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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Dell Inc -v- Ronnie Lamont/PC Warehouse [2004] DRS 1805 (8 October 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1805.html Cite as: [2004] DRS 1805 |
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Nominet UK Dispute Resolution Service
DRS 1805
Dell Inc.-v- Ronnie Lamont/PC Warehouse
Decision of Independent Expert
1. Parties
Complainant: Dell Inc.
USA
Respondent: Ronnie Lamont
GB
2. Domain Names
delloutlet.co.uk ("the Domain Name")
3. Procedural Background
The Complaint was lodged with Nominet on 17 June 2004. Nominet validated the Complaint and informed the Respondent on 22 June 2004 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days (until 15 July 2004) to submit a Response.
The Response was received by Nominet on 15 July 2004 and sent to the Complainant on 19 July 2004. The Complainant filed a Reply on 27 July 2004, a copy of which was sent to the Respondent the same day. The Informal Mediation stage of the DRS took place but no resolution of the dispute was achieved. The parties were informed accordingly and the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to Paragraph 6 of the Nominet DRS Policy ("the Policy").
On 20 September 2004 Nominet appointed Andrew Clinton ("the Expert"). The Expert confirmed to Nominet that he knew of no reason why he would not properly accept the invitation to act as expert in this case, and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. The Facts
The Domain Name was registered on 30 July 2002 in the name of Ronnie Lamont of PC Warehouse, 23 Harbour Road, Inverness, IV1 1SY. The registration was last updated on 2 May 2004.
5. The Parties' Contentions
5.1. Complaint
The Complaint, so far as is material, reads as follows:-
"Complainant's Rights
1. The Complainant in these proceedings is Dell Inc. ("Dell"). Dell is the world's largest direct seller of computer systems.
2. Dell is the registered proprietor of a number of DELL trade marks in both the UK and worldwide. Copies of some of Dell's UK and Community registrations for the mark DELL are attached at Annex 1.
3. Dell spends millions of dollars each year advertising and promoting its trademarks, products, services and image, thereby creating substantial goodwill in the market place. In Dell's financial year 2003 alone it spent over $426 million on advertising and promoting products and services under the mark DELL. It has therefore acquired substantial goodwill and reputation in its computer products and services.
4. Dell's well established reputation as a market leader is evidenced by its receipt of numerous awards and distinctions. It also enjoys the highest global market share, surpassing other industry leaders such as IBM.
5. New Dell products are sold by Dell directly to consumers over the internet and by telephone. Dell advertises widely in trade journals and has a large internet presence, including advertisements on many websites (see, for example, advertisements for Dell's products and links to Dell's website at http://www.electrical.ukretailers. com/buying_a_computer.htm).
6. Used Dell computer products are sold by Dell directly to consumers through Dell's factory outlet. This part of its business called Dell Outlet. Dell Outlet sells computers that have been returned to Dell for a variety of reasons. All products from Dell Outlet are similar to systems purchased new from standard Dell sources, except that they have been returned, tested and then sold to consumers at a discount with full Dell warranty. On the home page of Dell's website at www.dell.co.uk, there is a link to "The Official Dell Outlet Site"(seehttp://www1.euro.dell.com/content/default.aspx?c=uk&l=en&s=dfo).
7. Dell has offered computers for sale from its factory outlet online since October 1998, through www.dell.com/uk/factoryoutlet. Since at least July 2001 this has been known as Dell Outlet, accessed through www.dell.co.uk/outlet.
8. Dell has registered rights in respect of its name DELL, which is very similar to the Domain Name, and unregistered rights in respect of the name Dell Outlet, which is identical to the Domain Name. It is therefore submitted that Dell has rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive Registration
9. It is submitted that the evidence set out below shows that the Domain Name in the hands of the Respondent, PC Warehouse (Highland) Limited, is an "Abusive Registration" as defined in paragraph 1 of Nominet's Dispute Resolution Policy. This is because the Domain Name was registered and has been used in a manner which takes unfair advantage of and is unfairly detrimental to Dell's rights.
10. In a manner similar to Dell's website at www.dell.co.uk, the Domain Name resolves to a website selling computers and peripherals online (the "Website"). The Website is headed "YOURCOMPANY.COM" and, in a manner similar to Dell's website at www.dell.co.uk, is coloured in shades of blue and white. Copies of these websites are attached at Annexes 2 and 3 respectively.
11. The Complainant's DELL trade marks are also being used many times as metatags as part of the word "delloutlet.co.uk" on the Website. Copies are attached at Annex 4.
12. According to a search carried out on WayBackMachine (attached at Annex 5), the Website has been active since at least 19 June 2003. The Website sells mostly unbranded PCs and peripherals such as hard disks. Currently one Dell product appears on the website, the DELL E771a 17'' 1280x1024 Black Monitor, which is marked "Out of Stock" (attached at Annex 6).
13. According to the archive web search, the home page of the Website at 19 June 2003 stated: "DellOutlet.co.uk..... Thank-you for visiting the NEW DellOutlet.co.uk website. Please take a while to have a look around at the superb Special Deals we have on offer right at the moment. Our stock changes daily, so if you don't see what you are looking for on your first visit, please either drop us a line at: Sales@DellOutlet.co.uk <mailto:Sales@DellOutlet.co.uk> or remember to check our site regularly."
14. A webpage entitled "About Us" stated: "We are resellers of quality new and refurbished laptops and complete desktop computer systems, plus monitors and peripherals. In this web-site you will find details on new (mainly Dell) laptops which consist mostly of cancelled orders and customer returns, all of which come complete with a full 12 months manufacturer's warranty (extendable to 3 years) and HUGE savings over the recommended price."
Evidence of Abusive Registration
15. Dell's trade marks are registered in respect of the same products as those sold on the Website: computer hardware. The well known One in a Million case (attached at Annex 7) held that a name which will, by reason of its similarity to the name of another, inherently lead to passing off is an instrument of fraud.
16. Dell's reputation in its Dell Outlet business grew significantly in the three years prior to the Respondent registering the Domain Name on 30 July 2002. The Respondent must have been aware of this when he registered the Domain Name, particularly since, like Dell Outlet, his business included selling customer returns. As the Domain Name contains the Complainant's widely recognised DELL mark and is identical to the name of the Complainant's well known Dell Outlet business, it is submitted that the Respondent must have realised when he registered the Domain Name that there was no legitimate use that he could ever have made of the Domain Name in the UK.
17. The Domain Name is a representation that the website to which it resolves is approved by Dell or is Dell's official Dell Outlet website for discounted Dell computer systems. In the Decision of the Nominet Appeal Panel in Seiko UK Limited v. Designer Time/Wanderweb 19 July 2002 (DRS 00248), attached at Annex 8, domain names seiko-shop.co.uk and spoonwatchshop.co.uk were transferred to Seiko because the public would believe the domain name made a representation that the website to which it resolved was the official UK Seiko watch shop or was otherwise approved by Seiko.
18. Similarly, in the Nominet decision Nokia Corporation v Just Phones Limited 7 January 2002 (DRS 0058), attached at Annex 9, Just Phones Ltd were using the domain name nokiaringtones.co.uk to sell Nokia ring tones. The Nominet Expert ordered the domain name to be transferred to Nokia, holding that Just Phones Ltd had chosen the domain name to take most effective advantage of the reputation and goodwill in the famous NOKIA name.
19. From this evidence it is submitted that this registration is an Abusive Registration as it is an obvious attempt to be associated with Dell and its well known Dell Outlet business and this registration takes unfair advantage of Dell's rights.
Confusion
20. The Website mostly sells computer hardware which is not produced by Dell. As at today's date, the Website only listed one Dell product which is currently out of stock. The domain name is misleading as it indicates that it is a website approved by or connected to Dell for the sale of Dell Outlet used products, rather than the other products that the Website actually sells. The Domain Name is not descriptive of the subject matter of the Website as it does not only sell Dell products.
21. The Domain Name has been used in such a way as to lead people or businesses into believing that the Domain Name has been registered to, operated or authorised by, or otherwise connected with Dell. In Hanna-Barbera Productions, Inc -v- Graeme Hay 23 August 2002 (DRS 00389) (known as the SCOOBY DOO case), attached at Annex 10, the Nominet Appeal Panel held that it was entitled to look at all use of the Domain Name from commencement of that use to date, and that therefore previous use of the Domain Name, before changes made by the Respondent, should be taken into account in determining whether there has been an abusive registration. Therefore all use that the Respondent has made of the Domain Name, including the previous use set out in paragraphs 13 and 14 below, should be taken into account.
22. It is therefore submitted that the Respondent registered and used the Domain Name in a manner which took unfair advantage of Dell's Rights.
Unfair Detriment
23. It is submitted that the Domain Name registrations are also unfairly detrimental to Dell's rights in the mark DELL. The public are likely to buy what they believe are used Dell computers from the Respondent, believing them to be authorised or approved by Dell, on the grounds that such products have been rigorously re-tested to Dell's high standards. This is not the case, as Dell has no control over any testing that the Respondent may or may not carry out. If the Respondents products do not meet Dell's high standards, this will be damaging to Dell. No response from the Respondent
24. Dell's solicitors wrote to the Respondent on 16 April 2004 (attached at Annex 11) drawing the Respondent's attention to Dell's Rights in the DELL marks and the scope for confusion with the Domain Names, and inviting the Respondent to transfer the Domain Names to Dell. Dell's solicitors sent another letter to the Respondent on 4 May 2004 and telephoned leaving messages with Leona Lamont of the Respondent, for the attention of Mr Ronald Lamont, on 11 and 14 May 2004. As at the date of this Complaint, Mr Ronald Lamont of the Respondent has not replied to these letters or returned these telephone calls. There is no legitimate reason why the Respondent should continue to hold the Domain Name and it has been given ample opportunity to transfer it to Dell.
25. Dell has given the Respondent no permission or authority to register the Domain Name. The Complainant's DELL trade marks and Dell Outlet business are so well known and, given the similar nature of the trade marks and the Domain Name and the identical nature of the Complainant's Dell Outlet business name with the Domain Name, it is clear that the Domain Name registration takes unfair advantage of the Complainant's rights. C. Transfer
26. Dell therefore seeks a transfer of the Domain Name to Dell Inc. through the Nominet Dispute Resolution Service."
5.2. Response
The Response, so far as is material, reads as follows:-
"We are disputing that this domain (www.delloutlet.co.uk) is an abuse under the Nominet Abusive Registration, for the following reasons:-
1. Dell may have registered trade marks for the Dell logo etc, but they do not have priority usage or ownership of the words Dell and/or Outlet. In the Oxford English Dictionary a Dell is described as.... "dell /del/ noun (literary) a small valley with trees growing in or around it", while Outlet is described as.... "Outlet(business) a shop/store or an organization that sells goods made by a particular company or of a particular type".
2. We believe that we genuinely comply under trades description associated with the use of the domain "DellOutlet.co.uk", as we reside in an area in Inverness called "The Dell". This area consists of a small, wooded, valleyed area of Inverness, and this area of Culduthel, Inverness, has been called "The Dell" for many, many years prior to Dell's conception as a Computer Company. There is written evidence of the name Dell being used in Inverness in the mid 1700's. (quite some time prior to Dell's inception). We are also an outlet, retailing computers/laptops and PC related components. This web site domain was purchased with the sole intention of distributing Dell ex. leased, returned, cancelled order PCs and Laptops and related accessories....thereby justifying our usage of the generic Outlet term.
3. We have used and have made demonstrable preparations to use the Domain Name in connection with a genuine offering of goods or services, by way of creating a website called "DellOutlet.co.uk" and have incurred considerable expense in purchasing and uploading an e-commerce facility called "ClickCartPro" and associated e-commerce "skin", which can be clearly viewed at the following domain address "Delloutlet.co.uk". It is ludicrous for Dell's agent to suggest we have copied, or attempted to copy Dell's website, and colours, as this is a standard, template purchased from ClickCart Pro, and has not been customized in any way to appear like Dell's web-site.
4. Dell may have registered rights to the dell logo, but do not currently have any registered rights to the DellOutlet name/logo. Dell have no registered rights to the trade name/trademark DellOutlet.co.uk.
5. We have been supplying Dell new/cancelled order/refurbished units/ex. leased units since Sept 1999.
6. We are known locally as the Dell Outlet due to the large range of Dell accessories, spares, etc held in stock, and able to be sourced at very short notice, at discounted prices.
7. Delloutlet.co.uk is NOT identical to the registered mark which Dell currently have registered rights to.
8. We do not make any use of the Dell registered trade-mark logo within our website, and do not fraudulently pass ourselves off as a part of/dept of/or any associated representative of Dell. We do not lead people to believe that we are in any way connected to Dell....only that we re-sell Dell branded products, which are widely available via the distribution channel in the UK. In our bricks & mortar store, we retail goods such as those manufactured by Epson, Lexmark, HP, Toshiba, Sony, Acer, etc...etc...to name but a few, and have their trade names clearly marked in store, on-display, on promotional posters/banners etc, but none of these manufacturers have taken the approach that Dell have, by making accusations that we are in any way attempting to pass ourselves off as a part of their businesses, and instead are delighted that we are retailing their goods.
9. This is an exert taken from the website of EAF (UK), one of the principal distributors of Dell laptops and spares in the UK, and our primary source of Dell branded laptops.... "Exclusive Dell Notebook Reseller EAF UK has been named as Dell's EXCLUSIVE remarketing partner of notebooks throughout Europe. Recognition of EAF's excellence in relation to product quality and support services has resulted in this unique relationship with the International number-one PC maker. 'EAF have been leading the UK market supply of Dell parts for some time' said Jon King, Commercial Director. 'Our experience of the Dell product has enabled us to offer this powerful service solution', he added. EAF's product offering enables customers to buy latest technology products at over 30% less than the list price. Supported by a full warranty the offering provides a branded option to the end-user market area. " We are confident that we are able to supply a quality of products with an un-surpassed level of price and service, and with the back-up and support of qualified and experienced technical staff.
10. Dell have not been able to demonstrate any actual confusion by consumers, as is required under an infringement case.
11. We believe that the domain name "DellOutlet" is a name composed of generic words, and we are making fair use of the name. The name is an accurate description of the products and/or services supplied.
12. Dell have no rights to the name DellOutlet.co.uk."
5.3. Reply
The Reply, so far as is material, reads as follows:-
1. "The Complainant replies to the points raised in the Response as follows:
Abusive Registration
2. The Respondent submits that the Domain Name is not an Abusive Registration. Paragraph 4(ii) of Nominet's DRS Policy states that if a Domain Name is generic or descriptive and the Respondent is making fair use of it this may be evidence that the Domain Name is not an Abusive Registration. The Complainant responds that this paragraph does not apply in this case because the Respondent is not making descriptive or fair use of the Domain Name for the following reasons. Respondent's use of "Dell Outlet" not descriptive
3. The Respondent makes two separate points. First, he says he lives in The Dell so the Domain Name describes his address. Secondly, he points out that he is in business selling computer hardware products and registered the domain name because he intended to sell Dell ex. leased, returned and cancelled order products. Respondent's residence
4. The Respondent submits that a "dell" is a small valley with trees growing in or around it, and the Respondent says he resides in a small wooded valleyed area of Culduthel, Inverness that has been called "The Dell" for many years. However, he does not provide any evidence of this.
5. The Complainant has conducted searches on www.streetmap.co.uk (attached at Annex 12) and found that there are many locations and road names in the UK that have the name "Dell". Unsurprisingly, since there are many wooded valleyed areas in Scotland, there are several locations in Scotland with the name "Dell". However the Complainant's search brought up no places with the name "Dell" in Inverness, apart from a small road called "The Dell" which does not form part of the Respondent's business or home address. The Respondent's home address is Vriskaig, 88 Culduthel Park, Inverness IV2 4RZ (see Companies House report at Annex 13).
6. The Complainant submits that, even if the Respondent's use of the mark "Dell Outlet" is descriptive use (which it denies), the Respondent is not making fair use of the mark, therefore Paragraph 4(ii) of Nominet's DRS Policy does not apply. This is supported by section 11(2) of the Trade Marks Act 1994 which states that descriptive use of trade marks will not infringe only if such use is honest. The Complainant submits that the Respondent's registration and use of the Domain Name is not fair or honest for the reasons set out under paragraphs 11 to 19 below. No evidence that Respondent is known as "Dell Outlet"
7. The Respondent submits that his business is known locally "as the Dell Outlet" due to the large range of Dell accessories, spares, etc held in stock, and able to be sourced at very short notice, at discounted prices.
8. The Respondent has provided no evidence that his business is known locally as the Dell Outlet. His registered company is called PC Warehouse (Highland) Limited. He refers to his company both in the Response and on Nominet's WHOIS search report for the Domain Name (attached at Annex 14) as "PC Warehouse". The evidence provided shows that the Respondent is currently using the mark "Dell Outlet" solely in the Domain Name.
9. The Respondent has provided no evidence that he currently holds any Dell products in stock or is able to readily source them. As the Complainant has already commented at paragraph 12, currently only one Dell product appears on the Respondent's website which the Complainant notes is still marked "out of stock". This can be seen at Annex 6 of the Complaint.
10. Even if the Respondent is known by the name "Dell Outlet" (which is not accepted), the Complainant submits that he is not entitled to use that name as his use of it takes unfair advantage of and is detrimental to the Complainant's goodwill and is an Abusive Registration. Respondent's use of "Outlet"
11. The Respondent submits that an Outlet is "a shop/store or an organization that sells goods made by a particular company or of a particular type" and that its business is an outlet, retailing computers/laptops and PC related components. The Complainant has no objection to the Respondent calling its business an "Outlet" provided it does not also use the mark "Dell" with it. Not fair use The Respondent's interests at the date of the registration
12. The Respondent submits that the Domain Name was purchased with the sole intention of distributing Dell ex. leased, returned, cancelled order PCs and Laptops and related accessories, and that he has been supplying these products since September 1999. The Respondent has provided no evidence of his supply or the extent of his supply of any Dell products from September 1999.
13. As the Complainant points out at paragraph 16 of the Complaint, the Respondent registered the Domain Name on 30 July 2002 (see WHOIS search attached at Annex 14).
14. The Complainant, Dell, began selling used Dell products from its online factory outlet at least three years before the Respondent registered the Domain Name and long before the Respondent began offering these products. Dell's "outlet" business went live in late October 1998 via the url www.dell.com/uk/factoryoutlet (see internal Dell email dated 2 November 1998 attached at Annex 15). The Complainant began using the domain name www.Dell.co.uk/outlet, with a link on its homepage at www.dell.co.uk to its Dell Outlet site, on or before 18 May 2001 (see internal Dell email dated 21 June 2004 attached at Annex 16).
Likelihood of confusion
15. When browsers type in or otherwise come across the website www.delloutlet.co.uk, they will not assume that the website is run by an independent computer company selling goods in a small wooded valleyed area. They will believe that they are accessing Dell's official factory outlet site or that it is otherwise authorised or licensed by the Complainant. The Respondent's website clearly competes with the Complainant's website and that there can be no reasonable explanation to impute good faith to the Respondent in its selection and use of the Domain Name.
16. The Respondent claims that he purchased the Domain Name with the sole intention of distributing the same Dell products that the Complainant sells in its Dell Outlet business. It is therefore reasonable to infer that his choice of Domain Name was so that users would believe they were accessing Dell's official factory outlet site or that he was otherwise an authorised or licensed outlet of the Complainant. According to internet traffic statistics from the Alexa website, it would appear that the Respondent has been successful in this regard, achieving over two million hits in the last three months (seehttp://www.alexa.com/data/details/traffic_details?q=&url=delloutlet.co.uk which is also printed and attached at Annex 17).
17. The Complainant's objection in this complaint is not that the Respondent sells Dell products (if obtained legitimately from the company EAF (UK) as the Respondent claims).However the Complainant objects to the Respondent doing so through a website accessed by a Domain Name which is an Abusive Registration or in a manner that otherwise infringes the Complainant's rights. Unfair detriment is being caused to the Complainant's rights in the mark DELL because of the likelihood of users being confused into thinking, incorrectly, that the website is run or authorised by the Complainant.
18. The Respondent submits that it has not consciously customised its website to look like the Complainant's site, but does not deny the Complainant's submission at paragraph 10 of the Complaint that the Respondent's website in fact sells the same kinds of products and is coloured in shades of blue and white in a manner similar to Dell's website at www.dell.co.uk. The Respondent says that he purchased and uploaded, "at considerable expense" a standard template from ClickCart Pro. ClickCart Pro's website athttp://www.clickcartpro.co.uk/online-shop/ccp51/cgi-bin/cp-app.cgi?&pg=cat&ref=skins illustrates the 22 different standard "skins" in a variety of designs and colours, any of which can be purchased for £12.99 plus VAT (see Annex 18). The Respondent's chosen design is the design most similar to the Complainant's website.
Evidence of confusion
19. The Respondent points out that the Complainant has not provided any evidence of actual confusion and asserts that it is necessary for the Complainant to do so.
20. The Complainant submits that it is not necessary to produce this evidence. In the Nominet case Jackson-Stops & Staff -v- Michael Jackson Stops Fanzine (17/12/2001) (attached at Annex 19), the appointed Expert concluded that the likelihood of confusion and the potential for disruption were detrimental to the Complainant's business and this was capable of amounting to an abusive registration notwithstanding that the Complainant had shown no actual confusion. The fact that the Complainant has not provided evidence of actual confusion in this case does not demonstrate that there has not been any actual confusion or that there is no likelihood of confusion.
Conclusion
21. The Complainant submits that, for all of the reasons above, the Respondent's registration and use of the Domain Name is not fair or honest and therefore constitutes an Abusive Registration. Transfer 22. Dell therefore seeks a transfer of the Domain Name to Dell Inc. through the Nominet Dispute Resolution Service."
6. Discussions and findings
Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities: firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
6.1. Complainant's Rights
The Complainant clearly has Rights in the name Dell by virtue of its UK and Community trade mark registrations and the goodwill and reputation it has acquired in the name Dell through many years of advertising, promoting and supplying products and services under that name. The name Dell is similar to the Domain Name, the only difference being the addition of the suffix "-outlet".
The Respondent accepts that the Complainant may have registered rights in the Dell logo but disputes that the Complainant has registered rights in the name DellOutlet. It is of course not necessary for a Complainant to establish that it has registered rights in a name. Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. The requirement to demonstrate rights is not a particularly high threshold test.
The Complainant claims that it has unregistered rights in the name "Dell Outlet". It says that Dell's Outlet business went live in October 1998 and that the Complainant started using the domain name www.Dell.co.uk/outlet, with a link on its homepage at www.dell.co.uk to its Dell Outlet site, on or before 18 May 2001. The Complainant says it has been known as Dell Outlet since at least July 2001, accessed through its www.dell.co.uk outlet. There is a link on Dell's website to "The Official Dell Outlet Site".
The Expert is satisfied, on the balance of probabilities, that the Complainant has Rights in a name (Dell) that it is similar to the Domain Name and further is satisfied that the Complainant has Rights in a name (Dell Outlet) that it is identical to the Domain Name.
6.2. Abusive Registration
Abusive Registration is defined in paragraph 1 of the Policy to mean 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.
Non-Exhaustive factors - paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy as follows:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired 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 costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. 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;
(iii) In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
(iv) It is independently verified that the Respondent has given false contact details.
Non-exhaustive factors - paragraph 4 of the Policy
A non-exhaustive list of factors which may be evidence that a Domain Name is not an Abusive Registration is set out in paragraph 4(a) of the Policy as follows:
(i) Before being informed of the Complainant's dispute the Respondent has:
A. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C. made legitimate non-commercial or fair use of the Domain Name; or
(ii) The Domain Name is generic or descriptive and the Respondent is making fair use of it.
Discussion
(i) This case turns on whether or not the registration and use of a domain name, incorporating a supplier's registered trade mark together with a non-distinctive suffix, by a legitimate trader in that supplier's goods, but without approval by the supplier, takes unfair advantage of the Complainant's rights. There is a tension in the law and in the Policy between a trader's right to use the trade mark of a supplier's goods on the one hand and the rights of that supplier to legitimately complain about unfair advantage being made of its trade mark.
(ii) In Seiko UK Limited v Designer Time (DRS248) the Appeal Panel considered this very question in the context of domain names that consisted of registered trade marks (Seiko and Spoonwatch) together with non-distinctive suffixes ("-shop" and "-watchstop"). The Appeal Panel found that if a domain name makes, or is liable to be perceived as making, a representation that there is something approved or official about the website that constituted unfair advantage being taken by the domain name registrant or unfair detriment caused to the trade mark owner.
(iii) Under paragraph 9c of the Policy decisions made by an Appeal Panel do not have precedent value but are of persuasive value to Experts in future decisions. Of course each case turns on its own facts.
(iv) The Expert therefore needs to consider whether the Domain Name makes, or is liable to be perceived as making, a representation that there is something approved or official about the website. In other words has the Respondent gone beyond making a representation that it sells Dell products to making a representation that it is The Dell Outlet or it is in some way approved by Dell?
(v) The Expert finds, on the balance of probabilities, that the registration and use of the Domain Name by the Respondent does take unfair advantage of the Complainant's rights in that the Domain Name is liable to be perceived as making the representation that the website is in some way approved by the Complainant. The Expert has had regard to all of the submissions made and evidence lodged and has taken into account the following factors in particular:
Decision
The Expert finds that, on the balance of probabilities, the Complainant has rights in a name which is similar (in the case of Dell) or identical (in the case of Dell Outlet) to the Domain Name, and that the Domain Name is, in the hands of the Respondent, an Abusive Registration. The Expert directs that the Domain Name be transferred to the Complainant.
Andrew Clinton
8 October 2004
