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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Kyocera Mita (UK) Ltd v Letrex Holdings Ltd [2008] DRS 5493 (27 May 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5493.html Cite as: [2008] DRS 5493

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Kyocera Mita (UK) Limited -v- Letrex Holdings Limited

Nominet UK Dispute Resolution Service

DRS 05493

Kyocera Mita (UK) Limited -v- Letrex Holdings Limited

Decision of Independent Expert

1. Parties:

Complainant: Kyocera Mita (UK) Limited

Berkshire

Respondent: Letrex Holdings Limited

Hampshire

2. Domain Names:

kyoceradirect.co.uk and kyoceramitadirect.co.uk ("the Domain Names")

3. Procedural Background:

The Complaint was received by Nominet on 28 February 2008. Nominet validated the Complaint and sent a copy to the Respondent.

No Response was received by Nominet.

On 3 April 2008 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to the Nominet UK Dispute Resolution Service Policy ("the Policy").

Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and duly appointed him as the Expert.

The Expert requested additional information/documents from the Parties, which the Parties provided.

4. The Parties' Contentions:

Complainant:

The Complainant's submissions can be summarised as follows:

1. The Complainant has rights in trade marks/names which are identical or similar to the Domain Names:

(1) The Complainant has been registered at Companies House since 28 July 1987 and has been trading in the UK since that time. The Complainant was registered with the name Kyocera Electronics (UK) Limited from 5 April 1988, and since 15 September 2000 has been registered with the name Kyocera Mita (UK) Limited.

(2) The Complainant has traded under name "Kyocera" since 1988 and has also traded under the name "Kyocera Mita" since 2000. During this time it has established a reputation as a leading provider of document imaging devices, including copiers and printers. The Complainant is also the current shirt sponsor of the Premiership football side Reading F.C.

(3) The Complainant has been the registrant of the domain name kyoceramita.co.uk since 2000. It has operated a website at that address to promote sales of its products in the UK.

(4) The Complainant has rights in UK and Community trade marks for KYOCERA, MITA and KYOCERA MITA. The trade mark registrations are owned by Kyocera Corporation and Kyocera Mita Corporation. The Complainant has rights in the trade marks under licence agreements (copies of which are annexed to the Complaint).

2. The Domain Names are Abusive Registrations in the hands of the Respondent:

(1) The Domain names have been registered without the licence or consent of the Complainant and imply a relationship between the Complainant and the Respondent, which relationship is denied and which, if it ever existed, has ceased to exist.

(2) The Respondent is unlawfully infringing the Complainant's trade marks. The Complainant never licensed or gave its written consent to the Respondent to register or use the Domain Names and the Respondent has therefore never had any right to use the Domain Names or the Complainant's trade marks.

(3) The Complainant has written to the Respondent on a number of occasions requesting that the Respondent transfer the Domain Names to the Complainant. The Respondent confirms in the correspondence (annexed to the Complaint) that it was never granted a written licence by the Complainant to register or use the Domain Names.

(4) Even if the Complainant granted the Respondent a licence to use the Domain Names, which is denied, the licence has now been terminated by notice, by way of a letter dated 18 September 2007 from the Complainant's solicitors to the Respondent, informing the Respondent that, if such a licence existed, it was thereby terminated.

(5) Even if the Complainant granted the Respondent a licence to use the Domain Names, which is denied, the licence has now been terminated as the Respondent has breached an implied condition of such licence, namely by transferring the operation of the website using the Domain Name kyoceradirect.co.uk to a third party, namely Paseana Limited, which is not a company connected to the Respondent. The Respondent has confirmed that it has transferred the operation of the website to a third party. The Complainant informed the Respondent of the termination in its letter of 18 September 2007.

(6) The get-up of the website at www.kyoceradirect.co.uk appears to suggest that it is either an official Kyocera website or an authorised one.

Respondent:

No Response was filed by the Respondent. However:

(1) The Complaint annexes various correspondence passing between the Parties, from which it is possible to glean the Respondent's position. I have taken this into account (see further below).

(2) Following a request by the Expert for further information/documents, the Respondent has provided an email dated 7 May 2008 from Tracey Lucas, who was an account manager for the Respondent at the Complainant during the most relevant period (see below). The relevant part of the email states:

"I can confirm that both Steve Baxter and I attended a meeting with you whilst I was working at Kyocera and we discussed you purchasing the Kyocera Direct website. Steve said that he could not foresee an issue but would come back to you on this. As far as I am aware he never came back to agree or disagree."

5. The Facts:

The Nominet records show that the Domain Names were registered on 16 June 2006.

Based on the Parties' submissions and a review of the materials annexed to the Complaint, together with the further information and documents provided by the Parties at the Expert's request, set out below are the main facts which I have accepted (on the balance of probabilities) as being true in reaching a decision in this case:

(1) The Complainant has rights in several UK and Community trade mark registrations for KYOCERA, MITA and KYOCERA MITA, all of which pre-date the registration of the Domain Names by the Respondent. The Complainant has traded under the name "Kyocera" since 1988 and under the name "Kyocera Mita" since 2000, on a sufficiently large scale to have established a significant reputation in those names in the field of copiers and printers. The Complainant has operated a website at www.kyoceramita.co.uk for several years.

(2) In the light of the above, the Respondent would have been aware of the Complainant's rights at the time when it registered the Domain Names.

(3) The home page of the website at www.kyoceradirect.co.uk (as annexed to the Complaint) is headed "KYOCERA Direct" and does not make clear that the site is operated by a business other than the Complainant (or a business specifically authorised by the Complainant).

(4) The website at www.kyoceradirect.co.uk offers Kyocera products for sale, but not any other company's products.

(5) There is not yet any active website at www.kyoceramitadirect.co.uk.

(6) The Complainant and the Respondent had had business dealings from before the time when the Respondent registered the Domain Names in June 2006.

(7) There was a business meeting between the Parties on 6 July 2006 (some three weeks after the Domain Names were registered), between Steve Baxter and Tracey Lucas of the Complainant and Steve Evans of the Respondent. At this meeting, the fact that the Respondent had registered the Domain Name kycoceradirect.co.uk was discussed. (There is a dispute between the parties as to exactly what was the outcome of the discussions at the meeting, which I will deal with in the "Discussion and Findings" section below.)

(8) The Complainant did not get back to the Respondent with regard to the Domain Name kyoceradirect.co.uk at any time after the 6 July 2006 meeting until the Complainant's solicitors wrote to the Respondent on 30 July 2007, leading ultimately to this Complaint.

6. Discussion and Findings:

General

Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:

i it has Rights in respect of a name or mark which is identical or similar to the Domain Names; and

ii the Domain Names, in the hands of the Respondent, are Abusive Registrations (as defined in paragraph 1 of the Policy).

Complainant's Rights

Since I have found that the Complainant has rights in a number of relevant trade mark registrations, and that it has established a reputation in the "Kyocera" and "Kyocera Mita" names, it follows that the Complainant has Rights in the "Kyocera" and "Kyocera Mita" names. Since the "direct" element of the Domain Names is descriptive in nature, and disregarding the generic .co.uk suffix, I also find that the Domain Names are similar to the "Kyocera" and "Kyocera Mita" names respectively.

I therefore find that the first limb of paragraph 2 of the Policy is satisfied.

Abusive Registration

Paragraph 1 of the Policy defines an "Abusive Registration" as:

"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."

Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. The factor under paragraph 3a on which the Complainant relies in this case is as follows:

"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 kyoceradirect.co.uk domain name does, by its very nature, tend to suggest that it, and any related website, is owned by the Complainant, or possibly a business specifically authorised by or connected with the Complainant. In fact, the element "direct" creates a strong impression that a website at that address is operated by the Complainant itself. In addition, the content of the Respondent's actual website at www.kyoceradirect.co.uk (as annexed to the Complaint) does, in overall terms, little to dispel such impression. This case is accordingly parallel to the seiko-shop.co.uk case (DRS 00248) and the decisions in other Nominet cases which have followed the reasoning of the decision in that case.

Although the Complainant has not put forward any evidence of actual confusion having arisen, it has been held in several Nominet decisions that a likelihood of such confusion arising is also relevant, and I concur with this. In this particular case, my view is that the Respondent is using the kyoceradirect.co.uk domain name in a way which is likely to confuse people into believing that it is operated or authorised by, or otherwise connected with, the Complainant. Although the Respondent has not yet used the kyoceramitadirect.co.uk domain name, it is directly parallel to the kyoceradirect.co.uk domain name.

If this was all that was relevant to this case I would therefore have found that the Domain Names were Abusive Registrations. However, I turn to consider what effect the communications between the Parties may have on the overall position.

It is common ground between the Parties that they had a business meeting on 6 July 2006, around three weeks after the registration of the Domain Names. It is also common ground that the Respondent's registration of the kyoceradirect.co.uk domain name was discussed. However, there is a dispute between the Parties as to exactly what was said and how the matter was left at the end of that meeting.

The Respondent maintains that the Complainant's representatives, Steve Baxter and Tracey Lucas, said that they would get back to the Respondent if the Complainant wished to take issue with the Respondent setting up and using a website using the kyoceradirect.co.uk domain name; and that, in effect, if the Respondent heard nothing further from the Complainant, then it could take it that the Complainant had no objection. The Complainant's position appears to be simply that no permission was given to the Respondent.

By way of a recent email from Tracey Lucas (the relevant part of which is set out earlier in this decision), her recollection is that Steve Baxter said at the meeting that he could not see an issue with the proposed website but that he would get back to the Respondent; and that, as far as she was aware, Mr Baxter never did get back to the Respondent to agree or disagree.

Other relevant evidence relating to the 6 July 2006 meeting is as follows:

(a) Tracey Lucas's internal note of the 6 July 2006 meeting, which includes the following:

"... also they have paid for Kyocera Direct website URL which Steve thinks is going to be a huge problem for us and that this will have to be stopped."

(b) An internal email dated 2 August 2006 from Steve Baxter to Tracey Lucas, which states as follows:

"I have checked with TRC and, as I suspected, we will definitely NOT let Letrex use any "kyoceradirect" domain name. This constitutes "passing off" in legal terms, ie making end users think they are dealing with kyocera when, in fact, they are not. It's a very well established legal precedent."

(c) An internal email dated 17 July 2007 from the Complainant's Steve Baxter to David Swales (a copy of which has been supplied by the Complainant). The relevant part of this email reads as follows:

"In short, they wanted to use the domain name kyoceradirect.co.uk. I told Tracey they weren't allowed to but we need to know if she ever told them."

Irrespective of exactly what else was said by the Parties at the 6 July 2006 meeting, the above evidence is consistent with the fact that the Complainant told the Respondent that it would get back to it regarding the kyoceradirect.co.uk domain name and related website. The Respondent's position is that the Complainant never did get back to it, and the Complainant has not been able to put forward any evidence that it did so. Taking everything into account, I find on the balance of probabilities that the Complainant did say at the meeting that it would revert to the Respondent but did not subsequently do so, at least not until the letter sent to the Respondent by the Complainant's solicitors on 30 July 2007, more than a year later.

I do not make any finding as to whether the Complainant said that it would get back to the Respondent either way after the 6 July meeting, or that it would only do so if it wished to object to the Respondent's use of the kyoceradirect.co.uk domain name and related website. On the evidence before me, it is impossible to say.

It may or may not be the case that, as a consequence of the communications between the Parties, the Respondent acquired a licence to operate a website at www.kyoceradirect.co.uk; and I do not make any finding on this. It is also possible that the Complainant, not having reverted to the Respondent after the July 2006 meeting, is estopped from recovering the kyoceradirect.co.uk domain name from the Respondent, with the Respondent having in the meantime invested time and money in setting up and running the corresponding website. Again, I do not make any finding on this.

The Complainant submits that, even if a licence was granted to the Respondent, it has now terminated any such licence. It is unclear to me whether the Complainant is entitled to terminate any licence on notice to the Respondent, and, if so, whether reasonable notice is required and what reasonable notice would be; and I make no finding on these issues. The Complainant also submits that any such licence would now have terminated because it would have been personal to the Respondent (in other words, not transferable) and the Respondent has transferred the running of the website at www.kyoceradirect.co.uk to a third party by the name of Paseana Limited (as evidenced by the contact details on the website). Again, I make no finding on whether this submission is legally correct. It is also to be noted that both Domain Names are still registered in the name of the Respondent.

Taking everything into account in this case, I have difficulty in being able to conclude that the Complainant has overcome the burden on it to demonstrate that the Respondent's conduct has been "unfair", which is a prerequisite for finding that the Domain Names are Abusive Registrations. On the evidence which is before me, I am not therefore prepared to make that finding. However, I should make clear that I am not making a finding in favour of the Respondent as such, but rather that the Complainant has not overcome the burden of proof which rests with it in order to succeed with the Complaint.

In the light of the disputed evidence and legal issues in this case, it is my view that, if the Parties are unable to reach an agreed resolution, then the dispute between them relating to the Domain Names would be better suited to a resolution by the Courts.

7. Decision:

Having found that the Complainant has rights in respect of names which are similar to the Domain Names but that it has not sufficiently demonstrated that the Domain Names, in the hands of the Respondent, are Abusive Registrations, the Expert directs that the Domain Names kyoceradirect.co.uk and kyoceramitadirect.co.uk should not be transferred to the Complainant.

Jason Rawkins 27 May 2008