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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Pims Pumps Ltd v Polytek [2002] DRS 928 (6 June 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/928.html Cite as: [2002] DRS 928 |
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Nominet UK Dispute Resolution Service
DRS 000928
Pims Pumps Limited v Polytek
Decision of Independent Expert
1. Parties:
Complainant: Pims Pumps Limited
Country: UK
Respondent: Polytek
Country: UK
2. Domain Name:
pimspumps.co.uk ("the Domain Name")
3. Procedural Background:
The Complaint was lodged with Nominet on March 25, 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on March 31, 2001 and informed the Respondent that he had 15 days within which to lodge a Response. No Response was received. On May 16, 2001 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").
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 a company trading in the United Kingdom using the name Pims Pumps Limited since 1986 in the field of pumping equipment.
On September 11, 2002 the Respondent registered the Domain Name.
5. The Parties' Contentions:
Complainant:
The substance of the Complaint is as follows:
1. The Complainant's name is Pims Pumps Limited. It has traded in the UK in the field of pumping equipment under the name Pims Pumps Limited since 1986.
2. The Respondent's domain name registration for pimspumps.co.uk and was registered on September 11, 2002.
3. The Respondent's domain name registration is identical to a name in which the Complainant has Rights. The Respondent's domain name registration is an abusive registration.
4. The Respondent is a competitor of Pims Pumps Limited. The Respondent is a company set up by a Mr Graham Bell who also runs a company called Rotothene from the same premises. Until recently Rotothene were manufacturing fabricated pump stations for the Complainant using tooling owned by the Complainant.
5. The Respondent is deceitfully diverting internet users to the Respondent's web site seeking to obtain enquiries intended for the Complainant and obtain details of its client base.
Respondent:
1. No Response has been filed.
6. Discussion and Findings:
General
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 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
In this case the first limb of that task is straightforward. The Complainant is the proprietor of goodwill in the unregistered trade mark PIMS PUMPS which it has used in the United Kingdom in relation to pumping equipment since 1986. The Domain Name consists of the name or mark PIMS PUMPS 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 domain suffix, which is of no relevant significance and wholly 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 and there being no suggestion that the Respondent has given to Nominet false contact details, 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:
A. 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;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily 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."
6. The Expert is of the opinion that the Respondent's conduct and use of the Domain Name is indicative of relevant abusive conduct. The Domain Name is identical to the name of the Complainant's company and trading name. The Respondent has not responded to refute the allegations of the Complainant that it is a competitor of the Complainant and the Domain Name was registered to deceitfully divert internet users to the Respondent's web site seeking to obtain enquiries intended for the Complainant and obtain details of its client base. Accordingly the panellist is entitled to infer that the Domain Name was registered and has been used to ride on the Complainant's goodwill, causing confusion on the internet between the business of the Respondent and the Complainant taking undue advantage of the Complainant's rights and also disrupting the Complainant's business to its detriment.
In the view of the Expert in its registration and use of the Domain Name the Respondent took unfair advantage of the Complainant's rights to its detriment.
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, pimspumps.co.uk be transferred to the Complainant.
6 June 2002
Dawn Osborne
