Addiktion Cycles Ltd -v- Leisure Wheels (Hemel Hempstead) Ltd [2003] DRS 1026 (6 August 2003)

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Addiktion.co.uk, Addictioncycles.co.uk, Addiction-cycles.co.uk ("the Domain Names")

The Complaint was lodged with Nominet on 27 May 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 30 May 2003 (deemed received 30 May 2003) and informed the Respondent that he had 15 working days within which to lodge a Response. The Respondent replied on 10 June 2003 by post being received by Nominet UK on either 16 June 2003 or 18 June 2003 and by e-mail on 11 June 2003. Nominet informed the Complainant on 11 June 2003. The Complainant was invited to respond but did not do so. Mediation was entered in to between 25 June 2003 and 9 July 2003 but this failed to produce an agreement. On 18 July 2003 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 21 July 2003, the undersigned, Mr Alistair Abbott, ("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. He was subsequently selected by Nominet as the Expert for this case.

The complaint has been correctly lodged and complies with the requirements of the Procedure for the conduct of proceedings under the DRS.

The response was sent by Email on 11 June 2003 and correctly received and was posted on 10 June 2003 and received on 16 June 2003 or 18 June 2003 but in either event within the permitted 15 working days allowed from the date of notification of a complaint.

The requirements of section 5 v of the Procedure have not been complied with in as much as the document does not contain the required declaration as to truthfulness and compliance and signed accordingly.

In section 5 C the response must be submitted in electronic format and hard copy within the time permitted. This was undertaken correctly but the response was not in the required format and in particular did not contain the declaration. The letter was signed by a director but was a signature at the foot of a letter not a signature declaring the truthfulness of the document as required by the policy.

Paragraph 15c of the Procedure provides that " If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."

In the Experts opinion the absence of the declaration and a signature inference can be drawn which would tend to reduce the weight given to the contents of the document and will be viewed in the light of this accordingly.

At the very outset, it is clear that the Complainant and the Respondent had a mutually beneficial business relationship, which had operated successfully for some 4 years prior to November 2001. The Complainant was the manager of the Respondent 's shop in Hemel Hempstead during this time and it is not in dispute that the business relationship was very good. The Complainant decided to set up his own business in November 2001 and left the Respondent s employment. There is not very much evidence of the parties feelings over this decision but in the complaint Mr Watts speaks of the Respondent s attempts to "get back at him" and in Mr Bussons responce he denies any malice. A reasonable assumption is that Mr Watts's decision to set up his own business was probably not welcomed by the Respondent. The industry is reasonably specialist and the geographical area between St. Albans and Hemel Hempstead is not great. In addition the Leisurewheels web site refers to a sister company actually in St Albans and it is likely that the Respondent views the Complainant as a competitor. All matters need to be viewed in the light of an unhappy business relationship resulting in a degree of animosity. The Expert views this matter entirely upon the issues surrounding the Domain Name dispute and not any other matters and all references to other areas of friction are accordingly left to one side.

The Complainants business involves and includes the retailing of bicycles and accessories including clothing and cycle parts. This is identical to the Respondent s business.

Clearly the Complainant had planned the creation of his business prior to his actual departure from the Respondent s business and as part of that preparation had thought up the name Addiktion Cycles with the misspelling of the letter C for a K as a way of "catching the eye". Mr Watts registered two Domain Names, addiktioncycles.co.uk and addiktion-cycles.co.uk.

The spelling of the word addiction or addiktion has significance and will be refereed to below.

On 12 November 2001 the Respondent registered 3 Domain Names namely addiktion.co.uk, addictioncycles.co.uk and addiction-cycles. co.uk It is these 3 Domain Names which are in dispute. The complaint is that each of these 3 Domain Names is linked to the Respondent s web site leisurewheels.co.uk and that potential customers logging on to what they believe is the addiktion site are spelling it correctly with a "C" are taken in to the web site of the Respondent. This is relevant for the first disputed Domain Name addiktion.co.uk The second and third sites, addictioncycles.co.uk and addiction-cycles.co.uk have the correct spelling and will also take a prospective customer to the Leisurewheels site whether or not they have correctly spelt the misspelt word.

The substance of the Complaint is
1. The Respondent has registered the Domain Names in such a way that prospective customers of Addiktion Cycles Ltd are taken via a link to the web site of the Respondent. There is no evidence that the Respondent s registration of these names was primarily for the purpose of transferring the name for valuable consideration in excess of the Respondent s out-of-pocket costs directly associated with acquiring the Domain Name.

2 The Respondent has registered the Domain Name primarily for the purpose of disrupting the Complainants business.

3 Circumstances indicate that the Respondent is using the Domain Name in a way, which has confused people and businesses into believing that the Domain Name is registered to us and is using it to divert the Complainants business to the Respondent.

4 There is no evidence that the Respondent has provided false contact details to Nominet and the Complainant

7 The Complainant agrees to the submission to the jurisdiction of the English Courts and the relevant exclusions. The declaration as to truthfulness and compliance. The document is signed.

The Respondent filed a written response on 11 June 2003 by e-mail and followed this up with hard copy being received by Nominet UK on 16 June 2003.

1 They did register the three disputed Domain Names and did so deliberately to direct more traffic to their own web site.

2 Once in the site there is no reference to Addiktion cycles either directly or by implication.

The Complainants were invited to reply to the response but did not do so. This is probably because the Complainant had nothing further to add to the original complaint and there was nothing in the response that was not already known to the Complainant. No inference is drawn in these circumstances.

Informal mediation was entered in to but failed to achieve a compromise or settlement.

The Complainant claims a right to the Domain Name as being identical or similar to a Domain Name in which they have rights and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

The Respondent s does not appear to be claiming a better right to the Domain Name because of usage, history or business activities.

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 is 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, or that they intended to sell the Domain Names back to the Complainant at an inflated price. Furthermore this is not a blocking registration situation. The potentially relevant 'factors' in paragraph 3 are to be found in sub paragraph ic, which reads as follows:

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

C. Primarily for the purpose of unfairly disrupting the business of the Complainant;"
And in particular para cii: Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses in to believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant.

Clearly anyone entering the Domain Name spelt correctly or not would be confused when the Leisurewheels site appears on screen and because of the reference to a sister company in St. Albans and the similarity of the range of products and services may well proceed to place business with Leisurewheels Ltd believing there was a legitimate connection. This would clearly be disruptive of the Complainants business.

It is therefore the expert's decision that the three Domain Names in dispute amount to an abusive registration.

The Complainant asserts:
They have a better right to the Domain Names because of the misspelling in the word addiktion which makes it peculiar to themselves and the two addresses with the correct spellings are so similar to their business name that they have a better right. This is based on the letters C and K sounding the same when pronouncing the word addiction and also plays on the natural tendency to wish to spell words correctly

The timing of the Respondent 's registration is also significant as this occurred just days after the Complainant launched his business suggesting this was a very deliberate response.

The list of factors set out in paragraph 3 of the Policy is a non-exhaustive list. Is there anything else about the conduct of the Respondent, which could justify the Expert in coming to the conclusion that in the hands of the Respondent the Domain Name is an Abusive Registration?
The Complainant makes the following further submissions/allegations:
(i) "It is submitted that the Respondent 's Domain Name registrations [being similar to the Complainant's Domain Names and company name] is clearly detrimental to the rights of the Complainant and that the Respondent 's Domain Name registration is therefore an abusive registration"

It is here that paragraph 4 of the Policy has a part to play. Paragraph 4 of the Policy is headed "How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration". The onus is ordinarily upon the Complainant to prove what needs to be proved but where the Expert has found that the Complainant has made out a prima facie case and that the Respondent has a case to answer, the Respondent must have an answer. Here there is no answer. The Respondent has deliberately attempted to divert business away from Addiktion Cycles and has confused prospective customers in to believing there is some sort of business link. The Respondent has not shown that they are making fair and legitimate use of the names to offer goods and services as the web site entered is not that of Addiktion and is only designed to confuse.

Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 3a cii of the Policy on the basis that it was when the registration took place, was registered to unfairly to disrupt the business of the Complainant.

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Names and that the Domain Names, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Names addiktion.co.uk,addictioncycles.co.uk and addiction-cycles.co.uk transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Addiktion Cycles Ltd -v- Leisure Wheels (Hemel Hempstead) Ltd [2003] DRS 1026 (6 August 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1026.html Cite as: [2003] DRS 1026