Gravytrain Limited -v- Decon (UK) Ltd

Nominet UK Dispute Resolution Service

DRS 04128

Gravytrain Limited -v- Decon (UK) Ltd

Decision of Independent Expert

1.	Parties:

Complainant:	Gravytrain Limited
	Hampton Hill
	
Respondent:	Decon (UK) Ltd
	London

2.	Domain Name:

worldwidewives.co.uk ("the Domain Name")

3.	Procedural Background:

The Complaint was received by Nominet on 25 October 2006.  Nominet validated the Complaint and sent a copy to the Respondent.

A Response was received by Nominet on 16 November 2006 and a copy forwarded to the Complainant.

A Reply was received by Nominet on 22 November 2006 and a copy forwarded to the Respondent.

On 22 December 2006 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to the Nominet UK Dispute Resolution Service Policy ("the Policy").

Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and duly appointed the undersigned as the Expert with effect from 29 January 2007.

4.	The Parties' Contentions:

Complainant:

The Complainant's submissions can be summarised as follows:

1.	The Complainant has rights in a trade mark which is identical or similar to the Domain Name:

(1)	The Complainant has traded under the name WorldWideWives since 7 July 1999, providing online adult dating and profile services.

(2)	The Complainant has a registered European Union trade mark (CTM) for WORLDWIDEWIVES (number 4552733).  It also has a pending trade mark application in the United States for the brand WORLDWIDEWIVES.

(3)	In addition, the Complainant has filed the following relevant documents as exhibits to the Complaint:

(a)	copy invoices for web hosting of its website dating back to 1999;

(b)	documents evidencing that it had a WorldWideWives.com stand at the Erotica 2002 exhibition at Olympia in November 2002 (including an invoice for stand space; photographs of the stand; business cards and other promotional materials); and

(c)	a copy of the registration certificate for its CTM.

2.	The Domain Name is an Abusive Registration in the hands of the Respondent:

(1)	The Respondent registered the Domain Name to take unfair advantage of the Complainant's efforts to promote the mark WorldWideWives on the internet, in turn hoping to generate income for itself off the back of the WORLDWIDEWIVES mark.

(2)	The Respondent is actively trying to sell the Domain Name, using the services of sedo.co.uk.

(3)	The Domain Name has until recently been pointed to an affiliate program run by Affiliate Future for the Complainant's competitor, SexInTheUK.com in an attempt to sign up and generate income from visitors thinking that they have reached the Complainant's site.

(4)	The Respondent is engaged in a pattern of abusive registrations of well-known names and/or trade marks to which it has no apparent right.  Some examples of these are: thismoney.com, ikae.com, tomascook.com, goole.co.uk and jevees.co.uk.

(5)	Relevant documents amongst the exhibits to the Complaint include:

(a)	a screenshot showing the Domain Name being diverted to a website at naughtywives.co.uk;

(b)	a further screenshot showing the Domain Name being listed as for sales on the Sedo website;

(c)	a further screenshot (dated 28 September 2006) for the Domain Name, showing links to several adult websites with no apparent connection to the Complainant.

(6)	The Complainant also exhibits to the Complaint a separate document entitled "Respondent's History of Abusive Registrations".  In summary, this document puts forward the following by way of evidence/submissions:

(a)	the Respondent is the subject of a UDRP decision whereby it was directed to transfer to Associated Newspapers the domain name thismoney.com;

(b)	with regard to the Respondent's domain name ikae.com, the Complainant quotes comments made by the Respondent on chat room sites, including "think it has something to do with furniture;", and, on the prospect of being pursued by Ikea, "I'll give them a good run round the bush for sure";

(c)	with regard to the Respondent's domain name tomascook.com, the Complainant quotes a chat room post of the Respondent under the title of "Advice on trademark infringement", namely "I don't want to give it to them, can't I just put a company that is called TomasCook Ltd so that I have a legitimate right to the name??";

(d)	a screenshot for ikae.com, which has links to various furniture and furnishing websites (none of which being Ikea);

(e)	a Whois record dated 5 October 2006 showing the domain name ikae.com as being owned by the Respondent;

(f)	screenshots showing the chatroom comments made by the Respondent in relation to the domain name ikae.com (as referenced above).

Respondent:

The Respondent's submissions can be summarised as follows:
(1)	The term "worldwidewives" is a generic and descriptive name, which consists of two words "worldwide" and "wives", both found in the English dictionary.  The term "worldwide wives" refers to wives all around the world.  It cannot be protected by a trade mark because it is generic and in common use by people in everyday situations.  This is why the Complainant had to file a trade mark application for WORLDWIDEWIVES (all in one word).

(2)	The Domain Name was registered on 5 February 2003, long before the Complainant registered its trade mark on 8 August 2006.

(3)	The Complainant claims that it is known as "Worldwidewives", but it is in fact known as "Worldwidewives.com", as can be seen from all the pictures, banners, merchandise and stationery.  The Complainant has been branding its business as Worldwidewives.com and not Worldwidewives.

(4)	The Complainant claims that it has been trading since 7 July 1999.  However, the Complainant's website was set up in November 2001.

(5)	With regard to the alleged pattern of abusive registrations, all of the examples put forward by the Complainant are vague and most, if not all, just speculation.  The Respondent has made a great effort in avoiding any disputes with other companies by screening its current portfolio regularly and de-registering any names that could be seen as abusive.  The Domain Name was retained because of its generic and descriptive nature.  With regard to the domain name ikae.com, a Google search under that term brings up 132,000 pages of websites using that term in various languages, some being names of people, designers, a band name, etc.  A company such as Ikea cannot claim rights to the domain name ikae.com.  As for the Respondent's domain name jevees.co.uk, Jeeves is a common name usually connected with a butler, thus many companies associate it with reputation and quality, there being over 30 such UK companies.  With regard to the domain name goole.co.uk, Goole is the name of a town and port in East Yorkshire.  In answer to the chatroom evidence put forward by the Complainant, this dates back to 2002-2003.  All of the posts have been edited as it seems to be abused by people twisting the Respondent's words.  The opinions of other chat room posters should not be taken into account.

(6)	The Complainant is trying to reverse-hijack the Domain Name by using its trade mark.

(7)	The Respondent has not at any time sought to infer or allege a connection between the Domain Name and the Complainant.

Reply

The Complainant's Reply can be summarised as follows:

(1)	Many popular Internet sites and registered trade marks are comprised of names found in the dictionary.  The Complainant sells specific adult-related dating services and holds a trade mark for this sector of the market.  The Respondent has been directly attempting to take advantage of this, by directing internet traffic to competitors of the Complainant.

(2)	The Complainant has been trading as WorldWideWives long before November 2001, as the documentation filed with the Complaint clearly demonstrates.

(3)	Regarding the Respondent's pattern of abusive registrations, no amount of distorted justification can conceal the Respondent's repeated bad faith in registering domain names which leverage off other companies' brands with a view to profit from selling similar services.  In addition, the Respondent does not even try to defend its incriminating actions and comments with regard to its domain names thismoney.com and tomascook.com.

5.	The Facts:

	The Nominet Records show that the Domain Name was registered on 5 February 2003.  

	Based on the parties' submissions and a review of the materials annexed to the Complaint, set out below are the main facts which I have accepted as being true in reaching a decision in this case, together with comments where relevant:

(1)	The Complainant has traded under the name of WorldWideWives/ WorldWideWives.com since 1999.  Even if I were to be wrong on this, the Respondent admits that the Complainant has been trading under its website since 2001, which is two years prior to the Domain Name being registered.

(2)	The Complainant has a European Union trade mark (CTM) registration for WORLDWIDEWIVES, registered in August 2006.  

(3)	That, at one point in time, the Domain Name was diverted to the website at www.naughtywives.co.uk, a site competitive with the Complainant's business.  

(4)	That the Domain Name has been listed on the Sedo website as being for sale.  

(5)	The fact that, as of September 2006, the website at www.worldwidewives.co.uk listed several links to adult websites with no connection to the Complainant.  

(6)	That the Respondent had to transfer to Associated Newspapers the domain name thismoney.com in accordance with a UDRP decision.  

(7)	That the Respondent has posted chat room comments relating to the domain name ikae.com, namely "think it has something to do with furniture" and "I'll give them a good run round the bush for sure".  Whilst the Respondent takes issue with any reliance being placed on third party comments on such chat room sites, it does not deny that it posted these comments itself.

(8)	That the website at www.ikae.com has links to several furniture websites, none being those of Ikea.  

(9)	That the Respondent posted a chat room comment relating to the domain name tomascook.com, namely "I don't want to give it to them, can't I just put up a company that is called TomasCook Ltd so that I have a legitimate right to the name??".  The Respondent does not deny this.

6.	Discussion and Findings:

General
Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
i	it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

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

Complainant's Rights

Disregarding the generic .co.uk suffix, the Domain Name is identical to the name "World Wide Wives" used by the Complainant.  Even if the Respondent is correct that the Complainant always uses the trading name "WorldWideWives.com", the Domain name is still clearly similar to that.

As for Rights, I have accepted that the Complainant has trade under the name WorldWideWives/WorldWideWives.com since 1999.  It has thereby established rights in that name.  (This would remain the case even if the Respondent were correct in saying that the Complainant has only actively traded sine 2001.).  In addition, the Complainant is the proprietor of a registered European trade mark for WORLDWIDEWIVES.

I therefore find that the first limb of paragraph 2 of the Policy is satisfied.

Abusive Registration

Paragraph 1 of the Policy defines an "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."

Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration.  The main factors which are of potential relevance in this case (all under paragraph 3a) are 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; ...

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".

Taking these factors in turn, the Respondent's submissions fail to convince me that, when it registered the Domain Name, it had any bona fide intention to make any genuine use of it.  In the light of all the evidence, it is likely that the Respondent's primary intention was to bring about a situation whereby the Complainant would offer to purchase the Domain Name for a significant sum (i.e. in excess of the Respondent's out-of-pocket costs directly associated with acquiring the Domain Name); and I find, on the balance of probabilities, that this was the case.

Moving on to the second factor, paragraph 3aii of the Policy (set out above) refers to actual confusion having occurred, namely people or businesses having believed that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.  Paragraph 3 is a non-exhaustive list of factors.  It has been held in previous Nominet decisions that a likelihood of such confusion arising in the future is also relevant, and I agree with this.  

The key question is accordingly whether the Respondent's use of the Domain Name has caused such confusion, or is likely to do so in the future.  In my view, by registering and using a Domain Name which is identical (or essentially identical) to the name/brand of the Complainant, the Respondent has in effect impersonated the Complainant.  When typing in the website address, www.worldwidewives.co.uk, it is clear that many, if not most people will be expecting to reach a website of the Complainant.  Even if, on reaching the other websites to which the Respondent has directed the Domain Name, it might become clear to any such person that it is not the Complainant's site, temporary confusion of that nature (commonly known as "initial interest confusion") is still relevant.  

The fact that the Respondent is using the Complainant's name to direct visitors to other websites means, on the balance of probabilities, that it will already have caused confusion to occur and/or that it will occur in the future, whether just "initial interest confusion" or also confusion of a more long-lasting nature.  

I therefore find that the second factor also applies.  It would apply even if the Respondent were to be making genuine use of the Domain Name.  In fact, as I have already found, I do not believe that this is the case.  Rather, it is likely that the Respondent has directed the Domain Name to other websites, including one directly competitive with the Complainant, in order to try to bring about a situation whereby the Complainant offers to buy the Domain Name from the Respondent.  

Turning finally to the third factor, in the light of the evidence put forward by the Complainant I find on the balance of probabilities that the Respondent is engaged in a pattern of abusive registrations and that the Domain Name is part of that pattern.  

Because of the findings which I have made, it is clear to me that the Domain Name was registered, and has been used, in a manner which took unfair advantage of, and/or was unfairly detrimental to, the Complainant's rights; and that it is therefore an Abusive Registration.

7.	Decision:

Having found that the Complainant has rights in respect of a name which is identical or similar 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 worldwidewives.co.uk be transferred to the Complainant.

Jason Rawkins	8 February 2007