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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Kohler Mira Ltd v Soper [2006] DRS 3727 (26 July 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3727.html Cite as: [2006] DRS 3727

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Kohler Mira Limited – v – Marc Soper

Nominet UK Dispute Resolution Service

DRS 3727

Kohler Mira Limited and Marc Soper

Decision of Independent Expert

1. PARTIES:

Complainant: Kohler Mira Limited

Country: GB

Respondent: Marc Soper

Country: GB

2. DISPUTED DOMAIN NAMES:

mira-showers.co.uk; mira-uk.co.uk (the "Domain Names")

3. PROCEDURAL BACKGROUND:

3.1      The dispute was entered in to the Nominet Dispute Resolution Service (DRS) on the 1^st June 2006. Hard copies of the Complaint were received in full by Nominet on the 2^nd June 2006. The Complaint was validated by Nominet on 5^th June 2006 and a copy of the Complaint was sent to the Respondent by e-mail and post.

3.2      The e-mail notification was undeliverable to the Respondent's requested e-mail address and the copy of the Complaint sent to the Respondent's address was returned by the Royal Mail on 6^th June 2006, with the notification "We were unable to deliver this item because the addressee has gone away."

3.3      On the 28^th June 2006 Nominet informed the Complainant that no Response had been received. On the 5^th July 2006 the Complainant paid the fee to obtain an Expert Decision pursuant to Paragraph 7 of the Nominet Dispute Resolution Policy ("the Policy").

3.4      On the 5^th June 2006, Veronica Bailey, the undersigned Expert ("the Expert"), was selected as the expert and having confirmed to Nominet that she was independent of each of the parties and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call in to question her independence and/or impartiality, was appointed Expert on 12^th July 2006.

4. OUTSTANDING FORMAL/PROCEDURAL ISSUES:

4.1      The web form to lodge a complaint will only allow one complainant's name to be entered. It appears from the body of the complaint that the complaint is made in the name of the joint complainants, Kohler Co and its wholly owned subsidiary Kohler Mira Limited (the "Complainants"). Although it is not specified which one of the Complainants is the "lead Complainant" as required by paragraph 3 ii. of the DRS Procedure, nor which of the Complainants should become the sole registrant of the Domain Names if the complaint is successful, as required by paragraph 3 iii. of the Procedure, Kohler Mira Limited who is named in the complaint as the Complainant, will be treated as the lead Complainant for these purposes.

4.2      The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with Paragraph 5a. of the DRS Procedure for the conduct of proceedings under the Dispute Resolution Service

4.3      Paragraph 15b. of the DRS 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 proceed to a Decision on the complainant".

4.4      Nominet appears to have used all the available contact details to try to bring the complaint to the Respondent's attention. Nominet's terms and conditions for registering a .uk domain name require the Registrant to inform Nominet promptly of any changes to its registered details and to maintain and update any details submitted. The fact that the e-mail notification did not reach the Respondent and the postal notification has been returned by the Royal Mail when sent to the Respondent's registered contact details, does not constitute an exceptional circumstance for the purposes of paragraph 15b. As there do not appear to be any exceptional circumstances involved and in accordance with Paragraph 15b. of the DRS Procedure a Decision will be made on the complaint notwithstanding the absence of a Response.

5. THE FACTS:

5.1      The domain name mira-showers.co.uk was registered to the Respondent on the 30^th September 2002 and the domain name mira-uk.co.uk was registered to the Respondent on 5^th March 2002.

5.2      Kohler Mira Limited (company number 00252115) the lead Complainant is a UK registered company whose registered office is at Whadden Works, Cromwell Road, Cheltenham, Gloucestershire, GL52 5EP.

5.3      The Complainants are the registered proprietors of UK and Community Trade Mark Registrations for the mark MIRA and the domain names mirashowers.co.uk and mirashowers.net and mirashowers.com.

6. THE PARTIES' CONTENTIONS:

Complainant

6.1      The Complainant submits that the Domain Names in dispute are 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.

6.2      The Complainants further submit that:

(a) Mira Showers was established 80 years ago and is a market leader in its field. The Complaints acquired the Mira Showers company in 2001.

(b) The Complainants (and other companies in its corporate group) own numerous trade marks throughout the world, including community trade marks and UK registered trade marks for the MIRA mark.

(c) The Complainants own the domain name mirashowers.com; and mirashowers.co.uk; mirashowers.net and kohlermira.co.uk.

(d) The disputed Domain Name mira-showers.co.uk incorporates the Complainants' trade marks, is identical to the name of the Complainants, and the Complainants' products and is identical to the .co.uk; .net and .com domain names owned by the Complainants.

(e) The Domain Name mira-uk.co.uk incorporates the Complainants' trade marks. The country reference 'uk' does not serve to distinguish the Domain Name and wrongly suggests that the Respondent is an affiliate or associate of the Complainants.

(f) Since the Domain Names are identical to the Complainants' marks, this amounts to a misrepresentation which will results in third parties associating the Domain Names registered by the Respondent with the Complainants, causing damage to the Complainant and giving rise to a claim of passing off against the Respondent.

(h) The Domain Names were registered by the Respondent after the Complainants had applied for and obtained trade mark registrations for the relevant trade marks used in their .com and .co.uk domain names.

(i) The Respondent has over 190 domain names registered in his name, some of which incorporate or are similar to well known marks including: BritishGasHeating.co.uk; twyford-bathrooms.co.uk and armitagebathrooms.co.uk.

(j) The Domain Name mira-showers.co.uk resolves to a site purporting to be associated with the Complainants, with links which redirect the user to a website at www.discountheating.co.uk, which advertises goods of the Complainant's competitors. The Complainants submit that this unfairly disrupts their business and hijacks their advertising efforts. Further, there is a risk that users may believe that the Domain Name is being used by the Respondent under licence or with permission of the Respondent.

(k) The Complainants have filed this complaint to put a stop to the adverse impact the Domain Names are having and will continue to have on the Complainants' business and submit that the Domain Names are an Abusive Registration in the hands of the Respondent in accordance with paragraphs 1 and 3 of the Policy. There is no legitimate purpose for which the Respondent could have registered the Domain Names and the Domain Names must have been registered by the Respondent either:

(a) for the purposes of selling, renting or otherwise transferring the Domain Names to the Complainants or to a competitor of the Complainants, for valuable consideration in excess of the Respondent's out-of-pocket costs directly associated with acquiring or using the Domain Names;

(b) as a blocking registration against a name or mark in which the Complainants have rights; or

(c) for the purpose of unfairly disrupting the business of the Complainants.

(l) The Respondent has or is continuing to use the Domain Name mira-showers.co.uk in a way that will confuse people or businesses into believing the Domain Name is registered to, operated or authorised by, or otherwise connected to the Complainants.

(m) The Respondent is engaged in a pattern of conduct in that the Respondent has registered domain names that correspond to well-known names or trade marks in which the Respondent has no apparent rights, and the Domain Names are part of that pattern.

(n) There is no legitimate reason for the Respondent's registration of the Domain Names.

Respondent

6.3      The Respondent has not submitted a Response.

7. DISCUSSIONS AND FINDINGS

Burden of Proof

7.1     . Paragraph 2 of the Policy requires that the Complainant prove on the balance of probabilities that:

(i) it has Rights in a name or mark that is identical or similar to the Domain Name; and

(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration (as those capitalised terms are defined in paragraph 1 of the Policy).

Rights

7.2      The Complainants are the registered proprietor of a number of registered trade marks in the UK which either are, or include the word MIRA and which are registered in various classes and predate the registration by the Respondent of the Domain Names.

7.3      The lead Complainant, Kohler Mira Limited is according to the WHOIS results submitted with the complaint, the registrant of the Domain Names mirashowers.co.uk; mirashowers.net and kohlermira.co.uk, and the Complainant, Kohler Co, is the registrant of the Domain Name mirashowers.com.

7.4      In determining whether the Domain Names are identical or similar to the name or mark in which the Complainant has Rights each Domain Name will be considered in turn disregarding the co.uk suffix.

mira-showers.co.uk

7.5      Whilst not identical to the lead Complainant's mark MIRA, the Domain Name incorporates the lead Complainant's mark and the use of the general descriptive word "showers" does not render the Domain Name dissimilar to the mark 'MIRA' in which the Complainant has Rights.

7.6      Further, the Domain Name, excluding the hyphen and the suffixes .co.uk, .net and .com, is identical to the Complainant's Domain Names mirashowers.co.uk and mirashowers.net and mirashowers.com.

7.7      On the evidence submitted it is clear that the Complainants have Rights in the mark MIRA which is similar to the Domain Name. Further, the Complainants have Rights in the name "mirashowers", which are used in connection with their domain names mirashowers.com, mirashowers.co.uk and mirashowers.net which, ignoring the hyphen and the suffixes .com, .co.uk and .net is the same as the disputed Domain Name.

mira-uk.co.uk

7.8      On the evidence submitted, the Complainants have Rights in the mark MIRA, which is similar to the Domain Name mira-uk.co.uk. Disregarding the suffix .co.uk, the remaining letters "uk" are generally regarded as an abbreviation for United Kingdom. The lead Complainant has various UK trade marks for the word MIRA and a strong UK presence. The use of "uk" in Domain Name does not make the Domain Name dissimilar to the Complainants' mark MIRA.

7.9      Accordingly, for the reasons set out above, I find that the Complainants have Rights in a mark which is the same or similar to the Domain Names.

Abusive Registration

7.10      Abusive Registration is defined in Paragraph 1 of the Policy 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

Paragraph 3 of the Policy sets out a non-exhaustive list of the factors which may be evidence that the Domain Name is an Abusive Registration. The most relevant are set out below:

i. Circumstances indicating that the Respondent has registered or has otherwise acquired the Domain Name primarily:

A. for the purposes of selling, renting or otherwise transferring the Domain Names to the Complainants or to a competitor of the Complainants, for valuable consideration in excess of the Respondent's out-of-pocket costs directly associated with acquiring or using the Domain Names;

B. as a blocking registration against a name or mark in which the Complainants have rights; or

C. for the purpose of unfairly disrupting the business of the Complainants.

ii. Circumstances indicating that the Respondent is using the Domain Name in a way that will confuse people or businesses into believing the Domain Name is registered to, operated or authorised by, or otherwise connected to the Complainant.

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 marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern.

7.11      There appears to be no legitimate reason why the Respondent should be using the Complainants' mark MIRA in connection with the Domain Names and the Website. The Website also features the Complainants' name "mirashowers" which is used in connection with the Complainants' domain names mirashowers.com; mirashowers.co.uk and mirashowers.net. Such use by the Respondent of the Complainants' mark and name may result in third parties wrongly associating the Domain Names with the Complainant.

7.12      By not filing a Response, the Respondent has not disputed the Complainants' allegation that it is using the Complainants' marks MIRA in connection with the Domain Name mira-showers.co.uk which links to the Website in a manner which disrupts the Complainant's business and hijacks their advertising efforts. It is clear from the evidence submitted by the Complainant that the Website has links which redirect the user to a site which features goods that compete with those of the Complainant and it appears that the Respondent has intended to benefit from attracting additional traffic to the Website by those looking for the MIRA brand and products to the detriment of the Complainant. Accordingly, I find that on the balance of probabilities, the Respondent is using the Domain Name mira-showers.co.uk for the purposes of unfairly disrupting the business of the Complainant and that the requirements of paragraph 3 a i. C. of the Policy are satisfied.

7.13      Whilst the Complainants have produced no evidence that the Respondent's use of the Domain Names has confused people, it is likely, on the balance of probabilities that by using the Complainants mark MIRA and the featuring the words "Mira Showers" on the Website that people looking for the Complainants' brand will be confused.

7.14      There is no evidence submitted that the Domain Names were registered for the purpose of selling or renting the Domain Name or as a blocking registration as submitted by the Complainant and the requirements of paragraphs 3 a i. A. and 3 a i. B. of the Policy are not satisfied.

7.14      It appears from the evidence submitted by the Complainants that the Respondent is the registrant of a number of domain names which correspond to well known names or marks including BritishGasHeating.co.uk; twyford-bathrooms.co.uk; and armitagebathrooms.co.uk. There appears to be no legitimate reason why the Respondent is using the Complainants mark MIRA in connection with the Domain Names. On the balance of probabilities it appears that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or marks in which the Respondent has no rights and the Domain Names are part of that pattern.

8. DECISION

For the reasons set out above, the Expert finds that the Complainants have Rights in the name or mark which are similar to the Domain Names and that the Domain Names in the hands of the Respondent are an Abusive Registration. The Expert directs that the Domain Names be transferred to the lead Complainant, Kohler Mira Limited.

Veronica M Bailey

Date: 26 July 2006