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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Seven Seas Worldwide Ltd v Allfreight [2006] DRS 4115 (14 December 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4115.html Cite as: [2006] DRS 4115 |
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a. Parties
Complainant: Seven Seas Worldwide Ltd
Country: GB
Respondent: Allfreight
Country: PH
b. Domain Name
sevenseasworldwide.co.uk (the "Domain Name")
c. Procedural Background
Nominet received the Complaint in full on 19 October 2006 and notified the Respondent of the validated Complaint by letter (and e-mail) dated 20 October 2006. The Respondent failed to respond by the deadline and Nominet so informed the Complainant on 14 November 2006. Informal mediation not being possible in these circumstances, Nominet received the appropriate fee from the Complainant on 16 November 2006 for a decision of an expert, pursuant to §7 of the Nominet UK Dispute Resolution Service Policy Version 2, September 2004 (the "Policy").
Steve Ormand, the undersigned, (the "Expert") confirmed to Nominet on 16 November 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.
Definitions used in this decision have the same meaning as set out in the Policy and/or Procedure unless the context or use indicates otherwise.
d. Procedural Issues
The Complaint contains a statement confirming that the Domain Name is identical or similar to a name or mark in which the Complainant has Rights and refers to a witness statement made by a director of the Complainant company to substantiate this statement. However, the witness statement merely notes the name of the Complainant company, Seven Seas Worldwide Ltd, mentions the operation of a company website at sevenseasworldwide.com and provides a print out of this website dated 2 March 2006. Furthermore, in letters from the Complainant's solicitors submitted as evidence, references are made to possible proceedings to seek injunctive relief, but the Complaint form states that no legal proceedings had commenced or ceased in connection with the Domain Name.
The Expert determined not to spend time searching for evidence of Rights but opted instead to invoke §13a of the Nominet UK Dispute Resolution Procedure Version 2, September 2004 (the "Procedure") and request the Complainant, via Nominet, to provide the following:
1. a statement and/or documents setting out the Complainant's Rights in the name; and
2. confirmation of whether the possible proceedings referred to in letters submitted as evidence had been commenced and/or terminated.
The Complainant requested an extension of time to respond. A response was provided by the deadline on 11 December 2006 in which the Complainant submitted a short supplemental witness statement confirming that the Complainant is a limited company (including a Companies House print out) and that the threatened legal proceedings had not been commenced.
Nominet moved the submission date for the Expert's decision to 15 December 2006.
Nominet notified the Respondent of the Complaint by letter, Fax and e-mail to the addresses and Fax number provided to Nominet by the Respondent. Nominet also informed the Respondent by letter and e-mail that, as informal mediation was not possible, the dispute could be referred to an independent expert for a decision. The Respondent's e-mail address returned a delivery failure report on both occasions, but there is no evidence before the Expert to indicate that the Respondent did not receive the letters or Fax sent to its registered address and Fax number.
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 and c of the Procedure.
e. The Facts
Complainant
The Complainant is a private limited company incorporated in England on 29 January 1996. The Complainant changed its name to Seven Seas Worldwide Ltd on 21 April 2004. The Complainant specialises in the transit of personal items by sea.
Respondent
The Respondent registered the Domain Name on 7 February 2006.
f. The Parties' Contentions
The Complaint
In summary, the Complainant's assertions are:
a. Has the proprietorial interest in the name Seven Seas Worldwide having traded under the corporate identity of Seven Seas Worldwide Ltd since 21 April 2004 (and having previously traded as Seven Sea Container Line Ltd since 29 April 1997).
b. Operates a website at sevenseasworldwide.com offering amongst other services the shipping of baggage worldwide.
a. On 20 February 2006 a user typing in the Domain Name was automatically redirected to www.allfreight.co.uk the website of a direct competitor of the Complainant namely Allfreight International Removals Limited ("AIRL") (sample pages dated 24 February 2006 supplied).
b. On 24 February 2006, following correspondence between the Complainant's solicitors and AIRL between 22 and 24 February 2006, the Domain Name resolved to a sub-page of www.allfreight.co.uk which presented the question "What are the Worldwide Seven Seas?" followed by a discussion of the "Seven Seas" and with a banner advertising AIRL's services (sample pages dated 24 February 2006 supplied).
c. Later on 24 February 2006, and on 25 February 2006, the Domain Name resolved to ukreg.com offering domain names for sale (page dated 24 February 2006 supplied).
d. By 27 February 2006 the Domain Name had reverted to the sub-page as at (b) above.
e. On 1 March 2006 AIRL stated that it had been approached by its correspondent in the Philippines to advertise AIRL on the correspondent's website. AIRL stated it did not own the Domain Name but declined to state who did.
f. WHOIS shows the Domain Name to be registered to Allfrieght at the Respondent's address.
g. AIRL are using the Complainant's name to solicit business.
The Response
The Respondent did not reply.
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
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.
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.
The Complainant's submissions in respect of its Rights consists of a statement that it is "plain that [the] company has the proprietorial interest in the name Seven Seas Worldwide", a Companies House print showing that it has been incorporated under this name since 21 April 2004, and a print of a sevenseasworldwide.com web page dated 24 February 2006. On coming into existence, a company does not have the same natural right to use its name as an individual has, but must have established that right by use. Although the web page at sevenseasworldwide.com indicates an established company trading under the name "Seven Seas Worldwide" it provides no evidence of a link to the Complainant.
Despite a request to the Complainant to provide evidence of Rights, it is left to the Expert to seek evidence of whether or not the Complainant has established the company's name in its marketplace sufficient to establish Rights for the purposes of the first limb of the test, and that such Rights existed at the time of registration of the Domain Name. A rigid adherence to consideration of the evidence provided would have this Complaint bordering on being dismissed for failure to establish Rights. Fortunately for the Complainant this Expert considers such rigid adherence to be unjust if a relatively short period of research by an expert can substantiate aspects of the Complaint.
The Expert has established that sevenseasworldwide.com was registered to the Complainant on 18 March 2000 and that perusal of this website does indeed indicate an established company. Furthermore, a Google search on "seven seas worldwide" indicates that the Complainant has established a reputation in its marketplace with university and other websites refering to it as "well established" and "the premier worldwide specialist personal effects shipping company". The Expert accepts that the Complainant has an established reputation and goodwill in the name "Seven Seas Worldwide" and that such reputation and goodwill existed at the time of registration of the Domain Name.
The Complainant has, for the purposes of the first limb of the test pursuant to §2 of the Policy, established Rights in a name, "Seven Seas Worldwide", that is identical to the Domain Name.
Abusive Registration
§3 of the Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The Complaint falls under two heads:
§3a i C of the Policy
It may be evidence of Abusive Registration if circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
Given the evidence of correspondence between the Complainant's solicitors and AIRL, the admitted relationship between AIRL and the Respondent, the web pages submitted in evidence by the Complainant, and the current appearance of the Domain Name website, the Expert accepts that traffic to the Domain Name was re-directed to a competitor's website in or around February 2006. Furthermore, following the correspondence between the Complainant's solicitors and AIRL, the Respondent removed the redirection to the AIRL website and replaced it with banner advertising that linked to the AIRL website. The current status of the Domain Name indicates that the banner advertising and link to the AIRL website has been removed, presumably in response to the Complaint?
The Respondent has not offered any explanation for registration but it appears likely that at the time of registration the Respondent was aware of the Complainant and used the Domain Name to direct customers searching for the Complainant's website to a competitor's website.
§3a ii of the Policy
It may also be evidence of Abusive Registration if circumstances indicate 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.
During the period of time when the Domain Name was linked to the AIRL website, it is likely that some customers believed the Domain Name to be connected with the Complainant and may have purchased services from AIRL. The Respondent's use of the Domain Name prior to 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, sevenseasworldwide.co.uk, be transferred to the Complainant.
Signed: Steve Ormand
Date: 14 December 2006
