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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Zehnder Verkaufs-und Verwaltungs AG v 4 Names Ltd [2007] DRS 4513 (20 May 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4513.html Cite as: [2007] DRS 4513

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Nominet UK Dispute Resolution Service

DRS Number 04513

B E T W E E N:

ZEHNDER VERKAUFS-UND VERWALTUNGS AG

Complainant

- and -

4NAMES LIMITED

Respondent

Decision of Independent Expert

1. Parties

Complainant: Zehnder Verkaufs-und Verwaltungs AG

Country: CH

Respondent: 4Names Limited

Country: GB

2. Domain Name

faral.co.uk

3. Procedural Background

3.1.1 The Complaint, which is a complaint of Abusive Registration under the Dispute Resolution Procedure ("the DRS") of Nominet UK ("Nominet"), and is dated 5 March 2007, was posted by Nominet to the Respondent under cover of a letter dated 7 March 2007. The Complaint is signed by agents acting on behalf of the Complainant. The letter enclosed a copy of the full complaint.

3.1.2 On 26 March 2007 the Respondent, by email, entered a Response. A Reply was entered by the Claimant on 3 April 2007. The dispute was not resolved in mediation. In a letter dated 30 April 2007 Nominet informed the Respondent that the dispute would be referred to an independent expert for a decision if the Complainant paid the appropriate fees on or before 15 May 2007 - a condition which was fulfilled.

3.1.3 By letter dated 3 May 2007 I was appointed with effect on 9 May 2007 to provide a Decision under Nominet UK's Dispute Resolution Policy ("the Policy"). I am required to send my decision to Nominet no later than 23 May 2007.

3.1.4 I have been provided with the following materials:-

Dispute History

Complaint

Response

Reply

Standard correspondence between Nominet and the parties

Companies House Entry for both parties.

Register entry for faral.co.uk.

Nominet WHOIS query result for faral.co.uk

Printout of website at www.faral.co.uk.

Copy of Nominet UK's Policy and Procedures.

4. Outstanding Formal Procedural Issues

4.1 There are no outstanding formal or procedural issues.

5. The Facts

5.1 The domain name was registered by the Respondent on 13 September 2005.

6. The Parties' Contentions

Complainant

6.1 The Complaint of Abusive Registration is in the following terms:-

The Complaint

I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

1. The Complainant has rights in the Domain Name because;

A. It is the registered proprietor of a number of trade marks in the UK and UK Protected International Registrations, which consist of or contain the mark FARAL, registered for goods in class 11, as follows: UK Registration No. 2191992 FARAL Ltd : UK protected designation of International Registration No. 707466 FARAL:UK protected designation of International Registration No.712766 FARAL & Device : UK protected designation of International Registration No.749422 FARAL Claris : UK protected designation of International Registration No. 708123 FARAL Etal : UK protected designation of International Registration No.709217 FARAL Flash : UK protected designation of International Registration No.708118 FARAL Green : UK protected designation of International Registration No.708121 FARAL Lampo : UK protected designation of International Registration No.708124 FARAL Lineal : UK protected designation of International Registration No.708122 FARAL Longo : UK protected designation of International Registration No.708235 FARAL Magic : UK protected designation of International Registration No.707628 FARAL Tropical Full Details of the Rights listed above are contained in ANNEX I. As will be seen from the details of the Rights contained in ANNEX I, the earliest Right dates back to October 1998.

B. The Complainant has used the trade mark FARAL in the UK since 1988 in relation to the goods covered by its registrations. The turnover of goods sold under the trade mark FARAL in the UK for the period 2002 to 2006, was as follows: Year Turnover (£) 2002 276,000 2003 614,000 2004 546,000 2005 580,000 2006 1,200,000.

C. The approximate amount spent on marketing/promoting the goods sold under the trade mark FARAL in the UK for the period 2002-2006 was £62,000. The goods sold under the trade mark FARAL have been promoted in the UK through product leaflets, catalogues and price lists, as evidenced in the selection contained in ANNEX II. As will be seen from the home page of the website www.acova.uk, also contained in ANNEX II, Acova Radiators (UK) Ltd, is part of the Complainant's company Group

D. The Complainant has never had any dealings with the Respondent, other than for the purposes of acquiring the Domain Name in dispute.

2. The Complainant, through its UK subsidiary at the time, registered the Domain Name in dispute as early as 1999, as evidenced in ANNEX III. However as a result of an internal error, the domain name registration was unintentionally allowed to lapse on 2 June 2005, through non-payment of the renewal fees. The Domain Name in dispute was shortly thereafter registered in the name of the Respondent. On information provided by our instructing principal, we are advised that the Complainant and/or its UK affiliate, subsequently contacted the Respondent's agent, Big Advertising Ltd, by telephone. Shortly thereafter, a sales manager of the Complainant or its UK affiliate was contacted by phone by an individual purporting to represent the Respondent and offering to assign the Domain Name in dispute for £10,000. We are advised that this offer was never formalised in writing. The Complainant was then advised to obtain a realistic transfer offer from the Respondent in writing. The Complainant became aware that the Respondent had offered the Domain Name in dispute for sale through an Internet domain name trading platform and made an offer of £150, to purchase the Domain Name in dispute. In response, the Complainant received a counter-offer of £5000. Copies of the offer put forward and counter-offer received through the trading site sedo.com are contained in ANNEX IV.

3. The Domain Name in dispute is abusive because:

A. It was primarily registered for the purpose of selling or otherwise transferring the domain name to the Complainant, to one of their competitors or another third party, for a consideration in excess of the out of pocket costs directly associated with acquiring the domain name. This is evidenced by the facts/evidence set out above in paragraph 2. and the extract from the website faral.co.uk contained in ANNEX V.

B. It was registered as a blocking registration against a mark in which the Complainant has Rights. The Domain Name in dispute is identical to the mark registered under International Registration No. 707466 protected in the UK. Further, the Domain Name in dispute is identical or in the alternative near identical to the mark registered under UK Trade Mark No. 2191992 FARAL Ltd.

C. It was registered for the purpose of unfairly disrupting the business of the Complainant. The Complainant sells heating elements, in particular, "radiators" in the UK, under the trade mark FARAL. The Domain Name in dispute is FARAL and it was clearly registered with the aim of making money from the Complainant's business. The content of the page, which currently appears at the Disputed Domain name, an extract of which is contained in ANNEX V acts to mislead potential customers and to direct a customer looking for the Complainant's goods to other competitor websites

D. The Respondent is using the Domain Name in dispute in a way which has confused people or businesses into believing that the Domain Name in dispute is registered to, operated or authorised by, or otherwise connected with the Complainant. Again, we would refer to the facts set out under paragraph 2.C. above.

6.2 The Complainant requests the transfer of the Domain Name.

The Response

6.3 The Response is in the following terms:-

1. I received the Complaint by email on 7^th March 2007.

2. I object to the Complaint and ask that the Expert does not grant the Complainant the remedy that he has asked for.

3. The domain was acquired on behalf of one of our clients for future development of a Family site and was registered on a "first come, first served" basis which is the accepted policy for Nominet registrations.

4. The name "Faral" is a British surname (http://search.swyrich.com/ searchresults.asp?Licensee=uk24071&Surname=faral&sId=&t=478) and as such those who have this name have rights to use it and it is generic.

5. A search of Companies House (http://www.companieshouse.co.uk/) shows 1 registration for the name "Faral", however the address given (B15 Armstrong Mall Southwood Business Park Farnborough Hampshire GU14 0NR ) appears to be used by a company trading as ACOVA. Even though ACOVA is apparently owned by Faral there is no obvious visibility of a Company called Faral in the UK.

6. A search for the name Faral on Yell returns no results

7. Faral is a place name(http://www.fallingrain.com/world/CD/12/ Faral.html ) and is therefore generic.

8. In view of items 4, 5, 6 and 7. it is submitted that the Complainant does not have a well known presence and it would be difficult to have had the Complainant in mind at the time of registration. With such a limited profile we submit that the name is not in the Coca-Cola category of famous names, and prior to receiving documentation from Nominet in respect of this DRS dispute, it is entirely probable that 4Names were completely unaware of the existence of the Complainant or its business. ( DRS 03733 Appeal, Item 8.20, Mercer Human Resource Consulting Inc. and IMO International Ltd. ).

9. With reference to items 4 and 7, whilst the name "faral" is not generic in a trade mark sense of being the common name for a particular type of product, it is generic in the sense of being a general word that could be applicable to an entire class or group i.e. all those who have the name FARAL in a diverse range of business areas or Ancestry sites. The Complainant is only one of that class.

We submit that with reference to Paragraph 4 a) ii) of the DRS Policy the above is evidence that the Domain Name is not an Abusive Registration i.e. that the Domain Name is generic or descriptive and the Respondent is making fair use of it. ... DRS 1629 Cyclone Courier Company Ltd and Mr Seb Clark )

10. 4Names have not initiated any approach to the Complainant, any representatives of the Complainant or to any competitors of the complainant and no proof has been offered to the contrary.

The Reply

We received the Respondent's Response by fax on 28 March 2007. In the Response, it was alleged that:

1. "The domain name was acquired on behalf of one of their clients for future development of a family site". The Complainant submits that the Respondent has not provided any evidence to substantiate this claim. Further, there is nothing in the existing content of the site operated under the domain name faral.co.uk, which substantiates this claim. On the contrary and as evidenced by the contents of ANNEX V of the Complaint, all the evidence suggests that the site was set up to direct consumers to other sites selling goods, which are identical to those covered by the Complainant's UK registrations and sold by the Complainant in the UK. Further, it should be noted that the Response has not been signed by the Respondent (or the authorised representative) to confirm that, to the best of the Respondent's knowledge, the statements made in the Response are true and complete. Failure to sign the Response is a breach of paragraph 5 (c) v of the DRS Procedure, which states: The Response shall conclude with the following statement followed by the signature of the Respondent or its authorised representative:- "The information contained in this response is to the best of the Respondent's knowledge true and complete and the matters stated in this response comply with the Procedure and the applicable law". The Respondent has failed to confirm that the information in its Response, is to the best of its knowledge, true and complete. In light of this and the lack of any evidence to substantiate the claim set out above, no reliance should be placed on this assertion.

2. "Faral" is a British surname and as such those who have this name have rights to use it and it is generic. The Complainant submits that FARAL is not generic and the grant of a registration by the UK Registry, for the trade mark FARAL provides presumptive evidence of the Complainant's exclusive rights in and to the mark for the goods covered by its registrations. Further, it should also be noted that a search for the surname FARAL on the UK pages of Google, only disclosed 21 hits, as evidenced in the Exhibit contained in ANNEX VI, which suggests that it is by no means a common surname. Finally, even if the Respondent is correct that "Faral" is a surname, the fact is irrelevant to the case at hand because the Respondent has not claimed that its surname is "Faral" or that it is using "Faral" to connote a surname. Instead, it is deliberately drawing traffic to the site by including a primary reference to the goods and interests of the Complainant.

3. "Even though ACOVA is apparently owned by Faral there is no obvious visibility of a company called Faral in the UK". The Complainant submits that the Respondent's statement is entirely incorrect. The evidence contained in ANNEX II of the Complainant's Complaint clearly and unequivocally establishes that the company ACOVA is part of the Zhender Group. The company Zehnder Verkaufs-und Verwaltungs AG, owns the UK registrations for FARAL and it should be noted that Zehnder Ltd, a trading division of the aforesaid company, is clearly identified on the back of 2 of the brochures contained in ANNEX II, which identify the goods sold under the trade mark FARAL in the UK. The evidence contained in ANNEX II, clearly establishes sales of products under the trade mark FARAL in the UK.

4. A search for the name "Faral" on Yell returns no results. The Complainant submits that this is wholly irrelevant. The fact that a business under the name "Faral" is not listed on Yell, does not establish that the trade mark FARAL is not used in the UK.

5. "Faral is a place name and is therefore generic" The Complainant submits that FARAL is not generic and the grant of a registration by the UK Registry, for the trade mark FARAL provides presumptive evidence of the Complainant's exclusive rights in and to the mark for the goods covered by its registrations.

6. "……the Complainant does not have a well known presence and it would be difficult to have had the Complainant in mind at the time of registration. With such a limited profile we submit that the name is not in the Coca-Cola category of famous names, and prior to receiving documentation from Nominet in respect of this DRS dispute, it is entirely probable that 4 Names were completely unaware of the existence of the Complainant or its business (DRS 03773 Appeal, Item 8.20, Mercer Human Resource Consulting Inc. and IMO International Ltd). The Complainant submits that a search for "FARAL radiators" on the UK pages of Google, discloses 92 entries. Further a search for FARAL alone on the UK pages of Google discloses numerous entries for the Complainant's goods on the first results page. See enclosures contained in ANNEX VII. This coupled with the evidence and statements provided in the Complainant's Complaint, clearly establishes that the Complainant has sold its goods under the trade mark FARAL in the UK. In reply to the Respondent's statement that "it is entirely probable that 4 Names were completely unaware of the existence of the Complainant or its business" the Complainant submits that it is a remarkable co-incidence that the most prominent information available on the home page of the site operated under the domain name faral.co.uk, are links to sites which supply the goods sold under the trade mark FARAL by the Complainant. This fact alone puts considerable doubt on the veracity of the statement made and indicates that the Respondent is well aware of the trade mark rights of the Complainant and is using those rights for commercial gain. In reply to the case cited by the Respondent, it should be noted that the facts of the case concerned are very different to the present case. In the Mercer case, the Respondent made it clear that it regarded the surname Mercer as a surname and registered the Domain Name in question, as the basis for an e-mail service to people with the surname "Mercer". Moreover, the Domain Name in question was said to be one of many in the same surname category.

7. "….the name "faral" is not generic in a trade mark sense of being the common name for a particular type of product, it is generic in the sense of being a general word that could be applicable to an entire class or group, i.e. all those who have the name FARAL in a diverse range of business areas or Ancestry sites. The Complainant is only one of that class. ……….the above is evidence that the Domain Name is not an Abusive Registration i.e. that the Domain name is generic or descriptive and the Respondent is making fair use of it (DRS 1629 Cyclone Courier Company Ltd and Mr Seb Clark) The Respondent is seeking to rely on the facts of the Cyclone decision but here again, the Complainant submits that the facts of that case largely differ from the facts of the present case. In the Cyclone case, it was revealed that there were in excess of 50 Companies registered in the UK starting with the name Cyclone, in a range of business areas. In the present case, there is only one company registered under the name Faral Limited on the Companies House website, as evidenced in ANNEX VIII. Coupled with this, a search of the UK Patent Office database had disclosed 20 or so different UK trade mark registrations of the word CYCLONE that covered a wide range of goods, and the earliest one dated back to 1920. A search for FARAL on the UK Patent Office database only discloses the trade marks owned by the Complainant in class 11, the relevant class of goods sold under the trade mark FARAL, as evidenced in ANNEX VIII. Further, the fact that the domain name is being used by the Respondent in relation to the trade mark and goods of the Complainant, supports and is evidence of the position that the use concerned is very much that of an abusive registration within the guidelines.

8. Discussion and Findings:

General

8.1 Under paragraph 2a of the Policy the Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that

"i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration."

8.2 Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

8.3 Paragraph 1 of the Policy defines "Rights" as including but not being "limited to, rights enforceable under English law". This definition is subject to a qualification which is not material.

Complainant's Rights

8.4 The Complaint (which is signed and includes a statement of truth) and the documentation exhibited to it, in my opinion establishes that the Complainant is the registered proprietor inter alia of the mark FARAL [UK Registration No. 2191992] and the mark FARAL Ltd (UK Registration No. 707466].

8.5 In the Response it is submitted that:-

8.5.1 The name Faral is a British surname [Paragraph 4].

8.5.2 Even though ACOVA is apparently owned by Faral there is no obvious visibility of a company called Faral in the UK. [Paragraph 5].

8.5.3 A search for the name Faral or Yell returns no results. [Paragraph 6].

8.5.4 Faral is a place name. [Paragraph 7].

8.5.5 In view of items 4, 5, 6 and 7 it is submitted that the Complainant does not have a well known presence and it would be difficult to have had the Complainant in mind at the time of registration. With such a limited profile we submit that the name is not in the Coca-Cola category of famous names. [Paragraph 8].

8.6 The submissions made in the last paragraph may have been relevant to a claim based upon common law rights, but they cannot impact upon rights arising from the proven registration of trade marks.

8.7 Under paragraph 2a of the Policy the Complainant is only required to establish rights. It is not required to establish "exclusive rights". The registrations referred to in paragraph 8.4 establish that the Complainant has rights in the names and marks FARAL and FARAL Ltd. In both cases FARAL is in the upper case.

8.8 I consider and find as a fact that the names referred to in the last paragraph are similar to the Domain Name. Accordingly, I am satisfied that the conditions of paragraph 2a of the Policy are satisfied.

Abusive Registration

8.9 Paragraph 1 of the Policy defines "Abusive Registration" 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."

8.10 The Policy provides:

"3 Evidence of Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

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;

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;

iii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv It is independently verified that the Respondent has given false contact details to us; or

v The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A has been using the domain name registration exclusively; and

B paid for the registration and/or renewal of the domain name registration.

b Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.

c There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

i Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has

A used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

B been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name; or

C made legitimate non-commercial or fair use of the Domain Name; or

ii The Domain Name is generic or descriptive and the Respondent is making fair use of it.

iii In relation to paragraph 3(a)(v); that the Registrant's holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or

iv In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.

b Fair use may include sites operated solely in tribute to or criticism of a person or business.

c If paragraph 3(c) applies to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.

7. .11 The facts asserted in paragraph 1A, 1B, and 1C of the Complaint are supported by the exhibits referred to and are not challenged. There is no reason to doubt the accuracy of those assertions, and accordingly I accept them as being factually correct.
8. .12 The description of goods given under the trade mark registrations referred to in paragraph 8.4 above is in the following terms:

"Head exchangers and heating elements for space heating, all being parts and fittings for radiator, convection and immersion heaters; radiators, convectors; covers, stowage benches and structurally anchored securing members of metal and plastics materials, all for heat exchangers and heating elements; all included in Class 11."

Similar descriptions are given under the other trade marks referred to in paragraph 1A of the Complaint.

9. .13 The literature provided by the Complainant, which is in the English language shows that it has marketed "Faral" radiators in the UK for a number of years. Radiators marketed by UK subsidiaries Acova Radiators (UK) Ltd and Zehnder Ltd are marketed as "Faral" radiators (though some are simply described as "Zehnder")
10. .14 An extract from the website faral.co.uk

8.14.1 includes a statement that "This domain name may be for sale …"

8..14.2 carries advertisements for other manufacturers or suppliers of radiators e.g.

"For Faral and Radiators try these sponsored results:

Central Heating Radiator Price Match Guarantee? Find Cheaper We'll Match It. Free UK Delivery. www.HeatAndPlumb.com

Designer Radiators Vast Range At Low Prices? See our special offers. www.radiatorfactory.co.uk

…

Central Heating Radiators designer radiators, bathroom radiators discounted, free delivery www.warmrooms.co.uk

Radiators & Towel Rails Top Quality. Great Online Prices Electric Models. Free Fast Delivery www.uk-radiators.com

Oil Filled Radiators Cheap Oil Filled Radiators Top UK Suppliers - Fast Delivery! Oil-Filled-Radiators. Top-UK.co.uk

Designer Radiators 15% Discount On all Contemporary And Classic Radiators, Buy Online! www.diy.com

The Radiator Centre Massive range of designer radiators all styles and models available www.wpah.co.uk."

8.15 In the Response it is asserted:-

8.15.1 In paragraph 3, that the Domain Name was acquired on behalf of clients for future development as a Family Site.

8.15.2 In paragraph 8, prior to receiving documentation from Nominet in respect of this DRS dispute, it is entirely probable that 4Names were completely unaware of the existence of the Complainant or its business.

8.15.3 In paragraph 10, in relation to the Complainant's reference, in paragraph 2 of the Complaint, to the making of offers to assign the name ("the offers"), that:

"4Names have not initiated any approach to the Complainant, any representatives of the Complainant or to any competitors of the complainant and no proof has been offered to the contrary."

11. .16 However,

8.16.1 The Respondent has provided no evidence to substantiate the claim referred to in paragraph 8.15.1 above, there is nothing in the content of the site operated under the Domain Name which supports it, and the Response has not been verified.

8.16.2 It is to be noted that it is not unequivocally asserted by the Respondent that it was completely unaware of the existence of the Complainant or its business.

8.16.3 The Complainant's assertions in paragraph 2 of the Complaint as to the offers are substantially supported by the documentation which it has provided and I accept them as true.

8.16.4 As is pointed out in paragraph 1 of the Reply, the content of the site operated under the Domain Name suggests that the site was set up to direct consumers to other sites selling goods, which are identical to those covered by the Complainant's UK registrations and sold by the Complainant in the UK.

12. .17 Taking into account the matters referred to in the last paragraph, I am satisfied, on the balance of probabilities, and find as facts, that:-

8.17.1 The Domain Name was not acquired by the Respondent for the purpose alleged;

8.17.2 Contrary to the Respondent's assertion, it was aware of the existence of the Complainant and its business prior to its receipt of the documentation relating to this dispute - in fact it was aware of those matters at the time it acquired the Domain Name;

8.17.3 The offers referred to in paragraph 2 of the Complaint:-

8.17.3.1 were made; and

8.12.2 were made with the knowledge and on behalf of the Respondent.

[In this context, the statement on the web-site referred to at paragraph 8.14.1 is of particular significance].

8.18 As can be seen from paragraph 9 of the Response, the Respondent:-

8.18.1 Asserts that the name Faral is a surname and a place name;

8.18.2 Contends, by reference to that assertion, that whilst the name "faral" is not generic in a trade mark sense of being the common name for a particular type of product, it is generic in the sense of being a general word that could be applicable to an entire class or group i.e. all those who have the name FARAL in a diverse range of business areas or Ancestry sites, and that the Complainant is only one of that class.

8.18.3 Submits that with reference to Paragraph 4 a ii of the DRS Policy the above is evidence that the Domain Name is not an Abusive Registration i.e. that the Domain Name is generic or descriptive and the Respondent is making fair use of it. (DRS 1629 Cyclone Courier Company Ltd and Mr Seb Clark).

8.19 The Complainant submits, inter alia, that:-

8.19.1 The case relied upon by the respondent, DRS 03773 Appeal, Item 8.20, Mercer Human Resource Consulting Inc. and IMO International Ltd, is distinguishable from the present case, because the Respondent in that case made it clear that it regarded the surname Mercer as a surname and registered the domain name in question, as the basis for an e-mail service to people with the surname "Mercer". Moreover, the domain name in question was said to be one of many in the same surname category.

8.19.2 Even if the Respondent is correct that "Faral" is a surname, that is irrelevant to the case at hand because the Respondent has not claimed that its surname is "Faral" or that it is using "Faral" to connote a surname. Instead, it is deliberately drawing traffic to the site by including a primary reference to the goods and interests of the Complainant.

8.19.3 The facts of the Cyclone decision case differ from the facts of the present case. In the Cyclone case, it was revealed that there were in excess of 50 Companies registered in the UK starting with the name Cyclone, in a range of business areas; in the present case, there was only one company registered under the name Faral Limited on the Companies House website; a search of the UK Patent Office database had disclosed 20 or so different UK trade mark registrations of the word CYCLONE that covered a wide range of goods, and the earliest one dated back to 1920: a search for FARAL on the UK Patent Office database only disclosed the trade marks owned by the Complainant in class 11, the relevant class of goods sold under the trade mark FARAL.

8.19.4 The fact that the Domain Name was being used by the Respondent in relation to the trade mark and goods of the Complainant, supports and is evidence of, the position that the use concerned is very much that of an abusive registration within the guidelines.

13. .20 I accept the contentions of the Complainant set out in paragraphs 8.19.1 to 8.19.3. The issue of "fair use" and the contention referred to in paragraph 8.19.4, as discussed below.
14. .21 It is apparent from the Complaint that the Complainant seeks to rely upon paragraphs 3(a)(i) A, B and C and 3(a)(ii) of the Policy.
15. .22 In the light of my findings as set out in paragraph 8.17 above it seems to me to be more likely than not, and I find as a fact, that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant, or, failing that, to a competitor of the Complainant for a sum in excess of the documented out-of-pocket costs directly associated with acquiring or using the Domain Name within the terms of paragraph 3a(i) of the Policy, and that it advertised competitors to the Complainant on the site to provide an enhanced incentive for the Complainant or its competitors to enter into negotiations with the Respondent for the purchase of the Domain Name.
16. .23 There is no evidence that, prior to its acquisition of the Domain Name, the Respondent had any connection with, or interest in, the name Faral. Because of the finding in the last paragraph as to why the Respondent acquired the Domain Name and why it is using it as it does, it follows that, it is not making "fair use" of it within the terms of paragraph 4a(ii) of the Policy. In these circumstances it is not necessary for me to consider whether the name Faral is generic.
17. .24 By reason of the finding in paragraph 8.22 above I do not consider that the Respondent registered the Domain Name primarily:-

8.24.1 as a "blocking registration", within the terms of paragraph 3a(i)B of the Policy, but the fact that it would achieve a "block" was a factor which would have been recognised by the Respondent as assisting it, and providing it with an important lever to assist it, in achieving its primary purpose.

8.24.2 for the purposes of unfairly disrupting the business of the Complainant within the terms of paragraph 3a(i)C of the Policy, but the Respondent would have recognised that the potential it had acquired for disrupting the Complainant's business would be likely to assist it in achieving its primary purpose.

18. .25 The Complainant has provided no evidence that the Respondent's use of the Domain Name has actually confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant, within the terms of paragraph 3a(ii) of the Policy, but I have no doubt and find as a fact that there is a risk of such confusion, and that such confusion is likely to have occurred and to occur from such use. Further, it is implicit in my finding in paragraph 8.22 above that such confusion was intended. In my judgment either the risk, or likelihood of confusion, or the intention to confuse are all sufficient to establish an Abusive Registration - the factors set out in paragraph 3 of the Policy are stated to be "non-exhaustive".
19. .26 Accordingly, in the terms of paragraph 1 of the Policy I am satisfied and find that the Domain Name:-

8.26.1 was registered in a manner which at the time when the registration took place was unfairly detrimental to the Complainant's Rights.

8.26.2 has been used in a manner which took unfair advantage of and was unfairly detrimental to the Complainant's Rights.

20. Decision
21. .1 For the reasons give above, I find that the Domain Name: was acquired in a manner which at the time when the acquisition took place, and has been used in a manner which, took unfair advantage of and was unfairly detrimental to the Complainant's Rights and, in the hands of the Respondent, is an Abusive Registration.
22. .2 The Complainant has requested the transfer of the Domain Name. On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Name should now be transferred to the Complainant as it requests.

Signed…………………………

David Blunt QC

20 May 2007