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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Timberland Flooring Services Ltd v Classic Wood Flooring [2006] DRS 3772 (10 August 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3772.html Cite as: [2006] DRS 3772 |
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Complainant:
Timberland Flooring Services Ltd
UK
Respondent:
Classic Wood Flooring
UK
A Complaint in respect of
On 17 July 2006 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). The Complaint was referred for a decision by an Independent Expert following payment by the Complainant of the required fee on 18 July 2006. I was appointed as Independent Expert as of 25 July 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.
There are no outstanding formal or procedural issues.
The Complainant is a company specialising in the supply and installation of wood floors. It operates a website at www.timberland.co.uk.
According to the Nominet WhoIs database, the Domain Name was registered on 30 May 2000. At the date of the Complaint the Domain Name resolved to a holding page of Yell.com stating that the web address had been reserved for a Yell.com listed business and giving the name and address of the Respondent.
Complainant
In summary, the submissions on the part of the Complainant are as follows:
The Complainant and its predecessor Timberland Flooring Company Ltd ("TFC") have carried on business under the name Timberland Flooring for over 10 years. TFC was incorporated in February 1996 and went into liquidation in May 2004. The Complainant was incorporated in March 2004 and continued the business of TFC. In May 2006, the Complainant completed the formal purchase of the assets of TFC from the liquidators of TFC including stocks, goodwill and intellectual property.
TFC and the Complainant have continuously operated a website at www.timberland.co.uk since April 1998. Over the period since that date, TFC and the Complainant have spent in the order of £3,000,000 promoting the Timberland Flooring brand and their goods and services throughout the UK.
The Domain Name in the hands of the Respondent is an Abusive Registration because it amounts to passing off and the public would easily be confused or misled that when dealing with the Respondent they were dealing with the Complainant. The Respondent is seeking to benefit from the Complainant's considerable investment in its name and branding over 10 years.
Respondent
The Respondent has not filed any response to the Complaint.
General
Although the Respondent failed to submit a Response to the Complaint, there is no scope for a decision in default under the Policy and Procedure. Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non-compliance with the Procedure as I consider appropriate but the Complainant is still required under clause 2b of the Policy to prove to the Expert on the balance of probabilities that:
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.
Complainants' Rights
"Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law".
On the basis of the uncontroverted evidence filed by the Complainant, the Complainant and its predecessor TFC have carried on business under the distinctive name "Timberland Flooring" for over 10 years and very substantial sums have been spent over that period on the promotion of the business under that name. I am satisfied on the basis of this evidence that as a result of the promotional and trading activity, the Complainant has established such goodwill and reputation in the name Timberland Flooring as would be sufficient to provide the basis of a claim in passing off under English law. Accordingly, as at the date of the Complaint, I am satisfied that the Complainant had rights in the name TIMBERLAND FLOORING which, ignoring the ".co.uk" suffix, is identical to the Domain Name.
Abusive Registration
Paragraph 1 of the 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.
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:
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;
At the date of the Complaint and at the date of this decision, the Domain Name resolved to a holding page of Yell.com which is the Internet presence of Yellow Pages. The page states that:
This is a reserved web address
The following Yell.com listed business has not yet published a website at this web address. You may wish to contact them using their details below.
The page then gives the name of the Respondent, Classic Wood Flooring, its address and a telephone number.
In the absence of a Response to the Complaint, there is no explanation from the Respondent as to its reasons for registering the Domain Name or any justification for its use of the name Timberland Flooring. I infer from the name of the Respondent that it is also in the flooring business. Internet users who guess the website address of the Claimant as www.timberland-flooring.co.uk will be taken to the Yell.com web page giving the name of the Respondent and its address and telephone number. There is therefore a likelihood that people or businesses have been or will be confused into believing that the Respondent business is in some way connected with the Claimant and that the Domain Name is therefore authorised by or in some way connected with the Claimant.
In the circumstances, I find on the balance of probabilities that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.
Accordingly, I find, on the balance of probabilities, that the Complainant has Rights in a name which is identical to the Domain Name and that in the hands of the Respondent the Domain Name is an Abusive Registration. I therefore determine that the Domain Name be transferred
to the Complainant Timberland Flooring Services Limited.
Ian Lowe
10 August 2006
