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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Medea International Ltd v Altaire [2006] DRS 3430 (28 March 2005) URL: http://www.bailii.org/uk/cases/DRS/2006/3430.html Cite as: [2006] DRS 3430 |
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Complainant: Medea International Limited
Country: GB
Respondent: Altaire
Country: GB
pressit.co.uk
14/02/2006 Dispute entered into system
15/02/2006 Hardcopies received in full
16/02/2006 Complaint validated
16/02/2006 Complaint documents generated
13/03/2006 No Response received
23/03/2006 Fees received from Complainant
24/03/2006 Mr Chris Tulley selected as expert
None
• The Complainant is the proprietor of UK Trade Mark Registration No. 2153461 PressIT registered in Classes 8, 9 and 16 registered with effect from 12 December 1997 and Community Trade Mark Registration No. 00707869 PRESSIT registered in Classes 8, 9 and 16 on 23 April 1999 having been applied for on 12 December 1997.
• The Respondent registered the Domain Name on 18 October 1999.
• On 23 December 2005, 9 January 2006 and 13 January 2006 the Complainant wrote to the Respondent (at PO Box 482, Richmond, TW9 4SL, United Kingdom) to request the transfer of the Domain Name but received no reply.
Complainant:
In summary the Complainant says that:
• The Respondent has registered the Domain Name, which incorporates the Complainant's registered trade marks, and the Complainant is concerned that the Domain Name will be used by the Respondent to suggest an association with the Complainant or to mislead the Complainant's customers.
• The Respondent has deliberately registered the Domain Name to take unfair advantage of the Complainant's trade marks.
• The Domain Name registration blocks the Complainant from using the Domain Name to promote its goods under its trade marks PressIT and PRESSIT.
Respondent:
The Respondent has not responded to the Complaint.
General
In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration.
These terms are defined in the Nominet UK DRS Policy 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.
• Abusive Registration means 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.
Complainant's Rights
The Complainant has provided details of two trade mark registrations for PRESSIT and PressIT, the latter being a "Device & Word" mark limited to the colours red and white. In the absence of any challenge from the Respondent those trade mark registrations establish, on the balance of probabilities, that the Complainant does have Rights in the name "Pressit", being a name or mark which is identical to the Domain Name when one ignores the .co.uk suffix.
Abusive Registration
From the matters relied on by the Complainant in its submissions the following parts of paragraph 3 of the Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) are potentially relevant:
Paragraph 3 a. i. B "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights"
Paragraph 3 a. i. C "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant"
Paragraph 3 a. 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 Complainant says that Respondent's registration blocks the Complainant from using the Domain Name to promote its goods under its trade marks PressIT and PRESSIT. As a statement of fact that cannot be argued with, but the fact that the registration of the Domain Name by the Respondent has the consequence of preventing the Complainant from using it is not enough to show that it is an Abusive Registration. It is noticeable that the Complainant does not even allege that the Respondent registered the Domain Name for the purpose of a blocking registration nor does it provide any evidence that could have supported such an allegation. The name "pressit" does not appear to be inherently distinctive of any one thing or any one business and there is nothing in the evidence provided by the Complainant to indicate any reason why the Respondent was not perfectly entitled to have got in before the Complainant to register the Domain Name in 1999.
The Complainant says that the Domain Name was deliberately registered by the Respondent to take unfair advantage of the Complainant's trade marks and it is concerned that the Domain Name will be used by the Respondent to suggest an association with the Complainant or to mislead the Complainant's customers.
However, the Complainant has provided no evidence whatsoever to support this allegation and its concern. It has not provided details as to the nature of its business or even whether the Complainant, which is called Medea International Limited, actually has any business using the trade marks or indeed any business at all. I am left to surmise from bare details of the trade mark registrations (in classes 8, 9 and 16 covering such things as labelling apparatus, computer software, compact discs, printed matter and labels) what the Complainant's business may be or was intended to have been when the trade mark applications were made.
No details are given as to any actual use of the Domain Name by the Respondent at all let alone any use or threatened use that might have prompted the Complainant to raise its concerns more that 6 years after the Domain name was first registered. It is also telling that the letters written by the Complainant's trade mark attorneys to the Respondent in December 2005 and January 2006 merely said that the Complainant had recently become aware of the Domain Name registration and they were writing to "enquire whether [the Respondent] would consider assigning this domain name to [the Complainant]". The letters also offered to pay the Respondent's reasonable costs.
They do not sound like letters written on behalf of a Complainant that believes a third party has deliberately registered a domain name as a blocking registration or has an intention to use it in a manner to suggest an association with the Complainant or to mislead the Complainant's customers or otherwise to take unfair advantage of its trade mark rights.
The Domain Name could be used in relation to a range of different types of business that have no relevance at all to the types of goods covered by the Complainant's trade mark registrations. A business providing laundry/ironing services is one which springs readily to mind.
In the circumstances, the evidence provided by the Complainant does not satisfy me, on the balance of probabilities, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the name "pressit", being a name or mark which is identical or similar to the Domain Name, but it has not proved, on the balance of probabilities, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
In the circumstances I order that no action be taken in respect of the Domain Name.
Chris Tulley
28 March 2005