Nominet UK Dispute Resolution Service

DRS 5001

J D Williams & Co Ltd & Another v. Paul David Morris

Decision of Independent Expert

1.	Parties

First Complainant:	J D Williams & Co Ltd
Country:	GB

Second Complainant:	Heather Valley (Woollens) Ltd
Country:	GB

Respondent:	Paul David Morris
Country:	GB

2.	Domain Names

ambrosewilson.co.uk; heathervalley.co.uk; oxendales.co.uk; shapelyfigures.co.uk; specialcollection.co.uk ("the Domain Names")

3.	Procedural Background

The Complaint was submitted to Nominet on 30 August 2007.  Hardcopies were received in full on 4 September 2007 and the Complaint was validated by Nominet and sent to the Respondent by post and by email both to postmaster@[the Domain Names] 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 26 September 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 11 October 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 22 October 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 18 October 2007.

4.	Outstanding Formal/Procedural Issues

Multiple Complainants

This is a multiple complainant case.  Accordingly, paragraph 3(b) of the Procedure applies and the Expert is satisfied that the Complainants have fulfilled the various requirements of that paragraph.

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.

In the present case, a specific inference has been drawn from the Respondent’s failure to provide a Response.  This is detailed at the end of section 7 below.

5.	The Facts

The Complainants are operators of direct home shopping catalogues.  The First Complainant operates under the brand names "Ambrose Wilson" (launched approximately 1870), "Oxendales" (launched approximately 1870), "Shapely Figures" (launched in the early 1990s), and "Special Collection" (launched in around 1995).  The Second Complainant operates under the brand name "Heather Valley" (launched in the 1970s).  The First Complainant acquired the Second Complainant in the early 1980s.

The First Complainant is the proprietor of the following UK registered trade marks:-

Number	Trade mark	Classes	Filing Date	Registration Date	
2432029	AMBROSE WILSON	16, 25, 35	08/09/2006	29/06/2007	
2281319	OXENDALE'S / OXENDALE / OXENDALES	16, 35	22/09/2001	03/05/2002	
2196029	SHAPELY FIGURES	16, 25	28/04/1999	23/11/2001	

The Second Complainant is the proprietor of the following UK registered trade mark:-

Number	Trade mark	Classes	Filing Date	Registration Date	
913831	HEATHER VALLEY	24, 25	30/08/1967	30/08/1967	

The Respondent registered all of the Domain Names on 16 December 1999.  As at the date of this Decision, each of the Domain Names was configured to forward traffic as follows:-

ambrosewilson.co.uk and oxendales.co.uk both forwarded to a website at www.printriteinks.com which offered printer ink cartridges for sale; shapelyfigures.co.uk, specialcollection.co.uk and heathervalley.co.uk forwarded to a website at www.inkmate.co.uk apparently carrying advertising links for a variety of different products and services.

6.	The Parties’ Contentions

Complainants

In summary, the Complainants contentions are as follows:-

The First Complainant has Rights in the marks AMBROSE WILSON, OXENDALES, SHAPELY FIGURES and SPECIAL COLLECTION.  The Second Complainant has Rights in the mark HEATHER VALLEY.  In addition to the registered trade marks mentioned in section 5 above, the Complainants claim the following:-

Ambrose Wilson -  the First Complainant printed 1,720,365 catalogues (predominantly women's clothing) for spring/summer and autumn/winter 2007 season; since August 2005, 3,935,565 Internet users have visited the website which the First Complainant operates for this catalogue at www.ambrosewilson.com (launched March 2001);  and the First Complainant has 1,136,000 customers on file over the last two years.

Oxendales - the First Complainant printed 712,512 catalogues (predominantly women’s clothing) for spring/summer and autumn/winter 2007 season; since the Spring Summer 2006 season, 1,659,074 Internet users have visited the website which the First Complainant operates for this catalogue at www.oxendales.com (launched March 2001) and the First Complainant has 571,000 customers on file over the last two years.

Shapely Figures -  the First Complainant printed 468,496 catalogues (predominantly women's lingerie/nightwear) for spring/summer and autumn/winter 2007 season; since February 2006, 1,316,591 Internet users have visited the website which the First Complainant operates for this catalogue at www.shapelyfigures.com (launched May 2002) and the First Complainant has 248,000 customers on file over the last two years.

Special Collection -  the First Complainant printed 686,513 catalogues (predominantly women's clothing) for spring/summer and autumn/winter 2007 season; since the spring/summer season 2006, 572,604 Internet users have visited the website which the First Complainant operates for this catalogue at www.specialcollection.com (launched March 2001) and the First Complainant has 543,000 customers on file over the last two years. The Complainants assert that, as a result of the extensive use made by the First Complainant since 1995, the First Complainant has built up significant trading goodwill in respect of the mark "Special Collection" in respect of home shopping services.

Heather Valley -  the Second Complainant printed 614,632 catalogues (predominantly women's clothing) for spring/summer and autumn/winter 2007 season; since the spring/summer season 2006, 581,178 Internet users have visited the website which the Second Complainant operates for this catalogue at www.heathervalley.com (launched March 2001) and the Second Complainant has 227,000 customers on file over the last two years. 

The Complainants assert that the use of each of these marks and catalogue names has come to be recognised by the general public in the United Kingdom as indicating an association with the Complainants and that the Domain Names are identical to those marks.

The Complainants state that the Respondent approached the First Complainant’s parent company in March 2002 to propose a business venture whereby the Respondent would set up a website where Internet users could obtain copies of the Complainant's catalogues. The Respondent proposed that the First Complainant would then pay a referral fee for each catalogue requested.  The First Complainant’s parent company were not interested in this scheme. Thereafter, the Complainants discovered that the Respondent had registered various domain names which they assert are identical to the Complainant’s unregistered and registered trade marks.  These were ambrosewilson.co.uk, classicombination.co.uk, heathervalley.co.uk, sanderandkay.co.uk, shapelyfigures.co.uk and complements.co.uk. Each of these domain names was pointing to a website at www.homeshopping.fsbusiness.co.uk.

The Complainants representative issued a letter before action to the Respondent on 21 March 2002 seeking undertakings to transfer the domain names to the First Complainant.  The Respondent delivered the agreed undertakings on 2 April 2002, however, the Respondent has only transferred sanderandkay.co.uk to the First Complainant.

The Complainants became aware of the Respondent’s registration of specialcollection.co.uk and oxendales.co.uk in May 2002 and early 2005 respectively.  The Respondent was then linking all of the Domain Names to the websites www.inkmate.co.uk, www.inkspider.org.uk and latterly to the website at www.printriteinks.co.uk, websites which were and are under the ownership or control of the Respondent.  The Complainants assert that by diverting Internet users looking to visit the Complainants’ websites to these other sites, the Respondent is using the Domain Names as Abusive Registrations.  The Respondent has gained access to customers the Respondent would not otherwise receive and the Complainants are losing customers they would ordinarily attract. The Complainants assert that the Respondent is associating itself with the Complainants and tarnishing their goodwill and reputation; the Complainants are providers of high quality clothing products and do not wish to be associated with printer ink suppliers.  

The Complainants do not have the ability to control the use of the Domain Names, which is detrimental to the Complainants.  The Respondent's registration and use of the Domain Names dilutes and blurs the distinctiveness of the Complainant's marks.

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 Complainants 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 Complainants have Rights in respect of names or marks which are identical or similar to the Domain Names; and

(ii) The Domain Names, in the hands of the Respondent, are Abusive Registrations.

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 Complainants have Rights in each of the names or marks; (2) if the Complainants do have Rights, whether the name or term in which either of the relative Complainants 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 concerned.

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.  

First Complainant’s Rights in the marks AMBROSE WILSON, OXENDALES and SHAPELY FIGURES and Second Complainant’s Rights in the mark HEATHER VALLEY

The First Complainant is the proprietor of UK registered trade marks in respect of AMBROSE WILSON, OXENDALES and SHAPELY FIGURES as set out in the facts at section 5. above.  Likewise, the Second Complainant is the proprietor of a UK registered trade mark in respect of HEATHER VALLEY. Accordingly, the Expert has no hesitation in finding that the Complainants have the necessary Rights in these names or marks.

First Complainant’s Rights in the name SPECIAL COLLECTION

Neither of the Complainants holds a registered trade mark in respect of this name.  Instead, the First Complainant seeks to rely on the trading goodwill which it asserts that it has built up as a result of its extensive use of the name since 1995.  It supplements this assertion with a statement as to the volumes of catalogues which it has produced for the spring/summer and autumn/winter seasons 2007 (a total of 686,513), the number of Internet users who have visited its website at www.specialcollection.com since the spring/summer season of 2006 (572,604) and the fact that it maintains a file of 543,000 customers from the last two years.  In the Expert’s mind this information, together with the examples of its various catalogue covers from recent years, constitutes sufficient evidence of trading goodwill which the First Complainant could seek to protect by way of an action of passing off in appropriate circumstances.  Accordingly, the Expert finds that the First Complainant also has Rights in this name.

The second question for the Expert is whether any of the various names or marks are wholly descriptive of the Complainant's business, namely the provision of direct home shopping services.  The Expert considers that none of the names or marks with which this dispute is concerned are wholly descriptive of such services.

The remaining question therefore is whether the names or marks are identical or similar to the corresponding domain names.  The first (.uk) and second (.co) levels of the Domain Names can be disregarded as being wholly generic.  The Expert is then left with a comparison between each of the names or marks and the third level part of the corresponding domain name.  On this comparison, the Expert finds that each of the Domain Names is identical to a name or mark in which the Expert has found that the Complainants have Rights.

Abusive Registration

Are the Domain Names, in the hands of the Respondent, Abusive Registrations? 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 registration of the Domain Names prior to an approach to the First Complainant’s parent company with a business proposition to distribute the Complainants’ catalogues via various domain names, three of which are included within this Complaint (ambrosewilson.co.uk, shapelyfigures.co.uk and heathervalley.co.uk); (2) the Respondent’s subsequent linking of the Domain Names to the websites www.inkmate.co.uk, www.inkspider.org.uk and latterly to the website at www.printriteinks.co.uk; (3) the Complainants’ assertion that the Respondent has thereby gained access to the Complainants’ customers, falsely associated himself with the Complainants’ business and tarnished their goodwill and reputation.  Clearly none 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.

It is clear to the Expert from a consideration of the websites to which the Domain Names currently point that the Respondent aims to receive sales of ink cartridges via the website at www.printriteinks.co.uk and that the Respondent either receives or intends to receive commission from advertising links via the website at www.inkmate.co.uk.  It is also clear to the Expert given the past history between the Complainants and the Respondent as narrated in the Complaint that the Respondent’s intent was initially to target the Complainants’ brands for his abortive business proposal and subsequently to gain access to the substantial Internet traffic which is generated by consumer interest in the Complainants’ catalogues.  The Domain Names were all registered on the same date and, given the Respondent’s approach to the First Complainant’s parent company it is reasonable to infer that the Respondent registered each of the Domain Names with the same scheme in mind, namely the business proposition regarding catalogue distribution.  It appears to the Expert that when this proposition was rejected by the Complainants the Respondent turned to the current use of the domain names whereby the Respondent is profiting or intending to profit from the initial interest confusion which will arise between the Domain Names and the domain names used by the Complainants in connection with the official websites of the respective catalogues.  It is clear to the Expert that this use is unfairly detrimental to the respective Rights of the Complainants and consequently that the Domain Names constitute Abusive Registrations in the hands of the Respondent.

While the above assessment relates to all of the Domain Names, the Expert considers that the domain name specialcollection.co.uk merits a specific comment. In the Expert’s view, the First Complainant might have difficulties in claiming that the term ‘Special Collection’ is exclusively referable to itself outside the ambit of its clearly extensive activities in direct home shopping by catalogue.  This domain name could, for example, be selected and used by a registrant on the basis that it is descriptive in nature (referring to a special collection of any sort rather than to the First Complainant’s catalogue).  Such a registrant might then have been able to avail itself of paragraph 4(a)(ii) of the Policy in claiming fair use of a descriptive term in the domain name.  In those circumstances the domain name would most probably not constitute an Abusive Registration.  

A number of factors have been put forward by the Complainants which, in the opinion of the Expert, are sufficient to tip the balance of probabilities in the Complainants’ favour on this matter.  First, there is the fact that the Respondent made contact with the Complainants in 2002 regarding a business proposition which related in part to three of the Domain Names.  Secondly, the Respondent stated at that time that he was proposing to use those domain names in a plan to distribute the Complainants’ catalogues.  Thirdly, the Respondent signed undertakings to transfer the domain names concerned in his approach to the Complainants, albeit that he only in fact transferred one of these.  Fourthly, the Respondent registered specialcollection.co.uk on the same date as those others involved in his approach to the Complainants, raising a reasonable inference that all of these were registered with the Complainants and their Rights in mind.  In addition, the Expert considers that it is reasonable to infer that if there had been any credible alternative explanation for the registration of this particular domain name, whether or not the Expert would necessarily have accepted it, the Respondent could and should have tendered this by way of a Response to the Complaint.  The Expert considers in these circumstances that it is appropriate to take an adverse inference from the Respondent’s failure to provide any response on this point.

8.	Decision

The Expert finds that the Complainants have proved that they have Rights in names or marks identical to the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations.  In accordance with paragraph 3(b)(iii) of the Procedure, the Complainants indicated in the Complaint that they wished oxendales.co.uk, shapelyfigures.co.uk, ambrosewilson.co.uk and specialcollection.co.uk transferred to the First Complainant and heathervalley.co.uk transferred to the Second Complainant.  The Expert therefore directs that the Domain Names be transferred in accordance with this request.

Andrew D S Lothian

29 October 2007