Argos Ltd -v- Transworld Leisure Ltd [2004] DRS 1669 (28 May 2004)

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The Complaint was initially lodged with Nominet on 31st March 2004, papers filed with Nominet on 1st April 2004 and validated by Nominet on 6th April 2004. The Respondent was informed by letter on that same day. By 5th May 2004 no response had been received from the Respondent. Mediation was not pursued. The Complainant paid Nominet the required fees for a decision of an expert in accord with Paragraph 6 of the Nominet (UK) Dispute Resolution Service Policy (“the Policy”).

On 13th May 2004, the undersigned Expert, having indicated to Nominet that there was no reason why he should not handle the case, the case was referred to the Expert for a decision.

There are no agreed facts between the parties given that the Respondent has not provided their view on the facts. However, the Complainant has provided copies of correspondence and email communications and I use these as the basis for constructing this synopsis.

The dispute began in August 2003 when the Complainants became aware that a number of domain names which included the word ‘Argos’ had been registered by the Respondent. Some of these were .com registrations and some – including the domain names considered in this decision – were registered through Nominet. Over the next several months there was some communication between the parties over the ownership and use of all the domain names. The Complainants suggest – and this is supported in their submission - that the communication indicated that the Respondent was prepared to pass the domain names under dispute to the Complainant. This was not done. The Complainant has also suggested that ‘some of the .co.uk’ names were disabled. The Complainant has not provided information on which were disabled and which were not.

By 19th January 2004 the Complainant had passed information to the Respondent – which the Respondent had requested – to allow transfer of the domain names and on that date the Respondent intimated that the transfers had been initiated. However, it appears that this transfer was not effected and on 26th January 2004 the Complainant contacted the Respondent ‘to ask for relevant documentation to effect the transfers.’ No reply to this request was received.

The Complainant has entered a submission based on Trade Marks comprising the single word ‘Argos’ and a well known graphical depiction of that word. The Mark number are 1402779, 1402781, 2116587, 2121041, 2236626 and 2258652.

The Respondent has not entered a submission. I raise the conclusions which can be drawn from this lack of submission below.

Under 2(i) of the DRS Policy it is necessary for a complainant to demonstrate that they have Rights in respect of a name or mark which is identical or similar to the Domain Name. This hurdle is not one which is set particularly high for most Complainants and it is clear that the Complainant has Rights in the mark ‘Argos’ which might satisfy this requirement.

The Respondent has failed to submit arguments to this DRS procedure, but in the attached documentation forwarded by the Complainant it appears that the Respondent believes that they too have rights in the word ‘Argos’ arising from US-based rights and intimated that the related registered .com registrations (argosstore.com and argosstores.com) will be defended in any complaint under the UDRP.

‘Argos’ is, of course, not a coined term. It is a Greek word which appears to refer to ‘lateness’ or ‘tardiness’; a city state in ancient Greece now ruined; a town in Indiana; is used as or in a Mark by various commercial and non-commercial organisations in and outwith Europe. For example, the web site for Argos Arts:

“argos is a centre for contemporary art which stimulates the Belgian and international audio-visual arts with a committed and critical approach.”

Argos has commonly been the name of various academic research projects including a search engine and a current project into computer languages. This demonstrates the difficulty of allocating domain names which might include the term ‘Argos’ and suggests to this Expert that the hurdle may have to be – in some situations – set fractionally higher.

However, clearly in the UK context, the conjunction of ‘Argos’ and ‘store’ or ‘stores’ is qualitatively different from the conjunction of ‘Argos’ and any other term. As the Complainant demonstrates:

“The Complainant has over 520 stores throughout the UK and the Republic of Ireland. Approximately 98% of the UK population lives within 10 miles of an Argos store.”

The concept of an ‘Argos’ ‘store’ is seen strongly in the manner in which the Complainant’s business is arranged and advertised: the evidence provided in the submission is persuasive.

The conjunction, therefore, of Argos and Store/Stores is ‘identical or similar’ to that of a Mark in which the Complainant has rights. I therefore hold that the Complainants have passed (by a substantial margin) the first test set by the DRS policy in the names:

The third domain name which is to be considered in this decision (argos-internet-shopping.co.uk) is more difficult. The evidence provided by the Complainant is not so compelling. For example, there does not appear to be strong use of the name or mark ‘Argos internet shopping’ in the materials provided, though certainly the Complainant does market goods via the internet. The Complainant appears to be arguing that any use of the word ‘Argos’ in a domain name is a potential infringement of their ‘Rights in respect of a name or mark which is identical or similar to the Domain Name’:

“The distinctive feature of all the Domain Names is the word in ARGOS; the words ‘STORE’, ‘STORES’ or ‘INTERNET SHOPPING’ are merely descriptive of the services which the Complainant provides. The Complainant asserts that the addition of generic words to its trade mark does not reduce the Domain Names confusing similarity to the Complainant’s marks (see the decision (albeit a decision under the UDRP) Nintendo of America, Inc -v- Gray West International)”

There are several problems with accepting reasoning which suggests that this UDRP decision should be followed. First, it was made by a sole panellist and the absence of an argued response means that the decision could lack depth of reasoning; second, the UDRP procedure differs from that of Nominet; third, the Mark ‘Pokemon’ which was considered under the cited decision clearly differs from that of a more widely used and owned Mark such as ‘Argos’ in that it appears to have no usage outwith that of the ‘Nintendo’ context. The submission from the Complainant does not explain why this UDRP decision – given these factors – should be followed in this DRS process.

The DRS Appeal Decisions do not appear to be particularly helpful. For example, “Seiko” (Seiko Uk Limited -V- Designer Time/Wanderweb, DRS 00248) was clearly a Mark in which the owner has sole rights. The same situation appears with Club 18-30 (Thomas Cook UK Limited -v- Whitley Bay Uncovered, DRS 00583). . In Parma (Consorzio del Prosciutto di Parma -v- Vital Domains Limited, DRS 00359) the domain names, in full, were held by a majority to be descriptive indicators.

‘Argos’ differs from these Marks particularly because valid ownership and usage of the word ‘Argos’ as part of a Mark and hence valid potential domain name usage is much wider. ‘Argos’ is clearly not a generic Mark, but that does not support the Complainant’s argument that the addition of a descriptive term necessarily produces a confusing similarity.

“a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business”

The wording ‘Argos Internet Shopping’ is not wholly descriptive and would – on evidence of use as a Mark – be covered by the policy definition of Rights. In this case, the evidence is lacking from the Complainant’s submission.

I hold, therefore, that - in the absence of evidence from the Complainant’s submission that Argos has rights in the ‘Argos Internet Shopping’ ‘name or Mark which is identical or similar to the Domain Name’ - the Complainant fails on this test for the disputed domain name of:

I deal with the Complainant’s charge of Abusive Registration of the two domain names:

The Respondent has not replied to the arguments made by the Complainant. Under Paragraph 15c of the DRS Procedure the Expert may draw inferences from this non-compliance:

“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.”

Where the Complainant has made out a prima facie case, it seems clear that the Complaint must succeed. The Respondent has had the opportunity to challenge the case made by the Complainant and has declined. However, this does not mean that the expert must accept as fact all submissions made by the Complainant or necessarily follow all the reasoning of the Complainant.

The Complainant has provided a wide-ranging number of points which it believes support the requested transfer. Some of these appear in the ‘background’ section of the Complaint and for clarity I have extracted that and include it within my discussion of the explicitly made contentions re: Abusive Registration. I have applied short-hand terms to each of the contentions made by the Complainant to help clarify the reasoning and for each of the Contentions I provide a view of how I view the Contentions in light of ‘Abusive Registration’.

1. ‘Assist in Marketing’: On 10 September 2003, the Complainant’s representatives wrote to the Respondent to ask it to transfer the Domain Names to the Complainant. In the reply, Mr Dohonu, on behalf of the Respondent, stated that the Respondent had registered the names “…. to assist in the marketing of your client’s business as an affiliate merchant which was encouraged by your client ……”. Mr Dohonu said that “as a token of goodwill” he had disabled the .co.uk names and that they would be transferred to the Complainant. In addition, it was stated that “.. should you rather take up the matter with Nominet we will ignore their correspondence which will allow you to successfully claim. the co.uk registrations by default”. The Respondent then disabled some of the .co.uk names.

The Expert’s view: ‘Assisting in marketing’ is a clear indication that there was some link between the commercial activities of the Respondent and his use of the Domain Name. These were not simply registrations which were carried out under a business plan or strategy which was divorced from that of the Complainant.

2. ‘Breach of Contract’: In a letter dated 7 October 2003, the Complainant’s representative noted that whilst the Respondent had been a member of the Complainant’s affiliate programme the Respondent was in breach of its affiliate agreement as it had registered domain names which were identical or similar to the Complainant’s brand names. At clause 4.2 of the agreement it is stated that the licensees/sub-licensees (that is, members of the affiliate programme) “shall not adopt any names, trade marks, service marks or domain names that are confusingly similar to, or in combination with any of the licensor’s [Argos] tradenames, trademarks, service marks and/or domain names”. However, in an attempt to resolve the dispute, the Complainant agreed to accept the Respondent’s offer, subject to the Respondent providing a number of undertakings.

The Expert’s view: This can only be accepted as an indication of a commercial relationship between the two parties. It cannot be the function of a DRS Expert to consider the terms and behaviours of the parties to a contract, particularly one which appears to be a ‘clickable’ contract and where there is no evidence provided by the Complainant of the value of the contractual relationship to the parties.

3. ‘Agreement to Transfer’: On 1 December 2003, the Respondent suggested that the Complainant should set up an account which would facilitate the transfer of the Domain Names. The Respondent also stated that it had been registered 6 other “Argos” names, namely argosareguide.com, argos-additions.co.uk, argosstores.com argostores.co.uk, argosuk.co.uk and argos-additions.co.uk. Accordingly, in total, the Respondent had registered 11 “Argos” domain names. Apart from the Domain Names which are the subject of this dispute, the other names are either outside the ambit of the Policy or have been transferred by the Respondent to third parties.

On 12 December 2003, the Complainant’s representatives sent an e-mail to the Respondent, accepting the Respondent’s offer to transfer the Domain Names. Details of the Complainant’s account were provided, in accordance with the Respondent’s request.

On 19 January 2004, the Respondent sent an e-mail to the Complainant’s representatives stating that the transfers had been initiated. However, the Complainant was unable to secure the transfer of the Domain Names as the Respondent had to comply with Nominet’s transfer procedure. On 26 January 2005, the Complainant’s representatives contacted the Respondent to ask for the relevant documentation to effect the transfers. No reply to this e-mail has been received.

The Expert’s view: There does not appear to be any indication of traditional ‘cybersquatting’ in that no monetary request has been made which meets that set out under Paragraph 3(i)A of the Policy: “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”. It is not clear to this Expert the relevance for the DRS procedure of an informal agreement which has broken down.

4. ‘Gaining Commercial Benefit’: The Domain Names are confusingly similar to the Complainant’s trade marks and it appears that the Respondent registered the Domain Names solely for their value and as a way in which to divert traffic to sites for its commercial benefit. The Complainant contends that the Domain Names were registered by the Respondent in a manner which was intended to take unfair advantage of, and be detrimental to, the Complainant’s Rights. Accordingly, the Respondent’s registration and use of the Domain Names falls within the definition of Abusive Registration set out at 1(i) of the Policy.

The Expert’s view: The domains names argosstore.co.uk and argosstores.co.uk are certainly confusingly similar to the Marks of the Complainant. The submission by the Complainant, however, does not provide strong evidence to support the conclusion that the Respondent registered them ‘solely for their value and as a way in which to divert traffic to sites for its commercial benefit’. However, since there is clearly evidence of some sort of commercial link between the two parties, on the balance of probabilities it could be concluded that each domain name:

“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;

5. ‘Disruption of the Complainant’s Business’. The Respondent has registered a large number of “ARGOS” related names. This has disrupted the business of the Complainant as a number of those names have been directed to third party sites which provided competing services to the Complainant. Due to the prominence of the Complainant and the services which it provides under the name ARGOS, it is likely that the Respondent sought to benefit from the Complainant’s substantial reputation. Prior to the notification of the Complaint, the Respondent had been part of the Complainant’s affiliate programme. Under the programme, an affiliate member’s website links to the Complainant’s web site and the affiliate may earn commission if a customer purchases a product through argos.co.uk via the affiliate’s link.

The Expert’s View: There is little evidence provided for this contention in the Complainant’s submission that business has been disrupted. However, once again, since there is some evidence of some commercial link between the two parties, the balance of probabilities perhaps falls on the side of the Complainant.

6. Confusing People or Businesses: in a way which has confused people or businesses into believing that the Domain Names are registered to, authorised by or otherwise connected with the Complainant. The Domain Names are confusingly similar to the Complainant’s marks. It is likely that a not insignificant proportion of users trying to access the Complainant’s site may have typed the Domain Names to a browser and may have considered that the sites to which the Domain Names resolved were either connected to, or authorised by, the Complainant. As the Domain Names now only resolve to 123-reg.co.uk, users who mistakenly try and find the Complainant through the Domain Names may consider that the Complainant does not have an active website.

The Expert’s view: There is a dearth of evidence provided in the Complainant’s submission to support the view that users or businesses are confused.

7. To Block Registrations. As blocking registrations as against a name or mark in which the Complainant has Rights. … The Respondent has never tried to establish that it has any rights to the Domain Names, and has, in effect, acknowledged that its actions in respect of the Domain Names had been contrary to honest commercial practices. In particular, disabling the sites after being notified of the Complainant’s intention to have the Domain Names transferred to it, is a strong indication that the Respondent was aware of its wrong doing. The Complainant is being denied the opportunity to make legitimate use of its own trading name on the internet as a result of the Respondent’s action. The Respondent is not currently using the Domain Names which is a further indication that the only reason that the Respondent has retained the Domain Names rather than transfer them to the Complainant is to block the legitimate use by the Complainant.

The Expert’s view: The Complainants appear to take the view that any use of Argos in a domain name is de facto blocking. This cannot generally be true since there are other valid domain names which include that word. However, given that there was a commercial relationship between the two parties and there is a striking closeness between the domain names under complaint and the central domain name and Mark of the Complainant it can, on the balance of probabilities, be concluded that there was some slight evidence of blocking.

8 ‘Engages in a Pattern of Abusive Registration.’ The Respondent has been the subject of another complaint under the DRS which has been brought by Staples, Inc in relation to its registration of stapels.co.uk, a misspelling of Staples’ mark. In that decision it was found that the registration of the name by the Respondent amounted to an Abusive Registration. This supports the Complainant’s assertion that the Respondent engages in a pattern of registering domain names in which it does not have a legitimate interest.

The Expert’s view: It cannot be said that a single episode is a ‘pattern’. A pattern will begin to emerge when – for example – this decision finds against the Respondent. The Staples/Stapels decision is one where the Complainants in that complaint provided clear evidence of commercial benefit through abusive registration – for example, the Expert in that decision (DRS 01514) noted the use of ‘STAPELS in logo form in a manner clearly intended to ape the Complainant’s logo”. This must demonstrate that the Respondent is capable of abusive registration even if not involved, at this point, in a pattern of abusive registration.

The case being made by the Complainant has some substance. It is not substance which has been clearly and unambiguously made in the submission. Nonetheless, it is a case which has been made without response from the Respondent and as has been suggested in other DRS decisions, this cannot have a positive effect on the Respondent’s case. When looking at the evidence which might demonstrate abusive registration, on the balance of probabilities it can only have the opposite effect of strengthening the case made by the Complainant.

Although the case for the Complainant is not exceptionally strong, in the submission from the Complainant there is some slight evidence of some commercial misbehaviour on the part of the Respondent. There is also a clear registration of domain names which are strikingly similar to that of the Complainant where this slight commercial misbehaviour has been present. On the balance of probabilities and taking into account the lack of submission from the Respondent therefore (in accordance with Para 2.ii.b of the Policy) I find that the Complainant has proven to the Expert that both required elements of Rights in respect of name/mark and abusive registration.

argostores.co.uk
argosstore.co.uk

In accordance with the Complainant’s request, these domain names should be transferred.

In respect of the third domain name – argos-internet-shopping.co.uk – I find that no action is required.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Argos Ltd -v- Transworld Leisure Ltd [2004] DRS 1669 (28 May 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1669.html Cite as: [2004] DRS 1669

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