Moontide (Europe) Ltd -v- Arnold [2003] DRS 1368 (24 December 2003)

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The Complaint was lodged with Nominet UK ("Nominet") by hard copy on October 31, 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on November 5, 2003, giving her 15 working days within which to lodge a Response. A Response in the form of a letter dated November 7, 2003 was sent to Nominet by e-mail on November 10, 2003, and it was forwarded to the Complainant on the same day.

Nominet initiated its Informal Mediation procedure on November 21, 2003, but it would seem that an acceptable resolution through mediation was not achieved and the parties were informed of this on November 24, 2003. On December 5, 2003 Nominet received from the Complainant the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet's Dispute Resolution Service Policy ("the Policy").

On December 8, 2003 the undersigned, Mr. David H Tatham ("the Expert") was selected as an Expert, having confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an Expert in this case and 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.

The name Moontide is a trade mark which is licensed to the Complainant who has traded under this name since June 1994 in the UK. The Complainant contends that Moontide is a well known brand name in the UK swimwear industry, supplied to customers such as Harrods and Fortnum & Mason, as well as to the online retailer Figleaves.

The Respondent contends that she had the idea of selling swimwear on the Internet and contacted a Mr. David Cosgrove of the Complainant with regard to him supplying her. Having had this idea, she took the precaution of registering the disputed domain name but she says that "after further investigation by our accountants, we decided not to proceed with Moontide or the swimwear venture".

The Complainant contends that the disputed Domain Name is identical or similar to a name or mark in which it has rights and that it is an Abusive Registration.

The Complainant further contends that the Respondent has no right to the disputed domain name, and has left it untagged. When the Complainant enquired with the Respondent about having the name transferred, she demanded an exorbitant fee and during a telephone call on Friday 24th October 2003 she said that she would sell it on the open market. The Complainant also contends that the Respondent had only paid long outstanding fees in respect of the disputed domain name to Nominet on the same day.

In conclusion the Complainant states that it is imperative in today's business climate that its current and potential customers are able to find its web site as they can those of its competitors, and the fact that this is blocked by the Respondent is unfairly detrimental to its business and the company's rights.

In the Respondent's Response she describes how she was contacted by a Mr. Howard of the Complainant who asked her to transfer the disputed domain name to the Complainant and offered her £100. She responded asking for £500 and Mr. Howrad counter-offered with a figure of £400. She says that she then took "independent advice from three separate sources" and was told that "£500 was an extremely fair price" but that "it could fetch more on the open market". She then contacted the Complainant and, in Mr. Howard's absence, she was told by a Mr. Cosgrove, whom she describes as a Director of the Complainant, that since she had no right to the name, it could be taken away from her as the Complainant had a licence agreement to use the name Moontide.

The Respondent does not believe that a licence agreement gives the Complainant any right to the disputed domain name and she says that she has "always been open to sell the disputed domain name to anyone, but at a fair price". She says that she has never been "approached by any person connected to Moontide (Europe) Ltd with regard to the release of Moontide.co,uk". Also she does not feel that £500 is an exorbitant fee for the disputed domain name, nor has she ever demanded that the Complainant should purchase it, as the Complainant has alleged.

In conclusion she also disputes the Complainant's allegation that the disputed domain name was only re-registered late, on October 29, 2003 (sic). In fact she never received the usual reminder which had been sent to an incorrect address and the re-registration actually took place on October 21. 2003.

In conclusion she says that she does not agree that the matter is in dispute and she confirms that she would be happy to sell the disputed domain name to anyone.

According to paragraph 2 of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that -

i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and

ii the disputed domain name, in the hands of the Respondent is an Abusive Registration.

The Complainant filed copies of two Agreements. The later of these, which is dated August 28, 2003 and which replaces an earlier Agreement of June 1, 1994 that expired in 2003, grants certain rights to the Complainant. The Respondent argues that these Agreements do not give any right to the disputed domain name and in a sense she is right, in that the domain name is not mentioned therein. But under Clause 2.1 of the 2003 Agreement, the Complainant is granted the exclusive right, inter alia, "to apply the Licensed Trademarks to the Licensed Products and to sell them in the Licensed Territory." The 'Licensed Trademarks' are defined as the trade marks MOONTIDE, the 'Licensed Products' are defined as ladies swimwear, beachwear, co-ordinates, and accessories as specified by the Licensor from timer to time, and the 'Licensed Territory is defined as the UK, Eire, Scandinavia, Belgium, Holland and Luxembourg. Therefore the Complainant has the right to use the name Moontide which, it could be argued gives it the right to incorporate this word into a domain name.

The Complainant did not file copies or provide any details of any trade mark registrations in any of these countries, but the Expert has done his own research which has disclosed two United Kingdom registrations which consist of the word MOONTIDE plus a figurative device (which bears no relation to the mark that is illustrated in the Licence Agreement or the Complaint) in Classes 18 and 25 dating from 1991 but subsequently renewed, and in the name of Lui & Lei Sportswear Limited. By the earlier of the two Agreements referred to above Lui & Lei Sportswear Limited assigned all of its rights to manufacture goods under, and to use the trade mark MOONTIDE, to Moontide (Europe) Limited.

The Expert concludes from all this documentation that the Complainant does have rights in the trade mark 'Moontide' in the United Kingdom. He also concludes that this trade mark and the disputed domain name are identical, because it is customary when comparing a domain name with a trade mark to ignore a generic suffix such as <.co.uk>

The Complainant contends, without much elaboration, that the disputed domain name is an Abusive Registration and it presumably bases this allegation on the fact that the Respondent tried to sell the name for more than she had spent on registering it.

An 'abusive registration' is defined in paragraph 1 of the Policy as being "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) A non-exhaustive list of factors which may be evidence of an Abusive Registration is 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;
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 by, or otherwise connected with the Complainant;

(iii) in combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making abusive registrations; or

(iv) it is independently verified that the Respondent has given false contact details to us.

It is clear from the facts in this case that sub-paragraphs 3(a)(ii), (iii) and (iv) are not applicable so this Decision will deal only with paragraph 3(a)(i).

The Respondent claims that she registered the disputed domain name after she had discussed with one of the Complainant's Directors the possibility of the Complainant supplying her with swimwear which she then proposed selling via the Internet, an idea that was not proceeded with. If true, this would mean that the Respondent visited a company with a view to entering into a commercial relationship whom she knew used the name and trade mark MOONTIDE, and that immediately afterwards registered this word in her own name as a domain name. It is difficult to imagine any word to describe this activity other than theft.

However, not content with taking the Complainant's name and incorporating it into a domain name, the Respondent then proceeded to try and sell it back to its rightful owner. Having refused a quite reasonable offer from the Complainant, she then offered to sell it to the highest bidder. She says that she did this on advice, but it was clearly very bad advice for such an action is in direct contravention of the Policy under which the domain name was registered, and it immediately transformed the domain name into an Abusive Registration. Thus, while the Respondent could have profited from her underhand act in registering the name by some £400, she will in fact be left with nothing.

The Expert has little doubt in concluding that the Respondent has transgressed paragraph 3(i)A of the Policy and probably paragraphs 3(i)B and 3(i)C as well.

There are however three further matters to be dealt with, two of which throw some doubts on the Respondent's veracity and one on the Complainant's.

Firstly the Respondent says that the matter is not in dispute, when it clearly is, and secondly she says that she was never approached by the Complainant a fact which she herself denies when, earlier in her letter, she recounts how she was contacted by Mr. Howard on behalf of the Complainant.

As for the Complainant, it states that its swimwear is supplied, inter alis, to Figleaves, an online retailer. However a visitor to the Figleaves website will seek in vain among the many brand names listed for any mention of 'Moontide'. However the Complainant's allegations of use were not challenged by the Respondent.

In conclusion, the Expert finds that the Complainant does have Rights in the name 'Moontide' and that this name is identical to the disputed Domain Name.

The Expert further finds that the disputed Domain Name is an Abusive Registration in the hands of the Respondent.

The Expert therefore directs that the disputed Domain Name <moontide.co.uk> be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Moontide (Europe) Ltd -v- Arnold [2003] DRS 1368 (24 December 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1368.html Cite as: [2003] DRS 1368

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