Nominet UK Dispute Resolution Service

DRS Number 5382

Roach Pumps Limited v Pump International Limited online-pumpshop.com

Decision of Independent Expert

1.	Parties

Complainant:	Roach Pumps Limited
Country:	GB

Respondent:	Pump International Limited online-pumpshop.com
Country:	GB

2.	Domain Names

roachpumps.co.uk (“the Domain Name”)

3.	Procedural Background

14 January 2008:	Complaint lodged with Nominet electronically	
15 January 2008:	Hardcopy complaint received by Nominet	
16 January 2008:	Nominet forwarded complaint to Respondent	
 6 February 2008:	Electronic response received by Nominet	
 6 February 2008:	Hardcopy response received by Nominet	
 6 February 2008:	Nominet forwarded response to Respondent	
 8 February 2008:	Electronic reply received by Nominet	
 8 February 2008:	Hardcopy reply received by Nominet	
 8 February 2008:	Nominet forwarded reply to Respondent	

On 21 March 2008 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.

4.	Outstanding Formal/Procedural Issues (if any)

None

5.	The Facts

The Complainant was incorporated in 1986 and has traded under the name “Roach Pumps” since then. It imports and otherwise acquires hand pumps for sale to distributors.

The Respondent does likewise and also manufactures hand pumps. 

The Respondent registered the Domain Name on 22 June 2005.

The Respondent has used the Domain Name for a website offering hand pumps. Neither party has seen fit to provide any printouts from the website at the Domain Name (which was not available when I tried to access it). 
 
On 5 September 2006 the Complainant wrote to the Respondent pointing out that, despite a previous discussion, the Respondent was continuing to use the Domain Name and therefore directing enquirers to itself. The Complainant said that this was passing off and sought transfer of the Domain Name.

On 12 September 2006 the Respondent replied saying that it bought the Domain Name because the Complainant clearly did not want it and had not developed its own site. The Respondent said that it was using the website to offer products acquired from the Complainant and that it had never held itself out as the Complainant. 

On 18 September 2006 the Complainant reiterated that use of its name was passing off.

6.	The Parties’ Contentions

Complaint

The Respondent is a direct competitor of the Complainant.  For some years the Complainant supplied the Respondent with non-branded goods but in recent years the Respondent has sourced identical products to the Complainant and is now in direct competition. 

The Domain Name in the hands of the Respondent is abusive because it was primarily registered to stop the Complainant registering it and to cause as much disruption as possible. It is untrue that the Respondent used the website at the Domain Name to sell the Complainant’s pumps. The Respondent supplies identical pumps to those of the Complainant (which are not branded) and does not purchase from the Complainant unless it runs out of stock.

Response

The Respondent manufactures its own range of pumps and imports and buys in other complementary pumps for sale. The Complainant imports and buys in pumps for sale. Only three types of pump are imported by both companies, but the bulk of trade between them is in parts of the ranges which are not common to both. 

In 2005 the Complainant did not have a web site to promote its goods so the Respondent purchased the Domain Name in June 2005 to sell Roach pumps. The Complainant purchased roachpumps.com, did nothing with it and when it expired an American company bought it. Neither transaction made any difference to the Complainant, which did not lodge any objection. 

The Respondent launched a website using at the Domain Name listing only pumps sold by the Complainant. These pumps are listed at sale prices supplied by the Complainant and, where a sale is made, are sourced from the Complainant. Trade on the site is not brisk because the sale prices supplied by the Complainant are high. 

The Respondent has established rights to the Domain Name by the length of time that it held the Domain Name with the tacit support of the Complainant and because the Respondent has built up a trading situation to the benefit of Respondent and Complainant. The Complainant is now seeking to gain control of the Domain Name for free rather than by offering to buy it as it should.

Reply

It is not true that the bulk of the trade between the two companies was in parts of the ranges which are not common. The bulk of the Complainant’s business, which the Respondent would like to obtain, is a particular pump which at one time was supplied by the Complainant to the Respondent but which more recently has been purchased by the Respondent direct from a Chinese supplier. So the Complainant’s name has been used to "switch sell" ie to use the Complainant’s name to obtain business that is not to the Complainant’s benefit. 

It is true that the Complainant did not have a website in 2005 though one was under construction. The Complainant was perhaps naive in not buying the Domain Name before work was started on the website but presumed that nobody else would want the Domain Name. 

When the Complainant discovered who owned the Domain Name it purchased roachpumps.com but was advised to try and retrieve the Domain Name as it was more suitable. The Complainant tried but to no avail. At no time did the Complainant agree to use of its name by the Respondent and objected on numerous occasions both verbally and by letter. 

The Respondent states that roachpumps.com was purchased by an American company but fails to mention that an employee of the Respondent actually purchased roachpumps.com registered at his mother’s address when it became obvious that the Complainant was pursuing this case. This is evidence of bad faith. 

It is not true that the Complainant benefits from the "trading situation". The Respondent is now able to source and sell nearly all products in the Complainant’s range. The traditional name of the products that are sold and marketed by the Respondent is "Patay".  The Complainant’s name stems from 1986 when the company was founded. “Roach” is the name of the company and the managing director Tim Roach who has been in the pump trade for almost 50 years. Therefore the use by another company implies not a product but an actual source of a certain types of products. The Respondent’s statement that the Complainant should buy the domain name shows that, if the Respondent is unable profit by passing itself off as the Complainant, it wants to make money by selling the Domain Name. The Complainant can only presume that is why the Respondent has now also obtained control of roachpumps.com

7.	Discussion and Findings:

General

To succeed, the Complainant has to prove in accordance with paragraph 2 of the DRS Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the DRS Policy) in respect of a name or mark identical or similar to the Domain Names and, second, that the Domain Names, in the hands of the Respondent, are abusive registrations (as defined in paragraph 1 of the DRS Policy).

Complainant’s Rights

The Complainant has produced a limited amount of evidence in support of its claim to common law rights in the mark “ROACH PUMPS”. However, the term is distinctive and the Complainant’s assertion that it has traded under that name for over 20 years has not been denied by the Respondent.  

In view of this, and the fact that the threshold to establish “rights” is a low one, I am prepared to conclude that the Complainant has established common law rights in the mark “Roach Pumps”. The mark is identical to the Domain Name, disregarding the domain suffix. 

The Complainant has established rights in a name or mark which is identical to the Domain Name. 

Abusive Registration

Is the Domain Name an abusive registration in the hands of the Respondent? Paragraph 1 of the DRS 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.”

The parties are clearly competitors but they also supply pumps to each other. It is common ground that the pumps bought by the Respondent from the Complainant are not branded “Roach” as the Complainant is not a manufacturer and does not supply its own branded products. 

The Respondent says that it registered the Domain Name to sell pumps acquired from the Complainant, as the Complainant did not then have its own website, and that the website at the Domain Name has been used only to sell products sourced from the Complainant. The Complainant asserts that the Respondent has used the site to supply the same product as the one which is the Complainant’s main offering but instead acquired from a Chinese supplier. 

Neither party has produced any evidence on this point and it is impossible for me to reach any conclusion on it. For the moment, I will proceed on the basis of the interpretation most favourable to the Respondent, namely that it registered and used the Domain Name purely to resell products acquired from the Complainant.

Even if the Respondent were reselling “Roach” branded pumps, it would have an uphill struggle in justifying its registration / use of a domain name comprising the Complainant’s exact trade mark. 

See, eg, the appeal decision in seiko-shop.co.uk (DRS 00248), where the panel stated:

“There are many different traders who may wish to make use of the trade mark of a third party e.g. the proprietor’s licensee (exclusive or non-exclusive), a distributor of the proprietor’s goods (authorised, unauthorised or ‘grey market’), the proprietor’s franchisee, or the proprietor’s competitor engaged in comparative advertising. There are an infinite array of different factual circumstances which could arise under each of these categories. 

Accordingly, we are not able to – and we are not going to attempt to – lay down any general rules governing when a third party can make ‘legitimate’ use of the trade mark of a third party as a domain name. All we can do is decide whether the Expert came to the right conclusion on the evidence and submissions before him. 

Essentially Seiko’s complaint is that Wanderweb’s registration of the Domain Names has gone beyond making the representation “we are a shop selling Seiko / Spoon watches” and is instead making the representation(s) “we are The Seiko/Spoon watch Shop” or “we are the official UK Seiko/Spoon watch shop”. The latter form of representation is what we understand the ECJ to be referring to when, in the ECJ case C-63/97 BMW v. Deenik, it speaks of creating “the impression that there is a commercial connection between the other undertaking and the trade mark proprietor”. An example of a domain name which, in the opinion of some members of the Panel, would make the former but not the latter representation was given by the Expert in paragraph 7.28 of the Decision: “we-sell-seiko-watches.co.uk”.

…That it is unfair for a mere agent to appropriate to himself the trading style of his principal is a well-established principle of UK and international law. Section 60 of the 1994 Act, importing into UK law Article 6 septies of the Paris Convention, allows for the refusal of a trade mark application that has been applied for by an agent or representative, if the rightful proprietor of the mark opposes the application. 

The Panel takes the view that in the light of the evidence before the Expert and in the light of the submissions before him and on appeal, it is just as unfair for Wanderweb to appropriate Seiko’s trade marks as a domain name.”

In my view the Respondent’s position is even more difficult here as it is not selling Complainant-branded products but simply offering third party branded products acquired from the Complainant.  The Respondent has not explained why it needs to invoke the Complainant’s trade mark at all for that purpose. 

In any case, by registering the Domain Name, the Respondent is in my opinion making the representation “we are Roach Pumps” and not “we are selling pumps acquired from Roach Pumps”. I consider it unfair for the Respondent to appropriate the Complainant’s trade mark in this way.

The Respondent claims that it has acquired its own rights in the Domain Name by reason of the length of time that it held the Domain Name with the tacit support of the Complainant. But there is no evidence of such alleged tacit support and indeed the correspondence exhibited by the Complainant shows that it continuously objected to the Respondent’s activities. 

The Respondent relies on the fact that the Complainant had no website of its own when the Respondent registered the Domain Name. The Respondent observes that the Complainant previously owned roachpumps.com but let it expire and it has since been bought by an American company.  But all of that, surely, is a matter for the Complainant. I do not see how the lack of a Complainant website, or its failure for whatever reason to renew another domain name, could provide the Respondent with any legitimate reason to step in and create its own (unauthorised) website in conjunction with a domain name embodying the Complainant’s trade mark.  (I should add that I have placed no weight on the Complainant’s further assertion that the owner of roachpumps.com is in fact the Respondent, which surreptitiously acquired that domain name using the contact details of the mother of one its employees. The Complainant raised this issue in the Reply for the first time and no supporting evidence has been supplied.)

The Respondent further asserts that its use of the Domain Name has been to the financial benefit of both parties. Even assuming that that is correct, it would not in my view justify the Respondent using the Complainant’s trade mark in the way it has.

So, even accepting for the sake of argument that the version of the facts most favourable to the Respondent is correct, I am nonetheless satisfied that the Domain Name is an abusive registration in that it was registered in a manner which took unfair advantage of the Complainant’s rights. 

8.	Decision

The domain name roachpumps.co.uk should be transferred to the Complainant. 

            Adam Taylor                                                                  Date