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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Long John Silver’s Inc v Top Class PR [2005] DRS 02546 (02 June 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02546.html Cite as: [2005] DRS 2546, [2005] DRS 02546

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Long John Silver's Inc v Top Class PR [2005] DRS 02546 (02 June 2005)

LONG JOHN SILVER'S, INC. = v = TOP CLASS PR Nominet UK Dispute Resolution Service DRS 2546

Decision of Independent Expert

Dated this 6th day of June 2005

Complainant's Details

Complainant: Long John Silver's, Inc.

Country: US

Contact Details

Contact: Miss Jill Delaney

Country: GB

Respondent's Details

Respondent: Top Class PR

Country: GB

Disputed Domain Name

longjohnsilvers.co.uk

This domain name is referred to below as the "Domain Name".

Procedural Background

The Complaint was lodged with Nominet on 13 April 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on 19 April 2005. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 17 May 2005 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").

Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.

Formal/procedural issues

Under Paragraph 5a of the Dispute Resolution Service Procedure ("the Procedure") the Respondent was required to submit a Response to the Complaint to Nominet by 12 May 2005. The Respondent has failed to do so.

Paragraph 15b of the Procedure provides as follows:

If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.

It is the view of the Expert that there are no exceptional circumstances relevant to this matter.

The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties' submissions (which consist of the Complaint and supporting documents) and the Policy and Procedure.

The facts

The Complainant

The Complainant is a large international quick-service seafood restaurant chain with over 1,450 franchise and company-owned restaurants in the USA, Canada, Singapore and Saudi Arabia. All of these restaurants trade under the name LONG JOHN SILVER'S. The Complainant asserts that the LONG JOHN SILVER'S name has become very well known to the general public in the countries in which the Complainant trades (although it produces no information in support of this assertion).

The Complainant is the proprietor of a number of trade marks registered throughout the world which are, or include, the words LONG JOHN SILVER'S and are registered in a number of classes. In particular the Complainant is the registered proprietor of:

(a) the word mark LONG JOHN SILVER'S: in the United Kingdom, through United Kingdom trade mark registration number 2318728 registered on 6 June 2003, for a range of food-related goods and services in classes 29, 30 and 43., Details of the registration are attached at Exhibit A to the Complaint;

(b) The word mark LONG JOHN SILVER'S is also registered in all countries of the European Union, including the United Kingdom, through Community trade mark (CTM) registration number 2964963 registered on 18 March 2004 for a range of food-related goods and services in classes 29, 30 and 43, details of which are attached at Exhibit B to the Complaint;

The Complainant also provides details of UK and CTM registrations for the stylised word mark LONG JOHN SILVER'S for food-related products and services.

The Complainant has established a website at domain names registered by the Complainant, or a member of the Complainant's corporate group, which incorporate the words LONG JOHN SILVER'S. These domain names include the following, (a) longjohnsilvers.com; (b) longjohnsilver.com; (c) longjohnsilvers.net; (d) longjohnsilver.net; and (e) longjohnsilvers.com.au. (details are set out in Exhibit F to the Complaint).

The Website allows computer users throughout the world to access information relating to the Complainant and the Complainant's products and services. Printouts of the home page of longjohnsilvers.com, dated 8 April 2005, are attached at Exhibit G to the Complaint.

The Complaint does not state that the Complainant trades in the UK or that it has any immediate plans to begin to trade in the UK.

The Respondent

A Nominet "WHOIS" search shows that the Respondent registered the Domain Name on 19 January 2005.

The Complainant asserts that from at least 4 February 2005, the Domain Name has been linked to the website of McDonald's Corporation, so that a user who types in the Domain Name is taken to the McDonald's website. The Domain Name remains displayed on the toolbar.

Printouts of the web page that appears when users type in the Domain Name are attached at Exhibit H to the Complaint. The printout is dated 8 April 2005.

The Expert confirmed this position on 6 June 2005. She has also confirmed that the website accessed through the Domain Name is the same website that can be accessed through the domain name McDonalds.co.uk and it would appear to be the "official" website of the McDonald's Corporation, the well known fast food restaurant.

The Complaint describes McDonald's as a "major competitor" of the Complainant.

There is nothing to indicate that the link between the Domain Name and the McDonald's website is known to or authorised by McDonald's Corporation.

The Parties' Contentions

Complainant

The Complainant states that the Domain Name is identical to the Complainant's trade marks and that its rights in the trade marks predate the Respondent's registration of the Domain Name. In contrast it states that the Respondent has no right or legitimate interest in the Domain Name. There is no previous relationship between the Respondent and the Complainant.

The Complainant asserts that the Domain Name is an Abusive Registration (as defined in the Policy- see below). It states that evidence that the Domain Name constitutes an Abusive Registration lies in the fact that the it was primarily registered for the purposes of selling, renting or otherwise transferring it to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the costs incurred by the Respondent in connection with acquiring the Domain Name (in accordance with paragraph 3(a)(i)(A) of the Policy).

The Complaint relates that on 22 February 2005 the Complainant's legal advisor, Freshfields Bruckhaus Deringer (FBD), wrote to the Respondent, asking it to contact FBD. In response to this letter Paul Donovan (PD), a representative of the Respondent, telephoned FBD on 1 March 2005. FBD explained that the Complainant owns a restaurant chain called LONG JOHN SILVER'S and that it is the proprietor of corresponding registered trade marks in the United Kingdom. FBD explained that the Complainant was concerned that the Respondent had: (a) registered the Domain Name; and (b) linked the Domain Name to the McDonald's website.

FBD asked PD whether the Respondent would transfer the Domain Name to the Complainant in return for a sum representing the costs of registration and transfer. PD said that the Respondent would not transfer on these terms but would consider a higher offer from the Complainant. PD said that the Respondent was in the business of selling domain names, so would only be willing to sell at "the right price". PD said that the Respondent currently has between 50 and 60 domain names for sale. FBD asked PD to remove the link between the Domain Name and the McDonald's website and PD agreed to do this.

The Respondent has failed to remove the link. As indicated in the previous section of this Decision users of the Domain Name are still being redirected to the McDonald's website.

On 23 March 2005 FBD telephoned PD to offer the sum of USD 500.00 in return for the transfer of the Domain name to the Complainant. PD said that this sum was far below what the Respondent would be prepared to accept. PD said that the Respondent might be willing to consider an offer if the Complainant "put a nought on the end", i.e. increased the offer to USD 5,000.00. FBD said that it would obtain further instructions. On 1 April 2005, PD sent an e-mail to FBD, attached at Exhibit I, to the Complaint in which he informed FBD that the Respondent had decided to offer the Domain Name for sale on the open market. PD said that the Respondent had been;

"put in contact with McDonald's in Illinois, USA

As a consequence, I have today received an offer of £10,000 sterling in return for this domain name.

On the advice of my accountant, I am hereby inviting all interested parties to submit best and final offers in writing by no later than 5pm on Friday 15^th April 2005 ((please note: the successful bidder will be responsible for all costs incurred in facilitating the transfer of the domain name)".

The Complainant concludes that the Respondent accordingly hopes to sell the Domain Name for a sum equal to, or exceeding, GBP 10,000.00. This sum is far in excess of the costs incurred by the Respondent in connection with the registration of the Domain Name.

The Complainant also asserts that evidence of Abusive Registration also lies in the fact that that the Respondent is using the Domain Name in a way that is unfairly detrimental to the Complainant's Rights. People or businesses who use the Domain Name are taken to the website of McDonald's, a major competitor of the Complainant. As the McDonald's name is so well known, the public are likely to believe that the Long John Silver's brand is connected to McDonald's, rather than to the Complainant.

People or businesses who are keen to access information relating to the Complainant's products or services are likely to attempt to access such information via the Domain Name. Such people or businesses are likely to be perturbed when they are redirected to the McDonald's website and are accordingly unable to access such information. The Complainant feels that this constitutes further evidence of Abusive Registration.

Respondent

The Respondent has made no submissions.

Discussion and findings

Clause 2 of the Policy provides that a Complainant must prove 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.

The onus of proving the above is borne by the Complainant who must prove this on the balance of probabilities (Clause 2b of the Policy). In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure). There are no exceptional circumstances to justify the Respondent's failure to submit a Response.

Rights

The Complainant asserts that it has rights in the Long John Silver's mark and that the mark is identical to the Domain Name (it being customary to disregard the suffix ".co.uk").

The term "Rights" is defined by the Policy to include, but not be limited to, rights enforceable under English law but the term does not extend to a name or term which is wholly descriptive of the Complainant's business.

The Complainant's trade mark registrations in the word mark Long John Silver's (registration 2318728 (UK registration) and 002964963 (CTM registration)) confer rights in the mark which are enforceable under English law. The apparent lack of trading activity under the Long John Silver's mark in the UK does not change this position under English law (although a failure to make genuine use of the trade marks within 5 years of registration could cause the registrations to be revoked- a fact of which the Complainant is presumably aware).

There are 2 minor differences between the registered marks and the Domain Name. Firstly the trade marks consist of 3 separate words (Long John Silver's) whereas the Domain Name, as one would expect, consists of a single word. Secondly the registered marks each feature an apostrophe after the final "s" (Silver's). The Domain Name does not. It is the view of the Expert that under the Policy neither of these differences prevents the Domain Name from being identical or similar to the marks in which the Complainant has Rights. The differences are minor and are not unusual in relation to domain name version of well known marks (for example the website of the McDonald's Corporation is at mcdonalds.co.uk (omitting the apostrophe)). Neither of the differences is likely to be significant for the average consumer of quick-food products and services.

The Complainant has therefore demonstrated that it has rights in the Long John Silver's mark and this mark is identical or similar to the Domain Name for the purposes of the Policy. The first criterion under the Policy has been satisfied.

Abusive Registration

Abusive Registration is defined in Clause 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.

Registration or Acquisition

Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The indicative factors which may be relevant to the registration or acquisition of the Domain Name are as follows:

There are 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…………; or

C……...

As stated above these are non-exhaustive factors which might give rise to an Abusive Registration. More generally under clause 1 of the Policy the Expert must ask whether the registration of the Domain Name took unfair advantage of or was unfairly detrimental to the Complainant's Rights. The Complainant relies on (A).

The initial consideration for the Expert is whether the Complainant enjoyed Rights on 19 January 2005 (the date on which the Domain Name was registered). The trade mark registrations in which the Complainant has Rights were registered in June 2003 (UK registration) and March 2004 (CTM). The Rights accordingly predate the registration of the Domain Name.

The next question is whether at the time of its registration the Domain Name took unfair advantage of or was unfairly detrimental to the Complainant's Rights. There is no direct evidence before the Expert as to the Respondent's state of mind when registering the Domain Name.

The Expert infers that the Respondent was primarily motivated in its registration of the Domain Name by the opportunities for selling the Domain Name to the Complainant or a third party such as the McDonald's Corporation for profit. The evidence that leads the Expert to this conclusion is as follows:

•    During the course of a telephone conversation between Paul Donovan of the Respondent and the Complainant's legal advisers, the Respondent indicated that the Respondent was in the business of selling domain names.

•    In the same telephone conversation the Respondent made clear that it was seeking consideration in excess of its documented out of pocket costs in acquiring the Domain Name and this is supported by subsequent discussions and correspondence in which the Respondent indicated that payment of between USD 5,000 and GBP 10,000 might be acceptable sums to secure the transfer of the Domain Name.

•    In its email of 1 April 2005 the Respondent indicates a willingness to approach the McDonald's Corporation as a potential purchaser (the email is very carefully worded. It does not say that McDonald's actually made any offer in relation to the Domain Name or even that the Respondent had had dealings with McDonald's). This threatened (and possibly actual) approach to a competitor of the Complainant was a blatant attempt to pressurise the Complainant to agree the transfer on terms dictated by the Respondent.

•     The 1 April email also indicated that the Domain Name was to be auctioned to the highest bidder and invited " best and final offers" from the Complainant in competition with any number of third parties including (the email suggests) a major competitor of the Complainant.

The Respondent has filed no Response to contradict the above circumstances. The Expert, being entitled to draw inferences from the lack of a Response, concludes that the Complainant has shown on the balance of probabilities that the registration of the Domain Name was Abusive in that it was registered primarily for the purposes of 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.

The Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

The Domain Name is being used by the Respondent in the sense that it redirects users to the website of a major competitor of the Complainant.

The crucial issue is whether the Respondent's use is taking unfair advantage of or is unfairly detrimental to the Complainant's Rights. The Complaint records 2 instances of damage which are being caused to the Complainant's Rights. The Expert agrees that on the balance of probabilities damage is likely to be caused in both cases.

•    Firstly users of the Domain Name are directed to the website of a major global competitor of the Complainant. The Complainant invites the Expert to draw the inference that confusion is being caused not between the Complainant and Respondent but between the Complainant and its competitor, McDonald's Corporation. The Expert finds that the likelihood of such confusion is present. Both McDonald's and the Complainant are well known global brands in the fast-food industry. However in the UK McDonald's have a trading presence which the Complainant presently lacks. It is likely that a sector of the UK public will have an awareness of the Complainant's brand, particularly if they have travelled abroad. The redirection of the Domain Name to McDonald's UK website will almost certainly result in the mistaken assumption of a UK business connection between the Complainant and the Respondent. Such confusion would hinder the ability of the Complainant to use its trade marks to expand its business into the UK. It will also dilute the value of the Complainant's trade mark registrations in more general terms.

•    Secondly the Complainant asserts that customers seeking information about the Complainant will be perturbed when the redirection to the McDonald's site prevents them accessing the information. The Expert finds this to be the case. Such irritation will damage the Complainant's goodwill and brand.

The Expert is satisfied on the balance of probabilities that the Respondent's use of the Domain Name is on the balance of probabilities causing unfair detriment to the Complainant's Rights in the sense of its ability to exploit its trade mark registrations in the UK. The use is accordingly Abusive.

Decision

The Expert finds that the Complainant has proved on the balance of probabilities that the two elements in paragraph 2 of the Policy are present, namely that there are Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.

Accordingly the Expert finds that the Complaint succeeds and directs that the Domain Name be transferred to the Complainant.

Sallie Spilsbury

6 June 2005