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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Record Power Ltd v J & B Electric Power Tool Co Ltd [2007] DRS 4849 (14 September 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4849.html Cite as: [2007] DRS 4849 |
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Complainant: Record Power Limited
Country: GB
Respondent: J&B Electric Power Tool Co Ltd
Country: GB
(the "Domain Name")
The Complaint entered Nominet's system on 5 July 2007. Hard copies of the Complaint were received by Nominet on 9 July 2007. The Complaint was validated and sent to the Respondent on 12 July 2007. A Non-Standard Response was received from the Respondent on 12 July 2007 and was forwarded to the Complainant. The Complainant filed a Reply on 18 July 2007. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me. I confirmed that I was not aware of any reason why I could not act as an Independent Expert in this case and I was appointed as such on 4 September 2007.
None, save for the non-standard nature of the Response in this case. I comment upon this in detail below.
5.1 The Complainant is a private limited company, incorporated under the laws of the United Kingdom on 19 June 2003 with company registration no. 04804158. It deals in woodworking machines and accessories.
5.2 The Complainant is the owner of UK registered Trade Mark no. 1405857 registered on 18 December 1992 (with a filing date of 18 November 1989) in class 7 in respect of bench drilling machines, pedestal drilling machines, disc and belt senders. The form of the trade mark is that of a device which takes the form of a representation of various tools in a circle above which is the word "Record" and below which is the word "Power". A copy of the trade mark is at Annex A to this decision.
5.3 The Respondent is also a private limited company, incorporated under the laws of the United Kingdom. As is explained in greater detail later on in this decision, it appears to be engaged in the sale of various power tools and has a previous trading relationship with the Complainant.
5.4 The Domain Name was registered on 18 July 2006 in the name of the Respondent (by whom it continues to be held). At the date of this decision, the Domain Name links to a website that sells genuine products of the Complainant. It appears not to be disputed that only genuine products of the Complainant have been sold from this website since the date of registration of the Domain Name.
Complainant
6.1 The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is identical to a name in which it has rights and that registration and use of the Domain Name is abusive.
6.2So far as rights are concerned, it relies upon the fact that:
(i) it has been registered at Companies House under the name Record Power Ltd since 19 June 2003 (although the Companies House printouts provided by the Complainant suggest that this was the date of incorporation of the company, and that it did not change its name to Record Power Ltd until 21 July 2003);(ii) it has traded under the name "Record Power" since 1 July 2003; and(iii) it is the owner of the UK Registered Trade Mark no. 1405857 (details of which have already been given above).
6.3 The registration of the Domain Name is said to be abusive because it is being used in a way which has already confused people into thinking that it is controlled by the Complainant. In particular:
(i) The Respondent's website is in the same corporate style as that of the Complainant, has been designed in such a way as to give the impression that it is controlled by the Complainant and uses images that have been "lifted" from the Complainant's website.(ii) There has been an instance of actual confusion in the case of one customer. Attached to the Complaint is an email from an individual which reads as follows:"-----Original Message-----From: edwin wood [email address redacted]Sent: 21 June 2007 10:35To: Lynne HancockSubject: Attention ofRecord PowerRecord Power DML24X 24in Woodturning Lathe with Legstand... support on all our product range and our customer services department is open Monday - Friday, …www.record-power.co.uk/paste into google and see resultsThis is the result of a google search for record power which takes you to the web page which is included as an attachmentIt would appear to claim you are owned by power tool direct and I found it very misleading the service I received from this company was very slow.Regards Eddie Woodhttp://www.record-power.co.uk/Paste into google and see resultDouble click attachment to go to web page 01557870026"
Response
6.4 On 12 July 2007, in response to the Complaint, the Respondent sent Nominet a letter. The letter is marked "without prejudice" and addressed to "To whom it may concern".
6.5 Notwithstanding the fact that this letter is marked "without prejudice", I believe I am entitled to refer to it in this decision. First, as paragraph 6 of the Policy makes clear (and subject to certain provisos that do not apply in this case), without prejudice material can be relied upon by an expert. Secondly, I do not accept that the contents of this document are without prejudice in any event. I do not believe that this letter can be sensibly characterised as correspondence directed to the Complainant (or a person connected with the Complainant) with a view to furthering, exploring or opening settlement discussions. It is in essence the Respondent's Response to the Complaint.
6.6 The letter is unsigned although it was forwarded to Nominet under the cover of an email from a Mr Paul Disley. Who "Mr Disley" is, his position at J&B Electric Power Tool Ltd and the extent to which, if at all, he personally vouches for the statements contained in the letter is not explained.
6.7 The letter is a non-standard submission in that it does not comply with the requirements of paragraph 5 of the DRS Procedural Rules. Significantly, it omits to include the "statement of truth", that is required by paragraph 5(v). This is not a trivial omission. The DRS is not equivalent to court proceedings. It does not have complicated rules of evidence and it is intended to be accessible to lawyers and non-lawyers alike. Frequently, an expert will rely upon a factual assertion contained in the parties' submissions. However, as a consequence, it is essential that an appropriate person at least vouches for the truthfulness of the assertions contained in such a document.
6.8 Without such a statement, any factual assertion contained in that document is likely, at the very least, to be approached with a degree of scepticism and where there are differences of fact between the parties may be given very little, if any, evidential weight.
6.9 With this in mind, I turn to the contents of the letter. The Respondent's primary contentions are as follows:
(i) The website operating from the Domain Name, trades exclusively in machinery and parts supplied by the Complainant.(ii) The Complainant "was aware of and supported" the Respondent's site since its inception.(iii) The website makes it clear that the business is "part of Powertool Direct".(iv) The Complaint's logo is only used on the website where "attached to an image of a piece of machinery". "Record Power" is used elsewhere on the website, but in a different form to that of the Complainant. The colours used, the fonts used and the positioning of the two logos are said to be different.
The Complainant's Reply
6.10 The Complainant in its Reply denies any knowledge of the Respondent's website before early July and denies giving it "approval and support". Indeed, the Complainant contends that when contacting the Respondent one Graham Heap of the Respondent, stated: "If it has taken this long for you to find out about [the Respondent's website] it cannot be much of a problem".
6.11 The Complainant confirmed that the Respondent had been a dealer in the Complainant's products, but that as far as the Complainant had been aware this had been by mail order and via a separate website operating from thedomain name. The Complainant contends that it is no longer accepting orders from the Respondent.
6.12 The Complainant had provided the Respondent with images of their products but this was for use on thewebsite. The Complainant denied that it had authorised the use of these images on a website operating from the Domain Name. In any event, other images and articles are said to have been taken from the Complainant's website without permission.
6.13 The Complainant accepts that the site operating from the Domain Name referred to Powertool Direct. However, this was done in such a way that, if anything, falsely suggested that the Complainant's own business was part of the Powertool Direct group.
6.14 The Complainant also points to the fact that the website originally contained the footnote "© Copyright Record-Power 2006". According to the Complainant, Mr Heap's
response was: "you're not the first to complain, we have done this with other brands such as Snickers and there is nothing you can do about it. It says copyright Record dash Power not Record Power".
7 Discussion and Findings:
General
7.1 To succeed under Nominet's Dispute Resolution Service Policy (the "Policy"), the Complainant must prove on the balance of probabilities, first, that it has Rights in respect of a "name or mark" that is identical or similar to the Domain Name (paragraphs 2(a)(i) of the Policy) and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent (paragraph 2(a)(ii) of the Policy).
7.2 Abusive Registration is defined in paragraph 1 of the Policy in the following terms:
"Abusive Registration means 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."
Complainant's Rights
7.3 Rights are defined in the Policy as follows:
"Rights includes, but is not limited to, rights enforceable under English law. However, a complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business;"
7.4 In this case, the Complainant primarily relies upon its UK registered trade mark no. 1405857 (evidence of which is provided in the terms of a printout from the UK Intellectual Property Office's website). As has already been explained, this takes the form of a device mark that incorporates the words "Record Power" and there are no other words in the mark. Since the trade mark is not a simple word mark, it cannot be said to be identical to the Domain Name, but I have very little difficulty in concluding that it is similar to the Domain Name given the prominence of the words in the mark.
7.5 Further and in any event, it seems clear that as a result of it's trading activity since 2003, the Complaint has goodwill in the name "Record Power" which is protectable in England and Wales under the common law of passing off. This has long been recognised as constituting "Rights" for the purpose of the Policy. It is not possible to include a space in a domain name, but it is well known that spaces are often represented in domain names by a hyphen or dash. In the circumstances, I am of the view that the Complainant has common law "rights" that are identical to the Domain Name for the purposes Of the Policy.
7.6 Accordingly, the Complainant has made out the requirements of paragraph 7(a) of the DRS.
Abusive Registration
7.7 Paragraph 3 of the Policy provides a non-exhaustive list of factors that may be evidence that a domain name registration is an Abusive Registration. Paragraph 3(a)(ii) is most relevant in this case and refers to:
"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."
7.8 There have been a number of decisions under the DRS that have addressed the question of whether it is abusive for a domain name registrant to use a domain name that comprises or incorporates a trade mark owned by another person to sell genuine goods that carry that mark but where use of the domain name has not been authorised.
7.9 The issue was considered in Seiko UK Limited v Designer Time DRS 00248 (). The original expert was prepared to approach the issue as one of principle[1] and came to the conclusion that such registration and use was abusive. The matter was then appealed to a three-person appeal panel. Whilst the appeal panel upheld the decision, they did not quite express themselves in the same way as the original expert. Primarily, they seem to have approached the question as one whether as a matter of fact on the evidence before it the registration and use in that case carried with it the false representation that it was the official site of the Complainant. A key factor in their reasoning appears to have been the specific evidence in the case of customer confusion. However, there are aspects of the decision, which suggests a willingness on the part of the panel to consider the issue in somewhat more general terms, and that ordinarily the unauthorised use of a trade mark in a domain name without consent would be abusive.
7.10 It is also noteworthy that a similar debate has taken place as to the legitimacy of this practice under the separate Uniform Domain Name Dispute Resolution Policy ("UDRP") that applies to ".com", ".net" and ".org" registrations. (See in this respect paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions[2]).
7.11 However, it is not necessary on this occasion to add to this debate. The reason is that this is not simply a case where a domain name is being used to host a retailer's site selling goods under that name. In my judgment, this is a case where there has been a wholesale attempt on the part of the Respondent to impersonate the Complainant. The factors that lead me to this conclusion are as follows:
(i) The name Record Power is the predominant name used throughout the website. Anyone looking at the site is likely to conclude that not only is this a source of genuine Record Power products but that this is operated by a business that independently trades under the Record Power name. There are references to Powertool Direct on the website but they are relatively fleeting. The words "Part of Powertool Direct" appeared in relatively small text under the large name Record Power in the top left hand corner of the site but this does not significantly detract from the overall impression given by the site.(ii) The Respondent uses a Record Power logo that is very similar to that of the Complainant (they are reproduced in full in Annex B to this decision). The Respondent maintains that there are significant differences in that the colours are different, the fonts are "completely different" and the Respondent's logo has text spaced over two lines. However, these assertions are wholly unpersuasive. First, even if it is true (as the Respondent contends) that the Complainant uses colours #2a3f38 and #f3e403 and the Respondent uses colours #274138 and #fee200, to my eyes they are virtually indistinguishable. Whilst there are some differences in font, they are also not in my judgment significant. Lastly, the fact that the words are one on top of the other is also not significant given that it is clear from the supporting material supplied by the Complainant that the Complainant uses its logo on its equipment in both single line and double line form.The Respondent's contentions here are also somewhat confused. If the Respondent's case is that it is legitimately using the Complainant's brand to sell genuine products of the Complainant, one would expect the Respondent to use the logo unchanged. However, there is no justification for using a slightly modified version of that logo. There is no suggestion that the Respondent has some right to use the Record Power name for it business quite independently of the Complainant's products.(iii) The green and yellow colour combination used in the Complainant's logo and throughout the Complainant's website is replicated (subject perhaps to my comments on colour in respect of the logos above) throughout the Respondent's site. The border background image that appears at the top of the page (comprising a faded representation of a piece of the Complainant's machinery together with four irregularly spaced dark green circles) is also the same as that on the Complainant's site.(iv) Extracts from the Complaint's "Record Power News" that appear on the Complainant's site, were reproduced on the Respondent's site. Wording reproduced included "The Record Power Summer Promotion is now available, featuring our most popular machines and accessories along with many great savings" and when referring to a specific product "We are pleased to announce that it is now available once again and the production rate increased to prevent stock shortages in the future" [my emphasis]. There is no suggestion in the Respondent's website that these are the words of the original supplier of the product as distinct from the Respondent and this adds to the general impression given by the website that this is the supplier's own website.(v) There is the unexplained and rather bizarre copyright notice at the bottom of each web page that states "© Copyright Record-Power 2006". Again the obvious conclusion is that this is the website of a business that is not just selling Record Power products, but which operates under the "Record Power" name. As I have already noted, there is nothing to suggest that the Respondent has some right to use the Record Power name for it business independently of the Complainant's products.(vi) The use of the Complainant's photographs of its business on the Respondent's website. The Respondent claims that this was authorised. The Complainant contends that whilst some photographs were supplied for the purposes of use in marketing, it had not authorised their use on a website operating under the Record Power name, and, in any event, other photographs have been taken from the Complainant's site without permission. If forced to choose between the contentions of the Complainant and the Respondent here, I would prefer those of the Complainant. However, it is not just the reproduction of the photographs that is significant here, but also the exact manner in which some of them have been used. In particular, what look like photographs of aspects the Complainant's business (whether they are shops or exhibitions or the like is not quite clear) have been used alongside text such as "Delivery Information", and "Payment Information". This is information in relation to the Respondent's activities rather than the Complainant's products, and yet these photographs have been used in a way that suggests these are activities of the Complainant.
7.11 In short, the overwhelming impression created by the Respondent's website is that it is the official Record Power website when it is not. This is a clear example of "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 operated or authorised by the Complainant" as opposed to it simply being a domain name that is operated by an entity selling the Complainant's goods. As such it is the sort of activity that falls squarely within the scope of paragraph 3(a)(ii) of the Policy.
7.12 Of course, if the Respondent's activities were authorised by the Complainant, there would be no issue of abuse. However, I have little difficulty in preferring the Complainant's contentions here over those of the Respondent. Whilst the Respondent maintains that the Complainant "was aware of and supported the site since its inception", this statement is unsupported by a "statement of truth" and no corroborating evidence is offered in support of that assertion. The Complainant admits that it has had commercial dealings with the Respondent in the past, but that is said to have been in connection with the Respondent's quite differentsite. I also accept that the undisputed comments of Mr Heap are somewhat more consistent with the Complainant's, rather than Respondent's, contentions in this respect.
7.13 I also note that the Complainant offers as evidence of actual confusion an email from a Mr Wood. Whilst the email is somewhat difficult to follow, the Complainant contends that it is from an individual who had contacted it to complain about not having been supplied with goods that we had in fact purchased from the Respondent. The Respondent maintains that the reason for the delay was a failure on the part of the Complainant to deliver product to the Respondent. However, this somewhat misses the point. It is not the failure to deliver that is significant. It is the confusion as to identity.
7.14 I would add that notwithstanding the reference to passing off in the Complainant's submissions this does not form any part of my reasoning as to abuse (as opposed to "rights") in this case. As was made clear recently by the appeal panel in CIVC v Jackson DRS 04479 () , whilst there may be a considerable overlap between claims for trade mark infringement and passing off on the one hand and claims of abusive registration on the other, they are not necessarily the same. The facts, as I understand them in this case, are such that I would not be surprised if the Complainant had a good case against the Respondent under the law of passing off. However, regardless of whether this is so, this strikes me as a clear case of abusive registration and use of the Domain Name.
7.15 I, therefore, conclude that the Complainant has made out its case that the Domain Name is an abusive registration within the meaning of the Policy.
8 Decision
8.1 I find that the Complainant has Rights in a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration under paragraph 2(a) of the Policy.
8.2 I therefore determine that the Domain Name should be transferred to the Complainant.
Matthew Harris
…………………………
14 September 2007
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Complainant's Logo:
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Note 1 See the final paragraph on page 13. [Back] Note 2 http://www.wipo.int/amc/en/domains/search/overview/index.html [Back]
