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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Divelet Holding SA v Pizzeria Alex di Cimato Fernando e C. S.n.c. [2007] DRS 4408 (30 March 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4408.html Cite as: [2007] DRS 4408 |
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1. The Parties
The Complainant
1.1 The Complainant is Divelit Holding SA of Switzerland, represented by RDLUX SA.
The Respondent
1.2 The Respondent is Pizzeria Alex di Cimato Fernando e C. S.n.c. of Italy.
2. The Domain Name
2.1 The disputed domain name ("the Domain Name") is
3. Procedural Background
3.1 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").3.2 The Complaint entered Nominet's system on 26 January 2007. It was validated on 1 February 2007 and Complaint documents were generated on the same day. A Response was due by 26 February 2007 but no Response was received. Mediation not being possible and the Complainant having paid the relevant fee on 12 March 2007, the matter was referred to me for a Decision on 13 March 2007. I have confirmed that I am independent of the parties and that I am not aware of any matters that might call my impartiality or independence into question.
4. Outstanding Formal/Procedural Issues
4.1 Having reviewed the file I am satisfied that Nominet took all proper steps to bring the Complaint to the attention of the Respondent, including sending the Complaint by post to the contact address shown in its domain name database and by email to the address provided by the Respondent for its Administrative Contact.4.2 Under Nominet's terms and conditions of registration, it is the responsibility of the registrant of a domain name to provide Nominet with accurate contact details and to keep such details updated.
4.3 Paragraph 15b of the Procedure provides:
"If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down by the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."
I am aware of no such exceptional circumstances in this case.
5. The Facts
5.1 The Complainant has made assertions of fact in this case which, in the absence of any Response, are undisputed by the Respondent. I therefore accept as facts the matters set out below.5.2 The complainant is a company established in Switzerland carrying on business in the ironing products market.
5.3 The Complainant is the proprietor of registered trade marks for the name LAURASTAR. These include three UK trade mark registrations, the applications for which were filed on 20 September 1990: registration number 1441128 for LAURASTAR in class 9, registration number 1441129 for LAURASTAR in class 11, and registration number 1441130 for LAURASTAR in class 21. The Complainant is also the proprietor of a figurative Community Trade Mark incorporating LAURASTAR (registration number 3500279) in classes 9, 11 and 21, which was filed on 31 October 2003.
5.4 The complainant has sold ironing goods under the trade mark LAURASTAR in the UK since 1995, initially through a local distributor. In 2002 the Complainant incorporated the private limited company Kandymal Ltd, which shortly after incorporation changed its name to Laurastar UK Limited. This company is a wholly-owned subsidiary of the Complainant, and its object is to carry on the business of the Complainant in the UK under the LAURASTAR trade mark.
5.5 A search on Google.co.uk against the term "laurastar" produces results which refer extensively to the Complainant or its products. This is true of all or most of the results on the first page of the search.
5.6 The Complainant is the owner of other domain names identical to the Domain Name save for the domain extensions, including both country code Top Level Domains (such as laurastar.ie and laurastar.ch) and generic Top Level Domains (such as laurastar.com). These domain names are used by the Complainant and its affiliates around the world.
5.7 The Respondent registered the Domain Name on 11 April 2001.
5.8 The Respondent has also registered the domain names
5.9 There is no active web site associated with the Domain Name, and the Domain name points to a domain parking page.
5.1 0 Apart from the Domain Name and the two domain names referred to above, the Complainant is not aware of any connection between the Respondent and the LAURASTAR trade mark.
5.1 1 The Complainant's legal representative wrote to the Respondent on 17 May 2002 requesting details of the intended use of the Domain Name. The Respondent replied that the Domain Name was registered with a view to offering "alimentary products" to consumers, although the Respondent indicated that it was open to negotiations regarding the name. The Complainant's UK affiliate subsequently asked the Respondent to transfer of the Domain Name (I have not been provided with a copy of the letter in question). The Respondent replied on 5 April 2002 inviting the Respondent to make an offer for the Domain Name.
5.1 2 An internal note provided by the Complainant, dated 4 May 2005, suggests that the Respondent had requested CHF 100,000 for the assignment of the Domain Name.
6. The Parties' Submissions
The Complainant
6.1 On the basis of the facts set out above, the Complainant makes submissions which may be summarised as follows.6.2 The Complainant has both registered and unregistered trade mark rights in the name LAURASTAR, which amount to Rights for the purposes of the Policy.
6.3 The Domain Name is identical to the Complainant's mark.
6.4 There is no evidence that the Respondent has any interest in or connection with the LAURASTAR trade mark, save for its ownership of the Domain Name (and the two other domain names referred to above).
6.5 The Respondent's use of the Domain Name amounts to abuse as contemplated by paragraph 3(a)(i) of the Policy, namely:
"Circumstances indicating that the Respondent 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 documented 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".
6.6 The Respondent's use of the Domain Names described above amounts to abuse as contemplated by paragraph 3(a)(ii) of the Policy, namely:
"Circumstances indicating that the Respondent is using the Domain Name in a manner 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".
6.7 Further, the Respondent's use of the Domain Names described above amounts to abuse as contemplated by paragraph 3(a)(iii) of the Policy, namely:
"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 trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern".
6.8 The Complainant seeks a transfer of the Domain Names.
The Respondent
6.9 No Response has been filed in this case.
7. Discussion and Findings
Relevant Provisions of the Policy
7.1 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."7.2 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."
7.3 Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.
Rights
7.3 The Complainant is the owner of UK registered trade marks for the name LAURASTAR, and a Community Trade Mark incorporating LAURASTAR. On the evidence, it is also the owner of substantial reputation and goodwill attaching to the name LAURASTAR such as would enable it to protect that goodwill by means of an action for passing off (i.e. unregistered trade mark rights).7.4 The Complainant's mark is identical to the Domain Name (ignoring the formal suffix).
7.5 Accordingly, the requirements of paragraph 2(a)(i) of the Policy are satisfied.
Abusive Registration
7.6 The Domain Name comprises the Complainant's registered trade mark LAURASTAR, in an unadorned form, with only the formal suffix .co.uk.7.7 The Complainant's registrations and use of the name LAURASTAR do not give the Complainant exclusivity in that name for all purposes. It is, however, a distinctive name and I am satisfied, in the light of the Complainant's marks and use of the name since 1995, that the name is closely associated with the Complainant in the field of ironing products. In the circumstances, I am of the view that the URL www.laurastar.co.uk is that which would be highly likely to be used by an internet user seeking to access the Complainant's UK website. The Respondent's use of the Domain Name for the purposes of that URL, therefore, gives rise to "initial interest confusion" and, in my view, a prima facie case of an Abusive Registration.
7.8 It has been open to the Respondent to answer that prima facie case and to seek to demonstrate that its use of the Domain Name was legitimate. However, the Respondent has declined to file a Response. Its suggestion in correspondence that it intended to use the name for the sale of "alimentary products", without any further explanation or evidence, is insufficient to make out any reasonable case under paragraph 4(a)(i)(a) of the Policy, namely, that before being made aware of the Complainant's cause for complaint it had made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. No other grounds under paragraph 4 of the policy (or otherwise) are apparent.
7.9 In the circumstances, on the balance of probabilities, I accept the Complainant's contentions that the Respondent registered the Domain Name in a manner 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 and/or as a blocking registration against a name or mark in which the Complainant has Rights.
7.1 0 The Complainant has also shown that, in response to its requests for transfer of the Domain name, the Respondent offered to sell the Domain name to the Complainant for a sum of CHF100,000 (about £42,000). This gives rise to a prima facie case under paragraph 3(a)(i)(A) of the Policy which, once again, the Respondent has declined to answer. In the circumstances, on the balance of probabilities, I find that ground also to have been made out.
7.1 1 I do not consider, however, that the Complainant has made out its case that the Respondent has been engaged in a pattern of Abusive Registrations.
7.1 2 In the circumstances, I conclude that the Domain Name was registered and/or has been used by the Respondent in a manner which took unfair advantage of, or was unfairly detrimental to, the Complainant's rights and is therefore an Abusive Registration in the hands of the Respondent. The second limb of the test set out in paragraph 2 of the Policy is satisfied accordingly.
8. Decision
8.1 The Complainant has established on the balance of probabilities both that it has Rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Complaint therefore succeeds and I direct that the Domain Name be transferred to the Complainant.