complainant has supplied a large amount of supporting documentation, including Trade Mark Registrations in the name of Argos Ltd. in several classes dating from between 1991 and 2002. These registration all comprise the word ‘Argos’ sometimes presented in a stylised manner, other times not. In addition the Complainant has demonstrated that they are the owners of several domain names which comprise the terms ‘Argos’ and/or ‘Argos Retail Group’. These include argos.co.uk, first registered on July 9, 1995, argosstore.co.uk, first registered on February 15, 2003 and argosretailgroup.com, first registered on October 30, 2003. In addition, as referred to earlier, the Complainant trades under the name Argos Retail Group, and is registered in that name.
The Complainant contends that the Respondent’s registration is of an abusive nature for the following reasons:
1. The Respondent registered the Domain Name in August 2000; that is, shortly after the public announcement of the launch of the Argos Retail Group in or about March 2000. Accordingly, it is very likely that the Respondent was aware of the Complainant when he registered the Domain Name. In any event, due to the prominence of the Argos brand and the substantial goodwill which has been built up in it, the Respondent (as a resident in the UK) will have been aware of the Complainant’s rights in the name Argos, the most distinctive element of the Domain Name.
2. Since August 2000, the Respondent has made no demonstrable preparations to use the Domain Name in connection with a genuine offering of goods or services. Indeed, it appears that the Respondent has no intention of using the Domain Name. He is neither known by the names Argos or Argos Retail Group nor does he trade under them. By letter dated 9 December, 2003 it was accepted by the Respondent that he had never traded under the name Argos Retail Group nor was he involved in the retail trade. Accordingly, there does not appear to be any legitimate reason why the Respondent registered the Domain Name.
3. As the Respondent has retained the Domain Name rather than transfer it to the Complainant, this supports the contention that the Respondent registered the Domain Name to block its legitimate use by the Complainant.
4. The Domain Name was registered for the purpose of unfairly disrupting the business of the Complainant. The Domain Name is identical to the Complainant’s name, Argos Retail Group. The Respondent has no interest in the name Argos Retail Group; he is not a retailer, nor is he commonly known by the Domain Name. As the Respondent has not made any use of the Domain Name for nearly 4 years, it is clear that the Respondent has not made any legitimate commercial or fair use of the Domain Name prior to being contacted by the Complainant.
5. Due to the prominence of the Complainant and the services which it provides under the name Argos, it is likely that the Respondent sought to disrupt the Complainant’s business by registering the Domain Name. It is no co-incidence, in the Complainant’s view, that the Respondent registered the Domain Name so soon after the announcement about the launch of the Complainant. The Respondent is likely to have recognised that, following the launch of Argos Retail Group, there would be a benefit in seeking to register the Domain Name and disrupt the Complainant’s business. The registration of the Domain Name has caused the Complainant to have to incur substantial management time and costs in seeking to recover the Domain Name which is one of its key trading names.
6. The Domain Name is being used in a way which has confused people into believing that the Domain Name is registered to or authorised or otherwise connected to the Complainant. As the Domain Name is identical to the Complainant’s name in which it has Rights, it is likely that a not insignificant number of internet users have attempted to access the website at the Domain Name.
7. The name, Argos Retail Group is frequently used by the Complainant’s customers and, particularly, its suppliers. On the balance of probabilities, it is likely that the Domain Name has caused confusion, such that people searching for the Complainant at the address may consider that the Complainant does not have a live website. However, it is inherent in such circumstances that the Complainant would often not know that people have been attempting to find its site and had been confused by the registration of the Domain Name. Further, as the Domain Name is identical to the Complainant’s name and given the popularity of the .co.uk suffix for UK businesses with an internet presence, on the balance of probabilities, it should be inferred that confusion has been caused by the Respondent’s registration of the Domain Name.
Respondent’s Response
No response was received from the Respondent.
7. Discussion and Findings:
General
According to paragraph 2 of the Policy, in order to succeed in this complaint, the Complainant has to prove to the Expert that, on the balance of probabilities:
i. the Complainant has Rights (as defined in paragraph 1 of the Policy) in respect of name or mark which is identical or similar to the disputed domain name; and
ii. the disputed domain name is an Abusive Registration (as defined in paragraph 1 of the Policy).
These matters must be proven by the Complainant, notwithstanding the failure by the Respondent to respond. The effect of the Respondent’s default is rather that, under paragraph 15(c) of the Procedure (there being no exceptional circumstances in this case) the Expert is required to draw such inferences from the Respondent’s non-compliance as he considers appropriate.
Complainant's Rights
The first (.uk) and second (.co) levels of the Domain Name should be discounted for the purposes of comparison as being of a generic nature (APC Overnight v M+J Couriers (DRS 00192)). Thus the name in issue is ‘Argos Retail Group’. The Complainant has provided evidence that they currently hold several registered UK and Community Trade Marks in the term ‘Argos’. The oldest of these Trade Marks (in Class 36) dates from December 13, 1991 and thus clearly pre-dates the Respondent’s date of registration. In addition the Complainant, through its subsidiary company Argos Ltd., has traded under the name ‘Argos’ since 1973 and it has undoubtedly acquired a trade reputation in that time. In financial year April 2002-March 2003 Argos Ltd. was the UK’s leading general merchandise retailer with sales of over £3 billion. I am amply satisfied on the evidence before me that the Complainant has rights in the designation ‘Argos’.
As set out by the Claimant, in addition to the Domain Name being identical to the Complainant’s name, it is also confusingly similar to the name of the well-known retail outlets operated by the Complainant, and in which name the above Trade Marks are held. The distinctive element of the Domain Name is the name ‘Argos’; ‘Retail’ is descriptive of the services which the Complainant provides and ‘Group’ is a common reference to an organisation.
Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of a name or mark, which is identical or similar to the Domain Name.
Abusive Registration
Paragraph 1 of the Policy defines “Abusive Registration” as:-
“a Domain Name which either:
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
has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.”
Under paragraph 3a of the Policy is listed a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration.:
“A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is 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;
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 Complainant in this case has made three claims under paragraph 3a:
1. the Domain Name was registered as a blocking registration against the name or mark in which the Complainant has Rights in breach of para.3a(i)(B)
2. the Domain Name was registered for the purpose of unfairly disrupting the business of the Complainant in breach of para.3a(i)(C)
3. the Domain Name is being used in a way which has confused people into believing that the Domain Name is registered to or authorised or otherwise connected to the Complainant in breach of para.3a(ii)
Taking each of these claims in order:
With reference to paragraph 3a(i)(B) there is strong and compelling evidence in support of this claim. The Respondent has not used the Domain Name for the development of a site or presence on the Internet. Although mere failure to develop or utilise a domain name is not evidence of a blocking registration, there is further evidence to support a claim of a blocking registration in this case. Firstly, there is the nature of the Complainant’s business. There is no doubt that Argos is a well-known UK company which attracts a high degree of media attention and which has an extensive advertising budget. I find it hard to accept that the Respondent was not aware of the Claimant prior to his registration of the Domain Name. Secondly, there is the approximation in time between the public announcement of the launch of the Argos Retail Group in or about March 2000, and the registration of the Domain Name on August 15, 2000. Additionally the Respondent has indicated in a letter from his legal advisor to the Complainant’s legal advisor, dated December 9, 2003 that he does not intend to trade under this name. Finally, the Respondent despite agreeing to transfer the Domain Name to the Claimant on December 9, 2003 has to date failed to do so. The Claimant contends that this failure to conclude the transfer “supports the contention that the Respondent registered the Domain Name to block its legitimate use by the Complainant”. I agree and therefore find that the registration is a blocking registration under paragraph 3a(i)(B).
With reference to paragraph 3a(i)(C) the Complainant contends that “Due to the prominence of the Complainant and the services which it provides under the name Argos, it is likely that the Respondent sought to disrupt the Complainant’s business by registering the Domain Name. It is no co-incidence, in the Complainant’s view, that the Respondent registered the Domain Name so soon after the announcement about the launch of the Complainant. The Respondent is likely to have recognised that, following the launch of Argos Retail Group, there would be a benefit in seeking to register the Domain Name and disrupt the Complainant’s business. The registration of the Domain Name has caused the Complainant to have to incur substantial management time and costs in seeking to recover the Domain Name which is one of its key trading names.”. Paragraph 3a(i)(C) requires that the Respondent has registered the Domain Name “primarily for the purpose of unfairly disrupting the business of the Complainant” (my emphasis). As the Respondent has merely registered the Domain Name and has taken no action to develop any web presence relating to this name, I find it impossible to agree with the Complainant’s contention. Although it should be admitted that the Complainant may have incurred secondary costs relating to the recovery of the Domain Name this is insufficient to meet the requirements of paragraph 3a(i)(C). I therefore find the Complainant’s claim under this head is not made out.
Finally, the Complainant asserts that the circumstances indicate 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 contrary to Paragraph 3(a)(ii). The Complainant bases this assertion upon their belief that the name, Argos Retail Group “is frequently used by the Complainant’s customers and, particularly, its suppliers. On the balance of probabilities, it is likely that the Domain Name has caused confusion, such that people searching for the Complainant at the address may consider that the Complainant does not have a live website. Further, as the Domain Name is identical to the Complainant’s name and given the popularity of the .co.uk suffix for UK businesses with an internet presence, on the balance of probabilities, it should be inferred that confusion has been caused by the Respondent’s registration of the Domain Name.”. I find it unlikely that Argos Retail Group, which already possesses three alternative domain names, and which spends extensively in advertising its presence would not find itself able to communicate its correct web address to both customers and suppliers. Further, such confusion is easily overcome by using any one of the available search engines, all of which return hits for the Complainant’s sites. Finally I cannot accept the Complainant’s contention that “as the Domain Name is identical to the Complainant’s name and given the popularity of the .co.uk suffix for UK businesses with an internet presence, on the balance of probabilities, it should be inferred that confusion has been caused by the Respondent’s registration of the Domain Name”. To accept such a contention would mean that any domain name identical to the trading name or mark of another entity would automatically be an abusive registration. This is not the intention of the Nominet Policy and Procedure and therefore I find that the complainant has failed to make out their claim under paragraph 3a(ii).
I therefore accept that the Respondent’s registration is an abusive registration under paragraph 3a(i)(B), but reject the claims of the Complainant with respect to both paragraph 3a(i)(C). and paragraph 3a(ii).
Having found the Complainant to have made out a prima facia case under the Policy the burden under paragraph 4 now shifts to the Respondent to demonstrate their use is not an Abusive Registration. The Expert having found the Respondent has a case to answer, the Respondent must make that answer. Here the Respondent has failed to answer and therefore cannot rebut the presumption of Abusive Registration.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration as defined by paragraph 1 of the Policy on the basis that it is being used in a manner which takes 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 which is similar 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, argosretailgroup.co.uk, be transferred to the Complainant.
Andrew Murray
Date: 23 August 2004