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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Flowstore Systems Ltd v Tube & Bracket Company Ltd [2006] DRS 4181 (21 December 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4181.html Cite as: [2006] DRS 4181 |
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Complainant:
UK
Respondent:
The Tube & Bracket Company Limited
UK
A Complaint in respect of
On 30 November 2006 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). The Complaint was referred for a decision by an Independent Expert following payment by the Complainant of the required fee on 4 December 2006. I was appointed as Independent Expert as of 11 December 2006 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
There are no outstanding formal or procedural issues.
The Complainant is a supplier of storage and construction equipment. It is the proprietor of UK trade marks FLOWTUBE, FLOW-TUBE and FLOW TUBE registered as of 24 November 2005. It operates a website at www.flowstore.co.uk.
According to the Nominet Whois database, the Domain Names were registered on 11 November 2005. At the time of the complaint, the Domain Names both resolved to a webpage featuring the Respondent's logo with a link to the Respondent's website at www.tubeandbracket.com.
Complainant
The Complainant, Flowstore Systems Limited, has rights in the Domain Names because it has advertised and traded under the name FLOWTUBE and has used the name since 1995. It has spent about £50,000 on literature, brochures, exhibitions and advertisements, examples of which are exhibited to the Complaint.
The Complainant supplies goods under the name FLOWTUBE as evidenced by drawings, brochures, quotations, client purchase orders and invoices dating from 1996.
The Complainant is the proprietor of UK trade marks FLOWTUBE, FLOW-TUBE and FLOW TUBE registered as of 24 November 2005.
The principal of the Respondent company is Nick Tyler who is a former employee of the Complainant. He was fully aware of the use of the name FLOWTUBE by the Complainant during his employment. He left the Complainant to set up a new business around four years' ago.
The agent who registered the Domain Names on behalf of the Respondent is Archipelago Creative who were until around October 2005 the designers of the Complainant's website and responsible for registering the Complainant's domain names. Archipelago is run by the sister and brother in law of Mr Tyler. The Complainant terminated its business with Archipelago in October 2005 and the Domain Names were registered immediately thereafter.
The Domain Names are Abusive Registrations in the hands of the Respondent because they were registered to stop the Complainant registering them. They have unfairly disrupted the Complainant's business because it is unable to develop a dedicated website to promote the Flowtube product.
The Domain Names are being used in a way that confuses the market. They both resolve to a webpage featuring the Respondent's logo which in turn links through to the Respondent's website at www.tubeandbracket.com. The Respondent has also registered
Although the Respondent's prime motivation is to stop the Complainant registering the Domain Names, the Complainant believes that the Respondent may have intended to sell the Domain Names to the Complainant or to a competitor of the Complainant.
Respondent
The Respondent has not filed any response to the Complaint.
General
Although the Respondent failed to submit a Response to the Complaint, there is no scope for a decision in default under the Policy and Procedure. Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non-compliance with the Procedure as I consider appropriate. The Complainant is still required, however, 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". However, a Complainant is unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.
The Complainant has adduced uncontroverted evidence that it has carried on a significant business in FLOWTUBE products since 1995. On the basis of the evidence put forward by the Complainant, I consider that it is likely to have acquired significant goodwill and reputation in the name such as to give rise to common law rights that would be sufficient to establish a claim in passing off. In addition, the Complainant is the registered proprietor of UK trade marks in respect of the name in three different forms. Although the trade marks were registered as of 24 November 2005, shortly after the Domain Names were registered, the requirement under the Policy is that the Complainant has Rights as at the time of the Complaint.
I find that the Complainant has clearly established rights in the name FLOWTUBE. These would be sufficient since on a comparison with the Domain Names I may ignore the hyphen between "flow" and "tube" as well as the suffix ".co.uk". I also find however that the Complainant has Rights in the name FLOW-TUBE.
Accordingly, I am satisfied that the Complainant does have Rights in respect of names or marks which are identical to the Domain Names. I do not consider that there is any basis on which it could be said that the name FLOWTUBE is wholly descriptive of the Complainant's business.
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:
3ai Circumstances indicating that the Registrant has registered or otherwise acquired the Domain Name primarily:
A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. for the purpose of unfairly disrupting the business of the Complainant; and
3aii 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.
The Respondent has not answered the Complaint and there is, therefore, no explanation as to the circumstances in which the Domain Names were registered or why they were registered. The Complainant's evidence is that Nick Tyler, the principal of the Respondent (and named as the contact for the registrant of the Domain Names in the Nominet database) was employed by the Complainant until around April 2002 and that he would have been fully aware of the use by the Complainant of the name FLOWTUBE. In addition, the Respondent is a competitor of the Complainant.
In the circumstances, it seems to me to be very difficult to conceive of any legitimate reason for the Respondent to register the Domain Names. I have briefly reviewed the Respondent's website at www.tubeandbracket.com and there is no reference to FLOWTUBE or any suggestion that FLOWTUBE is, for example, a generic name. The Respondent does not appear to be making any use of the Domain Names except to divert Internet users who look for a website at www.flowtube.co.uk (or www.flow-tube.co.uk) to the Respondent's website at www.tubeandbracket.com.
These do appear to me to amount to circumstances likely to confuse people or businesses into believing that the Domain Names are operated or authorised by or connected with the Complainant. There is no evidence that the Respondent intended to sell the Domain Names to the Complainant or a competitor but the registrations of the Domain Names are acting as blocking registrations against names in which the Complainant has Rights. There is likely to be some disruption to the Complainant's business through the diversion of Internet users to the Respondent's website. In view of the connection between Mr Tyler and the Complainant and the undoubted rivalry and competition between the parties, it seems to me that it is highly likely that the Domain Names were registered with these purposes in mind.
In the circumstances, I consider that the Domain Names were registered and have been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights in the names FLOWTUBE and FLOW-TUBE and that the Domain Names, in the hands of the Respondent, are therefore Abusive Registrations.
Accordingly, I find that the Complainant has Rights in respect of names or marks which are identical or similar to the Domain Names and that the Domain Names in the hands of the Respondent are Abusive Registrations. I therefore determine that the Domain Names be transferred to the Complainant Flowstore Systems Limited.
Ian Lowe
21 December 2006