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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> KonoPizza UK Ltd v Fox [2006] DRS 3414 (19 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3414.html Cite as: [2006] DRS 3414 |
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1. Parties:
Complainant: KonoPizza UK Limited
Country UK
Respondent: Sally Fox
Country: UK
2. Domain Name in dispute:
konopizza.co.uk
("the Domain Name")
3. Procedural Background:
07/02/2006 Dispute entered into system
07/02/2006 Hardcopies received in full
07/02/2006 Complaint validated
08/02/2006 Complaint documents sent to Respondent
03/03/2006 No Response received
03/03/2006 Complainant notified of the "no Response"
10/03/2006 Fees received from Complainant for an Expert decision
10/03/2006 Mr. Iain M Tolmie selected as Expert
3.1. On the 10th March 2006, I (Iain M. Tolmie, the undersigned, "the Expert") was contacted by the Nominet Dispute Resolution Service and I confirmed to them that:
"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties."
3.2. I was appointed as the Independent Expert for this Case as from 17th March 2006 to respond on or before 31st March 2006. This process is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") and the Decision is made in accordance with the Dispute Resolution Service Policy ("the Policy"). Both of these documents are available on the Nominet UK website (http://www.nominet.org.uk/).
4. Outstanding Formal/Procedural Issues:
4.1. The Respondent is identified in the domain name register as a private individual. Nominet has provided evidence that it has attempted to contact her as required by the Procedure §2. The e-mail to the required standard address for all registrants (postmaster@
4.2. The Respondent accepted that she was bound by the Nominet Dispute Resolution Procedure at the time of the registration of the Domain Name. She is not obliged to make any response.
4.3. From the records sent to me, I can see that Nominet have taken all necessary steps under the Procedure and there is no evidence to indicate any exceptional circumstances that I should take into account. Accordingly I will now proceed to a Decision on the complaint notwithstanding the absence of a response, as is provided for in the Procedure §15b:
"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."
4.4. Furthermore, since I am not aware of any exceptional circumstances in this case, I will act in accordance with the Procedure §15c which 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."
5. The Facts:
5.1. I accept the following as facts:
5.2. That the Complainant was registered as a UK company (No. 5326394) on 7th January 2005.
5.3. That the Italian company Pikono S.r.l ("Pikono") is a franchisor of its products and services, which include the "KonoPizza" brand launched in Italy on 20th April 2004. The company owns a number of Community trademarks that include both a word mark and a device mark for "KonoPizza". Pikono also owns and operates the web sites at domain names konopizza.it and konopizza.com.
5.4. That the Complainant was appointed "Master Franchisee" for the Pikono products and services in the Great Britain by an Agreement dated 25th July 2005. The Agreement licensed KonoPizza UK to use the Pikono trademarks, and KonoPizza UK has been authorised in writing as agent by Pikono in respect of this case.
5.5. Pikono have certified in writing that the Respondent has not been granted any rights in respect of the KonoPizza brand or name.
5.6. The Respondent registered the Domain Name as a private individual on 21st April 2004.
6. The Parties' Contentions:
Complainant
6.1. I have accepted as fact that the Complainant has a license and is authorised to act as agent for Pikono and the KonoPizza system and brand in Great Britain – including the holding of a license for the Pikono Community marks.
6.2. The Complainant's further submissions (made on its behalf by a solicitor) are as follows:
6.2.1. 2. Over the last 12 months the Complainant has been focused on establishing the basic foundations of the business ready for the implementation of the store roll-out plan. This has resulted in the establishment of its Head Office, Training and Development Centre in London at 5 Bessemer Park, Herne Hill, London SE24 0HG and identifying the location of an initial retail outlet at the Merry Hill Centre, Birmingham. There are a number of other market channels that the Complainant will be developing over the next few months including concessions in cinemas and other public venues. The Complainant plans to have 50 outlets in 3 years time.
6.2.2. 3. The Domain Name in the hands of the Respondent is abusive because there is no suggestion that the Respondent has any legitimate purpose in connection with the domain name and registration must have been primarily registered for one of the following reasons: a. for the purposes of selling, renting or otherwise transferring it to the Complainant (Pikono (or party authorised by Pikono) or a competitor; or b. to stop the Complainant or Pikono registering it despite their rights in the name; or c. to unfairly disrupt the business of the Complainant and/or Pikono because any person entering the domain name will be directed to a site indicating that the site had has been registered but providing no details of the registrant.
7. Respondent
7.1. The Respondent has not submitted a response in time or at all.
8. Discussion and Findings:
Burden of Proof
8.1. In order for the Complainant to succeed it must (Policy §2) prove to the Expert, on the balance of probabilities, both:
i that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
8.2. Rights are defined in the Policy as:
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;
Complainant's Rights
8.3. The Complainant by making its Complaint has agreed to be bound by the Procedure and its legal representative has also signed a statement of truth in respect of the Complaint and associated documentation supplied.
8.4. The Complainant relies upon both its registration as a limited company and its licence and agency from Pikono to use the KonoPizza name, mark and brand as the basis for establishing its rights.
8.5. In examining the Domain Name I need to exclude the ".co.uk" suffix (which is generic and is usual to ignore) and I need to bear in mind that domain names are usually expressed in lower case only. In which case the name KonoPizza UK Ltd. would be rendered as "konopizza". Therefore there is a direct similarity between the company name and the Domain Name.
8.6. It is clear that the UK registration for KonoPizza UK Ltd. took place on 7th January 2005, and that the Domain Name was registered by Ms. Fox on 21st April 2004 – which could be interpreted as a prior claim. The Claimant has not produced evidence of business activity before 2005. However the Community trademarks formally licensed to KonoPizza UK Ltd. by Pikono have dates in 2003 and Pikono itself was developing its products and establishing business goodwill prior to April 2004. Pikono advertising materials say that "Konopizza is an exciting new concept that was conceived in 2002 with the first outlet opening in April 2004".
8.7. I therefore accept that, by virtue of its licence and agency, that KonoPizza UK Ltd. does have rights in the name "konopizza" and that those rights were established by not only the registration and operation of KonoPizza UK Ltd. but also by the Community trademarks and the activities of Pikono S.r.l.
8.8. I therefore find that the Complainant has established to my satisfaction that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive Registration
8.9. Having found that the Complainant has established to my satisfaction that it has Rights in respect of a name or mark which is identical or similar to the Domain Names, I must now examine its allegations of an Abusive Registration by the Respondent.
8.10. An Abusive Registration is defined in the Policy as follows:
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;
8.11. The Policy §3 provides a basis for the decision as to whether a registration is abusive and I would emphasise the point that the list is non-exhaustive.
8.12. Unfortunately the Claimant has not produced any direct evidence of the activities of the Respondent in relation to the Domain Name and relies on a simple assertion that "because there is no suggestion that the Respondent has any legitimate purpose in connection with the domain name [and] registration must have been primarily registered for one of the following reasons:". I do not think it necessarily follows that because the Claimant can see no reason for the Respondent's registration of the Domain Name that it must, therefore, be an abusive registration.
8.13. No evidence has been produced that the Respondent attempted to sell the Domain Name to the Claimant or a business rival, nor has any evidence been produced that the web pages at the Domain Name are taking unfair advantage of the Claimant's rights or confusing its customers or potential customers.
8.14. The web page which is addressed by www.konopizza.co.uk is a place-holder page from 1&1 Internet to indicate that the Domain Name has been registered on behalf of a customer, and the page is essentially an advertisement for 1&1 Internet. There is no information about KonoPizza on the page, or any person or commercial entity other than 1&1 Internet. The Claimant alleges that this is detrimental to their rights by misleading any visitor because there is no reference to KonoPizza or its products. This seems a circuitous argument.
8.15. It is not of itself evidence of an abusive registration that a Domain Name remains unused, nor is it necessarily abusive to register a Domain Name and to seek to sell it at a profit. As in all things, the abuse may arise from the circumstances of each case, and those circumstances ought to be demonstrated through evidence provided by the Claimant.
8.16. On the other hand, I do accept that it is difficult for a Claimant to produce evidence of abuse when the Domain Name is unused and there has been no contact with the Respondent. I am therefore minded to apply the "four-stage test" originally set out in Chivas Brothers Limited v. David William Plenderleith DRS 00658:
Where a Respondent registers a Domain Name:
1. which is identical to a name in respect of which the Complainant has rights; and
2. where that name is exclusively referable to the Complainant; and
3. where there is no obvious justification for the Respondent having adopted that name for the Domain Name; and
4. where the Respondent has come forward with no explanation for having selected the Domain Name,
it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain Name for a purpose and secondly that that purpose was abusive. In this case the Expert draws those inferences.
8.17. In order to validate Stage 2, I carried out some simple research using Google. I was unable to find any reference to KonoPizza that was not a web page created by Pikono, or a reference by some third party to Pikono products or activities – usually a review of some sort (sometimes by a private individual) or a journalist following press releases or making comment. Whilst carrying out my searches, I found an article published on 20th April 2004 by the Daily Mail describing the launch of KonoPizza in Italy (http://www.thisislondon.com/lifeandstyle/articles/10336413?source=Daily%20Mail). It may of course be entirely coincidental that the Respondent registered the Domain Name on 21st April 2004, however (in the absence of any explanation from the Respondent) I will draw the conclusion that the two are related.
8.18. In validating Stage 3 - whether the Respondent had any obvious justification for acquiring the Domain Name - I think the judgement in the first instance in BT v One In A Million [1998] F.S.R. 265 is helpful:
"There is only one possible reason why any one who was not part of the Marks & Spencer Plc group should wish to use such a domain address, and that is to pass himself off as part of that group or his products off as theirs. Where the value of a name consists solely in its resemblance to the name or trade mark of another enterprise, the Court will normally assume that the public is likely to be deceived, for why else would the Defendants choose it? In the present case, the assumption is plainly justified. As a matter of common sense, these names were registered and are available for sale for eventual use. Some one seeking or coming upon a website called http://marksandspencer.co.uk would naturally assume that it was that of the Plaintiffs.
…
The point is that the names are only saleable to Marks & Spencer and blocking their use by Marks & Spencer is only a useful negotiating tactic on the footing that they are names which it is dangerous for Marks & Spencer to allow to remain out of their control."
8.19. Whilst I am sure KonoPizza would not claim to be on the same business plane as Marks and Spencer; in my view the name KonoPizza is distinctive – and is clearly a made-up name to express the properties of the product. It is difficult to see why a private individual might independently decide upon that name or what motive the Respondent could have had for acquiring the Domain Name. It seems to me, in the absence of any explanation from the Respondent, that the only purpose for a private individual to register the Domain Name was at best mischievous. Under the circumstances, I must draw the conclusion that this registration was abusive and took unfair advantage of the Complainants rights.
8.20. I therefore find that the Complainant has established to my satisfaction that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
9. Decision:
9.1. For the reasons set out above I find that the Complainant has established that it has Rights in respect of a name or mark which is identical or similar to the Domain Name and I find that the Domain Name in the hands of the Respondent is an Abusive Registration.
9.2. I therefore Determine that the Domain Name should be transferred to the Complainant.
______________________ 19th March, 2006
Iain M. Tolmie ("the Expert")