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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Mary Cohr SA v Altaire [2005] DRS 01937 (14 December 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/01937.html Cite as: [2005] DRS 01937, [2005] DRS 1937 |
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Decision of Independent Expert
Complainant: Mary Cohr S.A.
Country: France
Representative: Jane Mutimear
Bird & Bird
90 Fetter Lane
EC4A 1JP
Respondent: Altaire
Country: GB
marycohr.co.uk (the "Domain Name")
The complaint was entered on to the Nominet system on 3 August 2004. Nominet validated the complaint on 5 August 2004 and on the same day despatched a copy of the complaint to the Respondent. The Respondent filed a response on 1 September 2004 which Nominet forwarded to the Complainant the same day. No reply was received from the Complainant. On 18 October 2004 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").
I, Stephen Bennett, the undersigned, (the "Expert") have confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and have further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.
The Complainant is a French company. It appears from the supporting material submitted with the complaint that the Complainant's business includes the supply of cosmetic products under the brand name MARY COHR. The Complainant is the registered proprietor of the UK registered trade mark MARY COHR (number 1035950) in class 3 for "perfumes, preparations for the hair, shampoos, soaps, non-medicated toilet preparations, cosmetics, dentifrices, essential oils". This trade mark was applied for in 1974.
The Domain Name was registered on 4 October 1999. There is currently no site available at www.marycohr.co.uk, the screenshot supplied by Nominet shows an unavailable error at that address.
The nature of the Respondent's business is not entirely clear. From the response, it appears that the Respondent undertakes management of domain names on behalf of clients. The Respondent is the registered proprietor of the following .co.uk domain names: macmakeup.co.uk; fileofax.co.uk; consideritdone.co.uk; avenger.co.uk and tvtravelshop2.co.uk. The websites associated with the domain names tvtravelshop2.co.uk, avenger.co.uk, and consideritdone.co.uk resolve to an Altaire-branded page which states as follows: "You have reached this page because you located a domain name owned or maintained by Altaire. This are reserved for client domain names yet to be hosted, and our own domains which are work-in-progress. We will gladly refer any bids to purchase domain names to our clients. NOTE: email for such domains is currently disabled. For information on any domain name email [email protected]".
The Complainant and the Respondent had corresponded on the issue of the Domain Name in early 2001. The Complainant has produced a copy of a letter of 7 March 2001 from Altaire to the Trade Mark Owners' Association (then representing the Complainant) responding to a letter from the TMOA (a copy of that letter was not supplied). Having referred to an offer from TMOA to buy the Domain Name for £250, the letter states that the Domain Name "…is not currently for sale" . The letter also states that the Respondent has no intention of using the Domain Name in relation to "…perfumery or any associated products and services…" and claims this means there will be no trade mark infringement.
The Complainant's solicitors, Bird & Bird, wrote to the Respondent on 24 June 2004 asserting the Complainant's rights but offering to settle the matter by the Complainant paying the Respondent's documented out-of-pocket expenses. There appears to have been no reply to this letter.
Complainant:
The Complainant's case in relation to Rights relies upon its registered trade mark and a claim that the MARY COHR name is well known in the UK for cosmetics. In support of its case that the brand is well known in the UK, the Complainant submits searches from google.co.uk showing a large number of hits (on a "UK only" search) referring to the Complainant's MARY COHR branded products.
The well known nature of the MARY COHR brand means, says the Complainant, that the Respondent must have known of the brand when it registered the Domain Name incorporating that brand name. Accordingly, the Complainant claims that the Domain Name was registered either as a blocking registration or with the intention of selling it for profit.
The Complainant notes that the Respondent has made no use of the Domain Name for over 4 years. Whilst the Complainant acknowledges that non-use is not itself evidence of Abusive Registration under the DRS Policy, the Complainant asks that some weight is given to this aspect.
Finally, the Complainant alleges a pattern of abusive registration based on the other .co.uk domain names registered to the Respondent (macmakeup.co.uk; fileofax.co.uk; consideritdone.co.uk; avenger.co.uk and tvtravelshop2.co.uk). These domains are said to be identical to third parties' registered trade marks. The Complainant emphasises the text at the websites to which 3 of these domains resolve (quoted above) which states that the Respondent will refer any bids for the domain names to its clients. This, says the Respondent, shows an intention to wait for an opportunity to profit from the domain names rather than an intention to "…make fair use of the websites".
Respondent:
The Respondent states that it registered the Domain Name on behalf of a new client. All domain name registrations are made "…as a result of a legitimate request by a client or internal department". The Respondent states that it manages several thousand world wide domains and that it is not possible for the Respondent to monitor the legalities of every domain name it registers.
The Respondent states that it has no intention itself of using the Domain Name for perfumes cosmetics etc. The Respondent states that it has been unable to ascertain its client's intentions in relation to the Domain Name as its client has not responded. The Respondent then states "As per our terms and conditions and agreements with our clients we are able to take action against various failures of our clients. As per our demands to our client we have not received any reply. We are therefore in a position to offer the transfer of the domain marycohr.co.uk for the previously offered sum of £250 to cover previous registration costs and transfer costs". The Response goes on to state that if this offer does not resolve the matter costs are likely to increase and the Respondent will look to pass this increase on to any new owner.
Complainant's Reply
The Complainant has not replied to the response.
The fact that this case has come to DRS for a decision is puzzling. The Complainant had offered £250 for the Domain Name back in 2001. The offer was rejected at the time. However, following receipt of the Complaint, the Respondent offered to accept the £250 and to assign the Domain Name. It is difficult to see why this offer was not accepted. It was made at a stage before the DRS fee (£750 +VAT) had become due. Had the offer been accepted the DRS fee would not have been payable at all and the Complainant would have been certain to acquire the Domain Name. Whatever the reasons for the failure of a compromise, there has been no agreement, the fees have been paid and a decision is required.
In relation to the Respondent's offer to sell the Domain Name for £250, the Complainant has made no claim (by way of reply) that the offer itself amounts to evidence of abusive registration (as, for instance, an offer to sell for an amount in excess of documented out-of-pocket expenses). Given that the Complainant is represented, I will assume the Complainant does not intend to rely on the offer as evidence of Abusive Registration.
The Complainant has a registered trade mark for the words MARY COHR. That alone is sufficient to establish Rights in that name. The Complainant has also produced materials showing use of the MARY COHR brand on its products in the UK. This supports the claim to Rights in the MARY COHR name.
Accordingly, I find that the Complainant has Rights in the name MARY COHR and that the Domain Name is identical to the name in which the Complainant has Rights (the ".co.uk" suffix being ignored for these purposes).
An Abusive Registration is defined as follows:
"…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 or was unfairly detrimental to the Complaint's Rights"
The Complainant suggests that the Domain Name is an Abusive Registration in the hands of the Respondent on the basis that: the Respondent acquired the Domain Name with the intention of selling it for a profit or as a blocking registration. Alternatively, the Complainant states that the Respondent has engaged in a pattern of Abusive Registration by registering a series of domain names said to incorporate third party trade marks.
My opinion is that the Domain Name is an Abusive Registration in the hands of the Respondent. In the first place the name "Mary Cohr" is an unusual one (in the UK, at least). From the material supplied by the Complainant it would also seem that it is a name well known in the cosmetics business. The Respondent has put forward no reason for registration of the Domain Name other than claimed instructions from an unidentified client. In the absence of identification of the claimed "client" and an explanation of its alleged reasons for registering the Domain Name, I do not find that story very convincing. The story about the Domain Name having been registered for a client first appeared in the response. In the earlier correspondence in 2001, there was no reference to a "client". In fact the indications in the letter of 7 March 2001 were that the Domain Name had been registered for the Respondent's own benefit when the letter states "…I can confirm that we have no plans on using the domain name…". The implication is that it was the Respondent's plans which would determine how the Domain Name would be used not any claimed "client". On the material available to me, I believe the Domain Name was registered by the Respondent for its own benefit for the purpose of turning a profit by selling it to the Complainant or a third party for a sum in excess of the out of pocket costs associated with acquiring the Domain Name.
Certain of the other domain names registered by the Respondent confirm this view and also support a finding of the Respondent engaging in a pattern of Abusive Registration. The Complainant has not provided details of the third party trade marks which it says are incorporated in these domain names. The only ones I recognise as incorporating third party marks are macmakeup.co.uk and fileofax.co.uk (even though mis-spelt). I am not aware of the third party trade marks said to be incorporated in consideritdone.co.uk, avenger.co.uk and tvtravelshop2.co.uk nor has the Complainant indicated what they are. According to the Complainant (something not contested by the Respondent), all these domain resolved to a page operated by the Respondent which offered to refer bids to the Respondent's "clients". The Respondent's only explanation for these registrations is to say that all registrations are made on the basis of a request by a client or internal department. That is not a very convincing explanation. The reference to an "internal department" seems to be a rather mealy-mouthed way of saying that the domains may in fact be registered on the Respondent's own volition for its own benefit. Further, the mysterious clients have never been identified. The impression given is that these domain names were not registered for a client at all but for the Respondent's own purposes.
The overall impression given is that the Domain Name is one of at least 3 domain names (the others being macmakeup.co.uk and fileofax.co.uk) incorporating third party trade marks which the Respondent registered in the hope of selling at a profit. I consider that to amount to a pattern of Abusive Registration.
For the reasons set out above, I find the Domain Name to be an Abusive Registration in the hands of the Respondent.
Decision
The Complainant has Rights in the name "Mary Cohr" and the Domain Name is identical to the name in which the Complainant has Rights. The Domain Name is an Abusive Registration in the hands of the Respondent. The Domain Name should be transferred to the Complainant as requested.
______________________ _________________
Stephen Bennett Date