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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Paper Mill Shop Company Ltd v Chao Investments Ltd [2007] DRS 4253 (4 January 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4253.html Cite as: [2007] DRS 4253 |
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Nominet UK Dispute Resolution Service
DRS Number 4253
The Paper Mill Shop Company Limited
v
Chao Investments Limited
Decision of Independent Expert
| Complainants: | The Paper Mill Shop Company Limited |
| Country: | United Kingdom |
| Respondent | Chao Investments Limited |
| Country: | New Zealand |
papermillshop.co.uk - registered on 16 August 2004
The Complaint was lodged with Nominet on 27 November 2006. Nominet validated the Complaint and notified the Respondent of the relevant Complaint on 27 November 2006 and informed the Respondent that it had 15 days within which to lodge a Response.
No response was received from the Respondent.
On 20 December 2006 a further submission under Rule 13b was received from the Complainant and sent to the Respondent. No response to this additional submission was received from the Respondent.
No mediation having been possible, on 28 December 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.
The registrant is listed as a non-UK Corporation and uses the address: PO Box 37410 Auckland 1033 New Zealand.
The Expert notes that this address is the same as was used by the respondent in Case 3984 (postoffice.co.uk). The Respondent was the unsuccessful Respondent in Case 4219 (jhdonald.co.uk)
The Paper Mill Shop Company Limited, a subsidiary of James Cropper plc, was registered in the UK on 11 August 2000. (Company No. 04051783). James Cropper plc was incorporated on 29 November 1889 (Company No. 00030226) and has been long established as one of Europe's leading suppliers of coloured and specialist papers, with an annual group turnover in excess of £64,000,000.
The Paper Mill Shop is the retail arm of the business, with a chain of 23 shops throughout the UK, and an internet site which was established in May 2000. As well as providing information on shop locations, opening hours, new products, craft demonstrations and events at the shops, the website can be used to purchase a selection of products for delivery by mail order. the Paper Mill Shop is the trading name of the retail business, and was also registered as a Trade Mark (No. 2238655) of James Cropper plc in July 2000.
Since its incorporation the Paper Mill Shop has advertised the brand through merchandising in it's own retail shops, on the website, in arts and crafts publications, in promotional leaflets distributed via tourist information offices, in factory shop outlets and at exhibitions. It provides paper, card, and craft supplies under the Paper Mill Shop name as evidenced by prints from the internet site. The Paper Mill Shop has become an established supplier of papers and accessories in the UK craft market.
Complainant
The Domain Name, www.papermillshop.co.uk, registered by the Respondent in August 2004 has since been used in a manner unfairly detrimental to the rights of the Paper Mill Shop. Although registered in 2004, the site has only recently come to notice, as can be seen on the print-out of the web page the copyright for the current online format is 2006.
The Domain Name is confusingly similar to www.thepapermillshop.co.uk, and unfairly disrupts business. Customers and potential customers could unknowingly type the Respondent's website address, or choose the Respondent's website address from an internet search. The Respondent's site is a web directory containing links to some of the Paper Mill Shops direct competitors and also to unrelated content. Whilst purporting to be a site for Paper and Craft supplies UK, many of the sponsored links are to American websites. The Domain Name causes confusion, people could believe that the Domain Name is registered to, or operated or authorised by the Paper Mill Shop.
The Domain Name has been registered to Chao Investments Limited, trading as DHG, based in New Zealand. An email from Companies Office in New Zealand confirms that there is no record of Chao Investments Limited or the trading name DHG on the New Zealand companies register. (Appendix 9, item 1) It appears that the registration of the Domain Name has been made using false contact details.
The Complainant seeks transfer of the Domain Name.
Respondent
No response was received from the Respondent
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 has been trading under the name The Paper Mill Shop and has been known as such within the United Kingdom and has produced substantial evidence of its so doing. Its parent company has registered the trademark "the Paper Mill Shop". 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 each 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.
In the cases immediately before this Expert 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.
The use made by the Respondent of the Domain Name in the provision of a website the links from which are apparently to products of a type sold by the Complainant, in the opinion of the Expert satisfies the requirements of sub-paragraph C.
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 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 papermillshop.co.uk, be transferred to the Complainant.
David Flint
04 January 2007
