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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Warren James Jewellers Ltd v Allan [2006] DRS 3706 (28 July 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3706.html Cite as: [2006] DRS 3706

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NOMINET UK DISPUTE RESOLUTION SERVICE

DRS 03706

DECISION OF INDEPENDENT EXPERT

Warren James Jewellers Limited –v- David Allan

1. Parties

Complainant : Warren James Jewellers Limited

Country : GB


Respondent : Mr David Allan

Country : NZ

2. The Domain Name

warenjames.co.uk

3. Procedural Background

3.1 On 24 May 2006 the Complaint was lodged with Nominet in accordance with the Nominet Dispute Resolution Service Policy (the "Policy"), with hard copies of the Complaint being received in full by Nominet on the same day.

3.2 On 25 May 2006 Nominet validated the Complaint. On the same day it sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service ("the Procedure") had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.

3.3 On 20 June 2006 no Response had been received from the Respondent by Nominet and the Complainant was advised accordingly. 

3.4 On 26 June 2006 Nominet sent two letters to the Complainant, which provided alternative dates for payment of the relevant fee, in order for the matter to be referred to an independent expert for a decision. Those dates were respectively 4 and 10 July 2006. It is not clear to the Expert why two such letters were generated, although it appears that nothing turns on this.

3.5 On 3 July 2006 the Complainant's representatives wrote to Nominet, with their client's cheque for the relevant fee, but it appears that this letter and its attachment were never received by Nominet. Upon receipt of copies of those documents from the Complainant's representatives, Nominet accepted payment of the relevant fee on 21 July 2006.

3.6 On 25 July 2006 Bob Elliott was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the Procedure.

4. Outstanding Formal/Procedural Issues

4.1 The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5.a of the Procedure. Paragraph 15.b of the Procedure provides inter alia, that "if, in the absence of exceptional circumstances, a Party does not comply with any time period set down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint".

4.2 Paragraph 15.c 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".

4.3 There is no evidence before the Expert to indicate the presence of exceptional circumstances, as regards the Respondent.

4.4 As regards the "late" payment of the fees by the Complainant, paragraph 12.a of the Procedure allows Nominet in exceptional cases to extend any period of time in proceedings under the Dispute Resolution Service and in the light of the evidence subsequently provided by the Complainant's representatives, it seems to the Expert that it was correct for Nominet to regard the situation as exceptional and to extend time for the receipt of the fees.

4.5 The Expert will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.

5. The Facts

5.1 The Complainant is a company registered in England and Wales, which has traded under the name Warren James Jewellers since 21 June 1979.

5.2 The Complainant is the United Kingdom's largest independent jeweller, with 123 branches, and an annual turnover in excess of £96,000,000. Its business is the provision of high quality jewellery products, aimed primarily at younger people who are fashion and internet conscious.

5.3 The Complainant is the owner of the UK trade mark registration for WARREN JAMES JEWELLERS, which was registered in 1998. It has its own website at www.warrenjames.co.uk, and has owned that domain name since 1999. The Complainant says that its website is very popular, reflecting the nature of its customers.

5.4 The Complainant also uses the abbreviated name "Warren James" and says that it has done so since 1979. It uses that name in its current marketing material and on its letterhead, examples of which were provided to the Expert with the Complaint.

5.5 There is no information available about the Respondent, except as set out in the Domain Name registration details. The Domain Name was registered on 27 July 2004.

6. The Parties' Contentions

Complainant's Submissions

Rights

6.1 The Complainant submits that it has acquired substantial and extensive goodwill and reputation in the United Kingdom in the trade name "Warren James" and the trade mark "Warren James Jewellers". Although it is not entirely clear from the Complaint, the Complainant appears to contend that it has Rights in both "Warren James" and "Warren James Jewellers", and that they are both very similar to the Domain Name.

Abusive Registration

6.2 The Complainant says that the Domain Name has been used in a manner which is unfairly detrimental to its rights, as "it is confusingly similar to the Complainant's domain name (ie www.warrenjames.co.uk) and the disputed Domain Name unfairly disrupts the Complainant's business because it confuses people and business (sic) into believing that the Domain Name is registered to, operated or authorised by the Complainant".

6.3 The Complainant expands upon this submission pointing out that the Domain Name is identical to the Complainant's website, save for the omission of one "r" in the name "warren". Thus, "customers and potential customers of the Complainant could easily or incorrectly unknowingly type the website address and be taken to the Respondent's website, instead of the Complainant's".

6.4 The Complainant has provided a print of one page of the website which used to (but longer) appear at the Domain Name as at 19 May 2006. That page claimed to provide "resources and information on Engagement rings and Jewellery". The Complainant says that the links were to other websites, diverting traffic and the Complaint's customers to unconnected websites (although it does not provide documentary evidence). There was also a purported link on that page to "Warren James Jewellers", which the Complainant says was in fact a link to the eBay website, and not to the Complainant's website. The Complainant says that this shows firstly that the Respondent was fully aware of the Complainant, and secondly that this was a blatant and calculated attempt to divert the Complainant's customers away from its website.

6.5 Finally, the Complainant points out that its rights pre-date any rights that the Respondent may claim by virtue of the Domain Name registration on 27 July 2004.

6.6 The Complainant requests that the Domain Name is transferred to itself.

Respondent's Submissions

6.7 The Respondent has not filed any Response.

7. Discussion and Findings:

General

7.1 In order to succeed in these proceedings, paragraph 2.b of the Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2.a are present namely 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

7.2 The Complainant has established that it has a significant reputation and goodwill in the United Kingdom in the use of the names Warren James Jewellers and Warren James in respect of its jewellery business, as well as being the owner of the UK registered trade mark WARREN JAMES JEWELLERS. The Complainant also owns the domain name warrenjames.co.uk.

7.3 The Domain Name warenjames.co.uk is clearly similar to the trading name Warren James. "Rights" under the Policy include rights, enforceable under English law, including unregistered rights protectable under the law of passing off. The Expert considers that the trading name Warren James is protectable in that way, therefore the Expert finds that the Complainant has succeeded in establishing the first element of the test set out in paragraph 2.a.i of the Policy, without also needing to consider whether the Domain Name is similar to the registered trade mark WARREN JAMES JEWELLERS, or whether the use of the warrenjames.co.uk domain name also gives the Complainant "Rights" under the Policy.

Abusive Registration

7.4 Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The Complaint does not refer directly to any of the non-exhaustive list of factors. However it appears to the Expert that the following are potentially relevant :-

(a) 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"); and

(b) 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").

7.5 This appears to the Expert to be a typical case of typo-squatting. There is no explanation provided by the Respondent as to its choice of the Domain Name. It appears likely that the Respondent was aware of the Complainant's reputation at the time it registered the Domain Name in July 2004, and certainly, as the evidence provided by the Complainant demonstrates, it knew of the Complainant's existence by the time the Complainant became aware of the use of the Domain Name, as evidenced by the website at the Domain Name having links to other jewellers and purportedly to Warren James Jewellers itself (see paragraph 6.4 above - this evidence is unchallenged by the Respondent).

7.6 The Expert agrees with the Complainant's submissions that its customers and potential customers could easily incorrectly type the website address and be taken to the Respondent's website, instead of the Complainant's. This is likely to result in financial and/or other detriment to the Complainant, and therefore to disrupt the Complainant's business unfairly.

7.7 Furthermore, the nature of this type of typo-squatting is to seek to take advantage of typing errors by internet users, and the Expert considers that it is natural to conclude that the Respondent intended there to be confusion which would lead a customer or potential customer into believing that the Domain Name is registered to, operated or authorised by the Complainant, because there is no other reason for the web pages to exist other than for people to visit them.

7.8 In the circumstances, the Expert finds that both the factors set out above (namely at paragraph 3.a.i.C and paragraph 3.a.ii of the Policy) are made out and that the Complaint therefore succeeds.

8. Decision

8.1 The Expert finds that the Complainant has Rights in the name Warren James, which is similar to the Domain Name. The Expert further finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.2 The Expert therefore decides that the Domain Name should be transferred to the Complainant.

Bob Elliott

28 July 2006