New Lifestyle Co Ltd -v- Africa Xtreme [2003] DRS 972 (3 July 2003)

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The Complaint was lodged with Nominet on 23 April 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 29 April 2003 and informed the Respondent that it had 15 working days within which to lodge a Response. No response was received from the Respondent by 23 May 2003. The Complainant was informed accordingly and invited to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly paid on 2 June 2003. On 3 June 2003, Nominet invited me, Niel Ackermann, to provide a decision on this case. I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question. Nominet duly appointed me as Expert.

1. The Domain Name is registered in the name of the Respondent
2. The Domain Name was registered on 6 December 1999
3. Sure-Slim CC is the owner UK Registered Trade Mark No 2206444 registered on 20 August 1999

In summary the Complainant made the following submissions:
1. In January 2000 after 6 months negotiations the Complainant paid SureSlim International Limited £405,000 for the exclusive rights to operate a franchise operation in the UK.
2. SureSlim International Limited is a subsidiary of Sure-Slim CC which is the owner of the world wide brand of a diet eating programme know as SureSlim.
3. The SureSlim product was developed in SA in 1996 and has now been licensed through franchising in many parts of the world. It has become the major weight loss programme in South Africa.
4. Having purchased the rights to the SureSlim product in the UK the Complainant “set about establishing the brand” by opening three SureSlim clinics. Two of these clinics were subsequently to individual franchisees and a further ten SureSlim franchises have been sold to individuals. The Complainant has provided figures showing turnover of the various clinics either run by it or its sub-franchisees showing significant sales.
5. The Respondent has never activated the web site using the Domain Name.
6. The Complainant submits the Respondent registered the Domain Name for opportunistic reasons knowing that SureSlim was a brand about to embark on international expansion and suggests that it acts as a blocking registration seriously affecting the business of the Complainant because as clients and interested persons naturally try to gain access to its web site by using sureslim.co.uk..

The Complainant has to establish under paragraph 2 of the Policy 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 that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in paragraph 1 of the Policy. Rights, as defined, “includes but is not limited to rights enforceable under English Law”.

Paragraph 2 (b) of the Policy requires the Complainant to prove to me that it has Rights “on a balance of probabilities”. The burden on proving this is therefore clearly on the Complainant. Obviously where the Complainant owns a relevant UK or Community registered trade mark asserted, it is easy for an expert to conclude that there is a right enforceable under English Law. In this case, although the Complainant has asserted a registered UK trade mark, that trade mark does not belong to the Complainant but to its franchisor. I have not seen nor has the Complainant given evidence on the terms of the franchise agreement it entered into. It is probable, however, that the franchise agreement does grant some rights to the Complainant to use the registered trade mark. Failing that, however, the Complainant has shown trading under the SureSlim brand which would entitle it to assert the necessary reputation and goodwill to bring a passing off claim under English Law against another person seeking to use that name in respect to a similar business or product as that of the Complainant.

It may be that Sure-Slim CC or SureSlim International Limited has greater or concurrent rights to the name SureSlim but that does not affect the fact that the Complainant also has Rights.

For the reasons given above, I find that the Complainant has proven, on a balance of probabilities, that it has Rights in respect of a name or mark, which is identical or similar to the Domain Name.

To be “abusive” according to the policy, the Domain Name must either have been:
i. 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. used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights

The Complainant has stated that the Respondent registered the Domain Name for “opportunistic reasons knowing that SureSlim was a brand about to embark on international expansion”. There is no direct evidence of that but, bearing in mind the origins of the SureSlim product and the Respondent’s name Africa xtreme, absent any evidence from the Respondent, it does seem probable that the Respondent knew of the SureSlim product’s reputation in South Africa and was trying to capitalise on that.

Under Paragraph 3 of the Policy is listed a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration, including:

“i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
The Respondent has not used the Domain Name and, in view of the registered trade mark owned by Sure-Slim CC it seems unlikely that it would be able to. Its ownership of the Domain Name can therefore legitimately be characterised as a blocking registration. Accordingly I find that the Domain Name is an Abusive Registration.

The Complainant has proved that, on a balance of probabilities, the Respondent, either registered or otherwise acquired the Domain Name 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.

In light of the foregoing finding, I direct that the Domain Name sureslim.co.uk be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> New Lifestyle Co Ltd -v- Africa Xtreme [2003] DRS 972 (3 July 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/972.html Cite as: [2003] DRS 972