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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Parties Steinway & Sons v Westminster Pianos [2006] DRS 3154 (6 February 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3154.html Cite as: [2006] DRS 3154 |
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Nominet UK Dispute Resolution Service
DRS Number 03154
Parties Steinway & Sons v Westminster Pianos
Decision of Independent Expert
Complainant: Steinway & Sons
Country: USA
Respondent: Westminster Pianos
Country: GB
Steinways.org.uk
This domain name is referred to below as the "Domain Name".
The Complaint was lodged with Nominet on 24 November 2005. Nominet validated the Complaint and notified the Respondent on the same date. The Respondent filed a Response in time on 5 December 2005. A Reply was filed by the Complainant in time on 13 December 2005. On 5 January 2006 Nominet informed the Complainant that it had not been possible to achieve a resolution to the Complaint by informal mediation and on 16 January 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").
Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
Clause 5 of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") requires a Response to be submitted in hard copy and in electronic form. The Response was submitted in hard copy form only. The Procedure also requires the Respondent to conclude the Response with the following statement; "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". Neither this statement nor any equivalent statement is made in the Response.
As a preliminary point the Expert must decide whether the Response is valid in the light of these deficiencies. The Expert is mindful that the Respondent does not have legal representation in this matter and that the Policy and Procedure are intended to be accessible without the need for legal advice or representation. The Expert also notes that neither Nominet nor the Complainant have referred to the above deficiencies.
It is the view of the Expert that the failure to submit an electronic copy of the Response does not automatically invalidate the Response. To find otherwise would be to adopt an overly technical approach which is incompatible with the need for the Procedure and Policy to be "user friendly" for all parties without the need for professional advice.
The failure of the Respondent to include the required statement in its Response is more problematic. There is no positive assertion by the Respondent that any facts in the Response are true. As it happens, for the reasons set out below, the issues contained in the Response are not relevant to the Complaint. Accordingly the lack of a verifying statement makes no difference to the Expert's decision. It would be unduly pedantic to require the Respondent to resubmit the Response with the required statement. However if the Response had made relevant factual assertions the Expert would have been minded to require the Respondent to submit an amended version of the Response containing a formal confirmation of the truth of the matters set out. This is not to say that the Expert has doubts about the good faith of the Respondent in this matter. But as a matter of general principle it would be detrimental to the Policy and the Dispute Resolution Service as a whole if formal confirmation of the veracity of relevant issues were not required.
The Complainant describes itself as the world's leading manufacturer of quality pianos. It has been trading for over 150 years. During that time, the Complaint asserts that the Complainant has built up substantial international reputation and goodwill in the names under which it trades, which include STEINWAY and STEINWAY & SONS.
The Complainant sells its products worldwide through a system of authorised dealers which are required to meet specific selection criteria and which are licensed to use the Complainant's trade marks (see below). The Complainant's system of authorised dealers ensures that both the sale process and the provision of after sales services conform to high quality standards, which- the Complaint states- is crucial to maintaining the Complainant's strong international reputation. The Respondent is not an authorised dealer of the Complainant.
The Complainant is the proprietor of a number of trade marks registered throughout the world which are, or include, the words STEINWAY and STEINWAY & SONS and are registered in a number of classes. For the purposes of the Complaint, the Complainant or companies within its corporate group are registered proprietors of the following registered trademarks:
(a) the word mark STEINWAY:
(i) in the United Kingdom, through United Kingdom trade mark registration numbers: 45607 A, dated 10 June 1885; and 809909, dated 25 August 1960, details of which are attached as an exhibit to the Complaint; and
(ii) in all countries of the European Union, including the United Kingdom, through Community trade mark registration numbers: 1985159, dated 20 November 2000; and 2517001, dated 24 December 2001, details of which are attached an Exhibit to the Complaint,
(b) the word mark STEINWAY & SONS:
(i) in the United Kingdom, through United Kingdom trade mark registration number 45604 A, dated 10 June 1885, details of which are attached as an Exhibit to the Complaint; and (ii) in all countries of the European Union, including the United Kingdom, through Community trade mark registration numbers: 1985092, dated 20 November 2000; and 2516367, dated 24 December 2001, details of which are attached as an Exhibit to the Complaint,
(c) the stylised word mark STEINWAY & SONS in all countries of the European Union, including the United Kingdom, through Community trade mark registration number 2746329, dated 10 June 2002, details of which are attached as an Exhibit to the Complaint,
The Complainant has used STEINWAY and STEINWAY & SONS as trading names for over 150 years. Examples of the use of the marks on a selection of the Complainant's websites are attached as an Exhibit to the Complaint.
The Complainant operates websites at domain names registered by the Complainant, or a member of the Complainant's corporate group, which incorporate the word STEINWAY. The domain names belonging to the Complainant include the following,
(a) steinway.co.uk;
(b) steinway.com;
(c) steinway.de;
(d) steinway.co.jp;
(e) steinway.com.mx;
(f) steinwayhall.com; and
(g) steinwaymusical.com.
Details of these domain names are included as an Exhibit to the Complaint.
The Complainant's websites allow computer users throughout the world to access information relating to the Complainant and the Complainant's products and services. Printouts of the home pages of the Websites, dated 21 November 2005, are attached as an Exhibit to the Complaint.
A Nominet "whois" search shows that the Respondent registered the Domain Name on 12 June 2004. In the Complaint the Complainant describes how, as of August 2005, the URL of the Domain Name directed users to a website which advertised the goods and services of the Respondent. At that time, the Respondent's website advertised the sale, servicing and restoration of a range of musical instruments including pianos. Printouts of sections of the Respondent's are attached as an Exhibit to the Complaint.
On 23 September 2005 the Complainant's solicitors, Freshfields Bruckhaus Deringer, wrote to the Respondent to notify the Respondent of the Complainant's alleged rights in the Steinway mark and to ask the Respondent to sign undertakings under which the Respondent would promise to transfer (to the Complainant) or cancel the Domain Name and not to use the mark STEINWAY, or anything confusingly similar, in any way in the future.
The Complainant's solicitors did not receive a response to this letter within the given deadline and sent a chaser letter to the Respondent on 13 October 2005. The Complainant's solicitors did not receive a response to this chaser letter within the given deadline.
Copies of the Complainant's original letter and the chaser letter are attached as an Exhibit to the Complaint
Despite not responding to the letters the Complaint records that at some point after 23 September 2005, the Respondent changed the Respondent's website by:
(a) posting a disclaimer: "THE OWNERS OF THIS WEBSITE DO NOT HAVE LINKS WITH STEINWAY & SONS";
(b) inserting a new heading: "A Gallery of Unusual Steinway Grands"; and
(c) altering the website's content so that the photographs displayed featured only grand pianos, as opposed to the earlier variety of musical instruments originating from various sources.
A printout of the Respondent's Website dated 21 November 2005, showing these changes, is attached as an Exhibit to the Complaint.
The Response does not take issue with the description in the Complaint of the above matters.
A further change of use of the Domain Name appears to have occurred after the Complaint was filed. The Complainant's Response states that on 9 December 2005 a search revealed that the Respondent had redirected the Domain Name so that it no longer pointed to the Respondent's website (or indeed to any site). A search carried out by the Expert on 3 February 2006 confirmed that this remained the case at that date.
Complainant
Rights
The Complainant asserts that the Domain Name is identical or similar to the marks in which the Complainant has Rights (as set out above) and that these Rights predate the Respondent's registration of the Domain Name. It states that the Respondent has no right or legitimate interest in the Domain Name. The Respondent is not an authorised dealer of the Complainant and is not licensed or otherwise permitted to use the Steinway marks or to register a domain name incorporating the Steinway marks.
Abusive Registration
The Complainant submits that the Domain Name constitutes an Abusive Registration, in the sense that it "has been used in a manner which took unfair advantage of … the Complainant's Rights" (as defined in the Policy- see below). In support of this assertion the Complainant states:
(a) Save for the use of STEINWAY in the Domain Name, there is no evidence to suggest that the Respondent trades, or has traded, as STEINWAY. It is clear from the Respondent's website that the Respondent trades under the name "WESTMINSTER PIANOS" and does not principally sell Steinway goods or offer Steinway-related services. The purpose of the Respondent's website is to advertise the Respondent's piano repairing, re-polishing and selling services, which are not restricted to Steinway pianos.
(b) By using the Complainant's famous mark STEINWAY in the URL for the Respondent's website the Respondent hopes to drive traffic to the Respondent's website that would not otherwise find its way to that website. Even if, having seen the Respondent's home page, users of the Respondent's website realise that the Respondent's business is not connected to the Complainant's business, they may still decide to use the Respondent's services rather than those offered by the Complainant, or its authorised dealers, in the UK, thus causing the Complainant to lose business.
(c) The posting of the disclaimer notice does not prevent the Domain Name from constituting an Abusive Registration in the Respondent's hands, since the Domain Name's function to drive traffic to the Respondent's site occurs before a visitor arrives at the Respondent's site and sees the disclaimer notice.
(d) The posting of the disclaimer notice indicates that the Respondent understands the likelihood that its use of the Domain Name will cause users of the Respondent's website to think that there was some connection between the Respondent and the Complainant (the same point is made in the Complainant's Reply following the Respondent's abandonment of the redirection to its own website i.e. that this indicates that the Respondent considers the previous use of the Domain Name was an Abusive Registration)).
The Complainant submits that the Domain Name constitutes an Abusive Registration, in the sense that it "has been used in a manner which … was unfairly detrimental to the Complainant's Rights" (as defined in the Policy) for the following reasons:
(a) There is a risk that members of the public will not see the disclaimer notice and will erroneously believe that the website is somehow connected to the Complainant. This is likely to be detrimental to the Complainant who has no control over the quality of the goods and services being advertised by the Respondent on the Respondent's website but who may be adversely affected by any negative impression about that quality which is formed by those who purchase goods or services from the Respondent.
(b) People or businesses who are keen to access official information relating to the Complainant's products and/or services are likely to attempt to access such information by using the Domain Name. Such people or businesses are likely to be perturbed when they are redirected to the Respondent's website and are accordingly unable to access such information.
The Complainant's Reply adds nothing further to the above submissions.
Respondent
In the Response the Respondent states that it purchased the URL in good faith. No further information about the use of the Domain Name is set out.
The Respondent also makes reference to the appointment by the Complainant of a local agent. This submission, which is developed at some length, has no apparent relevance to the Policy.
The Complaint is not otherwise refuted.
General
Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts according to the Procedure, that:
i the Complainant 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.
Rights are defined in clause 1 of the Policy as including but not limited to "rights enforceable under English law. However a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".
The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (clause 2b of the Policy).
Complainant's Rights
The Complainant has been trading under the STEINWAY mark for 150 years. It is undoubtedly a household name amongst the section of the public with an interest in classical music. The Expert finds that substantial goodwill has clearly been generated through the Complainant's use of the STEINWAY mark. The Complainant is also the proprietor of a number of registered trade marks featuring the STEINWAY mark.
In these circumstances the Complainant clearly owns Rights in the Steinway mark for the purposes of the Policy.
Similarity
The Respondent uses the mark STEINWAYS. The addition of the letter "s" to the Complainant's mark means the Domain Name is not identical to the Complainant's mark. But it may still be abusive under the Policy if it is similar to the mark in which the Complainant has Rights. The Expert finds that the addition of the letter "s" to the end of the mark does not change the overall impact and impression of the STEINWAY mark. Similarly the suffix .org.uk does not alter the overall impact of the STEINWAY mark. The Domain Name is accordingly similar to the STEINWAY mark in which the Complainant has Rights.
It follows that the Expert finds that the Complainant has Rights in the name "STEINWAY" which is similar to the Domain Name The first criterion of the Policy has accordingly been met.
Abusive Registration
Abusive Registration is defined in clause 1 of the Policy as follows:
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
Clause 2 of the Policy sets out a list of non exhaustive factors which may be evidence that the Domain Name is an Abusive Registration.
Registration or Acquisition
The Complainant bases its case on the way in which the Domain Name has been used by the Respondent. It does not submit that Domain Name was registered or acquired in an abusive manner. It is for this reason that the Expert finds that the assertion by the Respondent in the Response that it acquired the Domain Name in good faith is irrelevant. There is nothing before the Expert that indicates that the acquisition of the Domain Name was motivated by bad faith. The Expert does not find that the acquisition of the Domain Name was in itself abusive.
Use of the Domain Names
Clause 2a of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name has been used in a manner which took unfair advantage of or was wholly detrimental to the Complainant's Rights. The most relevant ground in the Complaint is that there are;
ii Circumstances indicating that the Respondent is using the Domain Name in a way that has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with The Complainant.
Clause 2b of the Policy provides that failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.
The Expert finds that the Respondent's use of the Domain Name has both taken unfair advantage of the Respondent's Rights and been wholly detrimental to such Rights. The Complainant's STEINWAY mark is sufficiently well known amongst the relevant section of the market that customers wishing to access the Complainant's website would readily think that the Domain Name belonged to the Complainant or that its use had been authorised by the Complainant. The redirection of the Domain Name to the Respondent's website is a clear appropriation of the goodwill associated with the STEINWAY mark for the Respondent's benefit and therefore took unfair advantage of the Complainant's goodwill. At least until November 2005 customers redirected to the Respondent's website could readily have formed the impression that the site was operated by or through the Complainant or, perhaps more likely by an authorised agent of the Complainant. Even though there is no evidence of any actual confusion before the Expert she finds that such confusion was likely to occur. Such confusion would have been detrimental to the Complainant's Rights resulting in possible diversion of trade and dilution of the STEINWAY mark. The Expert therefore finds that the initial use of the Domain Name constituted an Abusive Registration.
From November 2005 the Respondent's site included a disclaimer in the headline of the site in relatively prominent red letters. But the introduction of a disclaimer does not give foolproof protection. The redirection to the Respondent's site was achieved by taking advantage of the well know nature of the STEINWAY mark. Not all visitors to the website would necessarily see the disclaimer in which case they could remain under the mistaken impression that there was a commercial connection between the Complainant and the Respondent. Even if the disclaimer were noticed the visitor to the website may well decide to investigate the Respondent's website resulting in a potential diversion of business away from the Complainant. The Expert therefore finds that the use of the Domain Name alongside the disclaimer also constituted an Abusive Registration.
The apparent abandonment of use of the Domain Name by the Respondent makes no difference to the finding of Abusive Registration. There is nothing to prevent the Respondent from reactivating its use of the Domain Name and, should it do so, it is difficult to see how this would not be abusive under the terms of the Policy. In any event it is well established under the Policy that a finding of Abusive Registration may be made on the basis of historic use of a Domain Name.
In finding that the Domain Name is an Abusive Registration the Expert makes no specific finding that the Respondent has knowingly acted in bad faith. In particular the Expert does not agree with the Complainant's inference that the introduction of the disclaimer and the abandonment of the redirection to its own site indicate in themselves that the Respondent appreciated that it was in breach of the Policy.
The Expert finds that the Complainant has proved on the balance of probabilities that it owns Rights in respect of names or marks which are identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name is transferred to the Complainant.
Sallie Spilsbury
6 February 2006