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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Onken Dairy (UK) Ltd -v- Jenkins [2004] DRS 1636 (28 May 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1636.html Cite as: [2004] DRS 1636 |
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Nominet UK Dispute Resolution Service
DRS 01636
Onken Dairy (UK) Limited -v- Chris Jenkins
Decision of Independent Expert
1. Parties:
Complainant: Onken Dairy (UK) Limited
Country: UK
Respondent: Chris Jenkins
Country: UK
2. Disputed Domain Name:
onken.co.uk (the “Domain Name”)
3. Procedural Background:
The Complaint in this case was lodged with Nominet UK ("Nominet") on March 17, 2004, with hard copies received in full on March 18, 2004. Nominet validated the Complaint on March 23, 2004 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 April 14, 2004. On April 19, 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 May 4, 2004. On April 26, 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 April 27, 2004, 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.
On 19 May 2004 the Expert requested that Nominet, in accordance with Clause 13 of the DRS Procedure, send to the parties a request for further information concerning why the Domain Name had been linked to the web site of “3s architects LLP,” a company as to which it appears neither party has any connection. Responses to this request were received from both of the parties before the deadline of 25 May 2004. The Expert addresses these responses in his discussion below.
5. The Facts
The Complainant is the UK subsidiary of Onken GmbH, a well-known dairy producer based in Germany. A trademark search at www.patent.gov.uk shows that Onken GmbH owns the trademarks ‘onken’ and ‘Onken’. The Complainant has had a trading presence in the UK under the name Onken since around 1988.
The Complainant is the registered owner of the domain name onkendairy.co.uk. The Complainant operates a web site promoting its yogurt and dessert products at the URL www.onkendairy.co.uk. A Companies House search result shows that the Complainant was incorporated on October 6, 1987.
A Nominet WHOIS search shows that on September 12, 2003, the Respondent Chris Jenkins registered the Domain Name onken.co.uk.
The Respondent did not file a Response, although he did reply to the request for additional information.
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 contends that the Domain Name is confusingly similar to its trading name and the mark ‘Onken’ that is featured in the company logo and all its product packaging. The Complainant contends that this is causing serious confusion to its customers. The Complainant has also stated that the Domain Name was previously registered to the Complainant, although it is not clear why that registration lapsed.
The Complainant alleges that the Respondent is trading at www.anames.co.uk, and that the Respondent is trying to sell the Domain Name presumably at a profit.
The Domain Name has been redirected to the “3s architects LLP” site at www.johnonken.co.uk (see below), although the Complainant points out that it was re-directed to this web site only after the dispute had arisen. The Complainant states that it was informed of this change by one of its suppliers, and that it has had no contact with those persons associated with the 3s architects LLP comapny:
Before notice of the dispute, the Complainant maintains that the Domain Name was linked to the Respondent’s “domains for sale” website at www.anames.co.uk.
The Complainant seeks the transfer of the Domain Name.
Respondent
The Respondent did not file a Response, but submitted a reply to the Expert’s request for additional information. The Respondent has stated that, although he acknowledges the rights of the Complainant and those covered by the Complainant’s UK trademark registrations, such trademark rights do not give the Complainant exclusive rights to use the name ONKEN. The Respondent admits that he “linked the domain to the web site of John Onken Architecture to demonstrate that another party could legitimately use the Domain Name.”
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 has traded under the name ‘Onken’ in the UK since around 1988 and has undoubtedly have acquired a trade reputation in that time. The Expert considers it reasonable to infer that the Complainant has goodwill in the name and mark ONKEN sufficient to mount an action for passing off that name or mark. In addition, the Complaint’s parent company Onken GmbH is the proprietor of the registered trade mark ONKEN, which is a brand fairly well-known in the UK and abroad.
The Domain Name onken.co.uk comprises the word ‘onken’ 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 mark ONKEN, 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)(i)(A): Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant . . . for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name.
The Complainant alleges that the Respondent is trading at www.anames.co.uk, presumably because the Respondent has the same address as that stated on the anames.co.uk site. This site appears to be operated by a dealer in domain names, who holds a portfolio of domain names with a view to resell for a profit. The Expert has confirmed through a Whois look-up that the Respondent is indeed the registrant of the domain name, anames.co.uk, and is therefore responsible for the anames.co.uk domain name and somehow connected to, or responsible, for the content of that site.
The Complainant has also alleged that the Respondent had listed the Domain Name for sale before redirecting it to the 3s architects LLP web site after the dispute arose. There is evidence in this case to support a finding, on the balance of probabilities, that the primary purpose of the Respondent’s registration of the Domain Name was to eventually sell or otherwise transfer the Domain Name to the Complainant or another business, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly associated with acquiring or using the Domain Name. In this case, applying this particular factor, the Expert’s is persuaded that, on the balance of the probabilities, the Domain Name “in the hands of the Respondent,” as opposed to being held by some other third party, is an abusive registration.
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.
There is no evidence that the Respondent has been commonly known by the name Onken 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 Onken 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. Instead, the Respondent admits that the Domain Name has been redirected to the 3s architects LLP site, a company with which it has no connection, by linking directly to www.johnonken.co.uk after the dispute arose. The Respondent seems to suggest that it re-directed the Domain Name almost as a form of protest to show that anyone should be able to hold the name and the Complainanat does not have a monopoly on it. However, prior to this time, the Domain Name was for sale on the Respondent’s web site. The Expert does not credit the Respondent’s assertion that it had an altruistic purpose for the Domain Name or was otherwise intent on making fair use of it.
Further, based on the evidence submitted by the Complainant, the Expert finds that the name Onken is unique, particular and well-known in the European dairy market, such that the Complainant has clear and obvious rights. The Expert also is persuaded 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 Onken, would have been known to the Respondent as a dealer in domain names at the time of registration.
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, onken.co.uk, be transferred to the Complainant.
Christopher Gibson
Date: 28 May 2004