Nominet UK Dispute Resolution Service

DRS Complaint No 03214

Decision of Independent Expert

1.	Parties

Complainant:	Seiko U.K. Limited 	
Country:	GB	  

Respondent:	Paul Astley	

2.	Domain Name

seikowatches.co.uk

3.	Procedural Background

The Complaint was received in full by Nominet on 13 December 2005.  The Complaint was validated by Nominet and sent to the Respondent on that date.  Nominet informed the Respondent that it had 15 working days, i.e. until 6 January 2005, to respond to the Complaint.

By 10 January 2005, no formal Response having been received from the Respondent, Nominet wrote to the Complainant’s representative confirming that no Response had been filed and invited the Complainant to request an Expert Decision.

The Complainant paid the fee within the relevant time limit and the matter was duly referred to me, Simon Chapman, (“the Expert”) for an Expert Decision, following confirmation to Nominet that I knew of no reason why I 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 my independence and/or impartiality.

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a formal response to the Complaint.  From the papers that have been submitted to me by Nominet, it is apparent that they have sent the Complaint to the Respondent by post and e-mail to the contact details held on Nominet’s register.  

When registering a .uk domain name applicants agree to be bound by Nominet’s Terms and Conditions.  Clause 4.1 of those terms and conditions states that the registrant of the domain name shall:-

“4.1   give and keep us notified of your correct name, postal address and any phone, fax or e-mail information and those of your contacts (if you appoint any, see condition 5.2).  This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register”

In addition paragraph 2(e) of the Dispute Resolution Procedure (the “Procedure”)  states that:- 

“e. Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i.     if sent by facsimile, on the date transmitted; or
ii.    if sent by first class post, on the second Day after posting; or 
iii.   if sent via the Internet, on the date that the communication was transmitted;
iv.  and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.” 

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.  

I now move on to consider the consequences of the Respondent not submitting a response.
The Procedure envisages just such a situation and provides in Paragraph 15 that:-

“c.	If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate.”

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision. 

I will draw such inferences from the Respondent’s failure to respond as I think appropriate, but must keep in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say.

5.	The Facts

Seiko Kabushiki Kaisha (trading as Seiko Corporation), Seiko Watch Corporation and Seiko U.K. Ltd (the Complainant), are a group of companies referred to by the Complainant as the “Seiko Company”.  The Seiko Company was established in 1881 and has produced watches since 1924.  The UK subsidiary (the Complainant) was incorporated in 1971, although Seiko watches have been sold in the UK since the early 1960’s.

Seiko Corporation is the owner of various trade mark registrations for the mark “SEIKO”.  The rights in these registrations (and other rights) are licensed to Seiko Watch Corporation, which supplies the Complainant with SEIKO branded watches for exclusive distribution in the UK, and authorises the Complainant to use the SEIKO mark.

Seiko Company has extensively used the SEIKO mark in advertising, marketing and sales.  Last year Seiko Company spent more than £1.6m promoting the Seiko brand.

The Complainant is the registrant of the domain name <seiko.co.uk>, which gets over 1,800 hits per day. Seiko Corporation is the registrant of the domain name <seikowatches.com>, which is the primary domain name for the global operations of Seiko Watch Corporation.

Seiko Company is a world-famous watch manufacturer and its products are sold by jewellers and other watch retailers worldwide.  It has a global workforce of over 6,500 people with operations in almost every country in the world.

The Respondent became the registrant of the Domain Name on 16 November 2005.  It is directed to a website which has as its title the name “www.seikowatches.co.uk” and which contains a number of links to third party retailers of Seiko Company products, often by use of the mark SEIKO in the link.     
 
The immediate past registrant of the Domain Name was CHC Internet.  The whois details for the registration at that time show that the Registrant is “CHC Internet Trading As: Domain For Sale.” On 2 November 2005, the Complainant’s solicitors, Baker & McKenzie, wrote to Mr C Holland at CHC Internet asserting that Seiko Corporation is the owner of various trade mark registrations and further, that it “…has significant goodwill and reputation in the “SEIKO” brand in the UK and holds all the intellectual property rights in that brand.”.  Baker & McKenzie demanded that CHC Internet cease use of the Domain Name, transfer it to Seiko Corporation and make a contribution to Seiko Corporation’s costs.  No response to that letter was received.

Seiko Company became aware of CHC Internet’s registration of the Domain Name when an offer to sell the Domain Name was made.  On 14 October 2005, an email was sent to info@wesellseikowatches.com by Mr Ethan Jones, of Viewbargains.com.  His email stated “We own the domain name SeikoWatches.co.uk and are now selling it.  If you would like to purchase it for your business please feel free to get in touch.”

CHC Internet is located at an address in Manchester, as is MR C Holland.  Together they are the registrant of over 4,000 domain registrations, including a number in which they would not appear obviously to have any rights, including <disneylandtickets.co.uk>, <yahoo.co.uk>, <sonyshop.co.uk> and others. 

Mr C Holland t/a CHC Internet, is identified as the Registrant’s Agent in the present whois details.

The Parties’ Contentions

Complainant

The Complainant asserts that it has Rights in respect of a name and mark which are identical or similar to the Domain Name and the Domain Name in the hands of the Respondent is an “Abusive Registration” (as defined in the DRS Policy).

In support of the claim to Rights, the Complainant says that –

i)	Seiko Company has common law rights which arise out of its reputation and goodwill built up over many years of trading.

ii)	Seiko Corporation is the registered proprietor of numerous UK and Community Trade Marks, and the Complainant is the exclusive distributor of SEIKO watches in the UK.

ii)	Seiko Company, and the Complainant has legally protectable rights in its reputation and goodwill in the UK through the tort of passing off.

iv)	Seiko Company has legally protectable statutory rights through an action for trade mark infringement.

In support of the claim that the Domain Name is an Abusive Registration the Complainant says that -   

v)	The Domain Name takes unfair advantage of and causes unfair detriment to Seiko Company, and in particular the Complainant’s Rights, contrary to paragraph 3 of the DRS Policy.  The unfairness is evidenced by the confusion that will likely be caused by the domain name (DRS Policy para 3(a)(ii)), namely -

a)	Seiko Company’s brand reputation and goodwill, including their use of domain names, will lead internet users to expect the Domain Name to be directed to an authorised Seiko Company.    This is confirmed by the fist 50 results of a Google search being associated to Seiko Company in some way (The Game Group plc v Gareth Sumpter – DRS 2166 referred to in support);

b)	the Domain Name creates a likelihood of confusion in the internet marketplace, such that consumers and businesses are likely to be misled into believing that the Domain Name is connected to Seiko Company.  This is made more likely by the content of the website found at the Domain Name;

c)	the submissions made are consistent with the reasoning and outcome of a previous decision concerning the SEIKO brand (Seiko UK Ltd v Designer Time/Wanderweb - DRS 248);

d)	the use of a famous brand name in conjunction with its major product will lead to a likelihood of confusion (Deutsche Telekom AG v AD01 – DRS 456 in support)

vi)	Unfairness also results from the registration being made in order for the Domain Name to be sold to a competitor of Seiko Corporation (DRS Policy 3(a)(i)(A)), and specifically –

a)	CHC Internet clearly registered the Domain Name solely for the purpose of selling it to a third party or the Complainant, evidenced by the registration of other domain names incorporating well-known brands, and the offer to sell the Domain Name;

b)	the Respondent will have received the transfer of the Domain Name with notice of Seiko Company’s claims and is therefore tainted with the same brush;

c)	by virtue of CHC Internet being the agent of a Respondent in a previous DRS decision (Bausch & Lomb Incorporated v Andrew Jones – DRS 1869) it will have been aware of its obligation to comply with the DRS Policy when it transferred the Domain Name to the Respondent, and given the lack of response from CHC Internet to Baker & McKenzie’s letter of 2 November, the Complainant assumes that the Respondent is similarly aware.

vii)	The Domain Name was an Abusive Registration when registered by CHC Internet and remains one in the hands of the Respondent. 

Respondent

As indicated above, the Respondent has not filed a Response.

6.	Discussion and Findings:

General

To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Dispute Resolution Service Policy (“the Policy”), prove to the Expert on the balance of probabilities that:

(i)	it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and

(ii)	the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

Despite the absence of a response from the Respondent, the Complainant must make out its case to the Expert on the balance of probabilities.  It is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

Complainant’s Rights

Does the Complainant have rights?

As indicated above, it is necessary that the Complainant has Rights.  In the present case the Complainant is Seiko U.K. Ltd.  

The DRS Policy defines Rights as follows –

“Rights includes, but is not limited to, rights enforceable under English law.  However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business”

On the one hand the Complainant has referred to the existence of extensive and substantial rights in the SEIKO brand, which would clearly meet the definition of Rights as set out in the DRS Policy.  The Complainant asserts that the rights to which it refers are held collectively and individually by Seiko Corporation, Seiko Watch Corporation and itself.  It is at times confusing as to exactly who it is being asserted has the rights that are being claimed.  Variously the claim refers to the Seiko Company, a term which as indicated above encompasses all three legal entities referred to in the Complaint, and at times to the entities separately.  Ultimately it is expressly asserted that “The Seiko Company, and in particular the Complainant, has legally protectable rights in its reputation and goodwill in the UK through the tort of passing off.”  The Complaint is signed by Baker & McKenzie as the authorised representative for the Complainant.  It therefore appears at face value that the Complainant does have the necessary Rights, to found the Complaint.  

However, on the other hand in the letter written from Baker & McKenzie to Mr Holland at CHC Internet dated 2 November, they purport to act for Seiko Corporation, which are identified as the owner of various trade mark registrations.  They go on to say that “Our client also has significant goodwill and reputation in the “SEIKO” brand in the UK and holds all the intellectual property rights in that brand.”  This appears at face value to contradict the Complainant’s claim to Rights.

The Decision of the Appeal Panel in Seiko UK Ltd v Designer Time/Wanderweb - DRS 248, dealt with a similar issue.  In it the Panel said –

“The requirement to demonstrate ‘rights’ is not a particularly high threshold test.  It is satisfied in our view by the assertion of Seiko UK Limited that it is duly authorised by the trade mark owner to use the mark and to bring the Complaint.  Where a complainant is a subsidiary or associated company of the trade mark proprietor, such an assertion will in our view generally be sufficient to demonstrate ‘rights’ in the absence of any good reason to doubt the veracity of that assertion.  Wanderweb have not made out any such reason.”

Although the Complainant does not expressly assert in the present Complaint that it is authorised to bring the Complaint, I am mindful that it does assert that it is the subsidiary of Seiko Corporation, and that it shares the same representative in Baker & McKenzie.  I am therefore satisfied for the purposes of the DRS, that the Complainant does have Rights in a name or mark similar to the disputed Domain Name <seikowatches.co.uk>.

However, I think it appropriate to record the fact that Complainants should not necessarily assume that Experts will be so ready to assume the existence of rights in such circumstances, and they run the risk of having their Complaints rejected by not joining the rights owner to the Complaint, or by stating the claim to rights more clearly and without contradiction.

Abusive Registration

I now go on to consider the extent to which the disputed Domain Name <seikowatches.co.uk> is an Abusive Registration.

The Complainant asserts that the registration of the Domain Name is an Abusive Registration by virtue of DRS Policy 3(a)(i)(A), (paragraphs (vi) (a)-(c) and (vii) above refer).  The relevant part of the Policy states that a registration may be abusive where it has been made by the Respondent  -

“for the purpose 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”>

It is evident from the submissions made by the Complainant, that it believes the activities of the previous registrant were abusive and that the Domain name has been transferred to the existing registrant to avoid the consequences of a DRS complaint, or other enforcement measures taken by Seiko Company.  It may be the case that the actions of the original registrant, CHC Internet, were abusive and I have some sympathy for the suggestion that the transfer to the present registrant and the Respondent to this Complaint was made with the intention of avoiding or complicating recovery proceedings by Seiko Corporation.  However, there is in my opinion insufficient evidence to determine this complaint against the Respondent on the basis of assumption, without any hard evidence being presented by which the present registrant can be ‘tainted with the same brush’ as requested by the Complainant.  

The Complainant must prove that on the balance of probabilities the registration of the Domain Name is abusive.  Under this ground, and given the lack of evidence confirming the relationship between the previous registrant and the Respondent, I do not believe that the Complainant has succeeded with its claim.

It may be said that this puts Complainants at a disadvantage, both in terns of convenience and cost.  It may encourage them to instigate DRS proceedings rather than seek to resolve disputes via correspondence first.   This may be regrettable where there is a link between primary and secondary registrants who are transferring the domain name as an intended ruse to complicate recovery proceedings.  However set against that has to be the damage that may be inflicted if domain names are transferred to Complainants based upon assumptions founded on inadequate supporting evidence.

The Complainant further asserts that the registration of the Domain Name is Abusive on the ground provided for in DRS Policy para 3(a)(ii), (paragraph (v) above refers).  The relevant part of the Policy states that a registration may be abusive in –

“Circumstances indicating that the Respondent is using the Domain Name in an way which has confused people or businesses into believing that the Domain Name is registered to, operated by, or otherwise connected with the Complainant.” 

The provision referred to uses the word “has”.  The natural interpretation of the provision therefore, is that for this ground to be made out it will be necessary for actual confusion to have taken place, and evidence provided accordingly.  In the earlier Decision of the Appeal Panel that was in fact the case, and evidence was presented from customers of the Complainant confirming that confusion had arisen.
In the present case no such evidence has been submitted and as a result I find that this ground of complaint also fails.

However that is not an end of the matter because the grounds of complaint set out in the DRS Policy are a non-exhaustive list of factors which may evidence that the Domain Name is an Abusive Registration.  In those circumstances, and notwithstanding that no evidence of actual confusion have been submitted, I believe that it is open to me to decide whether the Respondent is using the Domain Name in an way which is likely to confuse people or businesses into believing that the Domain Name is registered to, operated by, or otherwise connected with the Complainant.

The Complainant asserts that there is a likelihood of confusion, and at the root of those assertions is the fact that they have a well known brand, and its use as part of the Domain Name will lead to confusion.

The Complainant refers to a number of previous decisions, although I have not found these particularly helpful in the present Complaint.  The first, The Game Group plc v Gareth Sumpter – DRS 2166, is cited in support of the Complainant’s submission that because the first 50 results on a Google search relate to the Seiko Company, internet users will expect the Domain Name to be directed to an authorised Seiko Company.  In the Game decision reference was made by the expert to evidence of search results, but this was in the context of determining whether the Complainant in that matter had Rights, not whether the use of the domain name in dispute was an abusive registration.  In my view users of the internet are used to receiving very mixed results, and I do not believe that the fact of search results returning listings which are linked to an authorised associate of Seiko Company is of itself confirmation that the registration or use of the Domain Name is Abusive.

The Complainant also refers to the previous DRS Decision concerning SEIKO (Seiko UK Ltd v Designer Time/Wanderweb - DRS 248), and suggests that its submissions are consistent with the reasoning and outcome of that decision.  For the reasons given above, I do not agree.  The decision in that matter was based upon evidence of actual confusion, and the panel expressly determined not to set out any general rules governing when a third party can make ‘legitimate’ use of the trade mark of a third party as a domain name.

Additionally the Complainant asserts that the use of a major brand in conjunction with its major product will lead to a likelihood of confusion.  In support of this proposition the Complainant cites Deutsche Telekom AG v AD01 – DRS 456.  However that is a case that was determined on the basis of the registration being made primarily for the purposes of selling, renting or otherwise transferring the domain name, and/or being part of a pattern of Abusive Registrations.

In the present case the Respondent has registered and is using a domain name that consists of the Complainant’s trade mark, in conjunction with a word which describes the products sold under that mark.  The domain is pointing to a website which replicates the domain name as a title to the site, and contains a number of links to third party websites.  It is not obviously apparent from the site whether the content is authorised by Seiko Company or not.  The Complainant is part of a group of companies that has a substantial presence on the internet, and the main presence of one of them, Seiko Watch Corporation, is via an identical domain name seikowatches.com, save for the suffix.  

In my opinion, given the facts and matters set out above, the use of the Domain Name is likely to lead to confusion as to whether the activities being conducted thereunder are associated with the Complainant.  I further believe that the use of a mark as well known as that of the Complainant, in conjunction with a term describing the products sold thereunder will almost always be an abuse of the rights held by the proprietor of the mark.  Consumers and customers are likely to expect that domain names identical to well known marks, and/or domains that encompass the mark and a term descriptive of products sold under the mark, will be directed to the mark owner, absent any other words or terms used in the domain name.

7.	Decision

For the reasons set out above, I find that the Complainant does have Rights in respect of a name or mark which is similar or identical to the disputed Domain Name <seikowatches.co.uk>, and that the Domain Name in the hands of the Respondent is an Abusive Registration.  The Complaint therefore succeeds. 

The disputed Domain Name <seikowatches.co.uk> should be transferred to the Complainant.

Simon Chapman

7 February 2006