Staples Inc -v- Transworld Leisuire [2004] DRS 1514 (23 March 2004)

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The Complaint was lodged with Nominet on 26 January 2004. Nominet validated the Complaint on 30 January 2004 and informed the Respondent of the Complaint by letter and by email of the same date. That letter informed the Respondent that a Response needed to be filed by 23 February 2004. No response was received. Mediation was not pursued. The Complainant was informed and under cover of letter dated 4 March 2004 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 8 March 2004, the appropriate fee having been paid to Nominet by the Complainant, and Tony Willoughby, the undersigned Expert, having indicated to Nominet that there was no reason why he should not handle the case, the case was referred to the Expert for a decision.

Here it is convenient to deal with the consequences of the Respondent not having submitted a Response to Nominet in time (or at all) in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure").
Paragraph 15b of the Procedure provides, inter alia, that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint."

There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the Complaint and notwithstanding the absence of a Response.

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."

What inferences would it be appropriate for the Expert to draw from the absence of a Response in this case? The Expert is conscious that Respondents may fail to respond for a variety of reasons. The reason may simply be that the Respondent has nothing useful to say in his defence, or it may be that he has not received the Complaint, perhaps because he is away and not in email contact or perhaps because he has not kept his contact details with Nominet up-to-date.

Generally, the absence of a Response from the Respondent does not, in the Expert's view, entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.

In this case it seems to the Expert that the probable facts speak for themselves and that it is not necessary to draw any special inferences. The Expert finds that the probable facts asserted by the Complainant and set out in the next following section are indeed facts.

In many cases, as in this one, the principal disadvantage attached to failing to respond will be the loss of an opportunity for the Respondent to demonstrate, pursuant to paragraph 4 of the Policy, circumstances tending to show that the Domain Name is not an Abusive Registration. Where, as here, the Respondent has a case to answer (i.e. the Complainant has made out a prima facie case) and there is no answer, the Complaint must ordinarily succeed.

It will be seen below that the registration of the Domain Name expired on 19 January 2004, four days prior to the launching of this dispute. It will also be seen below that one of the obligations upon the Complainant is to demonstrate that the Domain Name is and abusive registration in the hands of the Respondent. The question then arises as to whether the Domain Name can still be in the hands of the Respondent after the registration has expired. The answer is in the affirmative. Ordinarily, registrations in the .uk domain and sub domains remain in the name of the registrant for a few weeks after expiry.

The Complainant is a US corporation established in 1986 to deal in office supplies. It opened its first UK store in 1993. It has an annual turnover of in excess of US$11 billion and employs over 50,000 employees worldwide. It trades online through various websites throughout the world, including www.staples.com and www.staples.co.uk.

The Complainant trades in the UK through its subsidiary, Staples UK Limited. It has over 80 stores in the UK. UK turnover for the year ending January 2002 totalled approximately £293 million.

The Complainant is the proprietor of a variety of UK and Community Trade Mark registrations of and including the word STAPLES. The Complainant commonly uses its principal trade mark STAPLES, in logo form in white upper case on a red background.

The Respondent registered the Domain Name on 19 January 2002 and at some time prior to June 2003, the date when the Complainant first became aware of the Domain Name, connected the Domain Name to a website at www.stapels.co.uk which gave the information about Euroffice Express Limited, a competitor of the Complainant and contained a link to the competitor’s site at www.euroffice.co.uk.

Additionally, it appears from the evidence of the Complainant, which has not been contradicted by the Respondent, that at that time (June 2003) the Respondent operated a website at www.shop-online-and-save.co.uk which featured a red button link on which the word STAPELS appeared in white upper case and followed by a reference to office supplies. Clicking on this button led one to the site at www.stapels.co.uk referred to above.

On 11 June 2003 the Complainant wrote to Euroffice drawing attention to the Complainant’s rights and its cause for complaint. Euroffice responded on 13 June 2003 in the following terms:-

“Euroffice has arrangements with a third party which has developed a system for tracking activities on the internet. This programme to which Euroffice is an indirect party encourages other website operators – for example, “Transworld Leisure” – to link and transfer visitors to Euroffice’s website. These third party operators may have subsequent third party relationships regarding the development of this programme. Euroffice has no knowledge as to what third parties or methodologies are utilised to encourage website hits.”

On 12 June 2003 the Complainant wrote to the Respondent. In the ensuing correspondence the Respondent:-

(1) denied passing off;
(2) agreed to suspend all use of the Domain Name pending resolution of the dispute;
(3) suggested in the alternative that it transfer control of the Domain Name to the Complainant free of charge for the remainder of the registration period;
(4) informed the Complainant that it had transferred the Domain Name into a new account and gave the Complainant’s representatives a user name and password to enable them to take control of the Domain Name;
(5) in the person of its UK representative, Paul Pettit, confirmed its intention to transfer the Domain Name to the Complainant.

The above correspondence ran from mid June to early August. The correspondence then died. Four and a half months later the Complainant sought to revive it, enquiring as to the whereabouts of the necessary transfer forms to enable transfer of the Domain Name to take place. Mr Pettit replied that he had now moved to South Africa and he informed the Complainant’s representatives that the Respondent had ceased trading. No transfer forms were completed.

On 19 January 2004 the registration of the Domain Name lapsed. The Complaint was lodged on 23 January 2004, the Complainant being concerned that when the Domain Name ultimately becomes available for registration, a third party might get there first.

The Complainant contends that it has rights to the trade mark STAPLES which is similar to the Domain Name.

The Complainant further contends that the Domain Name in the hands of the Respondent is an abusive registration.

The substance of the Complainant’s contentions is in that regard are based on the following matters:-

(1) the Domain Name is a mis-spelling of the Complainant’s principal trade mark;
(2) the mis-spelling was intentional and not coincidental. This is clear from the fact that the Domain Name was linked to a website of a competitor of the Complainant and that, on a related site, the name STAPELS was featured in logo form very similar to the Complainant’s logo;
(3) the email from Euroffice (quoted above) made clear that there was a commercial arrangement in place from which it is to be deduced that the Respondent benefited commercially from its use of the Domain Name.

(a) registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant;
(b) has blocked the Complainant from acquiring the Domain Name by failing to complete the necessary transfer forms;
(c) has used the Domain Name in a way which has confused people and businesses into believing that the name is registered to, authorised by or otherwise connected with the Complainant. The Complainant refers to the link to the competing site at www.euroffice.co.uk.

The Respondent has not responded. The only representations from the Respondent are those contained in the correspondence, the only ones of any potential relevance being a denial of any intention to pass off and an express willingness to transfer the Domain Name to the Complainant.

By virtue of paragraph 2 of the Policy, in order to succeed in a Complaint under the Policy, the Complainant must prove on the balance of probabilities that:-

(i) the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name (“the first limb”); and
(ii) the Domain Name in the hands of the Respondent is an abusive registration (“the second limb”).

“Rights” and “abusive registration” are defined in paragraph 1 of the Policy as follows:-

“Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business.”

(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.”

As to the first limb, it is plain from the evidence that the Complainant has registered trade mark rights in the word STAPLES in relation to office supplies. Further, it is plain and the Expert finds that the Domain Name, the main element of which is STAPELS, is similar to the Complainant’s trade mark. In the result, the Expert finds that the Complainant has succeeded on the first limb.

As to the second limb, while paragraph 3 of the Policy sets out examples of what may constitute evidence that the Domain Name is an abusive registration, the circumstances of this case are such that it is not necessary to consider those examples in any detail.

A registration of a domain name may be an abusive registration as a result of the Respondent’s abusive intentions at the time of registration or as a result of the use made of the domain name thereafter.

The Expert believes it likely that the Respondent registered the Domain Name for the purposes for which it was used in early June 2003, but whether or not that is so is of no consequence in this case.

In this case it is not necessary to look back beyond the use being made of the Domain Name in early June 2003. At that stage the Respondent was clearly aware of the Complainant and its principal trade mark. The Complainant is very well known in the field of office supplies and it is inconceivable that the Respondent could have selected the name STAPELS for use in relation to office supplies without having the Complainant in the forefront of its mind. The Respondent is clearly taking advantage of the similarity between STAPLES and STAPELS. Not content with the similarity in the names, the Respondent went further and used STAPELS in logo form in a manner clearly intended to ape the Complainant’s logo. From the evidence set out above, which has not been contradicted by the Respondent, it seems clear that the Respondent’s purpose was to achieve a commercial benefit.

Accordingly, the Expert finds that for a period (length unknown) up to 12 June 2003, when the Complainant first raised the matter with the Respondent, the Respondent used the Domain Name in a manner which intentionally took advantage of the Complainant’s trade mark rights and which was intended to attract and in all probabilities succeeded in attracting internet users by deception to a trading website of a competitor of the Complainant. By this means in all probability the Respondent obtained a commercial benefit of some kind.

Reverting back to the definition of “abusive registration” set out above, the Expert is in no doubt that the Domain Name “has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.” In the result the Expert finds that the Domain Name in the hands of the Respondent is an abusive registration.

In light of the findings 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, the Expert directs that the Domain Name stapels.co.uk be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Staples Inc -v- Transworld Leisuire [2004] DRS 1514 (23 March 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1514.html Cite as: [2004] DRS 1514

Nominet UK Dispute Resolution Service