NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 05478
DECISION OF INDEPENDENT EXPERT
Flashlube Pty Ltd v 4-Tech
1. Parties
Complainant's Details
Complainant Type: Business
Country: AU
Respondent's Details
Respondent: 4 Tech
Country: GB
Email: [email protected]
2. Disputed Domain Name
flashlube.co.uk ('the Domain Name')
3. Procedural Background
3.1 On 20th February 2008 the Complaint was lodged with Nominet in accordance with the Nominet UK Dispute Resolution Service ('the Policy'). Hardcopies of the Complaint were received in full on the 25th February 2008.
3.2 The Respondent was advised of the Complaint by letter from Nominet dated 25th February 2008. As of 19th March 2008 no Response having been received, Nominet wrote to the Respondent advising the Respondent of the procedure for mediation and including notes which advised the Respondent of the opportunity to make a non standard submission.
3.3 On the same day, 19th March 2008, Nominet advised the Complainant of the lack of response from the Respondent and also of the right to have the matter referred to mediation.
3.4 On 28th March 2008 the expert fee was received by Nominet from the Complainant. On 31st March 2008 further to a conflict check, Margaret Briffa was selected as expert and the file duly forwarded.
4. Outstanding Formal Procedure
None
5. Facts
5.1 The Complainant was incorporated in 1983 under the name Adelaide Truck Spares Pty Ltd (Australian Company Number 006 049 259). It changed its name to Flashlube Pty Ltd. in August 2006. Flashlube products have been sold since 1995. Currently Flashlube's products bearing the FLASHLUBE trade mark are sold in Australia, North America, South America, South East Asia, India and Europe, including in the UK.
5.2 The Complainant is a member of the Don Kyatt Group, a business, which was founded in 1969 by Don Kyatt and Frank Hutchinson. The company Don Kyatt Spare Parts Pty Ltd is also a member of the Don Kyatt Group. The Don Kyatt Group operates a website at www.donkyatt.com.au.
5.3 In Europe, Flashlube's products are distributed by GMS Europe B.V. ("GMS"). GMS operates a website at www.flashlube-europe.com. GMS distributes the FLASHLUBE goods to retailers in the UK. The goods bearing the FLASHLUBE trade mark were first available in the UK in 1999, and have been continuously sold in the UK to date.
5.4 Flashlube and its related entities are the owners of the following trade mark registrations for the mark FLASHLUBE:
i. Australian Trade Mark No. 545703 for the mark FLASHLUBE in class 4 registered in the name of Flashlube Pty Ltd;
ii. US Trade Mark No. 2240094 for the mark FLASHLUBE in class 4 registered in the name of Don Kyatt Spare Parts;
iii. CTM No. 004821153 for the mark FLASHLUBE in class 4 registered in the name of Adelaide Truck Spares Pty Ltd;
iv. Italian Trade Mark No. 0000762055 for the mark FLASHLUBE in class 4 registered in the name of Don Kyatt Spare Parts;
v. Hong Kong Trade Mark No. 300577639 for the mark FLASHLUBE in class 4 registered in the name of Adelaide Truck Spares Pty Ltd; and
vi. Taiwanese Trade Mark No. 1233874 for the mark FLASHLUBE in class 4 registered in the name of Adelaide Truck Spares Pty Ltd.
5.5 Flashlube recently became aware of a UK domain name which wholly includes its FLASHLUBE trade mark, namely the Domain Name held in the name of the Respondent.
The Respondent is a business offering services relating to LPG conversion of vehicles. As of 26 November 2007 the Respondent also offered for sale Flashlube's products through that website.
5.6 On 18 January 2008, the Complainant's UK attorneys, Potter Clarkson, sent a cease and desist letter to the Respondent demanding that the Respondent transfer the Domain Name to the Complainant ('the Potter Clarkson Letter').
5.7 The Respondent responded to the Potter Clarkson Letter by way of a letter dated 29th January 2008. The Respondent countered the Potter Clarkson Letter on a number of points. In essence the Respondent's claimed (i) that it has never offered services through the website at www.flashlube.co.uk (ii) that no deception is intended or countenanced (iii) that the Respondent cannot be held responsible for registering the Domain Name simply because the Complainant failed to register the Domain Name itself, and (iv) that should the Complainant wish to secure a transfer of the Domain Name to themselves they must be prepared to pay the Respondent a proper market value for it.
5.8 The Complainant did not respond to the letter from the Respondent of the 29th January 2008. Some time after having received the aforementioned Potter Clarkson Letter and before the 8th February 2008, the Respondent altered the website at the Domain Name. Rather than merely pointing the Domain Name to the Respondent's site, the Domain Name now included a notice inviting customers to visit the Respondent's site where it could purchase Flashlube products as well as a rival less expensive product of the Complainant The Respondent does not source any of the FLASHLUBE products from Flashlube or GMS.
6. The Parties Contentions
The Complainant's Submissions
Rights
6.1 The Complainant submits that the disputed Domain Name is identical to the FLASHLUBE trade mark in which Flashlube has rights pursuant to paragraph 2(a)(i) of the DRS Policy. It is submitted that the addition of the designator .co.uk has no material role in assessing the similarity of a domain name with a trade mark.
Abusive Registration
6.2 The Complainant submits the following arguments in support of its Complaint that the Domain Name is an Abusive Registration.
6.3 That as the Respondent expressed a willingness to transfer the Domain Name in return for payment of "proper market value" it must be inferred from that statement that the Respondent registered the Domain Name primarily for the purposes of selling the Domain Name back to the Complainant. The Complainant further submits that the word "primarily" in paragraph 3(a)(i) of the DRS Policy does not mean "only" and makes reference to the Nominet Appeal Panel's statement in its decision in Seiko UK Limited v Designer Time/ Wanderweb (DRS 00248) of 12th July 2002, page 23 in which the panel stated that the word 'primarily' is not the same as 'only' and although a domain name registrant may start out with the best of intentions, if the effect of his actions is to give rise to confusion and to disrupt a Complainant's business then he has fallen foul of this paragraph of the Policy.
6.4 The Complainant submits that it is not necessary to show that the Respondent set out to register the Domain Name with the intention of selling it back to the Complainant. Rather, it is submitted that evidence showing that the Respondent engaged or is engaging in conduct that is aimed at profiting from its actions in securing registration of the Complainant's trade mark in a domain name is sufficient to find that registration of the Domain Name is abusive.
6.5 Further the Complainant submits that the conduct of registering a domain name which is identical to a trade mark in which Flashlube has rights suggests that the Domain Name was registered to prevent Flashlube from registering its FLASHLUBE trade mark as a domain name in the UK and is an abusive registration on that basis.
6.6 The Complainant submits that the Respondent's conduct of setting up the Domain Name inviting consumers to visit its website at www.4-techdirect.com and purchase a rival product is evidence of its intention to disrupt the Complainant's business.
6.7 Finally the Complainant submits that even though it has adduced no actual evidence of confusion it is reasonable to conclude that consumers would have expected a trader offering FLASHLUBE products with reference to the Domain Name to be in some way associated with Flashlube. However, 4-Tech is not and has never been associated with Flashlube.
The Respondent's Contentions
6.8 The Respondent submitted no formal response under the DRS. It's position must be considered based on the letter of the 29th January 2008 and the material at the Domain Name and the Respondent's own website www.4-techdirect.com as submitted by the Complainant in this case.
7. Discussion and Findings
7.1 According to 2(a) of the Dispute Resolution Services Policy ('the Policy'), in order to succeed in a Complaint, the Complainant has to prove that on the balance of probabilities: -
i. the Complainant has Rights in respect of the name or the mark which is identical or similar to the disputed domain name; and
ii. the disputed domain name, in the hands of the Respondent is an Abusive
Registration.
Does the Claimant have Rights?
7.2 The Complainant company was incorporated as Adelaide Truck Spares Pty Ltd (Australian Company Number 006 049 259) on 6th May 1983. The evidence submitted by the Complainant shows that the Australian Securities & Investments Commission recorded a change of name to Flashlube Pty Limited on the 29th of August 2006.
7.3 The Complainant manufactures and distributes lead replacement solutions and similar products, such as diesel fuel conditioner, heavy duty oil stabilizer and injector cleaners with reference to the trade mark FLASHLUBE and has done since 1995. Flashlube operates a website at www.flashlube.com which was registered on 8th December 1999.
7.4 Accordingly the evidence provided by the Complainant by way of print out from the Complainants web site at www.flashlube.com and www.flashlube-europe.com, Flashlube products are sold by the Complainant or authorised distributors of the Complainant in many countries].
7.5 Flashlube and or Flashlube's associated entities has obtained a number of registered trade marks in the word Flashlube. These registrations include in Australia filed on 14 November 1990, a registration in the US filed on 29th August 1996, a registration in the European Community ('CTM') filed on 20th December 2005.
7.6 Under the Policy Rights the test as to when a Complainant has Rights is a deliberately low hurdle. Rights include, but is not limited to, rights enforceable under English law. On the balance of probabilities and based on all the evidence submitted by the Complainant I have no doubt that the Complainant does have Rights.
7.7 The Domain Name is identical to the Complainant's trade marks, bearing in mind that domain names are usually rendered in lower case letters and disregarding the generic.co.uk. I do not consider the word Flashlube to be descriptive.
7.8 I turn therefore to examine the allegations of an Abusive Registration by the Respondent.
Abusive Registration
7.9 Paragraph 1 of the Policy states that an '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 unfair or detrimental to the Complainant's Rights.
7.10 The Domain Name was registered on 22nd November 2005. It is for the Complainant to
explain why the Domain Name is an Abusive Registration and paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence of this.
7.11 The Respondent has filed no response to the Complaint. The Respondent's intention therefore must be assessed by reference to the evidence filed by the Complainant and comprises i) the correspondence between the Respondent and Potter Clarkson and ii) information about the Respondent's activity after it had been approached by Potter Clarkson.
7.12 The Respondent was first advised about the Complainant's Company on 18th January 2008 by way of letter from Potter Clarkson acting on behalf of the Complainant a copy of which is included in the evidence. The Respondent's response from GC Alderson for 4-Tech is submitted in evidence. In this response the Respondent claims:
1) that it had no intention of, and would not, take advantage of the Complainant's Domain Name to deceive anyone and that it had no intention to do so;
2) that the Domain Name was merely being used to promote the Respondent's online presence;
3) that the Respondent sells a fair quantity of the Complainant's product;
4) that in view of the delay between the time of registration of the Domain Name and the approach from the Company the implication is that the Complainant was aware of the Domain Name and was waiting until the Respondent built business under the Domain Name before making an approach; and
5) that the Respondent would consider transferring the Domain Name for 'proper market value' and the Respondent awaited the Complainant's offer.
7.13 The Nominet system works on a first come first served basis and it is accepted that the mere registration of a domain name which is the same or similar to a registered trade mark is not of itself evidence that 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.
7.14 There are no circumstances that suggest that the Respondent registered or otherwise acquired the Domain Name primarily for the purpose of selling renting or otherwise transferring the same to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's out of pocket costs directly associated with acquiring or using the Domain Name. The fact that the Respondent sought a higher sum than the sum of those out of pocket costs when it received the Complaint does not of itself make the registration Abusive. Even accepting the argument made by the Complainant that 'primarily' should not be taken in this context to mean 'only' there is insufficient evidence to find that the registration was abusive in the circumstances suggested by 3 i. A of the Policy.
7.15 The question therefore is whether the Respondent's use of the Domain Name since registration has been unfair or detrimental to the Complainant's Rights.
7.16 In this regard paragraph 3(a) C (ii) of the Policy refers to circumstances in which the use of the Domain Name has confused people or businesses into believing that the Domain Name is registered to or operated by, or otherwise connected with the Complainant.
7.17 The Complainant has adduced no evidence of confusion. Without any actual evidence whether a visitor to the Respondent's site is likely to have been confused into believing there is an connection between the Respondent and the Complainant, this can only be judged according to what a reasonable purchaser may believe when searching for the Complainant's products in the UK.
7.18 The Complainant submits that the evidence is sufficient to show that such confusion is likely to have ensued. In particular the Complainant claims that consumers in the UK wanting to purchase FLASHLUBE products would expect to find such goods at www.flashlube.co.uk. The fact that the Domain Name pointed to the Respondent site www.4-techdirect.com would have led consumers to believe that a trade offering FLASHLUBE products with reference to the disputed Domain Name to be in some way associated with the Complainant.
7.19 I cannot rule out that it is possible that a potential purchaser on searching for Flashlube products would visit the Respondent site and believe there was some connection between the Complainant's and the Respondent's business, I do not find in the absence of any actual evidence that this has occurred, or indeed that this is a likely scenario on the basis of the following. The Domain Name appears to have been in use in this manner for over two years before the approach to the Respondent was made by Potter Clarkson. Further the text on the welcome page of the www.4-techdirect.com website as of 26th November 2007 i.e. at a date prior to receipt of the Complaint, the site makes it plain what the business does and makes reference to the fact that the business is an approved LPGA installer. The page makes no claim to a connection with Flashlube even though it provides an extensive FAQ on the Flashlube product which is accessible from the welcome page. A more likely scenario is that a visitor to the 4 tech site understands that 4 tech is in the business of LPG conversion of vehicles and that complementary to this it also sells Flashlube products.
7.20 This however is not the end of the matter. There remains the broader question aside of any evidence of confusion as to whether the Domain Name has been used in a manner which took unfair advantage of or was unfair or detrimental to the Complainant's Rights.
7.21 It is accepted that even where internet users quickly appreciate that the site to which the Domain Name is linked is unconnected with the Complainant, a consumer nevertheless may well find themselves in receipt of information about a business which may compete with the Complainant. In this way the particular use being made of the Domain Name by the Respondent could operate to deprive the Complainant of future business. If this were the case the Respondent could be said to be taking advantage of the Complainant's brand recognition and goodwill. Under the Policy this amounts to taking unfair advantage of the Complainant's Rights.
7.22 There are on the facts of this case two distinct scenarios to consider, the position prior to the receipt of the Complaint and the situation after that time.
7.23 Before the receipt of the Complaint by the Respondent the Domain Name was merely pointing to the Respondent's site. As stated above, if even where the consumer appreciates that the Respondent is not connected with the Complainant the use made of the Domain Name can be abusive where the effect of the use is to deprive the Complainant of business. It is not clear that on the facts as they appear in the evidence that this is the case. Until receipt of the Complaint there is no evidence that the Respondent was selling products which rival the Flashlube product and that the Flashlube products referred to on the site is anything other than the Complainant's genuine product in respect of which the Complainant would have benefited at some stage even though the products are not purchased by the Respondent from the Complainant or the Complainant's authorised dealer in the UK.
7.24 The situation changes however after the Respondent receives notification of the Complaint. At some time on a date unknown but on after receiving the Complaint the Respondent made alterations to the text appearing at the Domain Name and to its own website at www.4techdirect.com.
7.25 The evidence submitted by the Complainant shows these alterations to be a notice which appears at the Domain Name and further text added as an introduction to the 4 tech website.
7.26 The text at the welcome page of the Domain Name reads:
'Welcome to our introduction page. We are 4 tech Autogas and we are not associated with Flashlube Pty Limited.
Apparently although we sell their products and thus increase their profitability Flashlube Pty Limited are a little jealous of us having registered the domain flashlube.co.uk.
Obviously even though we have that domain name we wouldn't want you to think you were entering their website now would we? Therefore please be aware that when you click on either the link below or the banner on this page you are being redirected to our secure webshop – 4Techdirect .com
You will find on sale there a host or products at severely discounted prices including Flashlube products as well as our own rival and vastly less expensive Valvelube products.
WE WILL LEAVE YOU TO DECIDE WHETHER TO PROCEED AND SAVE YOUR WALLET SOME PAIN OR NOT.'
7.27 On clicking through to the Respondent's www.4-techdirect.com site the consumer is able to search for Flashlube. The evidence submitted shows that a search for 'Flashlube' on the www.4-techdirect site generates 7 results. Of those the 1st, 2nd and 7th result are of Flashlube products and the 2nd, 3rd, 4th and 5th results for Valvelube products.
7.28 In this case therefore even though the consumer looking for a Flashlube product will quickly appreciate that the site to which the Domain Name is linked is unconnected with the Complainant, they nevertheless are invited to click through to the Respondent's site to find the product they are searching for. In doing so the consumer finds themselves on a site promoting the Respondent's rival product to the extent that even searching by name for 'Flashlube' generates search results heavily promoting the Respondent's rival product.
7.29 This is clearly a situation that benefits the Respondent who no doubt secures sales of its Valvelube product from consumers who set out to search for and purchase Flashlube products. The Respondent does not deny it is benefiting in this way. The Respondent is taking advantage of the Complainant's brand recognition and goodwill. Under the Policy this amounts to taking unfair advantage of the Complainant's Rights.
7.30 The only remaining issue is whether there is anything said by the Respondent in its letter of 29th January 208 that could be taken into account to find that, dispute all the above, the Domain Name is not an Abusive Registration. DRS provides under Clause 4 (a) a non exhaustive list of circumstances which the Respondent may use as evidence that the Domain Name is not an Abusive registration. Clause 4(a) (i) A. states this may be the case where use of the Domain Name was made in connection with a genuine offering of goods and services. The Respondent contends this to be the position and also claims that the Complainant stood by waiting for the Respondent to build business under the Domain name before approaching it. It is possible that prior to receipt of the Complaint the Domain Name was connected with a genuine offering of goods but the activity of the Respondent since receipt of the Complaint shows that it no longer can be viewed as a genuine and bearing in mind the similarities between the Domain Name and the Complainant's trade marks the Respondent cannot claim its use is not abusive.
8. Conclusion
The Domain Name is an Abusive Registration in the hands of the Respondent and should be transferred to the Complainant.
Margaret Briffa
17th April 2008
