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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Campagnolo Srl v Porter [2008] DRS 5846 (12 August 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5846.html Cite as: [2008] DRS 5846 |
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Complainant: Campagnolo S.r.l.
Country: IT
Respondent: David Porter
Country UK
Campagnolo.co.uk
27/06/08 Dispute entered into system
30/06/08 Hard copies received in full
02/07/08 Complaint validated, complaint documents generated
25/07/08 No response received
01/08/08 Michael Silverleaf selected as expert
04/08/08 Michael Silverleaf appointed as independent expert
3.1 I confirm that I have no connection with either of the parties. I know of no reason why I cannot properly accept the invitation to act in this case and know of no matters which ought to be drawn the attention of the parties which might appear to call into question my independence and/or impartiality in this case.
4.1 The only material I have to determine the facts is contained in the Complaint and attachments. The Respondent has not responded to communications from either the Complainant or Nominet. Accordingly, I can treat the following facts as undisputed.
4.2 The Complainant, Campganolo S.r.l, is one of the world's best known and and longest established manufacturers of cycling components and clothing. It is extremely well known and has long had a reputation for the manufacture of cycling equipment of extremely high quality. I am aware from my own personal knowledge that Campagnolo equipment is highly prized by the cycling community all over the world. It has over 120 trade mark registrations in over 50 countries including the UK consisting of or including the name Campagnolo. The name Campagnolo was first registered in the UK under number 767861 on in 1957. Consequently Campagnolo is a famous mark amongst members of the public for cycling components and clothing.
4.3 The Respondent is an individual. According to a WHOIS query performed on 02 July 2008 the Respondent registered the disputed domain on 29 March 2000. The Complainant's lawyers wrote to the Respondent at the address for him then given on Nominet's registration database seeking transfer of the domain name on 7 October 2002. The letter was returned as "not called for" by the Post Office on 8 November 2002.
4.4 The Respondent is closely connected with the pursuit of cycling. He is listed on the British Cycling website as a candidate club cycling coach associated with the club Heron Cyclesport. He is also the proprietor of the domain tl2.com which hosts a webpage for "an active group of bike riders based in South Essex" and is the home of an active Yahoo group. From these facts I deduce that the Respondent must have been aware of the identity and business of the Complainant when he registered the disputed domain.
4.5 The Respondent has no licence or consent from the Complainant to use the name Campagnolo or register it as a domain name. He can have no direct commercial interest in the disputed domain. The domain is not used as a tribute site for the Complainant's products: the domain name does not resolve to a webpage when searched but links to a domain registration site run by uk2.net.
4.6 The Respondent has not responded to communications from Nominet about this complaint. E-mails to his e-mail address are returned as timed out. Faxes and letters to the number and address given in the Nominet database have gone unanswered. There is no evidence in the file that they have been returned from which I must presume that they have been delivered to the destinations to which they were sent.
5.1 The relevant version of the DRS Policy to the present dispute is version 2 which relates to complaints lodged after 24 October 2004. Clause 1 of that policy defines an 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"
5.2 Clause 1 of the DRS Policy also defines "Rights" for the purposes of this procedure as including but not limited to those enforceable under English law. Under Clause 2 of the DRS Policy a complainant must show on the balance of probabilities
(a) that it has Rights in a name or mark identical or similar to the Domain Name; and
(b) that the Domain Name in the hands of the Respondent is an Abusive Registration.
5.3 Clause 3 of the DRS Policy identifies a non-exhaustive list of factors which may be evidence that the domain name is an Abusive Registration. I have accordingly taken these into account in reaching my conclusions.
5.4 Clause 3(a) sets out a non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration. Sub-clause (i)(B) provides that these include circumstances indicating that the Respondent has registered the disputed domain name as a blocking registration against a name or mark in which the Complainant has Rights.
5.5 The Dispute Resolution Service procedure is one in which the parties provide written evidence and submissions. There are no oral proceedings and no testing of the evidence. The expert accordingly has to evaluate the written material and give it such weight as is appropriate in order to reach a conclusion on the balance of probabilities.
5.6 According to the Appeal Panel decision in the Seiko case (DRS 00248) whether a registration is an abusive registration under the DRS Policy is independent of whether a Domain Registration is an infringement of trade mark and should be decided under the terms of the DRS Policy alone. The same decision also makes clear, however, that the relevant principles of English law should be applied in determining whether the Complainant has Rights under the Policy and that the Policy is founded on the principle of intellectual property rights which should be taken into account.
6.1 As noted in section 4 of this decision I have only submissions from the Complainant. I take the view that I must, therefore, take additional care to ensure that my findings are based only on facts and circumstances which can properly be shown to be established by those submissions.
6.2 There is no doubt in my view that Campagnolo is an extremely well known brand for cycling components and clothing in the UK. It is one of the best known brands in the field. I consider that anyone connected with the sport of cycling must be well aware of the existence of Campagnolo and the nature of its products.
6.3 Accordingly, it is clear that the Complainant has rights under English law in a name or mark identical or similar to the disputed domain name and that the first limb of the test under Clause 2 of the DRS Policy is satisfied. It remains to be considered whether the registration by the Respondent is an abusive registration as defined by Clause 1.
6.4 As noted above, the Respondent has no licence or consent from the Complainant to register the disputed domain name. He can have no legitimate commercial interest in so doing. He is not using the domain to host a tribute site for the Complainant's products. He has not responded to any communications to him about the domain. I am therefore left to infer from the these facts his purpose in registering the domain name.
6.5 The lack of any commercial reason for registering the domain name coupled with the Respondent's lack of response to any communication to him relating to it lead me to conclude that he has no positive use for the domain name. That being so, I am forced to conclude that he has registered the domain simply for the purpose of preventing anyone else from doing so. That makes it in my judgment a blocking registration because it prevents the Complainant from registering the domain name and using it for the purposes of its business. Accordingly, I conclude that the registration of the domain name Campagnolo.co.uk by the Respondent is an Abusive Registration.
6.6 I therefore conclude that the registration of the Domain Name should be transferred to the Complainant.
Michael Silverleaf
12 August 2008
