Nominet.uk Dispute Resolution Service
DRS 04678
Fondmetal S.p.A –v- Rory McLornan
Domain Name: <fondmetal.co.uk>
Decision of Independent Expert

1.	The Parties
	The Complainant
1.1	The Complainant is Fondmental S.p.A of Italy.  
	The Respondent
1.2	The Respondent is Rory McLornan of Northern Ireland.

2.	The Domain Name
2.1	The disputed domain name is <fondmetal.co.uk> (“the Domain Name”).

3.	Procedural Background
3.1	This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure (“the Procedure”) and the Nominet UK Dispute Resolution Service Policy (“the Policy”).  
3.2	The Complaint entered Nominet’s system on 4 May 2007. It was validated on 11 May 2007 and Complaint documents were generated on the same day. A non-standard Response was received on 31 May 2007 and a Reply was filed on 4 June 2007. Mediation not being successfull and the Complainant having paid the relevant fee on 13 July 2007, the matter was referred to me for a Decision on 18 July 2007. I have confirmed that I am independent of the parties and that I am not aware of any matters that might call my impartiality or independence into question. 

4.	Outstanding Formal/Procedural Issues   
4.1	The Response in this matter was submitted to Nominet in the form of a letter that did not comply with the Procedure and was marked “Without Prejudice”. However the Respondent is not legally represented and I am satisfied that the letter was intended to represent the Respondent’s formal response to the Complaint. I am also satisfied that the Complainant will suffer no prejudice by the admission of a Response in this form. Indeed, the Complainant has served a Reply. The Response is therefore admitted.      

5.	The Facts
5.1	The Complainant company was registered in Italy in January 1972. It has traded under the brand name Fondmetal since that date. 
5.2	The Complainant has held an Italian registered trade mark for FONDMETAL since May 1985 and a UK registered trade mark for FONDMETAL since October 1999.
5.3	The Complainant manufactures and sells light alloy wheels for passenger cars under the brand name Fondmetal and has done so since 1972. It can prove sales since at least 1986 by reference to printed catalogues. 
5.4	The Respondent operates a company selling alloy wheels via the internet. He has done so since 1998 from a website at www.performancealloys.com. 
5.5	The Respondent registered the Domain Name on 1 July 2000. The Domain Name resolves to the Respondent’s website referred to above.
5.6	There is no commercial relationship between the Complainant and the Respondent.

6.	The Parties’ Submissions  
6.1	The Complainant submits that the Respondent’s use of the Domain Name  is abusive because it has confused people into believing that the Domain Name is controlled by or connected with the Complainant.  
6.2	The Respondent submits that the Domain Name was registered for the purpose of helping internet users to find a company that sold the Complainant’s alloy wheels and was able to offer a first class service in relation to their products. 
6.3	The Respondent states that he has, since the registration of the Domain Name, actively advertised the Complainant’s alloy wheels as supplied to it by the Complainant’s distributors.
6.4	The Respondent submits that he has never claimed to be the Complainant or one of its appointed distributors. His website is very clear about his identity and it offers the Complainant’s products among 50 other brands.
6.5	By way of reply, the Complainant disputes that the Respondent currently offers the Complainant’s goods among the brands on his website.   
6.6	The Complainant seeks a transfer of the Domain Name.  	

7.	Discussion and Findings  	   	    	
	Relevant Provisions of the Policy
7.1	Under paragraph 2 of the Policy:
		“(a)	A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, that:
			(i)	the Complainant 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.
	(b)	The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.”
7.2	Under paragraph 1 of the Policy the term “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.”
7.3	Also under paragraph 1 of the Policy, the term “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.”
7.4	Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration.  Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not.  However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.
7.5	Paragraph 3(a)(ii) of the Policy, upon which the Complainant relies, refers to: 
		“Circumstances indicating that the Respondent is using the Domain Name in a manner 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.”
7.6	Paragraph 4(a)(i) of the Policy, which reflects the Respondent’s case, refers to circumstances where:
		“Before being made aware of the Complainant’s cause for complaint (not necessarily the ‘complaint’ under the DRS), the Respondent has:
			A. 	used or made demonstrable preparations to use the Domain Name or a domain name which is similar to the Domain Name in connection with a genuine offering of goods and services …”   
	Rights
7.7	The Complainant is the owner of Italian and UK registered trade marks for the name FONDMETAL.
7.8	The Complainant’s mark is identical to the Domain Name (ignoring the formal suffix). 
7.9	Accordingly, the requirements of paragraph 2(a)(i) of the Policy are satisfied.
	Abusive Registration
7.10	The Domain Name comprises the Complainant’s registered trade mark FONDMETAL, in an unadorned form, with only the formal suffix .co.uk. It is also a distinctive name. In the circumstances, the URL www.fondmetal.co.uk is that which would be highly likely to be used by an internet user seeking to access the Complainant’s own, or authorised, UK website. The Respondent’s use of the Domain Name for the purposes of that URL, therefore, gives rise to “initial interest confusion”. In other words, regardless of the content of the site, internet users will be attracted to it in the first place in the expectation of finding the Complainant’s own, or authorised, site. In my view, this gives rise to a prima facie case of an Abusive Registration.
7.11	It is open to the Respondent to answer that prima facie case and to seek to demonstrate that its use of the Domain Name was legitimate. In this case the Respondent argues that his use of the Domain Name is legitimate because he has used to it to advertise the Complainant’s goods, among others, on his website.
7.12	The use of a domain name to offer a complainant’s goods or services has been considered in detail under both the Policy (eg. Seiko UK Ltd –v- Designer Time/Wanderweb [DRS 00248]: domain name <seiko-shop.co.uk>) and by WIPO under the UDRP (eg. Oki Data Americas, Inc –v- ASD, Inc [D2001-0903]: domain name <okidataparts.com>). The overriding principle emerging from those decisions is that any use by a respondent in connection with a complainant’s goods must be fair and, in particular, must not misrepresent the relationship (if any) between the parties. Also of significance will be the question of whether the respondent supplies only the complainant’s goods or those of other suppliers as well.
7.13	In the present case, the Respondent’s use of the Domain Name cannot be considered legitimate under any relevant test. First, his use of the Complainant’s trade mark in an unadorned form presents him with the greatest of difficulty in demonstrating that he is not, simply, impersonating the Complainant and seeking unfairly to take advantage of internet traffic intended for the Complainant’s own, or authorised, UK site. Secondly, even if the Respondent had used the Complainant’s name with some addition (e.g. “fondmetal-shop”) he would still face the difficulty that he is offering, on his own admission, some 50 other brands of alloy wheels as well. The practice of using one brand to attract customers and then to offer them other brands (known as a “bait and switch”) is also to take unfair advantage of the first brand owner’s rights.           
7.14	In the circumstances, I have no hesitation in finding that the Domain Name was registered and/or has been used in a manner that took unfair advantage of the Complainant’s rights and that it constitutes an Abusive Registration. The second limb of the test under paragraph 2(a) of the policy is therefore satisfied.  

8.	Decision
8.1	The Complainant has established on the balance of probabilities both that it 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 Complaint therefore succeeds and I direct that the Domain Name be transferred to the Complainant.

Steven A. Maier
26 July 2007