Nominet UK Dispute Resolution Service

DRS Number 3167

Liz Claiborne, Inc

v

Safenames

Decision of Independent Expert

1.	Parties

Complainant:		Liz Claiborne, Inc
Country:		USA		  

Respondent:		Safenames
Country:		GB		

2.	Domain Name

Lizclaiborne.co.uk   -  registered on 5 October 1999.

3.	Procedural Background

The Complaint was lodged with Nominet on 30 November 2005.  Nominet validated the Complaint and notified the Respondent of the relevant Complaint on 30 November 2005 and informed the Respondent that it had 15 days within which to lodge a Response. 

No response was received. No mediation having been possible, on 12 January 2006 the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

David Flint, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as 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 (if any)

None

5.	The Facts

The Complainant, Liz Claiborne, Inc., is a US corporation which was founded in 1976. It has traded in the United States since that date and specialises in the design and marketing of an extensive portfolio of branded apparel, accessories and fragrance products. The Complainant is the proprietor of a number of US registered trade marks which include the elements LIZ CLAIBORNE.

6.	The Parties’ Contentions

Complainant

1.	The Complainant first sought registration of its LIZ CLAIBORNE mark in the UK in 1984 and first began significant marketing activities in the UK in 1991. 

2.	The Complainant has now established a portfolio of UK registrations for LIZ CLAIBORNE, or marks including the elements LIZ CLAIBORNE and has significant goodwill in LIZ CLAIBORNE in the UK through sales of LIZ CLAIBORNE products including such sales through its flagship LIZ CLAIBORNE store at 211-213 Regent Street, London. 

3.	The Complainant submits that the Registrant's registration of lizclaiborne.co.uk is abusive on the grounds that:(1), between at least 14 September 2004 and 27 November 2005, the domain name was "parked", with the parked website containing a general offer to sell the domain name and providing links with other website retailers or advertising LIZ CLAIBORNE goods; and (2),the Registrant has not used, or made demonstrable preparations to use, the domain name in connection with a genuine offering of goods or services; it is not legitimately connected with the name LIZ CLAIBORNE and it has made no legitimate non-commercial or fair use of the name. 

4.	This practice is abusive is that legitimate customers of the Complainant are likely to search for the complainant's website remembering its registered trade mark and, upon finding the Registrant’s site under lizclaiborne.co.uk will then most naturally follow links to other related LIZ CLAIBORNE sites (some of which are competitors of the Complainant).

5.	 The Complainant will not therefore receive the benefit of its established trade name and registered trade marks (and its competitors will). There is also the possibility that potential customers will be confused as to the source or affiliation of the parked website or any of the linked "LIZ CLAIBORNE" sites.

6.	On behalf of the Complainant, agents wrote to the Registrant on 16 September 2004. Whilst negotiations for the purchase of the domain name from the Registrant were entered into, these have now been abandoned. 

7.	At no time did the Registrant seek to claim that they were legitimately noted as the registrant of the disputed domain name or that they had any legitimate claim or rights to the domain name.

8.	In summary, we submit that the domain name be deemed to have been registered and used abusively under: 
i.	Section 3(a)(i)(A) of Nominet's policy in view of the general offer to sell found on its website which amounts to "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 Registrant's documented out-of-pocket costs directly associated with acquiring or using the Domain Name"; and 

ii.	Section 3(a)(ii) of Nominet's Policy in view of the links on its website to other LIZ CLAIBORNE sites including competitors of the Complainant which amounts to "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. 
9.	In the alternative, we would submit that the links from the Registrant's parked domain name amount to an abusive registration in that they unfairly disrupt the business of the Complainant under Section 3(a)(i)(C) of Nominet's policy for the reasons given above.

10.	The Complainant seeks transfer of the Domain Name.

Respondent

No response was received from the Respondent.

7.	Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, 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

In this case the first limb of that task is straightforward. The Complainant is the proprietor of several UK and European Community registered trade marks in respect of the words LIZ CLAIBORNE registered at various times.  The Expert is also satisfied that it has very substantial goodwill and reputation in the name as a result of its trading activities over many years.  In those circumstances the Expert is  satisfied that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

This leaves the second limb. Is the Domain Name, in the hands of the Respondent, 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 is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant ‘factors’ in paragraph 3 are to be found in subparagraphs i and ii, which read 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.”    

The Expert interprets “as” in sub-paragraph i. B as being synonymous with “for the purpose of”. Were it to be interpreted otherwise all domain name registrations would inevitably constitute “blocking registrations” for any later arrival wishing to use the name in question. 

In this case, the Expert considers that there is an inherent misrepresentation constituted by the Respondent’s use of the Domain Name that is bound to confuse Internet users both as to what the Respondent is selling and as to the connection between the Respondent and the Complainant.

As far as the links to others on the Registrant’s website are concerned, the Expert notes from a cursory examination of the Domain parking service offered by sedo.com (http://www.sedo.com/services/parking.php3?tracked=&partnerid=&language=us), the Registrant’s registrar that “Sedo hosts your site and provides targeted ad links”. It may therefore be the case that the Registrant was not responsible for the links on his page (although he had permitted the links to be placed there as part of the domain parking agreement). The webpage in respect of www.lizclaiborne.co.uk states: -

“Disclaimer: Domain owner and Sedo maintain no relationship with third party advertisers. Reference to any specific service or trade mark is not controlled by Sedo or domain owner and does not constitute or imply its association, endorsement or recommendation.”

The expert does not consider that the inclusion of this disclaimer materially affects the Decision in this case.

The Expert considers that the use of the domain name lizclaiborne.co.uk could have the effect of confusing consumers into believing that there was some connection between the Complainant and the Respondent and that he is entitled to reach that view without their being any direct evidence of actual confusion.  The Respondent is using the Domain Name with the LIZ CLAIBORNE element to draw visitors to its website in a manner that is not permissible.

As far as the reference to abortive purchase negotiations are concerned, the Expert notes that this Policy should not be used by a party to achieve through the DRS that which it could not achieve through commercial negotiation. Nevertheless, there may be circumstances in which a putative complainant considers it more cost effective to negotiate a purchase of a name than enter into the DRS process. Accordingly, in this case, the Expert draws no adverse conclusions from the mere fact that previous negotiations had occurred. It is also noted that there is no allegation or evidence that the sum (if any) sought by the Registrant was in excess of the Registrant’s documented out of pocket costs.

Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s rights.

In its brief submission, the Complainant quotes a number of cases from proceedings under the UDRP, none of which involve either party in these proceedings. The test for an abusive registration under the UDRP is not the same as under the DRS Policy and these references are unhelpful. Despite the fact that the DRS is not a precedent-based system, there are a multitude of decisions dealing with abuse under the DRS which could have been cited had the Complainant been so minded. 

However, given the existence of the Complainant’s rights, the evidence of abuse given and the fact that no counter argument has been advanced by the Registrant, the Expert does not consider that these defects in the complaint are material to the Decision. 

8.	Decision

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name lizclaiborne.co.uk  be transferred to the Complainant.

David Flint

19 January 2006