[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Mactra Shop Equipment & Fittings Ltd v Sunshine Maritime Ltd [2005] DRS 002284 (18 January 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2284.html Cite as: [2005] DRS 002284, [2005] DRS 2284

[New search] [Printable RTF version] [Help]

 
Nominet UK Dispute Resolution Service
DRS 002284

Mactra Shop Equipment & Fittings Limited v Sunshine Maritime Limited

Decision of Independent Expert

1. Parties:

Complainant: Mactra Shop Equipment & Fittings Limited

Country: UK

Respondent: Sunshine Maritime Limited

Country: Spain

2. Domain Name:

schenker-watermakers.co.uk("the Domain Name")

3. Procedural Background:

The Complaint was lodged with Nominet on January 5, 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on January 17, 2005 and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent filed a Response on January 20, 2005 which was communicated to the Complainant the same day. Complainant's Reply was received on January 25, 2005. Mediation not succeeding, on February 25, 2005 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 21 of the Nominet UK Dispute Resolution Service Procedure.

Dawn Osborne, the undersigned, ("the Expert") confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.

4. The Facts:

The Complainant is the exclusive UK distributor for Schenker Italia.

The Respondent is a former UK distributor for Schenker Italia. The Respondent registered the Domain Name on 23 November 2000.

5. The Parties' Contentions:

Complainant:

The substance of the Complaint is as follows:

1. The Complainant is the exclusive UK distributor for Schenker Italia a company manufacturing watermakers.

2. The Respondent was notified by Schenker Italia on 31 August 2004 that their UK distributorship was being removed on 1st October 2004. The Respondent renewed the Domain Name on 25 October 2004 knowing their distributorship had expired.

3. The Respondent is using the Domain Name to advertise Katadyne Watermakers a direct competitor of Schenker Watermakers to unfairly disrupt the latter's business.

4. The Respondent is using the Domain Name to confuse people and businesses into thinking that the Katadyne Product is a Schenker Product with which they have been associated in the past.

5. The Respondent is fully aware that they are interfering with the Complainant's business and causing confusion.

Respondent:

The substance of the Response is as follows:

1. The Domain Name is not an abusive registration. The Respondent has owned and promoted the Domain Name for four years and is clearly stating on its homepage that it does not sell or service Schenker watermakers any more.

2. The use made of the Domain Name is fair and legitimate having been solicited by Schenker Italia to represent them on 7 September 2000 and appointed Canary Island Exclusive Distributors on 13 September. The Respondent subsequently formed Schenker Watermakers Limited in the UK and were appointed exclusive distributors for the UK on 26 October 2000. The Respondent immediately started marketing the product in Marine magazines and on search engines as well as exhibiting at ten international boat shows in the UK at great cost. The Respondent was so successful that Schenker Italia complained that the Respondent was better known and asked them to change the Schenker Watermakers Limited name which the Respondent reluctantly did to Sunshine Maritime Limited.

3. The Respondent traded in the UK as Sunshine Maritime Limited selling advertising and exhibiting Schenker products and causing Schenker watermakers to become one of the most familiar watermaker brand names in the UK and the rest of the world.

4. The Respondent was informed that it would no longer be the UK distributor for the Schenker products, but it continued to pursue its case with Schenker Italia proving it was actively marketing.

5. The Respondent has behaved decently and honourably throughout its four year relationship with Schenker Italia and fulfilled its obligations to the letter.

6. The Respondent has spent many thousands of pounds and hundreds of hours not only promoting the product but also the web site name. It would be unjust after losing business to the Complainant to also lose the advantage of the Domain Name marketing. The web site attached to the domain name is number one in the world on many search engines when seeking Schenker watermakers well above Schenker Italia itself and is financially valuable due to the heavy and costly promotion by the Respondent.

7. We have offered to sell the Domain Name to the Complainant and Schenker Italia which is reasonable. The Respondent wants to take the Respondent's promotional efforts at no cost and this is use of the Dispute Resolution Service Policy in bad faith.

8. The site attached to the Domain Name is being used responsibly as it contains a disclaimer that the Respondent no longer sells or services Schenker systems. This is crystal clear and is not confusing.

9. The Respondent is not interfering with the Complainant's business. The Complainant must do as the Respondent did and invest a lot of time and money in his own site schenkerwatermakers.co.uk. The Respondent is simply trying to take advantage of its costly promotion by clearly stating the facts and offering an alternative product. If the Complainants are successful they will become the new source for customers seeking the Schenker products.

10. The Respondent sees no reason why it cannot hold the Domain Name for a further four years when it will freely relinquish it, no further promotion of the name will be undertaken by the Respondent and it will die a natural death. Otherwise the Complainants or Schenker Italia can buy the name.

Complainant:

The substance of the Reply is as follows:

1. The Domain Name would only be of interest to Schenker Italia or the Complainant as exclusive UK distributor. In any one else's hands e.g. the Respondent the Domain Name is an abusive registration.

2. The Respondent is "Switch Selling".

3. The Respondent's previous company Schenker Watermakers (UK) Limited was compulsorily wound up by the Official Receiver on 26 March 2003.

4. Only 8 boat shows have occurred in the UK during the relevant period.

6. Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Dispute Resolution Service Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

The Complainant is the exclusive UK distributor for Schenker watermaker products in the UK. Under Clause 8 of its Distributor Agreement it has the right to use the Schenker name for the purposes of its exclusive distributorship. The Domain Name consists of the name or mark Schenker, the generic name of the product in question "watermakers" and the suffix <.co.uk>. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the descriptive part of the Domain Name and the domain suffix, which is of no relevant significance and generic.

The Expert finds that the Complainant has rights in respect of a name or mark, which is identical or substantially identical to the Domain Name.

Abusive Registration

This leaves the second limb. Is the Domain Name, in the hands of the Respondent an Abusive Registration? Paragraph 1 of the 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."

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations or has given to Nominet false contact details or that the Complainant paid for the registration or renewal of the Domain Name, the only potentially relevant 'factors' in paragraph 3 are to be found in subparagraph i and ii, which read as follows:

i "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A. 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; or

C. 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 or authorised by, or otherwise connected with the Complainant."

At the time of the registration of the Domain Name the Respondent was the UK Distributor for Schenker Italia. The Expert believes that the Domain Name was acquired for use by the Respondent in its business as the UK distributor and as such the Expert finds that it was not registered or acquired primarily to be sold at a profit, as a blocking registration or to disrupt anyone's business.

However, the Respondent is currently using the Domain Name to sell competing products to those sold by Schenker Italia when it is no longer the UK distributor and to compete with the Complainant who is now the UK distributor instead. There is no evidence that the site has confused anyone into thinking it is associated with the Complainant the new UK distributor, as such it does not fall strictly with in the wording of clause 3 a (ii). However the list of factors in paragraph 3 is non exhaustive and the overriding factor is whether the registration is Abusive.

Abusive Registration can be shown where the Domain Name has been used in a manner which takes unfair advantage of or was unfairly detrimental to the Complainant's Rights (Paragraph 1 (ii) of the Policy.)

There is mention of confusion amongst customers when the Respondent was known as Schenker Watermakers Ltd and the Expert believes that use by the Respondent of the Domain Name to sell competing watermakers is likely to cause similar general confusion. The Respondent admits that the Domain Name comes up as number one when customers are searching for Schenker watermaker products. Further, given the similarity between the Domain Name and the domain name of the current UK distributor, e mails meant for the Complainant or its UK distributor may go astray. The Expert believes that the use of the Domain Name to sell competing watermakers when the Respondent was previously the UK distributor for Schenker Italia is confusing. The disclaimer used by the Respondent on its home page is smaller than the central text inviting the customer to click to enter and may not be read by customers in a hurry and the Expert believes it does not obviate the risk of confusion given the background facts. The Domain Name consists of the Schenker trade mark and a generic description of the product. Customers using this Domain Name are highly likely to believe they are dealing with Schenker Italia or at least its authorised distributor.

As such the Expert finds that the Domain Name has been used in a manner which takes unfair advantage or is unfairly detrimental to the Complainant's rights.

Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.

7. Decision:

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent is an Abusive Registration, the Expert directs that the Domain Name,schenker-watermakers.co.uk be transferred to the Complainant.

Date: 18 January 2005

Dawn Osborne