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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Guilbert UK Holdings Ltd v Morrison [2005] DRS 02775 (5 September 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2775.html Cite as: [2005] DRS 02775, [2005] DRS 2775

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Nominet UK Dispute Resolution Service DRS 02775
Guilbert UK Holdings Limited v. Robert Morrison
Decision of Independent Expert
1. Parties

Complainant: GUILBERT UK HOLDINGS LIMITED

Country: Great Britain

Respondent: ROBERT MORRISON

Country: Malta

2. Disputed Domain Name

The domain name in dispute is .

3. Procedural Background

On 30 June 2005 the Complaint was received in hard copy by Nominet.UK in accordance with the Dispute Resolution Service Policy (hereinafter the "DRS Policy") and entered into the Nominet UK system on 1 July 2005.

On 5 July 2005, having validated the Complaint, Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that he was allowed until 27 July 2005 to file a Response.

No Response was received.

James Bridgeman was invited to act as Expert in this reference and, having confirmed to Nominet UK that he knew of no reason why he could not properly accept the invitation and 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, he was appointed to act as Expert in this case. The date of appointment being 17 August 2005.

4. The Facts

A number of associated companies within the Guilbert Group join the Complainant in this case viz. the French company Guilbert SA (n° B697180297), British companies Guilbert UK Pension Trustees Limited (n° 2804248), Guilbert Ofrex Limited (n° 286834), Guilbert Niceday (Stationery & Print) Ltd (n° 2317994) Guilbert Niceday Limited (n°1396000) and Guilbert UK Limited (n° 1675680).

The Complainant is a British company incorporated on 16 February 1994 and is part of the GUILBERT Group, a leading distributor of office equipment and supplies in Europe with operations in Belgium, France, Germany, Ireland, Italy, The Netherlands, Portugal, Spain and the United Kingdom. The group has 5,700 employees and according to the Complainant in the year 2002, the group's sales amounted to EUR 1.4 billion (of which 15% was placed online) and the group had an operating income of EUR 63 million.

The GUILBERT Group of companies is in turn part of the group OFFICE DEPOT Inc., which is a major supplier of office products and services in the USA and in 22 other countries around the globe. In 2004, OFFICE DEPOT Inc. generated total revenues of US$13.6 billion. The company employs nearly 45.000 people worldwide. In this regard, the Complainant has submitted the Annual Report of OFFICE DEPOT Inc. for the year 2004.

The Complainant submits that in Europe, OFFICE DEPOT Inc. sells office products and services under the brand names OFFICE DEPOT, VIKING DIRECT and GUILBERT.

The Complainant.its parent company or other affiliated companies are, among others, the owners of the following registered trademarks and pending applications: the European Community trademark application GUILBERT n° 000986372, dated November 13, 1998; the international trademark registration GUILBERT n° 582 964, dated August 9, 1991; Austrian trademarks registrations GUILBERT n° 165168 and 165950, dated May 2, 1996 and June 27, 1996;Finnish trademark registration GUILBERT n° 121.897, dated July 16, 1991; French trademark registration GUILBERT n° 1 675 916, dated May 27, 1981; Icelandic trademark registration GUILBERT n° 1077/1991, dated July 15, 1991; Irish trademark registration GUILBERT n° B152303, dated July 30, 1991; Norwegian trademark registration GUILBERT n° 153.748, dated July 15, 1991; and Swedish trademark registration GUILBERT n° 236.435, dated July 24, 1991. The Complainant has submitted copies of the certificates for these applications and registrations as an annex to the Complaint.

The Complainant, its parent company or other affiliated companies also own various domain names including the sign GUILBERT or GUILBERT ONLINE including , registered on February 15, 2001; , registered on February 15, 2001; , registered on November 3, 1999; , registered on November 19, 2001; , registered on August, 27, 1994; and , registered on April 2, 1998.

In the absence of a Response there is no information about the Respondent available except for the details provided on the Registrar's WHOIS database and the information provided by the Complainant in the Complaint. The domain name in dispute was registered by the Respondent on 7 April 2004.

5. The Parties' Contentions

Complainant's Submissions

The Complainant requests that the domain name be transferred to the Complainant.

The Complainant submits that itself, its parent company and other companies within the group have Rights word GUILBERT as a company name, trademark and domain name. The Complainant and several other companies in the GUILBERT group include the element GUILBERT in their corporate name. The Complainant itself, its parent company or other affiliated companies own the registered trademarks and pending applications listed above, each of which includes the element GUILBERT. The Complainant submits that said marks incorporating the word GUILBERT, are both distinctive and arbitrary. The Complainant further submits that the Complainant and associated companies have a strong reputation in the use of these marks in the field of office equipment and supplies and that the marks are widely known in Europe.

The Complainant submits that the domain name is identical or similar to the Complainant's company name and the trademarks and domain names of the Complainant and its associated companies.

The domain name is furthermore very close to, to the point of being very likely to create confusion with, various domain names owned by the Complainant and its associated companies within the group such as , or .

The Complainant further submits that the domain name in the hands of the Respondent is an Abusive Registration because, by its use and its very existence, it has caused the Complainant unfair detriment.

In support of this assertion the Complainant submits that the Respondent is using the domain name as the address of a web site which features various links to other websites that offer office furniture supplies in competition with the Complainant.

When the Complainant became aware of the existence of the domain name in dispute it sent a cease and desist letter to the Respondent at his postal address detailed in the results of a WHOIS search against the domain name in dispute. The cease and desist letter urged the Respondent to transfer the domain name. A copy of this letter has been submitted in the annex to the Complaint.The cease and desist letter was sent to the address mentioned at that time on the WHOIS search.

The Complainant submits that the Respondent's address has changed since then. The cease and desist letter was returned by the Malta Post marked "unclaimed". A reminder was later sent via electronic mail but it remained likewise unanswered. As no email address was indeed mentioned on the whois information for the domain name , the email address used to this effect was the one mentioned on the WHOIS information of another domain name () owned by the Respondent. The Respondent has submitted a copy of the email.

The Complainant submits that the Respondent's use of the domain name is unauthorised by the Complainant. The Respondent does not have any affiliation, association, sponsorship or connection with the Complainant. Neither has the Respondent been authorized, licensed nor otherwise permitted by the Complainant to register the and to use it.

The Complainant submits that the unauthorised use and registration of the domain name have been made in bad faith and are abusive. The Respondent could have chosen many other names that would have been appropriate for his business. There was no reason for him to choose the domain name except to attempt to associate it with the Complainant's existing and very well known business. The Respondent thus intentionally chose that domain name because it identically reproduces the sign GUILBERT, which is a particularly distinctive sign.

The Respondent's aim is clearly to impersonate the Complainant or at least to make the public believe that the domain name in dispute comes from or is somehow linked to the Complainant, its parent company or other affiliated / sister companies.

In this respect, the Complainant submits that it is important to emphasise that the Complainant's office equipment and supplies ordering facilities are referred to as "Guilbert-Online Ordering Service" both by the Complainant and by consumers. A search on Google against the sign "guilbertonline" gives four results: the first one is the domain name in dispute and the three other results are Complainant's websites. The Complainants have submitted a printout of this search as an annex to the Complaint.

The Complainant submits that it follows that the Respondent is abusively trying to take advantage of the goodwill the Complainant in the trademarks GUILBERT and GUILBERT ONLINE.

The Complainant further submits that the Respondent is further using the domain name to fraudulently redirect consumers to websites offering competitive or similar goods to the Complainant's ones. The Respondent therefore aims to create confusion, for commercial gain only, with the marks GUILBERT, which are well known to designate office equipment and products. Such a use by the Respondent of the domain name therefore creates a serious likelihood of confusion with the Complainants' corporate names and marks, as to the source, sponsorship, affiliation or endorsement of the sites to which the domain names redirect Internet users.

It is also possible that Internet users may mistype the addresses of the Complainant's web sites , or and be redirected to the domain name . In such a case, the consumers may obviously think that the domain nam is somehow connected with the Complainant.

Finally the Complainant submits that the registration and use of the domain name in dispute also must tarnish and dilute the Complainant's GUILBERT corporate name and marks by confusing consumers (as well as the potential consumers) and interfere with the Complainant's business by frustrating attempts by Internet users to reach the Complainant's web sites.

Respondent's Submissions

There was no Response filed by the Respondent.

6. Discussion and Findings:

General

The onus rests on the Complainant to prove pursuant to paragraph 2.2 of the DRS Policy, on the balance of probabilities, first, that it has Rights, as defined in paragraph 1 of the DRS Policy, in respect of a name or mark identical or similar to the domain name in dispute and, secondly, that said domain name, in the hands of the Respondent, is an Abusive Registration, as defined in paragraph 1 of the DRS Policy.

Rights in Domain Name and Trademark

The Complainant claims that it and its related companies that join with the Complainant in bringing this Complaiint are the owners of numerous registrations and pending applications for the trademark GUILBERT and marks incorporating the word GUILBERT.

An examination of the exhibits submitted with the Complaint reveals that most of these registrations and applications are however in respect of device marks in which the stylised word GUILBERT is in combination with a logo device. Two exceptions being the Austrian registration for the word mark GUILBERT and the French registration of the word mark GUILBERT DIRECT.

While most of these registrations may not give rights in the word mark GUILBERT simplicter the stylised word GUILBERT is nonetheless the dominant element in each of the registrations relied upon by the Complainant. Furthermore the Complainant and its associated companies have established a protectable goodwill in their corporate names and trademarks at common law in the United Kingdom.

The domain name in dispute is clearly identical to the Austrian GUILBERT trademark and is similar to other marks and corporate names relied upon by the Complainant.

Abusive Registration

The concept "Abusive Registration" is defined in paragraph 1 of the DRS Policy as follows:-

"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."

A non-exhaustive list of factors, which may be evidence that the domain name is an Abusive Registration is set out in paragraph 3.a of the DRS Policy and includes circumstances indicating that the Respondent has registered or otherwise acquired the domain name primarily for the purpose of unfairly disrupting the business of the Complainant.

The Respondent has failed to file a Response in these proceedings. There is no explanation forthcoming from the Respondent as to why he should have chosen to register the Complainant's trademark as a domain name.

In using the domain name as the address of a website that offers links to other sites offering goods that are directly in competition with the Complainant, it would appear that the Respondent is, and was at the time that he registered the domain name in dispute, well aware of the Complainant's trademarks. It is clear that the Respondent is knowingly using the domain name for a purpose that is unfairly disrupting the Complainant's business and that was the Respondent's primary purpose and intention when registering the domain name.

On the balance of probabilities therefore, and in the absence of a Response, the Complainant has made out a prima facie case that the registration is an Abusive Registration.

The Complainants therefore succeed in their application.

7. Decision

As the Complainant has established that the said domain name is similar to a name and trademark in which the Complainant has Rights, and furthermore that on the balance of probabilities said domain name, in the hands of the Respondent, is an Abusive Registration as defined in paragraph 1 of the Policy the Complainant's application should therefore succeed.

It is hereby directed that said domain name be transferred to the Complainant.

James Bridgeman Date: 5 September 2005