BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!
 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Swiss Masai Holding AG v Hamsin Ltd [2006] DRS 3573 (12 June 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3573.html Cite as: [2006] DRS 3573 |
||
[New search] [Printable RTF version] [Help]
Complainant: Swiss Masai Holding AG,
Address: St Gallertsrasse 72, CH-9325 Roggwil
Country: Switzerland
Respondent: Hamasin Ltd,
Address: B5 River View, The Embankment, Stockport, Cheshire, SK4 3GN,
Country: England
swissmasai.co.uk (the "Domain Name")
3.1 A Complaint in respect of the Domain Name under Nominet UK's Dispute Resolution Service Policy (the "Policy") was received from the Complainant on 3 April 2006. Nominet forwarded the Complaint to the Respondent. No Response was received.
3.2 On 18 May 2006 the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Procedure (the "Procedure"). I was appointed as Independent Expert on 18 May 2006 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
4.1 Under Paragraph 5a of the Procedure the Respondent was required to submit a Response to the Complaint to Nominet by 2 May 2006. The Respondent has failed to do so.
4.2 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".
4.3 It is the view of the Expert that there are no exceptional circumstances. The proceedings have been communicated to the Respondent and the Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.
4.4 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 its Annexes in this case) and the Policy and Procedure. 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 he considers appropriate (paragraph 15c of the Procedure).
5.1 The Complainant is the proprietor of the international (Madrid Convention) trade mark SWISS MASAI no. 799 378 registered on 7 January 2003 (the "Trade Mark") which is based on the Swiss trade mark no. 501366 registered on 8 July 2002. The Trade Mark designates the United Kingdom, thus it constitutes a right enforceable in the UK.
5.2 The Complainant distributes shoes as physiological footwear under its brand MBT which is an abbreviation for "Masai Barefoot Technology".
5.3 The Respondent registered the Domain Name on 31 January 2004 and has used it as part of a web address which, if accessed, redirects to an internet site http://www.lovethoseshoes.com. The Respondent offers at this internet address shoes similar to the Complainant's products. The site contains a direct comparative promotional text with a direct reference to Complainant's MTB branded products in the following terms:
"We discovered MBT's in 2003 […] .
They have been very successful, but we have now discovered something better in terms of benefits and technology, and from a supplier who is, in our opinion, more reliable than MBT.
[…]
In our opinion, the Negative Heel Technology incorporated in Earth trainers is superior and more beneficial to health and fitness. […]."
Complainant
6.1 The Complainant alleges the Domain Name registration is abusive because it was primarily registered to unfairly disrupt the Complainant's business by misleading the customers to believe that the products presented on the Respondent's internet site have a relationship to the products of the Complainant. Furthermore the registration was made by the Respondent to prevent the Complainant from registering the Domain Name itself.
Respondent
6.2 The Respondent has not submitted any contentions.
General
7.1 The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that:
(a) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(b) the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
7.2 "Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law." The Complainant is the proprietor of the Trade Mark. I am satisfied that it has Rights.7.3 The Domain Name is clearly similar if not identical to the name in which the Complainant has rights.
7.4 Accordingly I find that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive Registration
7.5 Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
(a) 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
(b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.7.6 A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy. These include (paragraph 3 A (i) C): "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".
7.7 It seems quite clear that the Respondent registered the name because it was associated with the Complainant and its products and is then diverting traffic which is looking for those products, to a site which, in express terms, offers competing products which are said to be better than those of the Complainant. I conclude that the Respondent is taking unfair advantage of the Complainant's Rights.
7.8 In the circumstances, in the absence of any Response from the Respondent giving any explanation (and it is difficult to see what plausible explanation there could be) I consider that the Domain Name was registered 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. The Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.
8.1 Accordingly, I find that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.
8.2 I therefore determine that the Domain Name be transferred to the Complainant.
