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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> 800 Contac Ltd & Phonenames Ltd -v- Iris Online Ltd [2004] DRS 1404_Appeal (02 March 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1404_Appeal.html Cite as: [2004] DRS 1404_Appeal

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0800 Contac Limited and Phonenames Limited -v- IRIS Online

Nominet UK Dispute Resolution Service

DRS 01404

Decision of Appeal Panel

Dated 2004

Parties

Complainants:

800 Contac Limited and Phonenames Limited

UK

Respondent:

Iris Online Limited

UK

Domain Name

O8OOCONTACTS.CO.UK

Procedural Background

On 17 November 2004 the Complaint was lodged with Nominet in accordance with the Dispute Resolution Service Policy ("the DRS Policy") and hard copies of the Complaint were received in full on 18 November 2004.

On 15 December 2004 an electronic Response was received by Nominet.

On 23 December 2004 the Complainants filed a Reply, hard copies received on 24 December 2004.

On 3 February 2004 Mr Robert Elliot was selected as the Expert having confirmed his independence and willingness to act.

The Expert had regard to one non standard submission of the Respondent dated 18 December which corrected an error in the Response.

On 19 February 2004 the Expert issued his Decision in which he held that "the Domain Name is not an Abusive Registration in the hand of the Respondent" and declined to order the transfer of the name to the Second Complainant.

On 1 March 2004 the Complainants lodged this Appeal.

On 2 March 2004 the undersigned Panellists, Dawn Osborne, Clive Thorne and David King were appointed to form the Panel of Appeal ("the Panel"), all three having confirmed their independence and willingness to act.

Factual Background

The background to the matter was summarised by the Expert and is substantially as follows.

The Complaint was filed on behalf of two Complainants. The First Complainant is a wholly owned subsidiary of the Second Complainant. The First Complainant entered into a Licence Agreement with a third party for the use of an alphanumeric phone name and a trade mark which are referred to below.

The Second Complainant registered a number of alphanumeric telephone numbers ("phone names") and a number of trade marks. It had been developing a business over the last 9 years in licensing and franchising the phone names and associated trade marks, domain names and company names.

The Second Complainant has subscribed to the phone name 0800 CONTACTS since 1994, but did not volunteer to the Expert when the name was activated. The Respondent speculated that this was 2002 (and this has been confirmed by the Complainant in this Appeal). It should be noted that in practice only 0800 CONTAC need be dialled for the relevant business connected to the number to be reached. The Second Complainant also registered 800 CONTAC as a UK registered mark on 10 February 1995 and had a pending application to register 800 CONTAC as a Community Trade Mark dating from 6 December 2002. The Second Complainant set up the First Complainant 800 Contac Limited but did not give a date for this, the Respondent believes it was only incorporated on 6 December 2002.

There is a licence agreement between the First Complainant and an optician's business who answer any calls 0800 CONTACTS. The Respondent has confirmed that the line is answered by an independent optician's business in Hertford.

The Respondent has been selling replacement contact lenses by mail order since summer 1999. The Respondent purchased a free phone number which can be used as the alphanumeric 08000 CONTACTS, although again only the first six numbers after the 0800 need in practice be dialled. It also incorporated a company 08000 Contacts Limited. It obtained a UK registered trade mark for a device including 08000 CONTACTS.

The Domain Name was registered on 14 November 1999 by the Respondent which also registered 08000contacts.co.uk which redirects to the same web site as 0800contacts.co.uk. It also uses 800contacts.co.uk.

The Decision under Appeal

The Expert treated the Second Complainant as the effective Complainant as it owned the 0800 Contacts phone name and 0800 CONTAC UK Registered mark.

Taking account of the fact that an alphanumeric phone name is not registrable as a trade mark in the UK, that "contacts" is descriptive of the product sold by the Complainant's licensee and the paucity of use demonstrated by the Complainants the Expert thought that the Complainants had not demonstrated Rights within the meaning of the DRS Policy in the phone name itself. However the UK registered trade mark 800 CONTAC gave the Second Complainant Rights enforceable in English Law sufficient to satisfy Paragraph 2 of the DRS Policy. The Expert found that the trade mark 800 CONTAC was similar to the Domain Name and so was satisfied that the Second Complainant had established that it had Rights in a name or mark 800 CONTAC which was similar to the Domain Name.

The Respondent set up business in 1999 and the Second Complainant produced no evidence of trading or other use of the 0800 CONTACTS phone name or the 800 CONTACTS mark before 2002. The Complainant suggested the Respondent should have been aware that 0800 CONTACTS phone name had already been subscribed to. The Respondent said it was ignorant about this as although it knew the phone number 0800 266 822 was taken it had no idea it had been taken for use as an alphanumeric or if it had, that the alphanumeric would be CONTACTS as there would have been several combinations of letters which would fit into the number, three or four letters being allocated to each number on a telephone keypad. The Expert found that there was no suggestion that the Respondent knew that the Second Complainant was the subscriber or that it had intentions to licence the name to an opticians, since the Second Complainant was not using the 0800 CONTACTS phone name until 2002. Also because of the non use the Complainants had not established that the use of the Domain Name by the Respondent between 1999 and 2002 had confused people into believing that the Domain name was registered to and/or authorised by the Complainants. Accordingly the Expert did not agree that the Respondent's Registration and use before 2002 was an Abusive Registration within the meaning of the Policy.

The Complainants also alleged that the continued use of the Domain Name after 2002 when it became aware of the 0800 CONTACTS phone name constituted an Abusive Registration in itself. The Expert disagreed holding that by 2002 the Respondent had more than 2 years trading behind it including use of the Domain name in relation to its site. He held that any confusion caused in the marketplace was likely to be as a result of the recent entry of the Complainant's licensee into the market using a phone name very similar to that which had been used by the Respondent since 1999. He also held that such confusion did not arise out of any intention on the part of the Respondent to use the Domain Name in a way which might confuse people into believing that the Domain Name was registered to or other wise connected with the Complainants. Accordingly, he held that the Complainants were not correct in their assertion that the Respondent's conduct after 2002 made the Domain Name an Abusive Registration.

The Parties' Submissions on Appeal

Complainant

The Complainant makes the following submissions:-

1. The Complainants' Rights in the phone name included the right to prevent third parties from interrupting the use of their phone name e.g. under Section 1 of the Protection of Harassment Act 1997 and under the laws of nuisance.

2. There is no requirement for use of the Complainants' mark.

3. There has been no attack on the validity of the 800 CONTAC mark including non use.

4. The 0800 CONTACTS phone name was acquired in 1994. Due to the embryonic nature of the market, regulatory issues and the uncertainty caused by the 0800 Flowers case which went to the House of Lords, the Complainant was not in a position to promote a business using the phone name 0800 CONTACTS until 2002.

5. In the High Court appeal of the Hearing Officer's Judgement re the 800 FLOWERS mark Jacob J found that "the use of the trade mark was therefore bound to cause confusion and deception unless the applicants themselves obtained the [0800 FLOWERS] number." The Court of Appeal concurred with Jacob J. In his judgement in the Court of Appeal Jonathan Parker LJ stated that "the potential for confusion and deception arises not from the fact that the number was subsequently allocated to the opponent, but from the fact that the Applicant has never had it". Accordingly, the use of the domain name is bound to cause confusion and deception unless and until the Respondent itself obtained the number.

6. The Respondent's explanation that it was oblivious to the fact that the Complainants had already subscribed to 0800 Contacts in 1999 is not credible. The Respondent would have been well aware when it acquired the Domain Name that 0800 is the UK free phone code not 08000 and would have been told that the 0800 number was not available. A sensible businessman would have asked if the 0800 CONTACTS name had been allocated on discovering it was not available. The Complainant suggests that the Respondent asked about 0800 Contacts and after finding out that it was not available decided to register 0800 0CONTACTS which is a distortion of 0800 CONTACTS. The Respondent has caused confusion by registering a Domain Name which is associated with the pure free phone name which it does not have, so that it can benefit financially from the confusion that will arise and disrupt the Complainants' ability to compete with the Respondent's 08000 CONTACTS business on the Internet.

7. Mr Scher of the Respondent and his business partner have marketing and advertising backgrounds and also subscribe to 08000 RECRUIT and 08000 FLIGHTS. The Second Complainant has subscribed to the 0800 RECRUIT phone name since about January 1998. The 0800 FLIGHTS telephone number has been used by a company called Manchester Flights Limited since at least 1997 and they have the domain name 0800flights.co.uk registered in 1998. There is therefore a pattern of registering 08000 telephone numbers in the knowledge that a third party has already subscribed to and has rights in the associated 0800 phone name.

8. Even if it is correct that the Respondent acquired the Domain Name oblivious to the fact that 0800 CONTACTS had been allocated, the reasoning of the Appeal Judge in 0800 CONTACTS applies and confusion arises from the fact that the telephone number does not belong to the Respondent.

9. With regard to the Complainants' 0800 CONTAC mark, as Jacob J said I the 0800 FLOWERS case "once people became aware that 0800 (word) marks worked, they would inevitable see this mark as the 0800 (word) with the zero missing". Therefore confusion is inevitable because the Respondent does not subscribe to the UK 0800 CONTACTS free phone number.

10. The confusion is not caused by the Complainant's recent entry into the market. Some people may have rung 0800CONTACTS after typing in the Domain Name as a URL and expecting the business on the telephone to be the same as the one on the Internet. This is caused by the Respondent's registration of the Domain Name.

11. There is no requirement for intention on the part of the Respondent to cause confusion under the DRS Policy as the Expert suggests. The fact that confusion arises is sufficient to evidence that the Domain Name is an Abusive Registration.

Respondent

The Respondent has not submitted a Response to the Appeal.

Discussion and Findings

Under Paragraph 2 of the DRS Policy a Complainant must show that:

i the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii the Domain Name, in the hands of the Respondent is an Abusive Registration.

The Second Complainant has a UK registered trade mark for 0800 CONTAC and the Expert Panel agrees with the Expert that this is similar to the Domain Name. It differs from the Domain Name only by two letters and is phonetically and visually similar thereto. Accordingly, the Second Complainant has shown that it has Rights in respect of a name which is similar to the Domain Name. (There is, therefore no need to comment on the Complainants' contentions that Rights could include the right to prevent third parties from interrupting the use of their phone name e.g. under Section 1 of the Protection of Harassment Act 1997 and under the laws of nuisance.)

Crucially, however, the Expert Panel agrees with the Expert that since a descriptive alphanumeric phone name is not registrable as a trade mark in the UK and "contacts" is descriptive of the product sold by the Complainant's licensee and the Respondent, the Complainants have not shown that they own Rights in the 0800 CONTACTS phone name. The Court of Appeal in the 0800 Flowers case upheld the Judge at first instance's finding that such a descriptive alphanumeric phone name is inherently incapable of distinguishing goods and services of one undertaking from those of another.

The real question is whether the Respondent's registration or use of the Domain Name is Abusive.

The relevant parts of Paragraph 3 of the DRS Policy include:

a "A non exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows: …

(ii) 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;

(iii) In combination with other circumstances indicating that the Domain Name in Dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making abusive registrations.

(Our emphasis in bold on the word "may".)

The Appeal Panel is of the view that the Domain Name cannot be Abusive merely by virtue of causing confusion as the Complainants contend because in these circumstances, where it is being used in connection with a phone related service supplying contact lenses, the domain name 0800CONTACTS.co.uk cannot serve to distinguish the Complainants' goods and services from similar goods or services being supplied by another third party.

In these circumstances, where the name used by the Complainants is incapable of distinguishing its business from another similar business, it does not matter if the Respondents knew about the Complainants or not. The Respondent was perfectly entitled to choose a generic domain name for its goods and services. It also, therefore, makes no difference that the Respondent discovered the existence of the Complainants in 2002. Finally, and for similar reasons the fact that the Respondents have registered a number of similar descriptive alphanumeric phone names in different areas of business is also irrelevant. It is not Abusive Registration to register purely descriptive domain names in this way.

Decision

In the result the Panel finds that the Expert came to the correct conclusions, albeit by slightly different reasoning and the appeal is dismissed.

_______________________

Dawn Osborne

_____________________ ____________________

Clive Thorne David King