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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Elliott Group Ltd v Chao Investments Ltd [2007] DRS 4702 (03 July 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4702.html Cite as: [2007] DRS 4702 |
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Nominet UK Dispute Resolution Service
DRS 04702
Elliott Group Limited v Chao Investments Limited
Decision of Independent Expert
Complainant: Elliott Group Limited
United Kingdom
Respondent: Chao Investments Limited
New Zealand
elliothire.co.uk
On 16 May 2007 the Complaint was lodged with Nominet. In accordance with the Dispute Resolution Service Policy hard copies of the Complaint were received in full on 16 May 2007.
On 16 May 2007 the Complaint documents were generated for service upon the Respondent. No Response was received from the Respondent by the due date of 11 June 2007.
On 13 June 2007 Mr Clive Thorne was selected as the Expert. He has confirmed his independence and willingness to act.
The Expert has seen evidence that the necessary fees were received from the Complainant on 13 June 2007. There are no interlocutory or interim matters outstanding.
In the absence of a Response the Expert proceeds to determine the Complaint on the basis of the evidence submitted by the Complainant.
The factual background is summarised in the Complaint. There being no Response the Expert accepts the truth of the unchallenged facts stated in the Complaint.
The Complainant, Elliott Group Limited trades in the hire, leasing, rental installation and sale of portable containers, relocate-able buildings, portable buildings, building structures, modular buildings, storage units and relocatable toilet and washing facilities.
Attached to the Complaint are copies of the Complainant's catalogues and promotional material including a number of brochures, an advertisement in Construction, News, dated 1 March 2007 and sample headed notepaper. It can be seen that the Complainant trades as "Elliotthire" throughout the United Kingdom other than apparently in Northern Ireland. It has area offices throughout the country. It promotes itself as "the UK's No. 1". The Complainant states that its revenue from its hire, rental, leasing, installation and sale of Elliott Hire services and products has been approximately £50 million per annum. For each of the last 5 years it has spent approximately £700,000 on promoting this sale of its services.
The Complainant submits that it has traded under the mark "Elliotthire" since January 2001. It has a number of registered UK trade marks details of which are set out in the Complaint. Copies of the certificates of registration are annexed to the Complaint. These trade marks are as follows:
No. 2301679A ELLIOTTHIRE in classes 37, 39, 43 and 44 registered on 21 March 2003
No. 2301679B ELLIOTT HIRE and ELLIOTTHIRE in classes 06 and 19 registered on 14 March 2003.
The marks are registered in relation to inter alia the leasing and installation of portable buildings and containers.
The Complainant is the owner of the domain name "elliotthire.co.uk" which was registered on 19 July 2000.
There being no Response there is no evidence of any trading activity on the part of the Respondent. What is known about the Respondent is that it is the owner of the domain name in dispute "elliothire.co.uk" which was registered on 16 July 2004 (4 years after the date of registration of the Complainant's domain name) and that it maintains a website extracts of which are exhibited to the Complaint.
The extracts from the Respondent's website show that it is using the domain name in dispute "elliothire.co.uk" and that it has a number of sponsored listings relating to inter alia portable buildings, off-site construction, Portacabins, Instant Space to Hire, Portable Cabins, SGB Rovacabin, Arch Buildings, School Classroom and Shipping Containers. These are activities in which the Complainant has interests.
Under paragraph 2(a) of the DRS Policy a Complainant must show that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities. The Expert therefore proceeds to deal with each element in turn.
(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name
The Expert has considered the evidence of trade mark rights adduced by the Complainant and referred to above. It is satisfied that the Complainant has registered rights in respect of the mark ELLIOTTHIRE as set out above. It is also satisfied on the basis of the evidence of the Complainant's trading activity and promotional activities that it has unregistered rights in the goodwill attached to the name Elliotthire.
The only difference between the mark ELLIOTTHIRE as used by the Complainant and the domain name "elliothire.co.uk" as used by the Respondent is the use of a second letter "t". The Complainant submits that such use is likely to confuse its customers because it is practically identical to the Complainant's domain name.
The Expert considers that in appearance and phonetically the domain name in dispute is similar to the Complainant's trading name and registered trade marks ELLIOTTHIRE. The lack of a second letter "t" in the domain name in dispute does not significantly differentiate between the two marks.
Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark which is similar to the Domain Name in dispute.
(ii) The Domain Name, in the hands of the Respondent is an Abusive Registration
"Abusive Registration" is defined in paragraph 1 of the DRS Policy as meaning a domain name which either:
(1) 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
(2) Has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Complainant submits that the evidence of the Respondent's website shows that the Respondent is actively offering to hire and sell portable buildings, storage units, portable cabins, buildings under its domain name which is "obviously designed to take unfair advantage and be detrimental to our business in the United Kingdom and elsewhere. It is clear that the owner of the "Elliothire.co.uk" domain name is using it in a way which is likely to confuse our customers".
The Complainant points out that the Respondent's website was drawn to its attention by customers trying to contact the Complainant's business but inadvertently spelling the Complainant's name with one letter "t" instead of two. The Complainant also points out that it has written letters to request a cancellation or transfer of the domain name in dispute addressed to the Respondent at its address in Auckland, New Zealand but it has not received an answer.
In the Expert's view the registration and use of the domain name by the Respondent takes unfair advantage of the Complainant and is also unfairly detrimental to the Complainant's rights. The Expert takes into account particularly the fact that the exhibited extract from the Respondent's website shows that it is apparently trading in the same business as the Complainant. The Respondent adduces no evidence of a bona fide use of the domain name. The Expert also takes into account the evidence of confusion suffered by the Complainant and the fact that the Respondent has ignored written requests sent to it by the Complainant.
Nominet has drawn the Expert's attention to the fact that the Respondent has been mentioned in at least 3 decisions in which there was a finding of abuse. In the Expert's view this is prima facie evidence of a pattern of abusive conduct. However, the Expert would have found for the Complainant even if this fact had not been drawn to its attention.
The Expert finds that the use of the domain name in dispute took unfair advantage of and was unfairly detrimental to the Complainant's rights under paragraph 1 of the DRS Policy.
It follows that the Complainant has succeeded in proving its case.
The Complainant has requested that the disputed Domain Name should be transferred from the Respondent to the Complainant. Accordingly, the Expert orders that the Domain Name "elliothire.co.uk" be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Expert
3 July 2007