Baum, Jutzi und Partner, Inc v Nominet UK Dispute Resolution Service [2004] DRS 1521 (23 March 2004)

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The Complaint was lodged with Nominet UK (“Nominet”) by hard copy on February 4, 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on February 9, 2003, giving 15 working days within which to lodge a Response. This notification was sent by fax, and also by e-mail to two different addresses. One of these e-mails received an automated reply to the effect that it was an old address now closed down, and the other received a Delivery Failure Report.

No Response was received from the Respondent, so Nominet did not initiate its Informal Mediation procedure.

On March 15, 2004 Nominet received from the Complainant the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet’s Dispute Resolution Service Policy (“the Policy”).

On March 16, 2004 the undersigned, Mr. David H Tatham (“the Expert”) was selected as an Expert, having 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 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.

The Complainant
The Complainant is the manufacturer of STYRO STONE goods which are used in the building industry. The Complainant was formed in 1991 in the USA. It opened its European HQ in Brussels in 1994, and STYRO STONE branded products have been sold throughout the European Union from that date. The Complainant's exclusive UK distributor, Styro Stone UK Limited, was incorporated in 1998 and it has the exclusive right to the use of the mark STYRO STONE in the UK subject to the terms of its contract with, and its licence from, the Complainant. No other company or individual is permitted to use the trade mark STYRO STONE in the UK without the Complainant's express consent.

The Complainant is the registered proprietor of the trade mark STYRO STONE which is the subject of a Community trade mark registration No. 482919 dated March 5, 1997.

The Complainant also owns the domain names <www.styrostone.com> (which was registered on November 26 1996) and <www.styrostone.de>. It is also the owner of the UK "vanity" telephone number 00800 STYROSTONE.

The Complainant
The Complainant contends that the disputed Domain Name was registered without the Complainant's knowledge or consent, that it is identical or similar to a name or mark in which the Complainant has earlier rights, and that it is an Abusive Registration.

The Complainant points out that the name STYRO STONE is an invented term which is neither commonplace nor generic in the Complainant's industry. STYRO STONE is a unique trade mark in the United Kingdom and elsewhere within the EU. The Complainant conducted searches of the UK and the European Community registers of trade marks, and filed copies thereof. In each of these searches only one result for the name STYRO STONE was produced, which was the Complainant's trade mark registration.

In addition, copies were filed of searches made on the internet via the search engine < google.co.uk >against the name STYRO STONE which produced four pages of results, all of which were references to the Complainant's trade mark or products.

The Complainant contends that the disputed domain name is linked to the Complainant's website at <www.styrostone.com> and that this is without the Complainant's consent.

On becoming aware of the Respondent's domain name registration, the Complainant made several attempts to contact the Respondent to request a transfer of the name but never received a response. The Complainant also instructed a firm of commercial investigators to try and trace the Respondent, but to no avail.

The Complainant argues that the disputed domain name is, by its very existence, an abusive registration because:
(a) it contains the Complainant's registered trade mark without their consent;
(b) it is linked to the Complainant's website without their consent and this link implies an association between the Respondent's business and the Complainant's business, an association which does not exist;
(c) the disputed domain name could be freely sold by the Respondent at any time to a third party unconnected with the Complainant's business and, because of the uniqueness of the name STYRO STONE and the importance of this brand to the Complainant, such a sale of this name could cause detriment to the Complainants' business;
(d) there appears to be no obvious rational explanation as to why the Respondent should have registered a domain name containing the Complainant's identical trade mark and should then have chosen to link this domain name to the Complainant's website at <www.styrostone.com> without the Complainant’s consent unless it was to take advantage of the Complainant's valuable trade mark and/or to disrupt the Complainant's business either now or in the future. Whilst the precise motives for the Respondent's actions are unclear, on the balance of probabilities, their motivation for registering and their "use" to date of this name as a link to the Complainant’s website cannot be for motives other than those which could disadvantage the Complainant.

In conclusion, the Complainant argues that by registering a business domain name (i.e. in the .co.uk domain) and by then linking the disputed domain name to the Complainant’s business website at <www.styrostone.com>, the Respondent is using the Complainant’s trade mark ‘in the course of trade’ without any authorisation from the Complainant. If this correct, it could amount to trade mark infringement under Section 10(6) of the Trade Marks Act 1994. For there to be a defence under this Section of the Act, i.e. where a registered trade mark is used for the purpose of identifying goods or services as those of the proprietor or a licensee, such use must be in accordance with honest business practices and must not, without due cause, take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. The Respondent has neither sought the Complainant’s permission to register a domain name which contains the Complainant’s distinctive registered trade mark nor to link it to his website, and he is thus taking unfair advantage of the distinctive character of the trade mark. The Respondent has pre-empted the trade mark owners exclusive right to control the use of its trade marks and has appropriated for itself the rights in a preferred domain name for purposes which are, as yet, unclear to the Complainant, but which cannot be to the Complainant’s advantage in the strictest sense as they are not sanctioned by him.

General
According to paragraph 2 of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the satisfaction of the Expert that –

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.

i. Complainant’s Rights
The Complainant has established that it has valid rights in the trade mark STYRO STONE. This is not identical to the disputed domain name, which has no space between the two words and the additional suffix ‘.co.uk’. However the space is of no significance and it is customary when comparing a domain name with a trade mark to ignore a generic suffix such as ‘.co.uk’. Therefore, in the view of the Expert, the trade mark and the disputed domain name are very similar indeed. In any case the Complainant owns, in addition, two domain name registrations, one of them being a TLD and the other a ccTLD, both of which contain the word ‘styrostone’ which is identical to the disputed domain name. All of these registrations are dated earlier than the disputed domain name.

The Expert therefore finds that the disputed domain name is either identical or similar to words in which the Complainant has rights in the United Kingdom and elsewhere.

ii. Abusive Registration
An ‘abusive registration’ is defined in paragraph 1 of the Policy as being “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.”

An Abusive Registration is defined in Paragraph 3 of the Policy as follows:
(a) A non-exhaustive list of factors which may be evidence of an Abusive Registration is as follows:
(i) circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights;
C. primarily for the purpose of unfairly disrupting the business of the Complainant.

(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 by, or otherwise connected with the Complainant;

(iii) in combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making abusive registrations; or

(iv) it is independently verified that the Respondent has given false contact details to us.

The Respondent has not attempted to sell the disputed domain name [sub-paragraph 3(a)(i)A], nor does the Complainant’s business appear to have suffered any disruption [sub-paragraph 3(a)(i)C], and nor is there any proof that the Respondent is a serial registrant of abusive registrations [sub-paragraph 3(iii)]. Consequently this Decision will deal, firstly, with the other sub-paragraphs of paragraph 3 of the Policy.

Sub-paragraph 3(a)(i)B
Although the Complainant has two existing domain names, one in the .com TLD and the other in Germany, clearly the existence of the disputed domain name would block it, or its UK distributor (Styro Stone UK Limited) from registering a UK domain name. The disputed domain name is therefore a blocking registration.

Sub-paragraph 3(a)(ii)
Because the website at the disputed domain name currently resolves to the Complainant’s own website, a casual visitor to it would be completely unaware that the name does not actually belong to the Complainant or to someone connected with it.

It could therefore be argued that the disputed domain name is not actually causing any confusion. However there is no guarantee that this situation will continue indefinitely and, as the Complainant points out, the name could be sold or otherwise transferred at any time. This could be to someone with a less benevolent attitude towards the Complainant, so there is clearly the potential for possible confusion in the future, but it does not seem to gave occurred yet.

Sub-paragraph 3(a)(iv)
The Respondent’s contact details were apparently not available to the Complainant, although Nominet had them. The Respondent’s e-mail address proved to be wrong and although a message to it produced an alternative address, messages to this alternative were rejected. No reply was ever received from the Respondent to the letters posted and faxed to his address, so this may have been false. The Complainant’s efforts to contact the Respondent through an investigator also proved fruitless – although the Complainant does not explain how, if it had no address for the Respondent, it could properly have instructed its investigator.

However this sub-paragraph of the Policy requires there to be an “Independent verification” of any false contact details, and none has been supplied.

Conclusion
On a strict interpretation of the factors set out in paragraph 3 of the Policy, there is some evidence that the disputed domain name is an Abusive Registration. However the factors in Paragraph 3 of the Policy are said to be “non-exhaustive”, and there are other matters which must be considered

For example, the Complainant argues that the registration of the disputed domain name is an offence under Section 10(6) of the UK Trade Marks Act 1994, and it elaborates why, in its opinion, the Respondent has no defence under this Section. However this predisposes, firstly, that a domain name is a business name which, in the view of the Expert, it is not. It is no more than an address. It also predisposes, secondly, that the disputed domain name is being used in the course of trade, but the only ‘use’ of it is to direct visitors to the Complainant’s own website. This hardly constitutes use in a trade mark sense, although because it is without the permission of the Complainant, such use is probably both taking advantage of and detrimental to the Complainant’s rights. Thus the domain name would qualify as being an Abusive Registration under Paragraph 1(ii) of the Policy..

The trade mark STYRO STONE and the name Styrostone are unique to the Complainant. No one else uses this name and it is not generic. There is no obvious connection between the Complainant and the Respondent and nothing to explain why the latter should have chosen to register the former’s name as its domain name and then to link it to the Complainant’s own website – something which, in the experience of the Expert, is highly unusual. It may have been in a desire to, eventually, sell the name to the Complainant; it may have been with a view to, at some later date, using the site to denigrate the Complainant; it may have been to benefit in some undisclosed way from the Complainant’s reputation or goodwill. If so, it should be noted that the site has been used for none of these things since it was registered some 2 years ago. No explanation for the registration of the disputed domain name has been provided. The Respondent was given every opportunity to respond and to provide such an explanation, but it failed to do so.

The key to this case is the sheer impossibility of there being any innocent explanation as to why the Respondent should have chosen to adopt the Complainant’s name and trade mark other than to the detriment of the Complainant. In the circumstances, the Expert is unable to think of any good reason why the Respondent could reasonably be said to have any legitimate rights or interest in the disputed domain name.

So, taking into consideration all of the above arguments, the Expert has concluded that the disputed domain name is indeed Abusive.

The Expert finds that the Complainant does have Rights in the name STYRO STONE and that this name is identical or similar to the disputed Domain Name.

The Expert further finds that the disputed Domain Name is an Abusive Registration in the hands of the Respondent.

The Expert therefore directs that the disputed Domain Name <styrostone.co.uk> be transferred to the Complainant, although at the same time noting that the registration of the disputed domain name fell due for renewal on March 189, 2004 i.e. during the course of this Complaint, so it may have lapsed.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Baum, Jutzi und Partner, Inc v Nominet UK Dispute Resolution Service [2004] DRS 1521 (23 March 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1521.html Cite as: [2004] DRS 1521