NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 4261
Clark Equipment Company v Geoff Hamlen
Decision of Independent Expert
- Parties:
Complainant: Clark Equipment Company
Country: US
Respondent: Geoff Hamlen
Country: GB
Disputed Domain Names
bobcat.co.uk ("the Domain Name")
- Procedural Background:
The Complaint, Response and Reply were lodged with Nominet in full on 29 November 2006, 20 December 2006 and 5 January 2007 respectively. On 31 January, the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
Cerryg Jones, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as 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.
- Outstanding Formal/Procedural Issues (if any):
There are no other outstanding procedural issues that arise.
- The Background:
The Complainant is a leading manufacturer of compact equipment, particularly vehicles known as skid-steer loaders, which are relatively small, versatile vehicles, used for moving material or landscaping. The Complainant alleges that the trade mark BOBCAT was first used in the United States in relation to skid-steer loaders in 1962, and that the mark has become famous worldwide, as illustrated by the fact that the BOBCAT skid-steer loader was named by Fortune magazine in 1988 and 1991 (apparently the last time this list appeared) in its "America's Best" list, which lists 100 American-made products that represent the best of their kind, anywhere in the world.
It appears from the Complainant's website that the BOBCAT product range has expanded since the mid-1980s to include compact track loaders, mini-track loaders, compact hydraulic excavators, telescopic tool carriers as well as a range of attachments. The products are distributed through a network of over 900 authorised dealers, which operate in 75 countries, of which 18 are based in the UK. A list of authorised distributors in the UK has been exhibited to the Complaint.
The Complainant alleges that BOBCAT skid-steer loaders were first sold in the United Kingdom in about 1965. It seems that BOBCAT loaders were manufactured in Europe under licence from the Complainant's predecessor, but that this changed in the 1970s, when the Complainant began exporting BOBCAT loaders directly to Europe, including the UK. The European business apparently accounts for over a quarter of worldwide sales of BOBCAT products.
The Complainant is the proprietor of 3 UK and 1 CTM registrations of the trade mark BOBCAT (word only and stylised). Printouts showing details of each of the registrations in question are exhibited to the Complaint. The earliest registration, UK No. 1192693 relates to goods in Class 12 and dates from 23 March 1983. The other registrations cover goods in (variously) class 7, 8, 12 and 37.
The Respondent is the Managing Director of a UK company called Bobcat Plant Hire (UK) Limited, which is now in liquidation. This company became an authorised UK distributor of the Complainant's products on 1 October 1997 until it resigned as a distributor in December 2004, having given written notice on 3 September 2004 (the resignation letter has been exhibited to the Complaint by the Respondent). This agreement was made by the Complainant's European affiliate, Melroe Europe, initially for a one-year term, which was subsequently renewed and was in effect until the date of termination.
Clause 4.2 of the distributorship agreement states that Bobcat Plant Hire (UK) Limited was not entitled to use the trade mark BOBCAT in the distributor's name without prior written authorisation and, by clause 4.4, upon termination, that it was to immediately cease the use of BOBCAT "…and shall not thereafter use any deceptively similar name or trademark tending to give the impression that the relationship between MELROE (the European affiliate's business) and [Bobcat Plant Hire (UK) Limited] still exists".
A "WHOIS" search conducted by the Complainant on 16 March 2004 is exhibited to the Complaint, which shows that the Domain Name was owned at that time by Bobcat Plant (which appears to be the former trading name of Bobcat Plant Hire (UK) Limited), and was used to resolve to a website promoting the goods and services of Bobcat Plant Hire (UK) Limited. The Domain Name appears to have been transferred to the Respondent on 7 April 2006, and is now used to promote what appears to be essentially the same business, again under the trading name "Bobcat Plant."
5 The Complainant's submissions
The Complainant alleges as follows:
- That neither the Respondent nor Bobcat Plant Hire (UK) Limited owns a trade mark registration for BOBCAT. The Respondent's website refers to the trading name "Bobcat Plant", which is not the same as the mark Bobcat. Even if the Respondent has rights in the name Bobcat Plant (which is not admitted by the Complainant), neither the Respondent nor Bobcat Plant Hire (UK) Limited have any rights in the name/trade mark BOBCAT.
- That the Domain Name in the hands of the Respondent is an abusive registration under paragraphs 1(i) and (ii) of the DRS Policy essentially because the Domain Name consists of the name Bobcat and is likely to be perceived by customers as a representation that the website is approved or official because it implies that the Respondent is operating a business connected to the Complainant's business.
- That the website to which the Domain Name resolves furthers this misrepresentation. The first reference found by the Complainant's search for Bobcat carried out using Google's search engine - configured for UK results only - is alleged to be the website to which the Domain Name resolves, which states "Welcome to Bobcat Plant Hire & Sales Bobcat Plant are a family run company who are the official South West and South Wales Dealers for the internationally known company, Bobcat, whose products…" The search results are attached to the Complaint.
- The cached page of the website is also attached to the Complaint and is identified as being retrieved by Google on 15 November 2006. The source code for the said website (which is exhibited to the Complaint) reveals that the website contains a metatag, which identifies Bobcat Plant as being the official South West and South Wales dealers for Bobcat products. This source code was printed out on 21 November 2006. The Complainant contends that this constitutes a false statement allowing the Respondent to represent himself improperly as being connected with the business carried on by the Complainant.
- That the use of the Domain Name is without permission from the Complainant, and, as a result, that it is likely to be perceived as a representation that the Domain Name and website to which it resolves are authorised by the Complainant; this is said to lead to the Domain Name taking unfair advantage of or being unfairly detrimental to the Complainant's rights.
- That, when Bobcat Plant Hire (UK) Limited was an authorised distributor, it cannot have had any proper basis for registering the Domain Name comprised solely of the Complainant's registered trade mark BOBCAT because it implies that it is the official domain name of the company operating the Bobcat business in the UK and not that of an authorised distributor. It is alleged that this means the Domain Name was registered in a manner which took unfair advantage of the Complainant's rights.
- That the Respondent has acquired the Domain Name from Bobcat Plant Hire (UK) Limited for no proper purpose, and this, too, takes unfair advantage of and is unfairly detrimental to the Complainant's rights. The Respondent's use of the Domain Name enables him - it is alleged - to represent improperly that he is affiliated in some way with the business carried on by the Complainant and this use takes unfair advantage or is unfairly detrimental to the Complainant's rights.
- That the Complainant does not know whether the Bobcat products shown on the website to which the Domain Name resolves are genuine. The Complainant concedes that the Respondent is entitled to use the trade mark BOBCAT in order to describe genuine products and repair services, provided that the trade mark is used in such a way as to be in accordance with honest practices in industrial or commercial matters. But such entitlement does not afford, according to the Complainant, the Respondent the right to use the Domain Name and the Complainant's registered trade marks to gain an unfair advantage; this advantage arises because it implies (so the Complainant contends) that there is an association between the Respondent and the Complainant. This is alleged to breach the distributorship agreement and is likely to be detrimental to the Complainant because customers will believe that any repair services provided by the Respondent are being provided by an authorised Bobcat distributor, who has been vetted to ensure that they provide services which comply with the standards set down by the Complainant, when this is not in fact the case.
- That the European Court of Justice case of BMW v Deenik (c-63-97), supports the Complainant's case and, in particular, the following part of the judgment: "Articles 5 to 7 of First Directive 89/104 do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the sale or the repair and maintenance of such goods, unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings."
- That the appeal decision reached by the Nominet Dispute Resolution Service in relation to the domain names seiko-shop.co.uk and spoonwatchshop.co.uk also supports the Complainant's case. The Complainant refers to the fact that these domain names were both held to be abusive registrations even though the respondent in that case was selling SEIKO watches.
- That in this particular instance, the Respondent has gone beyond using the Complainant's trade mark for the purpose of informing the public that it is selling Bobcat products and carrying out repairs on those products and has used the mark in such a way that it creates the impression that the Respondent is affiliated to the Complainant or its network of authorised distributors or that there is some other special relationship between the two undertakings. If the Respondent sells, services, and/or maintains genuine Bobcat products he may inform the public of this fact; but he is not entitled to usurp the Complainant's trade mark and take it for his domain name in order to do so.
6 The Respondent's Response
The Respondent submits as follows:
- That "Bobcat" is a generic term meaning a skid-steer loader: the skid-steer loader has evolved since the original Bobcat skid-steer loader was developed by two brothers in North Dakota for cleaning out their turkey sheds. This type of vehicle is now manufactured by numerous companies under their own brand names and distributed worldwide to a diverse customer base. "Bobcat" has become a universally recognised generic term for a skid-steer loader, as 'hoover' is alleged to be the most commonly recognised term for a vacuum cleaner. The term 'bobcat' is used by most customers as a purely general term for a skid-steer, as they use 'JCB' when referring to excavators. The Respondent refers to the case of Parmaham.co.uk and parma-ham.co.uk DRS 00359 where the Expert stated that the Respondent had 'reasonably taken the view that these marks were generic or descriptive' and the comments of the Appeal Panel, in particular section 3, that 'it was reasonable to infer that to the UK public "Parma Ham" was an everyday descriptive term'. The Respondent says that he is not using the term "bobcat" to create an impression of any commercial connection with the Complainant.
- That "bobcat" would not immediately identify the expanded range of the Complainant's product range (for instance hydraulic excavators, telescopic tool carriers etc), and is only applicable to the skid-steer. The term 'bobcat', when used in its generic sense, is not a trade mark owned by the Complainant. Many websites completely unrelated to the Complainant's business are alleged to include the term "bobcat."
- That, given the Complainant's focus on exporting its products into Europe, it should have also registered a more comprehensive list of European-linked domain names at that time, including the Domain Name.
- That the Respondent, as managing director of Bobcat Plant Hire (UK) Ltd - and having signed an agreement with Bobcat Europe in 1997 to distribute their products - foresaw the internet to be a potentially powerful marketing tool, and so decided in 1998 to register the Domain Name. The Respondent says that he realised that the more concise the domain name, the greater chance of more hits to his website. He goes on to say that, in good faith, he chose a freely available, unadopted name that accurately corresponded to his company's title, Bobcat Plant Hire (UK) Ltd.
- The Domain Name was equally available to the Complainant (or any other persons). The Respondent asks why the Complainant – as such a well resourced business – failed to realise an opportunity to obtain the European and UK related domain names for "bobcat". The Respondent's research into European-relevant domain names show that the Complainant has failed to acquire several such names, despite its assertion that the European market represents over a quarter of its worldwide sales. In the circumstances, the Respondent believes that it is unreasonable for the Complainant to infer that the Respondent took unfair advantage or made an abusive registration.
- That the Domain Name has been in use under its current ownership for over six years, during which time the Complainant has been fully aware of its existence and status and at no time has the Complainant made a complaint about its registration until now. The website was originally designed to promote the Respondent's business activities; sale, hire and service of compact equipment, including but not exclusively, the Complainant's products, in accordance with the distributor agreement. The Respondent says that it is clear from his website that he runs a 'family-run' business serving a local area within the UK, not - as the Complainant suggests - as the Complainant's authorised distributor.
- In December 2004, the Respondent says that, following the termination of the distributorship agreement, the contents of the website were revised to comply with the terms of the agreement and the Complainant's trade marks were removed. These include the cat's head logo which, although not mentioned in the Complaint, is an integral trade mark on all the Complainant's products. The Respondent refers to the distinction between the two websites and the "obvious move away" from any association with the Complainant.
- The Respondent refers to the Complainant's use of its Trade Marks on its own website and notes the alleged misuse of the Trade Mark by applying coloured backgrounds which are not registered. In addition, the Complainant's official dealer for Wales, Border Industrial Ltd, uses the Complainant's Trade Mark on their website to erroneously promote a competitor's (Case) bobcat.
- The Respondent says that there is substantial evidence that many other businesses use the generic term bobcat within their domain name, using a similar text style and displaying the Complainant's trade marks, despite their not being authorised distributors of Bobcat products or officially affiliated to the Complainant.
- The metatag to which the Complainant refers relates to the Respondent's old website, designed at a time when he was an official distributor for the Complainant. It was updated by the Respondent's web designer in April 2006 and has been superseded by the Respondent's current metatag (the alterations to the description are exhibited to the Response). The Respondent also refers to an email from ISIS New Media explaining the reasons for the obsolete metatag still showing in Google's results page adjacent to the current one, over which the Respondent says he has no control.
- That he has been assured that Google removes obsolete metatags in due course, but that this may not happen for some months. The Respondent says that his website is presently undergoing significant review in the light of a new partnership, promoting skid-steer ('bobcat') hire and repairs, which will be beneficial to the Complainant who will in the future supply the Respondent with equipment through their approved dealerships.
- The Respondent asserts his right to use the generic term bobcat in accordance with honest practices in industrial and commercial matters. He ceased using Bobcat trade marks upon resignation of the dealership and has no intention of using the Complainant's trade marks to gain business or imply any association with the Company. The Respondent says that his business is derived from high standards of technical expertise and personal service, not from any association with the Complainant's organisation.
- The Respondent is continuing to use a long-established and fairly acquired domain name to promote his business of hiring and servicing compact equipment, with particular emphasis on the specialist market of skid steers, which are more technically challenging to maintain and in which he has an established reputation for excellence. The Respondent believes that he is entitled to inform the public of his services and has been free to do so without complaint since early 1998. In that regard, the Respondent refers to a list of domain names attached to his Response, all of which include 'bobcat' in their title and inform the public of commercial activities similar to those of the Respondent. The Respondent says that these are only a few examples of many websites that – he assumes - are acceptable to the Complainant.
- The Respondent says that, in accordance with Articles 5-7 of the First Directive 89/104, he is a specialist in the repair and maintenance of such products many years prior to his period as a dealer of the Complainant and that he continues to offer his specialist services in this field. He avers he has no intention of establishing an official or unofficial affiliation or association with the Complainant. To this end he wishes to be free to continue to make effective use of the Domain Name to which his customers have referred for some eight years for information on his activities and services, not the Complainant's.
- The Respondent says that the Complainant failed to take advantage of several unused and readily available domain names relevant to the European market at a time when a company of this stature may reasonably be expected to have a significant advantage over small businesses in establishing themselves on the emerging and burgeoning internet market. The Respondent goes on to refer to an article published by The Institute of Trade Mark Attorneys dated 05/12/2006 and titled 'Frequently asked questions' that: 'Domain names are registered on a first come first served basis and take no account of trade marks that may already exist.' The Respondent argues that his foresight in recognising the potential of an available domain name in promoting his business services in the most advantageous manner does not constitute an abusive registration.
- The Complainant's very late recognition that this domain name may have significant benefits for their organisation, and their present action to aggressively acquire it, is alleged to constitute 'reverse domain name hijacking'.
7 The Complainant's Reply
The Complainant makes the following submissions in its Reply:
- The fact that various organisations/individuals, which are unconnected with the Complainant, have registered domain names incorporating the trade mark BOBCAT, does not indicate that the trade mark BOBCAT has become generic. The Respondent has provided examples of various European "Bobcat" domain names not owned by the Complainant, but these domain names are immaterial to these proceedings as the situation concerning each of those domain names may be different and they will need to be dealt with on a separate basis.
- That none of the printouts from the websites referred to by the Respondent, which he alleges demonstrate use of the trade mark BOBCAT as a generic term, are from websites referred to by the name Bobcat. In all cases, the owners of those websites are mistaken in referring to the trade mark BOBCAT as a generic term.
- The Complainant dismisses the Respondent's references to the Wikipedia website - which states that "Bobcat" is sometimes used as a generic term for skid-steer loaders. The Complainant notes that Wikipedia is a free encyclopaedia, which can be edited by any person. The Complainant notes that the meaning of "skid-loader" on Wikipedia appears to have first been included on 20 January 2003 and that numerous revisions have been made to this entry since it first appeared: it says that at some stage someone has added the reference to the name Bobcat being used as a generic term for skid-steer loaders. This reference is inaccurate, according to the Complainant, and cannot be relied upon as evidence in support of the Respondent's allegation.
- The Complainant says that it is untrue that "Hoover" is the most commonly recognised term for a vacuum cleaner and that "JCB" is used by most customers as a purely generic term for excavators because both are registered trade marks and are not generic terms.
- The Complainant disputes that the parmaham.co.uk and parma-ham.co.uk decisions support the Respondent: it was decided by the Appeal Panel in that decision that "it was reasonable to infer that to the UK public, 'Parma Ham' was an everyday descriptive term denoting ham produced in the Parma region of Italy…" This is different from deciding that the name Parma Ham is generic for ham in general.
- The Complainant is the owner of the registrations for the trade mark BOBCAT detailed in the Complaint. By virtue of Section 72 of the Trade Marks Act 1994, the UK Trade Mark registrations Nos. 1192693, 1427390 and 1427389 should be treated as prima facie evidence of the validity of these registrations. Similarly, Article 95(1) of Council Regulation 40/94 provides that the Complainant's CTM registration No. 29371 "shall be treated as valid unless its validity is put in issue by the Defendant with a counterclaim for revocation or a declaration of invalidity". Consequently, the Complainant's registrations should be treated as valid in relation to this complaint and the Respondent's allegation that the trade mark BOBCAT is generic should be ignored.
- The Complainant denies that the Domain Name has been in use under its current ownership for over 6 years because the Domain Name was formerly owned by Bobcat Plant and was assigned to the Respondent at some time subsequent to 16 March 2004, but prior to the filing of the Complaint. The Respondent has provided no evidence to demonstrate that the Complainant has been aware of the existence and status of the Domain Name as alleged. In any event, even if it was acceptable for the Domain Name to be registered by Bobcat Plant (which is not admitted), it is asserted that the acquisition by the Respondent of the Domain Name took unfair advantage of and was unfairly detrimental to the Complainant's rights. Furthermore, the use by the Respondent of the Domain Name enables him to represent improperly that he is affiliated in some way with the business carried on by the Complainant and this use takes unfair advantage of or is unfairly detrimental to the Complainant's rights. In any event, the Complainant cannot be said to have acquiesced in the registration or acquisition of the Domain Name or in the use of the Domain Name by the Respondent.
- The Complainant admits that domain names are registered on a first come, first served basis and that they take no account of trade marks that already exist; however, the Complainant goes on to say that the registrant of a .co.uk domain name enters into a contract with Nominet in which he promises that he is entitled to register the domain name and that, by registering or using the domain name in any way, he will not infringe the intellectual property rights (for example trade marks) of anyone else. Furthermore, the owner of a domain name agrees to be bound by the dispute resolution policy and procedure in case there is any dispute concerning the domain name.
- The Complainant notes that the Respondent has stated that "Realising that the more concise the domain name, the greater chance of more hits to his website, in good faith he chose a freely available, unadopted name that accurately corresponded to his company's title, Bobcat Plant Hire (UK) Limited." The Complainant says that it is self-evident that the Domain Name does not accurately correspond to the name of the company Bobcat Plant Hire (UK) Limited. The Domain Name consists solely of the trade mark BOBCAT in combination with the element .co.uk and not of the name Bobcat Plant Hire. The admission by the Respondent that the more concise the domain name, the greater chance of more hits to the website to which the domain name resolves, indicates that the Respondent is well aware that the acquisition by him of the Domain Name and the use of the Domain Name is of assistance to him in running any business relating to skid-steer loaders and other compact equipment. As the Managing Director of the company Bobcat Plant Hire (UK) Limited, which was a former authorised distributor of the Complainant's Bobcat products, the Respondent is well aware that (i) the trade mark BOBCAT is owned by the Complainant and that he is not entitled to use that trade mark in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's rights; (ii) Bobcat Plant Hire (UK) Limited was (and is) contractually bound to stop using the trade mark BOBCAT after it ceased to be an authorised distributor for Bobcat products.
- The Complainant notes the steps which the Respondent has taken to remove the metatag but goes on to sate that neither the removal of this metatag nor any changes made to the Respondent's website alter the fact that the Domain Name is an Abusive Registration.
- The Complainant notes that the Respondent states that he wishes to be free to continue to make use of the Domain Name to which his customers have referred for some 8 years for information on his activities and services. It is pointed out that, even if the company known as Bobcat Plant Hire (UK) Limited was entitled to register the Domain Name and then to use the Domain Name for its activities and services (which is not admitted), this does not entitle the Respondent himself to acquire the Domain Name and then use it in relation to any of his own business activities and services for the reasons already given in the Complaint and above.
8 Discussion and findings
The first question that needs to be decided is whether the Complainant has "rights," (as defined by the DRS Policy), in respect of a name or mark which is identical or similar to the Domain Name, mindful of the fact that a complainant cannot rely on rights in a name which is wholly descriptive of its business.
Even if I was to accept (which I do not for reasons set out below) that the mark BOBCAT has become a generic term, such that it had become the common name in the trade for skid-steer loaders, it does not follow that this name is wholly descriptive of the Complainant's business, given that the mark BOBCAT is used in relation to a variety of goods, not simply skid-steer loaders.
I do not, in any event, accept that the term BOBCAT does not function as a trade mark: in this respect, I agree with the Complainant's submission that, by virtue of Section 72 of the Trade Marks Act 1994, and Article 95(1) of Council Regulation 40/94, the Complainant's UK and CTM registrations have to be treated as prima facie evidence of their validity. For that reason, the evidence submitted by the Respondent, both in respect of the alleged genericisation of the BOBCAT mark and the use by others of the BOBCAT mark, cannot support the Respondent's submission that the Complainant does not have any "rights" in respect of the BOBCAT mark: the Complainant plainly has rights (in the form of registered trade marks which are valid and subsisting) which are identical to the Domain Name (the co.uk suffix being irrelevant here for the purposes of the comparison).
The Complainant also has to show that the Domain Name is an abusive registration. Paragraph 1 of the Policy defines this as 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."
A non-exhaustive list of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration.
The Respondent appears to believe that because domain names are registered on a first come, first served basis (and can be registered even if they incorporate the trade marks of third parties), his registration and use of the Domain Name cannot amount to an abusive registration, particularly in the circumstances of his (or his previous businesses) long-standing use. Being first in time clearly, by itself, does not confer legitimacy on any registration of a domain name. That would make any dispute resolution procedure wholly unnecessary.
In the Seiko v Wanderweb case (DRS 248), concerning the domain names Seiko-shop.co.uk and spoonwatchshop.co.uk, the Appeal Panel refused to lay down any general rules governing when a third party can make legitimate use of the trade mark of a third party as a domain name. This was on the basis that there were too many different factual circumstances which could arise where a third party might legitimately wish to use another party's trade mark. However the Appeal Panel concluded that if there was evidence that the domain name makes, or is liable to be perceived as making, the representation that there is something approved or official about the website, this would constitute unfair advantage or unfair detriment under the terms of the DRS. The Appeal Panel also took the view in that case that the domain names constituted an appropriation of Seiko's trade marks and likened it to the arrogation of the trading style of a principal by a mere agent.
It is my clear view, having read all the evidence and considered the parties' detailed submissions, that the Domain Name makes, or is liable to be perceived as making, the representation that there is something approved or official about the Respondent's website, and constitutes an illegitimate usurpation of the Complainant's trade marks: it follows that the Domain Name has been used in a manner, which takes unfair advantage of or is unfairly detrimental to the Complainant's rights.
My reasons are as follows:
- While third party use of the BOBCAT trade mark (and the availability of other domain names incorporating the BOBCAT mark) might constitute a reason why the Respondent thought his choice of, and continued use of, the Domain Name, was unexceptional, it provides no assistance to the Respondent in this instance. It is clear that the Respondent knew about the Bobcat name and range of products sold under this trade mark at the time he registered the Domain Name.
- Contrary to the Respondent's submissions, the continued use of the Domain Name following the termination of the distributorship agreement was, in my view, a breach of clause 4.4, which required Bobcat Plant Hire (UK) Limited to cease immediately the use of the mark BOBCAT. The use of the Domain Name thereafter in itself amounts to use of the BOBCAT trade mark. The fact that the Respondent has ceased using the Complainant's other trade marks – such as the cat's head logo – makes no difference, nor does any change to the contents of the Respondent's website or metadata. Such a breach is, in my view, a relevant factor in considering whether the Domain Name has been used abusively.
- Clause 4.4 also required Bobcat Plant Hire (UK) Limited thereafter not to use any deceptively similar name or trade mark tending to give the impression that the relationship between the Complainant's European affiliate's business and Bobcat Plant Hire (UK) Limited still existed. In my opinion, the use of the Domain Name thereafter was likely to cause such an impression because the Domain Name itself implies that Bobcat Plant Hire (UK) Limited operated a business that was related to, or connected with, the Complainant's business (as the Domain Name is identical to the Complainant's BOBCAT trade mark). In this respect, it is important to note that the Domain Name does not correspond to the name "Bobcat Plant Hire (UK) Limited." Such a breach is, in my view, another relevant factor in considering whether the Domain Name has been used abusively.
- I agree with the Complainant's submission that the Respondent's acquisition of the Domain Name from Bobcat Plant Hire (UK) Limited enables him to represent that he is affiliated in some way with the business carried on by the Complainant because the Domain Name in the hands of the Respondent is inherently deceptive, as it incorporates - without the addition of any other distinguishing material - the Complainant's BOBCAT trade mark. The admission by the Respondent that the more concise the domain name, the greater chance of more hits to the website to which the domain name resolves, is particularly telling: it clearly indicates that the Respondent adopted the Domain Name to maximise the amount of traffic to his site. While there is nothing wrong with seeking to optimise the volume of traffic to a website, it is impermissible within the scope of the DRS Policy to use a domain name for that purpose, which incorporates – without any distinguishing material - the trade mark of a third party, without that party's permission.
- Nor do I accept that the evidence establishes that the Complainant has acquiesced in the registration or acquisition of the Domain Name or in the use of the Domain Name by the Respondent.
- In my view, it is not permissible for a former authorised distributor, even though he continues to deal legitimately in the goods of another party and supplies accessories and related services in respect of that party's goods, to use a domain name which consists solely of the trade mark of that other party, without that third party's permission, particularly where the terms of the agreement make it plain that the trade mark cannot be used (other than descriptively) following termination.
- I do not believe it can fairly be said that the Respondent is using the Domain Name purely to inform the public that he sells goods and services relating to skid-loaders. To my mind this is a clear case where the BOBCAT trade mark is being used within the Domain Name in such a way that it may create the impression that there is some form of commercial connection between the Respondent and the Complainant.
Accordingly, I find that the Domain Name is an abusive registration on the grounds that it has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant's rights in the Bobcat trade mark.
8 Decision:
In the light of the foregoing findings, namely that the Complainant 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, I direct that it be transferred.
Cerryg Jones 27 February 2007
