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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Viking Office Products Inc v Sparey [2005] DRS 02201 (15 February 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02201.html Cite as: [2005] DRS 02201, [2005] DRS 2201

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NOMINET DISPUTE RESOLUTION SERVICE
DRS 02201 VIKING OFFICE PRODUCTS, INC –V- WENDA SPAREY
DECISION OF INDEPENDENT EXPERT

1. The Parties

The Complainant

1.1 The Complainant is Viking Office Products, Inc of 950 West 190th Street, Torrance, California, 90502, United States of America, represented by Messrs Latham & Watkins.

The Respondent

1.2 The Respondent is Wenda Sparey of Hugletts Wood Farm, Grovelye Lane, Churches Green, Dallington, TN21 9PA, United Kingdom. The Respondent is not represented.

2. The Domain Name

2.1 The domain name in dispute is ("the Domain Name").

3. Procedural Background

3.1 This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure ('the Procedure') and the Nominet UK Dispute Resolution Service Policy ('the Policy').

3.2 The Complaint entered Nominet's system on 24 November 2004. It was validated and sent to the Respondent on 26 November 2004. A Response was received on 21 December 2004 and a Reply was served by the Complainant on 4 January 2005. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me on 1 February 2005 for a Decision. On that date, I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.

4. Outstanding Formal/Procedural Issues

4.1 There are no such issues in this case.

5. The Facts

5.1 The Domain Name was registered in the name of the Respondent on 18 August 1994.

6. The Parties' Contentions

The Complaint

6.1 The principal submissions made by the Complainant may be summarised as follows.

6.1.1 The Complainant has sold office supplies in the UK under the name 'Viking Direct' since 1990. (It exhibits copies of covers of its brochures from that date.)

6.1.2 It is the proprietor of five UK trade mark registrations for the mark VIKING DIRECT, in various classes, which were registered with effective dates between April 1992 and April 1999. Three of the trade marks were registered prior to the date of registration of the Domain Name. No other party holds UK trade marks for VIKING DIRECT. While other parties hold trade marks including the term VIKING, these are outside the field of office supplies.

6.1.3 By 1994 the Complainant's UK subsidiary, Viking Direct Limited, had over 400,000 customers and turnover in excess of £118 million.

6.1.4 So far as the Complainant is aware, it is the only entity trading as 'Viking Direct' in the UK. This is based on a review of the www.yell.com website and the top 10 results of a Google UK search.

6.1.5 The Complainant's parent company, Office Depot, Inc owns the domain name . The Complainant trades in 13 countries via a website linked to this domain name. In each of those countries except the UK, it owns the country code top level domain name for 'vikingdirect'.

6.1.6 Although the Respondent claims to be trading as 'Viking Direct', she has conducted no genuine business under that name and has no legitimate reason for holding the Domain Name.

6.1.7 In particular, while the Respondent's website purports to offer Viking costumes and swords, there are no listings or prices for these products. The only method of contacting the business is to email [email protected], but emails to this address are rejected as undeliverable because the user is unknown.

6.1.8 A directorship search on one Wenda Coltrane shows that this individual has changed her name on at least three occasions. The current address for Wenda Coltrane is the same as that for the Respondent, suggesting that they are one and the same person.

6.1.9 Wenda Coltrane is a director of a large number of companies, none of which uses 'Viking' or 'Viking Direct' as any part of their registered name.

6.1.10 The Respondent has at all material times been aware that the Complainant trades as 'Viking Direct'. The Complainant's records show that in 1991 it dealt with a business called EGA Designs which was represented by Wenda Coltrane. In 1993/93 it dealt with a company called Expotech Corporation Limited, of which Wenda Coltrane was a director. That company defaulted on its debts in 1994 and the matter was passed to a debt collection firm.

6.1.11 "As a consequence of her prior dealings with the Complainant, the Respondent would have been aware that the Domain Name was the most appropriate country code top level domain name for the Complainant in the UK. The principal reason for the Respondent obtaining the Domain Name would have been to prevent the Complainant from doing so and to disrupt the business activities of the Complainant". (This submission is taken verbatim from the Complaint.)

6.1.12 Even if the Respondent's business were genuine, there was no reason for her to choose the Domain Name, which was associated only with the Complainant's business. She could have chosen other more appropriate names including the term 'Viking', such as .

6.1.13 The Complainant has delayed in bringing this Complaint only because the Domain Name was a pre-Nominet registration and the Complainant has only recently been able to ascertain the Respondent's identity.

The Response

6.2 The Respondent's principal submissions contained in the Response may be summarised as follows:

6.2.1 In October 2004 the Complainant offered to buy the Domain Name for £750 and issued the threat of these proceedings if the Respondent declined. She did decline, stating that she was making bona fide use of the name and did not wish to dispose of it.

6.2.2 She is dependent upon the Domain Name to run her small business and has declined a series of previous offers for it, including at least one from the Complainant made via her ISP in 2002. Around the same time she was visited at her home by a man who advised that "it would be best for all involved if I simply handed over the domain". This was not explained, but the only domain names she owned were the Domain Name and another for her farm.

6.2.3 She has made Viking clothing since 1986 when her son became interested in role playing games. By 1988 she had developed a small business making clothes for many of his friends, and by 1989 was making rubber masks, foam swords, daggers and cloaks. The business became known as 'Viking Direct' by the individuals whom she supplied, because she supplied Viking-related products direct and without going through retail outlets. The business involved three or four made-to-measure costumes and a handful of unique masks each year, which would not justify trading through retailers. (The Respondent refers to an Exhibit said to show models and casts used at that time, but the Exhibit is omitted from the papers filed by her.)

6.2.4 The Domain Name was registered in her name as a birthday present by some of the people for whom she had made clothes. The intention was to enable her to expand her operation worldwide. Her first website was operational on 28 April 1996 and has been used ever since. A search on www.archive.org traces it back to at least March 2001. Most recently, it has been used as a vehicle for arranging gatherings of Viking role-players in Sweden.

6.2.5 There is no significance in the Respondent having been on the board of a company that used the Complainant as a stationery supplier. In any event, she was not a purchasing clerk. She had been running her own business for five years before she became aware of the Complainant.

6.2.6 The rights claimed by the Complainant are "not valid". The trade marks were not registered on the dates alleged as these were application dates, not registration dates. The registration date of the Domain Name predates all the trade marks by five years. Furthermore, none of the Respondent's activities conflicts with the classes (09, 16, 17, 20, 21, 35, 39 and 42) in which the Complainant's marks are registered. In addition, the Complainant's registrations make it clear that no right is given to the exclusive use of the word 'Direct'.

6.2.7 The Respondent has been married on numerous occasions and has changed her name at those times. It is misleading for the Complainant to suggest that there is anything untoward about these changes of name, or about the fact that she has set on the board of companies that have been a customer of, or indebted to, the Complainant. These matters are of no relevance and are mentioned by the Complainant only in an attempt to portray her as an unsavoury character.

6.2.8 It is also incorrect to state that the Respondent's business has no presence on search engines. A search on Altavista against "viking + role playing" (exhibited) contains results for her website.

6.2.9 Access to the Respondent's website is provided through a login name and password for users. The public may apply for information on how to use the website by emailing the address referred to by the Complainant. The services offered by the Respondent are offered to a niche market and she is unable to accommodate a mass audience.

6.2.10 The stated email address was unavailable between September and November 2004 because it was subjected on a daily basis to an influx of mail addressed to [email protected]. The Respondent does not know whether this campaign was run by the Complainant

6.2.11. No other domain name would be suitable for the Respondent's business. The Domain Name was obtained on a first-come, first-served basis and the Complainant could have registered it before the Respondent. The Complainant does operate a UK website at www.viking-direct.co.uk and also appears to have a commission arrangement with the owner of www.vikingsdirect.co.uk, which suggests that it supports the use of abusive registrations.

6.2.12 The accounts exhibited by the Complainant and the evidence of its growth in the UK do not support the allegation that its business has been disrupted or otherwise affected by the registration of the Domain Name.

6.2.13 The traffic profile of the Respondent's website (a document is exhibited) shows that nearly 50% of her traffic originated in the US. These users are unlikely to be visiting a UK site to buy stationery.

6.2.14 The Complainant is using the DRS in bad faith, having had its offers to purchase the Domain Name repeatedly declined. The Complainant has harassed the Respondent and has presented evidence that is misleading and defamatory in an attempt to substantiate its claim.

The Reply

6.3 The Complainant's significant submissions contained in its Reply may be summarised as follows:

6.3.1 The Complainant admits having made previous offers to purchase the Domain Name. These are irrelevant to the present proceedings. It denies having threatened the Respondent or having been behind the visit to her home.

6.3.2 The Respondent has failed to provide evidence or otherwise establish that she is operating a genuine business under the name 'Viking Direct'. The earliest date on which she can demonstrate any activity under the Domain Name is March 2001, some ten years after the Complainant commenced trading in the UK.

6.3.3 The Respondent has not demonstrated that the companies of which she was a director operated autonomous purchasing departments. Moreover, the Complainant's records (exhibited) show that Wenda Coltrane was the contact for EGA Designs their staff dealt with 'Wenda' in respect of the monies owed by Expotech Corporation. These dealings were prior to the registration of the Domain Name.

6.3.4 While registration of the relevant trade marks may have been completed after that of the Domain Name, their effective date is from the date the relevant application was filed. For that reason three of them pre-date the registration of the Domain Name. In any event, the Respondent does not dispute that the Complainant used the mark VIKING DIRECT from 1990.

6.3.5 The Complainant does not assert that the Respondent has attempted to create a connection between her business and that of the Complainant. It is the Complainant's case that she has never operated a genuine business under the name 'Viking Direct'. She has produced no proper evidence of any such business, such as orders invoices, accounts, brochures or customer testimonials.

6.3.6 The fact that the Respondent's internet search on "viking direct" needed to include qualifiers such as "role playing" or "swords" demonstrates that a domain name including these qualifiers would have been more appropriate for the Respondent.

Remedy

6.4 The Complainant seeks a transfer of the Domain Name.

7. Discussion and Findings

7.1 Under paragraph 2 of the Policy:

"(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, that:

 

(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities."

7.2 Under paragraph 1 of the Policy:

"'Rights' includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".

7.3 The term "Abusive Registration" is defined in paragraph 1 of the Policy as referring to 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."

Rights

7.4 The Complainant is the owner of five UK trade mark registrations for the mark VIKING DIRECT in various classes. As such, it clearly has Rights in a name or mark that is identical (save in immaterial respects) to the Domain Name. Accordingly, the first limb of the test under paragraph 2 of the Policy is satisfied.

Abusive Registration

7.5 While the Complainant has Rights in a trade mark that is identical to the Domain Name, the fact that it has such Rights does not of itself give rise to a presumption of an abusive registration.

7.6 The Complainant submits that it is the only party that trades as 'Viking Direct' and that the Respondent has no reason to use that name. In the case of some particularly distinctive names or marks, the registration of an identical domain name, particularly if unadorned, may raise a presumption that the registration is abusive, because it is impossible to infer that it was chosen for any reason other than to impersonate the Complainant (see eg British Telecommunications plc and Others –v- One in a Million Limited and Others [1998] FSR 265). However, I do not consider that the Complainant's mark falls within this category. The Complainant's registrations for the trade mark VIKING DIRECT afford it the exclusive rights to use that sign to sell goods in certain classes in a certain territory, but they do not mean that it has exclusivity in the sign for all purposes, or that it is, or was, the only party entitled to register the Domain Name. As the Respondent contends, the starting position is that the name was available to all on a first-come, first-served basis. Accordingly, it remains for the Complainant to prove, not for the Respondent to disprove, that the registration is abusive within the meaning of the Policy.

7.7 The main thrust of the Complainant's case is that the Respondent has never operated any genuine business under the name 'Viking Direct' and therefore has no legitimate interest in the Domain Name. While lack of legitimate interest is one of the elements of a complaint under the Uniform Dispute Resolution Policy (UDRP), the UDRP does not apply to .uk domain names and the tests under the Policy are somewhat differently framed. Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration and paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not.

7.8 Although it does not specifically cite the provisions of the Policy on which it relies, the Complainant appears to argue that the registration is abusive for the following reasons:

7.8.1 The Respondent registered the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has rights (paragraph 3(a)(i)B of the Policy); and/or

7.8.2 The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 3(a)(i)(C)).

7.9 The Complainant does not rely on any other grounds under paragraph 3 of the Policy. There is no allegation, for example, that the Respondent registered the Domain Name for the purposes of selling it to the Complainant or a competitor for a sum in excess of its documented expenses, or that the Respondent has used the Domain Name in a manner that has caused confusion: indeed, the Complainant specifically makes clear in its Reply that no allegation of confusion is made. Similarly, there is no allegation that the Respondent is using the Domain Name in a manner that infringes the Complainant's trade marks.

7.10 The first specific ground upon which the Complainant relies is that the Domain Name was registered as a 'blocking registration', in other words, to prevent the Complainant from registering the name. Clearly, the registration of any domain name blocks any other party from registering that name and therefore, in order to succeed on this ground, a Complainant will need to show an element of intention on the part of the Respondent.

7.11 In this case, there is a dispute about whether, or when, the Respondent was aware that the Complainant traded under the name 'Viking Direct'. The Complainant says that the Respondent knew this well before 1994, when the Domain name was registered, because she was the relevant contact at two companies that the Complainant supplied. The Respondent says that she only became aware of the Complainant five years after she registered the Domain Name. In the light of the evidence, including the Complainant's documentary records, I prefer the Complainant's evidence on this point. However, I do not believe this greatly assists the Complainant. As it has pointed out, it had 400,000 customers in the UK by 1994, all of whom knew that it traded as 'Viking Direct'. Many of these customers might also have thought, as the Complainant puts it, that the Domain Name "was the most appropriate country code top level domain name for the Complainant in the UK". Accordingly, I do not accept that the Respondent's dealings with the Complainant put her in any different position from anyone else who had dealt with, or knew of, the Complainant.

7.12 In the case of the second company, Expotech Corporation, the Complainant submits that the company failed to pay its debts to the Complainant and that a debt collection agency was instructed. It is not clear whether the Complainant means to contend that the Respondent therefore registered the Domain Name as some sort of revenge, but if that is the Complainant's case it does not say so, nor does it provide any evidence in support of any such contention. Accordingly, the motivation of revenge is not an inference that I am either asked, or prepared, to draw from the facts as stated.

7.13 In the circumstances, I am unable to conclude that the Respondent registered the Domain Name primarily as a blocking registration.

7.14 The Complainant's second contention is that the Respondent registered the Domain Name primarily for the purpose of disrupting the Complainant's business. However, there is no explanation of why this is so, other than by depriving the Complainant of the opportunity to register the Domain Name. Therefore this is, in reality, the same contention as that of a 'blocking registration'. In the circumstances, I am unable to conclude that the Respondent registered the Domain Name primarily for the purpose of disrupting the Complainant's business.

7.15 I therefore turn to the Complainant's submission that the Respondent is not operating any genuine business from the website linked to the Domain Name. With respect to this argument, one of the factors which may be evidence that a registration is not abusive is that (paragraph 4(a)(i)(A) of the Policy):

"Before being aware of the Complainant's cause for complaint… the Respondent has used or made demonstrable preparations to use the Domain Name… in connection with a genuine offering of goods or services."

7.16 However, under the Policy, the onus is upon the Complainant to prove that a registration is abusive, not upon the Respondent to prove it is not. Failure to use the domain name for the purposes of a genuine business is not, of itself, a ground for a finding of an abusive registration, and the factors under paragraph 4 come into play only once the Complainant has made out a prima facie case, on other grounds, that the registration is abusive. Were this not the case, the Respondent would be in a more precarious position than a registrant who was not using the disputed name at all (see paragraph 3(b) of the Policy). This cannot be correct in a case such as this where, on the Complainant's case, any unfair advantage or detriment arises from the fact of the Respondent's ownership of the Domain Name, as opposed to any actual use that she has made of it.

7.17 In the circumstances, I do not consider it necessary to embark upon an enquiry as to whether or not the Respondent is operating a bona fide business under the Domain Name. While that issue is by no means clear cut, any finding that the Respondent's business was not genuine would not be determinative that the registration is abusive in the particular circumstances of this case. The Complainant has not made out a prima facie case under the Policy and the Respondent is not, therefore, required to justify the use she is making of the Domain Name. In this case, the Respondent was the first to register the Domain Name and the Complainant has failed to make out sufficient grounds for depriving her of it.

8. Decision

8.1 The Complainant has demonstrated on the balance of probabilities that it has Rights in respect of a name or mark which is identical or similar to the Domain Name. However, it has failed to demonstrate that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Complaint be dismissed and that no action be taken in respect of the Domain Name.

9. Bad Faith

9.1 Paragraph 16(d) of the Procedure states:

"If the Expert concludes that the dispute is not within the scope of paragraph 2 of the Policy, he or she shall state that this is the case. If, after considering the submissions, the Expert finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, the Expert shall state this finding in the Decision."

9.2 While the Respondent contends that the Complainant brought these proceedings in bad faith, I do not consider this to be established. The Complainant relied on its rights in a mark that is identical to the Domain Name and its submission, among others, that the Respondent is not operating a genuine business under that name. While these grounds are insufficient for the Complainant to succeed, I do not find that the Complaint was dishonestly brought.

Steven A. Maier

15 February 2005