Nominet UK Dispute Resolution Service

DRS 5521

The Conran Shop Limited v John Morrison

Decision of Independent Expert

1.	Parties

Complainant:		The Conran Shop Limited
Country:		GB

Respondent:		John Morrison
Country:		MT

2.	Domain Name

theconranshop.co.uk ("the Domain Name")

3.	Procedural Background

The Complaint was lodged with Nominet on 10 March 2008.  Nominet validated the Complaint and informed the Respondent on 10 March 2008 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had until 3 April 2008 to submit a Response.  On 31 March 2008 a Response in electronic form was received from the Respondent.  On 28 May 2008 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 7 of the Nominet DRS Policy Version 2 ("the Policy").

On 4 June 2008 Nominet appointed Andrew Clinton ("the Expert").  The Expert has confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as Expert in this case, and further confirmed that he knows of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence.

4.	Outstanding Formal/Procedural Issues (if any)

The Response has not been signed by the Respondent (or his authorised representative) in breach of paragraph 5(c)(v) of the Procedure and that point is addressed in more detail in paragraph 6 below. 

5.	The Facts

The Complainants are The Conran Shop Limited (First Complainant) and Conran Limited (Second Complainant).  The First Complainant operates 8 Conran Shops worldwide which offer furniture and home furnishings, much of which is exclusive.  The Conran Shop was founded by Sir Terence Conran in 1973.  The Second Complainant is the proprietor of various trade mark registrations in the UK and elsewhere for the trade mark “The Conran Shop”, which are licensed to the First Complainant.

The Respondent, John Morrison, registered the Domain Name on 5 September 2004.  It has been pointing to a web page (hosted by Sedo) listing links to companies offering home furnishings and furniture.  The Complainants aver that the Respondent chose the Domain Name because it was identical to the Complainants’ trade mark and he would thereby attract the maximum amount of traffic to his website in order to generate maximum per-click revenue for himself.

The Respondent says that he registered the Domain Name in order to develop a webpage for Conran motorcycles but the owner of the shop changed his mind.  He does not comment on the current use of the Domain Name.

6.	The Parties’ Contentions

Complainant

The Complaint, so far as is material, is as follows:-

1.	Introduction The WHOIS for theconranshop.co.uk [Annex 1] shows that the Domain has been registered by John Morrison. The Domain resolves to a "pay-per-click" advertising web site through which the Respondent will earn commission each time a web user clicks on the links provided. [Annex 2 -Screenshot]. The Complainants assert that they have Rights in respect of the name or mark THE CONRAN SHOP, that the Domain is identical to this mark and that in the hands of the Respondent the Domain is an Abusive Registration; and accordingly request that the Domain be transferred to the Second Complainant. On 1 February 2008 (posted international recorded delivery and standard post) the Complainants' agents wrote to the Respondent at the address specified in the WHOIS in an attempt to settle this matter amicably [Annex 3 -correspondence]. No response was received, thus necessitating the present dispute. 

2.	Complainant’s Rights The First Complainant is the operator of The Conran Shop, a series of retail stores founded by world famous designer and entrepreneur Sir Terence Conran in 1973. Sir Terence began his retailing career in 1964 when he opened the first Habitat on Fulham Road in London. Habitat was the first shop to identify its products and its image as part of a wider ethos. In 1973, Sir Terence opened The Conran Shop at 77 Fulham Road, London, the site of the original Habitat. The First Complainant was incorporated in 1975. The Conran Shop was originally intended as a test ground for products that might have been too specialist for Habitat, either by reason of their price or their design (or both). Today, the First Complainant operates 8 Conran Shops worldwide, offering a carefully chosen selection of contemporary, well-designed furniture and home furnishings, much of it exclusive. It is one of the leading high quality home furnishings retail businesses in the world. After the initial London store, The Conran Shop opened in New York, USA. In 1987, The Conran Shop in London crossed the road to its new home on the Fulham Road, where, at 30,000 square feet, it tripled its floor space and became perhaps the purest expression of what is now called "Conranstyle" - a carefully edited combination of modern classics and new and interesting products sourced from around the world. The Conran Shop opened in Paris, France in 1992 in the Bon Marché warehouses originally designed by Gustave Eiffel. In 1994, The Conran Shop opened in Japan in the iconic Shinjuku Park Tower, Tokyo and since then the Japanese presence has grown to four Conran Shops. The Second Complainant performs a variety of functions for the Conran Group of companies and is the repository of various intellectual property rights across the Group. 

2.1.	Registered Rights The Second Complainant is the proprietor of the following relevant in-force registered trade marks [Annex 4 - registered trade marks] which are licensed to the First Complainant to allow it to operate The Conran Shops: Mark Number Filing date Reg date Classes Territory THE CONRAN SHOP 3124517 02/07/2004 21/06/2005 35 US THE TERENCE CONRAN SHOP 3145780 11/05/1999 19/09/2006 35 US THE CONRAN SHOP 2409799 22/12/2005 04/05/2007 35 GB theconranshop.co.uk Page 2 of 23 2.2. Unregistered Rights By virtue of their longstanding trading history and close association with its eponymous founder the Complainants maintain strong common law trade mark rights in the name THE CONRAN SHOP which has been the name of Sir Terence Conran's retail business since 1973. The name is exclusively associated in the minds of the public, in multiple countries including the UK, with the business operated by the First Complainant. Substantial trading has been carried out under the mark since well before the Respondent registered the Domain. For example, the First Complainant's accounts for 1999 show turnover of £14,626,000 for 1999 and £15,251,000 for 1998 with profit after taxation in those years of £1,529,000 and £1,733,000 respectively [Annex 5]. Substantial advertising has been carried out under the mark. Sample advertising material from 1996 and 1997 is produced [Annex 6]. Likewise, the business of the Complainants has received substantial press coverage over the years; an in-depth article from the Financial Times dated 1997 is produced [Annex 7]. 

3.	Abusive registration The Complainants aver that the Respondent's registration of the Domain is Abusive in terms of the Policy for the following reasons: 

3.1.	Blocking The Domain is identical to the Complainants' trade marks. The Respondent has blocked the Complainants from registering a name that most closely and obviously reflects their trading name and trade mark. The Complainants aver that this was precisely the reason the Respondent chose the Domain - to attract the maximum amount of traffic to his website in order to generate maximum per-click revenue for himself. 

3.2.	Respondent not permitted to use THE CONRAN SHOP trade mark The Respondent is not a licensee of the Complainants, has not received the Complainants' permission or consent to use the Complainants' trade marks, is not named or commonly known as THE CONRAN SHOP and owns no trade marks incorporating those terms. 

3.3.	Unfair Disruption The Domain is associated with a pay-per-click advertising page which generates revenue for the Respondent whenever a web user clicks one of the advertising links displayed. The Complainants note that these advertisements link to at least one website of a competitor of the Complainants [Annex 2]. The use of THE CONRAN SHOP mark in the Domain has the effect of diverting consumers looking for the Complainants' services to other websites selling and promoting the services of the Complainants' competitors and other third parties, clearly disrupting the Complainants' business in a manner which is unfairly detrimental to the Complainants' Rights. 

3.4.	Confusion It is likely that Internet users who type in the Domain, or who find it through a search engine, will be looking for a web site operated by the First Complainant rather than the Respondent. The Domain is extremely likely to confuse users looking for the First Complainant's online presence. The use of the Complainants' mark in the Domain also makes a false representation, in favour of theconranshop.co.uk Page 3 of 23 the Respondent's activities, of a commercial connection with or endorsement by the Complainants, causing further confusion in the eyes of Internet users. Such confusion and apparent endorsement is likely to be of considerable benefit to the Respondent; it will attract large numbers of users to his web site to the unfair detriment of the Complainants. The Respondent's use clearly employs the fame of the Complainants' mark to mislead users into visiting his website instead of the Complainants' for the purposes of maximising the Respondent's advertising revenue. It is in the nature of online activities and sales that it is very difficult for complainants to adduce evidence from individual consumers who have been confused by a misleading domain name, as perhaps envisaged by the DRS Policy para 3(a)(ii), particularly if the confusion has been entirely successful. DRS experts have recognised this in previous cases and have found that it is competent to consider the likelihood of confusion, and the potential for disruption or detriment to a complainant business, arising out of the use of a domain, as being capable of amounting to an Abusive Registration, even though the strict criteria of paragraph 3(a)(ii) may not apply. See for example PDG Graphics Ltd v PDGraphics Ltd [Annex 8 - DRS 00526] and HQUK Ltd. -v-Headquarters [Annex 9 - DRS 01405]. In Seiko UK Limited v. Designer Time/Wanderweb (Appeal Decision) [Annex 10 - DRS 00248 Appeal] the Expert's finding that the evidence on confusion adduced by the Complainant was "at least indicative of a likely problem" was upheld on appeal as sufficient to show Abusive Registration. The Complainants' view is further supported by the decision in Seiko Epson Corporation v. Inkking [Annex 11 – DRS 1796]. In this case the respondent used the domain name <epson­ink-cartridges.co.uk> to sell supplies relating to that complainant's products. The expert noted: In this case, I consider that there is an inherent misrepresentation constituted by the respondent’s use of the domain name that is bound to confuse Internet users both as to what the respondent is selling and as to the connection between the respondent and the complainant and that I am entitled to reach that view without their [sic] being any direct evidence of actual confusion. The respondent is using the domain name with the EPSON element to draw visitors to its website in a manner that is not permissible. [Emphasis added by Complainant]. Confusion may also arise irrespective of the content of the Respondent's website, as a result of the Respondent's adoption of the Complainants' trade mark in the Domain. This species of confusion is admissible in DRS cases per EPSON Europe BV -v- Cybercorp Enterprises (Appeal Decision) [Annex 12 - DRS 3027]. Accordingly, in the present case, even if it were made clear to consumers by the nature of the Respondent’s pay per click website that it is not connected with the Complainants the initial interest confusion which led them to that site would already have taken place. 

3.5.	Pattern of Registrations The Respondent appears to be the registrant of over 600 domains in the .uk space [Annex 13 - Analysis of domain names registered to the Respondent]. The vast majority relate to variants (many typographical) of well known trade marks in which the Respondent has no apparent rights (Policy 3(a)(iii)). The Domain is part of this pattern and is consequently an Abusive Registration. 

3.6.	No factors showing Domain not Abusive Registration The Respondent cannot avail himself of the factors in paragraph 4 of the Policy. The current use of the Domain to generate revenue from the Complainants' rights and to point to the Complainants' competitors is not a genuine offering of goods or services. The Respondent has theconranshop.co.uk Page 4 of 23 never been known by the name under dispute. The website to which the Domain resolves is neither non-commercial, tribute nor critical in nature and no fair use is being made. The Domain cannot be described as generic or descriptive. Given the inclusion of the Complainants' THE CONRAN SHOP mark, in use since 1973, the Domain clearly refers to and was registered with the Complainants in mind, to trade off and benefit from confusion with the mark and its extensive reputation. 

3.7.	Presumption of Abusive Registration The Respondent has been subject to DRS complaints on three previous occasions in which a finding of Abusive Registration was made:- Respondent Case No. Domain Name Date Decision See Annex John Morrison DRS 04457 sainsburysentertainment.co.uk 29 March 2007 Transfer 14 John Morrison DRS 03189 morganstanlry.co.uk 2 February 2006 Transfer 15 John Morrison DRS 02961 morgamstanley.co.uk morganstanlet.co.uk 6 November 2005 Transfer 16 Only one of these cases was decided within two years of the filing of the present case and in these circumstances there can be no automatic presumption of Abusive Registration on the basis of paragraph 3(c) of the Policy. However, while there is no such presumption, the Complainants contend that the above past cases are highly indicative of Abusive Registration in the present case as the facts in each are substantially similar and demonstrate that the Respondent is engaged in a concerted practice of making Abusive Registrations. Furthermore, these past cases are also supportive of the Complainants' submissions at paragraph 3.5 above on the pattern of registrations made by the Respondent.

Respondent

The Response, so far as is material, is as follows:-

I bought this domain in good faith to develop a webpage for Conran motorcycles, the job never got finished as the shop owner changed his mind. I registered this domain on the 5th September 2004, the complainant first filed for copyright of ‘theconranshop’ on the 22nd December 2005 (UK), this is a year and three months after I first registered it. I consider that “theconranshop” is a generic term and can apply to anyone with a shop, first name , surname or goods with the word ‘conran’ , for example ‘conran motorcycles’ and as such I have a right to own it, I registered it first.

7.	Discussion and Findings:

General

Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities; firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  

Complainants’ Rights

Rights are defined in the Policy as including, but not limited to, rights enforceable under English law.  This is usually demonstrated by reference to a trade mark registration or active trading using the mark in question.   

The Second Complainant is the proprietor of various trade mark registrations in the UK and elsewhere for the trade mark “The Conran Shop”, which are licensed to the First Complainant.  

The Complainants have made extensive use of the name The Conran Shop and substantial trading and advertising has been carried out under that name since 1973 (when the first retail shop opened in London).  The Complainants have produced supporting documentary evidence including copies of accounts, sample advertising material and an article from the Financial Times all from a period well before the Respondent registered the Domain Name.  It is clear from the evidence that the Complainants have acquired a substantial reputation and goodwill in the name The Conran Shop.

The Complainants clearly have rights in the mark The Conran Shop which, for these purposes, is identical to the Domain Name.  The Expert therefore finds that the Complainants have Rights in respect of a mark that is identical to the Domain Name and therefore the first limb of paragraph 2 of the Policy is satisfied.

Abusive Registration

Abusive Registration is defined in paragraph 1 of the Policy to mean 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.

Non-exhaustive factors – paragraph 3 of Policy

A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy as follows:

(i)	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A.	for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B.	as a blocking registration against a name or mark in which the Complainant has Rights; or

C.	for the purpose of unfairly disrupting the business of the Complainant;

(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;

(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; 

(iv)	It is independently verified that the Respondent has given false contact details to Nominet; or

(v)	The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

(A)	has been using the domain name registration exclusively; and
(B)	paid for the registration and/or renewal of the domain name registration.

It is clear from the wording of the Policy that the list of factors at paragraph 3 is non-exhaustive and that a Complainant can succeed in proving Abusive Registration without the need to prove any of those factors.  However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.  

Non-exhaustive factors – paragraph 4 of Policy

There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy.  The Respondent has not specifically identified any of the factors set out in paragraph 4 of the Policy.

Complainants’ case on Abusive Registration

The Complainants submit that the Respondent’s registration and use of the Domain Name falls within (i) paragraph 3(a)(i)(B) in that it was registered primarily as a blocking registration against a name in which the Complainants have rights, (ii) paragraph 3(a)(i)(C) in that it was registered primarily for the purpose of unfairly disrupting the business of the Complainants, (iii) paragraph 3(a)(ii) in that it has been used 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 Complainants and/or (iv) paragraph 3(a)(iii) in that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names 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.

At the heart of the Complaint is the submission that the Respondent’s use of the Domain Name clearly employs the fame of the Complainants’ mark to mislead Internet users into visiting the Respondent’s website instead of the Complainants’ for the purposes of maximising the Respondent’s advertising revenue.  The Complainants accept that there is no actual evidence of confusion but add that in the nature of online activities and sales it is usually very difficult to adduce such evidence.  As the Complainants point out it is possible to arrive at a finding of Abusive Registration even if the strict criteria of paragraph 3(a)(ii) does not apply as long as the definition of Abusive Registration in paragraph 1 has been made out.  The Complainants say that diverting consumers looking for the Complainants’ services to competitors’ websites not only creates a likelihood of confusion but it amounts to unfair disruption under paragraph 3(a)(i)C.

Paragraph 3(c) – “three strikes’ rule”

Under paragraph 3(c) of the Policy there shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in 3 or more DRS cases in the 2 years before the Complaint was filed.  The Complainants accept that they cannot rely upon this presumption as, although the Respondent has been found to have made an Abusive Registration in 3 DRS cases (the details of which are set out in the table below), only one of those cases was decided within two years of the filing of the Complaint.  

DRS No.	Disputed domain name(s)	Name of Complainant	Finding of Expert	Date of Expert’s decision	
02961	morgamstanley.co.uk
morganstanlet.co.uk	Morgan Stanley	Transfer	6 November 2005	
03189	morganstanlry.co.uk	Morgan Stanley	Transfer	2 February 2006	
04457	sainsburysentertainment.co.uk	J.Sainsbury plc	Transfer	29 March 2007	

Paragraph 3(a)(iii) – pattern of registrations

In each case referred to above the Expert found that the domain name (which was a variation on the Morgan Stanley or J. Sainsbury name) was, in the hands of the Respondent, an Abusive Registration.  It was held by the Expert in DRS 03189 that this was enough to constitute a pattern of registrations within the meaning of paragraph 3(a)(iii).  The Expert in DRS 04457 also found that the Respondent had been engaged in a pattern of abusive registrations.  It is worth noting at this point that in two of the cases referred to above the domain names pointed to a web page that consisted of a number of sponsored links to companies offering competing goods and services to those offered by the Complainant in the case.  

The Complainants say that the Respondent appears to be the registrant of over 600 domain names in the .uk space and the vast majority relate to variants (many typographical) of well known trade marks in which the Respondent has no apparent rights.  The Complainants have provided an analysis of the domain names registered to the Respondent and the examples provided include scaletrix.co.uk, firstchioceholidays.co.uk, loydspharmacy.co.uk, bankofscotlaand.co.uk, bhsstores.co.uk, brittanyferrries.co.uk, disneychnl.co.uk, googlgle.co.uk, iikea.co.uk, marksandspensors.co.uk and miscrosoft.co.uk.

Respondent’s case on Abusive Registration

In this case (unlike previous DRS cases that related to domain names registered by the Respondent) the Respondent has filed a Response in which he claims that the name “theconranshop” is a generic term that can apply to anyone with a shop, first name, surname or goods with the word “conran”.  The Expert does not accept that the mark “The Conran Shop” is generic and it is clear from the evidence that the mark is associated in the minds of the public with the business operated by the First Complainant.  The Respondent says that he purchased the Domain Name in good faith to develop a webpage for Conran motorcycles but the job was not finished as the shop owner changed his mind.  The Respondent has not provided any particulars of this claim nor has he provided any documentary evidence in support.  He was aware (from the Complaint) that the Complainants raised serious objection to the use being made of the Domain Name but he does not comment on this at all.

On receipt of the Response Nominet sent the Respondent a standard form letter that is headed “warning in relation to short or unsupported responses”.  This letter is generated by Nominet when the substance of a response is under 15 lines long and/or has no evidence attached to it.  The letter encourages the Respondent to look at their response to see if it explains the Respondent’s position properly and is adequately supported by documentary evidence.

Under paragraph 5(c) of the Procedure the Respondent must send the Response to Nominet in hard copy (as well as in electronic form) and the Response must conclude with the following statement followed by the signature of the Respondent or his authorised representative:-

“The information contained in this response is to the best of the Respondent’s knowledge true and complete and the matters stated in this response comply with the Procedure and applicable law”.

The Respondent failed to send a signed copy of the Response to Nominet and the Respondent has therefore failed to confirm by his signature that the information set out in the Response is true and complete to the best of his knowledge.  Whilst this is a technical point it is an important one when assessing the credibility of, and weight to be attached to, the Respondent’s explanation for the choice of the Domain Name.

The Expert’s role is to consider the evidence as set out in, or attached to, the parties’ submissions and to determine whether the Complainant has been able to prove that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  The burden of proof under the DRS (as per paragraph 2(b) of the Policy) is on the balance of probabilities.  The Expert therefore has to consider whether the evidence is such that he is able to say that it is more probable than not that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  

On the one hand in this case there is compelling evidence to demonstrate that the Respondent has been engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights.  Two Experts have made findings to that effect and the Complainants have produced an analysis of the domain names registered to the Respondent that certainly contain many well known marks in which the Respondent has no apparent rights.

On the other hand the Respondent has put forward an explanation for his choice of the Domain Name and the issue is whether there is sufficient evidence that the Domain Name is not an Abusive Registration.  In order to rely upon paragraph 4(a)(i) the Respondent has to show that before being aware of the Complainants’ cause for complaint he used or made demonstrable preparations to use the Domain Name in connection with a genuine offering of goods or services.  There is simply no credible evidence before the Expert that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a genuine offering of goods or services.  A statement in an unsigned Response is not enough.  The only evidence of use of the Domain Name totally undermines the credibility of the explanation provided by the Respondent.  The Domain Name is associated with a pay-per-click advertising page which generates revenue whenever a web user clicks on one of the advertising links displayed and the advertisements link to at least one website of a competitor of the Complainants’.  

The Expert is satisfied on the available evidence that it is more probable than not that the Domain Name is, in the hands of the Respondent, an Abusive Registration.  The Domain Name has clearly been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainants’ rights.  The Respondent registered a domain name that was identical to the well established brand name associated with the Complainants and has used the Domain Name to generate revenue from the Complainants’ brand name and to divert consumers looking for the Complainants’ services to the Complainants’ competitors.  There is clearly a likelihood of confusion amongst Internet users and it clearly disrupts the Complainants’ business in a manner which is unfairly detrimental to the Complainants’ rights.  

The Expert finds that there are circumstances indicating that the Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainants (as per paragraph 3(a)(i)(C) of the Policy).  The Expert also finds that the Complainants have demonstrated that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names in which he has no apparent rights and the Domain Name is part of that pattern (as per paragraph 3(a)(iii) of the Policy).  The analysis provided by the Complainants lists over 600 domain names registered by the Respondent and, of those, 24 were registered on 5 September 2004, ie the same day that the Respondent registered the Domain Name.  These include claresaccessories.co.uk, scaletrix.co.uk, thesundaymail.co.uk and vaxuall.co.uk.

8.	Decision

The Expert finds, on the balance of probabilities, that the Complainants have Rights in a name which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  The Expert directs that the Domain Name be transferred to the Second Complainant.

Andrew Clinton
18 June 2008