 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Bosendorfer UK Ltd -v- Kensington Computers [2002] DRS 461 (11 October 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/461.html Cite as: [2002] DRS 461 |
||
[New search] [Help]
Nominet UK Dispute Resolution Service
DRS 00461
Bosendorfer UK Ltd -v- Kensington Computers
Decision of Independent Expert
| Complainant: | Bosendorfer UK Ltd |
| Country: | GB |
| Respondent: | Kensington Computers |
| Country: | GB |
The domain name in dispute is bosendorfer.co.uk
The Complaint was lodged with Nominet on 26 June 2002. Nominet validated the Complaint and notified the Respondent of the Complaint on 2 July 2002 and informed the Respondent that it had 15 days within to lodge a Response. A response was received on 24 July 2002 and forwarded to the Complainant on 24 July 2002 with an invitation to make any further submission in reply to the Response by 31 July 2002. On 31 July 2002 Nominet received their complaint notice letter to the Respondent from the Royal Mail, who had returned it to them due to insufficient postage. On the same day Nominet wrote to the parties informing them that they could not be confident that the Complaint had been successfully served on the Respondent and that they were therefore enclosing with the letter to the Respondent a full copy of the Complaint and notice letter by way of re-service. They told the Respondent that they had until 21 August 2002 to respond to the Complaint. A response was received on 21 August 2002 and forwarded to the Complainant with an invitation to make any further submissions by 30 August 2002. The Complainant duly filed a reply on 27 August 2002. On 16 September 2002 Nominet informed the parties that it had not been possible to achieve a resolution of the dispute by Informal Mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 30 September 2002. On 25 September 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
On 27 September 2002, David King, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties, which might appear to call into question his independence and/or impartiality.
In the circumstances set out in paragraph 3, the Expert is satisfied that Nominet acted correctly in re-serving the Complaint and notice letter on the Respondent and that the relevant submissions to take into account in this case are therefore the submissions received from the parties after re-service.
On 30 August 2002 Nominet received a faxed letter from Bösendorfer Klavierfabrik GmbH ("the Austrian Company") endorsing the Complaint. This letter has been included in the papers provided by Nominet to the Expert and the Expert is satisfied that the letter should be taken into account in his decision.
On 3 October 2002 the Expert received papers direct from the Respondent under cover of a compliments slip on which was written "omitted information". The Expert did not read the papers. He immediately informed Nominet and forwarded the papers unread to Nominet in the post on the same day. On 3 October 2002 Nominet informed the Respondent by e-mail that it is forbidden under paragraph 10 a of the Procedure for parties and the Expert to communicate directly and that under paragraph 13 a an Expert is not obliged to consider any additional submission from parties which falls outside the Procedure. They also said that the Expert had not requested additional information from the parties and that he declined to consider the information which the Respondent had forwarded to him in contravention of the Procedure.
The Austrian Company manufactures Bösendorfer Pianos. An inspection of the Austrian Company's web-site www.boesendorfer.com reveals that Bösendorfer Pianos were founded in Austria in 1828. Hurstwood Farm Music were appointed regional dealers for Bösendorfer Pianos in January 1998 and main distributors for the UK in June/July 2002, when they changed their name to Bosendorfer.UK Ltd.
A printout of the web-site of the Domain Name, included in the bundle of papers supplied by Nominet to the Expert, shows the web-site directing to a holding page of an Internet Service Provider.
The Respondent is a firm of accounting and business software specialists and is unconnected with the Complainant.
On 4 May 1999 the Respondent registered the Domain Name of bosendorfer.co.uk
The Complainant requests that the Domain Name be transferred to the Complainant on the basis that:
Mr R J Dain, the Chairman and Director of the Complainant has made submissions on behalf of the Complainant.
He submits that he has been an appointed dealer for Bösendorfer Pianos for some 4 years. In June this year his Company Bosendorfer.UK Ltd was appointed the main Distributor in the UK for this old established Austrian piano maker which has long been recognised to set world standards for quality in pianos.
He is now trading under the name Bosendorfer UK. Because the germanic umlaut "¨", which is shorthand for the diphthong oe, is not recognised in Company registration or in domain names, he holds several domain names related to his business including:- bosendorferpianos.co.uk, boesendorferpianos.co.uk and boesendorfer.uk.com.
Bösendorfer is by convention spelt Bosendorfer in the UK and America, but language literate people sometimes use the more correct spelling Boesendorfer. For obvious reasons anyone looking for Bösendorfer pianos on the UK web would expect the domain name to be bosendorfer.co.uk or boesendorfer.co.uk.
A similar attempt to register boesendorfer.co.uk was blocked by another party. This will be the subject of a separate complaint and appeal to Nominet for transfer. Phone calls letters and faxes to the Respondent have all failed to attract reply, though he once spoke by phone to a person who confirmed receipt of correspondence.
He is concerned that the Respondent is acting as nominee for a third party seeking to damage his business. He seeks to have the domain name bosendorfer.co.uk transferred. He believes there to be no other company in the UK lawfully trading using the names Bosendorfer, Boesendorfer, or Bösendorfer. His Company is the sole distributor in the UK for B¨sendorfer Pianos. There are two appointed sub dealers trading in association with his Company; neither of these has any association with the Respondent, neither seeks or has sought the domain name bosendorfer.co.uk.
Respondent:In their reply to the Complaint the Respondent have said that they are one of the main distributors of the Pegasus Opera accounting system, established since 1980 with a substantial client base throughout the UK and overseas.
Over the years they have developed many bespoke systems on behalf of their clients. They are the authors and proprietors of software written for the piano industry relating to the sale, hire and servicing of all types of pianos. This software is in use by the largest resellers of pianos in the UK. It is used to provide pianos, and piano-related services both for sale and hire to clients such as the BBC, Royal Festival Hall, television channels, major piano concertos throughout the UK as well as internationally renowned pianists. The software package has taken over five years to develop at a cost in excess of 20,000 GBP.
In order to protect their investment in their work, they have registered many names in connection with the software they have written and with relation to the piano industry and they are the owners of amongst others:
Bosendofer.co.uk (this is the spelling used in the Respondent's response but the Expert presumes that the Respondent intended it to read "bosendorfer.co.uk")
Pianohire.co.uk and variations
Petrof.co.uk
Fazioli.co.uk
Hire-Software.co.uk and variations
Kensington-Pianos.co.uk and variations
Knightbridge_pianos.co.uk and variations
Bosendorfer.co.uk was registered for Kensington Computers and not for any third party as the Complainant alleges.
Their clients are major dealers in different pianos and as such have dealt with and sold many hundreds of pianos, a substantial part of which are Bosendorfer pianos.
The sale of a piano is just the beginning of the sales cycle and the major part of their business relates to the after sales and servicing of those pianos.
The Domain Name was registered to the Respondent on 4 May 1999. They have been notified that the Complainant commenced selling Bosedorfer pianos in 2000 and did not become a dealer until June 2002 and therefore the allegation that they are acting as nominees for a third party is completely unfounded.
Equally the allegation that they, or their clients, are seeking to damage the Complainant's business in unfounded and untrue and is a malicious and libellous statement and they reserve the right to take further action regarding these statements.
The Complainant states that he is the owner of
bosendorferpianos.co.uk
boesendorferpianos.co.uk
boesendorferpianos.uk.com
However the Complainant has made no attempt to register other bosendorfer or boesendorfer related names and as of today 20 August 2002 similar names are available in the domains of .me.uk, .biz, .info, .net, .org, .org.uk and .ltd.uk.
Therefore it appears that the Complainant's intentions are malicious and are intended to damage both their business as well as that of their clients.
Complainant's replyThe Complainant has replied to the Respondent's response as follows:
They are in correspondence with the Austrian Company, Vienna about this matter and will communicate to Nominet any comments made from them. The Austria Company are of course the owners of the registered name Bösendorfer. They are also licensors for the Complainant's Bösendorfer Distributorship and were, until it was terminated licensors for another named dealership in Bösendorfer Pianos. The Respondent's response suggests to the Complainant that the other named dealers are the clients they refer to in their response. They wonder why the Respondent does not declare their client's name when it is of such material importance to the issue.
They are surprised at the cost of the development of the software that the Respondent states. It is difficult to see how such expenditure could be justified for their industry, nor indeed are they aware of any web-site currently accessible which need have attracted such a fee. The Complainant's web-site www.boesendorfer.uk.com, which is one of the most extensive in use for pianos, cost under a tenth of this amount. Is the Respondent overstating the development expenditure in order to establish a case?
They note that boesendorfer.co.uk (this is the spelling used in the Complainant's reply but the Expert presumes that the Complainant intended it to read "bosendorfer.co.uk") is stated to be registered for the Respondent and not for a third party. The Respondent is certainly not licensed to trade in new Bösendorfer Pianos and, as far as they know, do not trade in pianos at all. If that domain name is not to be used for a third party interested in the piano business, they fail to comprehend their objectives. If they are using or intend to use it for a client's piano business, then the Arbitrator may wish to take a view on the validity of their statement.
The only significant and probably the only company they are aware of that trade in pianos in Knightsbridge is Harrods, who are licensed independent traders for Bösendorfer Pianos. The Respondent has registered the name knightsbridge_pianos.co.uk and variations. The Arbitrator may be interested to enquire if these registrations were made with the knowledge of approval of Harrods.
The statements about the dates of their appointment as Dealers and the Distributors for Bösendorfer Pianos are incorrect. They were appointed Regional Dealers for Bösendorfer Pianos in January 1998 and Main Distributors in July 2002. Until July this year, when they changed their name to Bösendorfer.UK.Ltd they traded as Hurstwood Farm Music.
They have never made any allegation, and do not make such allegation that the Respondent is seeking to damage their business. They are concerned that the Domain Name may be used by anyone who may obtain access to it to their disadvantage. They are also concerned to protect the name Bösendorfer from use which is not authorised by its registered owners the Austrian Company, whom they represent in the UK.
They note the list of other domain names they might register. There are many more options. None appears to them to be appropriate or constructive for their business. The Arbitrator may like to ask why the Respondent decided against such registrations if they are as intimately involved in the piano business as they state and feel these names are useful.
Submissions by Bösendorfer Klavierfabrik GmbHThe Director Sales and Marketing of the Austrian Company has also made the following submissions in the faxed letter received by Nominet on 30 August 2002 (the faxed letter referred to in paragraph 4 of this decision).
It is his responsibility to ensure the registered trade name of their company is not misused or used by others who have no authority from them. He is aware that their appointed Distributors for the UK, Bosendorfer.UK Ltd who trade as "Bosendorfer" have made representations to Nominet for transfer of the Domain Name to themselves. They endorse this action and are writing to Nominet to make them aware of their concern so that their view may be considered in Nominet's procedures.
It is intolerable to them that their registered trade name should be incorporated in a domain name by the Respondent in connection with their business of developing web-sites for any company they may choose to serve in the piano business. A company using their trade name has to satisfy them that they have the skill and resources to present their product in the manner they require.
The Respondent has not even disclosed the name or names of their clients using the web-sites they have designed. Neither they nor their clients currently have their authority to hold or use their trade name in support of their business or to prevent its transfer to those who would have such approval.
It is their intention to ensure by all means possible that the Domain Name is transferred either to their direct control or placed under the control of their appointed distributors in the UK, namely Bosendorfer.UK Ltd. They have a contract with Bosendorfer.UK Ltd defining their use of their trade name. That contract imposes on both parties an obligation to act in concert to prevent the misuse of their trade name.
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Names and that the Domain Name, in the hands of the Respondent, Is an Abusive Registration as defined in Paragraph 1 of the Policy.
Complainant's RightsThe Complainant has asserted that it has rights in a name or mark, which is identical or similar to the Domain Name. The main issue at this stage is to establish whether, on the balance of probabilities, the Complainant has rights in respect of the name or mark of bosendorfer.co.uk. The name "bosendorfer" is identical to the name in which the Complainant asserts it has Rights. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix (co.uk) which is of no relevant significance and wholly generic.
Whilst no documentary evidence as to the date of incorporation of the Complainant Company or any change of name, it appears that the company name Bosendforfer.UK Ltd was only registered shortly before the Complainant lodged the Complaint. Registration of the company name is not in itself sufficient to establish that the Complainant has Rights in the name "bosendorfer" and the Complainant has not provided any specific evidence that it had Rights in the name "bosendorfer" when trading as Hurstwood Farm Music. However, as was said in DRS 00248 (seiko-shop.co.uk) the establishment of Rights is not a particularly high threshold test. The Complaint has been endorsed by the Austrian Company in its faxed letter dated 30 August 2002. The Austrian Company clearly has Rights in the name "bosendorfer". It might have been more appropriate for the Austrian Company to make the Complaint but, in the circumstances, the Expert finds (but only just) that, for the purposes of the Policy, the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive RegistrationIs the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
A non-exhaustive list of factors, which may be evidence that a Domain Name is an Abusive Registration, is set out in Paragraph 3 of the Policy and reads as follows:
There has been no suggestion that the Respondent has sought to sell or otherwise transfer the Domain Name to the Complainant for valuable consideration. Indeed, it is apparent that the Respondent wishes to retain the Domain Name. Therefore, paragraph 3 a I A need not be considered further.
The Complainant submits that the Respondent's registration of the Domain Name is blocking it from registering the Domain Name. No doubt they are blocking registration by the Complainant but that will always be the case in a dispute under the Policy. It is necessary to establish some deliberate intent on the part of the Respondent at the time of registration. No evidence has been produced that the Complainant's predecessor, Hurstwood Farm Music had Rights (as defined in the Policy) when the Respondent registered the Domain Name in 1999 or that the Respondent could have contemplated the Rights which the Complaint has now acquired. In the circumstances the Expert does not find that the requirements of paragraph 3 a i B are satisfied.
In its Reply to the Respondent's Response, the Complainant has said that it has never made any allegation, and does not make any allegation now, that the Respondent is seeking to damage its business. No suggestion has been made or evidence produced that the Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant. The Expert therefore concludes that the requirements of paragraph 3 a i B are not satisfied.
With regard to paragraph 3 a ii, in the Complaint, the Complainant has said that "for obvious reasons anyone looking for Bösendorfer pianos on the UK web would expect the domain name to bosendorfer.co.uk or boesendorfer.co.uk" (the latter of which is not the subject of this particular dispute). Under paragraph 3 a ii, it is necessary to establish that the Respondent is using the Domain Name in a way which has actually caused confusion to Internet users. The Expert notes that the Complainant has not produced any evidence that anyone has actually been confused by the registration of the Domain Name by the Respondent. The Expert therefore concludes that the requirements of paragraph 3 a ii are not satisfied.
With regard to paragraph 3 a iii, in the Complaint, the Complainant has made no allegation that the Respondent is engaged in a pattern of Abusive Registrations. In their Response, the Respondent referred to other domain names, which they said they had registered in connection with the software they had written and with relation to the piano industry. The Complainant's Reply suggests that some of the domain names might have been registered without the knowledge or authority of other interested parties. However, on the Evidence before him, the Expert cannot conclude that any of the other domain names registered by the Respondent are Abusive Registrations. The Expert does not consider that it has been established that the Respondent is engaged in a pattern of Abusive Registrations.
Paragraph 3 a iv does not need to be considered as there is no suggestion that the Respondent has given false contact details.
Paragraph 3 b provides that " Failure on the Respondent's part to use the Domain Name for the purposes of e-mail of a web-site is not in itself evidence that the Domain Name is an Abusive Registration". In the view of the Expert, non-use of the Domain Name might amount to Abusive Registration if there are other circumstances, which, combined with non-use, would justify such a finding of Abusive Registration. The printout of the web-site of the Domain Name contained in the bundle of papers supplied to the Expert by Nominet is a holding page of an Internet Service Provider. It therefore, appears that the Respondent is not actively using the Domain Name. Paragraph 4 a sets out a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. The only relevant factor in this case is contained in paragraph 4 a i A, which provides that, "Before being informed of the Complainant's dispute, the Respondent has 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". The Complainant is clearly concerned that the Respondent is representing a third party with an interest in using the Domain Name but this is denied by the Respondent. Although the Respondent has not specified their intended use of the Domain Name, the Expert can only base his decision on the evidence before him and does not consider that the evidence is sufficient to find that non-use of the Domain Name is an Abusive Registration in this case.
The other provisions of Paragraph 4 are not relevant in this case and need not be considered in this Decision.
In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name but that the Domain Name, in the hands of the Respondent, is not an Abusive Registration, the Expert directs that the complaint in respect of the Domain Name be refused.
David King
Date: 11 October 2002