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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Lutron Electronics Co Inc v Hardyment [2006] DRS 4038 (15 November 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4038.html Cite as: [2006] DRS 4038 |
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Complainant: Lutron Electronics Co Inc
Country: US
Respondent: Ben Hardyment
Country: United Kingdom
lutron.co.uk (referred to as the "Domain Name").
The Complaint was submitted to Nominet on 21st September 2006 and hard copies of the Complaint were received in full by Nominet on 27th September 2006. On 28th September 2006, the Complaint was validated by Nominet. On the same day, the Complaint was sent to the Respondent, by post, to the address shown for him in the Register entry. The Respondent was informed that he had 15 working days, that is, until 20th October 2006, in which to respond to the Complaint.
The Respondent did not file a response and so mediation was not possible. On 23rd October 2005, Nominet wrote to the parties regarding the appointment of an expert. On 31st October 2006, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").
Antony Gold, the undersigned, ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept Nominet's invitation to him to act as an Expert in this case.
On 1st November 2006, Antony Gold, was appointed as the Expert.
No response
The Respondent failed to submit a formal response to Nominet within the time stipulated in paragraph 5a of the Nominet UK Dispute Resolution Service Procedure (the "Procedure"). Paragraph 15b of the Procedure states that where a party (in the absence of exceptional circumstances) does not comply with any time period laid down in the Policy or the Procedure, the Expert will decide the dispute based upon the Complaint. Paragraph 15c of the Procedure states that if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or the Procedure, the Expert will draw such inferences from the party's non-compliance as he or she considers appropriate. The Expert is not aware of any exceptional circumstances. In the circumstances, the Complainant's assertions of fact are unchallenged by the Respondent and have been accepted by the Expert unless otherwise indicated.
The Complainant is the owner of a Community Trade Mark Registration, Number 1894716, for LUTRON, which was registered on 11th March 2002. It has also had a UK trade mark registration for LUTRON SINCE 1970. The Complainant says there has been extensive use and reputation of the mark across America, Europe and Asia in relation to lighting control apparatus. It says that sales of goods by it marked LUTRON in the UK alone in 2005 amounted to £10 million. There is a website operated by the Complainant at www.lutron.com.
The Domain Name was registered by the Respondent on 13th February 2006. On 30th March 2006 a person (seemingly anonymously but evidently acting for the Complainant) wrote to the Respondent asking if he would agree to sell the Domain Name. The Respondent replied indicating that it would do so on certain terms and claimed that "it attracts considerable traffic with projected revenues of between $1000-$3000 per year". The Complainant subsequently offered £500 for the Domain Name but the Respondent withdrew its offer to sell it. Extracts from the site at the Domain Name have been provided. These show that the site is being used as a directory page. There appear to be links to a number of companies which seem to be competitors of the Complainant. There is a notice at the top of the links "lutron.co.uk is currently parked. please try one of these sponsored links". The site appears to contain at least one other trade mark (RANIA) of the Complainant in the body of the sponsored links. There is an invitation to submit offers for the domain name.
Complainant
The Complainant asserts extensive rights in the word LUTRON as set out in section 5 above. The Complainant says that the mark is highly distinctive as the word is invented and has no known meaning.
The Complainant says that it has no relationship with the Respondent, which has never been authorised to use the Complainant's marks or domain names. It says the registration of the Domain Name by the Respondent was in bad faith as there was no obvious reason why an obvious and distinctive term such as LUTRON would be required by the Respondent. The Complainant says that by indicating that he would not sell the Domain Name to a company that asserts intellectual property rights in the domain name, this is a good indication that the Respondent is cybersquatting. The Complainant points out that the use made by the Respondent of other marks of the Complainant shows that the Respondent clearly had the Complainant in mind when it used the site at the Domain Name.
The Complainant says that the only inference to draw from the above is that the Respondent originally registered the Domain Name in order to hold it until the Complainant made an offer for it, that is for the purpose of selling or renting it to the Complainant.
Respondent:
As indicated above, the Respondent has made no formal response to, and raised no challenge to, any of the facts and statements submitted by the Complainant in the Complaint.
In order to succeed, the Complainant must prove, on the balance of probabilities that:
(i) it has Rights in respect of a name or mark which is identical or similar to the Domain Name (paragraph 2 (a)(i) of the Policy); and
(ii) the Domain Name in the hands of the Respondent constitutes an Abusive Registration (paragraph 2 (a)(ii) of the Policy).
The Complainant's Rights:
The definition of "Rights" for the purposes of the Policy covers rights including but not limited to rights enforceable under English law.
In the light of the evidence provided of trade mark registrations coupled with evidence of the extensive promotion it has undertaken, the Expert is satisfied that the Complainant has rights in the word LUTRON. It is accepted practice to disregard the .co.uk suffix for the purpose of comparing the word in which the Complainant has rights with the Domain Name. Accordingly, it is found that the Complainant has Rights in a name or mark which is identical to the Domain Name.
Abusive Registration:
The Dispute Resolution Service rules defines an 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 Policy contains a non-exhaustive list of factors which may be evidence that the Domain Names amount to an Abusive Registration.
The Expert accepts the thrust of the Complainant's submissions in relation to Abusive Registration. In particular, there is no known reason as to why the Respondent would have registered and/or used the Domain Name other than to take advantage of the Complainant's rights. The Respondent does not have a bona fide business called LUTRON. His use of the Domain Name in order to host a directory page in which use is made by the Respondent of the Complainant's marks, including LUTRON and from which the Respondent has accepted a significant income derives falls squarely within the definition of Abusive Registration outlined above. Moreover, the solicitation of offers for the Domain Name coupled with the refusal to sell to any party who asserts rights in it is consistent with this finding. There is no available evidence which points in any other direction.
Accordingly, the Expert finds the registration of the Domain Name by the Respondent to be Abusive.
The Complainant has Rights in respect of the name LUTRON which is identical to the Domain Name and the Domain Name in the hands of the Respondent is an Abusive Registration.
In the light of the above, the Expert directs that the Domain Name be transferred to the Complainant.
Antony Gold
15th November 2006
