Nominet UK Dispute Resolution Service

DRS 03614

EAS Distributors (UK) Ltd -v- Abnoba Solutions

Decision of Independent Expert

a.	Parties

Complainant:	EAS Distributors (UK) Ltd
Country:	GB

Respondent:	Abnoba Solutions
Country:	GB

b.	Domain Name

eas-distributors.co.uk (the “Domain Name”)

c.	Procedural Background

Nominet received the Complaint in full on 20 April 2006 and notified the Respondent of the validated Complaint by letter (and e-mail) dated 20 April 2006.  The Respondent did not respond to the Complaint and Nominet so informed the Complainant by letter (and e-mail) dated 16 May 2006.  Informal mediation not being possible in these circumstances, the Complainant paid Nominet the appropriate fee on 19 May 2006 for a decision of an Expert, pursuant to §7 of the Nominet UK Dispute Resolution Service Policy (the “Policy”).  

Steve Ormand, the undersigned, (the “Expert”) confirmed to Nominet on 19 May 2006, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties that might appear to call into question his independence and/or impartiality.

d.	Procedural Issues

Nominet notified the Respondent of the Complaint by letter and by e-mail addressed to: enquiries@abnoba.co.uk; phil@abnoba.co.uk; postmaster@eas-distributors.co.uk.  The Respondent was also informed by letter and e-mail to the same addresses that, as informal mediation was not possible, the dispute could be referred to an independent expert for a decision.  Although the e-mail address at postmaster@eas-distributors.co.uk returned a delivery failure report on both occasions, there is no evidence before the Expert to indicate that the Respondent failed to receive the e-mails at its registrant’s e-mail address nor the letters sent to its registered administration address.

In the absence of evidence of exceptional circumstances that prevented the Respondent from submitting a response to Nominet within the required time period; the Expert will now proceed to a Decision on the Complaint in accordance with §15b of the Nominet UK Dispute Resolution Procedure (the “Procedure”).

e.	The Facts

Complainant

The Complainant was incorporated in the UK in October 1991 and supplies electronic article surveillance (EAS) equipment to the retail security market.  The Complainant claims to be the leading distributor of retail security equipment to the retail security market in the UK.  Its market is predominantly in the UK but it also distributes to Europe.  

There is no recorded previous company name information over the last 20 years in the Companies House webcheck service.

Respondent

The Respondent registered the Domain Name on 3 November 2005.  

f.	The Parties’ Contentions

Complainant

The Complaint

The Complainant’s assertions are:

1.	That the Domain Name is identical to the name “eas distributors” in which the Complainant has Rights (as defined in §1 of the Policy) because:

a.	It has traded under this name in the retail security market since October 1991.
b.	It is the leading supplier of retail security equipment in the UK and distributes such products under the name “eas distributors” via its website at www.eas-distributors.com, other websites and/or channels.

2.	That the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in §1 of the Policy) because:

a.	The Respondent has directed the Domain Name to www.securitytagshop.co.uk which is a direct competitor to the Complainant and its websites at www.eas-distributors.com and www.retailsecuritytrader.co.uk.
b.	One of the directors of the Respondent is also a director of QD Trading which runs the competitor website www.securitytagshop.co.uk (company search information is provided in evidence; in addition, evidence is provided to show that the Respondent is the registrant of the website www.securitytagshop.co.uk).
c.	The Respondent registered the Domain Name just after the Complainant launched its retail website www.retailsecuritytrader.co.uk in competition to www.securitytagshop.co.uk.
d.	When a customer forgets the address of the Complainant’s website at www.eas-distributors.com and enters the Domain Name by mistake, they are directed to the competitor website www.securitytagshop.co.uk.  The Complainant is aware of this happening to several customers who advised the Complainant of this abusive use of the Domain Name.  
e.	An unknown value of sales has been lost by this redirection of customers from the Complainant to securitytagshop.co.uk.

Respondent

The Respondent has not submitted a Response. 

g.	Discussion and Findings

General

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both limbs of the test that:

1.	it has Rights in respect of a name or mark identical or similar to the Domain Name; and
2.	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

The wholly generic domain suffix “.co.uk” is discounted for the purposes of establishing whether the Complainant has Rights in a name or mark which is identical or similar to the Domain Name.

Rights is defined in §1 of the Policy as including, but not limited to, rights enforceable under English law, but a Complainant may not rely on rights in a name or term that is wholly descriptive of the Complainant’s business; "wholly" is defined in the Collins English Dictionary as "1. completely, totally or entirely. 2. without exception, exclusively".

The Complainant relies on the goodwill it has established in the retail security market over at least a 20 year period trading under a name that is identical to the Domain Name except for the insertion of a hyphen between “eas” and “distributors” in the Domain Name.  The name could be considered to be descriptive of the Complainant's business, but is this without exception, or exclusively, a description of the Complainant's business?  It is possible to establish goodwill if the descriptive words have established a secondary meaning to the customer, for example: British Telecom; British Airways.  The mark EAS has also been successfully registered as a trademark in several classes by other parties, but not in relation to retail security products.

In the Expert's opinion, the Complainant has, on the balance of probabilities, established goodwill in the name “eas distributors” in the retail security products market such that it is not wholly descriptive of the Complainant's business.

The Expert finds that the Complainant has, for the purposes of the first limb of the test pursuant to §2 of the Policy, established rights in a name that is identical to the Domain Name save for the addition of the hyphen.  

Abusive Registration

The Complainant asserts that the Domain Name directs visitors to a website offering security products in competition to the Complainant and that several customers have reported this to the Complainant.  Nominet provided a screen dump of the Domain Name dated 20 April 2006 that demonstrates that it resolved to securitytagshop.com offering security products.  

The Expert attempted to visit the Domain Name and discovered that as at 10 June 2006 it resolved to a page that announced “Coming Soon Energy and Sports Distribution”.  The Expert also visited securitytagshop.co.uk and found that it resolved to a website with a prominent heading “www.securitytagshop.com” offering security products.  The Internet Explorer title bar for this website states: “securitytagshop.com the place for security tagging, tags, labels, system, EAS”.  There is also a link to the same website from qdtrading.co.uk.

The Complainant has demonstrated that the Respondent is the registrant of the Domain Name and www.securitytagshop.co.uk.  The Respondent is also the registrant of qdtrading.co.uk and securitytagshop.com.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in §3 of the Policy.  The factors that may be relevant in this Complaint are set out below.

§3a i C of the Policy

It may be evidence of Abusive Registration if the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.

The Complainant has not provided evidence of the Respondent’s purpose in registering the Domain Name, and the Respondent has not offered any explanation for such registration. 

However, given the Complainant’s standing in the retail security products market and its long standing use of the name, and given that the Respondent also operates in the same market and had linked the Domain Name to its competing website, the Respondent must have been aware of the Complainant operating under the name in that market.  Subsequent to notification of the Complaint, the Respondent has removed the link from the Domain Name to its website at securitytagshop.co.uk and replaced it with the announcement discussed above.  In the circumstances, the Expert is entitled to conclude that the Respondent’s action is an attempt to disguise the abusive purpose of its registration and use of the Domain Name: if its purpose was to prepare to use the Domain Name in a genuine offering of goods or services then why has the Respondent not come forward with such explanation?

§3a ii of the Policy

It may also be evidence of Abusive Registration if 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.  

During the period of time when the Domain Name was linked to the Respondent’s competing website, it is likely that some users believed the Domain Name to be connected with the Complainant and those people purchased a product or service from the Respondent.  The Expert concludes that the Respondent’s use of the Domain Name prior to the date of the Complaint had the potential to cause confusion or has caused actual confusion. 

Conclusion

The Expert finds, on the balance of probabilities, that the Respondent has registered the Domain Name in a manner consistent with §3a.i.C of the Policy, and has used it in a manner consistent with §3a.ii, which is an Abusive Registration in contravention of the Policy.

h.	Decision

In light of the foregoing findings, namely that the Complainant has Rights in respect of a name which is identical to the Domain Name and the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, eas-distributors.co.uk, be transferred to the Complainant.

Signed
Steve Ormand

Date: 	10 June 2006