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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Astec International Ltd v Watson [2006] DRS 3753 (28 July 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3753.html Cite as: [2006] DRS 3753

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Nominet UK Dispute Resolution Service
DRS 03753
Astec International Ltd. –v- Ms. Oliga Watson
Decision of Independent Expert

1. Parties:

Complainant: Astec International Ltd.

Country CN

Respondent: Ms. Oliga Watson

Country: UK

2. Domain Name in dispute:

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

3. Procedural Background:

16/06/2006 Dispute entered into system

16/06/2006 Hardcopies received in full

16/06/2006 Complaint validated

16/06/2006 Complaint documents generated and sent to Respondent

12/07/2006 No response received in time

12/07/2006 "No response to complaint" documents generated

14/07/2006 Fees for Decision received from Complainant on 14/07/2006

17/07/2006 Mr Iain M Tolmie selected as Expert

3.1. On the 14^th July 2006, I (Iain M. Tolmie, the undersigned, "the Expert") was contacted by the Nominet Dispute Resolution Service and I confirmed to them that:

"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties."

3.2. I was appointed as the Independent Expert for this Case as from 21^st July 2006 to respond on or before 4^th August 2006. This process is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") and the Decision is made in accordance with the Dispute Resolution Service Policy ("the Policy"). Both of these documents are available on the Nominet UK website (http://www.nominet.org.uk/).

4. Outstanding Formal/Procedural Issues:

4.1. The Respondent is identified in the domain name register as a private individual. Nominet has provided evidence that it has attempted to contact her as required by the Procedure §2. The e-mail to the required standard address for all registrants (postmaster@) was returned as undeliverable. I have seen copies of the e-mail and letters sent to the registered contact addresses; they were properly addressed and I presume them to have been received. The Respondent has not submitted a formal response to Nominet in time or at all as provided for under the Procedure §5a.

4.2. The Respondent accepted that she was bound by the Nominet Dispute Resolution Procedure at the time of the registration of the Domain Name. She is not obliged to make any response.

4.3. From the records sent to me, I can see that Nominet have taken all necessary steps under the Procedure, and since there is no evidence before me to indicate any exceptional circumstances that I should take into account in this case, I will now proceed to a Decision on the complaint notwithstanding the absence of a response, as is provided for in the Procedure §15b:

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

4.4. Furthermore, I will act in accordance with the Procedure §15c which provides that:

"If, 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."

5. The Facts:

5.1. I accept the following as facts:

5.2. Astec International Limited (company no. 31959) ("the Complainant"), is a Hong Kong limited liability company that is the registered owner of the trade mark ASTEC in the UK for class 9 goods and services.

5.3. The Complainant is part of a larger organisation. Astec International Ltd.(the Complainant), Astec Europe Limited (UK company no. 644867) ("AEL"), a UK entity, Astec America Inc. ("Astec America"), a US company incorporated under the laws of Delaware are all wholly-owned subsidiaries of the holding company Astec International Holdings Ltd., a company incorporated under the laws of England and Wales with company number 269496 ("AIHL"). AIHL and its subsidiaries, which include the Complainant, AEL, and Astec America, are known collectively as "Astec Power". AIHL is a wholly-owned subsidiary of the ultimate parent company Emerson Electric Co.

5.4. The Complainant manufactures and sells ASTEC branded products in Asia while AEL and Astec America act as the marketing arms of the Complainant outside Asia.

5.5. Astec Power is a major supplier of electronic power conversion products with over 25 years experience in the power conversion industry. Astec also designs, manufactures and delivers solutions for powering communications equipment, and it provides a wide range of electronic components for use in the automotive and information technology markets.

5.6. Various parts of the organisation have registered the following domains:

astec.co.uk, astec.com, astec-europe.com and astecpower.com.

5.7. The Respondent registered the Domain Name as a private individual on 12^th November 2005.

6. The Parties' Contentions:

Complainant

6.1. I have accepted as fact that the Complainant has relevant registered trade marks and a major standing in its industry sector.

6.2. The Complainant's further submissions (made on its behalf by a solicitor) are as follows:

6.2.1. 2.1 The Complainant has both statutory and common law Rights (as defined in the DRS Policy). As the registered owner of the trade mark ASTEC in the UK, the Complainant has the authority to enforce statutory trade mark Rights in class 9 goods and services as listed in the trade mark registrations (see Annex A). Prior to being locked by the registrar, the infringing Domain Name lead to a website (see Annex E) purporting to sell a range of products within trade mark class 9 under the ASTEC brand.

6.2.2. 2.2 The Complainant also has common law Rights which arise out of the reputation and goodwill that the Complainant and Astec Power have built up and developed in the ASTEC brand over many years of trading. (a) Astec Power began sales in the UK through AEL over 25 years ago and with a global workforce of some 20,000 individuals, Astec Power's UK sales over the past three years have been: £18,522,000 (2005), £17,449,000 (2004) and £16,484,000 (2003). Through extensive sales, advertising and marketing, Astec Power has developed goodwill and a reputation in the UK amongst the relevant market for its products, spending more than £90,000 last year in the UK alone on promoting the ASTEC brand. (b) The Complainant is entitled to protect its rights in its reputation and goodwill in the UK through the tort of passing off.

6.2.3. 2.3 The Citigroup ([2005] EWHC 2663 (Ch)) and One in a Million ([1999] 1 WLR 903) court cases confirm that Rights such as those possessed by the Complainant are infringed by conduct such as that complained of by the Complainant in the present case. In One in a Million, the Lord Justice Aldous noted that, "The placing on a register of a distinctive name such as "marks and spencer" makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Further, registration of the domain name including the words "Marks & Spencer " is an erosion of the exclusive goodwill in the name which damages or is likely to damage Marks & Spencer Plc." The judgment in this case was followed by Mr Justice Park in the Citigroup case, when he said that: "The mere registration and maintenance in force of a domain name which leads, or may lead, people to believe that the holder of the domain is linked with a person (e.g. Marks & Spencer or British Telecom, or, I would add, Citigroup) is enough to make the domain a potential "instrument of fraud" and it is passing off" (see Annex F).

6.2.4. 2.4 The Respondent has no authority to use the ASTEC mark or the reputation and goodwill associated with it.

6.2.5. 3.1 The Complainant and AEL became aware of the existence of the Domain Name and the website to which it resolved, and fraudulent activity involving the amending of AEL's company registration details with Companies House, on or about 9-10 January 2006 (see Annex G).

6.2.6. 3.2 AEL cooperated with the City of London Police investigations which resulted in the arrest of six people on suspicion of conspiracy to defraud. Use of the Domain Name and the website to which it resolved form part of the fraud investigations. The Complainant does not know what role, if any, the Respondent played in the alleged fraud; we are not aware that she has been arrested at this stage. The circumstances are described in more detail in a Witness Statement given by Philip Lamb, the Managing Director of AEL to the police on 20 January 2006 (Annex G). The alleged use of the Domain Name and the website to which it resolved for fraudulent purposes is confirmed by DC Harry Adams of the City of London Police in a letter to Baker & McKenzie LLP dated 8 March 2006 (Annex H).

6.2.7. 3.3 The website to which the Domain Name resolved was taken down by the Registrar "1&1 Internet Limited (1&1)" on 27 February 2006 and has been locked since then, following a request by AEL's solicitors, Baker & McKenzie LLP. A continuing investigation for criminal fraud is being undertaken by City of London Police (see Annex H)

6.2.8. 3.4 AEL's solicitors were told by 1&1 on 28 February 2006, that it had received no response to 1&1's requests for information from the Respondent made following B&M's complaint (see Annex I).

6.2.9. 3.5 Consequently, the Complainant now invokes the Nominet DRS in order to recover the Domain Name and protect its Rights

6.2.10. 4.1 In the hands of the Respondent, the Domain Name is an Abusive Registration because its registration and use takes unfair advantage of and causes unfair detriment to the Complainant and Astec Power

6.2.11. 4.2 The Domain Name has been registered unfairly with the express purpose of disrupting Astec Power's business (paragraph 3(a)(i)(C) of the DRS Policy). As noted at Annex G, the Domain Name has been used as part of a criminal fraud in which AEL's identity has been misappropriated and where AEL's details at Companies House were changed without authorisation.

6.2.12. 4.3 Furthermore, the Domain Name has been registered in a way that has confused people and businesses (paragraph 3(a)(ii) of the DRS Policy). Indeed, it has been used in an attempt to defraud IBM. Given the reputation of the ASTEC brand in the field of electronic power conversion products in the UK and beyond and the pattern of existing domain names registered by AEL and Astec America, there is a clear risk of confusion. The very similarity between Astec America's astec-europe.com domain and the Domain Name is a clear example of this risk. As noted in the recent seikowatches.co.uk Nominet decision (see Annex J) at Section Six, "Discussion and Findings: Abusive Registration" (DRS 03214), registration of a famous brand will nearly always be abusive, "the use of a mark as well known as that of the Complainant […] will almost always be an abuse of the rights held by the proprietor of the mark. Consumers and customers are likely to expect that domain names identical to well known marks, […] will be directed to the mark owner, absent any other word or terms used in the domain name."

6.2.13. 4.4 The police investigation which is linked to the Domain Name and website presents a stark contrast to the fact scenario covered in paragraph 4(a)(i)(A) of the DRS Policy which relates to "a genuine offering of goods or services". There has been no such genuine offering here.

6.2.14. 4.5 Furthermore, to allow the Respondent to retain the Domain Name in these circumstances would be contrary to both the spirit of the Nominet DRS Policy and public policy. The Complainant would be forced to take court action to protect its clear statutory and common law Rights and to ensure that its identity is not further misappropriated through use of the domain name.

Respondent

6.3. The Respondent has not submitted a response in time or at all.

7. Discussion and Findings:

Burden of Proof

7.1. In order for the Complainant to succeed it must (Policy §2) prove to the Expert, on the balance of probabilities, both:

i that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

7.2. Rights are defined in the Policy as:

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;

Complainant's Rights

7.3. The Complainant by making its Complaint has agreed to be bound by the Procedure and its legal representative has also signed a statement of truth in respect of the Complaint and associated documentation supplied.

7.4. The Complainant relies upon:

7.4.1. its registration as a limited company and its membership of the wider Astec Power organisation,

7.4.2. its business record and the record of the associated Astec Power companies as a whole representing 25 years in their industry sector,

7.4.3. and its Trade Mark registrations.

7.5. In examining the Domain Name I need to exclude the ".co.uk" suffix (which is generic and is usual to ignore) and I need to bear in mind that domain names are usually expressed in lower case only. The Domain Name is "asteceurope". Therefore there is a similarity between the Complainant's company name Astec International and the Domain Name.

7.6. The Complaint has been lodged on behalf of the Complainant by a firm of solicitors. It is clear from the documentation that they also represent Astec Europe Ltd., at least in the matter of an alleged fraud involving the use of the Domain Name.

7.7. It is not clear to me why Astec International and Astec Europe have not been made joint Complainants in line with §3 of the Procedure – and I will have to return to this below. The Complaint has perhaps been brought in this particular way because the legal representatives see the trade marks as the most important evidence of Rights. For clarity I would draw their attention to the following:

"The question of trade mark infringement is, as both parties (and the Expert) agree, one for the courts to decide. The question of abusiveness is for the Expert to decide. The two jurisdictions co-exist alongside each other, and no doubt there will be considerable overlap. However, there may well be factual scenarios in which an abusive registration under the Policy would not be an infringement of trade mark under the 1994 Act, and where an infringement of trade mark under the 1994 Act would not be an abusive registration under the Policy. The safest course for parties and Experts is simply to address the terms of the Policy."

Appeal Panel in Seiko UK Ltd -v- Designer Time/Wanderweb [DRS 00248]

7.8. The Rights test as defined in the Policy (as has been remarked many times) is a low one. In the terms of the Policy I have no difficulty in finding that the Complainant can demonstrate the necessary Rights by virtue of their business name and business record even had they not held trade mark registrations.

7.9. I therefore find that the Complainant has established to my satisfaction that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

7.10. Having found that the Complainant has established to my satisfaction that it has Rights in respect of a name or mark which is identical or similar to the Domain Names, I must now examine its allegations of an Abusive Registration by the Respondent.

7.11. An Abusive Registration is defined in the Policy as follows:

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;

7.12. The Complainant has produced evidence (6.2.11 above) showing that the Domain Name has been used as part of an alleged fraud using the Astec Europe company name. The fraud apparently included falsely amending the Astec Europe Ltd. company registration details and the establishment of the web site at the Domain Name in order to acquire goods of substantial value (6.2.12 above).

7.13. However the Complainant is not AEL but AIL. The Complaint alleges:

4.2 The Domain Name has been registered unfairly with the express purpose of disrupting Astec Power's business (paragraph 3(a)(i)(C) of the DRS Policy).

7.14. The precise quotation from the Policy is:

3ai.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;

7.15. Whilst the words "Astec power" appear on the web pages associated with the Domain Name, Astec Power is not a party to the Complaint – the Complaint has been made by AIL alone. It is asserted in the Complaint that AIL, AEL, AIHL and Astec America are known corporately as Astec Power - and I have accepted that (5.3 above). Having viewed the web pages at the various Astec subsidiary domain names, one can see that they all have the same corporate "look and feel" – and the appellation "Astec Power" is mentioned in one way or another on all of them and the Astec trade mark described above appears prominently.

7.16. The evidence of disrupting Astec Power's business is not really borne out by the web pages associated with the Domain Name. The Complaint contains copies of 3 pages, only one of which shows any goods whatsoever. As far as I can see the few items shown are Mornsun DC current converters. Mornsun on its own web pages describes itself thus: "MORNSUN SCIENCE & TECHNOLOGY LTD is China's first manufacturer of miniature DC-DC Converters". The descriptions of the items on the web page associated with the Domain Name do not exactly match the current Mornsun catalogue. There is no identification on the Mornsun web site of Mornsun as being a part of Astec in any of its described forms.

7.17. I cannot see how the web pages at the Domain Name can be said to be disrupting Astec International's business in any way – AIL is said in the Complaint to manufacture and sell goods in Asia. The pages do not (as is so often the case) point to competitors web sites or use a "click through" process to acquire income for the owner. They appear to be (and were obviously intended to appear to be) legitimate pages for a legitimate company dealing in electronic parts – in this case for the automotive industry.

7.18. The Complainant also claims that:

"the Domain Name has been registered in a way that has confused people and businesses (paragraph 3(a)(ii) of the DRS Policy)."

7.19. The actual quotation from the Policy is:

3aii 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

7.20. The Domain Name may have assisted in the alleged fraud by confusing people or businesses into believing that the address of AEL was that shown on the web page as opposed to the true address of AEL (which it is alleged had also been fraudulently changed in the Registry of Companies). However AEL is not the Complainant.

7.21. Because of the way the Complaint has been structured, the evidence offered does not easily align with the provisions of §3 of the Policy. However whilst the Policy provides a list of examples as a basis for the decision as to whether a registration is abusive, it clearly states that the list is non-exhaustive.

7.22. In my opinion, it is clear from the circumstances described and the evidence produced, that the Domain Name was acquired unfairly and has been used for unfair purposes. It clearly does make unfair use of the Complainant's name and trade marks, both in the Domain Name itself and on the face of the web pages associated with it. Furthermore, by exploiting the association between the component parts of Astec Power, it falsely represents that the Domain Name and the web pages associated with it are owned by a component part of Astec Power.

7.23. The Policy is quite clear that Abusive Registration means a Domain Name that "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 has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights".

7.24. The Respondent has not made a response and so has not offered any alternative and reasonable explanation as to why the Domain Name was acquired or why it was used in the way it was. It may be that under the threat of potential criminal charges it is impossible for her to do so, however I am free to draw the inference that in these circumstances there is no possible alternative reasonable explanation.

7.25. In this instance, and in these circumstances, it is my opinion that the Domain Name was acquired, and the associated web pages were designed, in order to be an "instrument of fraud", and in that way are unfair under the Policy. It may be that the Respondent is an unwitting dupe in the alleged fraud, however under the circumstances it is clearly iniquitous to leave the Domain Name in her hands.

7.26. I therefore find that the Complainant has established to my satisfaction that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8. Decision:

8.1. For the reasons set out above I find that the Complainant has established that it has Rights in respect of a name or mark which is identical or similar to the Domain Name and I find that the Domain Name in the hands of the Respondent is an Abusive Registration.

8.2. I therefore Determine that the Domain Name should be transferred to the Complainant.

28^th July 2006

Iain M. Tolmie ("the Expert")