Unilever Plc –v- Mr David Parker

Nominet UK Dispute Resolution Service

DRS 02335

Unilever Plc   and  Mr David Parker

Decision of Independent Expert

1.	PARTIES:

	Complainant:			Unilever Plc
					Great Britain

	Respondent:			Mr David Parker
					Great Britain

2.	DOMAIN NAME:

pearssoap.co.uk, misspears.co.uk, pearsmuseum.co.uk and pearsvisitorcentre.co.uk ("the Domain Names")

3.	PROCEDURAL BACKGROUND:

3.1	A hardcopy of the Complaint was received in full by Nominet on 27th January 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on 1st February 2005.

3.2	No Response was received by the Respondent and therefore informal mediation was not possible.  On 11th March 2005 the Complainant paid the fee to obtain the Expert Decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service ("the Procedure").

3.3	On 15th March 2005, Nick Phillips, the undersigned ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew 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.  

4.	OUTSTANDING FORMAL/PROCEDURAL ISSUES: 

4.1	The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

4.2	Paragraph 15(b) of the Procedure provides, inter alia, that "If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint".

4.3	Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention.  There do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.

5.	THE FACTS:

5.1	The Complainant is Unilever Plc.  

5.2	The Complainant is the parent company of A & F Pears Limited. A & F Pears Limited owns, inter alia, three trade marks. These are a device mark for the words, "PEARS'S ORIGINAL Transparent Soap" (UK Registration No. 573,957 registered on 21 December 1936), a device mark for, "PEARS" (UK Registration No. 428,931 registered on 22 August 1922) and a registration for the word mark, "PEARS" (UK Registration No. 1,093,334 registered on 31 March 1978).

5.3	The Respondent has registered the Domain Names. These have all been registered since 22 August 2000. 

5.4	All of the Domain Names are linked to holding site run by the hosting agent, UK2NET.  None of the Domain Names links to a, "live" website.

6.	THE PARTIES' CONTENTIONS:

	The parties' contentions can be summarised as follows:

	Complainant

6.1	In its Complaint, the Complainant makes the following submissions:
	
6.1.1	It has Rights in the Domain Names by virtue of the three trade marks in the name of A & F Pears Limited which is a wholly owned subsidiary of the Complainant.

6.1.2 	The Domain Names in the hands of the Respondent are abusive because they were:

(a)	primarily registered to stop the Complainant registering the Domain Names despite the Complainant's Rights to the Domain Names and in this regard the Complainant has undertaken an investigation which revealed that the Respondent does not appear to have any legitimate interest in registering the Domain Names;

(b)	primarily registered to disrupt the Complainant's business because as above the Complainant cannot find any legitimate reason for the Respondent wanting to use/register the Domain Names and can only assume, therefore, that it is for the purposes of disrupting the Complainant's business;

(c)	part of a series of registrations that the Respondent has made, which because of their number, type and pattern, prove that the Respondent is in the habit of making registrations of Domain Names which correspond to trade marks and other well known names in which the Respondent has no apparent interest. In this regard, the Complainant has undertaken an investigation which revealed that the Respondent had registered a large number of Domain Names (in excess of 150), a number of which the Respondent does not appear to have any legitimate interest in. The Complainant gives heathrowphotos.co.uk and the weddingco-ordinator.co.uk as examples.

6.2	The Respondent has not responded to the Complaint.

7.	DISCUSSIONS AND FINDINGS
	
General
Under clause 2 of the DRS Policy ("the Policy") the Complainant is required to show, on the balance of probabilities that:

7.1	It has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

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

Complainant's Rights

7.3	The first question I must answer is therefore whether the Complainant has proved on the balance of probabilities that it owns Rights in a name or mark that is identical or similar to each of the Domain Names.  

7.4	The Policy defines Rights as including but not being limited to, "….rights enforceable under English law…..". This has always been treated in decisions under Nominet's DRS as a test with a low threshold to overcome and I think that must be the correct approach.

7.5	The Complainant (or at least its wholly owned subsidiary which for present purposes is the same thing) has a UK trade mark registration for the word mark, "PEARS" in relation to soap. It also has two other UK trade mark registrations for devices which include the word, "PEARS", both registered in relation to, amongst other things, soap. These registrations date back to 1922 and, indeed, it is common general knowledge that the word, "PEARS" has been widely associated with soap for a good number of years. I, therefore, have no hesitation in concluding that the Complainant has rights in the mark, "PEARS".

7.6	The four Domain Names in issue all contain the mark, "PEARS". Each of the Domain Names also consists of a number of other words – "soap", "Miss", "museum" and "visitor centre" respectively. I think that in all of the Domain Names it is the word, "PEARS" which is the most distinctive part of the Domain Name and the added bits are more descriptive. It is, therefore, the word "PEARS" which should be given more prominence in each case.  I, therefore, have no hesitation in finding that the Complainant has Rights in a name which is similar to the Domain Names and each of them.

7.7	I am bound to say at this point that I think that the Complainant could have done a better job with its evidence. I am aware that the mark, "PEARS" has been used in relation to soaps for most, if not all, of last century.  I am also aware that for a large part of last century, a competition was run by the Complainant under the title, "Miss Pears". It would have been a relatively easy task for the Complainant to have included evidence of its unregistered rights in the marks, "Pears", "Pears Soap" and "Miss Pears" including some evidence about this substantial prior use, and particularly the use of the mark, "Miss Pears" would have made the Complainant's case very much stronger.

Abusive Registration
7.8	Having concluded that the Complainant has Rights in a name which is identical or similar to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration.  An Abusive Registration is defined in the Policy 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 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.

7.9	Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may be evidence that a Domain Name is an Abusive Registration.  It is worthwhile setting out paragraph 3 of the Policy in full:

	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:

A	primarily 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 Respondents 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	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; or

iv.	It is independently verified that the Respondent has given false contact details to us.

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.

7.10	In its Complaint the Complainant has made three submissions which are directed at proving its allegation that the Respondent has made an Abusive Registration.  These can be summarised as follows from the Complaint:

7.10.1	The Domain Names have primarily been registered to stop the Complainant registering the Domain Names despite the Complainant's Rights to the Domain Names. In other words, the Domain Names are blocking registrations and are Abusive Registrations under Paragraph 3(a) (i) (B) of the Policy;

7.10.2	The Domain Names have primarily been registered to disrupt the Complainant's business and are Abusive Registrations under Paragraph 3(a) (i) (C) of the Policy;

7.10.3	The Domain Names are part of a series of registrations that the Respondent has made, which because of their number, type and pattern, prove that the Respondent is in the habit of making registrations of Domain Names which correspond to trade marks of other well-known names in which the Respondent has no apparent interest and are Abusive Registrations under Paragraph 3(a) (ii) of the Policy.

I shall deal with each of the submissions in turn.

Blocking Registrations:
7.11	In support of its submission that the Domain Names are blocking registrations, the Claimant says that it has undertook an investigation which revealed that the Respondent does not appear to have any legitimate interest in registering the Domain Names. Unfortunately, the Complainant does not say what form this investigation took, nor has it provided a copy of the results of this investigation.

7.12	I am aware of a number of cases which deal with the question of a Blocking Registration. These include Thomas Cook UK Limited v. Whitley Bay Uncovered (DRS 00583), Peoplesoft UK Limited v. KL Kane (DRS 00120), Bacardi and Company Limited v. Strathmade Limited (DRS 00400) and Foot Anstey Sargent v. Adrian Cameron (DRS 00160).

7.13	There is some dispute in these cases, and particularly between the Peoplesoft and the Thomas Cook cases as to what the definition of a Blocking Registration should be. The definition in the Peoplesoft case was given as:

"A Blocking Registration is a registration that is unwarranted at the time of registration. It is a domain registration that is:

(a)	designed to prevent a legitimate owner of rights in a name for registering and using the associated Domain Name and;

(b)	carried out in circumstances when Respondent is unable to demonstrate a prima facie right in the name or a valid reason to make the registration".

7.14	Objection was taken to this definition in the later Thomas Cook case because the Expert in that case felt that the definition in sub-paragraph b required the Respondent to demonstrate, either a prima facie right in the name or a valid reason to make the registration and that the burden of proof should be solely on the Complainant. I do not think that this is a difference in opinion which I need to resolve to decide this dispute. 

7.15	From the cases the question to be answered is one of motivation and particularly, whether the registrations were designed to prevent a legitimate owner of rights in the name from registering and using the associated Domain Names. In both the Foot Anstey Sargent and the Bacardi cases, the Expert was prepared to make this finding on the basis, "….that, the fact that the Complainant would legitimately desire to register the Domain Name that is very similar to its well known names and trade marks……..would have been obvious to the Respondent at the time of registration." (Bacardi).

7.16	 In this case, there is no direct evidence of the Respondent's intention but as in the Bacardi case, I do feel that it would have been obvious to the Respondent, that the Complainant may well have wished to register the marks, "Pears Soap" and "Miss Pears" as domain names as these are clearly marks which the Complainant has used widely for a great number of years.  I have the greatest of difficulty in making the same finding in relation to the marks "Pears Museum" or "Pears Visitor Centre", as it is not obvious to me and no evidence has been provided that these are names which the Complainant would necessarily have wished to have used, notwithstanding that the Complainant has Rights in a name which is similar to them. The fact is, that there will be an almost unlimited combination of names which include the mark, and which are similar to the mark, in which the Complainant has Rights and it is simply unrealistic to say that the Complainant would have had the intention to register all of these.

7.17	I, therefore, decide that the Domain Names, pearssoap.co.uk and misspears.co.uk are Abusive Registrations by virtue of them being Blocking Registrations.

Disruption to the Complainant's business:
7.18	The Complainant supports its contention that the Domain Names were registered primarily to disrupt the Complainant's business by pointing to the investigation which it has apparently carried out into whether the Respondent has any legitimate interests in registering the Domain Names.  As before, however, no details about this investigation or its results have been given.

7.19	Without any evidence from the Complainant on this point, apart from the barest of assertions that the Respondent had no legitimate interest in these Domain Names, I simply cannot find the Respondent registered them with a view to disrupting the business of the Complainant. Indeed, surely if the Respondent had been intend on the disrupting the business of the Complainant, it would have been likely to activated the sites at which the Domain Names are pointed, and the fact that it has not done so is, if anything, suggestive of the absence of any such intent.

Pattern of Registrations:
7.20	In support of its submission that the Respondent has made a series of registrations which, because of their number, type and pattern, prove that the Respondent is in the habit of making registrations of Domain Names which correspond to trade marks or other well known names, in which the Respondent has no apparent interest, the Complainant points to a second investigation which it has apparently undertaken which reveals that the Respondent has registered a large number of Domain Names.  The Complainant says in excess of 150. Unfortunately, rather like the first investigation which the Complainant undertook, the Complainant has omitted to provide the results of its investigation. It has, however, provided two examples of Domain Names owned by the Respondent. These are heathrowphotos.co.uk and the weddingco-ordinator.co.uk. The Complainant does not say which well-known names these Domain Names correspond to. I am bound to say, that I doubt whether the two examples which the Complainant has given do correspond to trade marks of other well known names and without the results of the Complainant's investigation this ground is not made out.

Abusive registration generally:
7.21	Paragraph 3a of the Policy lists non-exhaustive factors which may be evidence that the Domain Names are an Abusive Registration. In bringing its Complaint, the Complainant has pointed to the factors set out at paragraphs 3a(i)B and C and 3a(ii) of the Policy. I also, however, need to consider in broader terms whether the Domain Names constitute Abusive Registrations within the definition set out in the Policy.

7.22	In doing this, I have adopted the reasoning of the Appeal Panel in the case of Thomas Cook UK Limited v. WhitleyBayUncovered (DRS00583). The relevant part of that decision is produced below.

"It seems to the Panel that, given the extent and renown of the Complainant's trade mark, it is stretching credulity beyond breaking point to suggest that the Respondent did not know of the trade mark in question when it sought registration of the Domain Names. Indeed, it is perhaps instructive that there is no suggestion in the communications from the Respondent that it was in fact, unaware of the reputation of the Complainant's trade mark CLUB18-30. Although the Respondent is careful to suggest that the Complainant's proposed use of the Domain Names is open to question (referring to "our concept of the uncovered names") there is no suggestion that the club18-30 part of the Domain Names was chosen by it for any other reason than it was the Complainant's trade mark.

The Panel, therefore, finds that upon the balance of probabilities the Respondent was aware of the Complainant's trade mark at the time of registration of the Domain Names, and consciously chose to use that trade mark.

The onus is, of course, upon the Complainant to show on the balance of probabilities that the registration of the Domain Names is Abusive. However, it should not be forgotten that the Respondent has not filed a formal Response to these proceedings, nor accepted a further opportunity, in the context of the Appeal, to make submissions. If it had chosen to do so, it could have provided a fuller and more convincing explanation of its choice of the Domain Names. It has chosen not to do so.

This Panel considers that the only conceivable reason for the Respondent's conscious adoption in the circumstances of this case of a Domain Name which incorporates a well known trade mark of another is to take advantage of the accrued goodwill in that name. There is no suggestion that the Respondent is authorised to use the name in any way. There is no suggestion that the Respondent intends to use the name for the purposes of criticism or other fair use (indeed, the Respondent has indicated to the contrary). On the balance of probabilities, the Respondent must have intended to gain an advantage of some kind. The question is whether the advantage is "unfair".

There is, of course, no evidence of actual use. However, the Panel has difficulty conceiving of any use which could be made by the Respondent of the Domain Names in accordance with its stated intentions which would not be "unfair". Even if such a site were to appear with prominent disclaimers as to the use of the CLUB18-30 mark, it is unlikely, in the Panel's view, to dispel entirely the suggestion that there is some kind of connection with the Complainant. Such Confusion would be detrimental to the Complainant's Rights, and in the Panel's view, unfairly so.

7.23	As in the Whitley Bay case, it seems to me that the mark, "PEARS" is so well known that, it is almost inconceivable that the Respondent did not know of the Complainant's trade marks and Rights generally when it sought registration of the Domain Names. Further, the only possible reason for the Respondent registering each Domain Name could be to take advantage of the substantial goodwill and reputation in the mark, "PEARS". It follows from this, that on the balance of probabilities, the Respondent must have intended to gain an advantage of some kind and it must follow that this advantage would be, "unfair" if only for the reason that it is simply not possible to think of a use which would have been, "fair".

7.24	In reaching this decision, I have been careful not to use as evidence of an Abusive Registration the fact that the Respondent has not used the Domain Names for the purposes of email or a website, or the fact that the Respondent has not filed a Response. I have, however, decided for the reasons set out above in the rest of this decision, that the Complainant has established on the balance of probabilities that the Domain Names are Abusive Registrations. It would have, of course, been open to the Respondent to demonstrate that the Domain Names are not Abusive Registrations, either by producing evidence of one of the factors set out in Paragraph 4 of the Policy or other evidence indicating that the Domain Names are not Abusive Registrations.

7.25	I, therefore, consider that each of the Domain Names constitutes an Abusive Registration within the meaning of the Policy.

8.	DECISION
8.1	In the circumstances, I find that the Complainant has Rights in a name or mark which is identical or similar to the Domain Names and that the Domain Names in the hands of the Respondent is an abusive registration. I, therefore, decide that the Domain Names, "pearssoap.co.uk", "misspears.co.uk", "pearsmuseum.co.uk" and "pearsvisitorscentre.co.uk" should be transferred to the Complainant.

NICK PHILLIPS
24 March 2005