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Nominet UK Dispute Resolution Service

DRS Number 03857

Artex Limited

v.

Ceildoor Products Limited

Decision of Independent Expert

1. Parties

Complainant: Artex Limited

Country: U.K.

Respondent: Ceildoor Products Limited

Country: U.K.

2. Domain Name

The domain name in this case is (hereinafter "the disputed domain name") which was registered on January 11, 2003.

3. Procedural Background

The Complaint was lodged with Nominet UK ("Nominet") on July 24, 2006. On July 25, 2006, hard copies were received in full, and Nominet validated the Complaint as well as notifing the Respondent of the Complaint giving them 15 working days within which to lodge a Response. No Response was filed and so Nominet did not initiate its Informal Mediation procedure. On August 30, 2006 the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet's Dispute Resolution Service Policy ("the Policy").

On September 1, 2006 the undersigned, Mr. David H Tatham ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an Expert in this case and further confirmed that 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 and he was selected by Nominet as the Expert for this case on the same day.

4. Outstanding Formal/Procedural Issues (if any)

There are no outstanding Formal/Procedural issues.

5. The Facts

The following facts were submitted on behalf of the Complainant and a number of proofs thereof were annexed to the Complaint.

The Complainant is part of a family of companies which it referred to as "the Joint Complainants". This family comprises: the Complainant (Artex Limited), BPB United Kingdom Limited (hereinafter "BPB"), and Profilex Limited (hereinafter "Profilex") a company which was registered at Companies House on 7 September 1987. All of the shares in the Complainant are owned by BPB and have been since January 2001. The entire share capital of Profilex was acquired by BPB in 1998 following which the business of Profilex was handled by BPB's subsidiary Artex Blue-Hawk Limited. In March 2003 all of the shares in Profilex were transferred to the Complainant which continued to trade by reference to the PROFILEX name. In February 2006 the Complainant changed its corporate name from Artex Rawlplug Limited to Artex Limited following the disposal by it of the Rawlplug business.

Profilex traded under and by reference to the name PROFILEX from its incorporation and since the acquisition of the company by BPB in 1998. BPB has through its subsidiaries, in particular the Complainant, traded under and by reference to that name and mark.

The Complainant provides access panels for a variety of uses including in plasterboard or masonry walls, ceilings and partitions under the name PROFILEX. It has advertised using the name PROFILEX and spends approximately £20,000 per annum on such advertisements.

BPB owns the trade marks PROFILEX and GYPROC PROFILEX which are registered in the U.K. in classes 6 and 19 with effect from 20 August 2003 under Nos. 2341204 and 2341203 respectively. BPB, as the parent company of the Complainant, has agreed on an informal basis that it may have exclusive use of these trade mark registrations in respect of the goods for which they are registered.

The Respondent also sells access panels in competition with the Complainant. It registered the disputed domain name on 11 January 2003. The Complainant first became aware that the Respondent had registered the disputed domain name in or around August 2003. The Respondent at that time was using the disputed domain name to divert internet traffic to its own web site. The Complainant's solicitors, Shoosmiths, wrote to the Respondent at the address appearing on the WHOIS search at that time on behalf of the Joint Complainants claiming that the Respondent's actions amounted to trade mark infringement and passing off and requesting that appropriate undertakings to desist be given by the Respondent.

The Respondent appointed Burns-Beech solicitors to respond to Shoosmiths' letter. In their letter of 4 May 2004 Burns-Beech made various assertions but ultimately agreed that their client would remove the link from the disputed domain name to their own web site. Shoosmiths' letter of 5 July 2004 noted the comments made by Burns-Beech but did not admit them and their subsequent letter of 16 July 2004 confirmed that the Complainant would not be taking further action given the removal of the link by the Respondent. However, Shoosmiths did point out that they would not expect the Respondent to renew the disputed domain name when it fell due in January 2005 if it had no intention of using the same again. Shoosmiths reserved their clients' rights to continue in their claim if the Respondent should use the disputed domain name again or renew it.

On a review of the matter in January 2005 Shoosmiths identified that despite its warning the Respondent had in fact renewed the disputed domain name for a further two year period. Shoosmiths wrote to Burns-Beech on 21 January 2005 requesting an explanation for their client's actions. This led to a chain of further correspondence between Burns-Beech and Shoosmiths during which Burns-Beech made various assertions which were not admitted by the Complainant. In Burns-Beech's letter of 27 April 2005 they stated clearly that the Respondent had no intention of using the disputed domain name but provided no explanation why, if this were the case, the Respondent should have renewed the same. In that same letter Burns-Beech offered to transfer the disputed domain name for the sum of £787.50 which they implied, without actually saying so, was the cost that the Respondent had incurred in registering and maintaining the disputed domain name. Shoosmiths in response requested a break down of how these costs had been incurred but this received a difficult reply from Burns-Beech. The Complainant therefore decided that in order to bring the matter to a conclusion they would agree to pay the sum requested without seeing the break down. Shoosmiths wrote to Burns-Beech on several occasions suggesting ways of finalising the agreement and putting it into operation but again this was met with negative responses. Although some of this correspondence is marked "without prejudice" the Complainant refers to paragraph 6 of the Policy that permits the use of such correspondence in submissions.

Finally Shoosmiths received a letter from Burns-Beech dated 26 May 2006 in which they stated that their client was considering selling the disputed domain name to an undisclosed third party who had approached them and that the Respondent now expected the Complainant to pay £2,000 to secure the disputed domain name. Shoosmiths responded to this letter stating that this would not be paid and demanding that the disputed domain name be transferred as previously requested.

6. The Parties' Contentions

Complainant

The Complainant contends that the disputed domain name in the hands of the Respondent is abusive because:

a. It was primarily registered to unfairly disrupt the business of the Joint Complainants. Once registered, the Respondent initially used the disputed domain name to divert internet traffic to the web site of the Respondent which is a competitor of the Joint Complainants. That internet traffic would have expected that, on clicking on the disputed domain name, they would be taken to a web site operated by one of the Joint Complainants given the fact that the domain name consisted of a well known trading name of the same and of a registered trade mark belonging to BPB, and would therefore be the expected domain address for such a web site. The Respondent, through its solicitors Burns-Beech, clearly accepted, in a letter dated 4 May 2004, that such a link was in place. The Respondent has argued that the disputed domain name was registered when there were no registered rights in Profilex which is true, but at the time of the registration of the disputed domain name, BPB through its ownership of Profilex and its use of the name had amassed considerable goodwill and could have protected its rights by the law of passing off. The Respondent has also argued that it had no knowledge of the Joint Complainants' rights at the time of registration of the disputed domain name. The Complainant does not accept that this is the case – the Respondent would have had knowledge of BPB and its brands as it was the market leader in the parties' common field of activity. The trade mark in question is not generic or descriptive and therefore it is unthinkable that the Respondent would have developed its own identical name. The Complainant submits that the Respondent had full knowledge of the Joint Complainants' trade marks and trading names and deliberately chose to register that name as the disputed domain name in order to divert custom away from the Joint Complainants and to trade off their goodwill;

b. It was primarily registered to stop the Complainant or any of the Joint Complainants registering the disputed domain name itself despite their rights in the name. In addition to the initial use of the disputed domain name for diversion of custom as described above, at the very least the renewal of the disputed domain name in January 2005 (which the Complainant submits should be considered in the same way as a registration) was designed to block the registration of the same by the Complainant. In the previous correspondence between Shoosmiths and Burns-Beech, the latter on several occasions asserted that their client had no intention of using the disputed domain name. If this is the case then there can be no other reason for the renewal of the registration than as a blocking tactic. Burns-Beech have provided no explanation of their client's behaviour to rebut this assertion. Further, the renewal was carried out after the registration of the trade marks of which the Respondent had full knowledge due to the previous correspondence;

c. The Respondent has, since at least 27 April 2005, attempted to recover more than the actual cost of registering and maintaining the disputed domain name which it has incurred in return for agreeing to transfer the Disputed domain name to the Complainant. Although the Complainant reluctantly agreed to pay the original sum requested of £787.50 it was never accepted that this was an accurate figure (which was why a breakdown of the costs was requested) and, in fact, initially a counter-proposal of £250 was put forward which was felt by the Complainant to be more realistic. The sum of £2,000 now suggested by the Respondent as the cost for the transfer is clearly far in excess of what it will have paid to register and maintain the disputed domain name.

d. The Respondent is now threatening to sell the disputed domain name to a third party despite being fully aware of the dispute over ownership of the same and in full knowledge that the Joint Complainants own the intellectual property rights to the mark PROFILEX. The Respondent was put on notice of the Complainants' rights in a letter to them in April 2004.

Respondent

As noted above, the Respondent did not file a response.

7. Discussion and Findings:

General

According to paragraph 2(a) of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities –

i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and

ii the disputed domain name, in the hands of the Respondent is an Abusive

Registration.

The absence of a response from a Respondent does not mean that he has no answer to the Complaint. A Complainant must still make out its case and, having done so, the burden is on a Respondent to prove otherwise. In this case, the Complainant has made out a prima facie case, so the burden of proof has shifted to the Respondent, but he has chosen to remain silent.

Preliminary Issue

The Complainant has filed copies of 22 items of correspondence 9 of which are marked "Without Prejudice". Under paragraph 6 of the Policy an Expert is given the option of either taking such documentation into consideration in his Decision or not. In this case the Expert considers that there is no reason why any of the correspondence should be ignored or suppressed as in total it gives a very clear picture of the attitudes of the two parties in thius case. He has therefore considered all of it in his Decision.

Complainant's Rights

The Complaint has been filed in the name of Artex Limited and in the Complaint it is made clear that this company is a wholly owned subsidiary of BPB, as is another company called Profilex Limited. In the Complaint these 3 companies are referred to as "the Joint Complainants" and this is probably because on Nominet's electronic Complaint Form it is only possible to identify one person as the Complainant. Nominet's advice when there are multiple Complainants is to list all the other Complainants in the body of the Complaint – as has been done here. In these Findings, the Expert has distinguished between the different parties by identifying Artex Limited as 'the Complainant' and Artex, BPB and Profilex as 'the Joint Complainants'.

The two trade marks PROFILEX and GYPROC PROFILEX are registered in the name of BPB and the Expert notes that they were only applied for in August 2004 which coincides with the moment when the disputed domain name came to the Complainants' attention. The first of these trade marks is identical to the disputed domain and the second is, in the opinion of the Expert, confusingly similar thereto.

It would appear that there is no formal licence agreement between BPB and the Complainant, but we are told that the latter apparently has the exclusive rights to use the trade marks. Prior to the name PROFILEX being registered as a trade mark, it was the third Complainant, Profilex Limited who used the name and, presumably, acquired goodwill and common law rights in it as a result of its use of the name since its incorporation in 1987. In fact the evidence filed as part of the Complaint indicates that the current actual user of the name 'Profilex' is a company called "British Gypsum Limited" which, again according to the literature, is also a subsidiary of BPB. No mention is made of British Gypsum Limited in the Complaint itself, and it is not one of the 3 "Joint Complainants". This use also appears to be in contradiction of the claim that it is Artex Limited who has the exclusive right to use the name PROFILEX. But this is a minor aberration and does not affect the fact that it is BPB who owns the trade mark PROFILEX, and BPB is one of the Joint Complainants. The corporate structure of the BPB Group may look complicated to an outsider, but it is clear that between them, the 3 Joint Complainants have acquired substantial rights in the name PROFILEX. As noted above, this is identical to the disputed domain name, so the first requirement of paragraph 2(a) of the Policy is proved.

Abusive Registration

In the Policy, an "Abusive Registration" is defined in the following terms –

An Abusive Registration means 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

It is clear to the Expert that these requirements have been met. The Complainant and the Respondent are direct competitors, both of whom make and sell access panels. The name 'profilex' has been around since at least 1987 when a company of the same name was incorporated. Yet in January 2003 the Respondent registered the disputed domain name and, not content with mere registration, apparently proceeded to direct traffic from the site to his own site. It is inconceivable that he was unaware when he did so that the name belonged to and was being used by another and it was therefore not very surprising that, when his domain name registration was objected to, he agreed with barely a fight to give it up. The Complainant, somewhat magnanimously and in the event unwisely, did not insist on the name being either transferred or cancelled but simply asked that it should not be renewed when it fell due for renewal in 2005.

However the Respondent did renew the registration and, soon after learning of this, the Joint Complainants' objection to the name was revived. This time the Respondent did not give in and, after initially arguing that the Complainant had no case, clearly decided that he could make some money out of the disputed domain name. He initially asked for the curious sum of £787.50 which was rightly queried by the Complainants' solicitors. However when this figure was raised to £2000, the Complainant's patience finally snapped and this Complaint was filed.

Paragraph 3 of the Policy sets out a non-exhaustive list of factors that define what may be an Abusive Registration, and the following would appear to be relevant in this case:

3(a)(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.

3(a)(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;

There is no direct evidence that anyone has been confused into thinking that the disputed Domain name belongs to the Complainant. However it would be surprising if they had not been because if, as the Complainant contends although without filing any proof, traffic was directed from the site at the disputed domain name to the Respondent's own site, then somebody somewhere is sure to have been confused. Apart from which, this activity would clearly have unfairly disrupted the Complainant's business and the disputed domain name would have proved to be a blocking registration.

All in all therefore, the Expert has had little hesitation in concluding that this alone must make the disputed domain name an Abusive Registration.

However the Complainant has also charged the Respondent with attempting to sell the disputed domain name for more than his out-of-pocket expenses. This may not have been the primary purpose of registering the name, but it is a charge that is difficult to refute. The Respondent's initial request was for £787.50 and, as it costs only a few pounds to register a domain name, it is not surprising that the Complainant's solicitors suspected that this demand may have been an attempt by the Respondent to recover some or all of its legal expenses, and so asked for a break down of this figure. The figure was subsequently raised to £2000, which is far in excess of anyone's out-of-pocket expenses. In their final letter to the Respondent's solicitors, the Complainant's solicitors described this sudden and steep increase as "scandalous" and in the light of the previous correspondence exchanged between them, the Expert cannot but agree with this epithet.

The Respondent claims that it only registered the name because it thought it was no longer in use but, since both companies are in direct competition with each other, selling identical products, with the Complainant claiming to be the market leader, the Respondent must have been aware of the Complainant's activities, so this excuse is clearly pure invention.

In the opinion of the Panel this is a very clear case of an Abusive Registration.

8. Decision

The Expert finds that between them the 3 Joint Complainants have rights in the name PROFILEX and that it is identical to the disputed Domain Name.

The Expert further finds that the disputed Domain Name is an Abusive Registration in the hands of the Respondent.

The Expert therefore directs that the disputed Domain Name be transferred to the Complainant.

David H Tatham

September 13, 2006