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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Schwing Ltd v Another.com Ltd [2007] DRS 4168 (2 January 2006) URL: http://www.bailii.org/uk/cases/DRS/2007/4168.html Cite as: [2007] DRS 4168

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Nominet.uk Dispute Resolution Service

DRS 04168

Schwing Limited –v- Another.com Limited

Domain Name:

Decision of Independent Expert

1. The Parties

The Complainant

The Complainant is Schwing Limited of Middlesex

The Respondent

The Respondent is Another.com Limited of North Yorkshire

2. The Domain Name

The disputed domain name is ("the Domain Name").

3. Procedural Background

This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure ("the Procedure") and the Nominet UK Dispute Resolution Service Policy ("the Policy").

The Complaint entered into Nominet's system on 1 November 2006. It was validated on 7 November 2006 and Complaint documents were generated on the same day. No Response was received within the relevant time limit. However, on 7 December 2006 the Respondent made a non-standard submission under paragraph 13(b) of the Procedure. The explanatory paragraph which accompanied that submission stated that the Respondent had been confused as to the information that Nominet required from it. While it had responded to Nominet by 20 November 2006, it had mistakenly responded to a questionnaire received from Nominet and not to the Complaint. The Respondent now wished to respond to the Complaint.

The file was referred to me for a Decision on 11 December 2006.

The full text of the substantive part of the Complaint in the matter was as follows:

"The Complainant has rights to the name because its company Schwing Limited is registered at Companies House. The Parent Company, Schwing Gmbh is based in Germany and owns the domain name schwing.de as well as schwing.com and schwing.ie in other territories. Within the Group is a company Burlington Engineers which has had exclusive UK distribution rights for Schwing products for the past few decades. Indeed, Burlington Engineers' letterhead also includes the Schwing name (see attachment) Burlington Engineers/Schwing GmbH established Schwing Limited in the UK in 2006 to further protect the Schwing name. Several attempts have been made to contact the Registrant (see copies of emails) over the past few weeks, but emails have bounced back and the contact telephone number is no longer in use. We consider that the Respondent has a wide selection of names corresponding to well known names or titles in which the Respondent has no apparent interest, eg. sigmundfreud.co.uk, mariahcarey-fan.co.uk, mathematician.co.uk, maytheforcebewithyou.co.uk, ashforduniversity.co.uk etc. We simply wish to acquire the domain name to protect our business interests and in view of the long standing interests we have in Schwing's products as well as our brand name, we believe we should have the opportunity to obtain it. All efforts have been made to contact the Respondent, but this has proved to be impossible."

Upon reviewing the file, I took the view that the Complainant's case as pleaded was unsatisfactory. In view of the fact that the Complainant was not legally represented, I decided that it should be given a further opportunity to state its case. I also decided to admit the Respondent's non-standard submission. In the circumstances, I gave the following directions on 13 December 2006:

"Having reviewed the Complaint and the Respondent's letter in support of its non-standard submission, the Expert makes the following directions pursuant to paragraphs 13(a) and (b) of the DRS Procedure:

1. That the Complainant do within 7 days file a further statement of its case providing further particulars of:

(1) Any Rights that it claims to have in the name SCHWING for the purposes of paragraph 2(a)(i) of the DRS Policy, whether in the nature of registered trade mark rights, unregistered trade mark rights (i.e. the right to prevent passing off) or otherwise.

(2) Its grounds for asserting that the registration in the hands of the Respondent is an Abusive Registration, having regard to the requirements of paragraph 3(c)(v) of the DRS Procedure and to paragraph 3 of the DRS Policy.

2. That the Respondent do within 7 days of the filing of the further statement file a response, if any, to that further statement.

3. That the Respondent's existing non-standard submission be admitted and made available to the Expert."

The Complainant filed further submissions by a letter dated 19 December 2006. The Respondent filed a response to those submissions by a letter dated 22 December 2006.

4. Outstanding Formal/Procedural Issues

There are no further such issues in this case.

5. The Facts

The Domain Name was registered by the Respondent on 15 January 1999.

6. The Parties' Contentions

The Complainant

I have set out above the full text of the substantive part of the original Complaint in this matter.

In its further case statement made in response to my directions, the Complainant made the following additional submissions:

"Rights to the name SCHWING for the purposes of paragraph 2(a)(i) of the DRS Policy:

Paragraph 2(a)(i) of the policy states: 'The Complainant has Rights in respect of a name or mark which is identical to the domain name'.

Schwing is a German-based manufacturer of Concrete Pumps and Booms etc. It was established in 1933. The brand name is exceptionally well known in the industry and cannot be considered to be a generic term. The Group itself has annual reserves of over $900m.

Burlington Engineers Limited was founded in 1946 and has had sole distribution rights to Schwing products in the UK since 1966 (ie for the past 40 years). In 2006 it was acquired by Schwing GmbH, and in 2006 it has also established the company Schwing Limited in the UK.

Evidence of the connection between the companies (even prior to the acquisition) is seen in the attached extract of the Schwing 2006 Annual Calendar. The attached page shows the monthly photographs and then at the bottom has the name and contact number of Burlington Engineers, ie the UK distributor. (Appendix 1).

Further evidence of the long-standing connection is seen from the attached article from Concrete dated 24th May 1980, which outlines the relationship. (Appendix 2).

Schwing GmbH do not permit any other companies to sell their products in the UK market."

The case statement also included submissions as to why the Domain Name in the hands of the Respondent was an Abusive Registration. However, in view of my findings as set out below, it is unnecessary to set out those submissions in this Decision.

The Respondent

The Respondent made submissions in response to the Complaint in its original Response admitted under paragraph 13(b) of the Procedure and in its further case statement filed in response to my directions. In those submissions the Respondent set out its contentions as to why the Domain Name in its hands was not an Abusive Registration. Once again, however, in the light of my findings as set out below, it is unnecessary to set out the details of the Respondent's submissions in this Decision.

7. Discussion and Findings

Relevant Provisions of the Policy

Under paragraph 2 of the Policy:

"(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, 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.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities."

Under paragraph 1 of the Policy the term "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."

In this case the Complainant, Schwing Limited, has failed to make out any reasonable case that it has Rights in a name or mark that is identical or similar to the Domain Name.

The name or mark on which the Complainant relies is SCHWING. It is the Complainant's case that the name or mark SCHWING refers to the German manufacturer Schwing GmbH and its products and that it is well known in the concrete industry to do so. The Complainant further contends that a company named Burlington Engineers Limited has the sole distribution rights for Schwing GmbH products in the UK and has held those rights for the past 40 years.

While these matters may establish that Schwing GmbH and/or Burlington Engineers have Rights in the name or mark SCHWING (about which I make no present finding), they do nothing to advance a case that the Complainant, Schwing Limited, has any such Rights.

There is no evidence from the Complainant as to whether there is any registered trade mark for the term SCHWING or whether, if so, it is the owner (or even the licensee) of any rights in that trade mark.

The Complainant contends that it has Rights in the name SCHWING "because its company Schwing Limited is registered at Companies House." It also states that it was a company established by Schwing GmbH/Burlington Engineers Limited (which had itself been acquired by Schwing GmbH in 2006) "to further protect the Schwing name."

The registration of a company at Companies House does not of itself give rise to rights enforceable under English law for the purposes of paragraph 2(a)(i) of the Policy. Absent an interest in any registered trade mark, a complainant must show, as a minimum, that it has an interest in the goodwill that attaches to a name or mark that is distinctive of goods or services. Here the Complainant has failed to show that it has any such interest. There is no evidence of any trading (or even pre-trading) activities on the part of the Complainant, nor is it contended that it is the assignee or the licensee of any rights that Schwing GmbH or Burlington Engineers may have in the SCHWING name. Indeed, the contrary is indicated because the Complainant is at pains to point out that it is Burlington Engineers and that company alone that is associated with Schwing GmbH's products in the UK. The fact that the Complainant may have been "established by" Schwing GmbH and/or Burlington Engineers (whatever that means) is of no assistance in demonstrating Rights for the purposes of paragraph 2(a)(i) of the Policy, and the Complainant gives no explanation of how it has been used "to further protect the Schwing name".

In the circumstances, the Complainant has failed to establish on the balance of probabilities that it has Rights in name or mark that is identical or similar to the Domain Name and this Complaint fails.

It is unnecessary in the circumstances to consider the parties' contentions as to Abusive Registration.

While I am conscious that this Decision is technical in nature, I indicated in clear terms in my directions dated 13 December 2006 the matters that I required the Complainant to address. Despite being given a second bite of the cherry, the Complainant has failed to advance any arguable case on Rights and in the circumstances the failure of the Complaint is inevitable.

8. Decision

The Complainant has failed to establish on the balance of probabilities that it has Rights in a name or mark that is identical or similar to the Domain Name. Accordingly the Complaint fails and is dismissed.

For the purposes of paragraph 16(d) of the Procedure, I make no finding in this case that the Complaint was brought in bad faith.

Steven A. Maier

2 January 2006