Holloway Floors v Wood 2 U [2004] DRS 1666 (12 July 2004)

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The complaint was entered on to the Nominet system on 31 March 2004. Nominet validated the complaint on 7 April 2004 and on the same day despatched a copy of the complaint to the Respondent. The Respondent filed a response on 4 May 2004. On 4 May 2004, the response was forwarded to the Complainant. No reply was received from the Complainant. Mediation under the DRS was then attempted but failed. On 21 June 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").

I, Stephen Bennett, the undersigned, (the "Expert") have confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and have further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.

The Complainant is a supplier and fitter of wood and laminate flooring and trades as Holloway Floors from premises in Canley, Coventry. The owner of the Complainant business is Mr Steve Holloway. The Respondent is a supplier of wood and laminate flooring and trades as "Wood 2 U". Although the Respondent does not fit flooring it has an arrangement with a third party to supply fitting services. The Respondent's business is said to be largely web-based whilst the Complainant's is not. The Complainant has the domain name hollowayfloors.com but there is no active website at this address. The Respondent acquired the Domain Name on 8 August 2003. The website at www.hollowayfloors.co.uk contains the Respondent's website materials offering wood and laminate flooring for sale and clearly displaying in the text of the site the Respondent's name "Wood 2 U".
The Complainant's solicitors wrote to the Respondent on 13 January 2004 alleging that the Complainant had sufficient goodwill and reputation in the name "Holloway Floors" to bring proceedings for passing off and seeking an assignment of the Domain Name. The Respondent wrote back sometime before 26 January 2004 denying the allegation of passing off. The Respondent's letter later formed the content of its response to this complaint.

The Complainant's case as put in the complaint is short. The Complainant alleges it has Rights in the name Holloway Floors. No reasoning or support for this is put forward. The Complainant alleges that the registration and use of the Domain Name render it an Abusive Registration on the basis that: it unfairly disrupts the Complainant's business; the Domain Name is used in a way which confuses people and businesses into believing the Domain Name is registered to the Complainant; and the Domain Name constitutes a blocking registration. The Complainant notes that the Respondent sells a product called "Holloway Oak" but asserts that this does not give the Respondent a legitimate reason to register or use the Domain Name. The Complainant asserts that, on the contrary, a name such as "Holloway Oak Flooring" would be appropriate. The Complainant, however, makes no complaint about use of the term "Holloway" as a name for one of the Respondent's products.

The only supporting material submitted by the Complainant is a copy of the correspondence passing between the Complainant's solicitors and the Respondent.

The Respondent states that its reason for registering the Domain Name was to promote its product called "Holloway Oak" flooring. The Respondent also asserts that in addition to selling oak flooring under the name "Holloway" it intends to add walnut, jatoba and maple to be sold as "Holloway Flooring".

The Respondent's response, as it consists of a "cut and paste" of the letter answering the Complainant's solicitors' allegation of passing off, consists essentially of arguments refuting the passing off claim. The Respondent claims that its business is fundamentally different being a web-based business for the sale only of products, not a supply and fit service as offered by the Complainant from shop premises. The Respondent also notes that the Complainant has no registered trade mark. The Respondent says nothing, however, about any rights the Complainant may have acquired through trading and promotion of its business except to point out that the name Holloway is used for a number of other businesses such as "Holloway Stores", "Holloway Supermarket" and "Holloway Cars" (although no examples in the flooring market are mentioned and no supporting material for these other uses was provided).

The Respondent also states that it trades openly as Wood 2 U and there is nothing on its website which would suggest any association with the Complainant's business.

The Respondent points out that the Complainant has not established any content on the website at www.hollowayfloors.com and suggests that the Complainant's motivation to seek assignment of the Domain Name is based on an attempt to benefit from the Complainant's claimed success in operating a flooring business over the Internet.

The complaint in this case is very thin. There is no supporting material in relation to the claim to Rights or otherwise. The response from the Respondent is a fuller document although it misses the mark in some respects as it addresses the original passing off allegation. As a result there are bare assertions made (for instance as to the Complainant's Rights) with no support. Perhaps fortunately for the Complainant, the Respondent has submitted a response and has not denied some of the allegations. I will proceed on the basis that, where appropriate I can consider the Respondent's failure to deny an allegation in assessing whether that aspect is made out.

7. COMPLAINANT'S RIGHTS

The Complainant's claim to have Rights appears to be based on use of the name Holloway Floors as the trading name for his business. The Respondent seems to accept that the Complainant has traded under the name Holloway Floors but states that there are other businesses (which I note are in unrelated areas of trade) which use the name Holloway. The implicit suggestion is that the name Holloway is so common as to be incapable of distinguishing the Complainant's business. I am not persuaded by the Respondent's arguments. There is nothing put forward in the Respondent's case to suggest that "Holloway Floors" may not be distinctive of a flooring business and, in particular, of Mr Holloway's business. All the examples provided by the Respondent relate to businesses quite clearly in other trades. I am also mindful of the views expressed in the Seiko UK Limited v Designer Time/Wanderweb (appeal in DRS 00248) which stated that "…the requirement to demonstrate "Rights" is not a particularly high threshold test".

Accordingly, I find that, based on the uncontested claim to use of the name Holloway Floors as his business name, the Complainant has Rights in the name "Holloway Floors" and that the Domain Name is identical to the name in which the Complainant has Rights (the ".co.uk" suffix being ignored for these purposes).

An Abusive Registration is defined as follows:
"…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 or was unfairly detrimental to the Complaint's Rights"

The Complainant suggests that the Domain Name is an Abusive Registration in the hands of the Respondent on the basis that: the Respondent's use / registration unfairly disrupts the Complainant's business; the Domain Name is used in a way which confuses people and businesses into believing the Domain Name is registered to the Complainant; and the Domain Name constitutes a blocking registration.

The Respondent's case is that it is making a legitimate use of the Domain Name to promote its "Holloway Oak" product. Nothing is said by either party about the Respondent's knowledge of the Complainant or its business - potentially a relevant point when considering factors which may evidence Abusive Registration such as the Respondent's primary purpose in registering the Domain Name (DRS Policy paragraph 3a(i)A, B and C). The Complainant asserts that another name could be used to promote the Respondent's product such as "Holloway Oak Flooring". In response, the Complainant says that it will in the future market flooring made from other types wood under the "Holloway" name as "Holloway Flooring".
I have found this point difficult to decide because there is so little information provided by the parties. There are some remarkable "coincidences" which are unexplained, such as why the Respondent has decided to call one of its products "Holloway". There seems to be no obvious reason why a flooring product sold by the Respondent would carry this name. In the case of the Complainant, he is using his own surname. For the Respondent, I can see no reason. I have been unable to find the "Holloway" product in the Respondent's website (although I note that a catalogue is offered separately). There is also the fact that the two businesses have physical locations relatively close together (approximately 15 miles). Given their competing nature and close physical location, it seems likely that the Respondent knew of the Complainant's business when the Domain Name was registered but nothing has been said about that.

There is then the question of the whether the location of the Respondent's website at www.hollowayfloors.co.uk is likely to cause confusion. I do not believe it is likely that anyone reading the content of the Respondent's website would believe it to be the Complainant's website. As the Respondent points out, it trades as Wood 2 U and this is apparent at the website at www.hollowayfloors.co.uk. However, a proportion of those looking for the website of the Complainant are, I believe, likely to enter the address www.hollowayfloors.co.uk expecting to find a site which promotes the Complainant's business. It would not be fanciful to expect that a proportion of those users, on finding a competitor, would consider placing their business with the competitor instead. That would be an advantage for the Respondent gained by use of the Complainant's business name. The question which arises under the DRS Policy is whether that use takes unfair advantage of or is unfairly detrimental to the Complainant's Rights.

The Respondent says it does not because the Respondent sells a product called "Holloway Oak" flooring and plans in the future to sell a product which it refers to as "Holloway Flooring". It seems to me that this gives the Respondent a good argument that use of a domain name incorporating the actual product name which it claims to use is not an Abusive Registration. However, that is not what the Respondent has done. The Respondent it seems sells only a product called "Holloway Oak" flooring (not apparently shown on the Respondent's website site) and refers to a possible wider range of woods, which it does not currently sell, as "Holloway Flooring". The domain name it has chosen is not a name it appears to use as a trade name for any of its flooring but is in fact the exact name of a local competitor business. Whilst the Respondent states that its business is national and sales based and the Complainant's is a local sales and fitting service, it is clear from the response that the Respondent has arrangements with a third party to offer a fitting service so that the Respondent can effectively compete against the Complainant in the area where the Complainant operates. The Respondent does therefore stand to gain from use of the Domain Name incorporating the business name of his competitor. In the circumstances of this complaint, given my finding as to the Respondent's likely knowledge of the Complainant's competitor business, this amounts to taking unfair advantage of the name in which the Complainant has Rights.

The Complainant has Rights in the name "Holloway Floors" and the Domain Name is identical to the name in which the Complainant has Rights. The Domain Name is an Abusive Registration in the hands of the Respondent. The Domain Name should be transferred to the Complainant as requested.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Holloway Floors v Wood 2 U [2004] DRS 1666 (12 July 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1666.html Cite as: [2004] DRS 1666