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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Rolex SA v Perkins [2008] DRS 5764 (31 July 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5764.html Cite as: [2008] DRS 5764

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NOMINET DISPUTE RESOLUTION SERVICE

DRS 05764

1. Parties

Complainant: Rolex SA

Country: Switzerland

Respondent: Mr. Wesley Perkins

Birmingham

2. Domain Names in dispute

replicarolex.co.uk and rolexreplica.co.uk (the "Domain Names")

3. Procedural Background

3.1 The Complaint was submitted to Nominet on 2 June 2008 with the Complaint entered into the database system and hard copies received on 3 June 2008. Complaint was received in full by Nominet on 3 June 2008. On 4 June 2008, the Complaint was validated by Nominet and was sent to the Respondent by post and e-mail on 4 June 2008 to the address supplied by the Respondent to Nominet upon registration of the Domain Names, with a covering letter informing the Respondent that he had 15 working days in which to respond to the Complaint.

3.2 No response was filed by the Respondent. On 11 July 2008, the Complainant paid the requisite fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").

3.3 On 11 July 2008, Kathleen Harris-Fox, the undersigned ("the Expert"), confirmed to Nominet that she knew of no reason why she could not property accept Nominet's Invitation to her to act as an Expert in this case and a formal appointment of the Expert was made on 18 July 2008.

4. Outstanding Formal/Procedural Issues

There are, so far as I am aware no live procedural issues raised by either party which have a bearing upon this decision.

5. The Facts

5.1 The Complainant is a member of the ROLEX group of companies and carries on the business of the design, manufacture and sale of luxury watches. In a review of various "official" Rolex websites, Rolex claims their watches are popularly considered status symbols and are, by far, the largest single luxury watch brand, producing about 2000 watches per day, with estimated revenues of around US$ 3 billion per annum. In 2007, BusinessWeek magazine ranked Rolex #71 on its annual list of the 100 most important global brands and top amongst all watchmakers.

5.2 The Complainant is the owner of various unregistered and registered trade marks. In Annex 2, the Complainant provides copies of their registrations:

UK 522880 (the ROLEX word mark) filed in 1931;

UK 698043 filed in 1951 (for ROLEX and crown device);

UK 775994 filed in 1958 (for ROLEX and crown device);

UK 1068508 filed in 1976 (for ROLEX and crown device);

UK 1189498 filed in 1983 (for ROLEX and crown device);

UK 1245141 filed in 1985 (for crown device);

UK 1284164 filed in 1986 (for ROLEX and crown device);

UK 1460904 filed in 1991 (for ROLEX and crown device);

UK 2191110 filed in 1999 (for ROLEX device);

UK 2191570 filed in 1999 (for ROLEX and crown device); and

CTM 001455757 filed in 2000 (for ROLEX and crown device)

All of these registrations cover various goods and services, primarily wristwatches, and the inner-workings and tools for making or repairing such wristwatches.

5.3 The Complainant is also the owner of numerous domain names incorporating the ROLEX trade name.

5.4 The Respondent is an individual in the business of registering and selling domain names and from what can be gleaned from the evidence submitted by the Complainant, the Respondent also earns money through use of domain names on so-called "parking sites" such as Sedo (e.g. please see www.sedoparking.com). Such parking sites permit registered domain names not currently being used to display relevant advertisements to the idle domain names and every time a consumer clicks on one of the advertisements the domain name owner earns money. The Sedo parking for the Domain Names clicks through to various advertisements related to luxury watches (including sale of "build your own" Rolex watches at www.watchmaker9.tv) and to sites for business that repair Rolex watches.

5.5 A Nominet Whois search shows that the Respondent registered the domain name on 27 December 2004 and the domain name on 28 December 2004. A recent attempt to use Domain Names only resulted in a notice that the websites were unavailable.

6. Contentions of the Parties

Complainant

The Complainant's contentions may be summarised as follows:

6.1 Respondent has no relationship or level of association with the Complainant and no permission has ever been granted by the Complainant to allow the Respondent to use its name ROLEX in relation to the Respondent's business enterprises.

6.2 Respondent's registration of the Domain Names is abusive because:

a. Respondent registered or acquired his registration of the Domain Names primarily for the purposes of selling or otherwise transferring the Domain Names to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly associated with acquiring or using the Domain Names.

b. According to the Complainant, numerous approaches by Complainant's solicitors to resolve this matter came to no avail with the Respondent allegedly demanding a sum of £1000 to transfer the Domain Names along with the other domain names of and . As evidence of this Complainant has provided in Annex 7 a series of letters by Complainant's solicitors to the Respondent including a "file note" taken by Complainant's solicitors regarding a telephone conversation with the Respondent on 28 September 2005.

c. Complainant contends that the purpose for registering the Domain Names was for the purpose of unfairly disrupting the Complainant's business. The Complainant submits that by combining or incorporating the word "replica" with its name its only use or purpose could be to unfairly disrupt the Complainant's business.

d. Complainant further contends that the Respondent is engaged in a pattern of registrations wherein the domain names correspond to well-known names or trade marks in which the Respondent has no apparent rights and that the present Domain Names form part of this pattern of abusive registrations. In support, the Complainant at Annex 6 provides a listing of the domains owned by the Respondent at the time of filing the Complaint. There are 182 registrations including , , , and . According to the Complainant these 182 registrations which include domains incorporating well known names or marks are clearly examples of "typo-squatting" domain names and is further evidence of the abusive nature of the Respondent.

e. The Respondent made false representations to Nominet concerning his contact details in order to prevent parties obtaining those details. The Respondent is listed as a "non trading individual" and according to the Complainant this was demonstrably false since the Domain Names were directed to the Sedo sponsored link portal and would derive revenue from association with Sedo. Nominet has now made the Respondent's contact details public as it was satisfied through information provided by the Complainant's solicitors that the Respondent was an active trading entity.

f. Lastly, the Complainant contends that the Respondent's registration of domain names incorporating a famous trade mark and the term "replica" is in itself, without more, an Abuse of the Complainant's Rights. The Complainant argues that the Respondent should not be entitled to retain such registrations since their only realistic use will erode the exclusivity in the Complainant's marks and damages its luxurious brand. In support of this contention the Complainant was unable to point to any Nominet decision that is directly on point regarding the inclusion of the term "replica" in combination with a well-known or famous name or mark although the Complainant has submitted that application of the decision in Tag Heuer S.A. v. JBlumers (WIPO Decision D2004-0871) regarding the domain names , and .

Respondent

The Respondent has not filed a Response.

7. Discussion and Findings

General

In order to succeed, the Complainant must prove, on the balance of probabilities that:-

it has Rights in respect of a name or mark which is identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy); and

the Domain Name in the hands of the Respondent, is an Abusive Registration (paragraph 2(a)(ii).

Paragraph 2b of the Policy provides that "the Complainant is required to prove to the Expert that both elements are present on a balance of probabilities".

7.1 The Complainant's Rights

a. First, it is necessary for the Complainant to show that it has Rights in a name which is identical or similar to the Domain Name. The Policy defines "Rights" as including, but not limited to, "rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or a term which is wholly descriptive of the Complainant's business."

b. Accordingly, it is necessary to consider (1) whether the Complainant has Rights in respect of a name or mark or rights in a name similar the Domain Names which are enforceable under English law and (2) whether the name or term is wholly descriptive of the Complainant's business.

c. Does the Complainant have Rights in a name which is similar or identical to the Domain Name which are enforceable under English Law?

d. As it is usual in domain name disputes to disregard the top level or country code suffix, as being a necessary component of a domain name's address, it is necessary to consider whether the Complainant has Rights in the name REPLICAROLEX or ROLEXREPLICA. Because internet addresses do not permit spaces between words, there is no practical distinction to be drawn for these purposes between REPLICA ROLEX/ ROLEX REPLICA and REPLICAROLEX/ROLEXREPLCA.

e. On the basis of the evidence submitted, it is clear that the Complainant has substantial rights in the word ROLEX. It has directly relevant registered trade mark rights, which would be enforceable in the UK. In the Expert's opinion, it has also established that ROLEX is undoubtedly an internationally famous mark, which would potentially entitle it to additional legal protection on that basis.

f. However, the name ROLEX is not identical to the Domain Names as a whole nor to the unique portion of the Domain Names and . It is therefore necessary to consider whether it is "similar" for the purposes of the DRS Policy.

g. To an English reader, the Domain Names are readily seen as comprising the Complainant's mark, ROLEX together with the element "replica". The "replica" element is simply descriptive of the products (i.e. replica Rolex watches) and is a generic term. The distinctive component of the Domain Names is the name ROLEX, which will inevitably be seen in this context for exactly what it is – a famous brand name obviously relevant to such goods. The striking element in the Domain Names is ROLEX and the inclusion of "replica" only serves to reinforce the connection in the public mind between the ROLEX trade mark and the Complainant and therefore makes the Domain Names confusingly similar to the Complainant's ROLEX trade marks and other Rights.

h. Accordingly, for the purposes of the Policy the Expert concludes that the Complainant does have Rights in respect of the name or mark which is similar to that contain in the Domain Names.

i. Is the name, ROLEX, wholly descriptive?

j. Under the Policy, even if a Complainant has established rights in a name, it cannot rely on rights in a name or term which is wholly descriptive of its business. Is ROLEX wholly descriptive or generic of Complainant's business?

k. The name ROLEX as can be seen from a review of any history or timeline regarding the formation of the Rolex Watch Company is an entirely made up word composed by the founder of the company, Hans Wildorf in 1908 and therefore is not descriptive of the goods (i.e. wristwatches) manufactured and sold by the Complainant.

l. Accordingly, the Expert is satisfied that the Complainant has adequate Rights and ample goodwill in respect of ROLEX and that the Domain Names comprise the Complainant's name along with the descriptive generic term "replica" and the generic domain suffix (.co.uk). Further, the Expert finds that the Domain Names are not wholly descriptive or generic of Complainant's business and as such the Complainant is able to rely on its Rights in the name ROLEX for purposes of this DRS complaint.

m. On the basis of the above, the Expert finds that the Domain Name is identical or similar to a name which the Complainant has Rights.

7.2 Abusive Registration

The next question to be answered is whether the registration of the Domain Name is an Abusive Registration? An abusive Registration is defined in paragraph 1 of the Policy as:

"a Domain Name which either

(i) was registered or otherwise acquired in a manner which, at the time 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 constitute evidence that the Domain Name is an Abusive Registration are set out at paragraph 3 of the Policy. Paragraph 3 provides that:

"A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

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

(A) primarily 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) primarily 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 into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

(iii) In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations:

(iv) It is independently verified that the Respondent has given false contact details to us."

The burden is on the Complainant to prove that the Domain Name in the hands of the Respondent should be regarded as an Abusive Registration.

7.3 For a domain name to be an Abusive Registration under paragraph 3(a)(i)(A) of the Policy then the domain name must have been registered with the primary intention to sell to the Complainant or one of its competitors for more than the documented out-of-pocket costs of obtaining it.

7.4 According to Complainant, the Respondent demanded £1000 for the transfer of the Domain Names along with a further two domains. For a domain name to be an Abusive Registration under paragraph 3(a)(i)(A) of the Policy then the domain name must have been registered with the primary intention to sell to the Complainant or one of its competitors for more than the documented out-of-pocket costs of obtaining it.

7.5 There was however no independent evidence presented by the Complainant other than a statement contained in paragraph 1(a) of the Complaint that the Respondent demanded £1000 for transferring a total of four marks to the Complainant and a mention in the File Note contained in Annex 7 that the Respondent had stated during a telephone conversation with the Complainant's solicitors that "his business was in registering and selling domain names and that he simply would not give (the Domain Names) to Rolex". There is reference to further telephone conversations between the Respondent and the Complainant's solicitors however no evidence was submitted indicating the content of these conversations or whether a discussion regarding monetary matters was raised. Without satisfactory evidence the Expert is unable to find for the Complainant regarding this aspect of their Complaint.

7.6 Submission of false representation to Nominet concerning Respondent's contact details

7.7 It is clear that under 3(a)(iv) a domain name registration is abusive if it can be independently verified that the Respondent has given false contact details. It is also clear that under the Nominet Contract Terms and Conditions for registration which must be accepted by each registrant upon registering any domain name with Nominet that Nominet may cancel a domain name if there is proof that significantly inaccurate contact information is provided by a registrant. Contact information includes names, addresses and statements made by the Registrant regarding an individual or company's status (e.g. whether the registrant is a non-trading individual).

7.8 The Expert is satisfied that the 182 ".uk" domain names registered to the Respondent, which even a random sampling lead to a click-through site called "Britster", is evidence that the Respondent is anything but a "non-trading individual" (see Annex 6). Moreover, the Domain Names were directed to a Sedo parking site for over 3 years where income was generated for the Respondent with every click on a listed advertisement. As the Respondent has provided no counter explanation or evidence, then it is held that the misinformation provided by the Respondent is a violation of 3(a)(iv) of the Policy and therefore the registration of the Domain Names must be deemed as abusive.

7.9 Unfairly disrupting the business of the Complainant

7.10 The Domain Names incorporate the well-known ROLEX trade mark in addition to the term "replica". The Complainant supports its allegation of abusive registration through unfairly disrupting Complainant's business under 3(a)(i)(C) of the Policy by citing the Tag Heuer WIPO case (Case No 2004-0871) wherein the fact situation was quite similar to the present case. In the Tag Heuer case, a website www.faketagheuer.com automatically linked the visitors to a website where fake/replica watches of several well-known trade marks, including ROLEX watches were sold. The WIPO panel in the Tag Heuer case found the sale of fake watches may cause considerable damage to the TAG HEUER trade mark rights and legitimate business interests of Tag Heuer and as a result the registrant in that case was found to have registered the domain name for the purpose of disrupting the business of Tag Heuer.

7.11 The Expert finds this WIPO case highly persuasive if not "on all fours" with the present case. There can be little explanation for using the word "replica" or indeed "fake" other than a desire to attract the public to websites which sell non-genuine luxury ROLEX wristwatches. Such activity is a blatant example of disrupting the legitimate business interests of the Complainant and is therefore considered an Abusive Registration under 3(a)(i)(C) of the Policy.

The Expert finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

8. Conclusion

I find that the Complainant has proven that they have the necessary Rights in respect of a name or mark which is identical or similar to the Domain Names and that the Domain Names, in the hands of the Respondent, is an Abusive Registration. As a consequence, the Domain Names should be transferred to the Complainant.

Signed:

Kathleen D. Harris-Fox

Dated: 31 July 2008