Geoffrey Inc -v- Downmark Ltd [2002] DRS 614 (13 December 2002)

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The Complaint, dated 5 September 2002, was received by Nominet on 16 September 2002. Nominet validated the Complaint, notified the Respondent of the Complaint and informed the Respondent that he had 15 working days within which to lodge a Response. The Response which was undated was received on 21 October 2002 and forwarded to the Complainant on the same day, with an invitation to make a Reply within 5 working days. The Reply, dated 30 October 2002 was received by Nominet the same day. An Informal Mediation process followed, which failed to achieve a settlement. Subsequently the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

On 5 December 2002, Martin Campbell-Kelly, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed 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. In accordance with Nominet’s rules the Expert has not been shown any of the materials generated during mediation.

4. Outstanding Formal/Procedural Issues (if any):

The Respondent (George Highmoor, acting for Downmark Ltd) has expressed a concern that his Response, which he personally wrote, may have been adversely affected by his lack of time and legal expertise. The Expert finds the Response is well prepared, detailed and cogent, and asserts that there were no shortcomings that affected his Decision.

The Respondent has brought to the attention of the Expert the decision of the ICANN National Arbitration Forum (claim number FA0201000103815) by which 32 dot-com domain names registered by the Respondent were transferred to the Complainant in the United States, and the Respondent expressed the opinion that he “fully expects the corporate muscle and wealth to prevail.” The Expert’s decision is entirely independent of the ICANN arbitration, although the Expert has read the judgement in the course of making his decision.

The Respondent has stated that he owns only 13 of the 41 (actually 42) Domain Names. The Expert has been supplied printouts of “whois” enquiries of 41 domain names, all dated 23 September 2002, all of which listed the Respondent (in the name of Downmark Ltd or P.J. Highmoor) as the registrant. There was no “whois” printout for one disputed domain name, yachts-r-us.co.uk; however a “whois” enquiry made by the Expert shows this also to be in the name of Downmark. The Expert therefore believes that all 42 Domain Names are to be the subject of this Decision.

The Complainant, Geoffrey Inc., is a wholly owned subsidiary of Toys “R” Us Inc. (“Toysrus”). The Complainant is the owner of a distinctive family of trademarks which incorporate a suffix consisting of a reversed letter-R in quotation marks and the word “us” (“the “R”-Us Trademark”).

The Complainant has submitted trademark certifications showing that the “R”-Us Trademark was registered in the UK in 1984. Related trademarks were registered subsequently, including: Toysrus, Bikesrus, Gamesrus, Partiesrus, Kidsrus, Babiesrus, Sweetsrus, Mumsrus, and Snacksrus.

The Complainant operates two websites for UK-based consumers: toysrus.co.uk and babiesrus.co.uk.

Evidence was presented by the Complainant, in the form of trading flyers and TV commercials, that the Complainant has spent large sums of money to promote its business in the UK, primarily through the Toysrus stores, but also through the brands Bikesrus and Babiesrus.

In about 1999 the Respondent developed a business plan for a website with the domain name Cookeryclub.com or Cookeryclub.co.uk. The website was to be organised on the hub-and-spoke principle, with visitors to the hub Cookeryclub.co.uk being directed to subsidiary websites for related activities. The subsidiary websites were mostly named with an “-r-us” suffix (such as cafes-r-us.co.uk and wines-r-us.co.uk). A smaller number of the subsidiary websites did not use the “-r-us” suffix (such as KitchenClub.co.uk and Hygenics.co.uk). The business plan was notarised on 31 March 2000.

1. The Complainant is a wholly owned subsidiary of Toyrus Inc. The “R”-Us Trademarks have been in use in the USA since at least 1960, and in the UK since 1985. Use has been continuous in relation to “the retail sale of toys, sporting goods and other items, including the promotion and providing of entertainment services and events, real estate leasing, insurance services, the promotion and sale of toys, games, novelties, party goods, costumes, furniture, books, bicycles, clothing, video tapes, video games, computers, clocks, electronic devices, cosmetics, sweets and numerous other products.” UK sales in financial year 2001 were £485 million.
2. The Complainant contends that the Domain Names under the ownership of the Respondent are abusive on the following grounds:

(i) The fact that the Respondent has registered 74 “R”-Us-related domain names shows a pattern of abuse (the Policy, para. 3.a.iii). Among these 74, 32 domain names with a dot-com suffix were transferred to the Complainant under a decision of the ICANN National Arbitration Forum (claim number FA0201000103815).

(ii) The Respondent tried to sell the Domain Names to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket expenses (the Policy, para. 3.a.i.A).

(iii) The registration by the Respondent of the domain name babies-r-us.co.uk, subsequent to the registration by the Complainant of the domain name babiesrus.co.uk, is a blocking registration (the Policy, para. 3.a.i.B).

(iv) The Domain Names are not in use, which supports the contention of abuse in terms of the Policy, para. 3.a.i.A.

(v) The Domain Names are potentially confusing to a consumer seeking to make Internet-based transactions with Toysrus or related companies (the Policy, para. 3.a.ii).
3. The Respondent has no legitimate connection with the “R”-Us Trademark, and the Domain Names have the potential to cause confusion to consumers while owned by the Respondent or by a third party to whom the Domain Names were sold.

1. The Respondent, Downmark Ltd., is a company formed in 1999 as a trading operation whose activities include the “buying of domain names” although “it was never the intent of the [Respondent] to sell domain names or to cybersquat”.
2. In 1999 the Respondent developed a business plan for a website with the domain name Cookeryclub.co.uk. The website was to be organised on the hub-and-spoke principle, with visitors to the hub Cookeryclub.co.uk being directed to subsidiary websites for related activities.
3. The business plan for Cookeryclub.com was notarised on 31 March 2000 and a trademark was registered. It was a genuine business venture and not a “smokescreen” for trading in domain names.
4. The Respondent concedes that one of the Domain Names, babies-r-us.co.uk, is a potential infringement of the Complainant’s Rights, because Toysrus operates a retail business Babiesrus and an associated website babiesrus.co.uk
5. The Complainant was not willing to buy the Domain Names at a reasonable cost that reflected the Respondent’s investment in both time and money.
6. The suffix “-r-us” is generic in character and is in use by numerous firms in the UK. The Respondent cites examples of 23 trading companies and 9 associated websites using an “R”-Us-like suffix. The Respondent states that some of these firms have been trading for 16 years.
7. The Respondent argues that the Complainant is inconsistent in its approach because it has targeted its complaint exclusively at the Respondent, while ignoring other organisations making use of an “R”-Us-like suffix.

1. The actions, if any, which the Complainant is taking against other organisations which are trading under names, or operating websites, incorporating an “R”-Us-like suffix is irrelevant to this dispute.

2. The Complainant has been unable to find evidence that “CookeryClub” has been registered as a trademark in the UK.

To succeed in this Complaint, the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has Rights (as defined in paragraph 1 of the Policy) in respect of names or marks identical or similar to the Domain Names and, secondly, that the Domain Names, in the hands of the Respondent, are Abusive Registrations (as defined in paragraph 1 of the Policy).

The Complainant has supplied evidence that it has Rights in the name “R”-Us. The “R”-Us Trademark is used as a suffix incorporated in numerous other trademarks which have also been registered by the Complainant.

The Respondent contends that the “R”-Us-like suffix is generic in character, and has cited numerous other companies and associated websites operating in the UK which incorporate an “R”-Us-like suffix. The Expert accepts that there are numerous businesses trading in the UK with an “R”-Us like suffix, but asserts that this is irrelevant to the present dispute. It is not necessary for the Expert to determine whether such third-party usages constitute an infringement of the Complainant’s rights, but merely to determine whether or not the Domain Names are Abusive Registrations under the terms of the Policy.

The Respondent contends that the Complainant is inconsistent in its approach because it has targeted its complaint exclusively at the Respondent, while ignoring other organisations making use of an “R”-Us-like suffix. The Expert finds this contention to be irrelevant. The Complainant is under no obligation to take action against other parties which it believes to be infringing its trademarks, nor is it required to take actions with any particular priority, nor is it required to disclose such actions in resolving this particular dispute.

The Complainant has asserted that it can find no evidence that the name Cookeryclub has been registered in the UK as a trademark. Notwithstanding this contention, the Expert thinks it plausible that Cookeryclub was established as a bonafide business operation and not as a “smokescreen” for a cybersquatting operation.

The Respondent argues that the use of the “-r-us” suffix in the Domain Names was made in good faith and not with the intention to trade in domain names or to cybersquat. The expert finds this contention plausible. However, whether or not the Respondent used the “-r-us” suffix in good faith does not affect the Complainant’s Rights.

The Expert finds that the Complainant has Rights in respect of a name which is similar to that used in the Domain Names.

The Complainant has cited several factors in the Policy which the Complainant argues make the Domain Names abusive in the hands of the Respondent.

The Complainant asserts that the Respondent has shown a pattern of making abusive registrations (the Policy, para. 3.a.i.A). The Complainant cites as supporting evidence the fact that the Respondent offered to sell the Domain Names for £42,000. The Expert finds that this price was excessive and far beyond any reasonable out-of-pocket expenses. Moreover, the use of domain names with the suffix “-r-us” was immaterial to the success or failure of the Respondent’s business plan and incorporated no significant investment of time or creativity. However, the Expert thinks it is possible that the Domain Names were initially registered in good faith by the Respondent. No other examples of the Respondent offering domain names for sale were presented by the Complainant. In the expert’s opinion, it is possible that, when approached by the Complainant, the Respondent believed himself to be in possession of a windfall from which he hoped to profit, but that this was not his primary intent in registering the Domain Names. The Expert does not accept that the Respondent obtained the Domain Names primarily for the purpose of selling them for valuable consideration in excess of the Respondent’s out-of-pocket costs

The Complainant asserts that confusion could arise with Internet users as to the ownership of websites using the Domain Names (the Policy, para. 3.a.ii). In the Expert’s opinion, of the 42 disputed Domain Names, most of them are directly related to the Complainant’s primary business activity in the UK of retailing goods and services for family or leisure pursuits, and therefore have the potential to confuse consumers. The most obvious example is the Respondent’s registration babies-r-us.co.uk, which would be likely to be confused with the Complainant’s retail operation Babiesrus and its associated website babiesrus.co.uk. Another likely confusion could arise with the Respondent’s website cycles-r-us.co.uk and the Complainant’s retail operation Bikesrus. Although some of the Domain Names are not apparently related to family or leisure activities the great majority of them have the potential for confusion with the Complainant’s stated business activities of “the retail sale of toys, sporting goods and other items, including the promotion and providing of entertainment services and events, real estate leasing, insurance services, the promotion and sale of toys, games, novelties, party goods, costumes, furniture, books, bicycles, clothing, video tapes, video games, computers, clocks, electronic devices, cosmetics, sweets and numerous other products.” The Expert notes that none of the Domain Names is currently in use. However, the Expert accepts the “Sword of Damocles” argument that unused domain names should be regarded as Abusive Registrations if they have the potential to become abusive at some time in the future in the hands of the Respondent or a third party to whom the Respondent transferred the Domain Names.

The particular case of babies-r-us.co.uk, specifically cited by the Complainant and the Respondent, is an Abusive Registration under the terms of the above discussion and need not be considered separately.

The majority of the Domain Names are Abusive Registrations because they have the potential to cause confusion among consumers seeking to trade with the Complainant’s businesses. The Expert notes, however, that not all of the Domain Names are associated with the Complainant’s currently stated business activities in the UK (for example, the domain names appointments-r-us.co.uk and bets-r-us.co.uk) and therefore confusion is unlikely to arise in these cases. Paragraph 4 of the Policy sets out a non-exhaustive list of factors by which the Respondent may demonstrate that a domain name is not abusive. Because the Domain Names are not in use, factors 4.a.i.A and 4.a.i.C cannot apply. Factor 4.a.i.B of the Policy requires that the Respondent be commonly known by the name or legitimately connected with the name for a domain name to be non-abusive; neither of these conditions applies. Factor 4.ii of the Policy allows fair use to be made of a domain name that is generic. Because the Domain Names are not in use, factor 4.ii cannot apply and it is therefore not necessary to determine whether or not the “-r-us” suffix is generic.

The Respondent has offered no other significant factors that might be evidence that the Domain Names are non-abusive.

Accordingly, the Expert finds that the Domain Names are Abusive Registrations within the definition of that term in paragraph 1 of the Policy on the basis that they were registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s Rights.

In light of the foregoing findings, namely that the Complainant has Rights in respect of a name or mark which is the same as the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations, the Expert directs that all the Domain Names be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Geoffrey Inc -v- Downmark Ltd [2002] DRS 614 (13 December 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/614.html Cite as: [2002] DRS 614