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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Ellison Education Equipment Inc v Amethyst [2007] DRS 4530 (09 May 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4530.html Cite as: [2007] DRS 4530 |
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a. Parties
Complainant: Ellison Educational Equipment, Inc.
Country: US
Respondent: Amethyst
Country: GB
b. Domain Name
sizzixdies.co.uk (the "Domain Name")
c. Procedural Background
Nominet received the Complaint in full on 12 March 2007 and notified the Respondent of the validated Complaint by letter and e-mail dated 12 March 2007. The Respondent failed to respond by the deadline and Nominet so informed the Complainant on 4 April 2007. Informal mediation not being possible in these circumstances, Nominet received the appropriate fee from the Complainant on 18 April 2007 for a decision of an expert, pursuant to §7 of the Nominet UK Dispute Resolution Service Policy Version 2, September 2004 (the "Policy").
Steve Ormand, the undersigned, (the "Expert") confirmed to Nominet on 19 April 2007, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties that might appear to call into question his independence and/or impartiality.
Definitions used in this decision have the same meaning as set out in the Policy and/or the Nominet UK Dispute Resolution Service Procedure Version 2, September 2004 (the "Procedure") unless the context or use indicates otherwise.
d. Procedural Issues
Nominet notified the Respondent of the Complaint in accordance with §2a of the Procedure. A third party unconnected with this dispute responded from the registrant's e-mail contact address on 13 March 2007 and stated that "We have received your e-mail in error, the Company you require is Amethyst crafts. We have purchased the domain name www.rugbycrafts.co.uk only and have no connection to Amethyst Crafts ….".
However, Nominet's letters to the Respondent's contact address and e-mails to [email protected] are deemed to have been received by the Respondent pursuant to §2e of the Procedure unless Nominet or the Expert decide otherwise. The Respondent received a letter from the Complainant dated 27 October 2006 to its contact address. Thus, there is no evidence before the Expert to indicate exceptional circumstances that prevented the Respondent from submitting a response to the Complaint within the required time period. Accordingly, the Expert will now proceed to a Decision on the Complaint in accordance with §15b and c of the Procedure.
e. The Facts
Complainant
The Complainant is a United States corporation located in Lake Forest California. The Complainant manufactures and sells the SIZZIX die cutting system and associated products worldwide in the arts and crafts markets. It has owned the UK and Community trademark SIZZIX since 12 April 2003.
Respondent
The Nominet registrant details state the Respondent to be a company incorporated in the UK with contact details at rugbycrafts.co.uk (the "Website"). The registrant WHOIS details for the Website provided by the Complainant indicate the registrant to be a sole trader trading as Amethyst Crafts. The Respondent does trade or has traded as Amethyst Crafts and as Rugby Crafts, selling arts and crafts products, including the Complainant's SIZZIX products, via the Website.
The Respondent sold the Website to a third party unconnected with this dispute prior to the date of the Complaint.
The Respondent registered the Domain Name on 26 November 2005.
f. The Parties' Contentions
The Complaint
The Complainant contends that:
a. the Complainant has owned the UK and Community trademark SIZZIX since 12 April 2003 (evidence submitted);
b. the Complainant owns 35 domain names incorporating the SIZZIX trademark, including sizzix.co.uk (evidence submitted);
c. the Complainant manufactures and sells the SIZZIX die cutting system and associated products worldwide and its products are extremely well known throughout the world;
d. the use of the name SIZZIX in relation to die cutting equipment or similar or associated products signifies the products of Complainant and no other.
a. the Respondent is a UK Limited Company (Company number 44564556) which also trades as Amethyst Crafts and, until very recently, also traded as Rugby Crafts selling arts and crafts products to consumers via the Website;
b. the Respondent has recently sold the Website to a third party that is not a party to the Complaint but the Domain Name continues to be redirected to the Website;
c. the Respondent also traded until recently as Trade Craft EU and sold the same craft products to wholesale outlets at its website www.tradecrafteu.co.uk and while evidence of the previous existence of this website is provided it could no longer be accessed at the date of the Complaint;
d. the Respondent was a reseller of Complainant's products until around October 2006 and such products could be purchased via the websites identified above (copies of web page submitted);
e. the Respondent has not paid the Complainant for products it sold such that the Complainant was impelled to discontinue the sale of SIZZIX products to the Respondent and the Complainant has sought legal assistance to collect more than 45,000 GBP currently owed to it;
f. the Complainant's counsel wrote to the Respondent on 27 October 2006 (copy submitted) demanding the Respondent cease and desist from using the Domain Name and turn it over to the Complainant;
g. on 9 November 2006, when the Complainant's counsel telephoned the Respondent (copy of file note submitted) to follow up the letter, the Respondent stated that it was not going to comply with any of the demands in the letter;
h. the Domain Name in the hands of the Respondent is abusive because the Respondent uses the Domain Name in a manner that is unfairly detrimental to the Complainant's Rights and, specifically, continues to use the Domain Name in a way which is likely to confuse people into thinking that it is controlled by the Complainant;
i. the registration and use of the Domain Name is a representation that the Respondent is connected with the Complainant and the Complainant's customers and potential customers are diverted from the Complainant's website to the Website resulting in an unfair competitive advantage to the Website's owner, which sells the Complainant's products and products in direct competition with those products;
j. the Complainant, the owner of the goodwill in SIZZIX and the registered trademarks and domain names, has not authorised the Respondent to divert customers nor to sell its products and, therefore, this is likely to lead to damage to the Complainant's reputation, by the uncontrolled use of its brand and product names, and lost sales.
The Response
The Respondent did not reply.
g. Discussion and Findings
General
To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both limbs of the test that:
1. it has Rights in respect of a name or mark identical or similar to the Domain Name; and
2. the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
Rights is defined in §1 of the Policy as including, but not limited to, rights enforceable under English law, but a complainant may not rely on rights in a name or term that is wholly descriptive of the complainant's business. The wholly generic domain suffix ".co.uk" is discounted for the purposes of establishing whether the Complainant has Rights in a name or mark which is identical or similar to the Domain Name.
The Complainant submits evidence of trade mark registration of the name SIZZIX in classes which include "hand-operated die and plate cutting" and which predates the registration of the Domain Name. The Complainant also evidences 35 domain registrations that include the name SIZZIX, several of which predate the registration of the Domain Name, and includes screen prints of one of its websites demonstrating the link between the SIZZIX name and die products.
The Domain Name is a combination of a dominant and distinctive element, the name SIZZIX, and a purely descriptive element, the term "dies", the latter being descriptive of the Complainant's product or products marketed under the distinctive SIZZIX name. The Domain Name is not wholly descriptive of the Complainant's business.
The Complainant has, for the purposes of the first limb of the test, established Rights in a name, SIZZIX, that is similar to the Domain Name.
Abusive Registration
The Complaint essentially falls under two of the factors set out in a non-exhaustive list in §3 of the Policy which may be evidence that the Domain Name is an Abusive Registration, namely §3a i C and §3a ii.
§3a 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 may be evidence of Abusive Registration.
The Complainant contends that the Respondent's registration and use of the Domain Name is unfairly detrimental to its Rights and diverts its customers and potential customers from its own website to the Website which results in an unfair competitive advantage to the owner of the Website. The Website offers for sale the Complainant's SIZZIX products, including dies, and directly competing products.
The Respondent sold SIZZIX products with the Complainant's knowledge and approval from sometime in 2005 to around October 2006 and the Domain Name was registered in November 2005. The Complainant's letter requesting the Respondent to cease using the Domain Name coincides with the breakdown of their commercial relationship and this letter indicates that the Domain Name resolved to the Website at that time. It seems likely that the Domain Name was in use for some period before October 2006 but whether such use was known to or authorised by the Complainant is not clear.
In DRS 00248 (Seiko UK Limited v Designer Time/Wanderweb) the appeal panel interpreted the word "primarily" in §3a i C as not the same as "only". Thus, although a registrant may start out with the best of intentions if the effect of his actions is to give rise to confusion and to disrupt a complainant's business then he falls foul of this paragraph. Thus, the Respondent's use of the Domain Name could amount to Abusive Registration even if its intention was not abusive.
The Expert considers that the evidence submitted, including screen prints of one of the Complainant's own websites to demonstrate that it sells its own products directly to customers via the internet, suggests the Respondent's use of the Domain Name has the potential to disrupt the Complainant's business and is likely to have done so.
Furthermore, in DRS03027 (Epson Europe BV v Cybercorp Enterprises) the appeal panel considered that where a respondent intentionally registers a domain name incorporating the trade mark of a third party and simply points it at a differently branded website it is not a genuine offering of goods or services for the purposes of establishing a defence to Abusive Registration under §4a i A of the Policy.
§3a 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 may be evidence of Abusive Registration.
The crucial factor is the Respondent's use of the Domain Name and whether such use causes confusion. It is immaterial that the Website to which the Domain Name resolves is now owned by a third party.
The Complainant submits a Yahoo search on the Domain Name which shows one result with a headline that includes "Ellison" and "sizzix dies" with a reference to "Rugbycrafts" and "Arts and crafts shop" in the detail. The Complainant also submits screen dumps of the Domain Name (dated 8 Match 2007) resolving to the Website. The Website is clearly identified as Rugby Crafts and appears to the user as a re-seller of craft products including those of the Complainant. In the "small print" at the foot of the Website the statement includes "we are an approved on-line retailer for Ellison Design …. and stock Sizzix ….". The "small print" also states that the Complainant's products have been sold since early 2005. The Website clearly holds out that it had some form of approval from the Complainant as a supplier of the Complainant's products.
Such a representation is abusive, particularly when the breakdown of the commercial relationship explicitly gave notice to the Respondent that it was not approved by the Complainant as a supplier of its products. In DRS 00248 the panel, although declining to lay down any general rules governing when a reseller can make legitimate use of another party's trade mark as a domain name, stated that if there is support in the evidence for the suggestion that the domain name makes, or is liable to be perceived as making, the representation that there is something approved or official about the website then this would constitute unfair advantage being taken by a respondent or unfair detriment caused to the complainant.
In DRS03027 the panel stated that there is a marked difference between selling genuine products of another party under its registered trade mark in order to identify the goods as being those of the trade mark owner and the practice, as in this Complaint, of adopting a website address incorporating the Complainant's trade mark to divert potential customers to another website. Further, the Expert is entitled to conclude that the Complainant's assertion that its customers and potential customers are diverted from the Complainant's website is indeed the case in the absence of any refutation from the Respondent.
Conclusion
The Expert finds on the balance of probabilities that the Respondent has registered the Domain Name for purposes which take unfair advantage of and are unfairly detrimental to the Complainant's Rights, which is an Abusive Registration in contravention of the Policy
h. Decision
In light of the foregoing findings, namely that the Complainant has Rights in respect of a name which is similar to the Domain Name and the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, sizzixdies.co.uk, be transferred to the Complainant.
Signed: Date: 9 May 2007
Steve Ormand