Sweet v Alessandro PLC [2004] DRS 1672 (2 June 2004)

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3.1. The following is a chronology of the Dispute Resolution Service actions:
01/04/2004 Dispute entered into system
05/04/2004 Hardcopies received in full
08/04/2004 Complaint validated
08/04/2004 Complaint documents generated
07/04/2004 No response from Respondent received by deadline
07/05/2004 No response to complaint documents generated
20/05/2004 Fees received from Complainant
24/05/2004 Mr Iain M Tolmie selected as expert

3.2. In the absence of a response from the Respondent, no Informal Mediation could be carried out.

3.3. On the 24th May 2004 I (Iain M. Tolmie, the undersigned, “the Expert”) was contacted by Nominet DRS and I confirmed to them that:
I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties.

3.4. I was appointed as the Independent Expert for this Case from 27th May 2004 to respond on or before 11th June 2004.

4.1. The Respondent has not submitted any response to Nominet as provided for under paragraph 5a of the procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service (“the Procedure”). Nominet have therefore proceeded as set out in paragraph 5b of the Procedure.

4.2. The Respondent is a UK company whose registered address (according to Companies House) is shown above. The Domains are shown as registered to Alessandro PLC, but the registered contact for the Domains is Peter Edwards whose address differs from the company registered address. Nominet has sent letters and e-mails to Mr. Edwards and a Mr. Colin Laphan, a director of Alessandro PLC.

4.3. There is no evidence before the Expert to indicate the presence of exceptional circumstances. Nominet has attempted to communicate the complaint to the Respondent by e-mail, letter and FAX. The efforts made by Nominet are in accordance with the Procedure and accordingly, I will now proceed to a Decision on the complaint notwithstanding the absence of a response, as is provided for in Paragraph 15b of the Procedure:
“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.”

4.4. Furthermore, since I am not aware of any exceptional circumstances in this case, I will act in accordance with Paragraph 15c of the Procedure which 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."

5.1. The Complainant is an individual. He claims to be a widely recognised expert nail technician. He operates a web site pointed to by the domain “thenailgeek.com” which he claims is a free and unbiased professional help site. He complains that the Respondent has operated web pages pointed to by the Domain Names in dispute, which in turn were pointed to the Respondent’s web site (nailworx.com), in contravention of his Rights and implying his personal endorsement of their products.

5.2. The Respondent is a UK Public Limited Company whose registration indicates that its business is “Wholesale of perfume and cosmetics”. It operates a web site under the domain name “nailworx.com” which contains reference to the Alessandro name and products. The products and services described in the nailworx site include Alessandro Gel Nails, Natural Nail Armour, Nail Control System and Hands! Up, all of which are products that it is reasonable to infer would be of interest and use to nail technicians.

6.1. The complaint in its entirety reads:
I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.
I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

I own a free and unbiased professional nail technician help site and forum under my industry recognised pseudonym 'The Nail Geek' which can be found at thenailgeek.com Early March, Colin joined the site and began to cause problems amongst the site members. Within hours of posting my site statistics, he registered several variations of thenailgeek.com (nailgeek.com, nailgeek.co.uk, thenailgeek.co.uk, nailgeek.net,thenailgeek.net) and routed them to his companies web site address (which supplies professional nail technicians). He was promptly served a Cease and Desist letter from my solicitor which he delayed response to as long as possible and I have just been informed that he is attempting to sell the names. There is no merit to his registration of these domain names and only has them to disrupt my traffic and align himself with my industry reputation. His further attempt to sell the names to another party is further proof of his malicious intent towards myself and my site.

6.2. Additional material has been supplied in the form of copies of four letters – one from Mr. Sweet’s solicitors to Alessandro setting out the basis of Mr. Sweet’s complaint and three more from Mr. Sweet’s solicitors to Alessandro’s solicitors. The three later letters make similar points to those in the complaint and do not provide any further enlightenment. No replies to the letters are provided and they refer to telephone conversations whose tenor and content is unknown, so they are a one sided and hence potentially distorted presentation. In accordance with Paragraph 12b of the Procedure, which sets out that “The Expert shall determine the admissibility, relevance, materiality and weight of the evidence”, I shall disregard the letters from solicitor to solicitor.

6.3.1. Our client has substantial reputation and significant goodwill throughout the world but particularly in the United Kingdom, in respect of his name, Samuel Sweet, and his pseudonym “The Nail Geek”.

6.3.2. Our client has been part of the US and UK nail industry for about 10 years and in 1999 was awarded The Creative Nail Design “Educator of the Year” Award. Our client’s reputation can be illustrated by the fact that he is a highly sought after speaker and trainer at events around the world. Indeed, our client conducts demonstrations at every trade show and also lectures at the vast majority of trade shows. Furthermore, our client teaches for several days a month and also spends about one week every two months at special events.

6.3.3. …….Our client writes a column in Scratch magazine on a monthly basis under his pseudonym “The Nail Geek”, such column also makes reference to his actual name, Samuel Sweet. In addition, Nail magazine makes use of “The Nail Geek” website once a month as a forum for their own column. Our client also features an article in Nails and Professional Nails approximately every three months. Irrespective of his columns, our client’s name invariably features in each issue of Nails and Professional Nails.

6.3.4. Furthermore, our client also operates the website “www.thenailgeek.com” which contains tutorials and tips, a message board strictly for the professional technician and a chat room. Visitors to this site include technicians from Hawaii, Australia, Holland, South Africa and, obviously, the United Kingdom. Our client believes that his website, www.thenailgeek.com, is the leading industry website which represents an indispensable resource for the nail industry. This is borne out by the fact that his website receives over 350 visits per day generating in excess of 74,000 hits and has approximately 1,826 registered members.

6.3.5. Our client is universally recognised, both under the name Samuel Sweet and also “The Nail Geek”. as one of the top nail technicians in the world.

6.3.6. It is inconceivable that any person having any familiarity with the nail technician industry (which will include not only professional nail technicians but also their informed customers) and the leading persons within it is not aware of our client and his reputation, and does not know him to be “The Nail Geek”. Whenever any such person sees any reference to “The Nail Geek” they will immediately and automatically consider this to be a reference to our client or to a business or company associated materially with our client.

6.3.7. ….. Given our client’s reputation as “The Nail Geek” and industry knowledge that he operates a website (the domain name of which includes reference to “The Nail Geek”), it is likely that a person seeking to locate this website, but not knowing the exact URL, would type in some of the domain name variants registered by you which point to the Alessandro and Nailworx websites. Consequently, your registration and use of the Domain Names which point to the Alessandro and Nailworx websites creates a “false message” which will undoubtedly be understood by a significant section of the nail industry market to mean that Alessandro and/or Nailworx are a business operated by our client and/or materially connected to our client and that the Alessandro and/or Nailworx goods have been endorsed, recommended or approved by our client - which is incorrect.

7.1. In order for a Complainant to succeed he must (under Paragraph 2 of the Nominet UK Dispute Resolution Service Policy – “the Policy”) prove to the Expert, on the balance of probabilities, both:
i. that he has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii. that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
Claimants Rights

7.2. The Claimant is an individual and the Domain Names in question are not his personal name or any obvious rearrangement of that name. He does not claim to operate a business with the name “The Nail Geek” (or anything similar) nor does he claim to have any registered marks of a similar nature.

7.3. The Claimant asserts that “I own a free and unbiased professional nail technician help site and forum under my industry recognised pseudonym 'The Nail Geek'”. Unfortunately he provides no hard evidence of that “industry recognition”, only the assertion. The solicitor’s letter provides additional information about the assertions as to the Claimant’s prominence in the industry, but unfortunately no hard evidence (e.g. copies of articles in the magazines mentioned).

7.4. In order to take a reasonable view of the standing of “The Nail Geek”, I have viewed the “thenailgeek.com” site, which currently claims just over 2000 registered members. It contains general advice and (amongst other things) fora for nail technicians to discuss techniques and issues arising from the use of various tools and preparations (nail extensions, polishing agents etc.). The fora are clearly well used – and by extension a large number of people (in the nail technician and associated industries) must know about them and use them.

7.5. Whilst the claims made by Mr. Sweet’s solicitors are somewhat full, it does not seem entirely unreasonable that “it is inconceivable that any person having any familiarity with the nail technician industry ….. is not aware of [Mr Sweet] and his reputation and does not know him to be “The Nail Geek”.”…..

7.6. Having considered the claims made by the Claimant and his solicitors and having reviewed the web site, on the balance of probabilities, it is my opinion that Mr. Sweet is reasonable in his claim that the name “The Nail Geek” is an “industry recognised pseudonym”. I therefore find that Mr. Sweet does have Rights in the name “The Nail Geek”.

7.7. The disputed Domain Names are “thenailgeek.co.uk” and “nailgeek.co.uk”. The first and second level domains “.co.uk” are ignored for these comparison purposes. Domain names cannot for technical reasons include spaces and are usually shown as lower case letters, hence “The Nail Geek” would reasonably translate into “thenailgeek” and equally it would be reasonable to ignore the definite article and to say “nailgeek” was also similar.

7.8. Accordingly I find that Mr. Sweet has Rights in a name or mark which are identical or similar to the Domain Names in dispute.

7.9. According to Paragraph 1 of the DRS Policy, an Abusive Registration means 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;
Examination of the evidence of Abusive Registration

7.10. It is asserted by Mr Sweet and by his solicitors that the web sites pointed to by the Domain Names in dispute were originally pointing at the “nailworx.com” web site. I have been provided with no hard evidence as to that fact (e.g. screen copies of the contents of the web pages), but Alessandro has not disputed that this was the case. Currently both the Domain Names have similar web sites, consisting of two accessible pages. The first page claims it to be an “Unofficial Nine Inch Nails site” and it has three active links, the first is to a page which implies that the rest of the site is “under construction” and “coming soon”, the other two direct the user to www.9inchnails.com and www.nineinchnails.com. Nine Inch Nails are apparently a modern music band and these sites are for fans that wish to discuss their music and appearances and those who wish to buy branded merchandise. The web pages at the Domain Names are very sketchy and primitive and could easily be replaced or expanded.

7.11. It is clearly no longer the case that the Domain Names point to the Alessandro/Nailworx site. However, one may reasonably question why Alessandro PLC wish to pay Domain Name registration fees in order to publicise a modern music band (when other web sites already exist) and whether this is merely a ploy to divert the DRS process and which can then be quickly reversed.

7.12. Mr. Sweet alleges that “[In] Early March, Colin joined the site and began to cause problems amongst the site members”. There is a Colin Laphan who is a director of Alessandro, but there is no direct evidence to show whether that is who Mr. Sweet meant. The Nailworx web page at www.nailworx.com/pages/general/press.htm refers to Colin Laphan as the Managing Director. The initial solicitor’s letter on behalf of Mr. Sweet was addressed to the Managing Director of Alessandro – but not by name. Mr. Sweet asserts “His further attempt to sell the names to another party is further proof of his malicious intent towards myself and my site”. It may be that Alessandro or Mr. Laphan has some quarrel with Mr. Sweet, but I am not prepared to accept that as material in the absence of evidence.

7.13. However, the major issue is not what is happening now or how the situation arose, but what was the situation at the time when the registration took place (extract from the Definition of Abusive Registration) of the Domain Names in dispute and how they have been used. Whilst it might be true that (in different circumstances) it might have been credible to make out an argument that it was not possible to confuse a fan site for the Nine Inch Nails band with a site for nail technicians – that is not the basis for this complaint. I do not regard the current contents of the web sites pointed to by the Domain Names to be material to my considerations.

7.14. I find it reasonable to accept the contention that:
“It is inconceivable that any person having any familiarity with the nail technician industry (which will include not only professional nail technicians but also their informed customers) and the leading persons within it is not aware of our client and his reputation, and does not know him to be “The Nail Geek”. Whenever any such person sees any reference to “The Nail Geek” they will immediately and automatically consider this to be a reference to our client or to a business or company associated materially with our client”

7.15. The “nailworx.com” web site speaks in some detail of the training of nail technicians and their use of Alessandro products. I therefore consider it to be likely that Colin Laphan (as someone involved in the business of training and supplying materials to nail technicians) did know about Mr. Sweet as “The Nail Geek” and the “thenailgeek.com” web site. I also believe that this is likely to be true of at least some of the other staff and directors of Alessandro.

7.16. This is a situation that is crying out for some form of explanation from Alessandro as to why it acquired the Domain Names in the first place. Respondents are free to choose not to respond formally to complaints made to the Nominet DRS, indeed in some situations it is probably advisable not to do so, since it is for the Complainant to prove his case. In this case, however, a public company has followed a course of action that is difficult to understand and for which they have offered no assistance in understanding their reasoning.

7.17. After due consideration, I find that the Domain Names were registered in a manner which, at the time when the registration took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights (extract from the Definition of an Abusive Registration).

7.18. Furthermore, Mr. Sweet has alleged that originally the web pages pointed to by the Domain Names in turn pointed to the Nailworx/Alessandro web site. He has signed a declaration of truth to that effect, and Alessandro have not sought to contradict him or offer contrary evidence,

7.19. Mr. Sweet makes it clear that his site is “a free and unbiased professional nail technician help site and forum” and I can accept that anything that would tend to detract from that independence would both damage the site and Mr. Sweet’s reputation. Whilst I am sure there is no intention to impugn Alessandro products, an independent site cannot be seen to recommend or be associated with particular proprietary products without damaging that independence.

7.20. I accept the contention by the solicitors for Mr. Sweet – that:
….. Given our client’s reputation as “The Nail Geek” and industry knowledge that he operates a website (the domain name of which includes reference to “The Nail Geek”), it is likely that a person seeking to locate this website, but not knowing the exact URL, would type in some of the domain name variants registered by you which point to the Alessandro and Nailworx websites. Consequently, your registration and use of the Domain Names which point to the Alessandro and Nailworx websites creates a “false message” which will undoubtedly be understood by a significant section of the nail industry market to mean that Alessandro and/or Nailworx are a business operated by our client and/or materially connected to our client and that the Alessandro and/or Nailworx goods have been endorsed, recommended or approved by our client - which is incorrect.

7.21. Whilst this is not specifically claimed by Mr. Sweet, I consider the linking of the Domain Names to the “nailworx.com” site to be circumstances indicating that the Respondent is using [has used] the Domain Names 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 paragraph 3ii – factors which may be evidence of an Abusive Registration).

7.22. Therefore I find that the Domain Names have been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights (extract from the Definition of an Abusive Registration).
7.23. Accordingly I find, on the basis of the discussion above, that the Domain Names, in the hands of the Respondent, are Abusive Registrations.

8.1. For the reasons set out above I find that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations.
8.2. I therefore determine that the Domain Names should be transferred to the Complainant.

Iain M. Tolmie

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Sweet v Alessandro PLC [2004] DRS 1672 (2 June 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1672.html Cite as: [2004] DRS 1672