Nominet UK Dispute Resolution Service

DRS 03775

Timberland Flooring Services Ltd v Timberland Flooring Co

Decision of Independent Expert

1.	Parties

Complainant:		Timberland Flooring Services Ltd
Country:		GB

Respondent:		Timberland Flooring Co
Country:		GB

2.	Domain Name

timberlandflooring.co.uk (“the Domain Name”)

3.	Procedural Background

The Complaint was lodged with Nominet on 21 June 2006.  Nominet validated the Complaint and informed the Respondent on 26 June 2006 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days (until 18 July 2006) to submit a Response.  The Respondent did not file a Response.  On 21 July 2006 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 7 of the Nominet DRS Policy Version 2 ("the Policy").

On 28 July 2006 Nominet appointed Andrew Clinton ("the Expert").  The Expert has confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as Expert in this case, and further confirmed that he knows 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 

The Respondent has not submitted a Response to the Complaint.

Under paragraph 15b of the DRS Procedure Version 2 ("the Procedure") if, in the absence of exceptional circumstances, a party does not comply with any time period laid down in the Policy or the Procedure, the Expert will proceed to a decision on the Complaint.

Under paragraph 15c of the Procedure if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or Procedure (in this case by declining to file a Response) the Expert will draw such inferences as he considers appropriate.

5.	The Facts

Timberland Flooring Company Limited (“TFC”) was incorporated on 20 February 1996 under the name Nordic Flooring Company Limited and changed its name to Timberland Flooring Company Limited on 12 June 1997.  

TFC registered the domain name www.timberland.co.uk on 16 March 1998.
 
The Complainant was incorporated on 25 March 2004 as Roselyn Trading Limited and changed its name to Timberland Flooring Services Limited on 13 April 2004.

TFC went into liquidation on 14 May 2004.  Pursuant to an agreement dated 25 May 2006 between the Complainant and TFC acting by its liquidators (“the Sale Agreement”) the Complainant purchased certain assets defined as “the Transferred Assets” which included the goodwill and all Intellectual Property of TFC.  

The domain name www.timberland.co.uk is registered to the Complainant following a transfer from TFC in May 2006.  The Complainant (and before it TFC) has used the domain name www.timberland.co.uk to sell wooden flooring.

The Domain Name was registered on 20 July 2004 in the name of the Respondent. 

6.	The Parties’ Contentions

Complainant

The Complaint, so far as is material, is as follows:-

The Complainant has the rights in the Domain Name because it formally trades under the corporate identity of Timberland Flooring Services Ltd, and previously under the name Timberland Flooring Company Ltd (Exhibit TFS 01), and had much earlier registered the appropriate Domain name to reflect that identity. 

The Complainant believes that this is an act of ‘passing off’ in that the public could be easily confused or misled, that dealing with the Respondent they genuinely believed they were dealing with the Complainant who advertises nationally through TV, Radio Google ‘pay-per click’ campaigns, and a multiplicity of broadsheet press and glossy magazine adverts. (Exhibit TFS 02) The Respondent has no such public or national coverage The Complainant believes that the Respondent is seeking to benefit from the Complainant’s considerable investment in name and brand building over a 10 year period where as the Respondent appears to have only latterly seen fit to obtain a web presence inside the last 2 years Of all the names available to the Respondent they have chosen to register in the name of one of the UK brand leaders 

The Complainants market area has always been highly specific in the provision of wood flooring. Timberland Flooring Co Ltd was formed 20th Feb 1996 Co No 03161911 (Exhibit TFS 03) Whilst Timberland Flooring Co Ltd went in liquidation 14th May 2004, trading continued unbroken via a sister company Timberland Flooring Services Ltd (incorporated 25th March 2004, Co No 05083815). (Exhibit TFS 04) of the same trading address with the same directors eventually becoming the legal successor company on the formal purchase of the liquidated company’s assets from the liquidator, Vantis Redhead & French by Deed of Sale on 25th May 2006 . (Exhibit TFS 05) As well as purchase of stocks, goodwill etc, Timberland Flooring Services Ltd also purchased the Intellectual Property, database, website and rights to such within the Deed of Sale (Exhibit TFS 06) This was formally transferred and acknowledgement received from Nominet dated 31/05/06. (Exhibit TFS 07) 

The Complainant has advertised continuously in the past using the name Timberland and has spent in the order of £ 3,000,000 over this period (Exhibit TFS 08) Our web presence as www.timberland.co.uk was first registered 16th March 1998 running uninterrupted through to the present. The Complainants first site went live late April 1998.  Designed by Philip Warr of Warrdesign and archived:

http://www.warrdesign.net/index.php?option=com_wrapper&Itemid=30 (Exhibit TFS 09) 

This was further re-worked by Axion Communications Nov 2002 (Exhibit TFS 10) As part of our development to expand into associated areas of the wood flooring market we formed Timberland Group Holdings Ltd date of formation 16/02/2000 Co No3927606 Timberland Franchising Ltd date of formation 25/02/1999 Co No3720133 Timberland Decking date of formation 11/02/2000 Co No3923564 Timberland Flooring Services Ltd date of formation 25/03/2004 Co No5083815 In recognition of the value of the business considerable sums have been invested in the promotion of the name and brand in this highly specialised sector of the wood flooring industry (Exhibit TFS 08) 

Whist it is fully recognised that this is not a trade marks dispute, and nor do I purport it to be such, nevertheless the identity and ‘passing off’ arguments posed in the following case have, I believe significant bearing on our assertion that Domain Name in the hands of the Respondent is an Abusive Registration The case documentation is available in full at the following site, www.patent.gov.uk/tm/legal/ decisions/inter1999/o18499.pdf I have taken the liberty of appending abstrations from the body of the judgement dated 5th July 1999 as adjudicated by Mr M Reynolds for the Registrar, The Comptroller General. As such I believe this becomes part of the body of English law in precedent terms TRADE MARKS ACT 1938 ( as amended) AND TRADE MARKS ACT 1994 IN THE MATTER OF APPLICATION NO. 1490994 BY ROCFORM LTD TO REGISTER THE MARK TIMBER JACK IN CLASS 25 AND IN THE MATTER OF OPPOSITION THERETO UNDER NO. 43353 BY THE TIMBERLAND COMPANY ………..The matter, therefore, resolves itself into a comparison of the marks themselves, that is TIMBERLAND and TIMBER JACK. I was referred at the hearing to the well known test propounded by Parker J in Pianotist Co's application. I accept that this is the proper test to apply. The relevant passage reads as follows:- "You must take the two words. You must judge of them both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of these trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say - not necessarily that one will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public, which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case." 

And follows ….For the sake of clarity, with no wish to alter any meaning or implication, I have substituted the original ‘Opponent’ and ‘Applicant’ with Complainant and Respondent respectively…… …….De Cordova v Vick 1951 RPC 10) that customers rarely meet marks under such conditions. I have already indicated that I regard TIMBER- as a strong and memorable element. The fact that it is also the first element of the respective marks adds weight to the Complainant’s concerns (see TRIPCASTROID 42 RPC 264). I take Ms Reid's point about the conceptual differences………… as both marks suggest something to do with a particular subject namely timber. I am not persuaded that any conceptual difference removes any risk of confusion. However trade marks are for use in the marketplace not as subjects for abstract debate. Whilst it is sometimes necessary to rationalise and give expression to factors influencing one's views of marks it is at the end of the day the likely impact of marks on customers that must be the guiding consideration. In that respect I remain concerned that imperfect recollection of the totalities combined with the strength of the first elements may result in confusion particularly where goods are being purchased on the basis of imperfectly remembered recommendation. The onus is on the Respondent to persuade me otherwise. In the event they have failed to do so and I am of the view that a sufficient number of persons will have cause to wonder whether the goods emanate from the same trade source and that that risk poses a real tangible danger of confusion. It also follows that I do not accept the Respondent’s submissions that confusion will not arise because the parties operate in different areas of the …….. trade as evidenced by the product pricing. It is both difficult to segment markets in this way and inconsistent with the notional nature of the test. The Complainant, therefore, succeeds under Section 12.

Remedies Requested

Transfer

Respondent

The Respondent did not file a Response.

7.	Discussion and Findings

General

Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities; firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

Rights are defined in the Policy as including, but not limited to, rights enforceable under English law.  This is usually demonstrated by reference to a trade mark registration or evidence of active trading using the name or mark in question. 

The Complainant acquired the intellectual property rights of TFC under the Sale Agreement and relies upon the goodwill generated by TFC in the name “Timberland Flooring” and, since the liquidation of TFC, goodwill in that name generated by its own activities.  The Complainant relies upon the extensive promotion of the brand “Timberland Flooring” nationally through TV, radio, newspapers, magazines and web based media.  The Complainant has produced copies of its brochures that show that it promotes wood flooring under the brand “Timberland Flooring”.  The Complainant says that it has spent in the order of £3,000,000 in advertising.  Exhibit “TFS08” is a schedule which give details of its advertising spend (totalling in excess of £1,400,000) in a wide variety of national newspapers and magazines over an extensive period.

The Complainant acquired the rights to the domain name www.timberland.co.uk which has been used since 1998 to promote its wood flooring.

The Expert is satisfied that the Complainant has Rights in respect of a mark “Timberland Flooring” which is identical to the Domain Name (disregarding the .co.uk suffix).

Abusive Registration

Abusive Registration is defined in paragraph 1 of the Policy to mean 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.

Non-exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy 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 Nominet; 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.

Under paragraph 3b of the Policy failure 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.

It is clear from the wording of the Policy that the list of factors at paragraph 3 is non-exhaustive and that a Complainant can succeed in proving Abusive Registration without the need to prove any of those factors.  However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.  

Non-exhaustive factors – paragraph 4 of Policy
There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy.  

The Respondent has not filed a Response and has therefore not rebutted the Complainant’s assertions in the Complaint or sought to rely upon any of the factors set out in paragraph 4 of the Policy.

Discussion and findings regarding Abusive Registration

Whilst recognising that this is not a trade mark dispute the Complainant refers to, and appears to place some reliance upon, trade mark cases.  A dispute referred to an Expert under the DRS does not turn on how the Courts might apply the established principles of trade mark law or passing off.  The dispute is determined by whether the Complainant has been able to prove to the Expert that both elements under paragraph 2 of the Policy are present on the balance of probabilities.  The Procedure makes it clear that the Complaint shall describe the ground on which the Complaint is made, including why the Domain Name should be considered an Abusive Registration in the hands of the Respondent and discuss any applicable aspects of paragraph 3 of the Policy.  The Complaint in this case makes no reference to any of the aspects of paragraph 3 of the Policy.  It would be far better if Complainants addressed any applicable aspects of paragraph 3 of the Policy in their Complaints rather than addressing aspects of cases decided under trade mark law.

The Complainant does say that the public could easily be confused or mislead but there is no evidence of actual confusion.
 
The print out from the Domain Name supplied by Nominet shows that the Domain Name was being used by the Respondent to promote a business under the brand “Timberland Flooring”.  There are references on the home page to the business names of Timberland Flooring Co and Timberland Ltd.  The goods and services being promoted are “all types of wood floor supplies and installation”.  The goods and services being promoted on the website appear very similar (if not identical) to those promoted by the Complainant.

The Respondent has registered a Domain Name that is identical (ie without any adornment) to the Complainant’s brand name.  In the absence of a Response there is no explanation from the Respondent as to why the Respondent decided to register a domain name that incorporates the Complainant’s brand name.  
 
The Domain Name has been used for the purposes of a website that offers products that are in direct competition with the Complainant’s products. The Respondent has failed to respond to the Complainant’s assertion that the Domain Name should be considered an Abusive Registration in the hands of the Respondent. 

The Expert takes into account the following factors that are present in this case:-

•	The Domain Name is identical to the mark in which the Complainant has rights.
•	The Domain Name has been used to promote goods and services which compete with the Complainant’s goods and services.
•	The Respondent has failed to give an explanation as to the choice of the Domain Name.

In the absence of a Response it is difficult to think of a reason why the Respondent would register and use the Domain Name if it were not with the object of trading on the back of the Complainant’s reputation and thereby taking unfair advantage of the Complainant’s Rights.  The Expert finds that the second part of the definition of Abusive Registration is made out in that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.  

8.	Decision

The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name 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 be transferred to the Complainant.

Andrew Clinton 

Dated 11 August 2006