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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> J Braithwaite & Co (Sewing Machines) Ltd v braithwaitesewingmachines.co.uk [2008] DRS 5501 (12 May 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5501.html Cite as: [2008] DRS 5501 |
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DECISION OF THE INDEPENDENT EXPERT
1. Parties:
Complainant: J. Braithwaite & Co. (Sewing Machines) Ltd
Respondent: UV Printing Company
2. Domain Name:
braithwaitesewingmachines.co.uk (the 'Domain Name')
3. Procedural Background:
3.1 This dispute was entered into the Nominet system on 3 March 2008 (the 'Complaint'). A hard copy of the Complaint was received in full by Nominet on 10 March 2008.
3.2 Nominet validated the Complaint on 11 March 2008 and sent a copy of the Complaint to the Respondent that day. No response to date has been received by Nominet from the Respondent.
3.3 On 18 April 2008, the Complainant paid the fee to obtain the expert decision pursuant to paragraph 21 of Nominet's Dispute Resolution Service ('DRS') Procedure (the 'Procedure').
3.4 On 21 April 2008, Dr Russell Richardson was selected as the Expert (the 'Expert'). He subsequently confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding formal/procedural issues
4.1 Although Nominet sent the Complaint to the Respondent on 11 March 2008, no response has been provided by the Respondent as per paragraph 5 (a) of the Procedure.
4.2 No exceptional circumstances have been raised by the Respondent as to why no response has been received. As such, the Expert has proceeded to a Decision as per paragraph 15(b) of the Procedure.
4.3 It is important to note that the Complainant does not automatically receive the remedy it has requested merely because the Respondent has not responded to the Complaint (see for example Nominet decision equazen.co.uk DRS 02735).
4.4 While noting paragraph 15(c) of the Procedure, the Expert has drawn no inferences from the Respondent's failure to respond in this case, and has based his Decision on the facts and evidence before him.
5. The Facts:
5.1 The Complainant, J. Braithwaite & Co. (Sewing Machines) Ltd. is a private limited company incorporated in the United Kingdom on 18 December 1962. It has been trading and supplying sewing machines for over forty years.
5.2 The Complainant has appeared in promotional material for the Performance Textiles Show in 2007; where a stand advert appeared about it for the supply of industrial sewing machines.
5.3 The Respondent registered the Domain Name on 21 February 2008 (WHOIS query - 11 March 2008) and has set up a website under the Domain Name (the 'Website') which details a purchasing complaint it has with the Complainant.
6. The Parties' Contentions:
Complainant:
6.1 In summary, the Complainant argues that the Respondent has no legitimate rights to the Domain Name because:
- the Domain Name is wrongly identifying itself with a name which is identical or similar to the United Kingdom registered company name of J. Braithwaite & Co. (Sewing Machines) Ltd.
- The Complainant has been trading and supplying sewing machines for over forty years and are generally known in the sewing machine industry by the name and mark "Braithwaite sewing machines".
- The name "Braithwaite sewing machines" has a good reputation which has been built up over this time by the Complainant, for which it asserts its common law rights.
- The mark, Braithwaite sewing machines, and the Domain Name, braithwaitesewingmachines.co.uk, are distinctive to the goods and services supplied by the Complainant and are likely to cause confusion when used without permission by a third party.
- The Complainant requests the transfer of the Domain Name from the Respondent to it.
6.2 In support of the Complaint, the Complainant submitted exhibits giving evidence of: the registration of the Complainant's company, a copy of its letterhead; a copy of an entry in promotional material for the Performance Textiles Show in 2007 which describes the goods the Complainant offers for sale; a copy of an advertising leaflet with the Complainant's name on it; and, the results of a Yahoo! Search under the search tem "Braithwaites Sewing Machines" (conducted by the Complainant in 2008).
Respondent:
6.3 No response to the Complaint has been provided by the Respondent.
7. Discussion and Findings:
General
7.1 To succeed, the Complainant has to prove pursuant to paragraph 2 (a) of Nominet's DRS Policy (the 'Policy'), on the balance of probabilities (that the Complainant's case is more likely than not to be the true version), that:
(i) it has Rights [defined in Paragraph 1 DRS Policy] in respect of a name or mark identical or similar to the Domain Name; and,
(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration [defined in Paragraph 1 DRS Policy].
7.2 Taking each limb in turn:
a) Complainant's Rights
7.3 Paragraph 1 DRS Policy defines "Rights" as including, but not being limited to: "rights enforceable under English law." Also, the Complainant must have the rights at the time of the complaint (see Nominet appeal panel decision, ghd DRS 03078).
7.4 Disregarding the generic .co.uk suffix, initial, brackets and the '& Co/Ltd' references, the Domain Name is essentially identical to the Complainant's registered company name. The Expert considers the fact that this is the registered company name of the Complainant proves at least a genuine interest in the Domain Name by the Complainant (see Nominet decision, tahirmohsan DRS 00693).
7.5 As mentioned, the Expert was provided evidence by the Complainant that it: has been trading for more than forty years under this registered company name; has appeared in promotional material for the Performance Textiles Show in 2007; and, appears almost exclusively under the search term "braithwaite sewing machine" in a Yahoo! Search.
7.6 On this basis, the Expert considers that at the time of the Complaint, the Complainant had goodwill and reputation in its registered company name, which is essentially identical to the Domain Name (as explained in paragraph 7.4 above), for the purpose of establishing a case in passing off.
7.7 Given these factors, as well as the fact that the requirement to demonstrate "Rights" is not a particularly high threshold (Nominet appeal panel decision, seiko-shop DRS 00248), the Expert considers that the Complainant has Rights in the name braithwaitesewingmachines, i.e. in the Domain Name.
b) Abusive Registration
7.8 Paragraph 1 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."
7.9 In relation to both (i) and (ii) above - the Expert considers there was an Abusive Registration at the time the Domain Name was registered, and it has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
7.10 The Policy at paragraph 3, sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. In reference to paragraph 3 (i) (C) of the Policy, the Expert considers that the purpose of the registration was to disrupt unfairly the business of the Complainant.
7.11 While it may be helpful to consider the Respondent's intentions at the time of the registration of the Domain Name or in its use in this regard, as the Respondent has not explained its intention at the time of the registration of the Domain Name or in its use, the evidence available to the Expert is the Website itself (see Nominet appeal panel decision, Guidestar DRS 02193).
7.12 The Expert accessed the Website, which is currently in operation as at the date of this Decision. It is clear from the Website that it is directed against and strongly critical of the Complainant and its business. Indeed, in the first sentence of the homepage text, the Respondent states that: "I simply want to warn any potential customers who might be looking for a sewing machine to avoid them at all costs." The text ends by stating: "AVOID AVOID AVOID."
7.13 The Expert considers that the Respondent's aim registering the Domain Name and using it was and is to persuade anyone accessing the Website not to purchase any sewing equipment from the Complainant. It was registered at a time when the Respondent felt aggrieved by the actions of the Complainant in resolving its contractual service dispute. The Domain Name appears to have been chosen by the Respondent to achieve maximum impact for the Respondent's site to disrupt the Complaint's business and reputation (see for example Nominet decision, ossandcoleman DRS 04198).
7.14 The Expert agrees with the Complainant that someone looking to purchase a sewing machine from the Complainant would be confused by linking to the Website believing that they were visiting the site of the Complainant (this is referred to as 'initial interest confusion'). The Expert thus considers that the: "identity of the Domain Name with the Complainant's trading name is inherently likely to have caused, and to cause, other people to be confused…" (Nominet decision, clydesdaleconservatories DRS 3161). Given the nature of the Website as described above, the Expert considers that the registration of the Website and subsequent use would and does disrupt the Complainant's business. (See also Nominet decision, Ryanair, DRS 3655.)
7.15 As set out in the Nominet appeal panel decision, scoobydoo (DRS 00389), (decided under Nominet's previous DRS policy, the 'new' Policy being introduced in October 2004):
"[] in the context of a tribute site, the vice is in selecting a domain name, which is not one's own name, but which to one's knowledge is identical to the name of another, which one has selected precisely because it is the name of that other and for a purpose which is directly related to that other. For a tribute or criticism site, it is not necessary to select the precise name of the person to whom one wishes to pay tribute or criticise."
7.16 Thus, the primary purpose for which the Respondent chose the Domain Name essentially identical to the Complainant's registered company name, and has used the Domain Name by setting up the Website, has been to generate Internet traffic about the Complainant to the Respondent's criticism website and in so doing disrupt the Complainant's business.
7.17 The Policy at paragraph 4, sets out a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. The Expert notes that, as set out generally at paragraph 4 of the DRS Policy, it will not be an Abusive Registration where the Respondent is making fair use of the Domain Name. Also, for paragraph 3 (i) (C) of the Policy to have relevance, the disruption to the business of the Complainant should be unfair.
7.18 In assessing what is fair use, paragraph 4 (b) of the DRS Policy states that: "Fair Use may include sites operated solely in tribute to or in criticism of a person or business". However, while the Expert notes that the Website set up could be termed a 'criticism site', the Expert does not consider that such use of the Domain Name by the Respondent in setting up the Website was fair or indeed any disruption was/is fair.
7.19 In this case, and on the evidence before him, the Expert considers that the right of the Respondent to criticise the Complainant does not extend to registering a Domain Name which is essentially identical to the Complainant's company trading name. In the DRS Appeal scoobydoo for example, the Panel commented that "Impersonation can rarely be fair." The Expert considers that if the Respondent had wanted to criticise fairly the Complainant's service, it could have registered a different Domain Name that would not have confused those looking for information about or to purchase sewing machines from the Complainant.
7.20 As mentioned in the Nominet decision clydesdaleconservatories, again a case involving a criticism site: "It is the Respondent's choice of Domain Name which is identical to the Complainant's trading name that falls foul of the Policy, not the Respondent expressing his views about the Complainant." (See also in response to a claim of fair use under paragraph 4(b) of the DRS Policy, the expert decision in Ryanair at paragraph 7.24).
7.21 For noting, the Expert's decision has not been influenced by whether or not he believes the substance of the Respondent's criticisms about the complainant as expressed on the Website.
8. Additional issues
8.1 None.
9. Decision
9.1 The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name which is essentially identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Therefore, the Expert directs the Respondent to transfer the Domain Name to the Complainant.
Signed:
Dr Russell Richardson Date: 12 May 2008