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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Ebuyer (UK) Ltd v Web Auction Ltd [2002] DRS 347 (8 June 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/347.html Cite as: [2002] DRS 347 |
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Nominet UK Dispute Resolution Service
DRS 00347
Ebuyer (UK) Limited v Web Auction Limited
Decision of Independent Expert
| Complainant: | Ebuyer (UK) Limited |
| Country: | UK |
| Respondent: | Web Auction Limited |
| Country: | UK |
ebuyer.co.uk ("the Domain Name")
The complaint was lodged with Nominet on 11 April 2002. Nominet validated the Complaint and notified the Respondent on 16 April 2002 and informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Mediation not being possible in the circumstances, Nominet so informed the Complainant and on 17 May 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").
Sallie Spilsbury, the undersigned ("the Expert") has 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 impartiality.
Under Paragraph 5a of the Dispute Resolution Service ("the Procedure") the Respondent was required to submit a Response to the Complaint to Nominet by 9 May 2002. The Respondent has failed to do so.
Paragraph 15b of the Procedure provides as follows:
If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.
Are there exceptional circumstances which would suggest that it is not appropriate to proceed to a Decision?
It is the view of the Expert that there are no exceptional circumstances. The Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.
The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties' submissions (which consists of the Complaint in this case) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure).
The Complaint provides the following information about the Complainant. The Complainant registered the domain name "ebuyer.com" on 19 June 2000. The Complainant trades solely in the UK and has operated a successful business selling computers and peripherals on-line since the website began operating in November 2000. The Complainant has built up a thriving business and generated substantial goodwill in its domain name and its company name. The site currently receives 200,000 hits per month and the annual turnover is in excess of £35,000,000.
The Complainant has produced no evidence to support the above, save that the DRS Complaint Form, which asserts these facts, has been signed on behalf of the Complainant by its solicitor as authorised representative.
The RespondentThere is little information before the Expert concerning the Respondent save that one of its directors is Mr Lars Mohlin who, according to information provided to the Complainant, has previously worked for and/or been associated with a company called Micro Warehouse UK Limited. This is of some relevance to the facts set out below.
The Domain NameThe Respondent registered the Domain Name through its ISP on 7 January 1999 (approximately six months before the Complainant registered its ebuyer.com domain name and eleven months before the Complainant began operating its website at that address). A WHOIS database search dated 16 April 2002 lists the Respondent as the current Registrant. There is nothing to indicate that the Respondent has made any use of the Domain Name since registering it.
In June 2000, the Complainant entered into negotiations with Mr Mohlin of the Respondent to purchase the Domain Name. The Complaint records that a price of £4,300 was agreed for purchase of the Domain Name. However before the deal was concluded, Mr Mohlin ceased to communicate with the Complainant and its solicitors and the transaction was aborted.
Subsequently on or about 21 November 2001 it came to the Complainant's attention that its customers or potential customers who mistakenly keyed in the website address "ebuyer.co.uk", as opposed to "ebuyer.com", were being immediately re-directed to the home-page of the Complainant's competitor, Micro Warehouse UK Limited (www.microwarehouse.co.uk). The Complainant asserts that this has caused confusion in the Complainant's customers minds that microwarehouse.co.uk was registered to or otherwise associated or connected with the Complainant. There is no evidence of actual confusion before the Expert.
On discovering the redirection, the Complainant's solicitors were instructed to write to Micro Warehouse UK Limited and did so by letter dated 20 December 2001.
On or about February 2002, the Complainant states that the re-direction of the Complainant's customers to the homepage of Micro Warehouse UK Limited ceased. There is no explanation before the Expert about why the redirection stopped.
The Complainant states that its enquiries have disclosed that Micro Warehouse UK Limited had no rights in the Domain Name. The only potential connection between the Complainant and Micro Warehouse UK Limited is the information provided to the Complainant (from an un-named source), that one of the Respondent's directors has previously worked for and/or been associated with Micro Warehouse UK Limited.
It must be stressed that Nominet has no jurisdiction over Micro Warehouse UK Limited in relation to the Complaint. The above information is set out only insofar as it is relevant to the Complaint made against the Respondent.
Prior to lodging the Complaint the Complainant's solicitors wrote to the Respondent on 28 February 2002 articulating the substance of its complaint. The Respondent has failed to respond to that letter. A chasing letter was sent on 6 March 2002 but no response was received.
The Complainant contends that it has rights in respect of a name or mark which is identical or similar to the Domain Name. In support of this claim it relies on its length of and extent of use of the ebuyer mark in the UK, the success of the Complainant's business and its annual turnover which it contends has generated substantial goodwill. There is no evidence before the Expert of any trade mark registrations.
The Complainant also alleges that the Domain Name in the hands of the Respondent is an Abusive Registration under the terms of the Policy. The Complainant asserts that the registration was abusive for the following reason (in accordance with paragraph 3(a)(ii) of the Policy):
In support of this the Complainant relies on:
The Respondent has made no submissions.
Clause 2 of the Policy provides that a Complainant must prove that:
(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(ii ) The Domain Name, in the hands of the Respondent, is an Abusive Registration.
The onus of proving both of the above elements is borne by the Complainant who must prove them on the balance of probabilities (Clause 2b of the Policy).
The term "Rights" is defined by the Policy to include, but not be limited to, rights enforceable under English law but the term does not extend to a name or term which is wholly descriptive of the Complainant's business.
Abusive Registration is defined in Clause 1 of the Policy to mean;
A Domain Name which either:The Complainant asserts that it owns goodwill in the ebuyer mark. The protection of goodwill is a right which is enforceable under English law by way of an action for passing off. It follows that if the Complainant can prove on the balance of probabilities that goodwill has been generated by its use of the ebuyer mark it will be able to establish the requisite rights under the policy.
As stated above there is no primary evidence to support the Complainant's asserted goodwill. Nevertheless the Expert has accessed the Complainant's website at www.ebuyer.com. The trading history provided by the Complainant on that site together with the site's overall professional appearance and structure and the extent of the Complainant's business services is supportive of the Complainant's assertions of the establishment and success of its business which is in turn indicative of the existence of goodwill.
However it must be stressed that if that had not been the case, the Complainant's unsupported assertion of goodwill is unlikely to have been sufficient to discharge its burden of proof in respect of the existence of goodwill.
The Complainant has accordingly established that it owns the requisite rights in the ebuyer mark by virtue of the existence of at least a measure of goodwill generated by the ebuyer mark.
The next point for consideration is whether the Domain Name is identical or similar to the mark(s) in respect of which the Complainant has rights.
The Domain name is ebuyer.co.uk. The Respondent claims Rights in the ebuyer mark- both as part of its corporate name and its website address. The Expert's view is that the Domain Name is clearly identical to the mark in which the Complainant has successfully asserted its rights.
The second criterion under clause 2 of the Policy- Abusive RegistrationThe Complainant does not base the complaint on this criterion. There is no evidence before the Expert to indicate that at the time of its registration the Domain Name took unfair advantage or was detrimental to the Complainant's Rights. Indeed it was registered before the Complainant's use of the ebuyer mark commenced. Although evidence has been produced about negotiations between the Complainant and the Respondent for the aborted sale of the Domain Name, there is no evidence that the Domain Name was registered primarily for the purpose of selling the name to the Complainant or its competitors.
Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain name is an Abusive Registration. As stated above the Complainant relies on 3(ii)
There are 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.
Although no evidence of actual instances confusion has been put before the Expert the use to which the domain name was put- redirecting customers to a competitor of the Complainant- is strongly indicative of the type of confusion referred to in Clause 3(ii). The expert infers that customers interested in purchasing computer equipment who keyed in the ebuyer name would expect to be referred to a site operated by or endorsed by the Complainant. This expectation is unlikely to have been dispelled by the appearance of the Micro Warehouse name on the site to which customers were redirected. The customers would remain under the misleading impression that the Micro Warehouse site had a commercial connection to the Complainant.
Whilst it seems that the redirection has now stopped, the Respondent's lack of explanation for it, coupled with an apparent connection between one of the Respondent's directors and Micro Warehouse UK Limited leads to an understandable and reasonable concern on the part of the Complainant that if the Domain Name remains in the hands of the Respondent the misuse of the Domain name would recur.
The Expert finds that the Complainant has proved on the balance of probabilities that the two elements in paragraph 2 of the Policy are present, namely that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name be transferred to the Complainant.
The Complainant is also seeking an undertaking from the Respondent to desist from abusing the Complainant's rights and goodwill in the name "ebuyer" in the future. The Expert has no jurisdiction under the Policy or Procedure to make this direction. For the avoidance of doubt the relief granted by this decision is limited to the order for transfer of the Domain Name.
Sallie Spilsbury
Date: 8 June 2002
