Woodway Engineering Ltd v Abacus Self Drive & Anor [2004] DRS 631 (26 February 2004 )

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Address         55 Lower Road
                    Barnacle
                    Coventry

3. PROCEDURAL BACKGROUND
The complaint was entered on to the Nominet system on 15 December 2003. Nominet validated the complaint on 19 December 2003 and on the same day despatched a copy of the complaint to the Respondent. On 12 January 2004 a response was received from the Respondent and a copy sent to the Complainant. On 21 January 2004, a reply was received from the Complainant. On 26 February 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.

4. OUTSTANDING FORMAL/PROCEDURAL ISSUES
The Complainant has lodged a separate complaint against the same Respondent in relation to the domain name woodway-engineering.co.uk. That complaint is being handled by another Expert. However, some of the correspondence and contentions made by the parties in that dispute have been included in the complaint, response and reply documents in this dispute. Some of the points raised in the woodway-engineering.co.uk dispute have relevance to the issues in this complaint and I will make reference to them where appropriate.

5. THE FACTS
The Domain Name, whelen.co.uk, is registered to "Abacus Self Drive". The contact details held by Nominet show Mr David Bettelley as the individual contact. It seems the same the same ownership and contact details were held by Nominet for the domain name woodway-engineering.co.uk.
The website to which the Domain Name resolves is www.emergencyequipment.co.uk. This website offers for sale emergency vehicle warning products: flashing blue lights etc as used on police, ambulance and fire engines. The screen print provided by Nominet shows the goods of a number of manufacturers being offered for sale including, amongst others, "Whelen" products.
Whelen Engineering Company, Inc. ("WEC") is incorporated in the United States and is a supplier of emergency vehicle warning products. The parties agree that the Complainant is the "sole" distributor of WEC products in the UK. In fact, a letter from WEC produced for the purposes of this complaint shows that the Complainant has been the "…exclusive licensed manufacturer of [WEC] designed equipment for Europe…" since 1982. The Respondent does not challenge this claim.
Both parties agree that emergency vehicle warning products of the type dealt in by both parties must comply with certain European Union legislation (referred to by the parties as the "Automotive EMC Directive"). The Respondent sells what it calls "grey import" WEC goods - WEC goods imported from the USA. The Respondent concedes that "a small percentage" of the products it sells does not comply with the Automotive EMC Directive.

The Complainant contends that it has rights in the WHELEN name. The Complainant relies upon its appointment as WEC's "sole licensee" to derive its Rights in the name WHELEN. WEC has confirmed the Complainant's position as its "exclusive licensed manufacturer of Whelen-designed equipment for Europe", a position held since 1982. The Complainant asserts no registered trade mark rights.

The Complainant states that the Respondent is a direct competitor. The Complainant asserts that the Respondent, by using the Domain Name to link to the Respondent's site, is misrepresenting the Respondent's goods as being endorsed by WEC and are selling WEC product that is not approved for use in the UK. The Respondent is, claims the Complainant, mounting a concerted effort to make use of the Complainant's reputation in the name WHELEN and to direct any searches to the Respondent's site. The Complainant asserts that this is likely to cause confusion to the Complainant's customers and potential customers.

The Complainant relies upon a letter from the Police Information Technology Organisation (PITO), seemingly produced for the purposes of the complaint about the domain name woodway-engineering.co.uk. The letter from PITO states that the site at www.woodway-engineering.co.uk resolves to a site www.emergencyequipment.co.uk operated by a company with an address at Unit 2, 15 Southcourt Road, Worthing, West Sussex, BN14 7DF (the Respondent's address). The letter states that the site at www.woodwayengineering.co.uk (no hyphen) accesses the Complainant's site. The letter states "Our concern is that police and Fire users may not understand that the company in Coventry [the Complainant] and the company in Worthing [the Respondent] are not associated and there is clearly a need to resolve the possible confusion". The domain name woodway-engineering.co.uk is registered to the Respondent and is the subject of a separate complaint.

Following the Respondent's response (below), the Complainant submitted a reply. In this reply, the Complainant stated that its concern was that the Respondent was, through its websites at www.whelen.co.uk and woodway-engineering.co.uk making misrepresentations as to the quality and source of its goods. The Complainant asserts that as at the date of the complaint, the Respondent's website did not, contrary to the Respondent's assertions, point out that some of its goods did not comply with the Automotive EMC Directive. The Complainant also challenges the Respondent's assertion made in its response that it does not supply products to any UK based local authority emergency services agency. In this respect, the Complainant refers to a statement on the Respondent's website stating, in relation to a particular Whelen product, "…we supply these units to a number of covert UK police units…" and the statement also on the Respondent's website, "we supply our product range to Police, Fire, Ambulance and lifeboat crew etc…".

Respondent:
The Respondent's position is that it is simply reselling genuine WEC goods that it has imported from the USA. As such, the Respondent states that it is not, as the Complainant asserts, making use of the Complainant's reputation in the WHELEN name. The Complainant's real concern, according to the Respondent, is the loss of sales due to grey imports of the type made by the Respondent.
The Respondent points out that the PITO letter does not relate to the whelen.co.uk domain name but rather the woodway-engineering.co.uk domain name which the Respondent also uses.
The Respondent notes that the Complainant has had a web presence for around 5 years and claims that had the Complainant relied solely upon the WHELEN brand name and reputation then it would have surely registered domain names incorporating the WHELEN name prior to this time.
The Respondent states that it does not supply products to any UK based local authority emergency services agency. The Respondent also accepts that some of the goods it sells do not conform to the Automotive EMC Directive but that this fact is stated on its website

6. DISCUSSION AND FINDINGS
General
The Complainant has made two separate complaints against the Respondent: one in relation to Whelen.co.uk; the other in relation to woodway-engineering.co.uk. Both parties have referred to the woodway-engineering.co.uk domain in their submissions and have had the opportunity to make their arguments on the point. Accordingly, although another Expert is considering the complaint in relation to woodway-engineering.co.uk, I see no reason why I should not take into account in deciding this complaint the fact of the Respondent's registration and use of woodway-engineering.co.uk.
Complainant's Rights

The complaint annexes documentary evidence to support the claim to rights in the WHELEN name. Specifically, a letter from WEC is annexed to the complaint stating the Complainant's position as exclusive licensed manufacturer. In its signed complaint, the Complainant states that it has been WEC's sole licensee since 1982. The Respondent accepts the Complainant's position as sole European licensee since 1982.

As the Complainant has asserted no registered trade mark rights, it must rely on some other ground to establish its Rights. To do this, the Complainant relies on its "sole" licensee relationship with WEC. In fact, the letter from WEC puts the Complainant's position more strongly, describing the Complainant as the exclusive licensee. The extended period of use and sole or exclusive nature of the licence granted to the Complainant is the type of use of a name sufficient to build up goodwill and reputation in the Whelen name and for that goodwill and reputation to be associated exclusively with the Complainant in the UK. I believe the Complainant has established a sufficient exclusive connection with the WHELEN name to demonstrate it has Rights in that name.

The Domain Name is identical to the name in which the Complainant has Rights - the ".co.uk" suffix being ignored for this purpose.

To be an Abusive Registration the Domain Name must be one which "…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…".

Section 3 of the Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These are as follows:

(a) A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is 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 to us.
(b) Failure on the Respondent's part to use the Domain Name for the purposes of email or a web-site is not in itself evidence that the Domain Name is an Abusive Registration."

Although the Complainant does not specifically identify the provisions upon which it relies to establish Abusive Registration, the thrust of the Complainant's allegations are that the Respondent has sought to cause confusion in the market place by misleading customers as to the quality and source of the goods being offered by the Respondent. The specific objection raised is that the Respondent is selling goods which do not conform to the requirement of the Automotive EMC Directive and is not telling customers about this non-compliance. The Respondent admits that some of its goods do not comply with the Automotive EMC Directive but claims this is spelt out on its website. I have looked at the Respondent's website but have not found any mention that any of its products may be non-compliant.
The issue of warnings as to non-compliance with the Automotive EMC Directive is perhaps an indicator of the real issue in this dispute. The Complainant is the official, sole or exclusive reseller of WEC goods in Europe. As such it sells WEC goods which comply with the local EU legislation. The Respondent is also a reseller of genuine WEC goods but is not the officially-appointed agent and a proportion of the goods it sells are non-compliant. It is well established under English law that a reseller of goods is entitled to use the trade mark applied to those goods by the trade mark owner to describe the goods. A newsagent selling cans of genuine Coca Cola is entitled to put a sign in his window stating the price of a can of product and referring to it by its trade mark name; "Coca Cola". I do not believe the Complainant could have any legitimate objection to the Respondent using the word "Whelen" to describe genuine WEC products in the text of its website.

When it comes to the use of the Whelen name in the Domain Name, I believe further considerations apply. Specifically, use of the Domain Name incorporating the Whelen name carries with it the suggestion that the Respondent is in fact an authorised reseller of WEC goods. The Respondent is, however, not in that position, he is simply a reseller of "grey imports" - product intended for another market not all of which complies with local EU requirements. I believe a customer who thinks he is buying from the authorised reseller will expect his goods to comply with the local regulatory requirements. A customer attracted to the Respondent's website by the domain name incorporating the Whelen name expecting the authorised reseller may well be disappointed to find he is being offered or has purchased non-compliant goods. In my opinion there is a likelihood of the Respondent's use of the Domain Name causing the relevant public to be confused into believing the Respondent's site is that of the authorised reseller when there is in fact only one such person authorised - the Complainant.
The Respondent's behaviour in relation to the woodway-engineering.co.uk domain name indicates an intention to cause such confusion and divert customers to the Respondent's website. The Respondent does not challenge the letter from PITO which states that there is a concern that the site operated by the Respondent at www.woodway-engineering.co.uk is likely to cause confusion with the Respondent's site operated at www.woodwayengineering.co.uk. "Woodway Engineering" forms no part of the Respondent's business name and no attempt has been made by the Respondent to explain its use of this domain name which differs from that of the Complainant's company name and website address only by the addition of a hyphen. In the circumstances, I find this behaviour supportive of the Complainant's allegations of Abusive Registration.

The Respondent has made use of the Domain Name in connection with a genuine offering of goods or services (paragraph 4(a) i A of the Policy). Such use may constitute evidence that a Domain Name is not an Abusive Registration. In the present case, however, I do not believe the Respondent's use assists its case. It is offering genuine goods but is doing so through a website address which implies it is an authorised reseller, which it is not. If anything, the Respondent's use of the Domain Name helps the Complainant's case.

Overall, I believe the Respondent's registration and use of the Domain Name takes unfair advantage of and may be unfairly detrimental to the Complainant's Rights. As such the domain Name is an Abusive Registration in the hands of the Respondent.

DECISION

The Complainant has Rights in the name WHELEN. The Domain Name is identical. The Domain Name in the hands of the Respondent is an Abusive Registration.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Woodway Engineering Ltd v Abacus Self Drive & Anor [2004] DRS 631 (26 February 2004 ) URL: http://www.bailii.org/uk/cases/DRS/2004/631.html Cite as: [2004] DRS 631