NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 5441
Swann-Morton Limited v Indigo
Decision of Independent Expert
1.	Parties: 

Complainant:		Swann-Morton Ltd
Country:		GB

Respondent:		Indigo
Country:		GB

Disputed Domain Name

swannmorton.co.uk (“the Domain Name”)

2.	Procedural Background:

The complaint was lodged with Nominet in full on 12 February 2008. On the same day, Nominet emailed the complainant’s representative, a firm of patent attorneys and trade mark agents, to explain how the dispute resolution service works on the grounds that the complaint was “short and unsupported.” Attached with the email was a letter from the Chair of the independent Experts, which is sent to all parties whose complaint is under 15 lines long and or contains no evidence. Nominet made it clear to the complainant’s representative that this did not mean that the complaint would necessarily fail but that it was less likely that the complaint would contain the content and evidence required to prove the complaint on a balance of probabilities. The Chair’s letter also cautioned the complainant as to the potential consequences of submitting a complaint which was short or unsupported by any evidence and, in particular “…that it is less likely to contain the detail or evidence required to enable the Expert to give full weight to the case you are seeking to make.” Despite these warnings, the complainant chose not to supplement its submissions or file any evidence. No response was filed. On 14 March 2008, the complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

Cerryg Jones, 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 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.

3.	Outstanding Formal/Procedural Issues (if any):
There are no other outstanding procedural issues that arise. 
4.	The background and the Complainant’s submissions

The complaint is set out in full below; it contains little information about the complainant or the respondent, or about the facts and matters giving rise to it.

“1) The Complainant has rights in the Domain Name because it is the registered Proprietor of Community Trade Mark Registration 268367 as shown on the four-page printout which will be sent with the original documents. 2) The Registration is in force and is for the words: SWANN-MORTON and the Domain Name the subject of this complaint is in respect of the Complainant’s Registered Trade Mark. The absence of the hyphen in the Domain Name is irrelevant. 3) The ownership of a Domain Name consisting of Claimant’s Registered Trade Mark is contrary to the exclusive rights of use, for Claimant’s products acquired by this Trade Mark Registration acquired by Claimant under trade mark law, and hence is an abuse. 4) The Respondent is, or was, a distributor of the Complaint’s products, as evidence of which we attach a printout dated 20.11.2007 from the Respondent’s website, but it is asserted on behalf of the Complainant that this third party has no right of ownership of a Domain Name consisting of the Complainant’s Registered Trade Mark. 5) The Respondent is attempting to sell the Domain Name, as evidence of which we attach a “Domain for Sale” printout dated 05.02.2008, and consequently Complainant asserts this constitutes abuse. 6) By a letter dated 12 December 2007 the Complainant voiced its concerns to the Respondent and made requests. 7) In a reply dated 17 January the Respondent indicated it considered it was doing nothing wrong and declined to comply with Complainant’s requests, and consequently the Complainant has initiated this complaints procedure.”

Although the complaint refers to some documentary evidence (a print-out of the Community Trade Mark registration and a print out from the Respondent’s website) no such evidence was contained in the file that was transmitted to me by Nominet.  I have already explained that no response was filed.

5	Discussion and findings

The first question I need to address is whether, in the absence of any documentary evidence supporting the assertion that the complainant is the owner of a Community Trade Mark, I am entitled to conduct an online search of the UK Trade Marks Registry database against either the trade mark number set out in the complaint, or the mark SWANN-MORETON to verify the truth or accuracy of the complainant’s assertion. In this respect, I bear in mind that, under paragraph 12 b of the DRS Procedure, the expert alone determines the admissibility, relevance, materiality and weight of the evidence and, under paragraph 16, the expert’s decision is to be based “on the parties’ submissions, the Policy and the Procedure.”  

I have concluded that I am so entitled bearing in mind (a) that I have been provided with the trade mark number and the mark text the subject of the complaint; (b) the aims and objectives of the DRS Policy and Procedure, which are designed to facilitate a speedy and low cost resolution of domain name disputes. It would not be consistent, in my view, with those aims and objectives for an expert, as a matter of course, to refuse to make some limited enquiries of the sort described when presented with the trade mark number and mark text in the body of the complaint; and (c) that past expert decisions have held that the establishment of “Rights” (as defined in the Policy) does not set a high or specific threshold for the requirement to be satisfied.  A Complainant is not expected to submit the type of evidence which is routinely the subject of intellectual property litigation conducted in the High Court. 

An online search on the UK Trade Marks Registry database reveals that the complainant is the owner of the registration referred to in the complaint in respect of craft knives, industrial knives in class 8 and surgical instruments, scalpels, scalpel blades, surgical knives, and surgical stitch cutters in class 10. 

The next question that I should decide is whether the complainant has “Rights” in respect of a name or mark which is identical or similar to the Domain Name. Clearly the complainant has satisfied this test, the only difference being the absence of a hyphen, which I accept is immaterial for the purposes of this test.

The final question for me to determine is whether the complainant has proved on a balance of probabilities that the Domain Name constitutes an abusive registration in the hands of the respondent. Paragraph 1 of the Policy defines this 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 be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration. 
There are two grounds relied upon by the complainant, namely (a) that the ownership of a domain name, as it consists of a third party registered trade mark, automatically constitutes registered trade mark infringement on the basis that ownership gives the owner exclusive rights of use and that this, in turn, amounts to an abusive registration, irrespective of whether the registrant was (or is) a distributor of the complainant’s products; and (b) that the respondent is attempting to sell the Domain Name.  In that respect, the file papers transmitted to me include a print out of the website www.swannmorton.co.uk dated 18 February 2008, which I understand is one of the standard documents provided by Nominet as part of the case papers (rather than the print out referred to by the Complainant). On that print out appears the text “Domain for sale.” The Respondent’s website has at the date of writing this decision replaced that text with “Not in use.” 

As to the first alleged ground of abuse, it is a fundamental principle of trade mark jurisprudence that a registered trade mark does not provide absolute protection against use by third parties.  That will depend upon the context and, even in the case of the use of identical conflicting marks for identical goods or services, such protection is only absolute with respect to the guarantee of origin (see Jacob LJ in L’Oreal SA v Bellure NV [2007] EWCA Civ 968 (at paragraphs 41 and 42).  Furthermore, as has been made clear by the ECJ in Celine SARL V Celine SA, Case no. C-17/06, the unauthorised use of a company name, trade name or shop name which is identical to an earlier trade mark in connection with the marketing of identical goods to those in relation to which the trade mark was registered does not automatically entitle the trade mark owner to prevent such unauthorised use.  Such use can be prevented only where the use affects or is liable to affect the functions that a registered trade mark is designed to protect. The essential function of a registered trade mark is to guarantee to consumers the identity of the undertaking responsible for supplying the goods or services made or supplied under the trade mark, by enabling consumers to distinguish those goods or services from others which have a different origin.

The complaint is not supported by any evidence; nor does it contain any submissions in respect of trade mark infringement beyond a bare assertion.  It is hardly surprising therefore that I have concluded that there is not enough material in the complaint to support the complainant’s submission that the respondent’s “use“ of the Domain Name amounts to registered trade mark infringement. 

In any event, the tests to be satisfied under the DRS differ from those which are relevant to infringement claims under the Trade Marks Directive. Accordingly, while evidence of trade mark infringement is likely to be a factor in weighing up whether or not a Domain Name is an abusive registration it may not always be conclusive (though clearly it will be significant).

As to the second ground of abuse, paragraph 3 a. A. of the Policy states that if there are circumstances indicating that (a) the Respondent has registered or acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the complainant or to a competitor of the Complainant (b) for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name, then this may be evidence that the domain name is an abusive registration.

There is not a shred of evidence that the respondent registered or acquired the Domain Name for the purpose of selling it to anyone, let alone the complainant or a competitor of the complainant. Indeed, according to the complainant, the respondent used to be (or is) a distributor of the complainant’s products. It is probable that the respondent registered or acquired the Domain Name in connection with its business rather than the motive contended for by the complainant.  Similarly there is nothing to suggest that the Domain Name was offered for sale at a premium to its acquisition costs or costs incurred using it.

I therefore find that the Domain Name is not an abusive registration. 

6	Decision:

In the light of the foregoing findings, I direct that the Domain Name should not be transferred. 

Cerryg Jones                                                                   8 April 2008