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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> KTM-Sportmotorcycle AG v Monster Software Ltd [2007] DRS 4499 (24 April 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4499.html Cite as: [2007] DRS 4499 |
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Complainant : KTM-Sportmotorcycle AG
Country: Austria
Respondent: Monster Software Limited
Country: UK
husaberg.co.uk
The complaint was entered into the Nominet system on 23 February 2007. Hard copies were received in full on 26 February 2007. A copy of the complaint was sent to the Respondent on 28 February 2007 but no response was received. Mediation was therefore impossible. On 30 March 2007, the Complainant paid the fees to refer the matter for determination by an Expert. I was appointed as the Expert on 3 April 2007.
None
KTM-Sportmotorcycle AG is an Austrian company. It manufactures and sells off-road sports and racing motorcycles together with associated clothing and accessories under the HUSABERG brand. The Husaberg motorcycle business was established in 1988 in Sweden and was subsequently acquired by the Complainant. It has been successful in off-road motorcycle racing and its corporate notepaper claims "17 Times World Champion". Its motorcycles, parts and accessories have been sold in the UK via an exclusive distributor, Dave Clarke Racing, since at least the year 2000 and prior to that by KTM (UK) Limited since 1997.
All of the Complainant's HUSABERG products prominently display the HUSABERG name in a quite striking logo form. The name HUSABERG is depicted in yellow capital lettering edged in blue, with the letters "H" and "G" of the name being much larger than the other letters, together with the slogan, "4 STROKE FORCE" in blue capital lettering on a yellow oval shaped background bordered in blue ("the Husaberg 4 Stroke Force logo").
The Respondent, Monster Software Limited, registered the Domain Name, husaberg.co.uk, on 22 October 2003. It resolves to a holding page website which states "Coming Soon ….." followed by the Husaberg 4 Stroke Force logo with the same yellow and blue colouring, together with the legend "A straight out of the crate race bike". The website then states "Please enter your email address below if you would like to be kept informed of any developments to this site:"
In January and February 2007, there was an exchange of emails and phone conversations between the Complainant and the Respondent (initiated by the Complainant) in relation to the possibility of the Domain Name being purchased by the Complainant. The Complainant offered £250 but the Respondent rejected this stating that it had had the Domain Name independently valued at £6,100 and invited the Complainant to make "a much more substantial offer".
The Complainant subsequently lodged its complaint with Nominet. The Respondent did not respond to the complaint.
Complainant:
In summary the Complainant says that:
• The Complainant and/or its affiliated companies have traded under the HUSABERG name in the United Kingdom since 1997 and also provide motorcycles and parts worldwide under the name.
• The Complainant has had international registered trade marks for the HUSABERG name since February 1995.
• The Respondent has offered the Domain Name for sale to the Complainant and uses the Domain Name to maintain a holding website.
• The Domain Name is identical or similar to a name or mark in which the Complainant has Rights and, in the hands of the Respondent, is an Abusive Registration.
Respondent:
The Respondent has not responded to the complaint.
General
In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:
These terms are defined in the Nominet UK DRS Policy as follows:
• 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.
• Abusive Registration means 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.
Complainant's Rights
The Complainant has produced printouts of two international "Madrid Protocol" trade mark registrations of the HUSABERG name. They both apply in a number of different countries but not to the United Kingdom.
The Complainant has also produced printouts of what appear to be two Austrian trade mark registrations for the HUSABERG name, but likewise they do not apply or provide any rights in the United Kingdom.
In addition, the Complainant has produced a copy of what it says is a share certificate relating to the Husaberg business, but that document is in Swedish and I am not able to understand it.
However, "Rights" for the purposes of the Nominet DRS Policy are not limited to registered trade mark rights. The Complainant has also produced copies of its brochure for its motorcycles, a separate brochure for its clothing accessories and motorcycle parts, its Brand-Guide 2002 Corporate Design brochure, and a sample of its corporate notepaper. All of them prominently display the HUSABERG name and the Husaberg 4 Stroke Force logo. The Complainant's motorcycle brochure gives a short history of the business and some details of its success in international motorcycle racing. It claims that the HUSABERG name is "a legend".
In addition, the Complainant has produced copies of four "Exclusive Sales Agreements" dating from 1997 appointing, firstly KTM (UK) Limited of Croydon, Surrey and subsequently Dave Clarke Racing of Preston, Lancashire, as its exclusive distributor for the United Kingdom and Ireland.
I am satisfied that the Complainant has provided ample evidence that it does have "Rights" in the name HUSABERG and there is nothing to suggest that the name is at all descriptive of the Complainant's business.
Further, I am satisfied that the Domain Name, husaberg.co.uk, ignoring the suffix, is identical to the Complainant's HUSABERG name and trade mark.
I therefore find that the Complainant does have Rights in the name HUSABERG, being a name or mark which is identical or similar to the Domain Name.
Abusive Registration
From the matters relied on by the Complainant in its submissions the following parts of paragraph 3 of the Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) are potentially relevant:
Paragraph 3 a. i. A "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily 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;
Paragraph 3 a. i. B "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights;"
Paragraph 3 a. i. C "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant."
Paragraph 3 a. ii. "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 Complainant's UK associated company first made contact with the Respondent in relation to the Domain Name on 4 January 2007. The contact was initially by a telephone message which was followed up by an email from Ross Walker, the Marketing Co-ordinator of the Complainant's UK associated company. The email enquired about the chance of purchasing the Domain Name. That prompted a phone call from a Mr Cooper of the Respondent to Ross Walker of the Complainant's UK associated company.
Ross Walker's note of the conversation states as follows :
"Mr Cooper contacted me on Monday 8th January by phone to discuss the email.
He informed me that he was a keen biker, he ran a website and software design company and so with a business interest, purchased the husaberg.co.uk domain. He had tried several times to sell the site to Dave Clarke Racing, the importer of Husaberg bikes in the UK, but the company were not interested.
I then explained the situation with the KTM takeover and asked Mr Cooper to give me a price he would sell the domain for. He said he would e-mail me back with a price as he wanted to put some thought into the situation and the conversation ended".
That was followed by an email from Mr Cooper on 9 January 2007 confirming that having thought about the position he would "like to turn it around" and asked for the Complainant to make an offer for the Domain Name. His email ended with the statement "I could certainly give a good home to a Superduke 990 if there's an unloved one lying in a corner of the factory !".
Ross Walker responded on 22 January 2007 with an email confirming that the Complainant was willing to pay £250 for the Domain Name. That prompted a response on 30 January 2007 from Mr Cooper in which he states:
"I took the liberty of having the domain independently valued by Tradingmarks (http://www.tradingmarks.co.uk). They have quoted a figure of £6,100 but do go on to say "the actuality of this sum is predicted only once a good website is created, and is lodged upon the web".
Thanks for the offer of £250 for the domain but I think I will hold onto it for the moment - unless KTM would like to make me a much more substantial offer".
The exchange of emails and telephone calls between the Complainant and the Respondent ended there.
From the note of the conversation that took place on 8 January 2007, the Respondent confirmed that he had purchased the Domain Name "with a business interest" and had tried several times to sell it to the Complainant's UK distributor. He went on to reject an offer of £250 suggesting that it was worth £6,100 and inviting a much more substantial offer. That sort of figure is clearly well in excess of any costs likely to have been incurred by the Respondent directly associated with acquiring the Domain Name or using it to resolve to a website holding page.
The fact that the Respondent has registered the Domain Name clearly prevents the Complainant from registering the same domain name.
The Respondent's decision to register the Domain Name "with a business interest" and his attempts to sell the Domain Name to the Complainant's UK distributor, his subsequent suggestion that the Domain Name was worth £6,100 and his invitation to the Complainant to make a much more substantial offer than the £250 offered, all suggest that, when the Respondent registered the Domain Name, he did so in a manner which, at the time of registration, took unfair advantage of and/or was unfairly detrimental to the Complainant's Rights.
In addition, the website page to which the Domain Name resolves prominently displays the Complainant's Husaberg 4 Stroke Force logo with the promise that it is "Coming Soon …." and an invitation to all visitors to the website to leave their email address if they would like to be kept informed of developments with the site. There is nothing to indicate that the website to which the Domain Name resolves is not, in fact, the Complainant's official website. Anyone visiting the website is met with Complainant's name and logo prominently displayed and is very likely to assume that it is registered to, operated or authorised by or otherwise connected with the Complainant.
Given the content of the website holding page, including the prominent use of the Complainant's HUSABERG name and logo, such confusion is almost inevitable and clearly takes unfair advantage of and is unfairly detrimental to the Complainant's Rights.
In the circumstances, I am satisfied on the evidence before me and on the balance of probabilities that the Domain Name is, in the hands of the Respondent, an Abusive Registration.
For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the name HUSABERG, being a name or mark which is identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
In the circumstances I order that the Domain Name be transferred to the Complainant.
Chris Tulley
24 April 2007