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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Casual Male RBT (UK) LLC v Walsh Associates [2007] DRS 5064 (25 October 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/5064.html Cite as: [2007] DRS 5064 |
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Nominet UK Dispute Resolution Service
DRS No. 05064
Casual Male RBT (U.K.) LLC
v.
Walsh Associates
Decision of Independent Expert
Complainant: Casual Male RBT (U.K.) LLC
Country: U.K.
Respondent: Walsh Associates
Country: U.K.
The domain name in this case is("the disputed domain name")
The Complaint was lodged with Nominet UK ("Nominet") on September 14, 2007, and hard copies were received in full on September 17, 2007. Nominet validated the Complaint on September 18, 2007 and at the same time notified the Respondent of the Complaint giving him 15 working days within which to lodge a Response. No Response was received and so Nominet did not initiate its Informal Mediation procedure.
On October 17, 2007, the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet's Dispute Resolution Service Policy ("the Policy").
On October 18, 2007 the undersigned, Mr. David H Tatham ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an 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 and he was selected by Nominet as the Expert for this case on the same day.
There are no formal or procedural issues outstanding.
The following facts appear from the documentation supplied by the Complainant –
The Complaint Form names Casual Male RBT LLC d/b/a Rochester Big & Tall as the Complainant in this case. It is a UK Limited Liability Company, registered at Companies House as an Oversea Company on February 15, 2005. Its parent company is Casual Male Retail Group, Inc., a US Corporation and, along with CMRG Apparel, LLC, a US Limited Liability Company, Designs Apparel, Inc., a US corporation, and Casual Male, Inc., a US corporation, it is included within the Casual Male Retail Group corporate group. This Group was referred to in the Complaint as "the Complainant", and it is the largest specialty retailer of big and tall men's apparel, with more than 500 stores and 3,000 employees located throughout the United States, Canada and the United Kingdom, along with substantial e-commerce and catalogue operations.
The Complainant contends that it has been using the trade mark CASUAL MALE since 1973 in connection with retail store services, online retail store services, and mail order catalogue services featuring clothing and accessories for big and tall men. The Complainant is the proprietor of the following registered trademarks, copies of all of which were annexed to the Complaint –
CASUAL MALE. Community trade mark registration No. 4325742 filed on March 7, 2005 and registered on May 17, 2006 for a variety of goods and services in Classes 18, 25 and 35.
CASUAL MALE. US trade mark registration No. 2838614 in Class 25 claiming first use from November 1, 1973.
CASUAL MALE XL. US trade mark registration No. 3180088 in Class 35 claiming first use from August 10, 2005.
CASUAL MALE BIG & TALL. US trade mark registration No. 2036883 in class 42 claiming first use from March 13, 1973.
CASUAL MALE BIG & TALL (& Design). US trade mark registration No. 2080851 in Class 42 claiming first use from July 18, 1985.
BIG & TALL CASUAL MALE (& Design). US trade mark registration No. 2080852 in Class 42 claiming first use from July 18, 1985.
The Complainant also claimed to be the proprietor of US trade mark registration No. 2198042 for CASUAL MALE in Class 35 but did not annex any copy thereof.
In addition, the Complainant is the proprietor of the following domain names in the US and the European Union, all of them in current use, and details of all of which were annexed to the Complaint –
casualmale.com, casualmalexl.com, casualmalexl.eu, casualmalexl.co.uk, casualmale.de, casualmalexl.de, casualmale.es, casualmalexl.es, casualmale.fr, casualmalexl.fr, casualmale.it, casualmalexl.it, casualmale.nl and casualmalexl.nl.
The Complainant provides clothing primarily for big and tall men under the name CASUAL MALE through retail stores and online websites and annexed to the Complaint were 4 pages from itswebsite. Complainant claims to have developed a substantial goodwill and reputation in the trademark "CASUAL MALE."
Complainant
Complainant contends that all of the circumstances in paragraphs 3(a)(i)(B), 3(a)(i)(C) and 3(a)(ii) of the Policy exist in the present case.
Complainant states that the Respondent is not connected with it in any way, and there is no obvious reason why the Respondent should have any legitimate interest in the name used in the disputed domain name which is identical to Complainant's registered trademarks and domain names as well as being similar to Complainant's registered company name. It is well established that when comparing a domain name with a trademark, the generic prefixes and suffixes such as "www" or ".co.uk" are ignored. The disputed domain name is, therefore, identical to a name in which the Complainant has rights as defined in the Policy.
As noted above, the Complainant is the owner of a number of existing domain names in various countries throughout the European Union and the existence of the disputed domain name has blocked it from registering a further UK domain name within paragraph 3(a)(i)(B) of the Policy.
Respondent is using the disputed domain name in a way that will confuse people or businesses into believing that the it is registered to, operated or authorized by, or otherwise connected with the Complainant within paragraph 3(a)(ii) of the Policy. The disputed domain name is currently parked with Sedo.com, which is a domain name parking service website. Sedo provides the owner of "unused" domain names with revenue from click-through commission and details on how the revenue is generated was annexed to the Complaint. According to the Sedo website (www.sedo.co.uk), Sedo supplies the Respondent and its other customers with a free domain parking program, under which Sedo hosts the Respondent's website and provides targeted advertisement links on the site. The Respondent earns up to €1.50 every time someone accesses his website and clicks on one of the links. The Complainant contends that this is a clear abuse of goodwill, in that the Respondent gains a fee each time an inadvertent visitor, who must have been seeking the Complainant's site, clicks through to another site. The disputed domain name is used to redirect internet users to a web "parking" page containing links to other sites including the websites of some of Complainant's competitors. Of the 10 links available on the website at the disputed domain name, 3 of them are directed to Complainant, while 4 of them are directed to Complainant's competitors. The Complainant claims contends that this use gives, or at the very least is likely to give, the impression that the Complainant endorses the products on offer from the parking page, which it does not. Printouts of the home pages for each of the linked websites were annexed to the Complaint. In using the disputed domain name in this manner, it is clear that the Respondent is, and was at the time the disputed domain name was registered, aware of the Complainant's name and wanted to trade on the Complainant's reputation and goodwill. In this connection, and as evidence that use of the disputed domain name constitutes an Abusive Registration, Complainant referred to the Decisions in DRS 3305 (; DRS 3700 ( ); and DRS 3811 ( ) where parking a website containing links to competitors was found to constitute an Abusive Registration. Copies of all these decisions were annexed to the Complaint.
Complainant contends that its rights are being taken unfair advantage of by the Respondent. The Complainant also contends that the Respondent is knowingly taking its name and using it in the disputed domain name for the specific purpose of diverting potential customers of Complainant away from Complainant to a website with links which are in the same field as Complainant's business and which generate income for the Respondent if visited by a potential customer. Respondent has misappropriated Complainant's property, i.e., its goodwill in the name CASUAL MALE, by use of the identical name in the disputed domain name with the intention of unfairly profiting from that misrepresentation. This use is clearly detrimental to Complainant's rights.
The disputed domain name was registered for the purpose of unfairly disrupting Complainant's business within paragraph 3(a)(i)(C) of the Policy. The appearance of the website at the disputed domain name is likely to confuse potential customers of the Complainant. Alternatively, the users may have been frustrated in their attempt to access and/or have been prevented from accessing the Complainant's genuine websites, thereby detrimentally affecting the Complainant's business. Clearly, the Respondent is using the disputed domain name in a way which confuses people or businesses into believing that it is registered to, operated or authorized by, or otherwise connected with the Complainant. Continued use of the disputed domain name will have an adverse impact on the Complainant and will continue to have an adverse impact on the Complainant's business. Whatever the Respondent's motive, its registration of the disputed domain name is, in the opinion of the Complainant disrupting its business.
Respondent
As mentioned above, the Respondent failed to reply to the Complaint.
General
According to paragraph 2(a) of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities –
i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and
ii the disputed domain name, in the hands of the Respondent is an Abusive
Registration.
Both of these issues are dealt with separately hereunder.
The absence of a response from a Respondent does not mean that he has no answer to the Complaint. A Complainant must still make out its case and, having done so, the burden is on a Respondent to prove otherwise. In this case, the Complainant has made out a prima facie case, so the burden of proof has shifted to the Respondent, but he has chosen to remain silent.
Complainant's Rights
The Complainant has several trade mark registrations in several countries of the words CASUAL MALE both alone and in conjunction with other non-distinctive matter, and in block capitals as well as in script form.
This is identical to the disputed domain name since, as the Complainant points out, it is customary when comparing a trade mark with a domain name to disregard the suffix ".co.uk".
Consequently, the Expert finds that the first requirement of paragraph 2(a) has been satisfied.
Abusive registration
An "Abusive Registration" is defined in paragraph 1 of the Policy in the following terms –
An 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
It is for a Complainant to explain why a Domain Name in the hands of a Respondent should
be regarded as an Abusive Registration, and paragraph 3 of the Policy sets out a non-
exhaustive list of factors that define what may be an Abusive Registration. The following
would appear to be relevant in this case:
3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
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.
3(a)(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;
It is quite clear to this Expert that the second requirement of paragraph 2(a) is also proved and that the disputed domain name is an Abusive registration.
This type of case is unfortunately becoming all too common. Someone decides to register a domain name which is either identical to, or a misspelling of, someone else's trade mark or trade name, he puts up a parking page and reaps his rewards when unwary or unknowing internet users click on it. The rewards are not high – the figure of up to €1.50 per click is mentioned in this case – but provided the page stays up for long enough and provided it attracts sufficient 'hits', the owner is sure to earn a profit on his modest investment in the domain name.
The Complainant has referred to 3 Decisions under the Policy where the facts were very similar to the present one, and has kindly provided copies of all of them.
In the present case the web page at the disputed domain name advertises competing products. This web page permits users to click-through to other websites offering competing goods. In using the disputed domain name as the address of a website that offers links to other sites offering goods that are directly in competition with the Complainant, it would appear that the Respondent is, and was at the time he registered the disputed domain name, aware of the Complainant's name and trade mark. It is also clear the Respondent is knowingly using the disputed domain name for a purpose that is unfairly disrupting the Complainant's business. The Expert is of the view that the registration of the disputed domain name which is identical to the Complainant's name and trade mark, and the use of it with a view to commercial gain through a website linking to competing websites, takes unfair advantage of or is unfairly detrimental to the Complainant's Rights.
Accordingly, the Expert finds, on the balance of the probabilities, that the Domain Name in the hands of the Respondent is an Abusive Registration.
The Expert finds that the Complainant has Rights in respect of a name or mark which is similar to the domain nameand that, in the hands of the Respondent, it is an Abusive Registration. The Expert therefore directs that the domain name be transferred to the Complainant.
David H Tatham
Expert
October 25, 2007