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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Whittard of Chelsea Plc v Szlamp [2005] DRS 2297 (02 March 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2297.html |
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Nominet UK Dispute Resolution Service
DRS 02297
Whittard of Chelsea Plc v Keith Szlamp
Decision of Independent Expert
1. Parties
Complainant: Whittard of Chelsea Plc
Country: GB
Respondent: Keith Szlamp
Country: GB
2. Domain Name
whitards.co.uk
("the domain name")
3. Procedural Background
Nominet received the complaint on 7 January 2005 and checked that it complied with the Nominet UK Dispute Resolution Service Policy ("the Policy") and the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure"). Nominet attempted to notify the Respondent of the complaint on 12 January, by both email and post, though neither email nor letter was delivered. (A note from the Royal Mail said that the letter could not be delivered because the addressee had 'gone away'.) In the absence of a response to the complaint, informal mediation was not possible. Nominet therefore attempted to notify both parties that an Expert would be appointed to resolve the dispute if it received the appropriate fee from the Complainant. The email to the Respondent was again undelivered, but the notification evidently reached the Complainant because the fee was received on 9 February.
On 16 February I, Mark de Brunner, agreed to serve as an Expert under Nominet's Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.
4. Outstanding Formal/Procedural Issues
Notification of the complaint and of the possible appointment of an Expert appear not to have reached the Respondent. But by registering a domain name with Nominet, registrants enter into a contract under which they have to keep Nominet notified of their correct contact details (paragraph 4 of the Nominet UK Terms and Conditions). The fact that the Respondent appears not to have kept his contact details with Nominet up to date cannot therefore justify my holding off considering this case. I propose to proceed.
5. The Facts
I accept the following as facts.
The Complainant sells tea, coffee and related goods through over 100 shops across the UK. It has used the name Whittard since 1886 and holds trademark registrations in the name covering tea, coffee and related kitchen and household goods. Total sales since September 2000 have been around £2million. The Complainant has built up substantial goodwill in its name. It operates a web site at whittard.co.uk.
The Respondent registered the domain name on 6 June 2004. The domain name resolves to a web page branded 'pocket lolly' that contains links to other web pages. These pages appear to relate mainly to personal finance and household spending (car insurance, holidays, mortgages, phones, flights and flowers for example). There is a search facility. Using that facility to look up 'tea' and 'coffee' returns a list of links, seemingly to websites operated by third parties – though apparently not including the website run by the Complainant.
The domain name toys-r-us.co.uk was registered on 22 February 2004 to a Richard Mawdsley at the Respondent's address. When the complaint was made, that domain name too resolved to a web page branded 'pocket lolly' (with the same look and feel as the web page to which whitards.co.uk resolves). That page contained links to other web pages that appear primarily related to the sale of toys.
6. The Parties' Contentions
Complainant
The Complainant's contentions can be summarised as follows.
(i) It has rights in respect of a name which is similar to the domain name.
(ii) The domain name (and the sale, through the site, of goods identical to goods sold by the Complainant) is likely to mislead people into thinking the web site is operated by the Complainant.
(iii) The Respondent appears to be engaged in a pattern of abusive registrations.
(iv) No-one else trades as Whittard for the sale of the kind of products sold by the Complainant and the domain name is neither generic nor descriptive. The Respondent therefore has no rights or legitimate interest in the domain name.
Respondent
There has been no response.
7. Discussion and Findings
General
To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
(i) it 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 Complainant does indeed to set out to prove both. There has been no response, but the approach to be taken by experts in these circumstances is long established: where the Respondent has a case to answer, and there is no answer, the complaint will ordinarily succeed. So the question becomes whether the Complainant has established at least a prima facie case.
Complainant's Rights
The Complainant has traded under the Whittard name for many years, generating significant turnover. It has evidently established goodwill in the name Whittard and has its interest in that name reflected in two UK trademark registrations. I accept that the Complainant has rights in the name Whittard. The domain name is whitards.co.uk. It seems to me that Whittard and whitards are similar: the number of ts is a quirk of spelling (which does not affect the way the words are pronounced), and the presence of a final s could simply suggest the possessive form of the word Whittard. I conclude that the Complainant has rights in respect of a name which is similar to the domain name.
Abusive Registration
The Dispute Resolution Service rules define an abusive registration as a domain name which either
- 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
- has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.
The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration and a similar list of factors that may be evidence that the domain name is not an abusive registration. Potentially relevant factors from the list that may indicate that the registration is abusive are:
(i) 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
(ii) where the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of the domain names…which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the domain name is part of that pattern
The only potentially relevant factor from the list that may indicate that the registration is not abusive is
(iii) where the domain name is generic or descriptive and the Respondent is making fair use of it.
The claims of the Complainant essentially turn on these factors and I can take each in turn.
Confusion
The Complainant offers no evidence that confusion has actually occurred. But it seems clear that traffic to whitards.co.uk - presented with a series of links to web pages that could include references to tea, coffee and related products - might be confused into believing that the domain name is in some way connected with the Complainant. The list of factors in this part of the Policy is illustrative rather than exhaustive, and I conclude that the potential for confusion here is significant and relevant in taking a view about the nature of the registration.
Pattern
No direct evidence is offered that the Respondent has been engaged in registrations corresponding to well known names in which he has no apparent rights. But, again, the list of factors is not exhaustive. I note that the Respondent's address was used in the registration of a name at least similar to the name of a well-known toy retailer - a domain name resolving to a web page with the same look and feel as the website at the domain name at issue. That seems to me highly suggestive that the registration here was designed to take unfair advantage of the Complainant's rights.
Fair use of generic or descriptive domain name
I agree that the domain name is neither generic nor descriptive and that it is difficult to envisage circumstances in which the Respondent might legitimately have an interest in the name.
Overall, then, we have a domain name the use of which is likely to mislead people into thinking they are dealing with the Complainant; a second registration linked indirectly to the Respondent and corresponding to a well known name in which the Respondent has no apparent rights; and no obvious legitimate use to which the Respondent could put the domain name. It is difficult to avoid the conclusion that the domain name has been used in a manner which took unfair advantage of the Complainant's rights. At the very least, the Complainant has established a prima facie case that deserves an answer. In the absence of an answer, the complaint about the character of the registration must succeed.
I conclude that the domain name is an abusive registration.
8. Decision
I find that the Complainant has rights in respect of a name which is similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration
In the light of that, I direct that the domain name be transferred to the Complainant.
Nominet UK Dispute Resolution Service
DRS 02297
Whittard of Chelsea Plc v Keith Szlamp
Decision of Independent Expert
1. Parties
Complainant: Whittard of Chelsea Plc
Country: GB
Respondent: Keith Szlamp
Country: GB
2. Domain Name
whitards.co.uk
("the domain name")
3. Procedural Background
Nominet received the complaint on 7 January 2005 and checked that it complied with the Nominet UK Dispute Resolution Service Policy ("the Policy") and the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure"). Nominet attempted to notify the Respondent of the complaint on 12 January, by both email and post, though neither email nor letter was delivered. (A note from the Royal Mail said that the letter could not be delivered because the addressee had 'gone away'.) In the absence of a response to the complaint, informal mediation was not possible. Nominet therefore attempted to notify both parties that an Expert would be appointed to resolve the dispute if it received the appropriate fee from the Complainant. The email to the Respondent was again undelivered, but the notification evidently reached the Complainant because the fee was received on 9 February.
On 16 February I, Mark de Brunner, agreed to serve as an Expert under Nominet's Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.
4. Outstanding Formal/Procedural Issues
Notification of the complaint and of the possible appointment of an Expert appear not to have reached the Respondent. But by registering a domain name with Nominet, registrants enter into a contract under which they have to keep Nominet notified of their correct contact details (paragraph 4 of the Nominet UK Terms and Conditions). The fact that the Respondent appears not to have kept his contact details with Nominet up to date cannot therefore justify my holding off considering this case. I propose to proceed.
5. The Facts
I accept the following as facts.
The Complainant sells tea, coffee and related goods through over 100 shops across the UK. It has used the name Whittard since 1886 and holds trademark registrations in the name covering tea, coffee and related kitchen and household goods. Total sales since September 2000 have been around £2million. The Complainant has built up substantial goodwill in its name. It operates a web site at whittard.co.uk.
The Respondent registered the domain name on 6 June 2004. The domain name resolves to a web page branded 'pocket lolly' that contains links to other web pages. These pages appear to relate mainly to personal finance and household spending (car insurance, holidays, mortgages, phones, flights and flowers for example). There is a search facility. Using that facility to look up 'tea' and 'coffee' returns a list of links, seemingly to websites operated by third parties – though apparently not including the website run by the Complainant.
The domain name toys-r-us.co.uk was registered on 22 February 2004 to a Richard Mawdsley at the Respondent's address. When the complaint was made, that domain name too resolved to a web page branded 'pocket lolly' (with the same look and feel as the web page to which whitards.co.uk resolves). That page contained links to other web pages that appear primarily related to the sale of toys.
6. The Parties' Contentions
Complainant
The Complainant's contentions can be summarised as follows.
(i) It has rights in respect of a name which is similar to the domain name.
(ii) The domain name (and the sale, through the site, of goods identical to goods sold by the Complainant) is likely to mislead people into thinking the web site is operated by the Complainant.
(iii) The Respondent appears to be engaged in a pattern of abusive registrations.
(iv) No-one else trades as Whittard for the sale of the kind of products sold by the Complainant and the domain name is neither generic nor descriptive. The Respondent therefore has no rights or legitimate interest in the domain name.
Respondent
There has been no response.
7. Discussion and Findings
General
To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
(i) it 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 Complainant does indeed to set out to prove both. There has been no response, but the approach to be taken by experts in these circumstances is long established: where the Respondent has a case to answer, and there is no answer, the complaint will ordinarily succeed. So the question becomes whether the Complainant has established at least a prima facie case.
Complainant's Rights
The Complainant has traded under the Whittard name for many years, generating significant turnover. It has evidently established goodwill in the name Whittard and has its interest in that name reflected in two UK trademark registrations. I accept that the Complainant has rights in the name Whittard. The domain name is whitards.co.uk. It seems to me that Whittard and whitards are similar: the number of ts is a quirk of spelling (which does not affect the way the words are pronounced), and the presence of a final s could simply suggest the possessive form of the word Whittard. I conclude that the Complainant has rights in respect of a name which is similar to the domain name.
Abusive Registration
The Dispute Resolution Service rules define an abusive registration as a domain name which either
- 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
- has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.
The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration and a similar list of factors that may be evidence that the domain name is not an abusive registration. Potentially relevant factors from the list that may indicate that the registration is abusive are:
(i) 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
(ii) where the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of the domain names…which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the domain name is part of that pattern
The only potentially relevant factor from the list that may indicate that the registration is not abusive is
(iii) where the domain name is generic or descriptive and the Respondent is making fair use of it.
The claims of the Complainant essentially turn on these factors and I can take each in turn.
Confusion
The Complainant offers no evidence that confusion has actually occurred. But it seems clear that traffic to whitards.co.uk - presented with a series of links to web pages that could include references to tea, coffee and related products - might be confused into believing that the domain name is in some way connected with the Complainant. The list of factors in this part of the Policy is illustrative rather than exhaustive, and I conclude that the potential for confusion here is significant and relevant in taking a view about the nature of the registration.
Pattern
No direct evidence is offered that the Respondent has been engaged in registrations corresponding to well known names in which he has no apparent rights. But, again, the list of factors is not exhaustive. I note that the Respondent's address was used in the registration of a name at least similar to the name of a well-known toy retailer - a domain name resolving to a web page with the same look and feel as the website at the domain name at issue. That seems to me highly suggestive that the registration here was designed to take unfair advantage of the Complainant's rights.
Fair use of generic or descriptive domain name
I agree that the domain name is neither generic nor descriptive and that it is difficult to envisage circumstances in which the Respondent might legitimately have an interest in the name.
Overall, then, we have a domain name the use of which is likely to mislead people into thinking they are dealing with the Complainant; a second registration linked indirectly to the Respondent and corresponding to a well known name in which the Respondent has no apparent rights; and no obvious legitimate use to which the Respondent could put the domain name. It is difficult to avoid the conclusion that the domain name has been used in a manner which took unfair advantage of the Complainant's rights. At the very least, the Complainant has established a prima facie case that deserves an answer. In the absence of an answer, the complaint about the character of the registration must succeed.
I conclude that the domain name is an abusive registration.
8. Decision
I find that the Complainant has rights in respect of a name which is similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration
In the light of that, I direct that the domain name be transferred to the Complainant.
| Mark de Brunner | 2 March 2005 |
