Carphone Warehouse Ltd v Wilkes [2004] DRS 02086 (15 December 2004)

The Carphone Warehouse Limited -v- Russell Wilkes

Nominet UK Dispute Resolution Service

DRS 02086

The Carphone Warehouse Limited -v- Russell Wilkes

Decision of Independent Expert

1.	Parties:

Complainant:	The Carphone Warehouse Limited
Address:	1 Portal Way
	London
Postcode:	W3 6RS
Country:	GB

Respondent:	Russell Wilkes
Address:	58 Foregate Street
	Stafford
	Staffordshire
Postcode:	ST16 2PR
Country:	GB

2.	Domain Names:

carphonewarhouse.co.uk; thecarphonewarhouse.co.uk ("the Domain Names")

3.	Procedural Background:

The Complaint was received by Nominet on 27 September 2004.  Nominet validated the Complaint and sent a copy to the Respondent on 30 September 2004.

A Response was received by Nominet on 20 October 2004 and a copy forwarded to the Complainant.

A Reply was received by Nominet on 25 October 2004 and a copy forwarded to the Respondent.

On 1 December 2004 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and duly appointed the undersigned as the Expert with effect from 8 December 2004.

4.	The Facts:

The Complainant is the well-known mobile communications retailer.

In October 2001 the Respondent registered the Domain Names.

5.	The Parties' Contentions:

Complainant:

In summary, the Complainant's submissions are as follows:

1.	The Complainant has rights in a trade mark which is similar to the Domain Names:

(1)	The Complainant is one of the largest independent retailers of mobile communications in the UK.  It currently operates approximately 500 branches located throughout the UK.

(2)	The Complainant has been conducting its business since 1989 and its goods and services have been continuously marketed and sold under and by reference to the name CARPHONE WAREHOUSE.  Promotion of the Complainant's business and the CARPHONE WAREHOUSE trade mark has included advertising in terrestrial and satellite television channels, distribution of 1.2 million copies of the Complainant's customer guide each month, advertising in magazines, national and regional newspapers, on commercial radio stations, and through its various websites.  As a result, the Complainant has established and enjoys the ongoing benefit of a valuable reputation and goodwill in the name CARPHONE WAREHOUSE in relation to its business, goods and services.

(3)	The Complainant is the proprietor of the following domain names, which it uses in the course of its business: 

	carphonewarehouse.co.uk (registered in June 1997), 
	carphone-warehouse.co.uk (June 1997), 
	thecarphonewarehouse.co.uk (July 1999), 
	carphonewarehouse.com (June 1997), 
	carphone-warehouse.com (November 1998) and 
	thecarphonewarehouse.com (April 1999).

(4)	The Complainant is the proprietor of UK registered trade mark number 2147367 for CARPHONE WAREHOUSE, registered with effect from 3 October 1997.  In addition, The Phone House BV is the proprietor of two Community Trade Marks registrations for CARPHONE WAREHOUSE (registration number 1925122, registered with effect from 26 October 2000; and registration number 1959253, registered with effect from 16 November 2000).  The Phone House BV is a fully owned subsidiary of The Carphone Warehouse Group plc, which in turn is the holding company of the Complainant.

(5)	The Carphone Warehouse name is very similar to the Domain Names.

2.	The Domain Names are Abusive Registrations in the hands of the Respondent:

(1)	The Respondent is using the Domain Names to carry out business activities which are in direct competition with the Complainant's business, goods and services.  The Respondent offers mobile phone packages, mobile phone accessories, SIM cards and other apparatus all related to mobile phones.
(2)	The Respondent registered the Domain Names after the Complainant started its business, and applied and registered its trade marks and domain names.  The Complainant's rights therefore pre-date the Respondent's Domain Names.

(3)	The Respondent's actions in registering and using the Domain Names constitute both trade mark infringement and passing off: by using such very similar Domain Names in relation to a business, goods and services very similar to the Complainant's business, goods and services, the Respondent creates a likelihood of confusion and deception amongst members of the public.  Potential customers will mistakenly believe that the Respondent's Domain Names are registered or operated by the Complainant or that the Respondent's business, goods and services are in some way associated with the Complainant.

(4)	Given the Complainant's reputation and goodwill in the name CARPHONE WAREHOUSE, it is inevitable that the Respondent's registration and use of the Domain Names was intended to take unfair advantage of the Complainant's reputation.  The Respondent knew or should have known of the Complainant's reputation in the communication and telecommunications industry when he registered the Domain Names.  At the time of such registrations, the Complainant had been using and promoting in the UK the name CARPHONE WAREHOUSE for more than 11 years.

(5)	The Domain Names are only used as links to the Respondent's main website, www.firstphoneshop.co.uk.  This clearly shows that the only reason for the Respondent's conscious adoption of the Domain Names, was, and still is, to take advantage of the acquired goodwill which the Complainant owns in the CARPHONE WAREHOUSE name.  By using the Domain Names, the Respondent is clearly trying to direct Internet traffic to his website.  The Respondent is hoping customers, wishing to access one of the Complainant's websites, will misspell the word "warehouse", by omitting the "e" in the middle, and then be directed to the Respondent's website.

Respondent:

The Respondent filed a non-standard Response, stating that he had no intention of disputing the Complainant's request and that Nominet should go ahead and transfer the Domain Names.  Thereafter the Complainant filed a non-standard Reply, stating that the Respondent had agreed for the transfer of the Domain Names to the Complainant.  (In spite of these communications, the fact that this case has been passed to an expert to make a decision means that, for whatever reason, it did not turn out to be possible during Nominet's mediation process to reach final agreement on the voluntary transfer of the domain names by the Respondent.)  
6.	Discussion and Findings:

General
Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
i	it has Rights in respect of a name or mark which is identical or similar to the Domain Names; and

ii	the Domain Names, in the hands of the Respondent, are Abusive Registrations (as defined in paragraph 1 of the Policy).

Complainant's Rights

The Complainant owns a UK trade mark registration for CARPHONE WAREHOUSE.  In relation to the two Community Trade Mark registrations for CARPHONE WAREHOUSE, these are owned by The Phone House BV, a related company of the Complainant.  Under the amended DRS Procedure, which applies to all disputes filed on or after 25 October 2004, more than one person or entity may jointly make a complaint.  If the Complainant's complaint had been filed after 25 October 2004, it would therefore have been possible, and preferable for The Phone House BV to be a joint Complainant.  However, at the time when the Complainant filed its complaint, this option was not available.  Nevertheless, even though the Complainant is not the registered proprietor of the Community Trade Mark registrations, it is safe to assume that the Complainant has indirect rights under those registrations by way of licensing arrangements (whether formal or de facto).

In addition, prior to the Domain Names being registered in 2001, it is clear that substantial use has been made by the Complainant of the CARPHONE WAREHOUSE name in the UK and there is therefore no doubt that by then the Complainant had established unregistered trade mark rights in that name in the UK.

I therefore find that the Complainant has Rights in the name/mark CARPHONE WAREHOUSE.  For completeness, I should state that my finding would be the same even if the Community Trade Mark registrations were to be disregarded.

Disregarding the generic .co.uk suffix, the Domain Names are clearly similar to the CARPHONE WAREHOUSE mark.

The Complainant has therefore proven what is required under the first part of paragraph 2 of the Policy.    

Abusive Registration

Paragraph 1 of the 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."

The Respondent is using the Domain Names in such a way that, if someone types in www.carphonewarhouse.co.uk or www.thecarphonewarhouse.co.uk, that person is taken to a site offering various mobile telephone accessories.  There is no clear reference to any business name used by the Respondent.  Even under the "Contact" information, only an address is given and no business name.  If one looks very carefully, there are references to "Accessories-for-phones.co.uk", "Accessories For Phones" and "FirstPhoneShop.co.uk".  However, these references are not obvious and would be very easy to miss.  In addition, even if one were to notice the references to "Accessories For Phones", it is quite likely, because of the descriptive nature of such wording, that one would not take these as being in reference to the name of the business operating the websites.

In the light of the above, in my view it is likely that a substantial proportion of people arriving at the websites operated under the Domain Names by the Respondent (having made a minor spelling error by omitting the "e" in the middle of "warehouse"), will be confused into believing that the websites are operated or authorised by the Complainant.  Obtaining evidence of such confusion is always very difficult, and the fact that the Complainant has not been able to do so does not, in my opinion, mean that such confusion has not occurred.  Rather, my conclusion is that, on the balance of probabilities, such confusion will have occurred and would be likely to continue to occur in the future.

Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration.  These include:

	"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;" (paragraph 3aii).

In my view, such circumstances exist in this case.  In addition, the list of factors in paragraph 3 of the Policy is expressly stated to be non-exhaustive.  In this case, my finding that confusion would be likely to occur in the future is also relevant.

It is clear from the Respondent's use of the Domain Names that the Respondent has intended to benefit from attracting additional traffic to his business's websites by attracting people looking for websites operated by the Complainant.  I have already found that he will have succeeded in doing so and would be likely to continue to have such success in the future.  This clearly creates an advantage for the Respondent, and it is difficult to see how such advantage could be said to be anything other than unfair.  The Domain Names are therefore Abusive Registrations under the second limb of paragraph 1 of the Policy set out above.

For completeness, I should refer to the Complainant's submissions based on registered trade mark infringement and passing off.  Whilst such matters might be relevant in any Court proceedings, they are not relevant to decisions under Nominet's Dispute Resolution Service ("DRS").  Under the DRS, the sole criterion is whether or not a Domain Name is an Abusive Registration, as defined in paragraph 1 of the Policy (as set out above).

7.	Decision:

Having found that the Complainant has Rights in respect of a name or mark which is similar to the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations, the Expert directs that the Domain Names, carphonewarhouse.co.uk and thecarphonewarhouse.co.uk, be transferred to the Complainant.

___________________________________________________________________
Jason Rawkins	15 December 2004