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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Republic Technologies (UK) Ltd v Swan [2010] DRS 8179 (23 March 2010) URL: http://www.bailii.org/uk/cases/DRS/2010/D00008179_full_decision.html |
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DISPUTE RESOLUTION SERVICE
DRS 08179
Decision of Independent Expert
Republic Technologies (UK) Limited
and
Michael Swan
1. The Parties:
Complainant: Republic Technologies (UK) Limited
Address: Sword House
Totteridge Road
High Wycombe
Bucks
Postcode HP13 6DG
Country: UK
Respondent: Michael Swan
Address: 50 Windmill Street Brill
Ayelsbury
Bucks
Postcode: HP18 9TG
Country: UK
2. The Domain Name(s):
swan.co.uk
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3. Procedural History
The Complaint was validated by Nominet on 26 January 2010, and was sent to
the Respondent on 29 January 2010.
A Response was filed on 17 February 2010 and the Complainant was notified on
the same day that it was entitled to file a Reply. No Reply was filed, and the
dispute proceeded to mediation. Mediation was not successful, and on 2 March
2010, the Complainant paid the requisite fee for an Expert Decision.
I was thereafter contacted by Nominet and asked to confirm that I was able to
provide an Expert Decision. I responded to Nominet confirming that I had no
conflict preventing me from providing a decision.
The matter was thereafter duly referred to me, Simon Chapman, ("the Expert") for
an Expert Decision.
4. Factual Background
The Complainant recently acquired the rights to the -�SWAN-� trade mark, which is
most closely associated with Swan Vesta Matches, which have been sold for over
126 years. The Complainant sells cigarette papers, filters, lighters, matches and
other accessories under the -�SWAN-� trade mark. The Complainant is the owner
(beneficially at least) of the Community Trade Mark registration for the word mark
-�SWAN-�.
The Respondent is an individual. His surname is -�SWAN-�, which has been
evidenced by production of his birth certificate. He registered the Domain Name
in or about January 1995. The website to which the Domain Name is pointed has
included family photos, and references to the Respondent-�s company, Cygnos Ltd,
under which he operates as an IT consultant. In addition, multiple copies of a logo
(the -�Swan Logo-�), previously used by the Complainant-�s predecessor in title, have
appeared as a banner on the top of the home page of the website which is owned
by the Complainant. The website has also included a statement to the effect that
the proprietor of the site is not the manufacturer of domestic appliances.
5. Parties-� Contentions
Complainant
The Complainant asserts that the Domain Name is identical to its trade mark and
that the Domain Name in the hands of the Respondent is an abusive registration.
In support of its claim to Rights, the Complainant relies upon the extent of the use
and investment in the -�SWAN-� trade mark by it and its predecessor in title, and its
Community Trade Mark registration.
In support of the claim that the Domain Name is an Abusive Registration the
Complainant says (in summary) that -
1839714-1 2
(i) The Domain Name is a blocking registration. The website to which it
is pointed is a website for personal business yet has no contact details
or up to date information.
(ii) The Respondent is using an old Swan Logo, without consent and not
in keeping with the current design.
(iii) The Respondent-�s website relays incorrect information on the
ownership of the Swan brand.
(iv) The Respondent-�s use has confused customers into thinking that the
website is run by the owners of the Swan brand, by reference to a
disclaimer on his site relating to domestic appliances.
The Complainant requests that the Domain Name be transferred.
Respondent
The Respondent does not challenge the existence of the Complainant-�s Rights, nor
does he seemingly challenge the Complainant-�s assertion that the Domain Name
is similar to a mark in which it has rights.
In defence of the allegation that the Domain Name is an Abusive Registration, the
Respondent says (in summary) that -�
(v) He has the right to register and use the Domain Name because his
surname is -�SWAN-�, and he is the beneficiary of the -�first-come-first-
served system of domain name registration-�.
(vi) He had no intention to block the Complainant-�s registration of the
Domain Name. He has not offered the Domain Name for sale to the
Complainant or anyone else.
(vii) The website to which the Domain Name has been pointed, has very
little content. It has been legitimately used variously for family
content, and references to the Respondent-�s IT Consultancy business.
The Domain Name was primarily registered to be used for email.
(viii) It is irrelevant that the website to which the Domain Name was
pointed had no contact details or up to date contact information.
(ix) The Respondent was unaware that the Swan Logo used by him was
used or owned by the Complainant. He had used the Swan Logo
having located it on a website unconnected to the Complainant. Had
the Complainant communicated its objection to the Respondent, the
Respondent would have ceased any use of the Swan Logo, which he
has now done. In any event the use of the Swan Logo should only be
significant if it were to affect the essential function of the trade mark,
which the website does not.
(x) The notice on the Respondent-�s website relating to household
appliances was put on to the website following an email to the
Respondent in which he was asked whether he could provide
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information about a toaster. -�SWAN-� being a brand name used by
the manufacturer of household appliances
(xi) The Respondent has not received any emails from persons who were
under the impression that he was connected to the Complainant. He
does not believe that any visitors to his site would believe that he was
connected to the Complainant, and the Complainant has not
produced any evidence to that effect.
6. Discussions and Findings
General
To succeed in this Complaint, the Complainant must, in accordance with
paragraph 2 of the DRS Policy (-�the Policy), prove to the Expert on the balance of
probabilities that:
(i) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name
or mark identical or similar to the Disputed Domain Name; and
(ii) the Disputed Domain Name in the hands of the Respondent is an Abusive
Registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
The Policy defines Rights as follows -
"Rights includes, but is not limited to, rights enforceable under English law.
However, a Complainant will be unable to rely on rights in a name or term which is
wholly descriptive of the Complainant's business."
There would appear to be no argument between the parties that the Complainant
does qualify as having the necessary Rights.
The Policy requires such Rights to be in a name or mark identical or similar to the
Disputed Domain Name. For the purpose of analysing whether the Domain Name
is identical or similar to the name or mark in which Rights are claimed, one must
ignore the .co.uk suffix. The comparison is therefore between 'SWAN' on the one
hand, and -�SWAN-� on the other. In my opinion the Complainant has established
that it has Rights in a mark identical to the disputed Domain Name.
Abusive Registration
I now go on to consider the extent to which the disputed Domain Name is an
Abusive Registration.
The Complainant asserts that the registration of the Domain Name is an Abusive
Registration for the reasons identified above.
The Policy defines an Abusive Registration as follows :-
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"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"
and goes on to set out a (non-exhaustive) list of factors which may be evidence
that a domain name is an Abusive Registration as follows -�
-�3. Evidence of Abusive Registration
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;
iii. The Complainant can demonstrate that the Respondent is engaged in a pattern
of registrations where the Respondent is the registrant of domain names (under .uk
or otherwise) which correspond to well known names or trade marks in which the
Respondent has no apparent rights, and the Domain Name is part of that pattern;
iv. It is independently verified that the Respondent has given false contact details
to us; or
v. The Domain Name was registered as a result of a relationship between the
Complainant and the Respondent, and the Complainant:
A. has been using the Domain Name registration exclusively; and
B. paid for the registration and/or renewal of the Domain Name registration.
b. Failure on the Respondent's part to use the Domain Name for the purposes of
email or a web site is not in itself evidence that the Domain Name is an Abusive
Registration.
1839714-1 5
c. There shall be a presumption of Abusive Registration if the Complainant proves
that the Respondent has been found to have made an Abusive Registration in
three (3) or more DRS cases in the two (2) years before the Complaint was filed.
This presumption can be rebutted (see paragraphs 4(a)(iv) and 4 (c)).-�
The Policy also identifies a list of grounds that a Respondent may use to
demonstrate that the Domain Name is not an Abusive Registration as follows:-
-�4. How the Respondent may demonstrate in its response that the Domain Name
is not an Abusive Registration
a. A non-exhaustive list of factors which may be evidence that the Domain Name is
not an Abusive Registration is as follows:
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;
iii. In relation to paragraph 3(a)(v); that the Respondent-�s holding of the Domain
Name is consistent with an express term of a written agreement entered into by
the Parties; or
iv. In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part
of a wider pattern or series of registrations because the Domain Name is of a
significantly different type or character to the other domain names registered by
the Respondent.
b. Fair use may include sites operated solely in tribute to or in criticism of a person
or business.
c. If paragraph 3(c) applies, to succeed the Respondent must rebut the
presumption by proving in the Response that the registration of the Domain Name
is not an Abusive Registration.
d. Trading in domain names for profit, and holding a large portfolio of domain
names, are of themselves lawful activities. The Expert will review each case on its
merits.
e. Sale of traffic (i.e. connecting domain names to parking pages and earning click-
per-view revenue) is not of itself objectionable under the Policy. However, the
Expert will take into account:
i. the nature of the Domain Name;
1839714-1 6
ii. the nature of the advertising links on any parking page associated with the
Domain Name; and
iii. that the use of the Domain Name is ultimately the Respondent-�s responsibility.-�
In the present dispute, it is clear that -�Before being aware of the Complainant's
cause for complaint (not necessarily the 'complaint' under the DRS), the
Respondent has been commonly known by the name -�. which is identical or
similar to the Domain Name-� (Para 4(a)(i)(B) Policy. I should therefore have little
difficulty in finding that the Domain Name is not an Abusive Registration.
However, paragraph 4 is not an absolute answer to a Complaint because it has to
be considered in the overall context of the Respondent-�s conduct.
If the Respondent had merely registered the Domain Name and was using it for
his personal business unconnected to the Complainant, in my view I would not
need to consider his use further. However, on his website he has used the Swan
Logo previously used by the Complainant and/or its predecessor in title. Is this use
such as to indicate an ulterior motive on the part of the Respondent to take unfair
advantage of the Complainant-�s rights?
I have considered the submissions made by the Respondent as to his knowledge
and intent. He says that he was unaware of the Complainant-�s use of the logo,
and is not a smoker. I also note that he ceased use of the logo as soon as the
Complainant complained about his use.
In my opinion the Complainant has not shown, on the balance of probabilities,
that the use of the Swan Logo was intended by the Respondent to take unfair
advantage of the Complainant-�s Rights. I am prepared to accept, in the context
of the Respondent-�s overall submission, that the use of the Swan Logo was
inadvertent.
As for the other grounds of complaint advanced by the Complainant, I do not
consider that a lack of contact details or up to date information on the
Respondent-�s website is evidence of any abusive intent, and I do not consider its
evidence regarding the Respondent-�s notice about household appliances to be
relevant.
7. Decision
For the reasons set out above, I find that the Complainant does have Rights in
respect of a name and mark which is identical and/or similar to the Domain
Names , and that the Domain Name in the hands of the Respondent
is not an Abusive Registration. The Complaint therefore fails.
Signed: Simon Chapman Dated: 23 March 2010
1839714-1 7