 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Quest International (FFFI) UK Ltd v Visiontribe Ltd (t/a JV Foods Group) [2005] DRS 2655 (28 September 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2655.html Cite as: [2005] DRS 2655 |
||
[New search] [Printable RTF version] [Help]
Nominet UK Dispute Resolution Service
DRS 2655
Quest International (FFFI) UK Ltd – v – Visiontribe Ltd (t/a JV Foods Group)
Decision of Independent Expert
Complainant:
Quest International (Fragrances, Flavours, Food Ingredients) UK Limited
UK
Respondent:
Visiontribe Ltd
UK
A Complaint in respect of(the "Domain Name") under Nominet UK's Dispute Resolution Service Policy ("the Policy") was received from the Complainant and forwarded to the Respondent by Nominet on 23 May 2005. A Response was received from the Respondent on 17 June 2005 to which the Complainant lodged a Reply on 30 June 2005.
The dispute was not resolved by mediation and was referred for a decision by an Independent Expert following payment by the Complainant of the required fee on 25 August 2005. I was invited to act as Independent Expert. I confirmed to Nominet that I was independent of the parties but disclosed circumstances that might call into question my independence in the eyes of the parties. The parties did not raise any objection and I was appointed as Independent Expert as of 19 September 2005.
None
The Complainant has carried on business under its present name since July 1987. It is part of the Quest Group of companies which is in turn part of the Imperial Chemical Industries Plc Group. The Complainant is the registered proprietor of a number of UK and Community trade marks in respect of QUEST and Quest International. The Respondent, Visiontribe Limited, is a marketing and design agency engaged by JV Foods Limited to set up a website. According to the WhoIs database of Nominet UK, the domain name was registered on 9 August 2004.
Complainant
In summary, the submissions on the part of the Complainant are as follows:
- the Complainant is registered under the name Quest International (Fragrances, Flavours, Food Ingredients) UK Limited and has traded under that name since 20 July 1987. It is commonly referred to as Quest.
- the Complainant is part of the Quest group of companies which includes two headquarter sites in Europe, namely the Complainant and Quest International Services BV in the Netherlands. The group employs over 3,730 people worldwide and supplies products to over 80 countries. Turnover for the group for 2004 was £548,000,000.
- the Complainant and its affiliates provide goods and services under the names Quest and Quest International in relation to flavours and fragrances and the development of them for a wide range of products including soups, snacks, soft drinks, alcoholic beverages, bath and shower products, perfume and oral care. The Complainant produced a bundle of materials and brochures on a number of which appeared strap lines referring to "taste" and the qualities of the products of the Complainant and its affiliates.
- the Complainant is the proprietor of a number of registered UK and Community trade marks in respect of QUEST and QUEST INTERNATIONAL.
- the Domain Name is similar to the trading name and registered trade marks used by the Complainant and its affiliates. At the date of the complaint, the website at the Domain Name claims that TasteQuest, said to be a trading division of the JV Foods Group, sources and imports into the UK ethnic foods for supply to caterers and food service wholesalers. Given the field of operation of the JV Foods Group, which overlaps with that of the Complainant and its affiliates, it is highly likely that use of the Domain Name will potentially cause damage to the business of the Complainant and its affiliates and damage to its goodwill.
- the Domain Name in the hands of the Respondent is abusive because it was primarily registered unfairly to disrupt the business of the Complainant and its affiliates.
Respondent
The Respondent submitted that:
- the Complainant has rights in QUEST but not in TASTEQUEST. The Complainant does not use and is not known as "TasteQuest".
- as at the date of the Response, the website is in active use by TasteQuest in connection with its genuine business of importing ready-made foods from abroad, mainly selling to wholesalers, restaurant groups and caterers.
- JV Foods has traded as TasteQuest since December 2004 and registered the Domain Name for the genuine offering of goods for sale. The name was derived from its company legend, based on a real character, who travelled the world in a quest to import exotic foods. JV Foods has invested substantially (around £100,000) in marketing TasteQuest and has built up substantial goodwill in the name.
- TasteQuest operates in a different market to the Complainant and neither their products nor their customers overlap. The registration of the Domain Name will not disrupt the business of the Complainant whether unfairly or otherwise and the Domain Name is not used in a confusing way. TasteQuest has never been contacted in the mistaken belief that someone was contacting the Complainant. There is no evidence of confusion.
Complainant's Reply
In reply, the Complainant made the following submissions:
- the Complainant not only has both registered and unregistered rights in respect of QUEST but it has also acquired rights through usage in the words "Taste" and "Quest" when used in association.
- the evidence adduced by the Respondent indicates that the range of products provided by JV Foods includes herbs and seasonings as well as ready-made foods. This means that there is a potential overlap with the business of the Complainant, particularly in relation to flavourings. Many of the Complainant's products are used in ready-made foods.
- although the Respondent has stated that the Domain Name was registered on behalf of TasteQuest "for the genuine offering of goods for sale" it is not possible to purchase goods through the website at the Domain Name and the website is merely promotional.
- there is no evidence to support the proposition that TasteQuest has substantial goodwill as a result of its marketing spend. The Respondent has only traded under the name TasteQuest since December 2004 and has provided no turnover figures to substantiate its claim of goodwill. On many of its ranges, the primary brand used by TasteQuest is the name of the range, "Casa Serrano".
General
The Complainant is required under clause 2b of the Policy to prove to the Expert on the balance of probabilities 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.
Complainant's Rights
"Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law". The Complainant is the registered proprietor of UK and Community trade marks in respect of the word mark QUEST and the stylised word "Quest International". It is not disputed that the Complainant has carried on business under its name since 1987 and has commonly been referred to since that time as "Quest". The marketing materials produced by the Complainant also make a number of references to Quest. I am therefore satisfied, as indeed the Respondent acknowledges, that the Complainant does have rights in the name QUEST.
For the purpose of assessing similarity to the Domain Name, however, the relevant name is TASTEQUEST. The product sheets and marketing materials produced by the Complainant include some which refer to flavours and aromas and, in some cases, include statements such as "our products give taste and texture to food and beverages…" and "the importance of smell in the perception of great tasting food by consumers has been well recognised". Other strap lines include the word "taste" and references to the effect of the Complainant's products on the taste of foods. I do not consider, however, that the use of the word "taste" in this context amounts in any way to the use of the word TASTE in a trade mark sense or as a brand name or in a way that could give rise to rights on the part of the Complainant in the name TASTE. The way in which the word is used in association with the name QUEST is not such as could possibly give rise to rights on the part of the Complainant in the name TASTEQUEST.
Accordingly, the question for determination by me is whether the name QUEST, in which the Complainant does have rights, is similar to TASTEQUEST. In one sense, there are clearly similarities in that the entirety of the name QUEST is comprised in TASTEQUEST. I take into account that under paragraph 2ai of the Policy the test is simply whether the relevant names are "similar" and not whether they are "confusingly similar". TasteQuest is a neologism, or made up word, which simply comprises two words neither of which can be said to be more distinctive than the other. Although I would not have found that Quest is confusingly similar to TasteQuest, I consider on balance that Quest is similar to TasteQuest and that, accordingly, the Complainant does have Rights in a name which is similar to the Domain Name for the purposes of the Policy.
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 3 of the Policy. These include:
3.ai Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
…
C for the purpose of unfairly disrupting the business of the Complainant.
The Complainant relies on this ground alone but has not adduced any evidence or supporting documentation to indicate that this was the case. Nothing in the Complaint or the supporting papers points to such a motive and there is no evidence, either, that the operation of the Domain Name by the Respondent or by JV Foods has in fact caused any disruption to the business of the Complainant or its affiliates.
The Complainant appears to have been alerted to the fact that JV Foods Limited was carrying on business under the name TasteQuest when it came across TasteQuest as a prospective exhibitor at the IFE05 (International Food and Drink Exhibition) in March 2005. The Respondent has indicated that JV Foods Limited has traded as TasteQuest since December 2004 and has produced examples of compliments slips, headed notepaper and business cards as well as a brochure detailing the company's products and describing the company Legend involving Peter Insch travelling the world searching for new tastes and experiences. It also appears that at least in May 2005 the website at the Domain Name was active in marketing the business of TasteQuest and its products.
Paragraph 4 of the Policy sets out a list of non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. This includes at paragraph 4ai that "Before being aware of the Complainant's cause for complaint (not necessarily the "complaint" under the DRS), 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.
The Complainant has countered this evidence by saying that the Domain Name was not registered for the genuine offering of goods for sale because it was not possible to purchase goods through the website and the website was merely promotional. In my view, this is not a convincing argument. The factor indicated at paragraph 4 of the Policy envisages that the Respondent has used the Domain Name in connection with a genuine offering of goods or services and I do not accept that this requires the Respondent to have set up a website at the Domain Name with an e-commerce facility whereby goods or services may actually be purchased through the website. There is no serious dispute but that the website was being used in connection with the business of TasteQuest, a division of JV Foods Limited and that this does therefore amount to a valid factor under the Policy demonstrating that the Domain Name was not an Abusive Registration.
In any event, as I indicated above, I do not consider that the names QUEST and TASTEQUEST are confusingly similar. The joinder of the word "taste" is sufficient to distinguish the resulting mark. The absence of confusing similarity of itself points away from an Abusive Registration. There is no suggestion on the part of the Complainant that the Respondent has used the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered or operated or authorised by or otherwise connected with the Complainant and no evidence that this is the case.
In the circumstances, I find that the Domain Name, in the hands of the Respondent, is not an Abusive Registration.
Accordingly, I find that, on the balance of probabilities, the Complainant has Rights in a name which is similar to the Domain Name but that in the hands of the Respondent the Domain Name is not an Abusive Registration. I therefore direct that no action be taken in relation to the Complaint.
Ian Lowe
28 September 2005