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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> JR Inkjet Ltd -v- Ink2U Ltd [2003] DRS 903 (28 April 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/903.html Cite as: [2003] DRS 903 |
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Nominet UK Dispute Resolution Service
DRS 00903
JR Inkjet Ltd. -v- Ink2U Ltd.
Decision of Independent Expert
1. Parties:
Complainant: JR Inkjet Ltd
Country: GB
Respondent: Ink2U Limited
Country: GB
2. Domain Name:
jr-inkjet.co.uk (“the Domain Name”)
3. Procedural Background:
The Complaint was received by Nominet on March 11, 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on March 14, 2003 and informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Mediation not being possible in these circumstances, Nominet so informed the Complainant and on April 15, 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 April 15, 2003, Martin Campbell-Kelly, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an 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.
4. Formal/Procedural Issues:
The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”).
Paragraph 15b of the Procedure provides, inter alia, that “If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or this Procedure, the Expert will proceed to a Decision on the complaint.”
There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the Complaint and notwithstanding the absence of a Response.
Generally, the absence of a Response from the Respondent does not, in the Expert’s view, entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.
Paragraph 15c of the DRS Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate." The Expert is not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.
5. The Facts:
The Complainant is a firm that markets and sells ink cartridges and other ink products to its customers in the UK via a website with the domain name jrinkjet.co.uk. The domain name jrinkjet.co.uk was registered on or before August 21, 2002.
The Complainant is the registered owner of the trademark "JR" in the UK (registered July 14, 2000), and of the trademark "JR Inkjet" in France (registered April 19, 2002) and the United States (registered April 28, 1998).
A WHOIS query print-out in the paper file before the Expert indicates that the Domain Name jr-inkjet.co.uk was registered in the name of the Respondent on October 4, 2002.
6. The Parties’ Contentions:
Complainant:
The substance of the Complaint is as follows:
1 The Complainant is a firm that markets and sells ink cartridges and other ink products to its customers in the UK via a website with the domain name jrinkjet.co.uk. The Complaint registered the domain name jrinkjet.co.uk on or before August 21, 2002.
2 The Respondent registered the Domain Name jr-inkjet.co.uk on October 4, 2002.
3 The Complainant asserts that the Domain Name under the ownership of the Respondent is abusive on the following grounds:
(i) The Domain Name contains the Complainant's trademarks.
(ii) The Domain Name is being used in a way that has confused people and businesses into believing that the Domain Name is registered to, operated by, authorised by or otherwise connected with the Complainant.
(iii) The Respondent is passing off the Complainant's business as its own.
(iv) The Respondent has no connection with the Complainant's trademarks or the domain name jrinkjet.co.uk. The Respondent has registered the Domain Name to confuse the Complainant's customers into believing that the Domain Name is operated by the Complainant. The Domain Name registration is therefore unfairly detrimental to the Complainant's rights.
Respondent:
The Respondent has not responded.
7. Discussion and Findings:
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 trades under the name "JR Inket". The Complainant has provided copies of registrations for the trademark "JR" in the UK (registered July 14, 2000), and the trademark "JR Inkjet" in France (registered April 19, 2002) and the United States (registered April 28, 1998).
The Expert finds that the Complainant has rights in respect of a name or mark which is similar or identical to the Domain Name.
Abusive Registration
Paragraph 1 of the Nominet Dispute Resolution Service Policy defines an Abusive Registration as a Domain Name which either:
(i) was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
The Domain Name was registered by the Respondent on October 4, 2002. This was substantially later than the Complainant registered the trade mark "JR" in the UK (registered July 14, 2000) and registered the domain name jrinkjet.co.uk (registered on or before August 21, 2002). The Expert finds that the Respondent took unfair advantage of the Complainant's rights at the time the registration of the Domain Name took place.
The Complainant has asserted that the Domain Name is being used in a way that has confused people and businesses into believing that the Domain Name is registered to, operated by, authorised by or otherwise connected with the Complainant (the Policy paragraph 3.a.ii). The evidence provided for this assertion is that the Domain Name resolves to that of the Respondent's website with the domain name ink2u.co.uk. Although no evidence has been provided of actual confusion, the Expert finds that such evidence would be very difficult to obtain in practice and that on the balance of probabilities such confusion has taken place.
The Complainant has asserted that the Respondent is passing off the Complainant's business as its own. Because the Expert finds that the registration of the Domain Name is an Abusive Registration under paragraph 3.a.ii of the Policy, it is unnecessary for the Expert to determine whether or not the Respondent is passing off the Complainant's business as its own.
The Respondent has not responded and has therefore not attempted to show that the Domain Name is not an Abusive Registration. Paragraph 4 of the Policy gives a non-exhaustive list of factors by which the respondent could demonstrate that the Domain Name is not abusive. The Expert considers that, in the light of the documents available to him, none of these factors would make the Domain Name non-abusive in the hands of the Respondent.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s Rights and has been used in a manner which took unfair advantage of, or was unfairly detrimental to, the Complainant's Rights..
8. Decision:
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name,
jr-inkjet.co.uk, be transferred to the Complainant.
Martin Campbell-Kelly
Date: 28 April 2003