 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> FolliFollie UK Ltd & Anor v Edoco Ltd [2008] DRS 5652 (18 June 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5652.html Cite as: [2008] DRS 5652 |
||
[New search] [Printable RTF version] [Help]
FolliFollie UK Limited and FolliFollie SA v Edoco Limited
Decision of Independent Expert
Lead Complainant: Folli Follie (UK) Limited
Country: GB
Complainant: Folli Follie SA
Country: GB
Disputed Domain Name
Follifollie.co.uk ("the Domain Name")
The Complaint was lodged with Nominet in full on 21 April 2008. No Response was filed. On 27 May 2008, the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
Cerryg Jones, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as 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.
There are no other outstanding procedural issues that arise.
The Complainants are in the business of jewellery products, watches, handbags, small leather goods, perfume, sunglasses, scarves, shawls and pens. It is said to be a "designer" brand. The Lead Complainant is a wholly owned subsidiary of the Complainant and operates the business in the UK. The Lead Complainant has registered the name Folli Follie (UK) Limited No. 03505581 at Companies House since 5th February 1998. The Lead Complainant uses its head office address for trading purposes.
The Complainant owns the following registered UK and Community Trade Marks covering the goods of the Complainants' present business which it has authorised the Lead Complainant to use in the United Kingdom, all of which pre-date the disputed Domain Name:
(a) FOLLI FOLLIE BIJOUX [Stylised] No. 1178669 dated 17th July 1982;
(b) FOLLI FOLLIE [Stylised] No. 2057188 dated 4th October 1996;
(c) FOLLI FOLLIE [Stylised] No. 2102607 dated 20th December 1996;
(d) FOLLI FOLLIE [Words] No. 002143972 dated 12th February 2003;
(e) FOLLI FOLLIE [Stylised] No. 0023130987 dated 10th September 2003.
The Lead Complainant has been using the trade mark FOLLI FOLLIE in the United Kingdom for its goods since 1982, initially through a Mr and Mrs John Armstrong, the former of whom is now a Director of the Lead Complainant and latterly through the Lead Complainant since its incorporation.
The Complainants' products are sold in exclusive FOLLI FOLLIE shops, such as Bond Street in London, and duty free outlets such as London Heathrow. The Complainants have provided in the evidence examples of FOLLI FOLLIE products and price lists in brochures for Autumn/Winter 2005, which pre-date the registration of the disputed Domain Name. These brochures also contain details of all outlets internationally selling FOLLI FOLLIE products. Details of retail sales of FOLLI FOLLIE products are also provided in the evidence, as well as retail sales values for the UK for the years 2003-2007, together with expenditure on advertising for the same years. Examples of advertising in prominent women's magazines and jewellery magazines are also contained in the evidence, which pre-date the disputed Domain Name. The Lead Complainant is also the registrant of the domain name folli-follie.co.uk. The Complainant and its other subsidiaries are also the registrants of numerous other domain names incorporating the name Folli Follie, such as www.follifollie.fr, www.follifollie.hk, www.follifollie.es, www.follifollie.gr and www.follifollie.cn.
It is alleged that the Domain Name in the hands of the Respondent is abusive because :
(a) The name FOLLI FOLLIE is an unusual one and not one which would have been chosen by the Respondent without prior knowledge of the Complainants' rights in the name.
(b) In view of continuous use in the UK by the Lead Complainant or its predecessor since 1982 of the FOLLI FOLLIE Trade Mark, the Lead Complainant has built up a substantial reputation and goodwill in the mark in the United Kingdom and the Respondent can have no rights or legitimate interest in the disputed Domain Name.
(c) The Respondent is not offering legitimate business under the Domain Name; the Respondent operates a click-through website which provides links to third party websites in the business of jewellery and watch retailers unrelated to the Complainants, from which websites such products can be purchased online, thus diverting business from the Complainants. The Respondent is therefore using the Domain Name in a way that confuses consumers and/or business into believing that the Domain Name is operated by or is otherwise connected with the Complainants with a view to attracting Internet users to the sponsored websites for the Respondent's commercial gain. As such, the Respondent is unfairly disrupting the business of the Complainants.
(d) The Domain name is registered with an incorrect address. A letter was sent to this address by Special Delivery and was returned to the offices of HallMark IP Ltd as "refused". The postcode finder on the Royal Mail website details the address given by the Respondent as being an address for Woodcroft Veterinary Group.
(e) The registration of the Domain name is automatically abusive because the Registrant has had three DRS cases against him/her in the last two years, in which Experts have found the disputed Domain Names to be Abusive Registrations. The case reference numbers are DRS 05125, DRS 04824 and DRS 04522.
5 Discussion and findings
The first question that needs to be decided is whether either Complainant has "rights," (as defined by the DRS Policy), in respect of a name or mark which is identical or similar to the Domain Name. The evidence clearly substantiates this.
The Complainants also have to show that the Domain Name is an abusive registration. Paragraph 1 of the Policy defines this 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."
A non-exhaustive list of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration.
In the absence of a response, this is a very straightforward case, as I have formed the clear view that the Respondent has used the Domain Name in a manner which took unfair advantage of or was unfairly detrimental to the Complainants' Rights for all the reasons identified in the Complainants' submissions. Although the Claimants' are incorrect to allege that the Respondent has been the subject of three adverse rulings under the DRS in the last two years (as one of the cases cited ordered that no transfer be made), it is nonetheless a fact that is relevant to my overall assessment of the Respondent's conduct.
6 Decision:
In the light of the foregoing findings, I direct that the Domain Name should be transferred.
Cerryg Jones 18 June 2008