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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Gray & Osbourn Ltd v Chao Investments Ltd [2007] DRS 4875 (5 September 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4875.html Cite as: [2007] DRS 4875 |
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Complainant: Gray & Osbourn Limited
Country: GB
Respondent: Chao Investments Limited
Country: NZ
grayandosborne.co.uk
The Complainant's complaint was submitted electronically on 10 July 2007 and hard copies of the complaint with supporting documentation were received by Nominet on 12 July 2007. On that day, details of the complaint were sent to the Respondent, Chao Investments Limited, by post to its address in New Zealand, by fax and by email. No response was received from the Respondent. The Complainant was informed of the Respondent's lack of response on 6 August 2007 and, on 9 August 2007, the Complainant paid the fees to refer the matter for a decision by a Nominet expert. I was subsequently selected as the expert following the usual conflict checks.
None
The Complainant, Gray & Osbourn Limited, was incorporated on 2 April 1998. The Complainant company was originally called Aheadcove Limited and on 5 June 1998 changed its name to Classic Selection Limited. On 13 March 2002, it changed its name to its current name of Gray & Osbourn Limited.
The Complainant has been trading under the Gray & Osbourn name since 2002, selling clothing for women via catalogue mail order and via its website at www.grayandosbourn.co.uk.
The Domain Name was registered on 16 July 2004. The Complainant's solicitors first complained about the registration of the Domain Name by a letter dated 28 February 2006. At that time, the Domain Name was registered to a Robert Morrison with an address in Malta. On 22 March 2006, the registrant details for the Domain Name were updated. The registrant was still Robert Morrison, but now stated to be trading as "DHG" with an address in Australia. On 29 March 2006, the Complainant's solicitors wrote to Robert Morrison at the address in Australia and by email referring to its previous letters of complaint. The Complainant says that no response was received to the letters from its solicitors.
The registrant details for the Domain Name were again updated on 16 February 2007, at which time the registrant became the Respondent, Chao Investments Limited of New Zealand.
As at 17 February 2006, the Domain Name resolved to a website at www.ndparking.com/grayandosborne.co.uk and contained headings such as "Women's Fashions", "Trendy Clothing", and "Fashion", together with links to other websites offering women's clothing and accessories.
The Domain Name currently resolves to a website with various links to other websites grouped under the headings of "Dating", "Cars", "Entertainment", "Education", "Jobs", "Finance", "Internet", "Electronics", "Business", "Travel" and "Legal". There appears to be no reference to clothing or fashion etc.
Chao Investments Limited is listed on Nominet's "3 Cases Respondent Table", i.e. the table of Nominet DRS decisions in which a Respondent has been found to have made an Abusive Registration on at least three previous occasions. In fact, there are 13 previous cases cited with Chao Investments Limited as the Respondent, and all those decisions were made in 2007. In addition, Robert Morrison is listed as also having 13 prior decisions of having made an Abusive Registration, ranging from 5 September 2005 to 4 June 2007, the most recent three dating back from 27 September 2006.
Complainant:
In summary the Complainant says that:
• It has Rights in the name "Gray & Osbourn" acquired through its UK registered trade mark for "GRAY & OSBOURN" dating from 5 January 2001 and its trading under that name since 2002 via catalogues and its websites at www.grayandosbourn.co.uk and www.grayandosbourn.com.
• It is the leading catalogue brand in the UK premium home shopping market providing clothing for women, and has built up a significant and valuable goodwill and reputation in the Gray & Osbourn name.
• The Domain Name was previously registered to Robert Morrison and resolved to a website that offered women's clothing, thereby reinforcing the likelihood of confusion with the Complainant.
• Robert Morrison did not respond to the letters of complaint from its solicitors.
• The Domain Name is Abusive as:
(1) it was registered at a time when the Complainant had acquired its Rights in the Gray & Osbourn name; and
(2) the Domain Name is confusingly and substantially similar to its Gray & Osbourn name, the only difference being the spelling of "Osbourn" as "Osborne".
• The Domain Name was registered for the purpose of unfairly disrupting the Complainant's business as it originally resolved to a website selling identical or substantially similar goods to those offered by the Complainant, which would result in potential customers believing that the Domain Name was registered to or operated or authorised or otherwise connected with the Complainant.
• The Respondent is connected to the previous registrant of the Domain Name. The Complainant refers to the Nominet DRS decision number 04546 (Newsquest Media Group Limited -v- Chao Investments Limited). That was a decision made on 1 May 2007 and refers to the fact that the original registrant of the domain names in that matter (telegraphandargus.co.uk and oxfordmail.co.uk) was Robert Morrison and that, although the domain names were later transferred to Chao Investments Limited, Mr Morrison remained as the billing contact for both domain names.
• Both Robert Morrison and Chao Investments Limited have Nominet DRS decisions registered against them of findings of Abusive Registrations which shows that the Respondent is clearly engaged in the habit of making registrations of domain names which correspond to trade marks or other well known names in which the Respondent has no apparent interest or Rights.
• In the circumstances, the Domain Name in the hands of the Respondent took unfair advantage of or was unfairly detrimental to the Complainant's Rights at the time of registration by Robert Morrison and at the time of its acquisition by the Respondent.
• The Domain Name has, in the hands of the Respondent, been used in a manner which has unfairly taken advantage of or has been unfairly detrimental to the Complainant's Rights.
Respondent:
The Respondent has not responded to the complaint.
General
In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:
These terms are defined in the Nominet UK DRS 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.
• 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
The Complainant has produced evidence of its registered trade mark rights in the name GRAY & OSBOURN relating to a variety of goods, including clothing. In addition, the Complainant refers to its website and catalogue business that has traded under the Gray & Osbourn name since 2002 selling women's clothing.
In the circumstances I find that the Complainant has proved that it has Rights in the name Gray & Osbourn.
The difference between the Complainant's name and the Domain Name is the change of the "&" to "and" and the different spelling of "Osbourn" to "Osborne". Whilst the Domain Name is not identical to the name in which the Complainant has Rights, it is very similar.
I therefore find that the Complainant does have Rights in the name "Gray & Osbourn", being a name or mark which is identical or similar to the Domain Name.
Abusive Registration
From the matters relied on by the Complainant in its submissions the following parts of paragraph 3 and 4 of the DRS Policy (being factors which may be evidence that the Domain Name is or, in the case of paragraph 4, is not an Abusive Registration) are potentially relevant:
Paragraph 3 a. i. C "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant."
Paragraph 3 a. 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."
Paragraph 3 a 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."
Paragraph 3 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))".
Paragraph 4 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."
It seems clear that paragraph 3 c. of the DRS Policy applies to this case. As indicated above, Chao Investments Limited of PO Box 37410, Parnell, Auckland, New Zealand has been the Respondent in 13 separate findings of having made an Abusive Registration. All of them were decisions made in 2007. All bar the most recent decision were made within the two year period before this complaint was filed. The most recent finding of an Abusive Registration was made some two weeks after this complaint was filed.
As paragraph 3c. of the DRS applies, paragraph 4c. makes it clear that, in order to succeed, the Respondent must rebut the presumption by proving in its Response that the registration of the Domain Name is not an Abusive Registration i.e. the burden of proof is reversed. The Respondent has not responded to the complaint at all, and has therefore failed to rebut the presumption of Abusive Registration.
That is sufficient for the matter to be decided in the Complainant's favour without the need to rely upon the further evidence put forward by the Complainant. Having said that, the other evidence relied upon by the Complainant provides strong support for a finding, that, on the balance of probabilities, the Domain Name is, in the hands of the Respondent, an Abusive Registration.
For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the name "Gray & Osbourn", being 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.
In the circumstances I order that the Domain Name be transferred to the Complainant.
Chris Tulley
5 September 2007