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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Seiko UK Ltd -v- Designer Time/Wanderweb [2002] DRS 248 (8 May 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/248.html Cite as: [2002] DRS 248 |
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Nominet UK Dispute Resolution Service
DRS 00248
Seiko UK Limited v. Designer Time/Wanderweb
Decision of Independent Expert
| Complainant: | Seiko UK Limited |
| Country: | GB |
| Represented by: Baker & McKenzie, London | |
| Respondent: | Designer Time/Wanderweb |
| Country: | GB |
| Represented by: Theodore Goddard, London | |
seiko-shop.co.uk; spoonwatchshop.co.uk
The complaint was first received by Nominet on 13 February, 2002. Nominet validated the complaint and informed the Respondent, by both letter and by e-mail on 14 February, 2002, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (initially until 8 March, 2002) to submit a Response. A Response was received by fax after normal hours on 8 March, 2002 (Nominet extended the deadline to 11 March, 2002) and forwarded to the Complainant on 11 March, 2002 with an invitation to the Complainant to make any further submission in reply to the Response by 20 March, 2002. The Complainant duly filed a reply on 20 March, 2002 (again Nominet extended the deadline to 21 March, 2002 to allow for the receipt of hardcopies). The Reply was forwarded on to the Respondent on the same day. The parties evidently did not take up the option of Informal Mediation, so no such Mediation was possible. The Complainant was informed accordingly on 10 April, 2002 and invited to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly received on 16 April, 2002.
On 17 April 2002, Nominet invited the undersigned, Keith Gymer ("the Expert"), to provide a decision on this case and , following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as Expert with effect from 23 April, 2002.
None.
A Nominet WHOIS search shows that the Domain Name, Seiko-shop.co.uk, was registered on behalf of the Respondent, Wanderweb on 1 November, 2000, evidently through the agency of Fasthosts. Similarly, the WHOIS records show that the Domain Name, Spoonwatchshop.co.uk, was also registered on behalf of the Respondent, Wanderweb on 11 December, 2000, again through the agency of Fasthosts.
The Respondent has operated web-sites under the urls www.Seiko-Shop.co.uk and www.SpoonWatchsShop.co.uk.
The web-sites each identify Wanderweb as the contact for enquiries regarding the sites and include the respective statements "Welcome to one of the UK's leading Independent Retailers of Seiko Watches" and "Welcome to one of the UK's leading on-line retailers of Spoon Watches".
The Complainant is the UK subsidiary of Seiko Watch Corporation, which itself is wholly owned by Seiko Corporation, (together "Seiko Company") and is its exclusive distributor in the UK. Seiko Company is a world famous watch manufacturer and its high quality watches are sold in jewellers and other watch retailers throughout the world. The predecessor of Seiko Corporation was established in 1881 and Seiko Company has been producing SEIKO watches since at least 1924. It established a subsidiary in the UK, the Complainant, in 1971.In May 1997, Seiko UK Limited registered the domain name www.seiko.co.uk with Nominet UK.
Seiko Kabushiki Kaisha (trading as Seiko Corporation), the ultimate parent company of the Complainant, is the registered proprietor of a number of registered UK and Community Trade Marks for the trade marks "SEIKO" and "SPOON". (Copies of the relevant trade mark registrations in Class 14, covering watches and clocks, were annexed to the Complaint.) Seiko Corporation's first registration [847555] for SEIKO in class 14 dates back to 1963 and for SPOON [2118100] dates from 1996.
The Complainant first contacted the principals behind Wanderweb in March 2001 to inform them of the Complainant's objections to their registration and use of the domain names at issue. Thereafter, the evidence shows that repeated efforts were made, at least on behalf of the Complainant, in an attempt to negotiate an amicable resolution of its complaints. The present Complaint was filed in February 2002 when the Respondent had not accepted the proposed settlement despite repeated requests.
The respective parties have each made various additional assertions as summarised below.
The Complainant claims that:
The Complainant requests that the disputed domain names be transferred to the Complainant.
Respondent:The Respondent made submissions in its Response to the following effect:
In Reply to the points raised in the Response the Complainant made various rebuttals:
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that (i) it has Rights in respect of a name or mark which is identical or similar to each of the Domain Names at issue; and that (ii) the Domain Names, in the hands of the Respondent, are each Abusive Registrations as defined in Paragraph 1 of the Policy.
Complainant's RightsThe Complainant in this case has asserted (1) that it has rights in the name and mark SEIKO and that this name is identical or similar to the Domain Name seiko-shop.co.uk, and (2) that it has rights in the mark SPOON for watches and that this mark is identical or similar to the Domain Name spoonwatchshop.co.uk.
On the basis of the evidence submitted, it is clear that the Complainant has substantial rights in the name SEIKO and, in the Expert's opinion, it has also established that is undoubtedly an internationally famous mark, which would potentially entitle it to additional legal protection on that basis. It has also satisfied the Expert that it has recognisable registered trade mark rights in the mark SPOON for watches.
The parties' debate over which particular section(s) of the TMA 1994 might apply in respect of registered trade mark rights in the event of an infringement claim, however, is not relevant to these DRS proceedings. Any decision in these proceedings is purely an administrative conclusion based on the contractual terms of the Nominet registration agreement and the provisions of the DRS Policy itself. As such, a decision in these proceedings is not, and cannot be, a judgement on whether or not the actions of the Respondent amount to trade mark infringement. That is a matter for the Courts.
From the Expert's perspective, in relation to the requirement of paragraph 2(i) of the Policy it is only necessary to consider the identity or similarity of the relevant marks with the respective domain names.
In both instances, the marks are not literally identical to the Domain Names as a whole, nor to the respective unique portions of the Domain Names before ".co.uk". It is therefore necessary to consider whether they are "similar" for the purposes of the Policy.
To English readers, the Domain Name "Seiko-shop.co.uk" is readily recognised as comprising the Complainant's mark SEIKO, together with the descriptive element "shop". The Respondent has itself acknowledged in its Response that this is how this Domain Name is constructed. The "shop" element is merely descriptive of premises (virtual or bricks and mortar) for selling SEIKO goods. The distinctive component of the Domain Name is the mark, which will manifestly be seen in this context for exactly what it is - a famous brand name and house mark associated with the descriptive term "shop".
From a trade mark perspective, in these circumstances, the addition of the word "shop" adds nothing distinctive and the combination "Seiko-shop" would certainly be considered at least as "confusingly similar" to SEIKO and possibly as materially identical. The Respondent's various counter arguments in this context are unconvincing and are indeed misleadingly incomplete in their attempt to cite support from precedent. In S.A. Societe LTJ Diffusion v S.A. SADAS the marks at issue were "Arthur" in stylised text and ARTHUR ET FELICIE and the Advocate General carefully qualified his opinion (selectively abridged by the Respondent) with the addition:
" the national court must first identify what is perceived by the average, reasonably well-informed, observant and circumspect consumer as the relevant mark and sign, then assess globally the visual, aural and other sensory or conceptual features of the mark and sign in question and the overall impression created by them, in particular by their distinctive and dominant components, in order to determine whether the two would be perceived by such a consumer as the same in the sense that any differences are minute or wholly insignificant, or whether the two would be perceived rather as similar in the sense that the differences are greater than that."
The addition of "shop" to SEIKO might reasonably be considered as "insignificant" in terms of overall consumer perception on that basis.
Additionally, from the trade mark perspective, the marks SEIKO and "SEIKO Shop" may be said to "resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark [SEIKO]." As such, the Expert has little doubt that both would be inherently registrable together as a series (under Section 41(2) TMA 1994) for the service of selling watches (appropriately defined) in Class 35 under current UK Registry practice if desired.
However, under Paragraph 2(i) of the Policy "similarity" alone is sufficient, so it is not necessary to come to abstract conclusions on the existence of material identity or whether the similarity is "confusing" or not. Accordingly, for the purposes of the Policy the Expert readily concludes that the Complainant does have Rights in this case in respect of a name or mark, which is similar to the Domain Name "Seiko-shop.co.uk".
Similarly, in the light of the Complainant's demonstrable rights in the mark SPOON for watches, and the specific, purely descriptive nature of the addition "watchshop" in the Domain Name "Spoonwatchshop.co.uk", the Expert correspondingly concludes that the Complainant does also have Rights in respect of a name or mark, which is similar to the Domain Name "Spoonwatchshop.co.uk".
Abusive RegistrationThe Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy. The most relevant factor in the present case is as set out in Paragraph 3a(ii):
To be entirely consistent with this example there needs to be some evidence of actual confusion on behalf of people or businesses that a Domain Name at issue was being used by the Respondent in a way which led them into believing that the Domain Name was connected with the Complainant. The Complainant provided two letters as evidence of such confusion - one from another Seiko dealer and one from a person whose precise status was not clear but who appeared to be an employee of or contracted by Seiko. This evidence was not substantial, but is at least indicative of a likely problem.
However, as the Complainant has also rightly observed, the factors listed in Paragraph 3 of the Policy are in any event only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the definition as indicated above.
Reduced to its critical elements, the decision in this case depends on whether or not the registration and use of a domain name, incorporating a supplier's registered trade mark together with other non-distinctive characters, by a legitimate trader in that supplier's goods, but without the approval of the supplier, takes unfair advantage of the Complainant supplier's rights.
This question has been addressed in a number of decisions under the Uniform Dispute Resolution Policy [UDRP] as applied to the generic Top Level Domains such as (.com) and in earlier cases under the Nominet DRS. Experts have debated the question in some depth and the arguments for and against have been well exercised.
A trade mark owner will rely on the fundamental exclusivity of the trade mark right which is infringed by use without the owner's consent (cf. TMA 1994 s9(1)).
The domain name registrant will argue, as in this case, that the domain name is not the identical mark and that its use is legitimately for the purpose of identifying goods or services as those of the owner of the mark (cf. TMA 1994 s10(6)).
Significantly, such "nominative fair use" as it is sometimes called, is invariably subject to qualification and, in the UK, is not acceptable if "..the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark" (TMA 1994 s10(6)). There is an obvious similarity with the wording of the DRS Paragraph 1(ii).
The issue is where the line should be drawn between what is fair and what is unfair.
The Respondent goes as far as to assert that its use is "in good faith and in accordance with honest business practices, to the benefit of the Complainant". Its case is that it is an authorised dealer, selling genuine goods, which profit the Complainant. Its web-sites also accurately identify it as an independent retailer, so allegedly no-one can be confused
The Complainant has stated expressly that it "does not authorise any single retailer to use Seiko Company trade marks for its [the retailer's] own business activities, such as for a trading name." It argues that the use of the disputed Domain Names implies a closer relationship than wholesaler-retailer and that the Domain Names were expressly chosen with a view to obtaining an unfair advantage, particularly over other retailers (reportedly there are 800 independent retailers in the UK alone). The Complainant also objects to the use of its trade marks within so-called meta-tags on the Respondent's web pages and to the alleged registration by the Respondent of "Seiko watches" as a browser Keyword such that reportedly a user typing those words into the browser address field would automatically be redirected to the Respondent's web-site.
It is worthwhile considering the nature of and the differences between these various uses, in a domain name, in meta-tags and in a Keyword.
A domain name is a verbal reference for a specific computer address on the internet It is therefore necessarily unique and exclusive. In this respect it is similar to a company name registration, which must likewise be unique. Once Seiko-shop.co.uk has been registered, no other would-be user can register or use the identical domain name. . A domain name provides a unique trading name on the internet which may be used by a registrant for a web-site and email. The Respondent notes that other names, such as seikowatch.org.uk or seikoshop.org.uk could be available for registration. However, this highlights one of the problems of the domain name system from the perspective of a trade mark owner. The system allows for an unlimited proliferation of individually different domain names incorporating a trade mark which may be used with a complete disregard for consistency and massive potential for consequent consumer confusion (what would a consumer make of a proliferation of names such as seiko-shop.co.uk; seikowatch.co.uk, seiko-watch-shop.co.uk all operated by different parties in different trading styles?), whilst at the same time enabling individual registrants to appropriate exclusive rights to preferred names for their own benefit.
Meta-tags, however, are not exclusive. They are lists of keywords included in the coding of a web-page for the benefit of search engines, although they are not normally visible to a user when the web-page itself is displayed. They may nonetheless be considered as fulfilling the function of the virtual equivalent of shop window adverts. Any legitimate trader, therefore, might reasonably use trade marks of the goods it sells as meta-tags. Such use would appear to properly fulfil the purpose of identifying the kind of goods or services on offer (cf. TMA 1994 s11(2)(b). Any legitimate retailer can use meta-tags and there is no inherently unfair exclusive advantage for one relative to another.
Browser Keywords perhaps fall between the two. There are different competing Keyword systems on offer. It is not clear from the evidence in the present case exactly what sort of "Keyword" rights the Respondent has allegedly purchased. At least one system allows a party to purchase the option for users typing in a selected Keyword (or phrase) into a suitably enabled browser to be redirected exclusively to the purchaser's own web-site. Others provide for purchase of ranking position on a page listing several parties who have paid to have links to their web-sites displayed when the relevant Keyword is entered. Thus, issues of unfair advantage may or may not arise. Where the Keyword is, or incorporates a trade mark, the trade mark owner might reasonably be expected to have concerns about the validity of such use.
However, the rights or wrongs of types of Keyword registration are not a matter for these proceedings, and nor is the right (or not) of a party to use trade marks as meta-tags. The point of the brief observations above is to emphasise the exclusive nature of a domain name.
In the present case, both the relevant marks are used in the respective Domain Names in a trade mark sense. The message they convey in the first case is that the user is going to a SEIKO Shop site, in the second case, to a SPOON watch shop site. The Respondent's arguments that the use of the marks is somehow in accordance with honest practices in such matters are not convincing. Such arguments might have had some weight if the Respondent had adopted a more genuinely descriptive domain name such as "We-sell-SEIKO-watches.co.uk", but the evidence shows that the Respondent chose SeikoShop.co.uk and SpoonWatchShop.co.uk because those would take most effective advantage of the reputation and goodwill established by the Complainant in its famous house mark SEIKO and in its product mark SPOON for watches. From quick Google searches for relevant terms (e.g. SEIKO UK and SPOON WATCH), it appears that the Respondent's tactics have been successful. However, it is also apparent that other traders manage to achieve high ratings on these searches without having to confusingly appropriate the marks in their domain names.
The Respondent has essentially pre-empted the trade mark owner's exclusive right to control use of its marks and appropriated to itself the exclusive rights in a preferred domain name for on-line shops for SEIKO products. The Expert believes the Complainant is correct when it asserts that consumers will not be aware that SEIKO does not itself deal directly with end-purchasers. Given the path set by SWATCH with their own retail stores, the Expert considers it highly likely that consumers would see the supply and sale of watches as intimately related and would expect that SEIKO-shop.co.uk was operated by or with the authority of the Complainant.
The fact that there are hundreds of Seiko retailers like the Respondent in the UK alone makes it even more apparent that in appropriating the internet domain name SEIKO-shop.co.uk to itself the Respondent was taking unfair advantage of the Complainant's mark to set itself above the others. Such an action might conceivably have been defensible if the Respondent were an exclusive SEIKO dealer in the UK, but it is not. As it is, if the Respondent's actions were to be approved, it would open the floodgates for every retailer to register a slightly different domain name incorporating the SEIKO mark (e.g. newSeikoshop.co.uk; SEIKO-shop1.co.uk SEIKOshoponline.co.uk etc. etc.), with inevitably confusing consequences for the consumer and the effective destruction of any possibility for the trade mark owner to control the use of their mark as a trading style on the internet in a consistent manner. That would not be ultimately a desirable result for any party.
The Expert recognises that in coming to this conclusion he is differing from the UDRP Panel in the UDRP Case D2001-0160, which decided by a 2-1 majority that a registration of mercedesshop.com should not be transferred to the owner of the famous MERCEDES mark. In that case, the majority made the extraordinary assertion that if they were to find for the Complainant they "could conceive of no case in which a legitimate competitor in the sale of parts and after-market accessories could ever register a domain name descriptive of that business." The Expert in the present case considers such an assertion manifestly misrepresents and exaggerates the reality and that the decision in that cases risks severely undermining and diluting at trade mark owner's rights for the reasons discussed above. The Expert would therefore agree with the dissenting opinion in that case and the Panel in the subsequent UDRP Case D2002-0036, (re: volvoinsurance.com) for example, which considered D2001-0160 as wrongly decided.
In any event, the requirements of the DRS Policy are of course not the same as, and are arguably less stringent than, those of the UDRP, which require a Complainant to show that the registrant has no rights or legitimate interests and has registered and used a disputed domain name in bad faith.
For completeness, it is appropriate to consider a few other points raised by the Parties:
Firstly, the fact that there may be other domain names which might be objectionable in the hands of others against whom the Complainant has not yet taken action can be of no help to the Respondent. The malfeasance of others cannot justify any other Abusive Registration.
In correspondence with the Respondent's original legal representatives, the Complainant also specifically drew attention to the statement of the Court of Appeal in the leading UK case involving domain name registrations (British Telecommunications plc and Others v. One in a Million Ltd and Others [1999] ETMR 61), where the Court stated:
"The placing on a register of a distinctive name [...] makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name."
The Expert considers that statement is most certainly pertinent to the registration of a domain name incorporating a famous house mark such as SEIKO. It may arguably be not so clearly applicable in the case of a less well-known product mark like SPOON, particularly as the Complainant appears to use that mark as a subordinate mark to another of its marks, PULSAR.
The Respondent referred to the judgement of the European Court of Justice in BMW v. Deenik, Case C-63/97, suggesting that it supported the Respondent's case. The Expert, on the contrary, considers that judgement might rather be applied against the Respondent. In BMW v. Deenik, which was not a domain name case, but which involved consideration of the right of a trade mark owner (BMW) to prevent informative use of its mark by a dealer, the Court held that the proprietor of a trade mark was not entitled to prohibit a third party from using the mark for such informative purposes "unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings."
In the Expert's opinion, use of the SEIKO mark in a trade mark sense in the Domain Name, Seiko-shop.co.uk creates precisely the sort of impression of a (non-existent) "special relationship" beyond that of one of Seiko's 800 ordinary retailers, which the ECJ would allow the trade mark owner to prevent.
The Complainant provided evidence that the Respondent has also registered other domain names, including: casio-shop.co.uk, citizenshop.co.uk, dolceandgabbanawatches.co.uk and swatch-shop.co.uk, all of which contain registered trade marks of third parties. No evidence was provided (e.g. in the form of statements from the owners o the marks concerned) as to whether or not the Respondent was authorised to do so by any of the owners of the respective marks, so the Expert has treated that question as moot. However, if unauthorised, the Expert would be prepared to consider such registrations as potentially Abusive.
The Expert notes that in his experience, rather than using other parties' marks in domain names, as the Respondent has done, other legitimate resellers of goods from various recognised sources have adopted the clearer practice of having separate sections (sometimes even referred to as "shops"), within their own web-sites (see e.g. www.dabs.com and www.microwarehouse.com [Shop By Brand]). As well as reducing the potential for unfairness and confusion, this practice would also seem to commend itself as being wholly outside the DRS Policy!
In the present case, for the reasons above, the Expert concludes that the Domain Names have both been used by the Respondent in a manner which certainly took unfair advantage of or was unfairly detrimental to the Complainant's Rights and that they are both Abusive Registrations for the purposes of the Policy.
Having concluded that the Complainant has Rights in respect of marks which are similar to the Domain Names at issue and that the Domain Names, in the hands of the Respondent, are Abusive Registrations, the Expert determines that the Domain Names Seiko-shop.co.uk, and SpoonWatchShop.co.uk should be transferred to the Complainant.
Keith Gymer
Date: 8 May 2002
