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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Metso Corporation v Ratley [2005] DRS 00977 (18 August 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/00977.html Cite as: [2005] DRS 977, [2005] DRS 00977 |
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Complainant: Metso Corporation
Address: Fabianinkatu 9 A
PO Box 1220
Helsinki
Postcode: FIN-00101
Country: FI
Respondent: Mr Adrian Ratley
Address: Flat 2
214 Cambridge Heath Road
London
Postcode: E2 9NQ
Country: GB
metso.co.uk ("the Domain Name")
The Complaint was lodged by email with Nominet on April 28, 2003 by hardcopy. Nominet validated the Complaint and notified the Respondent of the Complaint on May 1, 2003 and informed the Respondent that he had 15 working days within which to lodge a Response. On May 12, 2003 the Respondent contacted Nominet and requested an extension of time for the lodging of a Response on the grounds that he was about to go abroad for a period of around two months. On the same date, Nominet granted an extension of two weeks to June 9, 2003. The Response was received by Nominet on June 4, 2003 and in hardcopy form on June 5, 2003. The copy of the Response was sent by email and hardcopy to the Complainant on June 5, 2003. On June 16, 2003 Nominet received a request from the Complainant's representatives for an extension of time for the lodging of a Reply of two days on the grounds of illness. On June 17, 2003, Nominet duly granted an extension of two days to June 18, 2003. A Reply was received from the Complainant on June 18, 2003. On June 19, 2003 hardcopies of the Reply were received by Nominet and 'initiate mediation' documents were generated.
Mediation failed and Nominet so informed the Complainant. On July 16, 2003 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 July 16, 2003, Andrew D S Lothian, 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 drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
Under paragraph 13 of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") the Expert may, at his or her discretion, request further statements or documents from either party to the dispute. On July 18, 2003 the Expert duly exercised this discretion. The text of the request, which was issued to the parties by Nominet by email and post on the same date was as follows: "The Expert has considered the Complaint, Response and Reply. The Reply raises challenges by the Complainant to material facts alleged by the Respondent. The Respondent is requested to reply by lodging a further statement and/or documents in accordance with paragraph 13a of the Procedure. The Respondent should produce such statement and/or documentary evidence within an additional period of five (5) working days from notification."
On or about July 21, 2003, the Respondent contacted Nominet to request an extension of time for the lodging of further material on the grounds that he was out of the UK until July 31, 2003 and unable to arrange for supporting evidence to be sent until his return. Nominet therefore contacted the Expert. In accordance with paragraph 12a of the Procedure, the Expert agreed to grant the Respondent an extension until August 4, 2003.
A further statement and documents were received from the Respondent on August 4, 2003 by hard copy and email.
The Complainant is a Finnish joint stock company and is a global supplier of process industry machinery and systems, as well as know-how and aftermarket services. The Complainant has interests in the UK and world-wide.
The Respondent is a private individual living in the UK. He is unconnected with the Complainant.
The Respondent registered the Domain Name on November 10, 1999.
Complaint
In summary, the Complainant's contentions are as follows:-
(i) Metso Corporation, history of the METSO brand and Rights in the name
The Complainant has business operations in over fifty countries worldwide with net sales in 2002 of EUR 4,691 million. Its main markets are Europe and North America. It is listed on the Helsinki and New York Stock Exchanges. It has four limited companies named Metso in the UK:- (1) Metso Automation Ltd, (2) Metso Minerals (Cappagh) Ltd, (3) Metso Minerals (UK) Ltd and (4) Metso Paper Limited.
The Complainant is the product of a merger in 1999 between Valmet Corporation and Rauma Corporation. When the merger took place, the Complainant made large investments in the creation of a new brand 'METSO'. Metso Corporation began operations on July 1, 1999 and its trade name was officially approved by the shareholders' meeting on August 18, 1999.
The brand was a result of a competition arranged for the employees of the merging companies. METSO is the Finnish word for wood grouse or capercaillie. The mark is distinctive and the word does not appear in the English Dictionary. The Complainant has registered METSO alone and in combination with other words as a trade name, trade mark and domain name in the UK, Europe and other countries all over the world.
The Complainant is the registered proprietor of the Community Trade Mark ("CTM") METSO LINKING INNOVATIONS, registration number 002086486. The Complainant has also filed several other CTM applications for the name METSO including appl. no. 1388065, METSO FUTURE CARE, appl. no. 001971159, METSO and device, appl. no. 2555712, METSO POWDERMET, appl. no. 2283752, and METSO MINERALS, appl. no. 2199487.
The Complainant has over 200 registered domain names for METSO alone and in combination with other words.
(ii) Identical or similar to the Domain Name
The dominant portion of the Domain Name "metso.co.uk" consists of the word METSO, which is identical to the Complainant's brand METSO.
(iii) Abusive registration
There is no commercial relation or any other co-operation between the Respondent and the Complainant. The Respondent has not been given any authorisation or licence by the Complainant to use the brand METSO.
The Domain Name is an abusive registration in that it was registered and is being used in a manner which takes unfair advantage of the Complainant's Rights. The Domain Name is detrimental to the trade mark rights of the Complainant.
When it was discovered that the Domain Name was registered by a third party the site activated to the Domain Name had the following content: "Metso's Website Hello, Welcome to my website. I hope you like it. Nothing what so ever to do with metso crappy minerals ...... they s**k.". By the date of the Complaint the content of the site had changed to show an image of a record cover of an artist called Kelli Ali. No other information was found on the site.
The Complainant contacted the Respondent by letter dated April 1, 2003 to draw attention to its rights in the brand METSO and requesting transfer of the Domain Name. The Respondent's answer to this letter, dated April 24, 2003, is broadly consistent with his formal Response to the Complaint.
The Complainant submits that the Respondent's purpose in registering the Domain Name was either to sell it to the Complainant at a later date, to block the Complainant from using the Domain Name or to disrupt the business of the Complainant. The Complainant also submits that the Respondent's holding of the Domain Name gives rise to considerable risk of confusion on the part of the public. The Complainant points to the following factors in support of these submissions:
(a) it is clear that the Respondent was aware of the brand METSO when the Domain Name was registered, which was proved by the content of the site;
(b) the negative message on the website associated with the Domain Name referring to the Complainant's brand and business;
(c) the timing of the Domain Name's registration in 1999 is suspicious, namely that it took place shortly after the news about the new brand METSO was released in the media, especially bearing in mind the fact that the Respondent claims to have been known as 'Metso' since 1986.
(d) the Respondent has not applied for or registered any trade mark for the name METSO;
(e) the Respondent failed to provide contact information in the whois report, indicating that he did not want to reveal his true identity;
(f) the lack of proof on the website associated with the Domain Name that the Respondent has 'honest intentions' in that as late as February 2003, almost four years after the Domain Name was registered, the content of the site was as described;
(g) the change of the content on the website which now promotes a new record "Tigermouth of Kelli Ali", with no apparent connection to the Respondent; and
(h) the fact that the Complainant was aware of the risk of confusion for consumers, and that actual confusion has taken place (as evidenced by a fax from a company named Centralube to the Complainant dated 24 February 2003, indicating that the sender had inadvertently tried to find the Complainant at the Domain Name and had instead received the message referring to the Complainant). The Respondent could have added a generic or descriptive word to 'metso' in the Domain Name so as to avoid such confusion.
Response
In summary, the Respondent's contentions are as follows:-
The Respondent did not register the Domain Name as an abusive registration and neither is he trying to take an unfair advantage of the Complainant's rights. The Respondent is entitled to use the Domain Name because he has used it in connection with a genuine offering of goods or services and or, in the alternative, he has been and still is commonly known by a name which is identical to the Domain Name.
Since circa 1986 the Respondent has been using the name "Metso" as his artist's name. He originally used the moniker "Metso" as his pseudonym for street artwork but later used it to brand himself in the fashion and art industries. He is still known as "Metso" to most if not all of his friends and business associates. He registered the Domain Name in November 1999 to develop a website on which he intended to promote his artwork, principally photography. His use of the Domain Name does not infringe the reputation or rights of a multi-national minerals corporation such as the Complainant.
The Respondent has provided copy newspaper and magazine articles dated between March 1986 and June 1987 which relate to the Respondent's artwork and identify the Respondent variously as "Metso", "Metso 45", "Metso 46" and "Adrian Metso".
The Complainant and Respondent are two wholly different entities. There is no risk of the public perceiving the Domain Name as owned by the Complainant or that there is some kind of commercial relationship between the Complainant and Respondent. The Respondent's use of the Domain Name does not disrupt the business of the Complainant.
The Respondent answers the Complainant's contentions on Abusive Registration as follows:
(a) The Respondent denies that he knew of the Metso Corporation when he registered the Domain Name. He became aware of the Complainant after registration of the Domain Name because he received a significant amount of unsolicited email or 'spam' to the Domain Name. The sender of the spam believed that the Domain Name had some connection with the Complainant;
(b) The Respondent does not deny the terms of the notice placed on his website as contended by the Complainant. He explains that he notified visitors to his website that he was not connected with the Complainant after becoming aware of the apparent connection between the email spam and the Complainant. He accepts that his choice of language was 'not perhaps as suitable as it could have been'. The Respondent submits that he removed the notice immediately after he was contacted by the Complainant. He denies that the 'vaguely negative' message is evidence of abusive registration or that its posting is consistent with an intention to disrupt a business or behave abusively for personal gain;
(c) The timing of registration is not significant. The Respondent was alerted to the potential to promote himself on the Internet upon its rise in popularity in the late 1990s. His registration in the year of formation of the Complainant is coincidental. The Complainant's contention that time is of the essence is not borne out by its delay in taking any steps between 1 July 1999 and April 2003 regarding the Domain Name;
(d) The Respondent does not state whether or not he has applied for or registered any trade marks. However, he states that his intention was to promote himself as a 'legitimate artist';
(e) The Respondent's opt out from having published WHOIS contact details is not relevant. It is quite common for individuals to opt out. The Respondent's intention was prevent his personal details from being used for any purpose to which he had not consented. Such actions do not indicate subversive or underhand motives or dishonest intentions;
(f) The Respondent states that he has not developed the website as far as he would have wished. This is principally due to his lack of resources. The Respondent fully intends to develop it in the future as a promotional aid to his freelance photography and artwork.
(g) The Respondent does have a connection with Kelli Ali. She is the Respondent's partner and lives with him. The Respondent is credited at Ms Ali's recording company's website with a photograph of her. The Respondent is also credited with photography in the latest 'Trace' magazine. His use of the website in this way is fair use.
(h) The Respondent does not accept that there is any confusion between his display of a photograph of the artist Kelli Ali and the Complainant. The Respondent indicates a willingness to state on his website that he has no connection with the Complainant.
Reply
In summary, the Complainant's contentions in reply are as follows:-
(a) The Respondent's articles provide insufficient proof that the Domain Name has been used by him in connection with a genuine offering of goods and services or that he is presently and commonly known as "Metso". The articles are approximately 16-17 years old. The Complainant casts doubt as to the actual artist name, moniker or pseudonym of the Respondent, as he is also referred to as "Metso46" in the articles.
(b) The Respondent's reference to numerous and unsolicited email indicates that there has been confusion in addition to the actual confusion shown in the Complaint. By the time that visitors reach the Respondent's site, the confusion has already taken place whether or not the website makes it clear that the Respondent is a third party.
(c) The Respondent failed to use his website for promotional purposes over the three and a half year period of the registration and his explanation of inadequate resources is more than unconvincing. He has been able to afford the cost and expense of publishing the content already displayed on the site. The Respondent would have incurred marginal costs and expenses, if any, for informing consumers about his activities and/or for merely displaying his contact information.
(d) The Respondent's failure to provide contact information on the WHOIS record is uncommon. It has been regarded as proof of bad faith according to the case law developed by the Uniform Dispute Resolution Policy at World Intellectual Property Organization. The Complainant cites various UDRP decisions in support of this proposition.
(e) The previous content on the Respondent's website 'clearly indicates and proves that the Respondent holds a grudge against the Complainant for some unknown reason', which can hardly be the receipt of unsolicited e-mails.
Respondent's Reply to Reply
In summary, the Respondent's submissions in reply are as follows:-
(a) The Respondent submits that he has three pieces of photography in current circulation using the name 'Metso', namely Trace magazine (May 2003 edition) (picture accompanying an article featuring Kelli Ali); a compact disc single cover photograph on Kelli Ali's latest record 'Teardrop Hitting the Ground' and an item on Kelli Ali's record company's web site. The Respondent submits that he is known within the visual effects industry as 'Metso'. He is credited in the HBO/BBC feature film production of 'The Gathering Storm' (production 2002/released 2003) under the heading of "Visual Effects Artist" as "Adrian 'Metso' Ratley".
(b) A customer or potential customer of the Metso Corporation would, on accessing the site www.metso.co.uk, immediately identify the fact that it has nothing to do with the 'Metso Corporation'. The subject matter and look and feel are completely different to the Complainant's site. The Respondent has placed a disclaimer on the site.
(c) The content of the website has no impact on Respondent's right to use the name Metso. The Respondent has not yet fully developed the web site because his intention is to use the web space as an online portfolio of work or a CV first. This can only be developed over time as various projects are completed. There is insufficient material to display. The recent activity on the web site indicates an attempt by the Respondent to learn how to create a web site and the development of the site will happen over time as and when his portfolio develops.
(d) The Respondent is entitled to opt out from having his address details displayed on the WHOIS as he is a 'non-trading individual'. The Respondent chose not to have his personal information displayed so as to prevent any form of unsolicited mail.
(e) The Respondent posted the statement relating to the Metso Corporation after receiving unsolicited hardcore pornography addressed to www.metso.co.uk [sic]. The Respondent soon realised this was not the best way to tackle the issue and removed the statement immediately.
(f) The Respondent chose to register the web site [sic] in November 1999 because at that time the ISP www.freenetname was offering free web address registration and he had just started to use the Internet. The Respondent chose the domain '.co.uk' because the UK was and still is his current place of permanent residence and because it was available at the time. The Respondent is in the business of design and artwork in London. He was therefore completely unaware of the Complainant's formation in 1999. The Respondent assures the Complainant and the Expert that he is not an authority on mergers involving Finnish mineral companies.
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and secondly that the Domain Name in the hands of the Respondent is an abusive registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
The Complainant's name is Metso Corporation. It is the holder of a Community Trade Mark registration number 002086486 for the words METSO LINKING INNOVATIONS which has effect in the UK (filed February 14, 2001 and registered April 3, 2002). It has traded as Metso (combined with other words) in the UK since at least February 1, 2001 (the date of change of name of the former Neles Automation Limited to Metso Automation Limited as shown by the company details forms submitted by the Complainant). The Complainant is the proprietor of an extensive worldwide intellectual property portfolio of registered trade marks for the word 'METSO'.
'Rights' as defined in the Policy includes, but is not limited to, rights enforceable under English law. The Community Trade Mark referred to above is so enforceable. In terms of paragraph 2 (a)(i) for the Complainant to succeed, such Rights must be in respect of a name or mark which is identical or similar to the Domain Name. The mark is 'METSO LINKING INNOVATIONS' and the Domain Name is 'metso.co.uk'. The mark is not identical, but is it similar?
The first (.uk) and second (.co) levels of the Domain Name are disregarded as being wholly generic. This leaves a comparison between 'metso' and 'METSO LINKING INNOVATIONS'. The Expert is satisfied that on an ordinary comparison between these two, the latter is similar to the former. In the Expert's opinion, in the case of the mark, it is the use of the word 'METSO' which is the focus of the mark and which renders it distinctive, the words 'LINKING INNOVATIONS' being of a more generic nature. Even if the Expert had not made this finding, the Expert considers that the wealth of evidence provided by the Complainant illustrates the goodwill which it has built up in the name 'Metso' such that it could enforce its Rights under English law by action of passing off. Furthermore, the definition of Rights is not limited to rights enforceable under English law and it is clear that the Complainant has extensive rights elsewhere in the world in the name 'Metso'. Given the extent of these, the Expert would have been prepared to find that such rights alone constituted Rights within the meaning of the Policy had it been necessary to do so.
The Respondent does not appear to dispute that the Complainant has traded under the name Metso and/or that it has rights in that name. The Respondent's defence is that he has used the name for longer and in a different sector from the Complainant..
Accordingly, the Expert has little difficulty in finding on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.
Abusive Registration
It is then necessary to turn to the second limb: is 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:
(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 1(i) focuses on the time when the registration was made while paragraph 1(ii) focuses on use of the domain name after registration.
Taking Paragraph 1(i) first, the Complainant submits that the Respondent's purpose of registering the Domain Name was either to sell it to the Complainant, to block the Complainant from using it and/or to disrupt the Complainant's business. These submissions correspond approximately to paragraphs 3(a)(i)(A), (B) and (C) of the Policy, each of which is a factor in the list of non-exhaustive factors contained in paragraph 3, which may be evidence that the Domain Name is an abusive registration.
Paragraph 3(a)(i)(A) calls for circumstances indicating that the Respondent has registered the Domain Name "primarily 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".
Paragraph 3(a)(i)(B) calls for circumstances indicating that the Respondent has registered the Domain Name "as a blocking registration against a name or mark in which the Complainant has Rights." As has been noted in other DRS cases, every registration of a domain name could be thought to be a 'blocking registration' by virtue of the fact that as each must be unique, it has the technical effect of blocking other would-be registrants of the name. In the Expert's view, the definition of a blocking registration under the Policy must involve some deliberate intent by the respondent to block the complainant at the time of registration.
Paragraph 3(a)(i)(C) calls for circumstances indicating that the Respondent has registered the Domain Name "primarily for the purpose of unfairly disrupting the business of the Complainant."
In the Expert's view the Complainant has produced no evidence of any circumstances matching the requirements of paragraphs 3(a)(i)(A), (B) or (C).
In particular, there is no evidence that the Respondent has approached the Complainant with an offer to sell the Domain Name, either before or since he was contacted by the Complainant. Equally, there is no evidence that the Respondent has disrupted the Complainant's business. Such evidence would have added more weight to the Complainant's submissions as to the Respondent's purpose or intent.
The Complainant focuses on the negative message posted on the Respondent's website as evidence that the Respondent was targeting the Complainant in some way. The Expert is in no doubt that the message was intended to refer to the Complainant. However, in the Expert's view paragraphs 3(a)(i)(A), (B) and (C) require circumstances showing that the Respondent intended to target the Complainant when he registered the Domain Name, and in respect of sub-paragraphs (A) and (C), the word 'primarily' in the Expert's view means that selling or disrupting the Complainant must be shown as the Respondent's primary or chief (but not necessarily exclusive) purpose.
The timing of the publication of the negative message is relevant to the question of the Respondent's intentions. There is no evidence before the Expert as to when this occurred. The Complainant's documentary evidence indicates that the message was online in February 2003, but this is some three and a quarter years after the date of registration of the Domain Name. The Respondent's case is no more precise on this point, merely indicating that the message was published at some stage following registration of the Domain Name, after the Respondent had received unsolicited commercial email. Accordingly, the Expert is not prepared to accept that the message assists in determining the Respondent's intent, or knowledge of the Complainant, at the time of registration; all that it indicates is that the Respondent became aware of the Complainant at some, possibly later, stage.
For his part, the Respondent seeks to address the question of his intent in registering the Domain Name by stating that it was for use in connection with his artistic activities. He has provided independent and credible evidence from newspaper articles that, at the very least, he was using the pseudonym 'Metso' (among other variants) as an artist in 1986 and 1987. This is not denied by the Complainant. The Complainant seeks to raise some doubt as to the Respondent's actual artist name by pointing out the existence of one of several variants, "Metso46". In the Expert's view, this doubt is not significant. The variants used by the Respondent are not entirely unlike the Complainant's variants of its own name, namely the use of a core brand of 'Metso' with a range of modifiers (such as ' Metso Automation') all of which are listed in detail in the Complainant's documentary evidence. The Expert is fortified in this view by the fact that, in both of those articles where the Respondent is called "Metso45" and "Metso46", the name has been shortened elsewhere to "Metso" by the author. In one case the abbreviation appears in the body of the article and in the other, in a caption to a photograph. Accordingly, this abbreviation to a 'core' version of the name is something that the journalists concerned have treated as a given and there is no reason to suspect that the Respondent did not register the Domain Name on a similar basis.
For the Complainant's submissions under paragraphs 3(a)(i)(A), (B) and (C) to be made out, the Expert would have to find that, although the Complainant does not deny that the Respondent had used the name 'Metso' and variants as an artist name some 16 or 17 years ago, he was at the time of registration of the Domain Name deliberately intending to target the Complainant either (1) primarily with a view to subsequent sale of the Domain Name, (2) to block the Complainant from being able to register the Domain Name or (3) primarily to disrupt the Complainant's business. The artist name would therefore be no more than a 'cover story' for his true motivation. The Expert finds this to be extremely unconvincing.
The Complainant submits that the timing of the registration is suspiciously close to the Complainant's announcement of its new name, particularly since the Respondent claims to have been known as 'Metso' since 1986. The Respondent also submits that he was not aware of the merger of the Finnish companies at the time of registration. He refers to the timing of the registration as a coincidence which relates to his perception of the rising popularity of the Internet rather than any awareness of the activities of the Complainant.
The Complainant's submissions on timing do not displace those of the Respondent. The date of the registration (November 10, 1999) is approximately two and a half months after the press announcement reporting the name change (August 24, 1999) and four months after the Stock Exchange Release indicating an intention to put the name change to a meeting of the Complainant's shareholders. The Complainant has not put forward any evidence tying the date of registration with any degree of proximity to any activity on the Complainant's part of which the Respondent might have been aware. The Expert considers it reasonable to suppose that if the Respondent had deliberately intended to target the Complainant's new business name with the registration he would have done so within a shorter time of the announcement to be sure of securing the Domain Name for himself. It is significant that there is no evidence of material which the Respondent might have seen, other than press releases which were circulated to a range of international press agencies. It is also significant, to the Expert's mind, that the Complainant's UK registered limited companies did not change their names until a year and a quarter after the date of registration of the Domain Name.
The Complainant refers to a number of acts or omissions of the Respondent following his registration of the Domain Name, including a lack of trade mark activity, failure to provide contact details on the WHOIS, lack of changes in website content and indeed a subsequent change of content as indicative of the Respondent's intent in registering the Domain Name. In the Expert's view all of these matters relate to the Respondent's behaviour following registration and none of them is particularly indicative of any intent on the part of the Respondent at the time of registration.
Whether or not the Respondent has registered or applied for any trade marks is not in the Expert's opinion a significant consideration. There are a large number of perfectly legitimate domain name registrants in the UK who do not support their registration by way of a trade mark. The absence of such activity does not point to any lack of a genuine purpose. The Respondent's lack of such activity is entirely consistent with his explanation of an intention to use the website as a non-trading individual and, one could go further, his reference to having limited funds for the development of the site.
The fact that the Respondent has used the opt-out provisions so that his address is not displayed in the WHOIS is not indicative of any adverse intent towards the Complainant. The Respondent is an individual. Whether or not he is entitled to the opt-out provision will depend on whether he is a non-trading individual. It is not, however, indicative of the fact that he was trying to conceal his identity from the Complainant. The Expert does not consider it necessary to review the UDRP cases cited by the Respondent. UDRP decisions are not directly relevant to decisions made under the Policy. The UDRP's method for determining complaints differs in a number of respects from the tests applied under the Policy.
Changes of content, and not changing content are relevant to use of the Domain Name, to be discussed below.
In all the circumstances, the Expert finds that the Domain Name was not registered in a manner which, at the time the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
Turning to paragraph 1(ii) of the Policy, the Expert is required to consider whether the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. The parties' submissions indicate that the Respondent's use of the Domain Name is restricted to the posting of various different content on his website during the period of registration. In terms of the submissions, and the Expert's final review of the website on August 14, 2003, the content displayed was, consecutively, (1) the negative message relating to the Complainant, (2) the subsequent picture of Kelli Ali, and (3) a different picture of Kelli Ali and the legend 'this website is currently under development for the photographer metso currently working with the singer Kelli Ali' and in smaller type at the foot of the page: 'Please note this website is not affiliated with the 'metso' corporation'.
Here, the Complainant's submissions relating to the risk of, and actual confusion, are relevant and correspond approximately to paragraph 3(a)(ii) of the Policy, a further factor in the list of non-exhaustive factors which may be evidence that the Domain Name is an abusive registration.
Paragraph 3(a)(ii) of the Policy calls for 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 Complainant's submissions on this topic relate to the actual confusion on the part of Centralube, the risk of further similar confusion, 'initial interest' confusion and the confusion on the part of those sending unsolicited email to the Respondent. The Respondent's reply indicates that his website content could not possibly be confused with the Complainant.
Dealing first with Centralube, the fax from that company to the Complainant dated February 24, 2003 states "Confirming our telephone conversation of this afternoon, I have managed to get onto your website - thank you for advising me the correct address. As I said, I inadvertently tried "metso.co.uk" and got the attached!!!" The page which follows is a print-out of the Respondent's website bearing the same date. In the Expert's opinion, this document is not evidence of actual confusion. There is nothing to indicate that the writer believed that the website was registered to, operated, authorised by or otherwise connected with the Complainant. The Respondent's message, while it does refer to the Complainant's business, could not in the Expert's view be construed by any reasonable person as implying any connection with the Complainant, commercial or non-commercial. On the contrary, its very expression that it was "nothing whatsoever to do with" the Complainant and its nature as a mildly intemperate and offensive remark would be most likely to lead visitors to believe that they had not reached the Complainant's website.
The Respondent's subsequent display of the picture of Ms Ali could, it is possible, have given rise to greater confusion in the minds of the public purely because it was displayed without any other textual information but the legend 'KELLI ALI'. However, the Complainant has not produced evidence of actual confusion relating to this use; it simply falls under the Complainant's general submission that there is a 'considerable risk' of confusion. Such a submission does not make out a case under paragraph 3(a)(ii) which calls, in the Expert's view, for evidence of actual confusion. In any event, the Expert is of the view that this particular content also did not indicate any apparent affiliation between the Respondent and the Complainant.
In its Reply, the Complainant states that by the time visitors reach the Respondent's site (by typing in the domain name) they have already been confused, no matter what the content of the site might be. This submission is based on the doctrine of 'initial interest' confusion, which, while previously accepted in some jurisdictions, has been largely discredited. The Expert does not believe that 'initial interest' confusion is a valid concept or that it should be applied in the present case. In any case, it must be doubtful whether such confusion, arising as contended for by the Complainant before the website is resolved, could have anything to do with the Respondent's actual use of the name.
The Complainant's submission on confusion relating to unsolicited email in its Reply does not take it any further. If the Respondent received unsolicited email intended for the Complainant after he registered the Domain Name but before he posted the negative website content (which is the contention of the Respondent and is not denied by the Complainant) this would appear to indicate that it was not the Respondent's use of the Domain Name which was the cause of that confusion.
The Respondent's latest use of the Domain Name gives rise to the least possible confusion as there is a notice on the website indicating that the Respondent is not affiliated with the Complainant. This is a recent development, and only limited weight should therefore be given to the Respondent's publication of the disclaimer when considering the overall fairness of his use of the Domain Name from registration to date. However, it is reasonable to say that there can be no confusion where a notice of this nature is displayed.
Having considered confusion, it is necessary to examine whether there are any other circumstances arising from the Respondent's use of the Domain Name which might show Abusive Registration, bearing in mind that the list of possible factors in paragraph 3 are non-exhaustive. Here, the only circumstance of note is the Respondent's publication of the negative message relating to the Complainant. Was this message unfairly detrimental to, or did it take unfair advantage of, the Complainant's Rights?
It is clear from an objective consideration of the message that it was not exactly fair to the Complainant but equally that it was no more than a mildly offensive reference, by way of indication that the website was not connected to the Complainant's business. Does this make it 'unfairly detrimental'? The Complainant has offered no evidence of detriment to its Rights other than the fact that the message was seen by Centralube and that there was a risk that others might see it. We do not know for how long the message was displayed, other than that it was online from February 24 until some point before the Complaint was submitted on April 25, 2003. The Respondent asserts that it was promptly removed when the Complainant objected to it. The Complainant does not deny this.
In the absence of any clear evidence of unfair detriment, the Expert is left with the impression that only limited detriment could have occurred and that the Complainant's Rights, extensive as they are, could not realistically be said to have suffered any significant disadvantage from the Respondent's rather juvenile 'aside' on his web page. The message was likely to be seen in this way rather than given any credence by visitors. Likewise, the remark did not take unfair advantage of the Complainant's Rights to any material extent as there is no evidence of any advantage sought or gained. The Expert does not consider that the Complainant has proved on balance of probabilities that this use of the website is enough for a finding of Abusive Registration.
Consequently, the Expert finds that the Domain Name was not used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
Normally, the Expert would not consider the Respondent's submissions in the context of paragraph 4 of the Policy unless the Complainant had raised a case for the Respondent to answer. However, in this case the Expert will consider paragraph 4 for the sake of completeness. Paragraph 4 provides a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. The Respondent submits that he has used the Domain Name in connection with a genuine offering of goods or services, has been commonly known by a name which is identical to the Domain Name and has made fair use of the Domain Name. These submissions correspond approximately to paragraphs 4(a)(i)(A), (B) and (C) of the Policy. These paragraphs provide as follows:
4(a)(i) Before being informed of the Complainant's dispute 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 and services;
B. been commonly known by name or legitimately connected with a mark which is identical or similar to the Domain Name; or
C. made legitimate non-commercial or fair use of the Domain Name.
The Respondent asserts that he intended to develop a website for the promotion of his artwork, principally photography. There are some indications of such use by way of the display of pictures of Ms Ali. However, the Expert is not satisfied that the Respondent has shown use or demonstrable preparations to use the Domain Name in this way. The Respondent is at one point submitting that he is preparing to use the Domain Name for a genuine offering of goods and services and at another point that he is a non-trading individual. His submissions are not entirely consistent. In any event, the changes in website content to reflect the Respondent's artwork, which are the only evidence of demonstrable preparations, took place after notice to him of this dispute.
In the case of sub-paragraph (B), however, the Expert is satisfied that prior to being informed of the Complainant's dispute, the Respondent has been known by a name which is identical to the Domain Name (or in the case of Metso45, Metso46 and Adrian Metso, similar to it). The evidence before the Expert consists of the Respondent's use of the name Metso in connection with street art in 1986/87, with visual effects in 2002/03 and with photography in 2003. The Kelli Ali compact disc and Trace Magazine article appear to post-date the dispute. However, the majority of material, namely the newspaper articles from 1986/87 and the DVD (which, although released in 2003 was in production in 2002), demonstrate use of the name before notification of the dispute. Does this satisfy the requirement of being 'commonly known' by the name? 'Commonly' indicates some degree of continuity. While the Expert would have expected to see evidence demonstrating a more continuous use of the name, the Expert takes the view that the instances which have been provided are just sufficient to find on balance of probabilities that the Respondent has been commonly known by the name Metso, as there is both use from some considerable time ago, long before the Complainant's name was created, and there is recent use (before notice of the dispute) of some substance and significance, in the form of the film credit on the DVD.
In the case of paragraph (C) it is clear that the Respondent has made only limited use of the Domain Name. Such use was fair in the sense that the Respondent has made out a case of entitlement to use the name 'Metso', although the Expert would draw back from describing the publication of the negative message as fair.
In conclusion, the Expert finds that at the root of this dispute are genuine competing rights to the name 'Metso'. Both parties are entitled to use it in connection with a Domain Name. The Complainant submits that the Respondent could have added a generic or descriptive word to his use of 'metso' in the Domain Name so as to avoid confusion. However, the same observation could apply equally well to the Complainant. The Respondent is correct to note that the Complainant could have registered the Domain Name upon its change of name. In cases of competing rights the 'first come first served' principle of domain name registration applies.
The Expert finds that on the balance of probabilities, the Complainant has Rights in a name which is identical or similar to the Domain Name but that the Domain Name is not, in the hands of the Respondent, an Abusive Registration. The Expert therefore directs that the Complaint in respect of the Domain Name be refused.
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Andrew D S Lothian August, 18, 2003