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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Wagamama Ltd v BALATA.COM LLC [2005] DRS 02370 (7 April 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02370.html Cite as: [2005] DRS 2370, [2005] DRS 02370 |
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Complainant: Wagamama Limited
Country: GB
Respondent: BALATA.COM LLC
Country: IL
wagamamas.co.uk
09/02/2005 Dispute entered into system
11/02/2005 Hardcopies received in full on: 11/02/2005
17/02/2005 Complaint validated
17/02/2005 Complaint documents generated
14/03/2005 No Response received
14/03/2005 No response to complainant documents generated
15/03/2005 Fees received from complainant on 15/03/2005
17/03/2005 Mr Chris Tulley selected as expert
None
• The Complainant has traded as "Wagamama" since 1992 in the operation of noodle restaurants and the sale of food generally. The Complainant presently operates 30 noodle restaurants in the UK and a further 10 worldwide. The estimated total turnover of goods sold in the United Kingdom under the "Wagamama" brand is £57.5 million.
• The Complainant also trades from a web site at "www.wagamama.com", the domain name "wagamama.com" being registered on 6 July 1995. The Complainant has also registered a portfolio of trade marks related to WAGAMAMA.
• The Domain Name was registered on 27 July 2004, 12 years after the Complainant first commenced trading under the trade mark WAGAMAMA.
• The Domain Name is being used for a web site that purports to be a food and restaurant portal but also offers links to hard core pornography sites.
• The Respondent has not responded to the Complainant's complaint.
Complainant:
In summary the Complainant says that:
• It has Rights in the name WAGAMAMA acquired through 12 years substantial use in the UK and elsewhere as the name of its restaurant outlets and through its portfolio of WAGAMAMA trade mark registrations.
• The Domain Name is identical or confusingly similar to the WAGAMAMA trade mark, merely adding the letter "s".
• The Complainant is often colloquially and/or mistakenly referred to as "Wagamamas".
• The Respondent has no rights or legitimate interest in the Domain Name.
• Due to the reputation of the Complainant, it is reasonable to assume that the Respondent must have known of the Complainant at the time it registered the Domain Name.
• The Respondent has not been authorised by the Complainant to use the mark or trade name "Wagamama" nor does the Respondent claim any legitimate interest in the name "Wagamama".
• The Respondent is not known as having any involvement in the restaurant or food industry in the United Kingdom nor can any information be found as to the genuine business nature of the Respondent.
• The Domain Name is an Abusive Registration because:
- the address given by the Registrant does not appear to be an authentic street address;
- it takes unfair advantage and is unfairly detrimental to the Complainant's rights;
- it as a blocking registration against the Complainant's "Wagamama" trade mark;
- the Domain Name was registered and is being used primarily for the purpose of unfairly disrupting the business of the Complainant. In particular, it is being used for a web site that purports to be a food and restaurant portal but also offers links to hard core pornography sites;
- the Domain Name is being used in a way which will inevitably confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant. An email from a member of the public is exhibited in support;
- in view of the huge amount of goodwill in the mark WAGAMAMA, which is one of the best known brands in the British food and restaurant trade, there can be no legitimate purpose for which the Domain Name could be used and the Domain Name in the hands of the Respondent constitutes an instrument of fraud within the meaning of BT et al. v One In A Million;
- the Complainant is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known brand names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern. In support, it is pointed out that the Respondent has also registered the domain name "www.phaseeight.co.uk". Phase Eight is a well-known clothing business in Britain. The content at the web site at www.phaseeight.co.uk offers a portal to a variety of links to fashion and clothing related sites, none of which is related to Phase Eight.
Respondent:
The Respondent has not responded to the complaint.
General
In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:
- The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
- The Domain Name, in the hands of the Respondent, is an Abusive Registration.
These terms are defined in the Nominet UK DRS Policy as follows:
• 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 or term which is wholly descriptive of the Complainant's business.
• Abusive Registration means 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.
Complainant's Rights
The Complainant has provided substantial evidence that it has Rights in the WAGAMAMA name, having exhibited details of its trade mark registrations and provided details of the extent of its businesses under the name and various awards it has won.
I find that the Complainant does have Rights in the name WAGAMAMA, being a name or mark which is identical or similar to the Domain Name.
Abusive Registration
The Respondent has not responded to the complaint so there is no information put forward by the Respondent to explain the reasons for registering the Domain Name.
From the matters relied on by the Complainant in its submissions the following parts of paragraph 3 of the Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) are potentially relevant:
Paragraph 3 a. i. B "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights;"
Given that the Complainant is well known in the UK and that the Domain Name is identical to the Complainant's name with the addition of the letter "s", I believe I may draw reasonable inferences where the Respondent has failed to respond to the complaint and there is no other evidence of the Respondent's purpose of registration.
The Domain Name was registered on 27 July 2004, many years after the Complainant commenced business under its WAGAMAMA name. The Domain Name has been used, but only as a portal with links to numerous other websites and not, it appears, in connection with a genuine offering of goods or services itself. In any event, even if a portal site is a genuine offering of services, there is no evidence to suggest that this use was made before the Respondent was aware of the Complainant's cause for complaint.
In the absence of any explanation from the Respondent I believe an inference can be drawn that the Domain Name, being identical to the Complainant's well known name and trade mark with an additional letter "s" and apparently having been used as a food related portal site was registered primarily as a blocking registration against a name or mark in which the Complainant has Rights.
The Complainant has not alleged that the Respondent registered the Domain Name for the purpose of selling it to the Complainant or a competitor of the Complainant for a price over and above the costs of acquiring or using it. In that respect, I note from visiting the Respondent's website using the Domain Name that there is now an invitation to make an offer to buy the Domain Name on the front page of the website and by clicking on the link an email can be sent to the owner of the Domain Name. That "for sale" invitation does not appear to have been included on the website when the Complainant printed off the pages from the website exhibited as Appendix 5 to the complaint.
Paragraph 3 a. i. C "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant."
Paragraph 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."
The Complainant has provided evidence that it is often referred to as "Wagamamas". In general, the addition of the letter "s" to the name of a business when referring to it is a common occurrence and it seems clear that a website using the Domain Name could easily be assumed to be connected with the Complainant. That assumption would be reinforced by the fact that its front page is dedicated to food related topics.
The Complainant has exhibited an email from a member of the public who confirmed that "While trying to get information about Wagamama's current menus, I type (sic) the URL www.wagamamas.co.uk into my browser's address line. The site I reached was food related but isn't your official web site. It wasn't obvious that it wasn't the proper Wagamama site and I progressed further. . ."
It appears that it wasn't until this person then clicked through the "Restaurant" page link and was presented with a series of links to hard core pornography sites that he realised that the website was not connected to the Complainant. Many visitors to the website may not click through to the "Restaurant" page link and be left confused or assuming that the website is connected to the Complainant. In any event, I note that when clicking through to the "Restaurant" page link that the pornography links are set out on the left hand side but that rest of the website page still prominently displays the "WAGAMAMAS.CO.UK" name, is still the same style and layout as the front page, still has the same food related page links as the front page, and indeed displays links to food related websites in the centre of the page.
There seems little doubt on the evidence that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant and is using the Domain Name in a way which has (or is likely to have) confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
I note that the one example of the email relied upon as evidence by the Complainant shows that this visitor to the website was ultimately not confused and realised that the website was not connected to the Complainant. However, I am mindful of the fact that the list of factors set out in paragraph 3 of the Policy is expressly non-exhaustive; it is illustrative. I believe that use of the Domain Name by the Respondent would be likely to lead to the confusion envisaged by paragraph 3 a ii of the Policy. If the abuse identified in paragraph 3 a ii indicates an Abusive Registration, then so must anything likely to lead to such a situation.
Indeed, given the near identical name to that of the Complainant's well known name and trade mark it is not easy to envisage the circumstances where the Domain Name could be used by a party unconnected with the Complainant without leading to a likelihood of such confusion and infringement of the Complainant's trade mark or other rights in its name.
Paragraph 3 a iii "The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern."
The Complainant alleges that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known brand names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern. In support, it is pointed out that the Respondent has also registered the domain name "phaseeight.co.uk". Phase Eight is a well-known clothing business in Britain. The content at the web site at www.phaseeight.co.uk offers a portal to a variety of links to fashion and clothing related sites, none of which is related to Phase Eight.
This is the only example relied on by the Complainant. I am invited by the Complainant to discuss with Nominet UK any other domain name registrations in the name of the Respondent to see if they similarly correspond with well-known brand names or trade marks. However, I believe I should make my decision based on the evidence presented to me and it is not my role to supplement that evidence on behalf of either party. I do not believe that evidence of the registration of just one other domain name incorporating the name of a well known third party is sufficient to amount to a pattern of such registrations.
Paragraph 3 a. iv. "It is independently verified that the Respondent has given false contact details to [Nominet UK]".
The Complainant alleges that the Respondent is not known as having any involvement in the restaurant or food industry in the United Kingdom nor indeed can any information be found as to the genuine business nature of the Respondent. The Complainant invited me to conduct a Google search for the Respondent or the Respondent's address, saying that if I did so the results pages are too numerous to print out but none of the results appears to relate to a Balata Inc., Balata LLC or Balata.com. Moreover, the Complainant says that the address given by the Registrant (2334/3, Tel Aviv, 69931, IL) does not appear to be an authentic street address and therefore makes postal correspondence with the Respondent impossible.
I did carry out a Google search for the Respondent and the Respondent's address but did not get the results indicated by the Complainant. I note that the Complainant says that none of the results appears to relate to a Balata Inc., Balata LLC or Balata.com. However, the Complainant does not refer to the name the Respondent has actually used when registering the Domain Name i.e. "Balata.com LLC". A Google search for "Balata.com LLC" brings up just 7 results all of which appear to relate to the Respondent (the first of which appears to be a very long list of Swedish .SE domain names registered by the Respondent). Similarly, a Google search for the address "2334/3 Tel Aviv 69931" brings up just two results, the first of which appears to relate to the Respondent.
In the circumstances I am not satisfied that it has been independently verified that the Respondent gave false contact details.
However, for the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the name "WAGAMAMA", being 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.
In the circumstances I order that the Domain Name be transferred to the Complainant.
Chris Tulley
7 April 2005
