NOMINET UK DISPUTE RESOLUTION SERVICE

DRS03470

DECISION OF INDEPENDENT EXPERT

Jacques Vert Plc v Balata.com LLC

1.	Parties
Complainant	:	Jacques Vert Plc
Country		:	GB

Respondent	:	Balata.com LLC
Country		:	Israel 
				
2.	Domain Name
jacquesvert.co.uk

3.	Procedural Background
3.1	The Complaint was lodged with Nominet on 28 February 2006.  Nominet validated the Complaint on 1 March 2006, and notified the Respondent of the Complaint.  
3.2	A Response was received from the Respondent on 7 March 2006, and forwarded to the Complainant.  The Complainant replied in the form of a letter dated 10 March 2006.  
3.3	The Complaint entered into the mediation phase on 12 April 2006, but mediation proved unsuccessful and the Complainant paid the appropriate fee for Nominet to refer the case to an independent expert for a Decision on 19 April 2006.
3.4	On 25 April 2006 Bob Elliott, the undersigned (“the Expert”) confirmed to Nominet that there was no reason why he could not properly accept the invitation to act as Expert in this case, and further confirmed he knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality.  Nominet duly appointed the Expert with effect from 26 April 2006.

4.	Outstanding Formal/Procedural Issues
N/A

5.	The Facts
5.1	The Complainant has been registered at Companies House under its current name Jacques Vert Plc since December 1985.  It designs, manufactures and sells ladies clothing and accessories under the brand name Jacques Vert and other brands.  It has traded continuously under that name since 1986, and currently has approximately 250 outlets in the United Kingdom and Canada.  Its turnover in the year ended 30 April 2005 was £150 million.
5.2	The Complaint exhibits corporate, promotional and stationery material demonstrating the Complainant’s use of the Jacques Vert brand.  It also exhibits copies of trade mark registrations for Jacques Vert in the United Kingdom, and in the EU owned by the Complainant’s wholly-owned subsidiary Jacques Vert Brands Limited, covering the relevant trade mark classes, in particular classes 14, 18, and 25.  A number of those registrations date back to 1984 and 1985.
5.3	The Complainant uses in its business the domain name jacques-vert.co.uk which it registered in 1997.
5.4	The Complainant has no relationship with the Respondent.  It claims to have recently become aware of the use of the Domain Name, which the Respondent registered on 25 May 2004.
5.5	Although there is no contemporaneous printout of the website accessed through the Domain Name attached to the Complaint, the Complaint describes the Domain Name as being “used as a portal to websites selling clothing and accessories, none of which relate to [the Complainant]”.  The Complainant also claims that the website included the words “this domain is for sale”.  This is supported by a printout of the website supplied to the Expert by Nominet dated 1 March 2006 (the date upon which Nominet validated the Complaint) which has a front page linking to various other pages promoting categories of clothing and accessories, and which includes the wording that the domain is for sale.
5.6	It appears that since being notified of the Complaint, the Respondent has changed the website so that it now provides links to websites advertising plants and gardening-related items (although the Expert has found from his own inspection of the website through the Domain Name, that it is still possible to access sites through the Domain Name, which include sites providing items such as fashion clothing).
5.7	The Respondent has already been found to have registered domain names which are abusive registrations within the meaning of the Dispute Resolution Service Policy (“the Policy”) in four cases during the 12 months prior to the lodging of the Complaint, namely DRS 02370 (wagamamas.co.uk), DRS 02455 (ipaqchoice.co.uk), DRS 02462 (marksattin.co.uk) and DRS 02863 (remax.co.uk).
5.8	The Respondent is also the registrant for the domain names windsmoor.com (Windsmoor being another brand owned by the Complainant), and phaseeight.co.uk (Phase Eight being another well known clothing business in the United Kingdom).

6.	The Parties’ Contentions
The Complainant
6.1	The Complainant contends:-
a)	the Respondent has no rights or legitimate interest in the Domain Name, and is not authorised by the Complainant to use the mark or name Jacques Vert;
b)	due to the reputation of the Complainant, it is reasonable to assume that the Respondent must have known of the Complainant’s existence at the time it registered the Domain Name;
c)	the Domain Name in the hands of the Respondent is abusive because:-
(i)	it was registered for the purposes of selling it on to the Complainant or a competitor (as evidenced by the “this domain is for sale” sign on the website);
(ii)	it is being used by the Respondent in a way which will inevitably confuse people or businesses into believing the Domain Name is registered to or otherwise connected to the Complainant;
(iii)	it is one of a series of registrations that the Respondent has made, which because of their number, type and pattern prove that the Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well known names in which the Respondent has no apparent interest.  The previous decisions against the Respondent under the Policy, and the other domain names referred to above, render the Domain Name registration automatically abusive.
6.2	The Complainant seeks the transfer to itself of the Domain Name.

The Respondent
6.3	In its Response of 6 March 2006, the Respondent claims to have bought the Domain Name “because it is combined of two generic words: Jacques Vert (Jacques Vegetation), in order to provide information on Plants.   Our website doesn’t provide any information related to the complainant’s trademark.  Therefore we don’t see any reason for confusion with the complainant”.

The Complainant’s Reply
6.4	The Complainant has challenged the Respondent’s explanation, referring to the website’s previous content, and to the possibility of a change back to such content in the future.  The Complainant also refers to the Respondent having adopted similar tactics in previous cases, including DRS 02462 (marksattin.co.uk), where the  Respondent apparently changed the website in question from one providing information about recruitment (which was the business of the Complainant in that case), to one providing information about loans, following the receipt of a cease and desist letter.
6.5	The Complainant also refers to further registrations in the name of the Respondent, namely virginfm.co.uk and lutontownfc.co.uk.

7.	Discussions and Findings
General
7.1	For the Complainant to succeed according to paragraph 2 of the Policy, the Complainant must prove to the Expert on the balance of probabilities both of the two elements set out in paragraph 2.a of the Policy, namely 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.

Complainant’s Rights
7.2	The definition of Rights under the Policy “includes, but is not limited to, rights enforceable under English Law”.  
7.3	The Complainant has provided convincing evidence of its use and ownership of the Jacques Vert brand and trade mark (including Certificates of Registration of trade marks in the name of its wholly-owned subsidiary).  Disregarding the suffix .co.uk, the Domain Name is clearly identical to the Jacques Vert name or mark.  Therefore, the Complainant has established that it has rights in accordance with paragraph 2 of the Policy.

Abusive Registration
7.4	The Policy sets out in paragraph 3.a a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration.  One of those (3.a(iii)) is where “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”.
7.5	Under paragraph 3.c of the Policy it is provided that “There shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed.  This presumption can be rebutted (see paragraph 4(c))”. 
7.6	Paragraph 4.c of the Policy provides that “If paragraph 3(c) applies to succeed the Respondent must rebut the assumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration”.   
7.7	Although the Expert is prepared to find that the Complainant has in any event provided sufficient evidence to establish a pattern of registration in accordance with paragraph 3.a(iii) of the Policy, it is plain that this is a case where the presumption in paragraph 3.c of the Policy applies (see paragraph 5.7 above).  Unless the Respondent is able to rebut that presumption, the Complainant’s case clearly succeeds.  
7.8	Addressing the Response filed by the Respondent, it seems to the Expert that it suffers from the following defects:-
a)	it does not explain the previous findings of Abusive Registration in earlier cases;
b)	the explanation provided is wholly implausible;
c)	the word “Jacques” is plainly not generic;
d)	it does not explain the previous links from the website to clothing and accessories;
e)	it does not address the possibility of future changes to the website;
f)	it does not deal with the other registrations cited by the Complainant which have not yet been subject to a decision under the DRS, or UDRP.
7.9	In the circumstances, the Respondent has failed entirely to rebut the presumption in 3.c of the Policy, and in the Expert’s view, the Domain Name, in the hands of the Respondent, is an Abusive Registration.
7.10	In view of that finding, the Expert does not need to consider the other submissions made by the Complainant.

8.	Decision
8.1	The Expert finds that the Complainant has established that it has Rights in respect of a name or mark which is identical to the Domain Name, and that the Domain Name in the hands of the Respondent is an Abusive Registration.  The Expert orders that the Domain Name should be transferred to the Complainant.

Bob Elliott

Dated:        27 April  2006