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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Roch Valley Ltd v Edoco Ltd [2008] DRS 5624 (21 May 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5624.html Cite as: [2008] DRS 5624 |
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Complainant : Roch Valley Limited
Country : GB
Respondent : Edoco Limited
Country : GB
rochvalley.co.uk
3.1. On 10 April 2008 the Complaint was lodged with Nominet in accordance with the Nominet UK Dispute Resolution Service Policy ("the Policy"). Hard copies of the Complaint and its attachments were received in full by Nominet on 14 April 2008.
3.2. On 14 April 2008 Nominet validated the Complaint. On the following day it sent a copy of the Complaint to the Respondent, and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service ("the Procedure") had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.
3.3. The envelope containing the hard copy of the Complaint was returned to Nominet on 21 April 2008 marked "addressee unknown". One of the email copies of the Complaint was also returned as undeliverable with a message "delivery expired (message too old) [Errno61] Connection refused". However, another copy addressed to the administrative contact details appears not to have been returned.
3.4. No response was received from the Respondent. On 14 May 2008 the Complainant paid the relevant fee to Nominet in order for the matter to be referred to an independent Expert for a Decision. On 15 May 2008 Bob Elliott was duly appointed as Expert.
4.1. Although the original copy of the Complaint was returned to Nominet as undelivered, "addressee unknown", the contact details used by Nominet were correct, according to its own records. In addition, the email sent to the administrative contact in Nominet's records appears not to have been returned.
4.2. In the circumstances, the Expert does not believe that there are any exceptional circumstances which would prevent him from proceeding to a Decision on the Complaint.
5.1. The Complainant is a long-established business trading in the sale of dancewear since 1986. It was incorporated as a company in 1986 as Roch Valley Dancewear Limited, which changed its name to Roch Valley Limited in 1993.
5.2. The Complainant says that it has advertised using the name Roch Valley since 1986, and spent in excess of £100,000 on advertisements. It provides examples from publications such as Dance Gazette, Dancing Times, and Dance for You! Magazine. The Complaint also contains an extract from the Complainant's brochure. The Complainant also trades through a website at www.roch-valley.co.uk .
5.3. The Complainant is also the owner of the trade mark ROCH VALLEY, registered in the UK in class 25 as of 14 September 2000, in respect of "clothing, footwear, head gear; dancewear and dancing footwear; leisurewear; sportswear and sports footwear; swimwear".
5.4. The Complainant's domain name roch-valley.co.uk. was registered in 1999 and remains registered to the Complainant.
5.5. The Domain Name was registered by the Respondent on 2 March 2007.
5.6. There is no relationship between the Complainant and the Respondent, and the Complainant has never had any dealings with the Respondent.
5.7. The use made of the Domain Name by the Respondent is to provide links to third parties' websites operating in the Complainant's field of business. As at 15 April 2008, and at the date of this Decision, the Domain Name was used for the purposes of a website which contained links to a number of sites advertising dancewear (including one link to a third party's website promoting the Complainant's own dancewear).
Complainants' Submissions
Rights
6.1. The Complainant relies upon its evidence of the use of Roch Valley in respect of its business since 1986, its registered company name, and its registered trade mark rights, in establishing that it has Rights under the Policy in Roch Valley. Those Rights pre-date the registration of the Domain Name.
6.2. The Domain Name is identical to the mark Roch Valley.
Abusive Registration
6.3. The Complainant says that the Domain Name in the hands of the Respondent is an abusive Registration for two reasons. Firstly, the Complainant says that the Domain Name is used by the Respondent in a way which has confused people into thinking that the Domain Name is controlled by the Complainant. The Complainant refers to the current use of the Domain Name identified above. This contains links to a number of suppliers of dancewear including many of the Complainant's direct competitors.
6.4. Secondly, the Complainant points out that the Domain Name is one of a series of registrations that the Respondent has made which, because of their type and pattern, prove that the Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well known names in which the Respondent has no apparent interest. The Complainant cites three examples, DRS 05125, heli-beds.co.uk, DRS 04824 planetdance.co.uk, and DRS 04522 pjhayman.co.uk, all of which resulted in the transfer of the domain name in question to the complainant in those cases.
6.5. The Complainant seeks the transfer of the Domain Name to itself.
Respondent's Submissions
6.6. The Respondent has not replied.
General
7.1. In order to succeed in these proceedings, paragraph 2.b of the 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 namely that:
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
7.2. The Complainant clearly has Rights in Roch Valley arising out of its trade mark registration, its company name, and the evidence of use provided in support of its Complaint.
7.3. As the Domain Name is identical with that mark, the Complainant has established that it has Rights for the purposes of the Policy.
Abusive Registration
7.4. The Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the 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.
7.5. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3.a. of the Policy. Those include, under paragraph 3.a(ii): "Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant", and, under paragraph 3.a(iii): The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern".
7.6. In addition, 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 three (3) or more dispute resolution service cases in the two (2) years before the Complaint was filed". Although that presumption can be rebutted, there has been no attempt to do so in this case.
7.7. In this case, the Domain Name has been used to misdirect those potentially seeking the Complainant's website to websites with links which, if followed, would in all probability generate "click-through" income for the Respondent. With one exception, those websites have no apparent connection to the Complainant or its business. Even the one exception is a website maintained by a third party, not the Complainant itself. The website accessed through the Domain Name serves to operate so that potential customers of the Complainant will be diverted to direct competitors of the Complainant, although believing that they were seeking out a website connected with the Complainant.
7.8. Although the Respondent has not sought to justify its acquisition of the Domain Name, the clear conclusion from its use of an apparently non-generic name, without adornment, is that it has intended to misappropriate the Complainant's property, namely its goodwill in the Roch Valley name, with the intention of unfairly profiting from the use of the Domain Name. In doing so, the registration and use of the Domain Name have taken unfair advantage of and/or been unfairly detrimental to the Complainant's rights.
7.9. Further, given the three previous instances cited by the Complainant of the Respondent being found to have made abusive registrations, resulting in decisions under the DRS in favour of the complainant in each case, the Expert is satisfied that this further registration is part of a pattern of such registrations, within paragraph 3.a(iii) of the Policy.
7.10. In any event, if there had been any doubt as to the position (which there is not in the Expert's opinion) the Expert would have relied upon the presumption of Abusive Registration under paragraph 3.c of the Policy, which the Respondent has no sought to rebut.
7.11. The Expert therefore finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration within the meaning of the Policy.
8.1. The Expert finds that the Complainant has rights in the name or mark Roch Valley which is identical to the Domain Name. The Expert further finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
8.2. The Expert therefore decides that the Domain Name should be transferred to the Complainant.
Bob Elliott21 May 2008