Nominet UK Dispute Resolution Service

DRS 4267

STEPHEN JAMES v PRO-TURF EQUIPMENT LIMITED

Decision of Independent Expert

1.	Parties

Complainant:	Stephen James, Robert James and Robert Ghinn trading as Wessex Machinery and Wessex Machinery Sales 
Country:		GB

Respondent:		Pro-Turf Equipment Limited
Country:		GB

2.	Domain Name

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

3.	Procedural Background

The Complaint was lodged with Nominet on 1 December 2006.  Nominet validated the Complaint and informed the Respondent on 1 December 2006 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days to submit a Response.  The Respondent filed a Response on 28 December 2006.  The Complainant did not file a Reply.  On 30 January 2007 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 6 February 2007 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 (if any)

None.

5.	The Facts

The Domain Name was registered in the name of the Respondent on 19 November 2002.

The Complainant is, according to the Complaint, a long established and specialist supplier of agricultural and groundcare machinery and all-terrain vehicle equipment that is sold under the brand names “Wessex Machinery” and “Wessex Machinery Sales”.  The Complainant has the benefit of registered trade mark for the mark “WESSEX MACHINERY” and a number of other similar marks.  

The Respondent, Pro-Turf Equipment Limited, was incorporated on 1 October 1999 and, according to the Respondent, is a dormant company that has not traded for nearly 3 years.  Prior to that it sold machinery in the Wessex area.  The Respondent says that it will be restarting this company next year under the name Wessex Machinery Hire Ltd.  

The Complainant says, amongst other things, that the Domain Name has no natural connection with the Respondent’s business.  The Complainant claims that the Respondent is using the Domain Name opportunistically and cynically to trade off the Complainant’s goodwill and says the Domain Name is being used to offer competing products for sale.  The Respondent denies that it is in competition with the Complainant.  The Respondent says that it is willing to pass on the Domain Name but at a realistic cost in excess of £150, which is the amount that the Complainant has offered.   

6.	The Parties’ Contentions

Complainant

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

1. 	The Complainants' business is a very well-known specialist in the fields of agricultural and groundcare machinery as well as All-Terrain Vehicle Equipment which they sell under the brand names “Wessex Machinery” and “Wessex Machinery Sales. The Complainants are the registered proprietors of the registered trademarks “Wessex”, "Wessex Farm Machinery", "Wessex Machinery" and "Wessex the Right Choice" in the UK in classes 7 and 12 under Number 2150122 (annex 1). The Complainants also have unregistered rights in the name “Wessex Machinery” by virtue of their extensive use of the name and substantial reputation and goodwill under it. The Complainants' business is based in Bordon in Hampshire and is very well known. For the sake of clarity, it should be stated that Bordon lies within the boundaries of the ancient County of Wessex. 

2. 	The Complainants' turnover under the "Wessex Machinery" name in 2006 was approximately £2.4 million. Since the late 1980s, the Complainants have published A4 brochures featuring the name "Wessex Farm Machinery" and since 1998 just "Wessex Machinery". Currently the Complainants print about 30,000 brochures (see annex 2) per annum which are distributed to its distributors throughout the United Kingdom. In the last financial year it spent over £10,000 on printing of these brochures. 

3. 	The name Wessex Machinery appears on stands hosted by distributors of the Complainants at many groundcare exhibitions. 

4. 	The Complainants have advertised widely for many years in well-known industry publications such as "Amenity Machinery and Equipment", "Farm Contractor & Large Scale Farmer", "Horticulture Week" and "Farmers' Weekly" (see annex 3). In the last financial year it spent about £30,000 on advertisements of this nature. 

5. 	The Complainants started using the name "Wessex Farm Machinery Sales" in 1972 when the business was purchased and dropped the word "Farm" in 1998-1999 since which time it has traded exclusively under the names "Wessex Machinery Sales" and "Wessex Machinery" (annex 2 contains samples of the Complainants' price lists). The word "Wessex" on its own is also used in the Complainants' marketing literature in the context of the registered trademark referred to above. 

6. 	Whereas the words "Wessex" and "Machinery" are descriptive in isolation, their long-standing and much publicised use in association with the Complainants' business have made them distinctive of the Complainants' business in the same way as the use of a standard fruit-shaped container were deemed distinctive in the case of Reckitt & Colman Products Ltd v Borden Inc. [1990] 1 All ER (annex 6). 

7.	The Domain Name is identical to the Complainants' principal brand name and trade mark. 

8.	The Respondent registered the Domain Name on 19 November 2002. The contact details given are:- Pro-Turf Equipment Ltd Registrant type: UK Limited Company, (Company number: 3851878) Registrant's address: Oak Farm Nursery, Station Hill Winchfield, Hook RG27 8BX It is to be noted that the Domain Name resolves to a website for a business called "hymari.co.uk" which competes with the Complainants' business in the fields of All-Terrain Vehicle equipment and groundcare machinery. 

9. 	The Respondent’s registration and use of the Domain Name have caused and continue to cause significant confusion and disruption to the Complainants' business. It is very probable that people seeking the Complainants' business enter the Domain Name in their internet browsers and end up at the Respondent's website. It is also highly likely that emails intended for the Complainants end up with the Respondent because this is an obvious address for someone working at the Complainants. The Complainants have recently registered the .com domain name to avoid further problems. 

10. 	The Complainants are Plymouth Brethren who do not believe in the use of the internet for commercial gain but this does not excuse the use of the Domain Name by the Respondent, a competitor, opportunistically and cynically to trade off the Complainants' goodwill and exploit their religious beliefs. The Respondent's faxed letter of 6th October 2006 (annex 4) concedes that the Respondent is aware that the Complainants do not have a website). The Google search results dated 16th November 2006 (see annex 5) whilst evidencing the reputation of the Complainants do not take account of those people who enter the Domain Name directly into the browser address bar without performing a Google search or a search via another search engine. Moreover, the Respondent's suggestion in its letter that it has not benefited from its registration of the Domain Name is ingenuous. It clearly and unfairly seeks to benefit from such registration. 

11. 	The Respondent’s registration and use of the Domain Name have been clearly detrimental to the Complainants' rights, and the only remaining question is whether this is unfair. As to this point: 

(a)	The Domain Name (apart from the generic.co.uk suffix) is, identical to one of the Complainants' trading names, i.e." Wessex Machinery" and almost identical to the other i.e. "Wessex Machinery Sales." and the impersonation by the use of an identical domain name can rarely be justified: see the Decision of the Nominet Appeal Panel in DRS 00389 Hanna-Barbera Productions, Inc -v- Graeme Hay (scoobydoo.co.uk). 
(b)	The Respondent's business has at no time been called “Wessex Machinery”. The combination of these two words is not innocent or inadvertent. In the fields of All-Terrain Vehicle Equipment and groundcare machinery in which both parties are involved, this combination of words is clearly and exclusively associated with the Complainants' business. 
(c)	The Respondent's business is situated is located about 20 miles away from that of the Complainants. This proximity increases the likelihood of confusion in the minds of the public. 
(d)	The contact email address given on the website to which the Domain Name resolves is info@hymari.co.uk and not one based on the Domain Name. This further demonstrates that the registration has no natural association with the Respondent's business. 
(e)	In the pre-penultimate paragraph of the Respondent's faxed letter of 6th October 2006 (annex 4), the Respondent cynically attempts to extort money from the Complainants on the basis that this will be a cheaper option than paying legal fees to resolve the matter. This is archetypal "cyber-squatting".

The Complainant seeks a transfer of the Domain Name.

Respondent

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

“Pro-Turf Equipment Ltd, is a non trading Dormant company, and has not traded for nearly 3 years, it has not sold the "Hymari" products as suggested, and therefore is not in anyway in competition with Wessex.

We will be restarting this company next year as Wessex Machinery Hire Ltd.

We are happy to pass this Domain Name on, but at a realistic cost, not the £150 offered.

Because of the Complainants religious believes they will not use this Domain Name, so I see no point in why they need it, Wessex is widely known as Wessex Farm Machinery, which is completely different from the Domain Name”.

Reply

The Complainant did not file a Reply

9.	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 active trading using the mark in question.  

The Complainant says that it has established substantial goodwill and reputation in the mark WESSEX MACHINERY (and similar marks using the word “Wessex”) over many years.  The Complainant has produced evidence to show that it has the benefit of a registered trade mark for the mark WESSEX MACHINERY which was registered on 5 November 1997.

The Complainant also relies upon its common law rights in the mark WESSEX MACHINERY by virtue of the extensive use of that name and refers to advertisements and promotional literature samples of which it has produced. 

The Complainant says that whereas the words “Wessex” and “Machinery” are descriptive in isolation, their long-standing and much publicised use in association with the Complainant’s business have made them distinctive of the Complainant’s business.  The Complainant asserts that in the fields of all-terrain vehicle equipment and groundcare machinery this combination of words is clearly and exclusively associated with the Complainant’s business.  There is no real challenge to that assertion from the Respondent and the Complainant has provided evidence of the amounts spent on printing and advertisements.  

The Respondent suggests that Wessex (a reference to the Complainant) is widely known as Wessex Farm Machinery, which it claims is completely different to the Domain Name.  Yet in a fax sent on behalf of the Respondent dated 6 October 2006 it is pointed out that if you type Wessex Machinery into a popular search engine such as Google of the first 50 site addresses 90% are listings for the Complainant, which rather goes to demonstrate that the mark Wessex Machinery is clearly associated with the Complainant.

The Complainant undoubtedly has rights in the mark WESSEX MACHINERY by virtue of the registered trade mark as well as common law rights derived from extensive trading and other activities associated with that mark.  Disregarding the .co.uk suffix, the Domain Name and the mark WESSEX MACHINERY are virtually identical.  The only difference is that there is no space in the Domain Name between the word WESSEX and the word MACHINERY but that is not a material difference.  

The Expert therefore finds that the Complainant has rights in respect of a mark that is similar  to the Domain Name and, therefore, the first limb of paragraph 2 of the Policy is satisfied.

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.

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 proving that any of those factors are present.  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 referred to any of those factors and only one of them has any possible relevance to the facts in this case as discussed below.  

Discussion and findings regarding Abusive Registration

The Complainant's case on Abusive Registration can be summarised as follows (the references below to paragraph numbers are to the relevant paragraph in the Complaint):-

•	The Domain Name is identical to the Complainant’s principal brand and trade mark (para. 7).

•	In the fields of all-terrain vehicle equipment and groundcare machinery in which both parties are involved, the combination of the words “Wessex” and “Machinery” is clearly and exclusively associated with the Complainant’s business (para.11b).

•	The Respondent’s business has at no time been called “WESSEX MACHINERY” and the use of these words in combination is neither innocent or inadvertent (para. 11b).

•	The Domain Name resolves to a website for a business called “hymari.co.uk” which competes with the Complainant’s business in the fields of all-terrain vehicle equipment and groundcare machinery (para. 8).

•	The Respondent has sought to opportunistically and cynically trade off the Complainant’s goodwill and exploit their religious beliefs (para. 10).  The Complainants are Plymouth Brethren (a religious movement founded in the latter half of the 19th century) and do not believe in the use of the Internet for commercial gain but that does not excuse the Respondent’s use of the Domain Name.  

•	The Respondent’s registration and use of the Domain Name has caused and continue to cause significant confusion and disruption to the Complainant’s business.  It is very probable that people seeking the Complainant’s business will enter the Domain Name in their internet browsers and end up at the Respondent’s website (para. 9).

•	The Respondent has cynically attempted to extort money from the Complainant on the basis that this will be a cheaper option than paying legal fees to resolve the matter.  The Complainant contends that this is archetypal “cyber-squatting” (para. 11e).

The Respondent’s case on Abusive Registration is that it is not in competition with the Complainant and has not sold “Hymari” products as alleged by the Complainant.  In a fax sent on behalf of the Respondent dated 6 October 2006 the Respondent says that when it was trading it was selling machinery in the Wessex area and did so for a number of years.  The Respondent says that it has been a non trading dormant company for nearly 3 years and will be restarting business next year as Wessex Machinery Hire Limited.  The Respondent says that because of the Complainant’s religious beliefs they will not use the Domain Name so he sees “no point why they need it”.

The evidence in this case is that the Respondent registered a Domain Name that is virtually identical to the Complainant’s registered trade mark and has used the Domain Name to offer products for sale that compete with the Complainant’s products.  The Respondent has offered no explanation in the Response as to why it registered a domain name that incorporates the Complainant’s trade mark and brand name.  In the fax dated 6 October 2006, referred to in the paragraph above, the Respondent says that when it was trading it was selling machinery in the Wessex area and did so for a number of years but there is no evidence to support that statement.  

Even if that was the case the Respondent has not challenged the Complainant’s assertion (in the Complaint) that the Respondent’s business has at no time been called “Wessex Machinery”.  The corporate identity adopted by the Respondent (which has been Pro-Turf Equipment Limited since 26 November 1999 and before that was Richchoose Limited) bears no relation to the Domain Name and there is no evidence of trading by the Respondent under the name Wessex Machinery.  The Respondent says that it intends to restart its business using the name Wessex Machinery Hire Ltd next year.  There is no evidence that the Respondent has made any demonstrable preparations to trade under the name Wessex Machinery Hire Limited before the Respondent was aware of the Complainant’s cause for complaint, which might otherwise be relied upon under paragraph 4aiA of the Policy as evidence that the Domain Name is not an Abusive Registration.

The Domain Name resolves to a website described as “hymari.co.uk” and the home page describes Hymari.co.uk as “the leading specialist in compact tractor attachments for trade customers”.  The website offers various products for sale including flail mowers.  The evidence supplied by the Complainant clearly establishes that it offers various products that attach to tractors, including flail mowers, for sale.  The products offered by the Complainant and those offered on the website to which the Domain Name resolves are therefore similar in nature and in competition.   The Respondent says that it has not sold Hymari products but has failed to explain why it has used the Domain Name to resolve to a website that clearly does offer Hymari products for sale.  

There is no evidence of actual confusion but the use of a Domain Name that is virtually identical to the mark in which the Complainant has rights to offer for sale competing products is taking unfair advantage of, or is causing unfair detriment to, the Complainant’s rights. 

The fax sent on behalf of the Respondent, by David Wise a director of the Respondent, dated 6 October 2006 contains the following passage:-

“I am happy to sell the domain name, but I suggest you come back with a sensible offer, as to enter in to further proceeding will more costly for your client and not for us, and maybe the money saved from legal fees, can be used for a sensible sale price for the domain”.
. 
The fax sent on behalf of the Respondent dated 6 October 2006 contains the following passage:-

“I am happy to sell the domain name, but I suggest you come back with a sensible offer, as to enter in to further proceeding will more costly for your client and not for us, and maybe the money saved from legal fees, can be used for a sensible sale price for the domain”.

In light of the above finding the Expert does not need to make a finding on whether this amounts to evidence that the Respondent registered the Domain Name primarily for the purpose of selling it for consideration in excess of the Respondent’s out-of-pocket acquisition costs which is one of the factors set out in paragraph 3 of the Policy.  The Domain Name was registered in November 2002 and there is no evidence of an approach having been made by the Respondent to the Complainant to sell the Domain Name in the subsequent 4 years.  If the Respondent’s primary purpose was to sell the Domain Name at a profit it was playing a rather long game.  The offer to sell was expressed in response to a demand for a transfer of the Domain Name made in October 2006.  However, that offer when combined with the absence of any credible explanation for the choice of Domain Name and any explanation as to why the Domain Name is being used to resolve to a website that offer competing products further supports the view that the Domain Name has been used in a manner which took unfair advantage of, or was unfairly detrimental to, the Complainant’s rights.

The Expert therefore 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.  

The Expert is satisfied on the available evidence that the Domain Name is, in the hands of this Respondent, an Abusive Registration. 

10.	Decision

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

        
Andrew Clinton

20 February 2007