Atek Inc v Aria Technology Ltd [2005] DRS 02364 (9 May 2005)

Nominet UK Dispute Resolution Service

DRS 02364

ATEK, INC. v. ARIA TECHNOLOGY LIMITED

Decision of Independent Expert

1.	Parties: 

Complainant:		ATEK, INC.
Country:		US

Represented by:		Anderson & Associates

Respondent:		Aria Technology, Limited
Country:		GB

2.	Domain Name:

atek.co.uk (“the Domain Name”)

3.	Procedural Background:

The complaint was received by Nominet in full with hardcopies on 9 February, 2005.  Nominet validated the complaint and informed the Respondent, by both letter and by e-mail on 14 February, 2005, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 8 March, 2005) to submit a Response. A Response was duly received on 8 March, 2005, although this was not in a form properly compliant with the DRS Procedure. Nominet forwarded this Response to the Complainant on 8 March, 2005, giving the Complainant until 17 March, 2005 (subsequently extended to 18 March, 2005 owing to Processing delays) to file a Reply. A Reply was received and entered on 18 March, 2005 and copied on to the Respondent on the same day. The parties were invited to participate in Informal Mediation in the period 23 March – 8 April, 2005. The Complaint was not resolved by Informal Mediation, and on 11 April, 2005 Nominet invited the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly paid and was received by Nominet on 15 April, 2005.

On 15 April, 2005, Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as Expert on the 20 April, 2005.

A non-standard email submission (not formally compliant with Rule 13(b) of the DRS Procedure) was received by Nominet from the Complainant on 20 April, 2005.

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

The Expert has reviewed the non-standard submissions from the Respondent and the Complainant and has taken them into consideration, subject to the observations below on their merits.

5.	The Facts:

The Complainant was originally incorporated on March 14, 1996, as ATEK ELECTRONICS, INC. under the laws of the State of California, USA. During the year 2002, the company was renamed as ATEK, INC. 

It is the owner of two United States trademark registrations for ATEK, including: 
(i)	Registration No. 2,564,858 for the mark Atek (stylised word mark) filed on February 21, 1999, and registered with the U.S. Patent & Trademark Office on April 30, 2002, with respect to computer parts and accessories in International Class 009; and 
(ii) 	Registration No. 2,704,493 for the mark ATEK (word mark) filed on July 1, 2002, and registered on April 8, 2003 with respect to computer parts and accessories, namely; computer input devices, namely computer mice and computer remote controls, adapters and components for personal digital assistants and computers, namely input/output and memory card adapters, computer cables, cable assemblies comprised of connectors, adapters and cables, cable connectors and electrical connectors, power protection devices, namely uninterruptible power supplies, computer signal repeaters and computer hubs for interfacing peripheral devices to computer ports in International Class 009. 

Since 1996, Complainant has also registered several top-level domain names containing the term "ATEK," including atek.com (dating from 2001), atekelec.com (dating from 1996), atek2000.com (dating from 1999), atek3000.com (dating from 2003).

The Respondent, Aria Technology Limited, was incorporated in the UK in July 1997.  It trades in computer-related products from its principal website at www.aria.co.uk. 

The Respondent itself has a number of UK trade mark registrations, and had a UK trade mark application 2363085 for the mark Atek (stylised series of 3) dating from 12.05.2004, which was refused as of 24.03.2005 on relative grounds (according to the UK Trade Marks Registry online record).

From the WHOIS records, the Domain Name atek.co.uk was registered directly by and for Aria Technology Limited on 19 April, 2004.

6.	The Parties’ Contentions:

Complainant:

The Complaint and the statements therein were supported by an affidavit provided by the President of Atek, Inc. 25 Exhibits, together with a further affidavit provided by the Complainant’s attorney with an additional 5 Exhibits.

The Complainant alleges that the Domain Name in dispute is identical or confusingly similar to a name or mark in which Complainant has exclusive or substantially exclusive rights. 

The Complainant asserts that it has rights in respect of a name or mark which is identical to the Domain Name www.atek.co.uk [sic] because: 
(1) it is the owner of two United States trademark registrations for ATEK, as noted above.: 
(2) it owns several top-level domain names containing the term ATEK, including www.ATEK.com, www.ATEKelec.com, www.ATEK2000.com, and www.ATEK3000.com, which are either identical or confusingly similar to the Domain Name in dispute: www.atek.co.uk; and, 
(3) Complainant has used the mark ATEK for its sales of computer parts and accessories including computer mice in International Class 009 since at least April 15, 1996 and has been directly marketing and selling ATEK-branded goods on the U.K. market since 2002, much earlier than Respondent's domain registration. 

Since April 15, 1996, Complainant has offered and sold ATEK-branded goods in the U.S. and elsewhere, in conjunction with computer parts and accessories, computer cables and connectors, computer input devices, computer mice and computer remote controls, adapters and components for personal digital assistants and computers, input/output and memory card adapters, computer cables, cable assemblies, electrical connectors, power protection devices, power supplies, computer signal repeaters and computer hubs for interfacing peripheral devices to computer ports.

On or about April 10, 2001, Complainant acquired the domain name www.atek.com which has been used continuously since May 2001 to promote the sale of the ATEK-branded computer components and accessories. At www.atek.com, Complainant has listed several of its U.K. wholesalers, distributors and retailers, including Expansys UK (www.expansys.com), Widget UK Ltd. (www.widget.co.uk); Portable Computing Solutions PLC (www.portable.co.uk); the Digital Centre (51 Tottenham Court Road, London); and Procom (239-240 Tottenham Court Road, London). 

Since June 21, 2002, Complainant has been continuously using the ATEK mark in the U.K. by offering and selling to UK distributors, retailers and end-user customers Complainant’s ATEK-branded goods, as shown by 12 representative Invoices for ATEK-branded products shipped to its UK distributors.

Portable Computing Solutions PLC, Complainant’s authorized distributor in Basingstoke Hants, has advertised the ATEK-branded products online at www.portable.co.uk along with several favourable independent product reviews that had been published in trade journals, including PC World, Network World and MacAddict. It has also advertised the ATEK-branded products in its 2003 print catalogue.  Similarly, Expansys UK Limited has advertised a variety of ATEK-branded products on its website.  Widget UK Ltd., another UK distributor, has advertised ATEK-branded products on its website www.widget.co.uk. 

Thusly, Complainant is the proprietor of common law trademark rights in the name “ATEK” which is distinctive of the Complainant with respect to computer accessories and parts. It is known to the UK distributors and consumers by this name. Its website uses this name as a business identifier. According to Supply Desk Limited v "Capstan"/Capita Business Services Limited, DRS 00859, "[t]his type of use can be sufficient to establish rights in passing off under English law." In that case, the Complainant relied on use of the name "supply desk" as its trading name to establish rights in that name. The Panel held that this is the type of use which is capable of establishing goodwill and reputation in a name for the purpose of establishing a case in passing off.) See also Turner Engineering –v- Europower UK Limited, DRS 00813. 

Due to the fact that (1) Complainant has secured the trademark registrations of ATEK in United States; (2) Complaint owns several top-level domain names containing the term "atek," including www.atek.com, which are accessible to the United Kingdom customers; (3) Complaint has the long-standing senior use of the ATEK mark on the United Kingdom market in International class 09; (4) Complaint has been actively promoting its ATEK-branded products in United Kingdom through its distributors, the Complainant has Rights in the name or mark ATEK in United Kingdom. 

The Domain Name, in the hands of the Respondent, is an Abusive Registration: 

Complainant alleges that Respondent's registration is abusive because it has registered www.atek.co.uk primarily: 1) for the purpose of unfairly disrupting the business of the Complainant; 2) in a manner that it has actually caused at least five independent instances of public confusion concerning the Complainant; and 3) as a blocking registration against a name or mark in which the Complainant has Rights. 

Unfair Business Disruption 

Complainant alleges that Respondent registered the mark primarily for the purpose of unfair business disruption, inasmuch as both Complainant and Respondent are engaged in the competitive business of selling computer components and the Domain Name was registered to attract prospective customers of Complainant. The hyperlinks on www.atek.co.uk resolve to Respondent's primary website, www.aria.co.uk. 

On information and belief, on April 19, 2004, Respondent registered the domain name www.atek.co.uk which it has used since August, 2004, to offer and sell computer components, namely a wireless keyboard and mouse package under the product identification of KEY-MCK-9000-ATEK. On information and belief, prior to adopting such product identification, Respondent knew that Complainant had been using the ATEK mark with respect to computer components and accessories.

Respondent does not appear to genuinely offer any goods bearing the ATEK mark on www.atek.co.uk. A search of both www.aria.co.uk and www.atek.co.uk reveals that it only sells one product bearing the ATEK mark. Even this product does not seem to use ATEK as a source identifier—the ATEK term is only a part of the catalogue number "KEY-MCK-9000ATEK." Other than this single product associated with the term ATEK, no other ATEK-branded goods are offered by Respondent. 

Other than using the ATEK name for such product identification, Complainant has found no evidence that would suggest that Respondent has any rights to the ATEK mark, and further notes that Respondent Aria Technology, Ltd. is not commonly known by the name ATEK and its use of ATEK has only caused actionable confusion with respect to ATEK Inc.’s trademarks. The www.atek.co.uk website is used merely to attract Complainant’s potential customers to its www.aria.co.uk website. Respondent’s website at www.atek.co.uk looks exactly the same as www.aria.co.uk, and shares the same background layout, designs, graphics and displays the same prominent ARIA logo. All the hyperlinked terms on www.atek.co.uk are directed to www.aria.co.uk, including those hyperlinked "buttons" essential to an online store. 

In this case, Respondent knowingly "copied" a competitor's trademark as its own domain name to cause consumer confusion and to attract its competitor's online traffic to its primary website. Thusly, Respondent's registration was primarily for the purpose of disrupting Complainant's business. 

Such a conclusion is further supported by the fact that Respondent's UK trademark application of ATEK, which was filed on May 12, 2004 (Application No. 2363085), shares almost identical design as Complainant's registered trademark. (Registration No. 2,564,858) The striking similarity between the two can only be explained by direct copying and a specific intent to cause consumer confusion.  

Considering that: 
a) Complainant has sold goods bearing its registered ATEK mark(s) since 1996 in the USA and has sold same goods on the UK market since June 2002; 
b) Respondent registered www.atek.co.uk on April 19, 2004; 
c) Respondent sells only one product (a wireless keyboard and mouse) on its www.atek.co.uk website; and 
d) All the hyperlinked terms on website www.atek.co.uk resolve to www.aria.co.uk, 
e) Respondent’s use of the www.atek.co.uk has already caused at least five cases of actual consumer confusion in the UK; 
it is evident that Respondent's primary purpose to register www.atek.co.uk is not to engage in normal business, but to attract Complainant's potential customers and to unfairly disrupt Complainant's business. 

Actual confusion 

As Respondent has purposefully registered domain name which is the same or similar to Complainant's mark, it has caused actual confusion among UK consumers. Complainant has received numerous e-mail messages from UK consumers seeking customer support for defective goods sold by Respondent. 

Blocking Registration 

Respondent has registered the Domain Name as a blocking registration against Complainant rights in ATEK. 

Before its registration, Respondent knew or should have known that Complainant had been doing business under the mark ATEK in UK. In a letter dated October 7, 2004, Respondent's representative admitted that his company was previously aware of Complainant's usage of the mark in US. "We are grateful to you for bringing your client's activities within the United Kingdom to our attention as we hitherto only believed their products to be sold within the United States." In fact, Complainant has been doing business in UK since 2002. Complainant sells products through a top level domain name, www.atek.com, which specifically lists its several retailers in UK. 

Moreover, Respondent failed to use ATEK as a mark on the website www.atek.co.uk. All the links are resolved to www.aria.co.uk. 

Due to the above reasons, the Respondent's primary purpose for registration is to block Complainant's registration.

The Complainant asks for the Domain Name to be transferred to it.

Respondent:

The Respondent filed a non-standard Response with a number of Exhibits.  In the Response, the Respondent asserted:

Aria Technology Limited is a major supplier of PC compatible computer components, peripherals and complete systems. The Company supplies tens of thousands of individuals, companies, public utilities and local and central government each year across the UK and into Europe each year. Our large client list includes the BBC, BP, Shell, JJB Sports, the Ministry of Defence and Formula 1 racing teams.

Aria Technology is both a retailer and a wholesaler and was established in Manchester in 1993. The company is one of the highest profile major IT retailers in the country and has just completed a move to a purpose built new headquarters building which was opened by Sir Gerald Kaufmann MP in October 2004. Our ongoing success story was featured in a large article in The Sunday Times business section on the 20th February this year. As a part of its policy to provide the very best both in service and sales the company has secured the internationally recognized trading standard for quality EN ISO 9001:2000.

We own a portfolio of nearly 200 domain names. Some of these are wholly generic domain names such as hard-discs.co.uk, GraphicsCards.co.uk and FlatScreenMonitors.co.uk and others that underpin our valuable brand marks with various permutations such as aria.co.uk, aria.me.uk, AriaTechnology.co.uk, AriaTek.co.uk and atek.co.uk. Aria Technology Limited are full members of Nominet UK and authorised tagholders. 

As retailers and wholesalers we are in the position where we sometimes compete with our wholesale customers on a retail level. For this reason in 1995 many of our customers started asking for a “non aria” badge for our own branded goods, that until then had the “Aria” or “Arianet” badge on. As we are called Aria Technology, we thought that the name “Atek“ would combine a subtle link to our main brand but at an arms length from the point of view of a retailer buying from us who did not want “Aria“ emblazoned all over his stock. The name “Atek” was chosen because it is a short pronunciation of AriaTech.

We have common law rights in the brand “Atek” in that we are a nationally known retailer that have been selling products with this name before 1996. We attach several letters from some of our customers confirming that we have supplied our atek products to them from well before 2002.

We filed a trademark registration application for this brand mark on the 12th May 2004 with the United Kingdom Patent Office. This has already been examined by the Patent Office and is awaiting approval. After Atek Incorporated’s initial bullying approach to us to try and hijack the domain from us, they then filed their own application many months later.  

We currently offer the lowest price of any other major online retailer in the country on our Arianet (“Arianet” is the retail version of “Atek”) range of TFT monitors as independently verified by The Inquirer and these monitors are going to be available to our trade customers as Atek. We have made a substantial investment in this brand and for a company to come along years later and suddenly decide they want our brand name is simply absurd.

The cornerstone of the claimant’s case is based upon their proprietorship of a U.S. Federal trademark issued by the United State Patent and Trademark Office. Many American corporations labour under the amusing misapprehension that US trademark registrations cover their intellectual property rights Worldwide. This of course is not the case. To secure and enforce rights in other jurisdictions companies must of course assert and register their rights in every jurisdiction in which they intend to operate. 

Atek Incorporated claim to have been supplying the UK market since 2002 although as major IT retailers and close market watchers we had never heard of them until very recently. Whilst we have selling Atek branded products prior to 1996, Atek’s domain name was being used until April 2001 as an individual’s home webpage to disseminate recipes for Martinis and other assorted alcoholic beverages. Please see the Wayback archive site for the evidence http://web.archive.org/web/20010404213832/http://www.atek.com/

The complainant has clearly decided to expand their existing domestic market over to Europe and has realised that we could take future legal action to enforce the intellectual property rights that we have vested in the “Atek” brand. This DRS action is a blatant and totally dishonest attempt at a pre-emptive strike calculated at bullying us into giving up our legitimate rights in the “Atek” brand name and to prevent us from taking action against Atek Incorporated at sometime in the future. It is our position that this is the most frivolous case that ever seen under this procedure and we respectfully ask that the Expert not only dismiss this complaint but direct that this case has constituted an attempt at reverse domain name hijacking.

Complainant’s Reply

The Complainant made supplementary submissions in a Reply to the Response.  These submissions were supported by a second affidavit from the President of Atek, Inc. and accompanied by a further 4 Exhibits.  The Complainant’s submissions in the Reply were:

A.	Respondent’s “Response” does not comply with the Procedure for the conduct of proceedings under the Dispute Resolution Service. 

The two-page, untitled, unsigned and undated “Response” filed on March 8, 2005 does not comply with the Procedural rules and should therefore be totally disregarded or, in the alternative, be given very little persuasive weight. 

Specifically, according to Rules 5(a) and 5(c)(iii) of the Procedure, “[w]ithin fifteen (15) Days of the date of commencement of proceedings under the Dispute Resolution Service, the Respondent shall submit a response” and "specify whether the Respondent wishes to be contacted direct or through an authorised representative, and set out the e-mail address, telephone number, fax number and postal address which should be used." 

Here, in its unsigned “Response” Respondent has failed to provide any information about its contact or authorised representative. Additionally, according to Rule 5(c)(v) of the Procedure, Respondent shall "conclude with the following statement followed by the signature of the Respondent or its authorised representative:- 
'The information contained in this response is to the best of the Respondent's knowledge true and complete and the matters stated in this response comply with the Procedure and applicable law.'" 
Again, no certification was given and no signature was provided. Without same, there simply remains no representation that the “Response” was authorized by the Respondent or provided on its behalf. Moreover, Respondent has also failed to represent that the information contained in the “Response” is true or complete, nor did Respondent certify whether any matters stated therein comply with the Procedure and applicable law. 

Due to its failures to comply with the Procedure, and in light of Respondent’s failure to certify the statements as required, Complainant respectfully requests that the expert disregard the entire “Response” as unreliable, untrustworthy and non-compliant. 

B.	Complainant objects to the introduction of third party's "letters" where no personal knowledge is attested 

According to Rule 5(c)(vi), the Respondent must "attach three copies of any documentary or other evidence on which the Respondent relies including correspondence and any trade mark registration and/or evidence of use of or reputation in a name or mark together with an index of the material attached." In its Response, at page 1, paragraph 5, Respondent alleged "[w]e attach several letters from some of our customers confirming that we have supplied our atek products to them from well before 2002." 

Notwithstanding the fact that Respondent apparently did, ultimately, submit hard copies of such “letters,” Complainant objects to the introduction and reliance upon such letters, for several reasons, specifically including that the “letters”: (i) were not timely submitted; (ii) were not properly sworn, notarized or certified as being true, correct, and/or complete; (iii) are clearly not the best evidence allegedly available to support the proposition for which they stand, namely that the Respondent has allegedly traded or sold goods under the ATEK designation (e.g., Invoices, Bills of Lading, Catalogue offerings, or photographs of any alleged goods themselves); and (iv) are unreliable and constitute inadmissible hearsay by third parties with respect to how the goods were allegedly branded by the Respondent. 

Moreover, under English law, a third party's factual statement or opinion is inadmissible unless such statement or opinion is provided by a party with personal knowledge. Here, neither the Respondent, nor the alleged correspondents, have supplied any declaration, affidavit or other certification that demonstrates any personal knowledge of the facts alleged nor any evidence that any such statement or opinion was made with the required personal knowledge. Thusly, Complainant urges the expert to disregard such letters, if any, from the evidence herein, or, in the alternative, to give them very little weight in any determination. 

C.	Respondent has failed to establish any substantive rights in respect of the ATEK mark and has further failed to submit any viable challenge to Complaint's superior rights in such mark. 

Nominet UK decisions have consistently held that unsupported allegations receive little, if any, evidentiary weight. For example, in 19 Entertainment Ltd -v- Mrs Kath Parker, (DRS 00631, 2002), the expert held that "… I note the shortage of hard evidence for the Respondent’s claims. I feel I cannot rely on two unsigned purported copyright certificates, of a kind said not to be generally recognised in the industry and unsupported by statements from the third parties named on them." See also, City ID limited v. Icon MediaLab Limited, (DRS 00692, 2003) where the expert held that "… the Complainant also appears not to have understood that the basic legal maxim 'he who asserts must prove' applies to the DRS, so that it is the Complainant’s responsibility, and not Nominet’s or the Expert’s to provide supporting evidence or conduct any further investigations that may be needed to verify its claims." (Apparently, such ruling equally applies to Respondent when it has made such exculpatory assertions.) Also in Televes Uk Ltd v Adam Barrington, (DRS 00074) the expert held that "[w]ithout such evidence, to draw any firm conclusions in the absence of other evidence which could have been provided, would be unwarranted speculation." By analogy, under the Civil Procedure Rules (CPR) which apply to Summary Judgement proceedings in England and Wales, the claimant making an application is expected to submit evidence in support of its application “verifying the relevant claim or issue” [CPR 24.4.9]. Such evidence would normally be presented in the form of a Witness Statement with a Statement of Truth or an Affidavit with a jurat. 

As was stated in County Bookshops Limited v. Guy Loveday (WIPO Case No. D2000-0655, September 22, 2000), 

“[i]n all cases, the person giving the evidence must be identified and the evidence must make clear which statements are made from that person’s own knowledge and which are matters of belief. If evidence is of hearsay, than this must also be stated and the degree of hearsay specified (i.e. whether it is first-hand or second-hand hearsay.) 

In the Panelist’s view, it is reasonable to expect that the standards to be applied to supporting evidence in case brought under the Policy and based on claims to unregistered rights in particular should be equivalent in form and extent to that which would be required in an opponent’s evidence-in-chief in a trademark opposition brought on corresponding grounds.” 

Applying these principles to this case, without having submitted any “hard” evidence, including for example, records of alleged sales, packing lists, catalogue offerings, or photographs of the goods themselves, Respondent has only made two allegations that it had allegedly used the ATEK mark prior to 1996, or at any time thereafter. Notably, neither allegation is supported by any admissible evidence nor any declarations or affidavit signed under the penalty of perjury. Such unfounded allegations can be afforded no evidentiary weight while contradicted by undisputed and substantiated facts provided by Complainant herein. 

D.	According To Its Own Statements And “Evidence” Respondent Has No Trademark Rights Or Good Will With Respect To The “Atek” Mark. 

In its “Response,” Respondent alleges that it was asked by its customers to use a "non aria" badge for its own branded goods and it therefore allegedly adopted thereafter the word "Atek" in order that consumers would not be able to determine the true source of the products labelled as such. In the unsworn letter, Exhibit “5” to its “Response,” one individual named A.A. Hagshenow, of the Netherlands, has recently claimed that “[w]e instructed Aria Technology not to put their own company stickers (arianet) on the modules so that our clients would not be able to trace our supplier.” 

Assuming arguendo that Respondent did in fact select and use the name “ATEK” as a brand for any products that were intended to “mask” the true identity of the source of such products, Respondent cannot therefore claim any goodwill or common law trademark rights flowing therefrom. 

Indeed, as early as 1620, the English courts defined good will as “the friendly attitude and patronage of customers.” Goodwill is dependent on identification and may be defined as the favourable consideration shown by the purchasing public to goods known to emanate from a particular source. Goodwill and its symbol, a trademark, are inseparable. A trademark has no independent significance apart from the goodwill it symbolizes. 

As such, and in light of the absolute failure on the part of Respondent to submit any “hard evidence” supporting its position, Respondent apparently has no rights in the ATEK mark. Respondent has also submitted a number of irrelevant claims and materials herein. For example, Respondent’s Exhibit 1, namely page 12 of The Sunday Times dated February 20, 2005, which was published after the filing of the Complaint herein, makes absolutely no reference to Respondent ever using the name ATEK in any manner, and suggests that until recently, Respondent was merely a small sole proprietorship fighting for survival. 

At page 2, paragraph 1 of its “Response” Respondent alleged that it currently offers its Arianet brand of TFT monitors which "are going to be available to our trade customers as Atek." Any assertion of future intent to use the ATEK designation is simply irrelevant. 

Both such allegations are irrelevant to prove Respondent's rights in the mark because under the English law, trademark rights are acquired by actual usage associated with the goods, (or that constructive rights can exist following the date an application is filed with the trademark agency). Assuming the truth of both allegations that (i) Respondent adopted a mark in order to prevent any goods-source association (in response to its customer's request that it not interfere with their own customer relations); and (ii) that Aria Technology Limited plans to use the ATEK mark in the future, cannot amount to any bona fide use of the mark and neither allegation can establish any right in ATEK afforded to Respondent. 

On the other hand, Complainant has provided ample evidence establishing that it has used ATEK for its sales of computer accessories since April 15, 1996 and that it has been directly marketing and selling ATEK-branded goods on the U.K. continuously since 2002, much earlier than Respondent's Domain Name registration at issue herein. 

[To recapitulate, the Complainant referred back to a number of selected Exhibits from the original Complaint.]

Such undisputed evidence shows that Complainant has superior rights in the mark ATEK in the United Kingdom. 

Complainant also submitted several documents collectively attached Exhibits and including twenty five (25) favourable product reviews concerning Complainant’s products that have been posted on the Internet since at least 2001. 

E.	Respondent has failed to offer any admissible evidence to overcome that the domain name in the hands of the Respondent is an Abusive Registration. 

Respondent has failed to offer any credible or admissible evidence to overcome Complainant's allegation that Respondent's registration of the www.atek.co.uk domain name is abusive. 

New evidence has revealed even more actual confusion caused by Respondent’s continued use of the domain name in question. 

Respondent did not even attempt to refute Complainant's well-established contention that Respondent's use of the www.atek.co.uk domain name has, in less than six months, actually confused a significant number of consumers into believing that atek.co.uk is registered to, operated or authorised by, or otherwise connected with the Complainant. Such allegation was supported by numerous e-mail messages from UK customers seeking customer support for defective goods sold by Respondent. 

Since the Complaint in this matter was filed, Respondent has continued, over objection, to use the disputed domain name www.atek.co.uk to offer its unauthorized ATEK branded keyboard and mouse product (KEY-MCK-9000-ATEK). As a result, even more U.K. consumers have expressed their own confusion in e-mail messages directed to Complainant seeking customer support for the apparently defective goods sold by Respondent. Exhibits showed three more examples which demonstrate new and additional consumer confusion, and which undisputedly demonstrate that the domain name registration in the hands of Respondent is an abusive registration under paragraph 3(c)(ii) of the Nominet DRS Policy. 

Inasmuch as during the past six months, Complainant has now received at least eight separate e-mails from various consumers who have evidently mistakenly directed their complaints concerning Respondent’s products to Complainant, we request a finding under paragraph 1(ii) that the Domain Name in question has been used in a manner which took unfair advantage of or was unfairly detrimental to Complainant’s rights. 

Unfair Business Distribution 

Respondent has not disputed that: (i) both parties are engaged in the directly competitive business related to the manufacture and sale of computer equipment and accessories; (ii) the registration of the domain name and the related website www.atek.co.uk resolves to www.aria.co.uk and thusly attracts prospective customers of the Complainant; (iii) Respondent only registered the domain name on April 19, 2004, two years after Complainant's initial and continuous use of the ATEK mark within the U.K. market; (iv) Respondent does not appear to genuinely offer any goods bearing the ATEK mark on www.atek.co.uk other than one wireless keyboard and mouse product which is not conspicuously labelled as such; (5) Respondent is not commonly known by the name ATEK; (6) Respondent’s use of the domain name has caused significant actual confusion among consumers; (7) Respondent’s trademark application for ATEK, which was filed in the United Kingdom on May 12, 2004, (Application No. 2363085) and which uncoincidentally shares a nearly identical logo design as Complainant's registered trademark (Registration No. 2564858), which was intentionally adopted by Respondent with the express intent of passing off its goods as those of Complainant. 

Based on these undisputed facts, Respondent's primary purpose to register www.atek.co.uk was not to engage in legitimate business, but rather was done with the intent of diverting Complainant's potential customers and to unfairly disrupt Complainant's business. 

Blocking Registration 

Complainant has provided substantial and undisputed evidence that it has been using the ATEK mark since 1996 in the United States and since 2002 in United Kingdom, which sufficiently overcomes Respondent's unsupported allegation prior thereto. 

While Respondent asserts somewhat disingenuously in its “Response” that it "had never heard of" Complainant until very recently, its letter sent to Complainant’s UK counsel on October 7, 2004 admitted that it had been aware of Complainant's prior rights in the ATEK name. 

Moreover, Respondent’s U.K. application for the ATEK logo, filed on May 12, 2004 (No. 2363085) shares a nearly identical design as Complainant's registered trademark (Registration No. 2564858). Such striking similarities between the two can only be explained by direct copying. 

In sum, Respondent has raised no evidence or verified assertion to contradict Complainant's position that before registering the Domain Name in question, that, as a computer accessories manufacturer/dealer, who attends trade shows, that Respondent knew or should have known that Complainant had been previously doing business worldwide under the mark or specifically that Respondent registered the www.atek.co.uk domain name for the purpose of blocking Complainant from registration of the domain name in which it has superior trademark rights. 

In addition, Respondent does not dispute that it has made no legitimate, non-commercial or fair use of the domain name, and has never asserted that ATEK is in any way generic or descriptive of the computer accessories used by Complainant since 1996.

In light of the foregoing and as further supported by the Complaint, the annexes thereto, and the affidavit evidence, Respondent registered www.atek.co.uk as an abusive registration and Complainant thusly requests transfer thereof.

7.	Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name at issue; and 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 Complainant in this case has asserted that it has rights in the name and mark ATEK and that this is identical or similar to the Domain Name at issue. 

The Complainant submitted details of a number of domain name registrations, including atek.com, and two US trade mark applications for ATEK which all predate the Respondent’s registration of the Domain Name.

Against the Complainant’ submissions, the Respondent has argued that “American corporations labour under the amusing misapprehension that US trademark registrations cover their intellectual property rights Worldwide. This of course is not the case. To secure and enforce rights in other jurisdictions companies must of course assert and register their rights in every jurisdiction in which they intend to operate.”

However, whilst the Complainant might indeed be expected to have to present further evidence of enforceable rights if it were pursuing a trade mark infringement claim against the Respondent, that is not a matter for consideration under the Policy.  “Rights” under the Policy are not so limited. It is not necessary that the Complainant should have sufficient Rights to pursue a trade mark infringement or a passing-off action, nor is it necessary that the Rights be in the UK – “Rights” as explicitly defined “includes, but is not limited to, rights enforceable under English law”.

As noted above, the Complainant has at least two earlier US trademark registrations which predate the registration of the Domain Name at issue. 

In the Expert’s view, therefore, the Complainant’s evidence is sufficient to establish a bona-fide claim to the existence of Rights in the name ATEK to the extent required under the Policy.

Accordingly, for the purposes of the Policy, the Expert concludes that the Complainant does have Rights in this case in respect of a name (or mark), which is identical or similar to the Domain Name at issue.

Abusive Registration

The Complainant also has to show that the Domain Name is an 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 are set out in Paragraph 3a of the Policy: 

i. 	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A.	for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of 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;

B.	as a blocking registration against a name or mark in which the Complainant has Rights; or

C.	for the purpose of unfairly disrupting the business of the Complainant;

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;

Conversely, Paragraph 4a of the Policy cites a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration.  These include:
i	Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has
A	used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B	been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C	made legitimate non-commercial or fair use of the Domain Name; or
ii	The Domain Name is generic or descriptive and the Respondent is making fair use of it;

However, ultimately, the factors listed in Paragraphs 3 and 4 of the Policy are only exemplary and indicative.  They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

The Complainant has alleged principally that the Respondent has registered and used the Domain Name for the purpose of unfairly disrupting the business of the Complainant and, as a subsidiary objection, that that Domain Name has been registered as a blocking registration against the Complainant’s rights in ATEK.

In support of its assertions the Complainant has submitted substantial evidence, properly presented with requisite Statements of Truth.  There is evidence of actual sales to the UK under the Complainant’s ATEK mark before the registration of the Domain Name and evidence of UK customer confusion in relation to goods apparently sold under the ATEK brand by the Respondent (such goods not having originated from the Complainant).

The Complainant notes that the Respondent has set up the web address www.atek.co.uk to resolve to the Respondent’s principal website at www.aria.co.uk, and asserts that the confusion has arisen as a consequence of the (mis)use of the atek.co.uk domain name in this context.

In the Expert’s view, the Complainant’s evidence of consumer confusion does not clearly relate to use of the Domain Name by itself nor to misdirection of the customers who accessed the www.atek.co.uk web address.  Rather, the affected customers appear to have been misled by the labelling on the actual products themselves.  In that context, the Complainant would need to pursue a remedy before the Court and not under the Policy.

However, it is certainly arguable that, where there is confusion in relation to product origin it is likely that this confusion will be compounded by following a potentially misleading web address.  The question is whether the Domain Name is itself an Abusive Registration.

The Respondent’s defence can be summarised essentially in accordance with Paragraph 4a of the Policy that it has “used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services.”

The Respondent has alleged that it came up with “Atek” as a derivative of its Aria Technology name in response to requests for non-Aria branded goods.  This claim is supported by a number of unsworn letters purporting to be from customers of Aria Technology.  The Respondent’s evidence is not compliant with the formal requirements of the Policy and, in particular, omits any Statement of Truth.  

The Complainant has strongly criticised the Respondent’s claims and raised a number of doubts as to its accuracy and veracity.

In the interests of ensuring that a party to dispute proceedings is at least heard, the Expert has been prepared to read and consider the Respondent’s submissions.  However, the Expert has taken due note of the Respondent’s failure to present the Response in the appropriate form and with the requisite Statement of Truth.  These formal requirements are clearly stated on the Nominet website (see e.g. http://cgi.nic.uk/drs-resp-help.html) and are not particularly onerous.  

The Complainant’s scepticism regarding the Respondent’s claims would appear to be borne out by even a brief examination of the facts.  

The Respondent claims to have been selling Atek branded goods since “before 1996” yet includes no actual evidence of such sales nor even any data sheets or catalogue pages for such products.  The Companies Register extract (provided by Nominet) also shows that the Respondent, Aria Technology Limited was not incorporated until July 1997.  Similar checks on the company names of those purported customers whose letters were submitted in support of the Response revealed three apparently not on the UK Companies Register under the names given and one claiming to have purchased Atek goods “since 1996” but which was not itself incorporated until 1999.  

The Respondent has also claimed that its case was supported by a UK trade mark application dating from May 2004, for “Atek” which was “awaiting approval”.  In fact, this application was finally refused by the UK Registry on 24.03.2005 (albeit this was shortly after the date of the Response).  As the Complainant has also pointed out, it was readily apparent that this UK application was for “Atek” in a stylised form peculiarly similar to that in the Complainant’s US registration 2564858.  

The Respondent claims to have adopted the “Atek” name as an abbreviation of Aria Tech [which begs the question why not Atec, Atech, Artech etc. or why not simply use another unrelated trade mark? – The Respondent does have other trade mark registrations and applications] as an “arms length” alternative to Aria.  Why then also link www.atek.co.uk direct to www.aria.co.uk?

Considered overall, the Expert finds the lack of evidence and the inconsistencies and inadequately supported claims in the Response unconvincing and insufficient to satisfy the Expert that the Respondent genuinely adopted and registered the Domain Name atek.co.uk in connection with a bona-fide offering of goods. 

The evidence in the Complainant’s case that the Domain Name was registered and has been used to disrupt the claimant’s business and to act as a blocking registration in the UK carries more weight and is ultimately persuasive.

Consequently, on the balance of probabilities, the Expert concludes that the Domain Name has been registered and used 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, and that it is an Abusive Registration for the purposes of the Policy.

It follows that the Expert also dismisses the Respondent’s claim that the Complaint in this case is an attempt at “Reverse Domain Name Hijacking”. The Complainant has an entirely justifiable claim to rights in ATEK and reasonable grounds to assert that the Domain Name was an Abusive Registration.

8.	Decision:

Having concluded that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert determines that the Domain Name, atek.co.uk, should be transferred to the Complainant as requested.

______________________                                               May 9, 2005 
         Keith Gymer                                                                                              Date