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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Iskin Inc v Gibson [2009] DRS 6315 (11 March 2009) URL: http://www.bailii.org/uk/cases/DRS/2009/6315.html Cite as: [2009] DRS 6315 |
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Complainant: Iskin Inc.
Country: Canada
Respondent: Stephen Gibson
Country UK
iskin.co.uk
24/11/08 Dispute entered into system
28/11/08 Complaint validated, complaint documents generated
28/11/08 Electronic communication of complaint to respondent
01/12/08 Response received from respondent
01/12/08 Response sent to complainant
11/12/08 Reply received
11/12/08 Suzanne Begley appointed mediator
31/12/08 Mediation process commenced
29/01/09 Status changed to expert decision
12/02/09 Fee paid for expert decision
13/02/08 Michael Silverleaf selected as independent expert
16/02/09 Michael Silverleaf appointed as independent expert
23/02/09 Complaint documents forwarded to expert for decision
3.1 I confirm that I have no connection with either of the parties. I know of no reason why I cannot properly accept the invitation to act in this case and know of no matters which ought to be drawn the attention of the parties which might appear to call into question my independence and/or impartiality in this case.
4.1 The complainant is the proprietor of a Community Trade Mark Registration number 005371191 for the trade mark ISKIN which is registered for the following goods in Class 9 of the Community Trade Marks Register:
Speakers (audio equipment); earphones (other than hearing aids for the deaf); transmitters, transmitters for broadcasting in frequency modulation; transmitter receivers; modems, wireless modems; movement sensors; portable stereo systems; MP3 players; cameras; telephones; cases adapted for computers; cases adapted for cameras; cases adapted for portable stereo systems, cases adapted for MP3 players.
According to the print out from CTM-Online, registration of the mark was applied for on 27 September 2006 and the mark was entered in the register on 27 March 2008. The mark is not said to claim acquired distinctiveness which means that it was registered without evidence of use.
4.2 The complainant also has a US trade mark registration for the same mark under number 2970692 for "silicone cases for portable music players" and a Canadian trade mark registration number TMA653412 for "silicone cases for handheld personal music players". According to the online printout from the US trade mark registere the US registration was applied for on 22 June 2004 and registered on 19 July 2005 with use claimed from 31 September 2002. I have not been given the date of the Canadian registration.
4.3 The complainant claims to have begun use of the trade mark ISKIN "as early as 1 September 2002". The complainant is also the owner of the domain iskin.com which it claims was launched in August 2002, although it does not explain what this means. The complainant claims to retail its goods primarily through its website and selected retail stores throughout the world including the UK.
4.4 The complainant has given no details of the nature or number of goods it claims to have sold other than identifying them as "Class 9 goods". I deduce from the nature of the complaint and other material which has been submitted to me that its principal and possibly only products are iPod covers, hence the name iSkin.
4.5 The complainant complains that the disputed domain was registered in 2000 but does not appear to have been active until 13 December 2003 when it began operating as a "gay skinhead fetish" site. The date of this activity is based upon a search of the Wayback machine at archive.org. The respondent agrees that he registered the domain in 2000 and says that it forwarded to a fetish site imud.co.uk from registration. He says that the absence of earlier records from the Wayback machine does not prove that there was no forwarding before 2003 and points out that the Wayback machine has recorded no pages from the site for the whole of 2008. As the respondent points out this is not unusual for low traffic domains. I accept the respondent's position as accurate. It accords with my own knowledge of deficiencies in the Wayback machine's records which are not uncommonly incomplete.
4.6 The respondent says that the site remained undeveloped and forwarded to imud.co.uk until 2006. At this point he received a message from an unconnected third party, the owners of iskins.co.uk (the response actually uses the domain name skins.co.uk but I deduce from other references that it means iskins.co.uk), that customers were visiting iskin.co.uk instead of their domain. iskins.co.uk is a website through which iPod covers unconnected with the complainant are sold and on which they are identified as iskins. The respondent did not want to sell the disputed domain but had received comments about the "fetish" content being "unpalatable". As a consequence he arranged as a compromise for the the disputed domain to forward to a customised holding page containing Google advertisements and afilliate links from commission junction. The appearance of the webpage at iskin.co.uk was designed to be different from that of the iskins.co.uk site.
4.7 The respondent explains that he did not know in 2006 that iSkin was a trade mark. He thought it was a generic name for neoprene iPod covers such as those sold through iskins.co.uk.
4.8 The complainant complains that in April 2007 the disputed domain was revised to display products which are neither the complainant's products nor authorised by them under the name iskins. A copy of the webpage from the Wayback machine illustrating this has been supplied. This shows that the page is described as "your source for suppliers of ipod accessories, protective cases, covers and skins". It contains advertisments and links to various sites, mainly connected with iPod content and accessories. There is a large advertisement from shopuk.com for the eVo3 iPod protector (a product sold through the iskins.co.uk website). At the end of the advertisement it offers "a great selection of i-skin colours from shopuk.com". The complainant has also supplied a print from the disputed domain from last November. This is similar in appearance and has the strapline quoted above on the left as before. On this occasion the main advertisement is for a Blackberry protective of some kind. Under this is a promotion "protect your ipod mini, nano, or video or your new iphone with an iskin. An iskin will help protect your mp3 player from getting scratches on the display …". The complainant claims that this is diverting potential customers away from its website, iskin.com and is likely to cause consumer confusion.
4.9 The respondent explains that the content of the website at the disputed domain is simply cut and paste affiliate code directed to shopuk.com which comes through an affiliation scheme to which he had signed up. The affiliation scheme is run by an organisation called Commission Junction. Affiliate advertising services are where an advertiser places advertisements on websites and pays for click-through traffic from the website. Commission Junction provides a network through which advertisers and website owners are put in contact so that advertisers can place advertisements on the owners' sites. The Respondent also points out that there is very little traffic through the site and that it does not generate enough revenue to support its domain hosting and administration fees. Thus, he suggests, it can be having very little impact on the complainant's business.
4.10 Finally the respondent points out that he has received no complaint from the complainant about the use he makes of the disputed domain and that no legal proceedings have been brought against him in relation to the content of the website. I also note that there has been no reply by the complainant to the statements made by the respondent in his response to the complaint.
5.1 The version of the DRS Policy relevant to the present dispute is version 3 which relates to complaints lodged after 29 July 2008. Clause 1 of that 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"
5.2 Clause 1 of the DRS Policy also defines "Rights" for the purposes of this procedure as including but not limited to those enforceable under English law. Under Clause 2 of the DRS Policy a complainant must show on the balance of probabilities
(a) that it has Rights in a name or mark identical or similar to the Domain Name; and
(b) that the Domain Name in the hands of the Respondent is an Abusive Registration.
5.3 Clause 3 of the DRS Policy identifies a non-exhaustive list of factors which may be evidence that the domain name is an Abusive Registration. I have accordingly taken these into account in reaching my conclusions.
5.4 In particular clause 3(a) identifies certain factors which may be evidence that a domain name is an Abusive Registration. Sub-clause (ii) provides that these include circumstances indicating that the Respondent is "using the disputed domain name in a way which has confused or is likely to confuse people or businesses into believing that the domain name is registered to, operated or authorised by, or otherwise connected to the Complainant".
5.5 The Dispute Resolution Service procedure is one in which the parties provide written evidence and submissions. There are no oral proceedings and no testing of the evidence. The expert accordingly has to evaluate the written material and give it such weight as is appropriate in order to reach a conclusion on the balance of probabilities.
5.6 According to the Appeal Panel decision in the Seiko case (DRS 00248) whether a registration is an abusive registration under the DRS Policy is independent of whether a Domain Registration is an infringement of trade mark and should be decided under the terms of the DRS Policy alone. The same decision also makes clear, however, that the relevant principles of English law should be applied in determining whether the Complainant has Rights under the Policy and that the Policy is founded on the principle of intellectual property rights which should be taken into account.
6.1 The complainant has established that it has a trade mark registration in the European Community for the mark ISKIN. This suffices in my view to give it rights for the purposes of the DRS scheme in a name or mark identical to the domain name. I can also take into account the parallel registrations in the US and Canada although I do not think that they add anything significant to the relevant rights.
6.2 The complainant has submitted very little material in support of its complaint. It has given no trading figures and no explanation of the nature or extent of its use of the trade mark ISKIN. It is apparent that the disputed domain was registered at least two years before the complainant first used the mark ISKIN. It was also registered six years before the complainant applied to register a trade mark in the European Community claiming no use before the date of application.
6.3 In the light of these facts it seems to me to be clear that the disputed domain was not registered in a manner which took unfair advantage of or was unfairly detrimental to the complainant's rights. The registration was made at a time when the respondent did not have any rights of any kind in the name iskin.
6.4 The disputed domain has been used since 2006 or 2007 (it is not clear precisely when) as a forwarding site for products related to iPods and has since then contained references to "i-skin" or "iskin". The respondent says that this is generic use of the term to denote a skin or cover for an iPod. The complainant says that it is an infringement of its trade mark registration.
6.5 This is not a trade mark infringement claim and I cannot resolve whether the respondent's activities are infringement of a valid registration. The complainant undoubtedly has a registration. However, it has a descriptive element in relation to the goods for which it is being used on the disputed domain and it seems entirely possible that the term iskin was used as a descriptive name for an iPod cover before the complainant registered its mark in the EU. If so, there must be doubt whether the registration is valid. It also seems to me that the use of the term iskin shown on the disputed domain is indicative of the generic and descriptive use of the term.
6.6 As the complainant has given no details of any actual confusion with its trade mark caused by the use of the term iskin on the disputed domain, I have no evidence that there has been any use of that term which has led consumers to be confused or taken unfair advantage of or been unfairly detrimental to the complainant's rights. I also take into account the fact that the respondent has shown that the disputed domain has no significant traffic. If so, it is difficult to see how it can be doing any significant harm to the complainant's rights.
6.7 Accordingly, it seems to me that this is not a case of an abusive registration. It may be a case of trade mark infringement (a complaint on which I express no view) but this is not the forum in which to resolve such a dispute.
6.8 I therefore find that the disputed domain is not an abusive registration and that no action should be taken in relation to it.
Michael Silverleaf
11 March 2009
