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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Duplo International Ltd [2006] DRS 3623 (24 June 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3623.html Cite as: [2006] DRS 3623

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Nominet UK Dispute Resolution Service

DRS Number 03623

Decision of Independent Expert

1. Parties

Complainant: Duplo International Ltd

Country: United Kingdom

Respondent: Steve Banks

Country: United Kingdom

2. Domain Name

Duplointernational.co.uk (the "Domain Name")

3. Procedural Background

The complaint of the Complainant was entered in the Nominet system on 21 April 2006. Nominet validated the complaint on the same day and dispatched a copy of the complaint to the Respondent. No response was received from Respondent by the due date of 16 May 2006. On 17 May Nominet wrote to both parties indicating that no response had been received. On 31 May 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (the "Policy").

On 2 June 2006 Nominet invited Christopher Gibson to act as Expert in the case. The undersigned (the "Expert") has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has 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. The undersigned was appointed as Expert in this case on 2 June 2006.

4. Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). Paragraph 15b of the Procedure provides, inter alia, that "[i]f in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or the Procedure, the Expert will proceed to a Decision on the complaint."

There is no evidence before the Expert to indicate the presence of exceptional circumstances. Nominet has attempted to communicate the complaint to the Respondent by email and post. The efforts made by Nominet are in accordance with the Procedure and accordingly, the Expert will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.

Paragraph 15c of the Procedure provides that "i]f, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure . . ., the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate." I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.

5. The Facts

The Complainant, Duplo International Ltd., is a company offering print and print finishing machines, which trades under the name Duplo International and uses the trade mark DUPLO (as indicated in the blank letterhead submitted by the Complainant). The Complainant operates a web site at www.duplointernational.com (this domain name was registered in December 1996), where it is stated that Duplo International has operated in the United Kingdom for more than thirty years and where the trade mark DUPLO appears prominently. The name Duplo International Ltd. was registered with Companies House in 1994, following a change from its prior name, Duplo Holdings Group Limited. The Complainant has submitted documentation to show that the trade mark, DUPLO, has been registered in the European Community in relation to a number of different goods and services by Duplo Corporation, an entity affliated with the Complainant.

From the WHOIS records, the Domain Name was registered for Steve Banks on 7 February 2006 via Fibranet Services Ltd. There is no administrative contact listed. The Complainant submitted documentary evidence to show that, at the time of the Complaint, the URL www.duplointernational.co.uk resolved to a web page for Andrews Reprographics Ltd (the Expert visited this web site to confirm this point). The web pages for Andrews Reprographics state that it was established in 1980 and offers sales, rentals and service for a number of different brands of office machines and printing equipment, including the Complainant. A description from the web site provides as follows:

"Andrews Reprographics Ltd aim to help your business improve performance and save money, by delivering a range of the latest in business machines to include Kyocera and Panasonic digital mono and business colour photocopiers and multifunction machines, laser printer technologies, Duplo print and finishing equipment along with office interiors and computer consumables, backed up by unrivalled service and support."

The trade mark DUPLO, as well as the marks of a number of other office, copy and printing equipment companies, appear at numerous places on the Andrews Reprographics' web pages. The site also indicates that Steve Banks is the Managing Director of Andrews Reprographics.

6. The Parties' Contentions

Complainant

The substance of the Complainant's contentions are stated in very brief manner in its Complaint: The Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name in dispute, and the Domain Name is an Abusive Registration because (i) the Respondent offered to sell the Domain Name to the Complainant for more than Respondent paid for it, and (ii) the Domain Name is redirected to the Andrews Reprographics website and "is being used in a way which has confused people – some emails incorrectly addressed to company directors @ duplointernational.co.uk have ended up in the Respondent's inbox."

Respondent

The Respondent has not responded, and therefore has raised no challenge to any of the facts and statements submitted by the Complainant.

7. Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present:

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.

Complainant's Rights

The Complainant has established that it has rights in its name, Duplo International. These rights arise not only from the company registration but also from use of the name in commerce in the United Kingdom for more than ten years. These rights also pre-date the registration of the Domain Name by the Respondent by more than ten years. The Complainant may also possibly have rights in the registered trade mark, DUPLO, although it is unclear whether such trade mark rights for DUPLO in the United Kingdom are owned by the Complainant or an affiliated entity. (Given this uncertainty the Expert does not rely on the trade mark rights attaching to the mark DUPLO in making his assessment of Complainant's rights). In these circumstances, and without any challenge by the Respondent, the Complainant's submissions are sufficient to establish a basic claim to common law rights in the name Duplo International as a company name and unregistered trade mark. In addition, the substantive part of the Domain Name contains letters identical to the Complainant's name. The Domain Name is therefore identical to a name in which the Complainant has Rights. The Complainant has established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration

As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS Policy defines "Abusive Registration" as:-

"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."

The DRS Policy, in paragraph 3(a), includes a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. Those most relevant to the Complainant's contentions are included below:

"i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A. 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;

* * * *

C. 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."

The evidence shows that the Domain Name has been used to redirect Internet users to the site of Andrews Reprographics, a company in which the Respondent is the Managing Director. The web site for Andrews Reprographics indicates that it deals in office equipment, including the Complainant's products. However, it is unclear from the evidence whether the Respondent should be properly viewed as a competitor of the Complainant or, instead, as a company authorised to sell, rent or service the Complainant's printing and print finishing equipment. Even if it is assumed that the Respondent was so authorised, this circumstance alone does not make the Respondent's registration and use of the Domain Name legitimate. Rather than consent to such use, the Complainant has alleged that the Domain Name in the hands of the Respondent is an abusive registration. The Expert has seen no evidence to indicate that the Respondent or Andrews Reprographics have any rights that would justify the relatively recent registration of the Domain Name in February 2006 and its use for the Andrews Reprographics' business. It is to be noted, in this regard, that the Respondent has also registered the domain , which directs Internet users to the Andrews Reprographics web site, and that the domain name was registered by Andrews Reprographics and directs users to its site.

The Expert also weighs the uncontradicted allegations of the Complainant that (i) the Respondent offered to sell the Domain Name to the Complainant for more than the Respondent's out-of-pocket costs for acquiring the Domain Name, and (ii) the use of the Domain Name has created confusion, causing emails to incorrectly ending up in the Respondent's inbox.

In summary, the Expert is of the view that, in the absence of any evidence to the contrary, the Complainant has established that the registration of the Domain Name which is identical to the Complainant's company name, and which links to a web site for Andrews Reprographics in manner that causes confusion, takes unfair advantage of or is unfairly detrimental to the Complainant's Rights. Accordingly, the Expert finds, on the balance of the probabilities, that the Domain Name in the hands of the Respondent is an Abusive Registration.

8. Decision

The Expert finds that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the disputed Domain Name, , be transferred to the Complainant.

Christopher Gibson

24 June 2006