DRS 02257
NOMINET-UK DISPUTE RESOLUTION SERVICE

B E T W E E N :

FRUIT OF THE LOOM INC.
Complainant

- and -

JACKARANDA HOLDINGS
Respondent

__________________________________________

DECISION OF INDEPENDENT EXPERT
__________________________________________

Appointment
1.	I was appointed on 8th March 2005 to decide, under the DRS Procedure, complaints of Abusive Registration in relation to two domain names.  I am required to give my decision by the 22nd March 2005.

Terminology
2.	In this Decision:
•	“Nominet”			means Nominet-UK
•	“the DRS Procedure”	means Nominet’s current dispute resolution procedure
•	“the Nominet Policy”	means Nominet’s current dispute resolution policy
•	“the Domain Names”	means the domain names “fruit-of-the-loom.co.uk” and “fruitactivewear.co.uk”.

Materials
3.	I have been provided with the following materials:
(1)	Dispute History
(2)	Complaint
(3)	Response
(4)	Standard correspondence between Nominet UK and the parties
(5)	Non standard submission made by the Complainant
(6)	Register entry for fruit-of-the-loom.co.uk & fruitactivewear.co.uk
(7)	Nominet WHOIS query result for fruit-of-the-loom.co.uk & fruitactivewear.co.uk
(8)	Printout of website at www.fruit-of-the-loom.co.uk & www.fruitactivewear.co.uk
(9)	Copy of Nominet UK’s Policy and Procedure.

The Complaint
4.	The Complainant asserts that the Domain Names in the hands of the Respondent are “Abusive Registrations”.

5.	The Complaint, which is dated the 16th December 2004, is made by Clifford Chance, solicitors, acting on behalf of the Complainant.  The substance of the Complaint is as follows: -
(1)	The Complainant has sold its extremely well known FRUIT OF THE LOOM range of products in the UK and elsewhere for many years.

(2)	It is the proprietor of numerous UK and Community Trade mark registrations for its FRUIT, FRUIT BRAND and FRUIT OF THE LOOM trade marks and “FRUIT” devices or logos consisting of representations of bunches of fruit.

(3)	At all material times, the Complainant’s merchandise has carried the well known FRUIT OF THE LOOM mark and its highly distinctive “FRUIT” logo.  The Complainant’s FRUIT OF THE LOOM products have been advertised and promoted on a very substantial scale.  Its products, which include the ‘Activewear’ clothing range, are promoted in particular on its websites (at “www.fruitoftheloom.com” which has links to its USA website: www.fruit.com, www.fruitactivewear.com which has links to all Fruit of the Loom international sites, and its European website: “www.fruitoftheloom.be).  Its products are also promoted through advertisements, point of sale promotional materials, trade publications and catalogues.  The Complainant’s marks have been used in the United Kingdom since at least 1975.  As a result of the above, the Complainant has established a very substantial reputation and goodwill in its marks.  The Complainant, therefore, has Rights in respect of a name or mark which is identical or similar to the domain names “www.fruit-of-the-loom.co.uk” and “fruitactivewear.co.uk”.

(4)	In November 2004, the Complainant’s legal department became aware of the registration of the Domain Names.  The Complainant promptly asked its external UK lawyers, Clifford Chance, to advise.

(5)	Initial enquiries revealed that the Domain Name fruit-of-the-loom.co.uk was registered in the name of “Jackarandah Holdings” with an address given of 13a Kerkyra Street, Limassol, 3107, Cyprus.  Jackarandah Holdings’ agent was listed as Freestart plc.  Investigations of this Domain Name revealed that fruit-of-the-loom.co.uk resolved to an active website with the banner ‘UCS (Distribution) Ltd’, beneath which was a link inviting the user to click and enter the site.  On entering the site a page prominently displaying the FRUIT OF THE LOOM logo appeared alongside text stating “We hold HUGE stocks for NEXT DAY DELIVERY!  If it’s FRUIT OF THE LOOM you’re after, we can help!  We stock the entire range of “Fruit” produces.”

(6)	Enquiries into fruitactivewear.co.uk revealed that this Domain Name was registered in the name of “Jackaranda Holdings Trading as: Jackaranda Holdings” (whilst the spelling of ‘Jackaranda/h’ is slightly different in each case, it is assumed that, since the contact details are identical for both, one spelling contains a typographical error and that the two are, in fact, the same registrant), the address given was 13a Kerkyra Street, Limassol, 3107, Cyprus, and the contact Simon Amiandopoulous.  The registrant’s agent was listed as UK2 Limited.  Investigations of this domain name revealed that fruitactivewear.co.uk resolved to a website with the UK2.NET banner at the top and beneath which was the same ‘UCS (Distribution) Ltd’ banner that appeared on the fruit-of-the-loom.co.uk website.  Again, there was a link inviting the user to enter the site and on doing so the same page prominently displaying the FRUIT OF THE LOOM logo alongside the text “We hold HUGE stocks for NEXT DAY DELIVERY!  If it’s FRUIT OF THE LOOM you’re after, we can help!  We stock the entire range of “Fruit” products” appeared.

(7)	The Complainant had commissioned a private investigator’s report into www.fruit-of-the-loom.co.uk and UCS (Distribution) Ltd.  Although the name used on the www.fruit-of-the-loom.co.k. website is UCS (Distribution) Ltd, a search of the Companies House database had shown that there is no registered limited company of that name.  The investigator’s report concluded that UCS (Distribution) Ltd is principally a printing company, offering a variety of printed t-shirts for men, women and children, as well as caps, mugs, pens and posters. The company’s motto is “If you can hold it down, we’ll print it”.  The report indicates that, whilst UCS (Distribution) Ltd offers what appears to be genuine Fruit of the Loom merchandise, it also sells a variety of non-Fruit of the Loom products.

(8)	Given the Complainant’s enormous reputation and goodwill in its FRUIT and FRUIT OF THE LOOM marks, it was and remains the Complainant’s view that it is inconceivable that Jackaranda Holdings was not aware of the Complainant’s rights at the time it applied for registration of the Domain Names.  In the circumstances, the only possible explanation for registration of the Domain Names is that Jackaranda Holdings registered them:
•	Primarily for the purpose of selling, renting or otherwise transferring the Domain Names to the Complainant or a competitor of the Complainant for valuable consideration in excess of its out of pocket costs directly associated with registering the Domain Names;
•	As blocking registrations against the Complainant’s FRUIT OF THE LOOM name or mark; or
•	Primarily for the purpose of unfairly disrupting the Complainant’s business.

(9)	In the Complainant’s view, any use of the Domain Names by anyone other than the Complainant will inevitably confuse people or businesses into believing that the Domain Names are registered to, operated or authorised by, or otherwise connected with it.  As a result, there is simply no conceivable legitimate use that could be made of the Domain Names by anyone other than the Complainant.  Further, given the prominent use by the Registrant of the Fruit of the Loom name and logo, the Complainant believes that people visiting the site are bound to believe that the Domain Names are registered to, or are in some way operated or endorsed by, the Complainant.

(10)	The Complainant referred to my decision, as one of Nominet’s panel of Independent Experts,  in Nominet UK DRS decision no. 1717.  In that case, Fruit of the Loom Inc. filed a complaint against the registrant (apparently unconnected with the registrant in the present case) of the domain name “fruitoftheloom.co.uk”.  In that matter, I ordered that the domain name be transferred to the Complainant, holding that the Registrant had:
“… plainly acquired [the Domain Name] with a view to making use of the goodwill of the name associated with the Complainant without any prior consultation with the Complainant, and without the Complainant’s consent.”

	I found that the use of “fruitoftheloom.co.uk” for a website selling Fruit of the Loom merchandise would be likely to confuse people viewing such a website into believing that it was in some way connected with Fruit of the Loom.
	The same, in Fruit of the Loom’s view, is equally true of the Domain Names.
	
(11)	Jackaranda Holdings appear to be engaged in a pattern of making registrations comprising or consisting of well known names or trade marks of third parties, and the Domain Names are part of that pattern.  In particular, but without limitation, the Complainant relies on the registrations of the following:
gildanactivewear.co.uk
hanesactivewear.co.uk
hanesprintables.co.uk
beefy-t.co.uk
beefyt.co.uk
beefytee.co.uk
beefytees.co.uk

(12)	All of these domain names consist of names and/or trade marks of persons or entities which appear to be unrelated to Jackaranda Holdings.

(13)	Accordingly, the Complainant submits that the fruit-of-the-loom.co.uk and fruitactivewear.co.uk domain names are Abusive Registrations within the meaning of Nominet UK’s DRS policy, and requests the transfer to it of the Domain Names in accordance with the Nominet.UK DRS Policy and Procedure.
 
Response
6.	The Respondent’s Response, e-mailed to Nominet, is in the following terms:-
“Dear Sirs
Re: FRUIT-OF-THE-LOOM.CO.UK, FRUITACTIVEWEAR.CO.UK
We registered these names in good faith, in order to sell products manufactured by Fruit of the Loom (fotl) and sold by ourselves for over 20 years.
They are registered in Cyprus as I am half Cypriot:
It is made very clear on entering the site that UCS DISTRIBUTION is the company, and does not in any way suggest that we ARE fotl.
The site is not fully functional yet, but sells only fotl products.
If people ring up and ask if we are FOTL we say “NO, this is UCS Distribution we are wholesalers of fotl products.”
If fotl wish to have these names i am sure they will force us to remit.
But I do not see the logic in their strategy.
If for example we had FRUIT-OF-THE-LOOM-T-SHIRTS-SOLD-IN-BULK-BY-UCS.com presumably this would also be problematic?

Yours faithfully,
Simon Amiandoupolous”

Non-Standard Submission
7.	In a letter to Nominet, dated 2nd March 2005, the Complainant invoked paragraph 13(b) of the DRS Procedure, requesting that a WIPO decision in its favour (“the WIPO decision”) in relation to the domain name fruit-of-the-loom.com should be made available to me on the ground that it had been impossible to include it in the Complaint because it had not been handed down until after the submission stage in the present case had closed.

8.	I have not requested that that WIPO decision should be made available to me and I have not looked at it because:-
(a)	I am aware that the provisions of the WIPO Uniform Domain Name Dispute Resolution Policy (though similar) are not identical to those of the Nominet Policy.
(b)	It is apparent that the parties in the case giving rise to the WIPO decision are not identical to the parties in the present case.
(c)	It is not suggested that there is any particular ruling in the WIPO on any specific question of interpretation or point of law which also arises in the present case.

Jurisdiction
9.	Under paragraph 2a of the Policy the Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that
“i.	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name: and

ii.	The Domain Name, in the hands of the Respondent, is an Abusive Registration”.

10.	Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

Rights
11.	Paragraph 1 of the Policy defines “Rights” as including, but not being limited to, “rights enforceable under English law”.  This definition is subject to a qualification which is not material.

12.	The Complainant has provided detailed substantiation of its registration as proprietor of UK and Community FRUIT OF THE LOOM trademarks.  This is not challenged by the Respondent.  Further, the Respondent has not challenged the Complainant’s assertion that it has a website www.fruitoftheloom.com which has links to its USA websites www.fruit.com and www.fruitactivewear.com and to its European website www.fruitoftheloom.be.  The registration and operation of such websites predicates the existence of contractual rights to operate them under those names.  Rights arising under their trademarks and such contractual rights (irrespective of the system of law under which they arise) would be “enforceable under English law”.

13.	In the circumstances I am satisfied and find as a fact that the Complainant has rights enforceable under English law as proprietor of UK and Community trademarks in the name FRUIT OF THE LOOM and as registrant of the domain names referred to in paragraph 12 above - which include the domain name fruitactivewear.com.

14.	Plainly these are not identical to the Domain Names (“fruit-of-the-loom.co.uk” and “fruitactivewear.co.uk”), but in my judgment they are similar, and I so find.  

Abusive Registration
15.	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;”

16.	The Policy provides:
“3.	Evidence of Abusive Registration

	a.	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 primarily:

			A.	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.	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.	The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv.	it is independently verified that the Respondent has given false contact details to us; or

v.	The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant;

A has been using the domain name registration exclusively; and

B paid for the registration and/or renewal of the domain name registration.

	b.	Failure on the Respondent’s part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration

	c.	There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed.  This presumption can be rebutted (see paragraph 4(c)).

4.	How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

	a.	A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

		i.	Before being aware of the Complainant’s cause for complaint (not necessarily the ‘complaint’ under the DRS) the Respondent has:

			A.	used or made demonstrable preparations to use the Domain Name or a Domain name which is similar to the Domain Name in connection with a genuine offering of goods or services;

			B.	been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;

			C.	made legitimate non-commercial or fair use of the Domain Name; or

ii.	The Domain Name is generic or descriptive and the Respondent is making fair use of it.

iii.	In relation to paragraph 3(a)(v); that the Registrant’s holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or

iv.	In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.

b.	Fair use may include sites operated solely in tribute to or criticism of a person or business.

c.	If paragraph 3(c) applies to succeed the Respondent must rebut the presumption by proving in the Response that the Registration of the Domain Name is not an Abusive Registration.

17.	The domain name fruit-of-the-loom.co.uk was registered on behalf of the Respondent on 16 March 2004.  The Complainant’s trademark registrations for “Fruit of the Loom” and its devices representing groups of fruits of different kinds date back to the 1950s.

18.	The domain name fruitactivewear.co.uk was registered on behalf of the Respondent on 17 January 2002.  The Complainant has not given the date of registration of the domain names of the USA website www.fruitactivewear.com, but the Respondent has not challenged the Complainant’s assertion [see paragraph 5(3) above] that its marks have been used in the United Kingdom since at least 1975, or suggested that the Complainant’s “Activewear” clothing range was not being marketed under that name by the Complainant prior to 17 January 2002.  Indeed, the Respondent’s assertion (see paragraph 6 above) that the names were registered “in order to sell products manufactured by Fruit of the Loom”, and its use of the domain name “fruitactivewear.co.uk” to attract people to a web-site which resolved to a statement, immediately under the banner UCS (Distribution) Ltd, “For everything FRUIT OF THE LOOM”, gives rise to the clear inference that the Complainant was making use of the name fruitactivewear, and therefore that that name had been registered as a domain name in the USA, prior 17 January 2002.

19.	As has been seen, the Respondent asserts that it registered the Domain Names for the purposes of selling Fruit of the Loom products, as it had done for many years.  In other words, the Respondent’s objective was to promote its existing business, which on any view included the sale of the Complainant’s merchandise.  There is no reason to doubt that this was the Respondent’s purpose.  There is absolutely no evidence that the Respondent’s purpose was to “extort” money from the Complainant or anyone else in connection with the registration of the Domain Names, or to “block” a registration by the Complainant, or to disrupt the Complainant’s business unfairly or at all.  Accordingly, none of the factors described in paragraph 3ai of the Nominet Policy apply to this case.

20.	The Complainant also relies upon paragraph 3aii of the Nominet Policy, which requires evidence that a 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”. 
 
In relation to this allegation there are three points which can be made on behalf of the Respondent:-
(1)	The Complainant has provided no evidence of any actual confusion i.e. that any persons or businesses have been confused in the manner prescribed;
(2)	In any event, any confusion could only be transient, because the web-sites in question resolve to the banner “UCS (Distribution) Ltd” and statements that “We hold HUGE stocks …  We stock the entire range of ‘Fruit’ products”, which would indicate to anyone reading the page that UCS (Distribution) Ltd was an independent stockholder and not the company actually manufacturing/distributing the FRUIT OF THE LOOM merchandise. 
(3)	The Nominet Policy provides that one of the factors which may be evidence that a domain name is not an Abusive Registration is that the Respondent has used the Domain Name “in connection with a genuine offering of goods and services” (see paragraph 4aiA), and the Complainant does not challenge the Respondent’s assertion that that was precisely what it was doing..

21.	Whilst it is true that paragraph 3aii of the Policy requires evidence of actual use of the Domain Name and of actual confusion, the list of factors in paragraph 3 of the Policy is stated to be “non-exhaustive”.  As is apparent from the earlier Decision referred to by the Complainant [see paragraph 5(10) above], I am of the opinion that a Registration may be Abusive without evidence of actual confusion if the Domain Name is used in a way which would be likely “to confuse people into believing that the Domain Name is registered to, operated, or authorised by, or otherwise connected with a Complainant”.  The Respondent would no doubt contend that any confusion would be short-lived, for the reason identified in paragraph 20(2) above.  I do not accept this entirely.  The material on the websites, one of which at the material time made use of the Complainant’s logo, might indicate that the Domain Names were probably registered to and operated by the Respondent, but they would be likely to confuse people into believing that the Domain Name was “authorised by, or otherwise connected with” the Complainant.  In any event, it seems to me that the mischief at which paragraph 3aii of the Nominet Policy is directed is any confusion of the sort described.  There is no exclusion of confusion which is “short-lived”.  In the present case, I am of the view that people or businesses are likely to be, and to have been, confused into believing that the Domain Names are registered to, operated or authorised by, or otherwise connected with the Complainant and to seek, and to have sought, to enter the websites in question for that reason.  I consider such confusion, though partially dispelled on entry of the website, is capable of giving rise to a finding of Abusive Registration.

22.	It is plain that the Respondent registered the Domain Names with a view to making use of the goodwill of the names associated with the Complainant without any prior consultation with the Complainant and without the Complainant’s consent.  Thus I am quite satisfied that each of the Domain Names was “acquired in a manner which, at the time when … the acquisition took place, took unfair advantage of (and) was unfairly detrimental to the Complainant’s Rights” and also “used” in the like manner and with the like consequences, within the terms of  Paragraph 1 of the Nominet Policy.  In my opinion the fact that the Respondent was carrying on a genuine business, which may even have assisted the Complainant in boosting its sales and promoting its products, cannot outweigh the fact that the use of those names was and is unauthorised.

23.	Further, it seems to me, and I find as a fact, that the Complainant has also demonstrated on the balance of probabilities, that the Respondent was and is engaged in a pattern of registrations of domain names which correspond to well known names or trademarks in which the Respondent has no apparent rights, and that the registration  of the Domain Names is a part of that pattern within the terms of paragraph 3aiii of the Nominet Policy.  The Respondent has not challenged the assertions set out in sub-paragraphs (11) and (12) of paragraph 5 above, and the Complainant has produced the results of appropriate searches which support its case on this point.  Accordingly, I am of the view that Abusive Registration in respect of both the Domain Names is established on this ground also.

Decision
24.	For the reasons given above, I find that the Domain Names were registered in a manner which at the time when the registration took place took unfair advantage of and was unfairly detrimental to the Complainants’ Rights and were used in the like manner and with the like consequences and, in the hands of the Respondent, are Abusive Registrations.

25.	The Complainant has requested the transfer of the Domain Names.  On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Names should now be transferred to the Complainant as it requests.
David Blunt QC
10 March 2005