Nominet UK Dispute Resolution Service

DRS Number 05386

Decision of Independent Expert

1.	Parties

Complainant:		Loewe S.A.
Country:		Spain

Respondent:		David Blackburn
Country:		United Kingdom

2.	Domain Name

<loewe.co.uk> (the “Domain Name”)

3.	Procedural Background

The Complaint of the Complainant was entered in the Nominet system on 16 January 2008.  Nominet validated the Complaint and transmitted a copy to the Respondent.  A Response from the Respondent was entered in the Nominet system on 12 February 2008, and a Reply from the Complainant was entered on 25 February 2008. On 27 March 2008, a non-standard submission was received from the Respondent. On 22 April 2008 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet 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 8 February 2008.

Respondent’s Non-Standard Submission:

As noted above, the Respondent has submitted a non-standard submission.  In accordance with paragraph 13(b) of the DRS Procedure, Nominet has forwarded to the Expert only the first paragraph of that submission, which paragraph 13(b) specifies should explain “why there is an exceptional need for the non-standard submission.”  The Expert can then determine “at his or her sole discretion” whether to receive the remainder of the non-standard submission.  The first paragraph of Respondent’s non-standard submission is as follows:

"This submission is necessary because the Complainant's Reply contained
matters that ought to have been properly contained in the Complaint -
including evidence and allegations that are inadmissible at this stage.  If
they are admitted, these are all things that I must be given an opportunity
to comment on - including fresh (and incorrect) allegations about new
allegedly abusive domains supposedly registered to me; new search engine
evidence;  fresh and significant admissions; and repeated attempts to
mis-appropriate the Policy in an attempt at reverse domain name hijacking.
This submission is essential to enable the Expert to properly review the
case and to avoid allowing the Complainant from taking unfair advantage of
new and incorrect assertions at the Reply stage, without my having the right
to reply."

The Expert has carefully reviewed the arguments and evidence included in the Complainant’s Reply.  The Expert’s objective is to assess whether the Complainant has submitted new allegations or evidence that bring about some element of unfair surprise and thus should have been included in the Complaint and, if so, to determine whether the Respondent’s non-standard submission should therefore be accepted.  The main points of the Reply are summarized in section 5 below.  Paragraph 6(a) of the DRS Procedure provides that the Complainant “may submit to us a reply to the Respondent's response,” but adds nothing more about the permissible scope of the Reply.  In any event, the Expert finds that the Complainant’s Reply contains arguments and evidence that are directly responsive to the points raised by the Respondent in his Response.  The matters covered in the Reply are therefore properly within the scope of that submission, and do not give rise to grounds for accepting the Respondent’s non-standard submission.  The Expert therefore decides not to accept the remainder of the Respondent’s non-standard submission.

4.	The Facts

The Complainant, Loewe S.A., is the owner of the LOEWE brand and trade marks, which have been used for many years in the UK, the European Union and elsewhere around the world in relation to leather items, ready-to-wear silk accessories and fragrances. The Complainant has registered LOEWE as a trade mark before the UK Trade Marks Registry and the Community Trade Mark Office (Office for Harmonization of the Internal Market).  Complainant operates its business on the Internet through websites at www.loewe.com (registered in 1996), as well as <loewe.es>, <loewe.fr>, <loewe.co.jp>, <loewe.hk>, <loewe.sg>, <loewe.hk>, <loewe.com.cn>, <loewe.tw> and <loewe.us>, all of which allow the Complainant to reach clientele across a wide geographic area.

The Respondent is David Blackburn, an individual who has a portfolio of over 1,000 domain names.  From the WHOIS records, the Domain Name <loewe.co.uk> was registered by the Respondent on 18 May 2004.  The URL for the Domain Name, www.loewe.co.uk, resolves to a website containing links to all sorts of other websites providing goods and services (e.g., birthday gifts, car loans, casinos, London hotels, mortgages, ringtones, etc.).  The Domain Name thus resolves to a pay-per-click parking page, enabling Respondent to earn money by means of click-throughs using links on the parking page.  This continues to be the case as of the date of this decision.

On 24 September 2007 a lawyer for the Complainant wrote to the Respondent drawing his attention to its trade mark rights and seeking transfer of the Domain Name to the Complainant.  The Respondent’s lawyers replied on 4 October 2007, denying the Complainant’s allegations and rejecting the demand for transfer.  Further correspondence was exchanged between the parties.

5.	The Parties’ Contentions

Complainant’s Complaint

The Complainant contends that the Domain Name in dispute is identical to registered trade mark rights for its mark, LOEWE, and that the Domain Name in the hands of the Respondent is an Abusive Registration.  

Complainant Rights: 

The Complainant has submitted extensive documentary evidence to demonstrate that it has Rights in the LOEWE mark, which is identical to the Domain Name.  Complainant contends that the LOEWE brand is well-known in the UK and throughout the world as a Spanish luxury clothing and accessories brand.  The earliest of the Complainant’s relevant trade mark registrations dates back to July 1992, although the Complainant explains that the LOEWE mark has been used in the European Union since at least 1910 and in the UK since at least 1969.  The LOEWE brand was originally founded in 1846 in Madrid by a group of Spanish leather craftsman and the brand originated in its current form in 1872 when Enrique Loewe Roessberg, a German craftsman, joined the group. In 1905, the LOEWE brand became the official supplier to the Royal family of Spain and by 1910 the LOEWE brand had secured a reputation as the most luxurious and renowned boutique in Madrid. International expansion eventually followed with the opening of a new boutique in London in the late 1960’s. In 1985, Loewe entered into an agreement with the Complainant regarding international distribution of its products and by 1993 there were over 51 Loewe shops present in Europe, Japan, South East Asia and the Pacific Region. In 1996, during the 150 year anniversary of the creation of the LOEWE brand, the Complainant purchased the brand. Loewe boutiques can now be found throughout the world including London, Bangkok, Barcelona, Beijing, Bogota, Hong Kong, Honolulu, Jakarta, Kuala Lumpur, Madrid, Mexico City, Osaka, Paris, Seoul and Sydney. 

Since purchasing the LOEWE brand in 1996, Complainant submits that it has spent considerable time and money in promotion of the brand, and as a result, enjoys considerable goodwill and reputation in its LOEWE trade marks in the UK and European Union.  Reference has been made above to the various domain names used by Complainant to promote its goods on-line.  Complainant has submitted documentary evidence to show the range of LOEWE products that are currently available in the UK. These products are available from outlets such as Harrods stores in both central London and at Heathrow International Airport and Selfridges. Complainant has also submitted evidence to show that substantial sums have been spent on promotion of the LOEWE brand in the UK, across a broad range of print media, such as Vogue Magazine, Harpers Bazaar, Tatler, FT HTSI, Asharq Al Awsat, In London, SP Magazine, DP Magazine, Harpers & Queen, Vanity Fair, Conde Nast Traveller, Red, Elle, I-D, Hello and Dazed & Confused. Complainant highlights that the earliest of these advertisements dates back to October 1981, which refers to the opening of a new store in Brompton Road, London. Media plans for the years 2000, 2001, 2004 and 2005 have been submitted, while those for years 2002, 2003, 2006 and 2007 were not readily available. Over the years, the LOEWE brand has been the subject of articles featured in magazines of the type referred to above. The Complainant submitted examples of such articles covering the years 1981-1998. Complainant contends that it enjoys substantial sales of its LOEWE branded goods, with evidence of sales for the years 2000-2004 in the UK.  In 2004, sales of LOEWE branded products in the UK amounted to more than £2,495,149.

Abusive Registration: 

The Complainant states that there is no prior relationship with the Respondent.  The Respondent owns no trade mark registration for LOEWE, nor does he have a legitimate interest in the Domain Name by virtue of it being his name.

The Complainant’s emphasizes that in the correspondence between the parties referred to above, the Respondent in a letter of 5 November 2007 denied that he had registered domain names corresponding to other well-known trade marks: the Complainant’s suggestion that the Respondent “has many other domain names that correspond to well known trademarks is unsupported by any evidence and is denied.”   However, the Complainant, using the professional Marquesa search and database company, submitted evidence of various domain names that appear to correspond to, or be misspellings of, registered trade mark rights that were owned, at least at one point in time, by the Respondent: johnlennon.co.uk; daewoocars.co.uk; vauxall.co.uk; selfridges.co.uk; dkny.co.uk; seimens.co.uk; donnakaren.co.uk; ferari.co.uk; kwicksave.co.uk; budwiser.co.uk; age-concern.co.uk; sugababes.co.uk; bloomsburybooks.co.uk; annesummer.co.uk; disneyhotels.co.uk; tomsonholidays.co.uk; xepedia.co.uk; zanusi.co.uk; duracel.co.uk; wwwweightwatchers.co.uk, and various other misspellings of “nivia” (for NIVEA), “seimens” (for SIEMENS) and “budweizer” (for BUDWEISER). 

The Complainant has also submitted evidence to show that the content of the website corresponding to the Domain Name keeps changing.  A search on 17 October 2007 diverted the user to www.a.applyonlinenow.com, which was advertising a MBNA American Express credit card, and the search on 29 November 2007 took the user to The Carphone Warehouse website. The Complainant submits that if the Respondent had a genuine interest and right to the Domain Name, the website would remain the same and resolve to a genuine business interest. 

In sum, the Complainant argues that the Domain Name in the hands of the Respondent is an abusive registration for the following reasons: (i) Complainant has used the LOEWE trade mark extensively in the UK for over 35 years and worldwide for more than 160 years, has obtained pertinent trade mark registrations, and has made substantial sales of its products in the United Kingdom; (ii) considering the extent of these sales and advertisements of LOEWE branded products, Complainant believes that Respondent must have been aware that the LOEWE brand denotes the Complainant’s products and trade marks; (iii) Complainant therefore believes that the Domain Name was registered by the Respondent to gain a financial advantage from the Complainant; (iv) this is further evidenced by the facts that the Respondent has engaged in a pattern of registering domain names which correspond to third-party trade marks (or their close misspellings) and that the content of the website connected to the Domain Name keeps changing; and (v) Respondent is using the fame of the Complainant’s LOEWE trade mark to divert customers looking for the Complainant’s products to third party websites in order to earn click-through revenues. 

Respondent’s Response

The Respondent has submitted vigorous arguments to deny Complainant’s contentions.  

Respondent admits that the Complainant has Rights which satisfy the requirements of the DRS Policy. However, Respondent claims that he “had never heard of” the LOEWE brand until he received the first letter of complaint sent by the Complainant’s representatives.  Respondent contends that the LOEWE mark does not satisfy the definition of a well-known trade mark, and he denies that LOEWE is a brand that the general public must be assumed to have heard of.  In this respect, the Respondent contends that Complainant relies squarely on its alleged fame, but that the scale of the Complainant’s business does not merit an inference of knowledge on the Respondent’s part.  Respondent argues that the instant case is akin to the situation in the DRS appellate decision, Mercer Human Resource Consulting Inc. and IMO International Ltd (DRS 03733), which was drawn to the Complainant’s attention.  At paragraph 8.18 that decision states “In order to dismiss the Respondent's clear denial of any prior knowledge of the Complainant, there has to be something concrete to justify such a course.” Similarly, Respondent points out that the DRS appellate decision, Verbatim Ltd -v- Michael Toth (DRS 04331), deals with a similar case where the Complainant’s alleged fame was insufficient to contradict the Respondent’s unequivocal denial of knowledge of the Complainant at the relevant time.

Respondent argues that Rights under the DRS do not equate to a monopoly use of the word Loewe, which is both a common German surname and the German word for “lion.”  The UK registered trade mark for Complainant’s mark contains the statement that: “The mark consists of a German word meaning ‘Lion’”.  Respondent has submitted evidence to show that the word “Loewe” has been used in a number of trademarks that are not associated with the Complainant, for example, the television manufacturer Loewe AG.  Respondent has also submitted printouts from Wikipedia and other sources to show that the word Loewe stands for lion, is a common surname, or can refer to several companies or well-known persons.  Respondent has submitted results of Google searches for the word Loewe, both in the UK and globally, to show that the Complainant does not feature in the top 10 results and that the word produced approximately 239,000 (UK) and 1,340,000 (global) respective search results.  Respondent argues that these results show how widely the word Loewe is used and that the Complainant is nowhere near the most commonly sought entity when this word is searched.

Respondent states that he registered the Domain Name because it is a surname and he has submitted evidence to show he has registered over 100 other surnames. He claims that a number of these were registered around the same time as the Domain Name and he intends to develop his portfolio of surname domains using their relationship with ancestry and to have personalised email addresses.  Respondent has submitted evidence to show that he joined the ancestry.co.uk affiliate program, allegedly as part of his planning for these domains.  He indicates that the plans remain essentially undeveloped due to the need to prioritise project time. He also contends that surname domains are in limited supply and have an inherent value, pointing out that he accepted an offer to sell another surname, freud.co.uk. In this respect, Respondent contends that domain name trading is not abusive and is a legitimate business.

The Respondent denies abusive intent and states he is a respected member of the UK internet community, who has never had an adverse DRS or trademark infringement decision against him.  Citing Verbatim, he contends that in order for a domain registration to be abusive, it must be proven that he was aware of the existence of the Complainant or its brand at the date of registration of the Domain Name or at commencement of an objectionable use of the Domain Name.  The Respondent re-emphasises that he was not aware of the existence of the Complainant either when he registered the Domain Name or when he started to place advertisements on the website associated with the Domain Name. In particular, Respondent claims he has no interest in “Spanish luxury clothing and accessories” and does not read the magazines annexed to the Complaint.  He also states that he has not changed the use since he was notified of the Complainant’s existence in September 2007.  He contends he made his position clear in correspondence with the Complainant at the earliest opportunity, yet the Complainant chose to issue the DRS Complaint which is lacking in merit and an abuse of the DRS process.

Respondent denies that the Domain Name is part of a pattern of registering domain names corresponding to well-known trademarks, claiming instead that the Domain Name forms part of a pattern of registering surname domains.  In responses to the Complainant’s allegations, he also denies “that the following domains were registered to me at the time they were first raised in the Complaint,” and attaches WHOIS records to show to whom (if anyone) they are registered: daewoocars.co.uk; vauxall.co.uk; selfridges.co.uk; dkny.co.uk; seimens.co.uk; donnakaren.co.uk; ferari.co.uk; kwicksave.co.uk; budwiser.co.uk; sugababes.co.uk; annesummer.co.uk; tomsonholidays.co.uk; xepedia.co.uk; zanusi.co.uk; duracel.co.uk; wwwweightwatchers.co.uk.  He states that he has no association with any of the registrants of these domain names. At the same time, Respondent admits he is the registrant of johnlennon.co.uk (which redirects without payment to the Beatles official site) and disneyhotels.co.uk (which does not resolve to a site), but denies that either of these is abusive.  Respondent states that he has a portfolio of over 1,000 domain names and the number of domains listed by the Complainant would make up only a small proportion of that portfolio.  He buys and sells domain names on a daily basis and from time to time disposes of any that may be arguably abusive or that may infringe trademarks known to him. Conversely, he never felt there was an issue with respect to the Domain Name and never considered deleting it. 

Respondent argues that this case falls squarely into the Mercer and Verbatim  analyses.  He also refers to the four point test in Chivas Brothers LTD v David William Plenderleith (DRS 00292), arguing that he passes three of the four heads easily – namely ,that the name is not exclusively referable to the Complainant; there is an obvious justification for registering the name; and he has come forward with an explanation for registering it. In terms of use of the Domain Name, Respondent argues that Complainant acknowledges there is no similarity between the things advertised on the associated website and the Complainant’s products. Thus, there is no likelihood of confusion. Respondent also denies as unsubstantiated the allegations that Complainant’s customers are being intentionally diverted. With respect to the Complainant’s point that advertisements on the associated website change from time to time, Respondent indicates that this happens automatically. Having advertisements that are not themselves abusive is a genuine offering of goods or services.  Respondent also asserts that the domain is generic and he is making fair use of it. 

Finally, the Respondent charges that this is a case of reverse domain name hijacking: the Complainant is using the DRS in bad faith in an attempt to deprive him of the Domain Name. While Complainant has Rights in the LOEWE name, they are not a bar to finding reverse domain hijacking.  Respondent contends that frustration at an inability to negotiate or bully the transfer of a domain name is a factor to be considered here.  The Respondent has made no attempt to offer the Domain Name for sale to the Complainant and thus the Complainant has revealed its frustration through a “disingenuous Complaint” that claims the Respondent registered a highly selective list of names.  The Complainant has ignored the genuine pattern of the Respondent’s large generic domain name portfolio, including the list of surnames that had already been identified to it.

Complainant’s Reply

The Complainant submitted a Reply which made the following points:

1.	The Complainant is not acting in bad faith by seeking to prevent use of the Domain Name which incorporates the Complainant’s registered trade mark in its entirety.  By contrast, the Respondent has not provided any evidence of its entitlement to use the word LOEWE, nor has he evidenced any legitimate business interest in it.  

2.	In response to Respondent’s contention that the LOEWE trade mark is not well-known, the Complainant refers to the evidence already submitted in the Complaint with regard to other domain name registrations encompassing LOEWE owned by the Complainant, as well as to the details of the boutiques for LOEWE present in the United Kingdom and European Union, and the long standing use of the LOEWE mark in Europe and the UK by way of company history, advertising and sales figures. This evidence shows that the Complainant has a reputation in the LOEWE mark in relation to clothing and accessories and that the mark is well-known.  

3.	The Domain Name carries a co.uk extension and, as such, it is the perception of UK consumers that should be taken into account. The Respondent claims that trade mark registrations for LOEWE in the UK are not sufficient to establish that Complainant has a monopoly right to use the word LOEWE, which is a common German surname and the German word for lion.  Complainant contends, however, that German is not widely spoken in the UK and UK consumers would be unlikely to recognise LOEWE as meaning “lion”. Further, even if LOEWE is a well-known German surname, it would not be considered as such in the UK.  Instead, by virtue of the Complainant’s mark LOEWE being well-known in the UK, the Domain Name is likely to be associated with the Complainant by UK-based consumers.  Complainant acknowledges it does not have a monopoly right in LOEWE for all goods and services, but that it does have a monopoly right for use of the mark in connection with clothing and accessories.  These goods are frequently purchased via the Internet. Consumers of the Complainant will be confused by a website that does not belong to or is not associated with the Complainant.  The Complainant’s trade mark rights can be used to prevent the use of the Domain Name which incorporates the LOEWE mark, regardless of whether the mark also happens to be a surname, have a dictionary meaning, or correspond to the names of several famous people. In addition, the fact that there are other LOEWE trade marks present on the UK Trade Marks Register in relation other goods or services is irrelevant.

4.	The Respondent referred to Google searches, claiming that the fact the Complainant is not listed in the top ten results for LOEWE shows that ”it is nowhere near the most commonly sought entity when the word is searched for in the UK".  The Complainant contends this is untrue. The Complainant conducted a search for LOEWE on Google on 14 February 2008 and observed that the first references to LOEWE products appeared at numbers 11 and 20. Contrary to Respondent’s position, to appear in the top twenty of a search that revealed over 1,390,000 hits indicates that LOEWE products are frequently searched for. Furthermore, as evidenced by the Respondent’s searches, the bottom of the first page of the Google searches provides links relating to other searches for LOEWE - the first four of which all relate to LOEWE products owned by the Complainant.

5.	In response to the Respondent’s denial that he registers well-known trade marks as domain names, Complainant states that the evidence in the Complaint was provided from the Marquesa search company database.  It shows that – at least at one time – the Respondent was the proprietor of the domain names listed in the Complaint which correspond to (or mis-spell) some well-known marks.  Complainant submitted with the Reply additional information from the Marquesa database of other domain names registered (at least at one time) to the Respondent, which appear to correspond closely to known third-party marks including: debhanams.co.uk, debenhem.co.uk, the-body-shop.co.uk, mazdacars.co.uk, Merrill-lynch.co.uk, penthousemag.co.uk, kimberlyclarke.co.uk, pringels.co.uk, wwwwhsmiths.co.uk. Complainant contends that these are all variations of trade marks that are well-known in the UK and appear to infringe third-party trade marks. In addition, Complainant focuses on the careful language used by the Respondent in his Response (quoted above): Respondent does not state that he has never owned these domain names.

6.	The Respondent’s use of the Domain Name is diverting traffic away from the Complainant’s business and the Respondent is taking advantage of and trading on the Complainant’s reputation in LOEWE for his own gain.  The activities of the Respondent in relation to the Domain Name appear to be “pay-per-click,” which means that the Respondent is receiving revenue each time somebody clicks onto another site from the Domain Name’s webpage. Consumers who are searching for products of the Complainant will visit the Domain Name site, and each time they click onto another site from there, the Respondent receives a financial benefit.  As to Respondent claim that using a domain name to advertise products is not illegal, Complainant urges that Respondent is not using the Domain Name to advertise genuine LOEWE products. The registration of the Domain Name diverts consumers expecting to arrive at a website selling LOEWE branded products to other sites that are unconnected with Complainant.

7.	Regarding Respondent’s claims that he intends to use the Domain Name in connection with an ancestry website, Complainant argues that if this is indeed the case, then why has the Domain Name been used to advertise products wholly unconnected with ancestry? If Respondent wants to build up a legitimate business using the Domain Name, it would appear counter-productive to use the site in relation to other unrelated matters.  Complainant contends that Respondent does not, in fact, intend to use the Domain Name in connection with an ancestry website, but merely wishes to trade off the Complainant’s reputation and gain financial revenue from “pay-per-click” activities. Complainant has submitted information from the www.archive.org site to show that the Domain Name has been used as a pay-per-click website from June 2004 to date, casting further doubt on the Respondent’s claimed ancestry website plans.

8.	With respect to Respondent’s claim that in order for the registration of the domain name to be abusive, he must have been aware of the Complainant’s existence, the Complainant focuses on the wording of the DRS Policy stating that a registration may not be abusive if the Respondent has used or made demonstrable preparations to use the domain name with a genuine offering of goods or services, if the Respondent is known by the name or is legitimately connected with a mark which is identical or similar to the domain name, if the Respondent has made legitimate non-commercial or fair use of the mark, or if the domain name is generic or descriptive and the Respondent is making fair use of it. In response, there is no evidence of genuine offering of goods or services by the Respondent, only pay-per-click links to third-party sites from 2004 to date.  There is no evidence that LOEWE is the Respondent’s surname or that he has any connection with (German) lions. The relevant use is clearly commercial in view of the pay-per-click revenue.  With reference to a .co.uk domain name, there is no evidence that LOEWE is either generic or descriptive. Moreover, in view of the reputation of the LOEWE brand in the UK, it is submitted that the Respondent must have been aware of the Complainant’s activities.

6.	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 submitted ample documentary evidence to establish that it has Rights in its LOEWE name and mark, which the Respondent acknowledges meet the DRS Policy’s threshold. At the same time, however, the Respondent has sought to argue through reference to Google searches and on-line resources such as Wikipedia that the Complainant’s LOEWE mark is not well-known and merely corresponds to a common German surname or German word meaning lion.

The Expert is not persuaded by the Respondent’s arguments.  Complainant has submitted extensive evidence of its long-established off-line and on-line promotional efforts, advertising, and sales directed at the United Kingdom in particular, to demonstrate that its LOEWE mark has been widely used in commerce, acquired a substantial reputation, and is well-known in the field of luxury clothing and accessories.  

The Domain Name contains the Complainant’s mark in its entirety.  The Domain Name is therefore identical to a 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 above, the Complainant must prove this element on the balance of probabilities.

A key issue in this case is centered on the Complainant’s allegation that the Respondent must have been aware of the Complainant’s well-known LOEWE brand at the relevant time, either when the Domain Name was first registered or first put into use.  As the Complainant submits, “we believe that the Respondent must have been aware that the name LOEWE denotes the Complainant’s products and trade marks.”  As a consequence of this claim, Complainant contends that Respondent is “using the fame of the Complainant’s LOEWE trade mark to divert customers looking for the Complainant’s products to third party websites in order to earn click-through revenues.”  In this respect, however, the Expert observes that the Complainant has not alleged that the Domain Name has been used in connection with a website that promotes goods that are similar or related to the Complainant’s well-known LOEWE-branded goods. 

With respect to the Respondent’s state of knowledge, the Respondent has repeatedly denied that he was aware of the Complainant, instead alleging that he selected the Domain Name as part of his portfolio of surname domains.  The Respondent claims that he first became aware of the Complainant when he received a letter from the Complainant’s representatives.  There is no indication from either the Complainant or Respondent that the Respondent has had any prior contact with the Complainant or its business.  As the appellate panel in Mercer stated, “[i]n order to dismiss the Respondent’s clear denial of any prior knowledge of the Complainant, there has to be something concrete to justify such a course.”  

In this case, there is evidence that raises several concerns for the Expert.  The Expert is troubled by evidence indicating that the Respondent has registered numerous other domain names that are identical or closely similar to well-known brands and trade marks that are exclusively referable to such brands or marks.  The Complainant included a list of such domain names in the evidence accompanying its Complainant.  The Respondent, in its correspondence with the Complainant, initially denied registering domain names that corresponded to well-known trade marks.  Then later in his Response, he put in a highly technical statement that he was not the registrant of these particular domain names “at the time they were first raised in the Complaint.”  But this statement does not explain his false denial in his earlier letter or his targeting behavior toward such well-known marks, at least when he had first registered and held them as domain names at some earlier point.  The Complainant’s Reply submitted an additional list of well-known marks that appear to have been registered as domain names, at least at one point in time, by the Respondent.  The Expert has not received an adequate explanation for why the Respondent would target these trade marks of third-parties, particularly in light of the agreement that he makes, each time he registers a domain name, to abide by Nominet’s terms and conditions, which include the promise that “by registering or using the domain name in any way, you will not infringe the intellectual property rights (for example, trademarks) of anyone else.”  

Under paragraph 12(b) of the DRS Procedure, the Expert “shall determine the admissibility, relevance, materiality and weight of the evidence.”  The Respondent’s behavior in targeting well-known marks could suggest that this particular Respondent is not simply an unsophisticated member of the general public, who might not be aware of the Complainant’s LOEWE luxury clothing and accessories, but instead is a more sophisticated domain name trader who would actively seek out domain names corresponding to popular brands and trade marks across a number of different commercial sectors.  Indeed, the current or past domain name registrations by the Respondent – including johnlennon.co.uk, disneyhotels.co.uk, debhanams.co.uk, debenhem.co.uk, the-body-shop.co.uk, mazdacars.co.uk, merrill-lynch.co.uk, penthousemag.co.uk, kimberlyclarke.co.uk, pringels.co.uk and wwwwhsmiths.co.uk – indicate that he does pay attention to and target well-known third-party trade marks in different commercial sectors.

The difficult issue in this case, however, remains that the word “Loewe” – instead of being a trade mark exclusively referable to the Complainant – refers both to a surname and to the Complainant’s well-known LOEWE mark.  The Respondent has provided evidence that he has registered at least 100 other domain names corresponding to surnames.  This evidence must be accorded some weight.  At the same time, however, the Respondent has undercut his own credibility by stating that he plans “to develop my portfolio of surname domains using their relationship with ancestry and also to have personalised email addresses.”  He states that he has “joined the ancestry.co.uk affiliate program,” but that his plans in this regard remain undeveloped.  His own evidence, however, shows that he joined this program on or about 3 November 2007, only after receiving several letters from the Complainant’s representatives in September and October 2007.  The Respondent past use of the Domain Name (never in connection with ancestry-related subject matter), when coupled with this evidence, suggests that joining the ancestry.co.uk program was merely an expedient manoeuvre.  

With respect to the Respondent’s argument that Loewe means “lion” in the German language, the Expert agrees with the Complainant that this is not the meaning that most consumers in the United Kingdom would accord to the word.  Moreover, the Respondent has not suggested that he was aware of this meaning at the time when he registered the Domain Name or that has he used the Domain Name in connection with any subject matter related to lions. The Respondent has been making commercial use, not fair use, of the Domain Name.

The Expert finds that the evidence on several important points relevant to the issue of the Respondent’s knowledge seriously undermines the Respondent’s credibility.  The Respondent has shown himself to be a sophisticated domain name trader who is much more aware of third-party trade marks in different commercial sectors than would be a member of the general public in the United Kingdom.  He has targeted other third-party trade marks in the past, without providing sufficient explanation.  His evidence of reasons for registering the Domain Name – to be used in connection with some sort of ancestry-related website – are contradicted by his past use of the Domain Name and more recent expedient manoeuvres.  On the other hand, he has registered over 1000 domain names and 100 other common surnames, and “Loewe” is indeed a surname.  The Expert thus finds this to be a very difficult case in which determine whether or not the Respondent was aware of the Complainant’s well-known LOEWE mark at the time he registered the identical Domain Name in 2004.

Without making a final decision on this issue, the Expert observes that this is not the only area of necessary inquiry.  The July 2007 appellate panel decision in Verbatim states that 

“while some knowledge of the Complainant or its name/brand is a pre-requisite for a successful complaint under the DRS Policy (save for a complaint under paragraph 3(a)(iv)), knowledge is not of itself conclusive in favour of the Complainant. The Expert/Appeal Panel will still need to be satisfied that the registration/use takes unfair advantage of or is causing unfair detriment to the Complainant’s Rights.” 
 
In the instant case, as noted above, the Complainant has not alleged that the Domain Name has been used in connection with a website promoting goods, or providing links to websites promoting goods, that are similar or related to the Complainant’s well-known LOEWE branded goods.  Nor has the Complainant (i) offered any evidence of confusion by consumers, or (ii) alleged that the Respondent registered the Domain Name for purposes of selling, renting or otherwise transferring the Domain Name to the Complainant in excess of Respondent’s out-of-pocket costs.  In addition, as stated above, linking a domain name to a pay-per-click website with changing content that has no links related to the Complainant’s business is not, in and of itself, evidence of abusive registration.  Thus, while the Expert accepts that it is possible that some Internet users may visit the site in question expecting to reach the Complainant, the Expert is not satisfied that the current use of the Domain Name can be said to be unfairly detrimental to the Complainant’s Rights.  If in the future the Respondent does change the Domain Name’s website to include content related to the Complainant or its goods, the Expert would suggest a very different outcome.

Although this is a very close case, when considered in view of all the circumstances discussed above, the Expert finds that the Domain Name is not an Abusive Registration.  

At the same time, given the false denial by the Respondent’s in its early correspondence with the Complainant concerning registration of domain names corresponding to other third-party trade marks, the Complainant was certainly justified in bringing its Complaint.  This is not a case of reverse domain name hijacking.

7.	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, but that the Domain Name, in the hands of the Respondent, is not an Abusive Registration.  The Expert therefore directs that no action should be taken in relation to the Domain Name <loewe.co.uk>. 

Christopher Gibson
15 May 2008