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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Al Gosling Extreme Networks Ltd v Extreme Direct Ltd [2008] DRS 6286 (1 December 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/6286.html Cite as: [2008] DRS 6286 |
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Nominet UK Dispute Resolution Service
DRS 06286
DECISION OF THE INDEPENDENT EXPERT
Al Gosling Extreme Networks Limited v Extreme Direct Ltd
Complainant's Details
Complainant Type: Business
Complainant: Al Gosling Extreme Networks Limited
Country: ZA
Respondent's Details
Respondent: Extreme Direct Ltd
Country: GB
Extreme-direct.co.uk ('the Domain Name')
3.1 The Complainant lodged the complaint with Nominet on 16 September 2008. Nominet contacted the Registrant and the Claimant's representative by letter dated 22 September 2008 advising that a complaint had been received and requesting the Registrant to respond by 13 October 2008.
3.2 A response to the complaint from the Respondent was received by Nominet on or before 7 October 2008.
3.3 A reply to the response from the Complainant was sent to Nominet on or before 13 October 2008.
3.4 The Complainant paid the fee for expert determination and on 14 November 2008 following a conflict check Margaret Briffa was appointed from the panel of experts.
None
5.1 The Complainant refers in its evidence to "The Extreme Sports Channel" which was founded in 1995 by a Mr Al Gosling. The Complainant claims in its evidence that the Extreme Sports Channel is available in over 50 countries and in 12 languages, with availability in 20 million homes worldwide and 8 million homes in the United Kingdom. The Complainant cites in its evidence a number of "Extreme" branded businesses in which it is involved which, the Complainant claims, are active in 22 sectors with a total turnover of US$47,000,000.
5.2 The Complainant claims to spend millions on advertising and promoting its goods and services on a monthly basis, and attaches at Annexure A to its evidence examples of promotional materials and press clippings, the earliest of those which are enclosed being dated May 2006.
5.3 The Complainant claims to own a range of registered trade marks and to have made a number of trade mark applications. The Complainant claims that such registrations and applications have been made in a number of jurisdictions including in South Africa, the United Arab Emirates, Kuwait and the United States of America. These claims are made in a schedule included in Annexure B to the Complainant's evidence. In particular, the Complainant also claims to be the owner of:
(i) UK trade mark 2426502 dated 6 July 2006 for the word mark "EXTREMEPIE" in class 35;
(ii) Community Trade Mark Application 4844445 for the figurative mark "EX" (currently opposed) dated 18 January 2006 in classes 3, 9, 14, 18 and 43; and
(iii) Registered Community Trade Mark 5061072 for the figurative mark "EX EXTREME" dated 5 May 2006 in classes 16, 38 and 39
and includes evidence in relation to its ownership of these marks in the form of print outs taken from the database available at the UK Intellectual Property Office website and the OHIM website.
5.4 The Complainant also claims to be the owner of:
(i) Published Community Trade Mark application 4844148 in respect of the word mark "EXTREME" in classes 3, 9, 14, 18 and 43 dated 18 January 2006;
(ii)Published Community Trade Mark application 4844511 for a device mark "EXTREME & EX" in classes 3, 9, 14, 18 and 43 dated 18 January 2006;
(iii) Granted Community Trade Mark 5061081 for the word mark "EXTREME CRED" in classes 9, 16 and 36 dated 5 May 2006;
(iv) Published Community Trade Mark 4789194 for the word mark "EXTREMEMOB" in classes 9, 35 and 38 dated 6 December 2005.
Evidence of the above trade marks, along with other Community and UK Trade Marks which do not include the word "EXTREME" is set out in the Schedule at Annexure B to the Complainant's evidence.
5.5 The Complainant further claims in its evidence to have first obtained Trade Mark protection in the UK in 1997 through trade mark registrations 2120516 and 212512, but provides no evidence relating to these marks. In the light of the evidence provided in relation to the other trade marks, both listed in the Schedule and accompanied by print outs in Annexure B to the Complainant's evidence, this omission is difficult to understand, especially given the potential importance of these registrations. In the light of the omission of such evidence, I am unable to consider these trade marks in making my assessment of this dispute.
5.6 The Complainant attached at Annexure C a list of domain names it claims to own. The list includes details of the expiry date of those domain names, but omits any detail relating to their registration.
5.7 The Complainant claims to have operated an online clothing store since July 2001 called "Extreme Pie", selling what it calls adrenalin sports related clothing items and accessories. Marketing material relating to this online retailer is included in the Claimant's evidence. The Complainant claims to receive in excess of 160,000 visitors per month to this site and to spend over £12,000 per month advertising it.
5.8 The Complainant also refers to its "EX Stores" and "EXStores.com" website through which it sells a variety of services as well as a store to be opened in Guildford, Surrey by its franchisee and a wholly owned store it plans to open in Eton, Berkshire. Whilst it is possible to make the inference that the retail stores in Guildford and Eton have not yet been opened from the Complainant's complaint, the date from which it operated its "Ex Stores" and "ExsStores.com" websites is not clear.
5.9 The Complainant also makes reference to the results of rudimentary Google searches for the word "EXTREME" being dominated by references to its goods and services, but fails to provide evidence of the same.
5.10 The Domain was registered on 20 August 2003 by the Respondent. The Respondent claims that the Domain was registered to combine a number of its businesses, including bmx-shop.co.uk, sk8-shop.co.uk, surf-shop.co.uk, moto-x-shop.co.uk and "The Playground" retail stores. The Respondent attached to its evidence print outs showing marketing material related to the business carried out at the website accessible using the Domain Name. The Respondent further claims to have spent £1,000,000 over the course of 5 years in marketing its online business accessible using the Domain Name.
6.1 The Complainant claims that the Domain Name should be deemed as an abusive registration under paragraphs 3(a)(i)(B), 3(a)(i)(C) and 3(a)(ii) Dispute Resolution Service Policy ("the Policy").
6.2 In citing paragraph 3(a)(i)(B) of the Policy, the Complainant submits that it can show evidence of circumstances that the Respondent primarily registered the Domain Name as a blocking registration against a name or mark in which the Complainant has Rights (as identified in the Policy).
6.3 In citing paragraph 3(a)(i)(C) of the Policy, the Complainant submits that the Respondent registered the Domain Name for the purpose of unfairly disrupting the business of the Complainant by attracting its business and diverting it, inter alia, to affiliate websites competing with the Complainant. See, eg, DRS 1919 (allianceandleicester.co.uk).
6.4 In citing paragraph 3(a)(ii) of the Policy, the Complainant must show circumstances that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
6.5 The Respondent claims to have been totally unaware of the Complainant's Extreme Pie website or of any other online retailing carried out by the Complainant at the time of the registration of the Domain Name. The Respondent claims to be a bona fide retailer dealing in the Extreme Sports industry. The Respondent also refers to other websites which include the term "EXTREME" in their domain names.
6.6 In its reply, the Complainant refers to goodwill relating to the Extreme Sports Channel from 1997 until the date of the registration of the Domain Name and to the goodwill relating to the Extreme Pie store since 2001. The Complainant also refers to its "EX DEVICE" marks and argues that the use of a prominent letter "X" in the Respondent's website is similar to the use of the term "EX" in the Complainant's EX Device trade mark. Further, the Complainant states that the Respondent could have chosen any mark and deliberately chose a domain name including the word "EXTREME" along with the word "DIRECT" which it contends is incapable of distinguishing the disputed element of the mark, and instead takes advantage of the "EXTREME" family brand, citing the "VIRGIN" family brand and the use of the "VIRGIN DIRECT" sub brand as evidence of this. The Complainant also cites businesses such as "SPORTS DIRECT PLC", "TESCO DIRECT" and "CHEMIST DIRECT" as examples of the word "DIRECT" being used to underline value for money.
6.7 The Complainant also argues that the existence of the websites cited by the Respondent as including the term "EXTREME" in their domain names are irrelevant as the Complainant claims to have a proactive intellectual property protection programme and that due to the privileged nature of disputes, it cannot confirm whether it is taking action against other traders.
6.8 The Complainant also claims that the similarity of the goods and services provided by it in relation to adrenaline sports and those provided by the Respondent at the Domain Name should be taken into account in determining this issue.
6.9 In its response, the Respondent raises the fact that the mark "Extremepie" was first registered on 6 July 2006, almost 3 years after the registration of the Domain Name. In its reply, the Complainant refers to its claimed earlier common law rights in response to this.
7.1 According to 2(a) of the Dispute Resolution Services Policy ('the Policy'), in order to succeed in a Complaint, the Complainant has to prove that on the balance of probabilities:
i. the Complainant has Rights in respect of the name or the mark which is identical or similar to the disputed domain name; and
ii. the disputed domain name, in the hands of the Respondent is an Abusive
Registration.
Does the Claimant have Rights?
7.2 I refer to the facts set out in paragraphs 5.1 to 5.9 above inclusive. Under the Policy the test as to when a Complainant has Rights is a deliberately low hurdle. Rights include but are not limited to, rights enforceable under English Law. Based on all the evidence submitted I have no doubt that the Complainant does have Rights. However, the evidence is not sufficient to show that the Complainant had Rights at the time of the Registration. In particular, the evidence at Annexure A to the Complainant's complaint only goes back as far as May 2006, and none of the Registered Trade Marks or trade mark applications have a filing date which precedes the registration of the Domain Name, with the exception of an "EX DEVICE" mark (CTM 2522274) in classes 30 and 32 which was filed in 2001 and which is not evidenced by way of a print out from the OHIM online database. As this trade mark is registered in classes 30 (foodstuffs, not of animal origin) and 32 (non-alcoholic beverages and beers), it is unlikely, in my opinion, to assist the Complainant's case.
7.3 The Domain Name contains the element "DIRECT" in addition to the word "EXTREME" in which the Complainant claims Rights. I do not accept the Complainant's assertion that the word "DIRECT" always lacks distinctiveness. Indeed, in two of the marks cited by the Complainant ("SPORTS DIRCECT" and "CHEMIST DIRECT") the marks would be wholly without distinctiveness without the inclusion of the word direct. While I do accept that the word "DIRECT" may be used as a sub-brand (as in the case of "VIRGIN DIRECT" or "TESCO DIRECT"), such an interpretation is more likely in the presence of a highly distinctive brand. In relation to the distinctiveness of the word "EXTREME" when used in relation to equipment and clothing used to describe what the Complainant describes as "adrenaline sports" and what the Respondent claims to be "extreme sports", I am unable to accept that the term "EXTREME" has a similar level of distinctiveness to the terms "VIRGIN" and "TESCO" as applied to the industries in which those marks are respectively applied.
Abusive Registration
7.4 Paragraph 1 of the Policy states that an 'Abusive Registration' means 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 unfair or detrimental to the Complainant's Rights.
7.5 The Domain Name was registered on 20 August 2003. The Respondent states that it had no knowledge of the online store "EXTREME PIE" or that EXTREME SPORTS NETWORKS had any intention to operate an online retail business. Based on the evidence available to me and in particular the evidence referred to in paragraph 5.7 above, it appears that the Respondent has indeed carried out a bona fide business from the website. I have seen no evidence to suggest that the position was otherwise from the date of the Registration. Further the evidence provided by the Respondent and referred to in paragraph 5.7 above, indicates that the Domain Name is being used in accordance with paragraph 4(a)(i)(A) of the Policy, in that it is "used…….in connection with a genuine offering of goods and services".
7.6 As paragraph 3(a)(i)(B) of the Policy requires that the Complainant shows evidence of circumstances that the Respondent primarily registered the Domain Name as a blocking registration against a name or mark in which the Complainant has Rights, and because of the bona fide business carried out by the Respondent at the Domain Name as referred to in paragraph 5.7 above, I find that the Domain Name does not amount to an abusive registration under section 3(a)(i)(B) of the Policy.
7.7 Similarly, because paragraph 3(a)(i)(C) of the Policy requires that the Complainant shows that the Respondent registered or acquired the Domain Name primarily for the purposes of disrupting the Complainant's business, and because of the bona fide business carried out at the Domain Name again referred to in paragraph 5.7 above, I find that the Domain Name does not amount to an abusive registration under section 3(a)(i)(C) of the Policy.
7.8 Paragraph 3(a)(ii) of the Policy refers to circumstances in which the use of a Domain Name has confused people or businesses into believing that the Domain Name is registered to or operated by, or otherwise connected with the Complainant.
7.9 The Complainant has adduced no evidence of actual confusion, despite the fact that the Domain Name was registered in August 2003, giving ample opportunity (5 years) for such evidence to be produced. The Complainant claims that such confusion is likely to occur in view of the similarity between the marks in which it claims Rights and the mark "EXTREME-DIRECT". As stated in paragraph 6.6 above, while the word "DIRECT" can be used as a non-distinctive element when it follows a highly distinctive trade mark (such as Tesco or Virgin), where applied to a non-distinctive word (such as "SPORTS" or "CHEMIST") it can add distinctiveness to a mark.
7.10 In view of the above, and the fact that the Complainant's online store is branded "EXTREME PIE" – a highly distinctive brand name for an online store, I do not accept that the Respondent's registration or use of the Domain Name meets the criteria set out in 3(a)(ii) by reason of infringing the Complainant's common law rights in its online retail business. Similarly, I do not find that the registration and use of the Domain Name by the Respondent meets the criteria set out in 3(a)(ii) by reason of infringing the Complainant's registered rights. The Complainant's registered rights incorporating the word "EXTREME" which are valid in the UK with evidence submitted in the Complainant's complaint, do not pre-date the registration of the Domain Name. Accordingly, given the apparent trading history of the Respondent using the Domain Name, it does not appear likely that such use would have the effect of confusing relevant customers for the Complainant's and the Respondent's goods and services. Accordingly, I do not find that the registration and use of the Domain Name by the Respondent meets the criteria for a breach of paragraph 3(a)(ii) of the policy.
8.1 The Domain Name is not an Abusive Registration and should not be transferred to the Complainant.
Signed: Margaret Briffa Dated: 1 December 2008