Nominet UK Dispute Resolution Service

DRS 4840

Suttons Consumer Products Ltd v. Brendan Martin

Decision of Independent Expert

1.	Parties

Complainant:	Suttons Consumer Products Ltd

Country:	GB

Respondent:	Brendan Martin

Country:	GB

2.	Domain Name

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

3.	Procedural Background

The Complaint was submitted to Nominet on 2 July 2007.  Hardcopies were received in full on 4 July 2007 and the Complaint was validated by Nominet and sent to the Respondent by post and by email both to postmaster@[the Domain Name] and to the email address which Nominet held for the Respondent on the register database.  The Respondent was informed in this correspondence that he had 15 working days, that is, until 25 July 2007 to file a response to the Complaint.

The Respondent did not file a response and the case did not proceed to the mediation stage.  On 8 August 2007, the Complainant paid the fee for referral of the matter for an expert decision pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy").  On 9 August 2007, Andrew D S Lothian, 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 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. Nominet duly appointed the Expert with effect from 15 August 2007.

4.	Outstanding Formal/Procedural Issues

No response

The Respondent has failed to submit a response to Nominet in time in accordance with paragraph 5(a) of the Procedure.

Paragraph 15(b) of the Procedure provides inter alia that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

Paragraph 15(c) of the Procedure provides that "If in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate." In the view of the Expert, if the Respondent does not submit a Response the principal inference that can be drawn is that the Respondent has simply not availed himself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration.  This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration, nor does it in the Expert's view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.

5.	The Facts

The Complainant is a supplier of flower and vegetable seeds, trading under the name Suttons Seeds.  It is the proprietor of UK Registered Trade Mark no. 58448, filed on 2 November 1886 (SUTTON’S SEEDS).

The Respondent registered the Domain Name on 6 August 2006.  As at the date of this Decision, the website associated with the Domain Name contained advertising links from an online retailer’s affiliate scheme (the Amazon Recommends service) relating to gardening books.

6.	The Parties’ Contentions

Complainant

The relevant section of the Complaint is short and may be repeated verbatim:-

I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

Suttons Seeds is a trading name of Suttons Consumer Products Ltd (SCP). The trademark Sutton's Seeds (no. 58448) was registered in 1886 (see http://www.ipo.gov.uk/tm/t-find/t-find-number?detailsrequested=C&trademark=58448). SCP has registered a number of domains including sutton-seeds.co.uk suttonsseeds.co.uk and suttons-seeds.co.uk.

Mr Martin has no connection with SCP and has opted to have his address omitted from the WHOIS service. He has clearly chosen a domain that is very similar to our trading name in the hope of confusing internet users. His site contains links to our competitors and the site claims to sell Suttons Seeds but does not do so - customers will come to the site, try to buy Suttons Seeds and will be unable to do so.

Respondent

The Respondent has not filed a response. 

7.	Discussion and Findings:

General

In terms of paragraph 2(b) of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, namely 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.

Complainant’s Rights

Paragraph 1 of the Policy provides that 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".  Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the name or term in which the Complainant has these is wholly descriptive of its business; (3) if not wholly descriptive, whether the name or mark is identical or similar to the Domain Name.

Complainant’s Rights in the mark SUTTON’S SEEDS

The requirement to demonstrate Rights under the Policy is not a particularly high threshold test.  Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark.  

The Complainant is the proprietor of a UK registered trade mark in respect of SUTTON’S SEEDS.  The Expert notes that this is probably one of the oldest registered trade marks to be cited in a DRS case, dating as it does from 1886 (albeit that the age of the mark itself is not of critical significance to the question of Rights under the Policy).  In any event, the Expert has no hesitation in finding that the Complainant has Rights in the name or mark SUTTON’S SEEDS.

The second question for the Expert is whether this name or mark is wholly descriptive of the Complainant's business.  The Complainant's business is the provision of horticultural supplies.  The name or mark SUTTON’S SEEDS is not wholly descriptive of such services.

The remaining question therefore is whether the name or mark is identical or similar to the Domain Name.  The first (.uk) and second (.co) levels of the Domain Name can be disregarded as being wholly generic.  The Expert is then left with a comparison between the name or mark SUTTON’S SEEDS and the third level part of the Domain Name ‘suttonseeds’.  The name or mark in which the Complainant has Rights is not identical to the Domain Name but is it similar?

The Expert has reached the view that the differences between the name or mark and the Domain Name are minor and unimportant in nature.  In the first place, the apostrophe in the name or mark cannot be reproduced in a domain name, nor can the white space between SUTTON’S and SEEDS.  The only remaining difference is an additional letter ‘s’ which in the Expert’s view does not serve to distinguish the Domain Name from the Complainant’s mark, particularly when the two words of the mark are combined without the apostrophe and white space.

In these circumstances, the Expert finds that the Domain Name is similar to a name or mark in which the Complainant has Rights.

Abusive Registration

Is the 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 constitute evidence of Abusive Registration is set out in paragraph 3 of the Policy.  

The Complainant’s submissions focus on (1) the Respondent’s use of the WHOIS ‘opt out’ and (2) the potential confusion to Internet users and diversion of the Complainant’s business to competitors which may be caused by the Domain Name and/or the associated website.  Neither of these submissions falls directly within the non-exhaustive factors in paragraph 3 of the Policy but they may nevertheless be examined within the general definition of Abusive Registration.

The Expert considers that, while it may be relevant in some cases, the exercise of the WHOIS ‘opt out’ is not on its own indicative of a domain name being an Abusive Registration.  In the Expert’s view the use to which the Domain Name and its associated website have been put is of far greater significance to this question.

The website associated with the Domain Name contains the following introductory text:-

Suttonseeds.co.uk currently offers 17,000+ resources. Suttons seeds, garden seeds, lawn seed and vegetable seeds we strive to keep things simple and user friendly for our members. All books and downloads are provided by our great sponsors. Thanks for visiting suttonseeds.co.uk. We have all of the best books and resources for you and membership will always be free, including tutorials and much more. So tell your friends about us.

This introductory text is followed by a group of affiliate marketing links to horticulture-related books.  Beside each product link is a link titled ‘privacy information’ which leads to a website operated by the online retailer Amazon.  This site indicates that the links on the Respondent’s website are part of a commercial arrangement with Amazon named ‘Amazon Recommends’ and goes on to state that the Respondent’s website is operated by an ‘Amazon Associate’, defined on the same page as:

…a Web site owner who places links on their site and earns referral fees through sales of Amazon.co.uk products.

Accordingly, the Expert is satisfied that the Respondent either receives or intends to receive affiliate commission from sales generated via the links on the Respondent’s website.  The Expert is of the view that the Domain Name and associated website are deliberately targeting the Rights of the Complainant and that it is probable that the Respondent has fashioned the introductory copy with a view to this appearing on search engines alongside the Domain Name in order to confuse Internet users into believing that the site is the Complainant’s official website, thereby securing both Internet traffic and commissionable sales.  

The Respondent has failed to provide any alternative explanation for its conduct in registering and using the Domain Name in this manner.  Considering the principal non-exhaustive factors in paragraph 4 of the Policy, by which the Respondent might demonstrate that the Domain Name is not an Abusive Registration, there is no evidence that the Respondent has used the Domain Name in connection with a genuine offering of goods and services (the present offering cannot be considered as genuine given that it appears to be directly targeting the Complainant’s Rights).  There is no evidence that the Respondent has been commonly known by or legitimately connected with an identical or similar name to the Domain Name.  Clearly the present use of the Domain Name could not be described as non-commercial and the Domain Name is neither generic nor descriptive.

In these circumstances, the Expert has no hesitation in finding that the Respondent has used the Domain Name in a manner which is unfairly detrimental to the Rights of the Complainant and as such that the Domain Name constitutes an Abusive Registration in the hands of the Respondent.

8.	Decision

The Expert finds that the Complainant has proved that it has Rights in a name or mark similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  In accordance with paragraph 3(c)(vi) of the Procedure, the Complainant indicated in the Complaint that it was seeking cancellation of the Domain Name.  The Expert therefore directs that the Domain Name be cancelled.

Andrew D S Lothian

28 August 2007