Booker Cash & Carry Ltd -v- Smith [2004] DRS 1964 (11 October 2004)

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A complaint ("the Complaint") was received in full by Nominet on 17 August 2004. Nominet forwarded the Complaint to the Respondent on 19 August 2004 and notified her that she had 15 working days (i.e. until 13 September 2004) to respond. The Respondent failed to respond. Mediation not therefore being possible Nominet notified the parties on 15 September 2004 that the Complaint would be referred to an independent expert upon payment of the requisite fee. The Complainant paid the fee on 20 September 2004 for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy").

On 22 September 2004 and in accordance with paragraph 9 of the Nominet Dispute Resolution Service Procedure ("the Procedure") I, Simon Chapman, ("the Expert") confirmed to Nominet that I was impartial and independent and knew of no reason why I should not accept an appointment to act as Expert in this matter.

I was subsequently appointed by Nominet on 27 September 2004 and my decision is due by no later than 11 October 2004.

The Respondent has not submitted a Response to the Complaint. From the papers that have been submitted by Nominet to me it is apparent that efforts have been made to send the Complaint to the Respondent by post and e-mail to the contact details held on Nominet's Register. I have noticed from those papers that two e-mails sent to the Respondent have not been successfully delivered, although there is nothing to suggest that the communications sent by post have not been successfully delivered. In addition a further e-mail notifying the Respondent that an expert will be appointed does appear to have been successfully delivered to the e-mail address held on Nominet's records. I think that it is therefore reasonable to conclude, that the Respondent has been served with the Complaint.

I now move on to consider the consequences of the Respondent not submitting a response.

The Procedure envisages just such a situation and provides in Paragraph 15 that:-

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision.

I will draw such inferences from the Respondent's failure to respond as I think appropriate, but must bear in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say, or that the Complaint has not in fact come to her attention.

The Complainant is a well known cash and carry operator, providing goods to high street retail stotres and catering outlets. The Complainant asserts that it has some 450,000 customers throughout the UK. The Complainant is a subsidiary of The Big Food Group Plc and on that company's website, it explains that one of the Complainant's range of products is sold under their "Happy Shopper" trade mark. The website asserts that "Happy Shopper is one of the most recognised "own label" brand sold in independent convenience stores in the UK" and "There are over 500 Happy Shopper products in the range...". This text is accompanied by pictures of a number of products which are within the range including coffee, cheese, prepared meals and milkshakes, which are all sold in packaging which includes the Happy Shopper mark.

The Complainant asserts that its use of the Happy Shopper mark commenced in 1985. In the same year the Complainant obtained a number of registrations in various classes of goods for the mark in the United Kingdom, and has subsequently obtained registrations for the words in conjunction with a logo.

The Complainant is also the proprietor of three companies Happy Shopper Limited, Happy Shopper Markest Limited and Happy Shopper (Europe) Limited, although all of these companies appear to be dormant and of no significance to the Complaint.

The Disputed Domain Name was registered by the Respondent on 2nd June 2004, and it appears to be directed to a website operated by UKREG, an organisation that sells and manages domain names. The page that appears when using the Disputed Domain Name is set out below -

The Complainant asserts that it became aware of the registration of the Disputed Domain Name on the same day as the registration, and that letters before action were sent electronically to the Respondent and the agent through whom the registration was carried out, although no response was received. I have not been provided with copies of those letters.

The Complainant submits that it has rights in the mark "Happy Shopper" and that the Disputed Domain Name is in all material respects identical thereto.

The Complainant asserts that registration of the Disputed Domain Name was Abusive because (1) the registration blocks the Complainant from registering its mark as a domain name in its most obvious form; (2) the Respondent's use will cause her use to be associated by the public with the Complainant, thereby causing the Complainant loss and damage to the Complainant's reputation, including the value of its right to the exclusive use of the mark; and (3) that such use will be detrimental to the distinctive character and repute of the mark.

The Claimant's requested remedy is that the Disputed Domain Name be transferred.

To succeed in this Complaint the Complainant must, in accordance with Paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that (1) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name, and (2) the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

The absence of a response from the Respondent does not mean that the Respondent is deemed to have no answer to the Complaint, but rather the Complainant must still make out its case to the Expert on the balance of probabilities. Where a Respondent does not avail himself/herself of the opportunity to respond to the Complaint it might be said that the Complainant's task is all the easier, but as I have previously indicated, notwithstanding the absence of a Response, it is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

As indicated above, the Complainant has asserted that it has Rights in the mark "Happy Shopper". It is necessary that the Rights subsist in a name or mark that is identical or similar to the Disputed Domain Name, which is happyshopper.co.uk.

The Respondent has asserted that it has used the mark Happy Shopper since 1985 and has since then obtained a number of UK registered trade marks for that mark in various classes of goods and services.

The definition of "Rights" within the Policy excludes the protection of names or terms which are wholly descriptive of the Complainant's business. In my view this exception does not apply in the present case. The restriction is very narrow in its application because of the inclusion of the word "wholly". Whilst in my view the Disputed Domain Name could in certain usages be descriptive, and may be considered descriptive of the intended outcome of a sale by one of the Complainant's customers, it does not of itself wholly describe the business of the Complainant, which is the selling of goods to high-street retail stores and catering outlets.

The first (.uk) and second (.co) levels of the Disputed Domain Name should be discounted for the purposes of comparison as being of a generic nature. For the reasons set out above, I find that the Complainant has established that it has Rights in respect of a name or mark which is identical to the Disputed Domain Name.

An Abusive Registration is defined in Paragraph 1 of the Policy as a Domain Name which either:-

A non-exhaustive list of factors which may be evidence of an Abusive Registration are set out in Paragraph 3. They are:-

In addition to the above, the Policy provides at paragraph 4 a non-exhaustive list of factors which may demonstrate that the Domain Name is not an Abusive Registration, including the following ground at Paragraph 4 a (ii) -

Before turning to the Complainant's specific grounds, I propose to address the issue of whether use of the Disputed Domain Name, which could in ceratin uses be considered descriptive, falls under the above "exclusion". Whilst to this particular expert the combination of the words "Happy" and "Shopper" is something of an oxymoron, it could certainly be argued that the combination of these two words in the context of the retail sector is a description of the intended outcome that a retailer would like the consumer to feel. In the event that credible evidence were adduced that the Disputed Domain Name was registered with the clear intention that it should be used for such a descriptive purpose, then it would perhaps be difficult to view the registration as falling outside of the exclusion. Although there may be an argument that a domain name is not inherently a true descriptor, or that such use might nonetheless be an infringement of a respondent's rights in their registered trade mark, the determination of whether a registration is abusive, is to be determined in accordance with the provisions of the policy alone.

In the present case no evidence of intention or "fair use" has been adduced by the Respondent, and in those circumstances I can only guess at the intention of the Respondent. Insofar as the Disputed Domain Name is directed at a website, the primary purpose for which appears to be the sale of domain names, whilst it is possible that the message conveyed by the Disputed Domain Name is that the experience of buying domain names will make the user a contented consumer, I think it unlikley that it was so. For the reasons expressed below and in the absence of any evidence from the Respondent, I do not find that the exclusion set out in Paragraph 4 a (ii) applies.

The Complaint asserts that registration of the Disputed Domain Name was Abusive because (1) the registration blocks the Complainant from registering its mark as a domain name in its most obvious form; (2) the Respondent's use will cause her use to be associated by the public with the Complainant, thereby causing the Respondent loss and damage to the Complainant's reputation, including the value of its right to the exclusive use of the mark; and (3) that such use will be detrimental to the distinctive character and repute of the mark.

The first ground, "blocking", is put forward by the Complainant on the basis that the "most obvious" usage of its mark has been prevented by the Respondent's conduct. Although the Complaint does not say so, presumably it believes the .co.uk registration to be the most obvious usage because it is a commercial entity which predominanlty (and possible only) trades in the UK. The Policy does not give any guidance on what a blocking registration is, although for a registration to truely block the Complainant's usage, there must in my opinion be a restriction on other domain names available to the Complainant otherwise it can be argued that other, albeit less obvious alternatives are available. I am not therefore persuaded that the blocking of only the "most obvious" domain name is abusive. In addition, it is necessary to show that there was an intention to block on the part of the Respondent, and given that the domain name was only registered in June this year, and presumably therefore available to the Complainant until then, I am not persuaded without further evidence that this was the intention of the Respondent.

The evidence in support of the second ground does not go as far as the Policy proposes (Paragraph 3 a (ii)), insofar as the Policy suggests that the use should cause actual confusion. In the present case whilst it is asserted that association will arise, no evidence is put forward to that effect. Of course the factors are non-exhaustive, and the threshold is whether or not there has been an Abusive Registration as defined in the Policy (see above). In that respect it seems to me that if there is a likelihood that association will arise, then the registration would be Abusive. It is highly probable that customers of the Complainant when searching for details of the Complainant's product line would come across the website to which the Disputed Domain Name is directed. In such circumstances there is a real possibility that they may belive that the services offered by that website are associated with the Complainant. Even if they were not so confused, the traffic that was directed to the website would only be directed because the user was seeking to locate information concerning the Complainant or its products, which seem to me to be inherently taking unfair advantage of the rights and goodwill of the Complainant. In those circumstances, I believe that the Complainant has succeeded in showing that on the balance of probabilities the registration was Abusive. In reaching this conclusion, I have again considered that in certain usage the Disputed Domain Name could be considered descriptive. However as a stand alone domain name, it seems to me that it would be unlikley that the public would inherently use such a term to locate goods or services without any particular promotion of that term. In the absence of a credible explanation as to the reason for selecting that domain name, and in the context of the Complainant's extensive use and the Respondent's use , I see no reason to change my view that the registration was Abusive.

As to the Complainant's last ground of complaint, this seems to me to be part of the ground dealt with immediately above rather than a seperate ground.

In addition to the grounds referred to above, I believe that there may have been additional grounds for complaint on the basis that the manor of use by the Respondent is indicative of an intention to sell the Disputed Domain Name, but as I have already found the registration to be Abusive I need not deal with this ground further.

For the reasons set out above, in my opinion the Complainant has proven on the balance of probabilities that (i) it has Rights in respect of a name or mark which is identical to the Domain Name; and (ii) the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds and I direct that the Domain Name be transferred to the Complainant forthwith.

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