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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Acorn Computers Ltd v Johnson [2006] DRS 3682 (24 July 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3682.html Cite as: [2006] DRS 3682 |
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Complainant: Acorn Computers Ltd
Country: GB
Respondent: Roy Johnson
Country: GB
acorncomputers.co.uk
The Domain Name was registered by the Respondent on 2 August 2000. The Complainant made its complaint to Nominet on 16 May 2006. The complaint was subsequently validated on 22 May 2006. No response was received from the Respondent so mediation was not possible. The Complainant subsequently paid the fee for an Expert decision and Mr Chris Tulley was selected.
None
The Domain Name acorncomputers.co.uk was registered by the Respondent on 2 August 2000. The Complainant company was registered at Companies House on 28 January 2006 under the name Acorn Computers Limited. The UK Trade Marks Registry printout shows the Complainant as a licensee of the UK trade mark ACORN (number 2343001) registered with effect from 17 July 2003 and owned by Aristide & Co Antiquaire De Marques, based in Paris, France. The trade mark is registered for a range of goods in class 9 (and services in class 41) including computers and other goods associated with computers. The Complainant's licence under the trade mark was recorded at the Trade Marks Registry on 16 February 2006. The Domain Name resolves to a website with the title page headed "Acorn Computers Limited".
Complainant:
In summary the Complainant says that:
• It is registered at Companies House under the name "Acorn Computers Limited".
• It holds the rights to the ACORN trade mark, number 2343001, registered since 17 July 2003.
• The Respondent's website homepage has the title "Acorn Computers Limited", which will lead people to believe it is the Complainant's official website.
• That use of the Complainant's company name is illegal and has caused much confusion and continues to do so which is detrimental to the Complainant and extremely misleading.
• The ACORN trade mark has been registered since the 1980's and is a well known brand in computing.
• The Complainant has invested £100,000 in marketing and is due to invest a further £300,000 in the next 6 months.
• The Domain Name was registered at a time when the ACORN trade mark was still in force.
• The Respondent's website displays links to other websites selling various types of products, linking them to the Acorn brand.
Respondent:
The Respondent has not responded to the complaint. Nominet's email and postal copies of the complaint sent to the Respondent have been returned. The email copy (sent to [email protected]) was returned as an unknown email address and the postal copy sent to the address recorded at Nominet by the Respondent when registering the Domain Name was returned marked "addressee has gone away". The complaint was also sent by fax to the fax number provided by the Respondent when registering the Domain Name and by email to [email protected] which was also provided as contact details by the Respondent when registering the Domain Name.
General
In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration.
These terms are defined in the Nominet DRS Policy as follows:
• 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.
• Abusive Registration means 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.
Complainant's Rights
The Complainant has produced a printout from the UK Trade Marks Registry website showing it to be a licensee of the ACORN trade mark, number 2343 3001, registered for, amongst other things, computers. The Complainant has also produced its certificate of incorporation as a UK company under the name Acorn Computers Limited and a sample of its notepaper prominently displaying the Acorn name. The Complainant also says it has spent £100,000 on marketing, but has provided no details or examples of that marketing. However, on the evidence before me and on the balance of probabilities I find that the Complainant does have Rights in the name Acorn Computers, being a name or mark which is identical to the Domain Name, ignoring the .co.uk suffix.
Abusive Registration
From the matters relied on by the Complainant in its submissions, the following parts of paragraph 3 of the Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) are potentially relevant: In addition, there is one part of paragraph 4 of the Policy (being factors which may be evidence that the Domain Name is not an Abusive Registration) that may be relevant, which I shall discuss below.
Paragraph 3 a. i. B "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights;"
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."
The Complainant says that the ACORN trade mark has been registered since the 1980's and that the Domain Name was registered at a time when the ACORN trade mark was still in force. The Complainant refers me to Exhibit 2 in support of these contentions, being details of the ACORN trade mark under which it is licensee. That trade mark was not registered until 17 July 2003, almost three years after the Domain Name was registered.
Whilst I am aware from my own general knowledge that the Acorn name was a well known business name in relation to computers in the UK in the 1980's, the Complainant has produced no evidence to support a claim to any rights to the ACORN COMPUTERS brand name prior to its registration as a company under that name on 28 January 2006 and its licence registered on 16 February 2006 under the ACORN trade mark registered as from 17 July 2003. In the circumstances, and as the Domain Name was registered well before these dates, I am not satisfied on the balance of probabilities that the circumstances referred to in either paragraph 3a.i.B or 3a.i.C have been proved.
Paragraph 3 a. 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 printout of the www.acorncomputers.co.uk website prominently displays the heading, "Acorn Computers Limited". It refers to the purchase of a division of "Acorn Computers" by Pace Micro in 1999 and also refers to "Acorn re-launching as Element 14" and to two other companies taking over manufacture of Acorn compatible machines. The web page displays a visitor counter saying that there were 28,271 visitors to that page since June 2001 and that the page was last updated in September 2005.
Whilst the Complainant has only produced evidence of any rights to the Acorn Computers name since 2006, the continuing use of the website by the Respondent, apparently claiming to be "Acorn Computers Limited" has, according to the Complainant, caused considerable confusion. Although, no details of the confusion have been provided, it seems clear to me on the balance of probabilities that such confusion is almost inevitable if there is a website that relates to the same area of business and uses the same company name as the Complainant's registered name.
In the circumstances, and on the balance of probabilities, it seems clear that the Domain Name is now being used in a manner which will cause the type of confusion envisaged by paragraph 3 a. ii. and accordingly takes unfair advantage of, and is unfairly detrimental to, the Complainant's Rights.
Paragraph 3 a. iv. "It is independently verified that the Respondent has given false contact details to [Nominet]".
The postal address provided by the Respondent when the Domain Name was registered in 2000 resulted in a Royal Mail return stating "addressee has gone away". It does not state when the Respondent moved away from the address given but there is an obligation on the part of any UK domain name registrant to keep Nominet updated with a current contact address in accordance with the terms and conditions laid down by Nominet when registering domain names. The giving of correct contact details is an ongoing obligation and it seems, on the balance of probabilities, that the Respondent has given false contact details, either when initially registering the Domain Name or when failing to update his contact details.
Paragraph 4 a. i. A. "Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;"
I noted earlier that there was one part of paragraph 4 of the Policy (being factors which may be evidence that the Domain Name is not an Abusive Registration) that may be potentially relevant i.e. paragraph 4 a. i. A, which I have set out above.
The Domain Name was registered in 2000 and the webpage has a visitor counter purporting to record visitors since 2001. In addition it states that the webpage was last updated in September 2005. These dates are all prior to the earliest date that the Complainant has demonstrated any Rights to the ACORN COMPUTERS name.
However, all I have to go on is the printout of the website homepage made on 16 May 2006. In the absence of any information provided by the Respondent to attempt to justify his use of the Domain Name and the content of the website as it presently stands, I am unable to give much weight to the apparent dates of use shown on the website homepage. In the circumstances, and on the balance of probabilities, I cannot find that the Respondent has used the Domain Name in connection with a genuine offering of goods or services prior to being aware of the Complainant's cause for complaint.
For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the name "Acorn Computers", being 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.
In the circumstances I order that the Domain Name be transferred to the Complainant.
Chris Tulley
24 July 2006
