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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Infortrend Inc -v- Cognition Consulting [2004] DRS 1462 (19 February 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1462.html Cite as: [2004] DRS 1462 |
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Nominet UK Dispute Resolution Service
DRS 01462
Infortrend Inc -v- Cognition Consulting
Decision of Independent Expert
1. Parties:
Complainant: Infortrend Inc
Country: CN
Respondent: Cognition Consulting
Country: UK
2. Disputed Domain Name:
infortrend.co.uk (the “Domain Name”)
3. Procedural Background:
The Complaint in this case was lodged with Nominet UK ("Nominet") on December 12, 2003, with hard copies received in full on December 15, 2003. Nominet validated the Complaint on December 18 and notified it to the Respondent, giving him 15 working days within which to lodge a Response. The Respondent failed to respond on or before January 14, 2004. On January 20, 2004, Nominet wrote to the Parties confirming that it had not been possible to achieve a resolution of the dispute by informal mediation, and advising that the dispute would be referred to an independent expert for a Decision if the Complainant paid the appropriate fee by February 3, 2004. On January 30, 2004, the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").
On February 9, 2003, the undersigned, Christopher Gibson ("the Expert"), formally 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. Outstanding Formal/Procedural Issues (if any)
Paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”) requires the Respondent to submit a response to Nominet. In this case no such response has been received.
Under paragraph 15b of the Procedure, the Expert will proceed to a Decision on the complaint if, in the absence of exceptional circumstances, a party does not comply with any time period laid down in the Procedure or the Policy.
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 notwithstanding the absence of a Response.
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.”
In light of the absence of a Response in this case, it is necessary for the Expert to consider whether to draw any special inferences from the Respondent’s non-compliance with paragraph 5a of the Procedure. There are many reasons why a Respondent may not provide a Response and the Procedure does not require the Expert to speculate upon these. In the view of the Expert, if the Respondent does not submit a response the principal inference that can be taken is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration. This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate an Abusive Registration.
5. The Facts
The Complainant is an industry-leading manufacturer of cutting-edge storage systems and solutions, including RAID controllers. The Complainant has actively been trading under the name Infortrend since 1992. The Complainant is part of the Infortrend Group of Companies which has a world-wide presence, and is represented in the UK by Infortrend Europe Limited. The Complainant has had a trading presence in the UK under the name Infortrend since at least 1995, in the field of computer technology, storage systems and solutions. In addition, the Complainant owns registered trademarks of the word ‘Infortrend’ in the UK, US, Taiwan, Japan, France and Germany.
The Complainant’s US associated company is the registered owner of the domain name infortrend.com. The Complainant operates a web site promoting its products at the URL www.infortrend.com.
A Nominet WHOIS search shows that on September 9, 1996, the Respondent Cognition Consulting registered the Domain Name infortrend.co.uk. The Domain Name has been redirected to the site of Fibrenetix Group. Throughout the relevant period in this case, it is undisputed that when the Domain Name is entered into an Internet browser the following web site appears:
The Respondent did not file a Response.
6. The Parties' Contentions
Complainant
The Complainant submits that the Domain Name in dispute is identical or similar to a name or mark in which it has rights and that the Domain Name in the hands of the Respondent constitutes abusive registrations. The Complainant provides copies of its ‘Infortrend’ trade mark registrations, and asserts that it has acquired substantial goodwill in the name ‘Infortrend’.
The Complainant asserts that the Respondent’s registration of the Domain Name is abusive for the following reasons:
i. The Domain Name was registered in a manner, which, at the time when registration took place, took advantage of or was unfairly detrimental to the Complainant's rights. The Respondent has directed the Domain Name to the Fibrenetix Group web site at www.fibrenetix.co.uk, which belongs to Fibrenetix Storage Ltd. Fibrenetix Storage Ltd was formerly known as Infortrend Technology Europe Limited.
ii. Fibrenetix Storage Ltd was a former customer of the Complainant. There is no current relationship between the Complainant and Fibrenetix Storage Ltd. Fibrenetix Storage Ltd has never been authorised by the Complainant to register a company name using the ‘Infortrend’ mark or to register the Domain Name. The Complainant refers to a search result printout showing that Infortrend Technology Europe Ltd was refused registration of the ‘Infortrend’ mark as a Community Trade Mark. The Complainant suggests that this is due to the Complainant having prior rights in the ‘Infortrend’ mark.
iii. The Complainant asserts that Fibrenetix Storage Ltd and the Fibrenetix Group do not have any connection with the Complainant or any rights or licence to use the name ‘Infortrend’ or sell the Complainant’s products. The Complainant further asserts that the Fibrenetix Group directly competes with the Complainant. On this point, the Complainant makes reference to the Fibrenetix Group web site, where the Fibrenetix Group bills itself as a specialist in RAID solutions, and advertises RAID controllers and other storage systems and solutions of the Complainant's direct competitor, Accusys Europe Ltd.
iv. The Complainant suspects that the Respondent has some sort of connection with Fibrenetix Storage Limited, which influenced the Respondent's choice to register the Domain Name containing the Complainant's brand name. The initial registration of the Domain Name occurred without the Complainant's knowledge or consent.
v. The Complainant believes that the Respondent, by permitting the use and registration of the Domain Name in a way that allows the Domain Name to be directed to the Fibrenetix Group web site, is causing significant confusion to the Complainant's customers. Such customers are confused into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected to the Complainant, particularly as the Domain Name advertises similar and competing products to those provided by the Complainant.
vi. The Complainant believes that the registration is being used to divert business away from it to its competitors, namely the Fibrenetix Group and Accusys Europe Ltd, and that such use unfairly disrupts and adversely affects the Complainant's business.
The Complainant seeks the transfer of the Domain Name.
Respondent
The Respondent did not file a Response.
7. Discussion and Findings:
General
According to paragraph 2 of the Policy, in order to succeed in this Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities:
i. the Complainant has Rights (as defined in paragraph 1 of the Policy) in respect of name or mark which is identical or similar to the disputed Domain Name; and
ii. the disputed Domain Name constitutes Abusive Registrations (as defined in paragraph 1 of the Policy).
Complainant's Rights
The Complainant is the proprietor of the registered trade mark Infortrend, which, as discussed above, is a brand fairly well-known in the UK and abroad.
The Domain Name infortrend.co.uk comprises the word ‘Infortrend’ and the suffix ‘.co.uk’. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to disregard the domain suffix, which is of no relevant significance and wholly generic. The Expert therefore considers that the Complainant’s mark is very similar (and identical in the context of URL syntax) to the Domain Name.
Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of the registered trade mark Infortrend, which is identical or similar to the Domain Name.
Abusive Registration
Under the second factor above, the Complainant must prove on the balance of probabilities that the disputed domain name, in the hands of the Respondent, is an Abusive Registration. An “Abusive Registration” is defined in paragraph 1 of the Policy 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(a) of the Policy. Paragraph 4(a) of the Policy sets out how the Respondent may demonstrate in its Response that the domain name in issue is not an Abusive Registration. Those relevant to this case are discussed below.
3(a)(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.
Based on the evidence submitted by the Complainant, the Expert agrees that the Respondent has directed the Domain Name to the Fibrenetix Group web site and that the Complainant is in a similar line of business to the Fibrenetix Group. The Complainant has not adduced further evidence as to actual confusion leading to a belief that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. Nevertheless, the Expert considers it reasonable to infer that members of the public who searched the web by use of the Domain Name are expected to find a website connected with the Complainant’s business and not connected with the Fibrenetix Group’s business. The Expert therefore finds that the Domain Name is being used or likely to be used in a manner likely to cause confusion to the Internet users and that the Domain Name would be enforceable under the English Common Law action of passing off.
The Respondent has not submitted a response showing that the Domain Name is not an Abusive Registration. The Expert does not accept that the Domain Name is generic and is not convinced that the Respondent has been making fair use of the Domain Name throughout the relevant period in this case. Although it is not clear what the Respondent’s connection with the Fibrenetix Group is precisely, the Expert finds that there is a strong inference to be drawn that the Respondent, in registering the Domain Name infortrend.co.uk and redirecting it to the Fibrenetix Group site, was making it possible for the Fibrenetix Group to capitalise upon the goodwill attaching to, in this case the Complainant’s, name and reputation. On the evidence before me, the Expert is persuaded that the Domain Name has been registered and used by the Respondent in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.
3(a)(i)(B): Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name as a blocking registration against a name or mark in which the Complainant has rights.
Based on the records in the case, the Expert finds that the name Infortrend is so unique, particular and well-known in the field of computer storage systems and solutions that it is plainly one in which the Complainant has clear and obvious rights. The Expert also finds it highly probable that, the fact that the Complainant would legitimately desire to register the Domain Name that is very similar to its brand name and trade mark Infortrend, would have been obvious to the Respondent at the time of registration.
There is no evidence that the Respondent has been commonly known by the name nor that it is legitimately connected with a mark which is identical or similar to the Domain Name. The Expert has no difficulty in finding that the Respondent has no legitimate connection with the Infortrend name and that it had obtained no proper authorization from the Complainant. Furthermore, the Respondent has not presented any evidence showing that it has made fair use of the Domain Name. In fact, the Domain Name has been redirected to the site of the Fibrenetix Group (the Complainant’s business competitor) at www.fibrenetix.co.uk.
Consequently, the Expert finds that, on the balance of probability, the registration of the Domain Name was a blocking registration, and accepts that the Domain Name was registered by the Respondent “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.”
The Expert therefore concludes that it has been established, on the balance of the probabilities, that the Domain Name in the hands of this Respondent must be considered an Abusive Registration.
8. Decision
The Expert finds that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the disputed Domain Name, infortrend.co.uk, be transferred to the Complainant.
Christopher Gibson
Date: 19 February 2004