[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> J Choo Ltd v Choo [2007] DRS 4424 (10 April 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4424.html Cite as: [2007] DRS 4424

[New search] [Printable RTF version] [Help]

 
Nominet UK Dispute Resolution Service DRS 04424 JIMMY-CHOO.CO.UK

Decision of Independent Expert

1. Parties

Complainant: J. Choo Limited

Country: GB

Respondent: Jimmy Choo

Country: GB

2. Domain Name
2.1      jimmy-choo.co.uk
3. Procedural Background
3.1      The Complaint was entered onto the Nominet system on 30 January 2007 and validated on 1 February 2007. The complaint papers were sent to the Respondent on 1 February 2007. The Response was received on 23 February 2007 in electronic form and in hard copy on 1 March 2007. A Reply was received on 6 March 2007. The Complainant paid the required Nominet fee on 16 March 2007 and on 21 March 2007 the Expert was appointed.
4. Outstanding Formal/Procedural Issues
4.1      This case has been fully contested, involving a complaint, response and reply.
4.2      The response was received in electronic form on 23 February 2007 but not until 1 March 2007 in hard copy. The hard copy was, therefore, received outside the 15 working day limit of the DRS Procedure (DRS Procedure 5(a)). DRS Procedure paragraph 5(c) requires the Response to be submitted in hard copy and electronically. There is, therefore, a question of whether this requirement was met where the hard copy was not received within the deadline. However, in this case, I cannot see that any prejudice to the Complainant arises from late receipt of the hard copy where the electronic copy was received on time.
4.3      More significantly, the response did not contain the signed statement of truth required in paragraph 5(v) of the DRS Procedure: "The information contained in this response is to the best of the Respondent's knowledge true and complete…..". The lack of the signed statement goes to the weight of the Respondent's submissions on issues of fact: his submissions, particularly as they are unsupported by evidence, will carry less weight than if the statement had been signed.
5. The Facts
5.1      The Domain Name was registered on 26 May 2006. The registrant details provided to Nominet indicate that the registrant is a UK individual by the name of Jimmy Choo with an address as follows: Basement Flat, 6 Pembroke Road, Clifton, Bristol BS8 3AX, United Kingdom.
5.2      The Complainant is a company incorporated in England and Wales. It is the registered proprietor of a number of UK and Community trade marks for the mark "JIMMY CHOO" both as a plain text registration and in a stylised form. The Complainant is in the business of selling, amongst other items, shoes and handbags under the brand Jimmy Choo.
5.3      A company called J. Choo (Jersey) Limited is the proprietor of a number of Domain Names that incorporate the Jimmy Choo brand. These include jimmychoo.com, jimmychooshoes.com and jimmychoo.co.uk.
5.4      The Respondent has registered the domain name using the name "Jimmy Choo" as the identity of the registrant. The Respondent was not named Jimmy Choo at birth.
5.5      The website that makes use of the Domain Name at www.jimmy-choo.co.uk is a very simple website containing mostly plain text describing the establishment and development of the Complainant's business. The site also contains links to third party websites selling designer shoes and handbags.
5.6      There has been correspondence between the parties in relation to a potential settlement of this dispute. The Complainant has offered to pay up to £100 for the domain name. The Respondent has countered with an offer of £6,100 plus VAT plus any future expenses related to the transfer of the Domain Name.
5.7      In an email sent on 23 February 2007 by an Andrew McGregor to Nominet, the following was stated:

"Dear DRS

Please find attached my response to the DRS claim due today.

I confirm that TXM.MOBI Ltd (was Pasty Ltd) is the owner of the domain name jimmy-choo.co.uk.

Regards

Andrew McGregor"

This was in response to an email from Nominet enclosing the complaint documents and addressed to "Mr Choo".

6. The Parties' Contentions

The Complainant

6.1      The Complainant asserts rights in the name Jimmy Choo on two bases. First, ownership of registered trade marks and, second, rights in passing off obtained through trading under the name Jimmy Choo in the UK. Specifically, the Complainant refers to the following trade mark registrations:

UK trade mark registration No 1521314 JIMMY CHOO

UK trade mark registration No 2292643 JIMMY CHOO

UK trade mark registration No 2299481 JIMMY CHOO

UK trade mark registration No 2324980A JIMMY CHOO

UK trade mark registration No 2389130 JIMMY CHOO

Community Trade Mark registration No 1662543 JIMMY CHOO

Community Trade Mark registration No 2587830 JIMMY CHOO

International trade mark designation No 853636 JIMMY CHOO

6.2      The Community Trade Mark and International registrations are all word only registrations. UK registration 2324980A is also a word only registration. In relation to its rights in passing off, the Complainant states that it has traded under the name Jimmy Choo since as early as 2001 and has spent significant sums advertising the name Jimmy Choo since that time. The Complainant provides a number of exhibits showing promotional material for its good clearly branded Jimmy Choo.
6.3      In relation to the issue of Abusive Registration, the Complainant relies upon: an allegation that the registration is a blocking registration; that the links to third party websites selling shoes and handbags are likely to confuse people or businesses into believing that the domain name is registered to, operated or authorised by the Complainant; and that this will cause unfair disruption to the Complainant's business. The Complainant elaborates saying that since the Domain Name is being used to refer to the Complainant's goods, there is a strong risk that Internet users will be misled into believing that the website of the Respondent is that of the Complainant. The Complainant makes a further submission that the Respondent has given Nominet false information about his name in registering the Domain Name in the name of Jimmy Choo. In support of this contention, the Complainant relies upon the report of Farncombe International Limited (seemingly a firm of private investigators) whose report indicates that the electoral role for the Respondent's registered address does not show a listing for a Jimmy Choo but rather for an Andrew McGregor and Anna Gayle Stevens. The report annexes UK Companies House records showing that Andrew McGregor is a director of TXM.MOBI Ltd and that TKM MOBI Ltd has its registered office at the Respondent's address as provided to Nominet.

The Respondent

6.4      The Respondent accepts that his birth name is not Jimmy Choo. He does not state that his name is Jimmy Choo or that he is known as Jimmy Choo, he simply states that "…under UK law I can call myself whatever I choose providing I am not trying to mislead or commit fraud." No evidence is provided to indicate that the Respondent is known as Jimmy Choo nor does the Respondent address the evidence and arguments put forward by the Complainant as to the identity of the individuals resident at the registered address for the Domain Name.
6.5      The Respondent states that it is not appropriate that the Complainant should have begun trading in 2001 but wait until 2007 to make his complaint. He says that it is not acceptable where the Domain Names are offered by Nominet on a first come first served basis. He goes on the state that if Nominet chooses to accept the disputing of a Domain Name "on the technicality of a trade mark years after a company incorporation" then this is "ludicrous" and each domain registrant would surely have to check a trade mark database prior to registration.
6.6      The Respondent also states that "the claim to all variations of a name at any level of the internet domain name space is unfair more over not enforceable. Could the Complainant dispute Jimmy Choo.misk.net or even www.myspace.com/jimmychoo? The answer here is clearly "no"".
6.7      The Respondent then makes the point that the Complainant has not registered domain names that incorporate a hyphen between the words Jimmy and Choo. The Respondent then states that he has registered Jimmy-Choo.org and Jimmy-Choo.net to prove this point. The point he makes is then as follows "Surely just as the complainant should of (sic) registered jimmy-choo.co.uk they should of (sic) registered the above mentioned domains and all hyphenated versions of the domains they listed in their own evidence".
6.8      As to the website at www.jimmy-choo.co.uk the Respondent states that this is a "…community forum related (sic) the complainant's products. I will also continue with phase three which is to use an affiliate programme to sell the complainant's products via a third party with companies such as NET-A-PORTER".
6.9      In relation to the allegation of confusion, the Respondent denies that there is any misrepresentation that the website at www.jimmy-choo.co.uk is associated with the Complainant stating "…by the complainant's own evidence my site could never be deemed to represent the complainant. I've since added a disclaimer at the top of the page removing any doubt that the domain name is operated by or authorised by the Complainant".
6.10      The Respondent sets much store by the fact that the Complainant does not use a hyphenated form of its name. He states the following: "if the brand does not require a "-" then it is simply one word "jimmychoo". Could Google claim ownership of go-ogle.co.uk? Or ama-zon.co.uk?"
6.11      In relation to the allegation that the Respondent demanded an inflated sum for sale of the Domain Name, the Respondent states that he responded to the Complainant's offer saying that he would "….only accept full expenses for my time spent to date which I itemised. The time was quoted at my standard daily rate and not a grossly inflated sum. I find such words discouraging to the honesty and integrity of the complainant's claim as I am sure their legal representation used for this case will charge more per day than I do and to date are the only ones making money from the registration of jimmy-choo.co.uk".

Complainant's Reply

6.12      On the issue of delay between the start of trading as Jimmy Choo and the bringing of this claim, the Complainant says that this is irrelevant stating that there is no bar against when a party may challenge a particular Domain Name.
6.13      The Complainant states that use of the hyphen is not sufficient to distinguish what the Respondent is doing. The Complainant points out that its trade mark registrations are not one word "jimmychoo" as the Respondent alleges but in fact are registered as two separate words "Jimmy Choo". The Complainant also relies upon earlier DRS decisions to argue that the hyphen does not assist the Respondent. The Complainant relies upon the decisions in DRS case 3727 ("Mirashowers" v mira-showers.co.uk) and DRS case 4181 (flowtube v flow-tube.co.uk).
6.14      The Complainant says that the disclaimer added to the Respondent's website does not help him. Specifically, the Complainant relies upon the wording of the DRS policy which requires that the Domain Name "…has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights". The point made by the Complainant is that the Policy requires only that there is offending use prior to the filing of the complaint.
6.15      Finally, the Complainant states that the Respondent's registration of the Domain Names, jimmy-choo.org and jimmy-choo.net serves to illustrate that the Respondent is engaging in a pattern of "bad faith" by registering Domain Names that include the Complainant's registered trade mark, Jimmy Choo.
7. Discussion and Findings

Rights

7.1      The Complainant is the registered proprietor of a number of trade marks effective in the United Kingdom for the name JIMMY CHOO. That is sufficient to establish its Rights in that name. The Respondent has not challenged the Complainant on this point.
7.2      The Complainant also relies upon rights established through the use of the Jimmy Choo brand in the UK since 2001 in connection with Jimmy Choo branded goods. A substantial number of examples of promotional materials showing clear use of the Jimmy Choo brand has been supplied which would tend to support this claim. However, as the Complainant's Rights are clear from its registered trade marks, I need go no further with that point.
7.3      The point of dispute in relation to Rights is whether the Domain Name jimmy-choo.co.uk is caught by a registration for the mark Jimmy Choo. All that is required by the DRS Policy is that the name in which the Complainant has Rights and the Domain Name are similar. That is clearly the case here. The hyphen does not assist the Respondent.
7.4      The Complainant has Rights in the name Jimmy Choo and the Domain Name is similar to the name in which the Complainant has Rights.

Abusive Registration

7.5      The allegations of Abusive Registration in this case appear to fall under the following heads:

(a) blocking registration;

(b) confusion to customers;

(c) provision of false information by the Respondent; and

(d) an intention to sell the Domain Name for a sum in excess of out of pocket expenses.

7.6      I do not see much merit in the claim that this is a blocking registration. The Complainant already has jimmychoo.co.uk registered and has a variety of other gTLD and ccTLD Domain Names.
7.7      Then there is the allegation that the Domain Name and the site associated with it are likely to cause confusion and that this will act to the detriment of the Complainant. There is merit to the argument that those taking a guess at the URL for the Complainant's business may well enter www.jimmy-choo.co.uk in the address bar of their browser. When they arrive at the Respondent's website at that URL, they find text which describes the establishment and development of the business which is now operated by the Complainant. The look of this website is perhaps not what one would expect from a business such as that of the Complainant. The consumer arriving at this site then finds himself presented with links to sites offering designer shoes and handbags including those of the Complainant and those of competitors. I believe it is likely that a proportion of those consumers who arrive at the Respondent's website will follow the links to those sites with the resulting diversion of business from the Complainant's business. Whether or not those consumers are actually confused into believing that the website at www.jimmy-choo.co.uk is authorised by or connected with the Complainant is a difficult question. In this case, however, I believe it does not need to be answered. Advantage is being taken of the Complainant's Rights using the Complainant's trade mark to do so. This potential diversion of business which arises through use of the offending URL is an unauthorised activity and amounts to the taking of unfair advantage.
7.8      The next allegation is that of false contact details being provided. The requirement in paragraph 3(a)(iv) of the DRS Policy on this point is as follows: "It is independently verified that the Respondent has given false contact details to us". The facts that I have are that the name provided by the Respondent when registering this Domain Name was "Jimmy Choo". At the stated address for the Domain Name record there is no person of that name shown on the electoral roll. Despite the protestations in the response, the Respondent has stated to Nominet in an email dated 23 February 2007 the following:

"Dear DRS,

Please find attached my response to the DRS claim which is due today.

I confirm that TXM.MOBI Limited (was Pasty Limited) is the owner of the Domain jimmy-choo.co.uk.

Regards

Andrew McGregor"

The report of the private investigators annexed to the Complaint shows an Andrew McGregor resident at the address provided to Nominet and shows that he is a director of TXM.MOBI Ltd which has its registered office at the same address. In the light of that information, this admission makes sense. In view of the Respondent's admission and the electoral roll and Companies House information supplied, I believe that the provision of the name Jimmy Choo as that of the registrant for this Domain Name amounts to the provision of false contact details and is evidence of Abusive Registration.

7.9      There is then the final issue of the offer to sell the Domain Name to the Complainant. In its letter of complaint to the Respondent, the Complainant offered to pay out of pocket expenses up to £100. This was countered by an offer to transfer for £6,100 + VAT plus expenses relating to the transfer of the Domain Name. The figure of £6,100 was justified by the following breakdown:

"£50 domain registration

£50 annual domain management

£1,000 annual domain hosting

£1,200 4 days affiliate marketing research

£900 3 days software development

£300 1 days systems administration

£600 2 days FEO consultancy

£2,000 goodwill, user base, search engine rankings"

7.10      The only item in this list which amounts to an "out-of-pocket-cost" directly associated with acquiring or using Domain Name is the domain registration fee and annual domain management fee. None of these expenses is documented nor are the others "out of pocket" expenses. The request for this sum, therefore, amounts to a request for a sum in excess of the documented out of pocket expenses.
7.11      The question then is whether the Domain Name was registered with the primary purpose of selling the Domain Name to the Complainant for this sum. Whilst an offer to sell when approached by a Complainant is not conclusive of the intention at the time of registration, I believe that was the case here. No other legitimate explanation has been put forward by the Respondent despite the fact that a formal response was submitted in this case. My view on this point is also coloured by the Respondent's behaviour in other aspects of this case, in particular the provision of a false name for the registration. I am also mindful that whatever protestations the Respondent has made in his response, he chose to omit the Statement of Truth from that response.
7.12      I find that the Complainant has shown that the Domain Name is an Abusive Registration in the hands of the Respondent.
8. Decision
8.1      The Complainant has Rights in the name Jimmy Choo. The Domain Name is similar. The Domain Name is an Abusive Registration in the hands of the Respondent.
8.2      The Complaint's request for a transfer of the Domain Name should be granted.

Stephen Bennett Date