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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> 4imprint Group Plc v Bola [2006] DRS 4096 (28 November 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4096.html Cite as: [2006] DRS 4096 |
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Nominet UK Dispute Resolution Service
DRS 4096
4imprint Group Plc v Diljeet Bola
Decision of Independent Expert
Complainant: 4imprint Group Plc
London
Respondent: Diljeet Bola
Berkshire
4-imprint.co.uk
On 5 October 2006 the Complaint was lodged with Nominet. In accordance with the Dispute Resolution Service Policy hard copies of the Complaint were received in full on 5 October 2006.
On the same day the Complaint documents were generated for service upon the Respondent. No Response was received from the Respondent by the due date of 3 November 2006.
On 9 November 2006 Mr Clive Thorne was selected as the Expert. He has confirmed his independence and willingness to act.
The Expert understands the necessary fees were received from the Complainant on 7 November 2006. There are no interlocutory or interim matters outstanding.
The Expert is satisfied that the Complaint documents were served upon the Respondent. This is evidenced by an email from Gloria Munday of Nominet dated 3 November 2006. In the absence of a Response the Expert proceeds to determine the Complaint on the basis of the evidence submitted by the Complainant.
The factual background is summarised in the Complaint. There being no Response the Expert accepts the truth of the unchallenged facts stated in the Complaint.
The Complainant is a UK registered company and trades as a leading supplier of promotional merchandise for business. The wide range of products and services provided under its mark "4imprint" can be shown from a copy of its recent catalogue which is exhibited to tab 1 of the Complaint.
This catalogue shows that the Complainant offers for sale various goods and services but in particular, personalised products to be given away as business gifts. These range from pens, diaries, electronic gadgets, t-shirts, fleeces and items of luggage. It appears to be intended that these products when supplied to a customer are branded with the logo of the customer's business.
The Complainant is the registered proprietor of Community Trade Mark No. 1,308,261 for the mark "4IMPRINT" in respect of goods and services in Class 16, 40 and 42. This mark was registered as of 14 September 1999. The Complainant exhibits at tab 2 a copy of a trade mark search showing the existence of the mark. It should be noted that the Respondent registered the domain name in dispute on 11 August 2005.
The Complainant asserts that it has traded under the mark 4imprint since 2000. It points out that all aspects of its business are branded with the mark 4imprint and any customer buying products from the Complainant will be aware of the mark. It refers to the use of the mark on its website and also a website address as "www.4imprint.co.uk". The domain name is registered in the name of Nelson Marketing Inc. which is a wholly owned subsidiary of the Complainant and has bee used for around 6 years. Many of the Complainants products purchased on-line from its website.
In addition to the website the Complainant has spent considerable sums on advertising and promoting its business throughout the United Kingdom and throughout the world. It relies upon its catalogue as evidence of the type of high quality promotional materials that are produced by it as part of its trading activities. The Expert notes that the cover of the Catalogue bears the mark "4imprint". The Complainant submits that it has acquired, as a result of extensive use of the mark in the course of its trade, a significant amount of protectable goodwill when used in connection with the provision of promotional merchandise of businesses.
The history of the dispute began with the registration by the Complainant of the domain name in dispute on 11 August 2005. It traded using a website referring to itself as "Moving Messages offering a variety of products relating to promotional merchandise for businesses". A copy of a screen print from that website showing the type of products offered by the Respondent is exhibited at tab 3 of the Complaint. The Complainant submits that the apparent purpose of the redirection of users to the Moving Message site using the domain name is to attract customers to the Moving Messages business by an unauthorised exploitation of the Complainant's goodwill and reputation.
On 1 August 2006 the Complainant's solicitors Laytons wrote to the Respondent at Moving Messages Limited by letter and by email requesting transfer of the domain name to the Complainant. This letter is exhibited at tab 3. In response, it appears that the Respondent simply ceased diverting the user to the Moving Messages site and set up a basic web page that states that "the website is under construction" but that "once launched" the website "will aim to help and advise you on every day photography matters". This is evidenced at tab 5 page 6 of the Complaint.
It seems that a gentleman calling himself "Simon" telephoned the Complainant's solicitors on behalf of Moving Messages shortly after the letter was sent and asked for a copy of the attachment to the email. A copy of the correspondence recording this is set out at tab 6 pages 7 to 9. Save for that telephone call there has been no response to the letter of 1 August from either the Respondent or Moving Messages.
Under paragraph 2(a) of the DRS Policy a Complainant must show that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities. The Expert therefore proceeds to deal with each element in turn.
(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name
The Expert has considered the evidence of trade mark rights adduced by the Complainant and referred to above. It is satisfied that the Complainant has registered rights in the mark "4IMPRINT". It is also satisfied that these pre-date the date of registration of the domain name.
The Expert is also satisfied that as a result of its trading activity under the mark since 2000 that the Complainant has acquired a reputation and goodwill in the United Kingdom through trading using the mark 4-imprint.
The Complainant submits that the only distinction between the Complainant's trade mark "4IMPRINT" and the domain name is the addition of a hyphen between the "4" and "imprint" in the domain name.
In the Expert's view the Complainant has established that it has rights in respect of a mark ie., "4IMPRINT" which is similar to the domain name. Accordingly, the Expert finds for the Complainant in respect of this element.
(ii) The Domain Name, in the hands of the Respondent is an Abusive Registration
"Abusive Registration" is defined in paragraph 1 of the DRS Policy as meaning a domain name which either:
(1) 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
(2) 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 provides a non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration. In the present case, the Complainant submits that the Domain Name is clearly abusive for the following reasons:
(1) The domain name could easily be mistyped or typed in as a result of imperfect recollection. In doing so the business of Moving Messages would capitalise on that mistake and benefit from sales that were generated as a result of users believing that they were accessing the Complainant's website.
(2) The response to the Director of Moving Messages Limited who was a director of that company at the time of registration. This is shown by the print out from Companies House exhibited at tab 7 to the Complaint.
(3) The behaviour of the Respondent and Moving Messages in response to the demand letter of 1 August 2006 is revealing. The response was not communicated to the Complainant but to change to the current version of the website found at the domain name.
(4) The previous use of the domain name was to route the user to a business competing with the Complainant which explains the choice by Respondent of this the domain name. The domain name consists of a small variation of the Complainant's trading mark. Therefore the use of the domain name was "intended to mimic" the Complainant's mark and domain name so as to enable the Respondent and Moving Messages Limited to benefit from the confusion.
In summary the Complainant submits:
(i) The use made by the Respondent of the Domain Name took unfair advantage and was detrimental to the Complainant's rights by diverting customers to its competing business without the Complainant's permission.
(ii) The domain name was registered as an attempt to trade off the back of the goodwill and reputation of the Complainant's rights.
In support of its submissions the Complainant relies upon an earlier Expert Decision, Oxford Instruments Plc v Bruinder Singh Dha (DRS 00832) which states in the Decision:
"Where a Respondent registers a domain name:
1. which is identical (or virtually identical to a name which a Complainant has rights);
2. where that name is specifically referable to the Complainant and sufficiently distinctive;
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 that the Respondent registered the domain name for a purpose and secondly that purpose was "abusive".
In the Expert's view that is the situation in the present case. Having considered the evidence the Expert finds that the registration in the hands of the Respondent is an Abusive Registration. The domain name was used in a manner which took unfair advantage and was unfairly detrimental to the Complainant's rights. Accordingly, the Complainant has satisfied its burden of proof in showing that both elements in paragraph 2(a) of the Policy exist on the balance of probabilities.
The Complainant has requested that the disputed Domain Name should be transferred from the Respondent to the Complainant. Accordingly, the Expert orders that the Domain Name "4-imprint.co.uk" be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Expert
28 November 2006
