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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Levi-Strauss & Co -v- Baxter [2003] DRS B4 (28 February 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/B4.html Cite as: [2003] DRS B4

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Levi-Strauss & Co. –v- Sharon Baxter

Nominet UK Dispute Resolution Service
Decision of Independent Expert

1. Parties
Complainant: Levi-Strauss & Co.
Country: Belgium

Respondent: Ms. Sharon Baxter
Country: Great Britain

2. Domain Name:
levis-strauss.co.uk (“the Domain Name”)

3. Procedural Background:

The Complaint was validated by Nominet on 14 January 2003 and the Dispute was entered into Nominet’s system on that date (the Complaint had been lodged previously in November 2002 but due to a procedural irregularity, the Complaint had to be validated again and re-served on 14 January 2003).  The Respondent did not respond to the Complaint by 6 February 2003.  Mediation not being possible in those circumstances, Nominet so informed the Complainant and the fee which had been received previously from the Complainant was formally assigned to the Dispute on 7 February 2003. 
On 7 February 2003, Nick Rose, 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 matter that ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4. Outstanding Formal/Procedural Issues (if any):

Paragraph 15b of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“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 the 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. Further, Paragraph 15c of the Procedure provides that “if, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure… the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate”.
The Expert does not consider it necessary in this case to draw any inferences from the absence of a Response in this case.
As for the facts set out in the Complaint, it seems to the Expert that the probable facts speak for themselves and that the facts asserted by the Complainant and set out in the next following section are indeed facts.

5. The Facts

The Complainant is a company incorporated in the United States of America, founded by Levi Strauss in 1853 in San Francisco, although the address given for the purposes of correspondence relating to this Complaint is the Complainant’s European Headquarters in Brussels.  The Complainant is the internationally famous company which sells Levi’s branded products worldwide and is one of the most recognisable brands in the world.  At Annex 4 are selected trade mark registration certificates.  The trade marks include “LEVI’S” and “LEVI-STRAUSS”.  I am satisfied that there are UK and CTM registrations for both “LEVI’S” and “LEVI-STRAUSS”.  The domain name is registered on 21 September 1999.  The Domain Name then appears for sale on an auction site found in a sub-directory of www.enryiggins.co.uk, which is a site owned by the Respondent and has a sub-directory page (www.enryiggins.co.uk/auctions) which auctions domain names containing the trade marks of some well known brands.  The auction site’s domain name was registered on 20 September 1999, i.e. the day before the registration of the domain name which is in dispute. 
On 8 October 2002 the Complainant sent a registered letter to the Respondent stating that they considered the Domain Name to be an infringement of one of their trade marks and request that it be transferred to Levi-Strauss & Co.’s ownership without delay.  The Respondent replied by leaving a voicemail message on 11 October 2002 stating that the domain name was bought in good faith and that she would be willing to sell it to Levi-Strauss & Co.  There is no evidence filed by the Complainant to support that voicemail message (for example a transcript) but in the absence of any denial by the Respondent I will accept this as a fact.  The Complainant also stated that during the telephone call of 21 October 2002 the Complainant informed the Respondent that it regarded the registration as abusive and that, in this instance, it was not their policy to pay for the said domain name.  During the course of the telephone call of 21 October the Complainant also informed the Respondent of Nominet UK’s terms and conditions and, in particular, to Clause 5.3.  The Complainant informed the Respondent that it would call on Nominet UK’s DRP to resolve this dispute.  Again, the Complainant has not filed any evidence in support of this telephone conversation, such as a transcript, but in the absence of any denial from the Respondent the expert accepts the Complainant’s version of this telephone call as fact.

6. The Parties contentions:
Complainant:
The substance of the Complaint is as follows:

1. The Complainant has a community trade mark and UK trade mark registration for the trade mark “LEVI’S” and “LEVI STRAUSS”.  The LEVI STRAUSS trade mark is virtually identical to the domain name, the only changes being the fact that there is no apostrophe in the word LEVIS” and there is a hyphen joining the two words “LEVIS” and “STRAUSS”.  The Complainant also has numerous trade mark registrations for both of these trade marks in many jurisdictions worldwide.  The Complainant’s trade mark rights pre-date the registration of the domain name by the Respondent.

2. It is submitted that the Domain Name should be considered an abusive registration in the hands of the Respondent because:
 (a) The Domain Name is identical or similar to a name or mark which is owned by the Complainant;
 (b) The Domain Name is extremely similar to the name of the founder of the Company, Mr. Levi Strauss, and to many of the companies worldwide in the Levi-Strauss Group’
 (c) The Respondent has no legitimate rights to the domain name nor does it own any U.K. registered trade marks which include the word “LEVI’S”;
 (d) LEVI’S is known around the world, it is inconceivable that the Respondent was not aware of the presence of Levi-Strauss in the UK market and therefore the Respondent was taking unfair advantage of the Complainant’s Rights and the registration is abusive;
 (e) The Domain Name was offered for sale on an auction site and was therefore registered primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant; and
 (f) The Respondent owns a website which is presently offering for sale in excess of 120 Domain Names, some of which contain well-known trade marks, for commercial gain and therefore demonstrates that the Respondent is engaged in a pattern of making abusive

Registrations (section 3a(iii) of Nominet.UK’s Policy).

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 first limb of that task is straightforward in this case.  The Complainant is the proprietor of registered trade mark rights in the mark “LEVI’S” and “LEVI STRAUSS”.  The Domain Name comprises both marks, with very minor amendments.  The suffix. “.uk” is of no relevance and can be ignored.  The Expert therefore finds that the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name.

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.”
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive

Registration is set out in paragraph 3 of the Policy.  There is no suggestion that the Domain Name is in use in any ordinary sense (i.e. connected to an internet facility for email or website purposes).  The Domain Name is for sale on an auction site and the Respondent is engaged in a pattern of making Abusive Registrations.
The Expert has considered the grounds relied on by the Complainant and agrees with all of the grounds of Complaint.  In particular, the Expert concluded that the Domain Name is an Abusive Registration because the following factors in the Policy exist, namely:
(i) Paragraph 3(a)(i)A:  The Domain Name has been registered primarily for the purpose of selling it to the Complainants or a competitor of the Complainant for a sum in excess of the Respondent’s out of pocket costs;
(ii) Paragraph 3(a)(iii):  The Respondent is engaged in a pattern of making Abusive Registrations;
The Respondent has not filed a Response and therefore does not rely on any factors to reject the Complaint that this is an Abusive Registration.  The Expert concluded there is no obvious reason why the Respondent could possibly be justified in registering the Domain Name for any legitimate purpose.  The Domain Name comprises one of the most famous trade marks in the world.  It is identical or virtually identical to the Complainant’s trade marks.  There is no other U.K. company which uses the words which comprise the Complainant’s trade marks “LEVIS” or “LEVI STRAUSS” the latter being the name of the founder of the company and, therefore, equivalent to an inventive word.  In the hands of the Respondent the Domain Name constitutes a threat hanging over the heads of the Complainant because there are many obvious and potentially damaging uses which the Domain Name could be put, not only by the Respondent, but by any third party to whom the Domain Name is sold.
The Complainant therefore has made out a prima facie case that the Domain Name is an Abusive Registration, the Respondent has a case to answer and the Respondent has given no answer. 

Accordingly, the Expert finds that the Domain Name is an abusive registration within the definition of Paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, was unfairly detrimental to the Complainant’s rights.

8. Decision
In the light of the foregoing findings, namely that the Complainant has rights in respect of the trade mark which is identical 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, levis-strauss.co.uk be transferred to the Complainant.

Nick Rose