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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Crown Derby Porcelain Co Ltd -v- Yesterday Once More [2003] DRS 1449 (20 January 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1449.html Cite as: [2003] DRS 1449 |
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Nominet UK Dispute Resolution Service
DRS 01449
THE ROYAL CROWN DERBY PORCELAIN CO. LTD. v. YESTERDAY ONCE MORE
Decision of Independent Expert
1. Parties:
Complainant: The Royal Crown Derby Porcelain Co. Ltd
Country: GB
Respondent: Yesterday Once More
Country: GB
2. Domain Name:
royalcrownderby.co.uk (“the Domain Name”)
3. Procedural Background:
The complaint was received by Nominet in full on 8 December, 2003. Nominet validated the complaint and informed the Respondent, by both letter and by e-mail on 11 December, 2003, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 7 January, 2004) to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 9 January, 2004, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly sent on 14 January, 2004.
On 15 January, 2004, Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as Expert on 16 January, 2004.
4. Outstanding Formal/Procedural Issues (if any):
None.
5. The Facts:
The Complainant, The Royal Crown Derby Porcelain Company Limited, is presently registered in England and Wales as Company No.3981291. It is the successor in business to the original business which first adopted that name in 1890. The Company produces fine porcelain china, for which the business has long had a notable reputation.
The Complainant is the registered proprietor of numerous trade mark registrations for ROYAL CROWN DERBY, both in plain text and in logo form with device elements. In the UK, in particular, it has at least two registrations for the plain text mark as follows:
UK 994474 ROYAL CROWN DERBY in Class 21, dating from 30.06.1972
UK 1184505 ROYAL CROWN DERBY in Class 8, dating from 02.11.1982.
The Respondent appears on the WHOIS and Nominet records as “Yesterday Once More” with an administrative contact address as indicated above. There is no UK Company registered with this name, so it appears to be simply an unregistered trading style. A website page is accessible at www.royalcrownderby.co.uk, but this is apparently simply a holding page provided by the ISP through which the Domain Name was registered.
From the WHOIS records, the Domain Name was first registered for “Yesterday Once More” on 29 March, 2000.
6. The Parties’ Contentions:
Complainant:
The Complainant has asserted that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).
The Complaint stated:
1. The Complainant is the owner in law of the trade mark ROYAL CROWN DERBY in respect of china and porcelain articles and related products, which it and its predecessors have used since approximately the year 1890 and which has been registered in a very significant number of countries of the world over the last fifty years, commencing with registration in the United States of America which was applied for in the year 1953. Registration of the trade mark ROYAL CROWN DERBY was made in the United Kingdom as from 30th June 1972 in relation to china and porcelain articles.
[Provided as Annex 1 to the Complaint were details of registrations for the trade mark ROYAL CROWN DERBY owned by the Complainant in respect of china and porcelain articles (“the said goods”), including, where available, copies of print-outs taken directly from the official database(s). A true copy of a print-out of the Complainant’s worldwide registrations for the trade mark ROYAL CROWN DERBY and similar trade marks in respect of the said goods was also provided as Annex 2. Evidence showed the mark to be registered (in various forms) in all of the following countries: Australia, Austria, Benelux, Brazil, Canada, China, Colombia, Czech Republic, Denmark, Eire, Ecuador, Finland, France, Germany, Greece, Hong Kong, India, Indonesia, Israel, Italy, Japan, Lebanon, Malaya, Malta, Mexico, New Zealand, Norway, Panama, Portugal, Russian Federation, Saudi Arabia, Singapore, South Africa, South Korea, Spain, Sri Lanka, Sweden, Switzerland, Taiwan, U.K., Uruguay, U.S.A., Venezuela.]
2. The name ROYAL CROWN DERBY is a famous trade mark in respect of the said goods, used as aforesaid by the Complainant and its predecessors since the year 1890.
[In this connection, provided as Annex 3 was a true copy of the Certificate of Incorporation issued at the time by the Companies Registration Office in England attesting to the change of name of the company from The Derby Crown Porcelain Company Limited to Royal Crown Derby Porcelain Company Limited on 28th March 1890, the company having been granted permission to use the word “Royal” in its title by Queen Victoria. This was further attested to by the true copy provided as Annex 4 of an extract from the 10th January, 1890 issue of the Derbyshire Advertiser newspaper, which referred to such change of name.]
3. Further information on the Complainant’s history and its use of the ROYAL CROWN DERBY name and trade mark were given in the true copy provided as Annex 5 of a publication entitled “The Story of Royal Crown Derby China” issued in 1984 by the Complainant’s predecessor and the true copy provided as Annex 6 of an article entitled “Royal Crown Derby Museum” taken from an issue in 1984 of the publication “Derbyshire Life & Countryside”.
4. The Complainant has made substantial worldwide sales and advertising in respect of the said goods under the ROYAL CROWN DERBY name and trade mark. For example, such sales amounted to in excess of £6,000,000 sterling in 1994 and currently amount to approximately £10,000,000 sterling per annum. Expenditure on press advertising amounted to between £35,000 and £50,000 sterling per annum during the years 1990 to 1994 in the United Kingdom alone, and expenditure on press advertising in the United Kingdom currently exceeds £50,000 per annum.
5. More than 16,000 people across the world are members of the Complainant’s Collectors’ Guild, and each year more than 66,000 people tour the Complainant’s visitor centre, museum and shop in Derby, England. Additional information on the said goods produced and sold by the Complainant under the ROYAL CROWN DERBY name and trade mark can be found in its product literature [examples of which were provided as Annex 7]. ROYAL CROWN DERBY is one of the oldest and most collected names in British fine china. [A copy of the ROYAL CROWN DERBY magazine was also included as Annex 8].
6. The Respondent’s domain name royalcrownderby.co.uk is identical with the Complainant’s ROYAL CROWN DERBY name and trade mark, given that spaces cannot appear in domain names and that the addition of the second level domain name identification “.co.uk” should be ignored.
7. The domain name royalcrownderby.co.uk was registered on 29th March 2000, in the name of “Yesterday Once More”, of 33 Pembroke Crescent, High Green, Sheffield, S35 3PB, South Yorkshire, Great Britain (U.K.), with a gentleman by the name of “Clifford Abel” given as the contact name therefor.
8. Because of the Complainant’s concern regarding the likelihood of confusion, a letter was written on 24th August 2000 by the Complainant’s authorised representative Swindell & Pearson to Yesterday Once More [a true copy of which was provided as Annex 9]. As no reply was received despite a reminder, the said Mr. Clifford Abel was then telephoned by the Complainant’s authorised representative, the first time on 19th October 2000 and the second time on 30th October 2000. In the first conversation on 19th October 2000, Mr. Abel advised that he had a partner in Luxembourg with whom he needed to discuss the position and it emerged in the course of these telephone conversations that Yesterday Once More is or was the name of a partnership between Mr. Abel and his associate in Luxembourg and that, it was alleged, that they dealt inter alia in genuine ROYAL CROWN DERBY products produced by the Complainant. Mr. Abel considered, it appeared, that this was a legitimate reason for registering the domain name royalcrownderby.co.uk, which the Complainant’s authorised representative indicated was not satisfactory or acceptable.
9. In a further conversation between the Complainant’s authorised representative and Mr. Abel on 21st November 2000, Mr. Abel indicated that his partner wished to retain the domain name for his own use, and that the domain name royalcrownderby.com, having also been registered by Mr Abel, had since been transferred to his business partner in Luxembourg, Mr Mervyn Oliver, for the purpose of splitting ownership of the two domain names.
10. Following this, a further letter was written on 8th March 2001 by the Complainant’s authorised representative to, Mr Oliver [a true copy of which was provided herewith as Annex 10]. A reply was received from Mr Oliver dated 15th March 2001 [a true copy of which was provided as Annex 11]. This reply makes the following claims, allegations or statements:-
• That Mervyn Oliver and his cousin Clifford Abel had traded in genuine ROYAL CROWN DERBY products for several years (as well as ROYAL DOULTON products - the Complainant being formerly part of the Royal Doulton group of companies), and had invested time, energy and money into marketing the same.
• That “the domain names royalcrownderby.co.uk and royalcrownderby.com were found to be unregistered” and that “the fact that these names were available implied that companies such as Royal Crown Derby and Royal Doulton had no interest in acquiring or using them.
• That the use of the domain name was to “maximise the probability that search engines would lead prospective buyers to the site”.
11. A further letter sent to Mr Oliver by the Complainant’s authorised representative on 3rd April 2001 [a true copy of which was provided as Annex 12], produced no response despite reminders.
12. It is clear from the Complainant’s authorised representative’s correspondence and telephone contact with the Respondent Clifford Abel and his business partner Mervyn Oliver that the domain name royalcrownderby.co.uk was registered firstly because of the fame attaching to the Complainant’s ROYAL CROWN DERBY name and trade mark and the Respondent’s and original registrant’s knowledge thereof, and secondly in order to divert customers for the Complainant’s said goods to a website identified by the domain name www.royalcrownderby.co.uk.
13. Neither the Respondent Clifford Abel nor his business partner Mervyn Oliver is or ever has been an authorised dealer or distributor of the Complainant and neither of them is or has ever been authorised by the Complainant to act on the Complainant’s behalf or deal in the Complainant’s products as an official dealer or distributor or as part of any official sales network approved or authorised by the Complainant.
14. Since it consists solely of the Complainant’s name and trade mark ROYAL CROWN DERBY without spaces and the mere non-distinctive addition of the domain suffix “.co.uk”, a second level domain name such as royalcrownderby.co.uk carries with it the implicit inference that it denotes the Complainant or Complainant’s official organisation, in the same way as corporate names such as “Royal Crown Derby Limited” or “Royal Crown Derby Inc.” for example. This is an entirely different matter from use of a description such as “Royal Crown Derby Paperweights” in a web page clearly identified as another party’s, which is entirely legitimate if used to sell the Complainant’s goods. In other words, a domain name such as royalcrownderby.co.uk identifies the owner thereof and its business by the Complainant’s name and trade mark exclusively, rather than merely indicating that the owner of the domain name is a non-exclusive trader in the Complainant’s genuine goods. Consequently, as the domain name royalcrownderby.co.uk contains nothing to distinguish it from the Complainant or to indicate that Respondent is merely an independent trader in Complainant’s genuine goods, its registration and use as a trading style by Respondent Clifford Abel is clearly unjustified and potentially misleading.
15. Action has already been taken by the complainant against the respondent’s business partner, Mr Oliver, regarding the global top level domain name royalcrownderby.com. A complaint was filed at WIPO in January 2003 and dealt with by the Uniform Dispute Resolution Policy. The outcome of this dispute was entirely in favour of the complainant and the domain name royalcrownderby.com has since been transferred to the ownership of the complainant. [A copy of the decision was attached as Annex 13.]
16. There has also been a series of cases decided under the Nominet dispute resolution service which have confirmed that independent traders are not entitled to use a well-known trade mark to sell products under that brand through their websites. (See Nokia vs. Just Phones DRS 0058, Seiko vs. Designer Time DRS 00248 and Zippo vs. Robinson, DRS 0341). An important factor in these cases was that the brands were very well known and the domain names themselves contained little or no “added matter” to indicate that they would direct users to websites that were independent of the brand owners. This is of course also the case in the present dispute.
17. In view of the above, registration of the domain name royalcrownderby.co.uk was accordingly made in bad faith, and is consequently also being used in bad faith. It is confirmed moreover that, prior to notice to the Respondent by Complainant’s authorised representative as aforesaid, there was no evidence of the original registrant’s or Respondent’s use of, or demonstrable preparations to use, the domain name concerned in connection with a bona fide offering of goods or services and, as stated in more detail in the foregoing, there is not and has not been any legitimate non-commercial or fair use of the domain name concerned by the original registrant or the Respondent.
By way of remedy, the Complainant requested that the Domain Name be transferred.
Respondent:
The Respondent made no Response to, and raised no challenge to, any of the facts and evidence submitted by the Complainant.
7. Discussion and Findings:
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
Complainant’s Rights
The Complainant in this case has asserted that it has rights in the name and mark ROYAL CROWN DERBY and that this name is identical or similar to the Domain Name, royalcrownderby.co.uk.
The Complainant certainly has pertinent rights under UK Trademark registrations 994474 and 1184505, as noted above, and otherwise under numerous corresponding overseas registrations and by virtue of its long-established, worldwide reputation.
The Respondent has not challenged any of the submissions made by the Complainant regarding the Complainants rights and reputation in the name ROYAL CROWN DERBY.
As the Complainant has observed, the absence of spaces in the Domain Name, and the presence of the relevant first and second level suffices (.co.uk) in the Domain Name, may properly be discounted in a comparison with the mark at issue under the Policy.
Accordingly, for the purposes of the Policy, the Expert has no hesitation in concluding that the Complainant does have Rights in this case in respect of a name or mark, which is identical or similar to the Domain Name.
Abusive Registration
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.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy. Relevant factors in the present case are set out in Paragraph 3a, and include:
i - 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 or businesses 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;
However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.
On the evidence, which has not been countered or disputed by the Respondent, the obvious inference is that the Respondent knowingly sought to take unwarranted and unauthorised advantage, for admitted potential commercial gain, of the Complainant’s reputation and goodwill in the ROYAL CROWN DERBY name by misappropriating the domain names royalcrownderby.co.uk (the subject of this action) and originally also royalcrownderby.com (subsequently transferred by the Respondent to a related individual and then the subject of an order under the UDRP for transfer to the Complainant). This amounts to a calculated misrepresentation, which would predictably have the consequence of diverting and misleading customers, taking business away from, or otherwise disrupting and damaging the Complainant’s commercial interests.
The only suggested justification for the Respondent’s actions may be found in the correspondence from the aforementioned related individual to the Complainant’s agents in relation to the royalcrownderby.com dispute, where it was asserted that the individuals concerned had been trading in products, including Royal Crown Derby products, “for several years” and that they had found the domain names royalcrownderby.com and royalcrownderby.co.uk “to be unregistered”, from which they then jumped to the presumption that the Complainant “had no interest in acquiring or using them”. The names were then reportedly registered “to maximise the probability that search engines would lead prospective buyers to the site”.
Even if there were evidence to support a claim that the Respondent was a genuine reseller of Royal Crown Derby products (a claim which was expressly denied by the Complainant), it is surely too naïve, particularly in the face of numerous decisions in trade mark and company law and in the UDRP and Nominet DRS, for any non-exclusive retailer to imagine that it could be in accordance with honest commercial practice for such a retailer to adopt, without authorisation, the mark or name of the originator of the goods as a domain name or a company name for themselves. There is a difference between dealing in a trade mark owner’s goods (which might have arguably been expressed in domain terms in the present case as, for example, wesellroyalcrownderbyproducts.co.uk) and a right to appropriate the mark itself for ones own private benefit (such as maximising search engine hits). The latter is properly exclusive to the trade mark owner.
The judgement of the European Court of Justice in BMW v. Deenik, Case C-63/97, is relevant to these circumstances. In BMW v. Deenik, which was not a domain name case, but which involved consideration of the right of a trade mark owner (BMW) to prevent informative use of its mark by a dealer, the Court held that the proprietor of a trade mark was not entitled to prohibit a third party from using the mark for such informative purposes "unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings."
In the Expert's opinion, use of the ROYAL CROWN DERBY mark, simpliciter, in the Domain Name, royalcrownderby.co.uk creates precisely the sort of impression of a (non-existent) "special relationship" beyond that of any ordinary retailer of Royal Crown Derby products, which the ECJ would allow the trade mark owner to prevent.
Consequently, the Expert has no hesitation in concluding that the Domain Name has been registered and used by the Respondent in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights and that it is an Abusive Registration for the purposes of the Policy.
8. Decision:
Having concluded that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert determines that the Domain Name, royalcrownderby.co.uk, should be transferred, as requested by the Complainant.
______________________
Keith Gymer
Date January 20, 2003