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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Armadale Commercials Ltd v Vans Direct (UK) Ltd [2005] DRS 3087 (15 December 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/3087.html Cite as: [2005] DRS 3087 |
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Decision of Independent Expert
Complainant: Armadale Commercials Ltd
Country: GB
Respondent: Vans Direct (UK) Ltd
Country: GB
armadalecommercials.co.uk (the "Domain Name")
The complaint was entered on to the Nominet system on 31 October 2005. Nominet validated the complaint on 31 October 2005 and on the same day despatched a copy of the complaint to the Respondent. No response was received from the Respondent by the due date of 21 November 2005 (or at all). On 12 December 2005 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (the "Policy").
I, Stephen Bennett, the undersigned, (the "Expert") have confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and have further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.
The Respondent has not submitted any Response to Nominet in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure").
Paragraph 15b of the Procedure provides, inter alia, that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint."
There is no evidence before me to indicate the presence of exceptional circumstances. Nominet has attempted to communicate the complaint to the Respondent by e-mail and post. The efforts made by Nominet are in accordance with the Procedure and accordingly, I will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.
Paragraph 15c of the DRS 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." I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.
The Domain Name, armadalecommercials.co.uk, is registered to the Respondent, Vans Direct (UK) Ltd.
The Complainant is a company incorporated in Scotland. Its business is in the sale of commercial vehicles, in particular, vans and trucks. The Complainant trades under its company name Armadale Commercials Ltd and simply as "Armadale Commercials". The Complainant's company name has been Armadale Commercials since 10 June 1998. The Complainant trades from an address in Bathgate, West Lothian, EH48 3LT and through its website at www.armadalecommercialsltd.com.
The Respondent is also incorporated in Scotland and its business is the sale of commercial vehicles, specifically vans and trucks.
Both companies operate in the same geographical area, their respective websites indicate that their premises can both be found by following directions from Junction 4 of the M8 motorway in Scotland.
The website at www.armadalecommercials.co.uk is a site which appears to be operated by the Respondent. The first line of the site states "Welcome to Vans Direct (UK) Ltd".
The Complainant has not referred to any registered trademarks and I will, therefore, proceed on the basis that it does not have any registered trademarks of relevance to this complaint.
The Parties' Contentions
Complainant:
The Complainant does not set out in detail what Rights is relies upon - the whole complaint in substance amounts only to one paragraph. However, the Complainant has stated that the company has traded since the early 1999s as Aramadale Commercials and has built up a good reputation throughout the country. As noted above, the Complainant's company name has been Armadale Commercials Ltd since 10 June 1998.
In relation to the question of Abusive Registration, the Complainant explains that it uses the address www.armadalecommercialsltd.com for its business. The Complainant also explains that the Respondent's use of the Domain Name is causing traffic to be directed to the Respondent's website. Although not set out explicitly in the complaint, it is clearly implicit in this allegation that the Complainant believes that the Respondent is diverting to the Respondent's site traffic intended for the Complainant's website.
In relation to the issue of Abusive Registration, the Complainant also points out that the Respondent has registered the domain names "arnoldclarkcommercials", "regvardycommercials", "westerncommercials" and "murisoncommercials". The Complainant does not indicate precisely what Domain Names these are (whether .com, .co.uk, etc.). However, a quick search reveals that the domain names murisoncommercials.com and westerncommercials.com both resolve to a site at www.vansdirect.biz which is a mirror of the Respondent's website. The websites at www.regvardycommercials.co.uk and www.armadalecommercials.co.uk resolve to a holding page which does not appear to be connected with the Respondent. However, the domain names www.regvardycommercials.co.uk and arnoldclarkcommercials.co.uk are, according to Nominet's database, registered to Vans Direct (UK) Ltd, the Respondent.
Network Solutions' WHOIS service shows that the Respondent is the registerant for the domain names www.murisoncommercials.com and www.westerncommercials.com.
The Complainant's cites the Respondent's activity in relation to these domain names as "further examples" and states that, in relation to arnoldclarkcommercials.co.uk and regvardycommercials.co.uk the Respondent has been advised to remove the related website by the "legal team" of each of Arnold Clark and Reg Vardy.
Respondent:
The Respondent has not responded.
Complainant's Rights
The Complainant does not annex any documentary evidence to support its claim to Rights. The materials to support the claim to Rights is the Complainant's use of the name Armadale Commercials Ltd as its company name since 1998 and the use of the names "Armadale Commercials" as part of his trading name since the early 1990s.
This does not amount to a great deal of support for the claim to Rights. However, it has been made clear in the Appeal Decision Seiko UK Limited v Designer Time/Wanderweb (appeal in DRS 00248) that the test for Rights should not be set high. In that case, on Appeal, that the following was stated "…the requirement to demonstrate "Rights" is not a particularly high threshold test".
It is certainly the case that the use of a name under which a company trades can be sufficient to establish a case in passing off should somebody else use the same or a similar name to the one under which that company has traded. There are, additional issues to be satisfied to establish a case in passing off such as that the public exclusively associates that name with the Complainant's business. I do not have any evidence on this point in this case. However, that is not the exercise with which the Nominet DRS is concerned. For these purposes, the use of the name Armadale Commercials over a number of years would be sufficient to establish Rights.
In terms of evidence, I have from Nominet as part of the complaint file a copy of the Companies House records showing the date that the Complainant changed its name to Armadale Commercials Ltd - 10 June 1998. I have no further supporting materials. However, the complaint contains a signed declaration that the information contained in the complaint is, to the best of the Complainant's knowledge, true and complete. On the basis of the Companies House record and the signed declaration and in the absence of any response from the Respondent contesting the claimed Rights, I accept the Complainant's claim to have Rights in the name "Armadale Commercials".
The Domain Name is, on that basis, identical to a name in which the Complainant has Rights.
Abusive Registration
To be an Abusive Registration under the DRS Policy the Domain Name must be one which "…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…".
Section 3 of the DRS Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These are as follows:
"3. Evidence of Abusive Registration
(a) A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:
(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;
(iii) The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) 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.; or
(iv) It is independently verified that the Respondent has given false contact details to us.
(v) … [omitted]
(b) Failure on the Respondent's part to use the Domain Name for the purposes of email or a web-site is not in itself evidence that the Domain Name is an Abusive Registration."
I do not believe it is credible that the Respondent has registered and is using the Domain Name armadalecommercials.co.uk in ignorance of the Complainant's use of the name Armadale Commercials as its trading name and Armadale Commercials Ltd as its corporate name.
Both the Complainant and the Respondent are involved in the sale of commercial vehicles and both are located in the same geographical area (as I have noted above, the directions they give to their premises start from the same junction of the M8 motorway). I have no doubt that the Respondent's aim in registering the Domain Name and then using it (at the address www.armadalecommercials.co.uk) to display a replica of the Respondent's own website was to try to divert traffic intended for the Complainant to the Respondent's website. I also have no doubt that the aim of the Respondent was to benefit from business intended for the Complainant. That amounts to taking unfair advantage of the Complainant's Rights and so satisfies the definition of an "Abusive Registration" in the DRS Policy.
In terms of the non-exhaustive heads of evidence of Abusive Registration provided in the DRS Policy, this behaviour would fit under head 3(a)(i) C (acquiring the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant) and 3(a)(ii) (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).
Whilst not necessarily to reach the conclusions recorded in this decision, my view on the question of Abusive Registration is confirmed by the other registrations which the Respondent holds and which appear to relate to other third party commercial vehicle businesses. The Complainant has not produced any evidence of the trade marks which these other domain names are said to include. However, I am aware from seeing commercial use of the name that Reg Vardy is a brand associated with vehicle sales/leasing and in my view is well-known in this area. The registration of this Domain Name by the Respondent would be consistent with the head of evidence of abusive registration set out under 3(a)(iii) of the DRS Policy. The same may be true in relation to the other Domain Names mentioned by the Complainant, however, no evidence was supplied of the well-known nature of these names and I am not otherwise aware of them.
I find that the Domain Name is Abusive Registration in the hands of the Respondent.
Decision
The Complainant has Rights in the name Armadale Commercials. The Domain Name is identical. The Domain Name in the hands of the Respondent is an Abusive Registration.
The Complainant's request for a transfer of the Domain Name should be granted.
Stephen Bennett