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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Trader Publishing Ltd v Froggatts Range Rover Sales [2010] DRS 7802 (04 March 2010) URL: http://www.bailii.org/uk/cases/DRS/2010/D00007802_full_decision.html Cite as: [2010] DRS 7802 |
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DISPUTE RESOLUTION SERVICE
DRS 07802
Decision of Independent Expert
Trader Publishing Limited
and
Froggatts Range Rover Sales
1. The Parties:
Complainant: Trader Publishing Limited
Address: 1 Woodlands Business Park
Ashton Road
Newton Le Willows
Merseyside
Postcode WA12 0HE
Country: United Kingdom
Respondent: Froggatts Range Rover Sales
Address: Masons Garage
Bosley
Macclesfield
Cheshire
Postcode: SK11 0PN
Country: United Kingdom
2. The Domain Name(s):
northwestautotrader.co.uk
This domain name is referred to below as the "Domain Name".
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3. Procedural History:
A hardcopy of the Complaint was lodged with Nominet on 7 October 2009.
Nominet validated the Complaint and notified the Respondent. A Response was
submitted in time on 27 October 2009. The Complainant did not submit a Reply.
The dispute not having been resolved in mediation, on 3 February 2010 the
Complainant paid Nominet the appropriate fee for a decision of an Expert
pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy (-�the
Policy-�).
Sallie Spilsbury, the undersigned (-�the Expert-�) has confirmed to Nominet that she
knows of no reason why she could not properly accept the invitation to act as
Expert in this case and has further confirmed that she knew of no matters which
ought to be drawn to the attention of the Parties which might appear to call into
question her independence and impartiality.
On 23 February 2010 the Expert made a request of the Complainant for further
information under paragraph 13a of the Nominet Dispute Resolution Service
Procedure (-�the Procedure-�). The Complainant was given two working days to
comply with the request. No response was forthcoming. The Expert will accordingly
decide this matter based on the Complaint (and its annexes) and the Response
(and its annexes). The details of the 13a request will be discussed at section 4 of
this Decision.
4. Factual Background
The Complainant
The Complainant is the owner of a motoring magazine called -�Auto Trader-�. In
addition to containing advertisements for the sale of motor vehicles and
accessories, the magazine also contains information about motoring related
matters. The magazine was launched in 1981 and is published weekly in 11
regions across the United Kingdom, including a North West edition entitled North
West Auto Trader. An annex to the Complaint gives the circulation figures for the
North West edition of Auto Trader as 42,206 as at July-Dec 2004 (more recent
information is not provided).
In addition to the magazine the Complainant operates an associated website at
www.autotrader.co.uk which was launched in 1996. The Complaint describes the
website as -�currently Europe-�s largest motoring website-�. In August 2007 it had a
38% share of the automotive classified market and in March 2008 it ranked as the
second largest ABCe audited UK website with over 400,000 vehicles listed on the
site at any one time. (ABCe is an organisation which measures and verifies website
activity.)
The Complainant states that it is the owner of a number of UK and Community
trade marks featuring the AUTO TRADER mark, as follows:
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Jurisdiction Mark No. Nice Date
Classific registered/filed
ation
UK AUTO 2019603 16 18 Oct 1996
TRADER Registered
UK Auto Trader 2327224 9, 16, 13 May 2005
35, 41 Registered
CTM Auto Trader 002410298 9, 16, 30 August
35, 36, 2006
38, 42 Registered
CTM AUTO 002414795 9, 16, 26 June 2006
TRADER 35 Registered
CTM AUTO 002880821 9, 38, 11 April 2006
TRADER 41, 42 Registered
CTM Auto 006645121 9, 16, 25 January
Trader.co.uk 35, 36, 2008
38, 41, Filed (NOT YET
42 REGISTERED)
The Complaint refers to -�attached printouts at Annex 4-� containing further details
of the trade mark registrations (paragraph 1.2 of the Complaint). This printout was
missing from the version of the Complaint that was submitted to Nominet. There
is a list of the annexes at the end of the Complaint and this does not refer to any
printouts showing details of trade mark registrations. On 23 February in order to
clarify the matter, the Expert made a request under 13a of the Procedure for
production of the printouts referred to at paragraph 1.2 of the Complaint. No
response has been received to that request. The implications of this will be
discussed below at section 6 of this Decision.
In addition to the above matters the Complainant is also the registrant of a
number of domain names that incorporate the AUTO TRADER mark including
autotrader.co.uk, auto-trader.co.uk and autotradermagazine.co.uk.
The Respondent
The Respondent registered the Domain Name on 19 January 2000. It trades in
used motor vehicles and is based in North West England. It has been in business
for around 25 years.
The Response states that the Domain Name was registered to promote the
Respondent-�s business and website. For many years the Domain Name was
redirected to the Respondent-�s website at www.froggatts.com. More recently (the
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exact date is not given) the Domain Name was used in newspaper advertisements.
At the same time the page on the froggatts.com website to which the Domain
Name was directed was headed -�NORTHWEST AUTOTRADER-�S-�. The Respondent
explains that this more recent use of the Domain Name was in part prompted by
the national scarcity in used vehicles and was an attempt by the Respondent to
obtain more used vehicles for purchase as stock in trade.
A search of the Domain Name was carried out by the Expert on 18 February 2010.
No results were found at that time.
5. Parties-� Contentions
Clause 2a of the Policy provides that a Respondent must submit to proceedings
under the Dispute Resolution Service if a Complainant asserts according to the
Procedure, that:
i the Complainant has Rights in respect of a name or mark which is identical or
similar to the Domain Name; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Rights in a mark identical or similar to the Domain Name
The Complainant
The Complainant contends that its trade mark registrations confer Rights in the
AUTO TRADER mark. It acknowledges that the Domain Name does not exactly
match the trade marks but asserts that the -�Northwest-� prefix is an element of the
Domain Name that is merely descriptive and that it does not therefore prevent the
Domain Name being similar to the registered marks. In support of this submission
the Complainant refers to the Expert Decisions at DRS 04596
(coventryricoharena.co.uk) and DRS 6161 (autotraderni.co.uk) as examples of
disputes in which the addition of geographical indictors were found to be
insufficient to differentiate the domain name from the name in which the
Complainant had Rights.
In addition to the trade mark registrations, the Complainant also asserts common
law rights in the goodwill that has been generated through the length and extent
of its use of the AUTO TRADER mark.
The Respondent
The Respondent appears to challenge the Complainant-�s Rights in what it regards
as a descriptive name. It makes the following observation in the Response:
-�[The Complainants] are trying to insinuate they can have rights to a
common name for a profession like carpentry, fishing, farming and all its
variants. Auto (everything to do with automobiles) and trader (the world
could not function without trade) plus and all prefixes and suffixes (sic)-�.
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Abusive Registration
Complainant
The Complainant makes the following submissions in relation to Abusive
Registration:
The Respondent has acquired the Domain Name for the purpose of unfairly
disrupting the Complainant-�s business. -�Auto Trader-� is a well known brand
and registered trade mark of the Complainant and it is unlikely that the
Respondent has acquired the Domain Name independently of any
knowledge of the trade mark. It is the Complainant-�s contention that the
Respondent had the Complainant and its business in mind when registering
and/or acquiring the Domain Name. This is evidenced by the fact that the
website at the Domain Name includes references to Auto Trader. The
website located at www.northwestautotrader.co.uk offers a similar service
to that of the Complainant. The Respondent is making a financial gain
from users visiting the website of the Domain Name. There is no reason
why the Respondent would own such a website, other than for financial
gain. It is likely that users will visit the website in error, as the Domain
Name contains the Complainant-�s trade mark -�Auto Trader-�.
The Respondent is using the Domain Name for its own commercial gain.
The Respondent is using the Domain Name for the sale and purchase of
cars specifically targeting the United Kingdom with a similar service to that
provided by the Complainant. This is evidenced in screenshots attached at
Annex 2 to the Complaint of a webpage on the Respondent-�s site at
froggatts.com to which the Domain Name dissolved (the Respondent does
not dispute this use).
This use has the effect of causing confusion in the market place in view of
the fact that a similar mark is being used in association with an identical
service for which the Complainant has registered trade mark rights in the
-�Auto Trader-� brand.
The Respondent has acquired the Domain Name as a blocking registration
against a name or mark in which the Complainant has rights. This can be
seen from the fact that the Complainant sent a cease and desist letter to
the Respondent on 1st April 2009 to advise the Respondent that they
consider the Domain Name to infringe their trade mark rights. They
received no response. This has had the effect of blocking the Complainant
from acquiring a Domain Name in which the Complainant has Rights.
Respondent
The Domain Name is one of a number registered by the Complainant to
encourage traffic to its website at froggatts.com. The Domain Name was
registered because it described the Respondent-�s business -�I registered
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northwestautortrader.co.uk because that is what I am, that is my
profession I am a motor trader, used vehicle dealer, auto trader from the
north west of England. I have every right to have registered this name. I
registered it to promote my site and my kind of business.-� People searching
for North West autotraders access the Respondent-�s site very frequently.
In recent times, the Respondent has used the Domain Name in order to
increase its stock of used vehicles. There is a difference between the
Complainant and the Respondent-�s business. The Complainant does not
itself trade in used vehicles. Their magazine and website only exists
because the general public and motor traders patronise it.
The Response includes an annex of Google search engine results featuring
a range of companies that promote their business using names relating to
the motor trade (for example a business trading under the strap line
-�northwest auto trader Buyers and northwest auto traders importers-�).
The Respondent refers to the disparity in size between his small business
and the Complainant -�I think it is very unfair that they appear to be using
their might to Hoover (sic) up all related sites.-�
The Complainant has already registered the domain name north-
westautotrader.co.uk.
The Complainant has sought to purchase the Domain Name from the
Respondent over the period 2006-8. The correspondence is annexed to the
Response. The Complainant now seeks to be trying to take the Domain
Name from him for nothing.
6. Discussions and Findings
Complainant-�s Rights
Rights are defined in clause 1 of the Policy as including but not limited to -�rights
enforceable by the Complainant whether under English law or otherwise-�.
The Complainant-�s Rights
Registered Rights
The Complainant relies on its trade mark registrations to confer Rights. Under the
Policy the Expert must be persuaded that on the balance of probabilities the trade
mark registrations are in place. A printout from the trade mark registry would
suffice, as would a copy of the registration certificates. A statement in the
Complaint will not generally be sufficient.
No registry printouts or registration certificates have been produced by the
Complainant. It seems that at some point the Complainant intended to produce
6
such printouts because there is a reference to them in the body of the Complaint.
But for whatever reasons they have been produced. The 13a request by the Expert
has not been responded to. It follows that the Complainant has failed to establish
the existence and ownership of the registrations and it is not therefore appropriate
for the Expert to take them into account in this Decision.
Unregistered Rights
The definition of -�Rights-� in the Policy is not limited to registered rights.
Unregistered rights arising from goodwill or a trading reputation will fall within the
definition. Does the Complainant have such Rights? This issue essentially involves
the Complainant establishing that the AUTO TRADER mark has acquired brand
significance for the Complainant.
The Expert finds that the Complainant-�s use of the AUTO TRADER mark has
generated goodwill in the brand. The existence of goodwill is supported by the
success of the Complainant-�s Auto Trader magazine over a number of years and
also of its website operating at autotrader.co.uk. Although the Complainant has
not produced specific evidence to show that the public recognise the AUTO
TRADER mark as being associated with the Complainant, the Complainant-�s
position as a market leader in the sphere in which it operates would suggest on the
balance of probabilities that this is the case.
The Complaint has therefore established common law (unregistered) Rights in the
AUTO TRADER mark for the purposes of the Policy.
The Expert is mindful that the Complainant has for some time published a
successful regional edition of its magazine entitled North West Auto Trader. The
most recent weekly circulation figures for this magazine date from 2004. At that
time they were significant. It is therefore possible that the Complainant has
unregistered Rights in the -�North West Auto Trader-� mark. In order to make such a
finding the Expert would require evidence that members of the public with an
interest in motoring matters would associate the North West Auto Trader title with
the Complainant. But in the absence of evidence showing the way in which the
title has been used and/or more recent evidence of sales figures, the Expert finds
that the Complainant has not established a separate and independent goodwill in
the regional title in its own right.
This decision will therefore be based on the AUTO TRADER mark alone.
The next issue is whether the Complainant-�s Rights are identical or similar to the
Domain Name. The Expert finds that the Domain Name is similar to the AUTO
TRADER mark. The words -�Auto Trader-� are the dominant components of the
Domain Name. The words -�North West-� act as a reference to the geographic
locality in which the AUTO TRADER brand operates but they do not imply that the
mark no longer refers to the Complainant or its services. It follows that the
Complainant has Rights in a mark which is identical or similar to the Domain
Name.
7
The other domain name registrations to which the Complainant refers do not in
themselves confer Rights under the Policy without supporting evidence of the way
that they have been used by the Complainant.
Abusive Registration
Abusive Registration is defined in clause 1 of the Policy as follows:
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 contains guidance about applying the Abusive
Registration test.
The following are of relevance to this Complaint:
a. A non-exhaustive list of factors which may be evidence that the Domain
Name is an Abusive Registration is as follows:
i. Circumstances indicating that the Respondent has registered or otherwise
acquired the Domain Name primarily:
A. 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;
B. as a blocking registration against a name or mark in which the
Complainant has Rights; or
C. for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using or threatening to
use the 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 with the Complainant;
Paragraph 4 of the Policy list factors which if established to the satisfaction of the
Expert will provide an answer to the Complaint-�s case. These include:
a. A non-exhaustive list of factors which may be evidence that the Domain Name
is not an Abusive Registration is as follows:
8
i. Before being aware of the Complainant's cause for complaint (not necessarily
the 'complaint' under the DRS), the Respondent has:
A. used or made demonstrable preparations to use the Domain Name or a domain
name which is similar to the Domain Name in connection with a genuine offering
of goods or services;
B. been commonly known by the name or legitimately connected with a mark
which is identical or similar to the Domain Name;
C. made legitimate non-commercial or fair use of the Domain Name; or
ii. The Domain Name is generic or descriptive and the Respondent is making fair
use of it
Respondent-�s motivation at the time of registering the Domain Name
In relation to the Respondent-�s motivation in registering the Domain Name the
only evidence comes from the Respondent who states that he registered it in order
to attract traffic to his website in order to drum up business for his trade as a
motor dealer. He claims that the name was selected because of its descriptive
nature rather than because of any connection with the Complainant. He points out
that many traders in the motor trade make use of descriptive marketing strap
lines. He also points out that his business is not identical to that of the
Complainant in that he deals directly in cars whereas the Complaint operates a
forum for traders and members of the public to advertise. The Respondent does
not contend that he was unaware of the Complainant or its AUTO TRADER mark
at the time of securing the registration. The Complainant assets that the
Respondent must have been aware of its existence when registering the Domain
Name and that he had it in mind when doing so as a way of making a financial
gain.
The Expert does not find that the Respondent-�s primary motivation in registering
the Domain Name in January 2000 falls within the factors listed in clause 3(i)
above or was otherwise abusive. Registration took place over 10 years ago. There
is no direct evidence of any bad faith on the part of the Respondent at that time
and any such finding should be based on more than mere inference.
The Respondent has not himself approached the Complainant to sell or rent the
Domain Name at a profit. While the Domain Name has been used by the
Respondent, the circumstances do not suggest that this use was primarily
motivated by an intention to disrupt the Complainant-�s business nor are there any
circumstances which suggest that the Respondent was primarily motivated by a
desire to block the Complainant from acquiring the Domain Name. As such the
Expert does not find that the registration of the Domain Name was in itself
abusive under the Policy.
Use of the Domain Name
The Complainant bases its submissions on the more recent use made by the
Respondent in which the Domain Name dissolved to a webpage on the
froggatts.com site headed -�NORTHWEST AUTO TRADER-�S-�. The date on which
9
this recent use began is unclear, although the Respondent links it to the recent
downturn in economic conditions which would suggest that the use began during
the last 2 years, if not more recently. The Respondent indicates that during the
period 2006-8 he had been in correspondence with the Complainant over the
Domain Name. This indicates that at the time the Respondent began to use the
Domain Name more extensively he was aware of the Complainant-�s concerns
about his ownership of the Domain Name. The change of use of the Domain
Name would therefore have taken place against a background of knowledge of
the Complainant-�s concerns. It follows that the Respondent cannot show that the
use of the Domain Name that is now complained of began before he become
aware of the Complainant-�s cause for complaint. As such paragraph 4a(i) of the
Policy does not assist the Respondent in rebutting the Complaint-�s case on Abusive
Registration.
The Respondent-�s major submission is that the Domain Name is descriptive. This
falls to be considered under paragraph 4ii of the Policy.
Is the Domain Name descriptive?
At one level, as the Respondent points out, the words AUTO TRADER and NORTH
WEST AUTO TRADER might be taken to be descriptive of a type of business- a
trader burying and selling automobiles. But what the Respondent ignores when
making this submission is that for many years the Complainant has used the
words AUTO TRADER very successfully and in such a way that any descriptive
nature of the words will have been transcended. The Expert finds that the words
have come to indicate the particular services operated by the Complainant rather
than to describe a type of trade carried out by a number of businesses.
Although there is no evidence before her the Expert would also query whether
-�Auto Trader-� is actually a commonly used description in everyday language. The
word -�auto-� is not often used to describe a motor vehicle. Even the longer form of
the word -�automobile-� would be more likely to be used in the USA than the UK. If
the Domain Name were a more commonly used phrase such as -�North West Motor
Trader-� the descriptive quality would be more readily apparent.
For the above reasons the Expert finds that the Respondent has not established on
the balance of probabilities that the Domain Name is descriptive under paragraph
4(ii) of the Policy.
Has the Domain Name been used in an abusive manner (paragraph 3ii of the
Policy)?
Because the Domain Name does not function in practice as a descriptive indicator
of a type of business, when a member of the public types AUTO TRADER or
NORTH WEST AUTO TRADER into their search engine it is not credible that they
are seeking a generic list of motor dealers. More likely, they will be expecting to
locate the Complainant or its goods and services and they will associate the
website hosted at the Domain Name with the Complainant. This amounts to
confusing use under paragraph 3 ii of the Policy. Once at the website it is unlikely
that customers will remain under any impression that they have reached the
10
Complainant-�s site but nevertheless the Respondent has obtained an advantage. A
customer wishing to place an advertisement to sell their car in the Complainant-�s
magazine or website may now decide to do business with the Respondent. Thus,
the Complainant loses custom and potential revenue to the Respondent. This
advantage is unfair because it is parasitical. It derives from the strength of the
Complainant-�s brand.
The Expert is not convinced by the Respondent-�s submission that it is not in the
same type of business as the Complainant (and presumably that confusion is
therefore less likely to occur). The Domain Name was used by the Respondent to
advertise the Respondent as a purchaser of used vehicles. Such promotion is
exactly the nature of the service that the Complainant provides. The activities for
which the Domain Name was used and the Complainant-�s services overlap
directly.
It follows that the Expert does not find the Respondent-�s explanation for the use
of the Domain Name to be convincing. Although it may not have been his primary
motivation for choosing the Domain Name, the Respondent must have been
aware that a significant reason for the success of the Domain Name in attracting
traffic to his website was because it consisted of the well-known brand of a related
business. As his business began to suffer under the recent economic conditions, the
Respondent chose to expand his use of the Domain Name to attract more custom.
The clear inference being that he appreciated its value in facilitating a supply of
used cars for his business. The Respondent must have been aware that the Domain
Name took advantage of the market strength of the Complainant. This underlines
the unfair nature of the advantage that accrued to the Respondent.
The Respondent-�s references to what it perceives as a power imbalance between
the parties do not change the application of the Policy. The Respondent chose to
use a Domain Name whose benefit derives from the Complainant-�s Rights. To this
extent he has benefitted from the Complainant-�s position as a major player in the
used car market. It is disingenuous for the Respondent to seek to turn that position
against the Complainant.
The previous approaches by the Complainant in relation to the sale or transfer of
the Domain Name are not relevant to this Complaint. The Complainant is within
its rights to seek redress under the Policy, whatever unsuccessful approaches had
been made previously.
7. Decision
The Expert finds that the Complainant has proved on the balance of probabilities
that it owns Rights in respect of 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.
Accordingly, the Expert finds in favour of the Complainant and directs that the
Domain Name be transferred to the Complainant.
Signed Sallie Spilsbury Dated 4 March 2010
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