Nominet UK Dispute Resolution Service

DRS Number 04781

Decision of Independent Expert

1.	Parties

Complainant:		Baxi Heating UK Limited
Country:		GB	

Respondent:		Mr N Willey
Country:		GB

2.	Domain Name

<pottertonboilerrepairs.co.uk> (the “Domain Name”)

3.	Procedural Background

The complaint of the Complainant was entered in the Nominet system on 13 June 2007.  Nominet validated the complaint on 14 June 2007 and transmitted a copy of the complaint to the Respondent.  No response was received from Respondent by the due date of 9 July 2007.  Nominet wrote to both parties indicating that no response had been received.  On 24 July 2007 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”).

The undersigned (the “Expert”) has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.  The undersigned, Christopher Gibson, was appointed as Expert in this case on 27 July 2007.  

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”).  Paragraph 15b of the Procedure provides, inter alia, that “[i]f in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or the Procedure, the Expert will proceed to a Decision on the complaint.”

There is no evidence before the Expert to indicate the presence of exceptional circumstances.  Nominet has attempted to communicate the complaint to the Respondent by email and post.  The efforts made by Nominet are in accordance with the Procedure and accordingly, the Expert will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.

Paragraph 15c of the Procedure provides that “[i]f, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure . . ., the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.”  I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.

5.	The Facts

The Complainant is part of a corporate group, Baxi Holdings Limited.  The Complainant trades using the name “Potterton” in respect of boilers and heating systems and has used this name, with its predecessors in title, since the 1960s.  The Complainant’s annual turnover under the Potterton brand for the year 2006 was in the region of £65 million.  The Complainant has provided evidence of UK and Community trade marks consisting of, or incorporating as a key distinctive element, the word POTTERTON.  Trade mark number 1560494 for the mark POTTERTON in Class 37 covers “maintenance and repair services, all for heating appliances, central heating, gas appliances, boilers and gas fired boilers, gas fires and controls for use with heating appliances”.
  
From the WHOIS records, the Domain Name <pottertonboilerrepairs.co.uk> was registered for the Respondent, Neil Willey, on 4 February 2004.  The URL for the Domain Name, www.pottertonboilerrepairs.co.uk, resolves to a web site with no content except for a reference to the web-server software that appears to be running the site.

6.	The Parties’ Contentions

Complainant

The Complainant states that the Domain Name in dispute is identical or similar to a name or mark in which it has Rights and that the Domain Name in the hands of the Respondent is an Abusive Registration.  

Rights: The Complainant contends that it has Rights in a name and mark which is identical or similar to the Domain Name.  The Complainant business includes the trade name Potterton in respect of boilers, a name that has been used by the Complainant and its predecessors since the 1960s.  The Complainant provides documentary evidence of marketing materials, as well as audited accounts, which use the Potterton name.  The Complainant has also provided documentary evidence of registered UK and Community trade marks in which the word POTTERTON is the sole or key element.  The Complainant thus contends that it and its group have generated a substantial and significant reputation in the UK in the Potterton brand in respect of heating and hot waters systems and related services.  The name “Potterton Boilers” is specifically referable to the Complainant, and the Domain Name incorporates the Complainant’s famous brand name.

Abusive Registration: The Complainant raises two arguments in support of its contention that the Domain Name in the hands of the Respondent is an Abusive Registration.  First, Complainant urges that it is abusive because it was primarily registered for the purposes of selling, renting or otherwise transferring it to the Complainant or a competitor for a price which is greater than the Respondent’s out of pocket costs in acquiring the domain.  The Complainant explains that it has no relationship with the Respondent and never authorised the Respondent to use the Complainant’s marks or any variations in any context.  When the Complainant discovered the Domain Name, it contacted the Respondent by letter dated 12 March 2007 setting out its objections to the Respondent’s registration. The Respondent replied by letter dated 23 March 2007. The Respondent stated, among other points, that:
-	the Domain Name is not in active use and has never been used;
-	the Respondent considered building a website at the Domain Name as a favour for a pub acquaintance in February 2004, but never pursued the idea;
-	the Respondent has no intention of “passing off” or “trade mark infringement” and is “incensed by a such suggestions as I merely bought what was available and on open offer in all good faith and through a reputable source”;
-	the Respondent has no real financial or business use for the Domain Name; 
-	the Respondent has no company in any way related to boiler activities; and
-	 the Respondent would sell the Domain Name to the Complainant “just covering my out of pocket expenses of £200”.
The Complainant urges that the amount of sought by the Respondent is higher than the typical out of pocket expenses for acquiring a domain name and thus represents an attempt to take advantage of the goodwill the Complainant has established in its name.

Second, the Complainant notes that the factors set out in paragraph 3 of the Policy comprise a non-exhaustive list of examples providing evidence of Abusive Registration.  The Complainant thus alleges that the following factors, taken cumulatively, indicate Abuse in this case: 

1. The name “Potterton Boilers” is specifically referable to the Complainant. The Domain Name incorporates the Complainant’s famous brand name and the Respondent’s ownership of the name may mislead or confuse members of the public into believing the Respondent is affiliated or endorsed or otherwise connected with the Complainant.

2. It would appear wholly improbable that the Domain Name <pottertonboilerrepairs.co.uk> would be suitable for any purpose except in connection with the Complainant’s business.

3. The Respondent admitted he has not made any use of the Domain Name. While non-use is not itself evidence of an Abusive Registration, in this case the Respondent does not claim to have any legitimate connection with the Complainant’s business.  Moreover, if the Respondent had attempted to use the Domain Name, the Complainant would have taken legal action to prevent such use.  Logically, the inability of the Respondent to use the Domain Name without facing such action is an indicator that the Domain Name is abusive in the Respondent’s hands. 

4. The Respondent did not in its letter to the Complainant cite any grounds with supporting evidence to show that the Registration in his hands was not in fact an Abusive Registration. 

5. The continued ownership of the Domain Name in the Respondent’s possession would be likely to confuse Internet users and potential customers of the Complainant’s products and services either that the Complainant’s website is inactive or that the Domain Name is connected with the Complainant when it is not. 

In support of drawing the inference of abuse from the points above, the Complainant refers to two DRS cases. First, in Amazon.com Inc vs. Microplace Limited t/a Netknowledge (DRS 01781), the expert there concluded that “the key to this case is the sheer impossibility of there being any innocent explanation at to why the Respondent should have chosen to adopt the Complainant’s name and trade mark other than to the detriment of the Complainant. In the circumstances, the Expert is unable to think of any good reason why the Respondent could reasonably be said to have any legitimate right or interest in the disputed domain.”  The Complainant contends that the same reasoning should apply here, because the name “pottertonboilerrepairs” can only plausibly refer to the Complainant’s business.

The second case, Oxford Instruments Plc v Bruinder Singh Dha (DRS 00832), involved a scenario with similarities to this case, in particular a well-known brand and a disputed domain name that was inactive.  In that case the expert, the undersigned Expert here, concluded by stating: “where a Respondent registers a Domain Name: 1. which is identical (or virtually identical) to a name in respect of which the Complainant has rights: and 2. where that name is specifically referable to the Complainant and sufficiently distinctive; and 3. where there is no obvious justification for the Respondent having adopted that name for the Domain Name; and 4. where the Respondent has come forward with no explanation for having selected the Domain Name, it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain Name for a purpose and secondly that that purpose was abusive.”  The Complainant contends that the reasoning of Oxford Instruments should apply to this case.  In particular, while the Respondent proffered an explanation in its letter to the Complainant, there was no evidence in support of that explanation.  In addition, the Domain Name <pottertonboilerrepairs.co.uk>, on its face, would appear wholly improbable as a choice of name for any person or use other than in connection with the Complainant’s business.

Respondent

The Respondent has not responded, and therefore has raised no challenge to any of the facts and statements submitted by the Complainant.

7.	Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present:

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.

Complainant’s Rights

The Complainant has established that it has Rights in its POTTERTON brand name and marks.  The Complainant and its predecessors in title have used this name for many years, developing a substantial reputation for the brand in its industry.  Further, the Complainant has registered trade mark rights in the UK and European Union for the mark POTTERTON.  

The substantive part of the Domain Name contains the Complainant’s POTTERTON mark.  Even if the words “boiler repairs” are considered to be merely descriptive, the word POTTERTON is distinctive in relation to heating and hot water systems and their related services.  POTTERTON is also the dominant and distinctive component of the Domain Name when combined with words that reinforce the specific context in which the POTTERTON mark is well-known.  The Domain Name is therefore similar to a name or mark in which the Complainant has Rights.  The Complainant has established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration
As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS 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.”
The Expert should take into account all relevant facts and circumstances in determining whether the Domain Name is an Abusive Registration.  

As noted by the Complainant above, the list of factors in paragraph 3(a) of the Policy, providing examples of abusive registrations, is non-exhaustive.  The Complainant has submitted its own list of factors pertinent to this case.  The Expert is persuaded by the Complainant’s position.

On the evidence before the Expert, the Domain Name <pottertonboilerrepairs> is specifically referable to the Complainant and its group.  The name POTTERTON is a sufficiently distinctive name, well-established in the Complainant's field of use. It is difficult to imagine that the Respondent could have registered the Domain Name without having the Complainant in mind, particularly as the words “boiler repairs” reinforce the specific context in which the POTTERTON mark is well-known.

The Expert observes that there is no obvious reason why the Respondent might be said to have been justified in registering the Domain Name, and the Respondent has elected not to come forward with any explanation for registration of the Domain Name.  Prior to the filing of this case, the Respondent did reply to a letter from the Complainant.  In it letter of 23 March 2007, the Respondent stated a number of points including that the Domain Name is not in active use, and that the Respondent has no financial or business use for it and has no company related to boiler activities.  In effect, the Respondent acknowledged that he had no reason to explain or justify why he registered the Domain Name – even though it refers, in a single phrase, to the Complainant’s mark and closely related activities (i.e., boiler repairs), and would not be well-suited for any purpose except in connection with the Complainant’s business.  The Respondent did assert in his letter that he had no intention of becoming involved in “passing off” or “trade mark infringement”, but we are given no further explanation or evidence to support this claim.  He concludes by offering to sell the Domain Name to the Complainant for £200.

While it might be possible (at least theoretically) that the Respondent registered the 
Domain Name for no purpose at all, the Expert regards that as most improbable, particularly when there are registration fees involved. What could the Respondent's purpose have been? It could have been with a view to making a use of it, or it could have been with a view to selling it, or simply to block the Complainant. We are left to speculate because the Respondent has not responded in this case, nor has the Respondent made any use at all of the Domain Name. As the Complainant points out, had the Respondent attempted to use the Domain Name, the Complainant very likely would have taken some form of legal action to protect its rights in its name and mark. 
. 
In this case, the Expert follows the reasoning in the previous DRS cases, Amazon.com Inc vs. Microplace Limited t/a Netknowledge (DRS 01781), Oxford Instruments Plc v Bruinder Singh Dha (DRS 00832) and Chivas Brothers Limited -v- David William Plenderleith, DRS 00658 (12 December 2002).  I conclude that where a Respondent registers a Domain Name:- 

1. which is similar to a name in respect of which the Complainant has Rights; and 

2. where that Domain Name is specifically referable to the Complainant and would not be well-suited for any purpose except in connection with the Complainant’s business; and

3. where there is no obvious justification for the Respondent having adopted that name for the Domain Name; and 

4. where the Respondent has failed to come forward with any explanation for having selected the Domain Name, 

it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain Name for a purpose and secondly that that purpose was abusive. In this case the Expert draws these inferences.

Accordingly, the Panel finds on the balance of probabilities that the Domain Name, in the hands of the Respondent, is an Abusive Registration

8.	Decision

The Expert finds that the Complainant has Rights in respect of a name or mark which is similar or identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  The Expert therefore directs that the Domain Name, <pottertonboilerrepairs.co.uk>, be transferred to the Complainant. 

Christopher Gibson

22 August 2007