Snap-on UK Holdings Ltd v London Web Communications Ltd [2004] DRS 1471 (7 March 2004)

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DRS 01471
Snap-on UK Holdings Limited v London Web Communications Limited

Nominet received the complaint in full on 17 December 2003 and checked that it complied with the Nominet UK Dispute Resolution Service Policy (“the Policy”) and the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”). Nominet notified the Respondent of the Complaint on the same day, informing the Respondent that it had 15 working days within which to lodge a response. The response was received by Nominet on 13 January 2004. The Complainant filed a reply, which was received by Nominet on 15 January. Informal mediation followed. When that did not resolve the dispute, Nominet notified the parties that an Expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 16 February.
On 20 February 2004 I, Mark de Brunner, agreed to serve as an Expert under Nominet’s Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.

There is one procedural point I need to address. In a letter of 5 January 2004, the Respondent asked for an extension to the deadline for submitting a reply to the complaint, because the relevant director was out of the country. Nominet refused to extend the deadline, on the grounds that the circumstances were not exceptional. In the reply to the complaint, received on 13 January (the day before the deadline) the Respondent attempted to reserve the right to make further submissions. The Complainant objected to that attempt, but on 6 February the Respondent did submit a follow-up to its original reply. I was not obliged to consider that further evidence, which added nothing of substance to the Respondent’s case. I considered it nonetheless. Had it been material to my decision, it might have been appropriate to invite the Complainant to reply. But it was not material to my decision.

The Complainant (formerly Snap-on Tools Limited) is part of the ‘Snap-on’ group of companies. The group sells tools and testing equipment. The Complainant appoints dealers in the UK who are authorised to sell Snap-on tools. In the course of its business, the Complainant uses the marks ‘Snap-On’ and ‘Snap On’. Annual sales under this mark amount to tens of millions of pounds. The American parent company, Snap-on Incorporated, holds the registration of the domain name snapon.com. The UK subsidiary has registered the domain name snap-on.co.uk.
The domain name at issue here, snapon.co.uk, was registered in 1997 by London Web Communications on behalf of an individual running a business under a franchise granted to him by the Complainant. When the Complainant objected to that registration, on the grounds that it went beyond the terms of the franchise, the individual relinquished his claim to the domain name, and from that point all interest in that name reverted to the Respondent.
Subsequently, the domain name pointed at a webpage carrying the message
The domain snapon.co.uk has been registered by London Web Communications on behalf of one of our customers
The Complainant expressed concern at the potential for confusion which that message afforded. In the exchanges that followed, the Respondent offered to transfer the domain name to the Complainant for £20,000.
The Complainant then pursued a claim to have the registration cancelled by Nominet. When Nominet refused, and the dispute remained unresolved, an independent expert was appointed to make a recommendation about whether Nominet should confirm or revoke its decision. The expert declined to recommend that Nominet revoke its decision.
In 2003 the Complainant became aware that the domain name was directing traffic to a webpage reading:
Site not found. However you may find what you are looking for here
and pointing to the website of a business called Toolssalesdirect.com Limited, one of the Complainant’s competitors. When the Complainant objected, the holding page was taken down and the redirection terminated.
The Complainant requests transfer of the domain name and offers to meet the Respondent’s reasonable transfer costs. The Respondent declines to transfer the domain name on that basis.

6. The Parties’ Contentions
Complainant
The Complainant’s contention is essentially that the Respondent has made use of the domain name in a way that will have led to confusion between Toolssalesdirect.com Limited and the Complainant.

Respondent
The Respondent’s arguments are as follows.
(i) The domain name is not identical to the name in which the Complainant has rights.
(ii) There has never been any confusion, not least because (i) the redirection to Toolssalesdirect.com Limited’s webpage was not automatic, but to a holding page making clear that the original website was ‘not found’ and suggesting a helpful alternative (ii) even that holding page and the manual link have been taken down.
(iii) ‘Snap-on’ is a generic label (and, implication, the Respondent’s use of it is fair). (There is, though, some confusion in the Respondent’s submissions on the point: the argument is originally that ‘snap-on’ is not generic, and only subsequently that it is.)
(iv) The Respondent has acted in good faith throughout.

7. Discussion and Findings
General
To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
(i) he or she has rights in respect of a name or mark which is identical or similar to the domain name; and
(ii) the domain name, in the hands of the Respondent, is an abusive registration.

Complainant’s Rights
The Snap-on group of companies has registered ‘SNAP-ON’ as a UK and European trademark in a range of classes over a number of years. The parent company has registered the domain name snapon.com. None of that is direct evidence of the Complainant’s rights. However, the Complainant uses the marks ‘Snap-On’ and ‘Snap On’ and has registered the domain name snap-on.co.uk. It is evidently a matter of dispute whether the Complainant has rights in the name ‘Snap On’, but even the Respondent appears to concede that the Complainant has rights in ‘Snap-on’. I conclude that the Complainant has rights in respect of a name or mark which is at least similar to the domain name.

Abusive Registration
The Dispute Resolution Service rules define an 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.
The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. The only factors that might be relevant here are
(i) circumstances indicating that the Respondent registered 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 expenses directly associated with acquiring or using the domain name
(b) 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.
The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. The only one relevant here is where the domain name is generic or descriptive and the Respondent is making fair use of it.
I can take each of these in turn, before addressing the one other argument being advanced.

Registration in order to transfer at a profit
It is clear from correspondence between the parties that the Respondent would be prepared to transfer the domain name for an amount in excess of its costs. But that is not evidence of the Respondent’s purpose at registration. So far as I can tell, the motive at registration was simply to acquire a domain name on behalf of one of the Complainant’s licensed dealers.
Registration unfairly to disrupt the Complainant’s business
There is simply no evidence that the purpose of registration was unfairly to disrupt the Complainant’s business. Indeed when the Complainant objected to the licensed dealer’s proposed use of the domain name back in 1997, all interest in it reverted to the Respondent.

Use that causes confusion
The Complainant’s case here is essentially that the Respondent has used the domain name in a way that has confused people into believing that this name is somehow connected with the Complainant. The Respondent says there has been no confusion. The facts are, however, that at one stage the domain name directed traffic to a holding page that gave people the opportunity to link to a webpage run by one of the Complainant’s competitors. It may be true that there was no ultimate confusion, because the holding page was explicit that the original search had not led anywhere and offered an alternative that was clearly labelled as such. That does seem to me, however, to take advantage of an initial interest in the domain name; and that does arguably give rise to a kind of confusion. That the holding page was subsequently taken down might be evidence of the Respondent’s good faith, But of itself it does not help determine the question whether the domain name was registered or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.

The domain name is generic or descriptive
I think it is arguable that ‘snap-on’ is a generic label that could apply to any number of products. But even as a factor in a non-exhaustive list of factors that may be evidence that a registration is not abusive, the use made of a domain name must be ‘fair’ – and that is a separate question that I think can only be considered in the round.
Respondent acting in good faith
The only other argument to be addressed is the contention that the Respondent has acted in good faith. That would not settle the issue before me, even if it had been demonstrated. But given that the Respondent allowed the domain name to be used for the purposes of another business, it is by no means clear that it has been demonstrated.

Conclusion
None of this is conclusive. The underlying question remains whether either registration or use of the domain name took unfair advantage of or was unfairly detrimental to the Complainant’s rights. I think, in the round, the answer to that is clear-cut. The Respondent evidently did allow the domain name to be used in circumstances that took advantage of the Complainant’s rights. Traffic looking for ‘snapon’ was taken to a holding page, and that holding page offered a link to one of the Complainant’s competitors. I cannot see how the advantage taken can possibly have been fair. It relied on interest in a name at least similar to the name in which the Complainant has rights and it used that interest to draw business away from the Complainant. I conclude that, at that stage, this was an abusive registration.
8. Decision
I find that the Complainant has rights in respect of a name or mark which is similar to the domain name, and that the domain name, in the hands of the Respondent, is an abusive registration.
In the light of that, I direct that the domain name be transferred to the Complainant.

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