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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Bencom SRL v Mahmoud [2006] DRS 4184 (20 December 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4184.html Cite as: [2006] DRS 4184

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NOMINET UK DISPUTE RESOLUTION SERVICE

DRS 04184

DECISION OF INDEPENDENT EXPERT

Bencom S.r.l v Y Mahmoud

1. Parties

Complainant : Bencom S.r.l

Country : IT


Respondent : Y Mahmoud

Country : GB

2. The Domain Name

benetton.co.uk

3. Procedural Background

3.1 On 3 November 2006 the Complaint was lodged with Nominet in accordance with the Nominet UK Dispute Resolution Service Policy ("the Policy"). Hard copies of the Complaint and its attachments were received in full by Nominet on 7 November 2006.

3.2 On 8 November 2006 Nominet validated the Complaint. On the same day it sent a copy of the Complaint to the Respondent, and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service ("the Procedure") had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.

3.3 By 1 December 2006 no Response had been received from the Respondent by Nominet and the Complainant was advised accordingly. 

3.4 On 14 December 2006 the relevant fee was received by Nominet from the Complainant in order for the matter to be referred to an independent expert for a decision.

3.5 On 14 December 2006 Bob Elliott was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the Procedure.

4. Outstanding Formal/Procedural Issues

4.1 None.

5. The Facts

5.1 The Complainant is a Company incorporated in the Republic of Italy, and described as "a sole shareholder's company coordinated and directed by Benetton Group S.p.A". Benetton Group S.p.A was established in 1965 as a partnership by the Benetton family in Ponzano Benneto, Italy. Although originally owned by the Benetton family, in more recent years shares have been offered to the public.

5.2 The Benetton companies now operate in 120 countries around the world, with well-established clothing brands, such as the casual United Colors of Benetton, the fashion-oriented Sisley, Playlife for leisurewear, and Killer Loop streetwear brands.

5.3 The Complainant itself is the registered holder of the trade marks involved.

5.4 The Benetton companies produce around 115 million garments every year, with a network of 5,000 retail outlets around the world. The Benetton Group is listed on the Milan, Frankfurt and New York stock exchanges. It is active in the United Kingdom through around 40 Benetton stores.

5.5 The Benetton Group's annual turnover worldwide is approximately €1.8 billion. In the United Kingdom the volume of sales of Benetton marked goods has exceeded €10 million in each of the years since 2000 (and in some years has exceeded €20 million).

5.6 The trade mark BENETTON is used in most of the countries of the world, including the United Kingdom, and is supported by an intensive advertising campaign. The Complainant has also been long involved in a series of cultural and sporting activities, including being involved for a number of years in running a Formula One racing team.

5.7 As regards advertising spend in the United Kingdom alone, the Benetton Group spent in excess of €1 million in both 2002 and 2003, with a smaller (but nevertheless very significant) advertising spend in 2004 and 2005.

5.8 In addition to clothing, the Benetton Group also produces and distributes ancillary products, such as footwear, accessories, perfumes, and watches (amongst others).

5.9 The Complainant is the owner of, inter alia, trade mark registrations incorporating the mark BENETTON in the United Kingdom since as early as 1977 (copies of the marks being attached to the Complaint), as well as other BENETTON trade marks all over the world.

5.10 The Complainant is also the registered owner of many domain names incorporating the mark BENETTON, such as benetton.com, benetton.eu, benetton.it, and a number of other country-specific domains.

5.11 The Domain Name was registered by the Respondent on 24 August 2003. The Complainant says that the Respondent registered the Domain Name, without its authorisation, and says that the Respondent is not the licensee, or an authorised agent of the Complainant, or in any other way authorised to use to the trade mark BENETTON.

5.12 It would appear that the only use of the Domain Name of which the Complainant has been aware is in relation to a link to what is described as a "free holding page" at uk2.net. The Complainant exhibits printouts of that holding page from February 2006, and from 18 October 2006, the latter of which appears to be the same as the page to which the Domain Name linked at the time of the Complaint itself. No evidence is provided as to any earlier use of the Domain Name. The free holding page advertises uk2.net's products and services.

5.13 The Complainant's authorised representative was apparently instructed to approach the Respondent requesting that the Respondent should cease to use, and transfer the Domain Name to the Complainant, "as soon as the Complainant became aware of such a registration". The documents provided by the Complainant with the Complaint suggest that the first investigations by the Complainant were, in fact, in 2005, but in the event, a "cease and desist" letter was first sent to the Respondent on 2 February 2006, followed by a reminder on 10 August 2006. Both letters were sent by registered mail and email. The registered mail letters appear to have been returned to the sender undelivered. The Complainant then appears to have instructed a firm of enquiry agents to attend at the Respondent's address on three occasions, on 12 August 2006 (twice) and 15 August 2006. On the last of those occasions, the enquiry agents identified an individual, who would not give his name. The individual indicated that he was not Mr Mahmoud, and that no person called Y Mahmoud was currently living at the address. He did, however, explain that he was the son of the owner of the house, who was presently "on holidays at "home" in Egypt".

6. The Parties' Contentions

Complainant's Submissions

Rights

6.1 The Complainant has supplied extensive evidence of its registrations of trade marks containing the name BENETTON, and of its use and promotion of that mark, both in the United Kingdom and elsewhere in the world as evidence of its Rights under the Policy.

6.2 The Complainant says that the Domain Name is identical to the BENETTON mark, of which it is the proprietor.

Abusive Registration

6.3 The Complainant refers to the Respondent's absence of any authority from it to use the BENETTON trade mark, or to register the Domain Name, and in addition the Respondent's failure to provide it with any evidence of its use of, or demonstrable preparation to use the Domain Name in connection with a genuine offering of goods or services before any notice of the dispute.

6.4 The Complainant therefore concludes that the registration by the Respondent of the Domain Name, being identical to the registered trade mark of the Complainant, "is impeding the Complainant from reflecting under the top level .uk one of the most important trade marks for the Complainant's group".

6.5 The Complainant says that the Respondent is not making legitimate or fair use of the Domain Name, and refers as evidence of that to the pointing of the Domain Name to the free holding page at uk2.net. The Complainant refers to the free holding page as promoting the services of uk2.net (which appears correct), and "at the same time, offering the dome for sale" (although the Expert is not able to see from the evidence provided by the Complainant that there was in fact any such offer made).

6.6 The Complainant states that registering the Domain Name for the purpose of selling the Domain Name to the highest bidder, whilst itself not illegitimate, becomes potentially objectionable where the name is question is both very unusual and virtually indistinguishable from the trade mark of a market leading company very well known in its field. In such circumstances, in the absence of an obvious justification for the Respondent's choice of Domain Name, inevitably there has to be a suspicion that the Domain Name was registered with the trade mark owner in mind. The Complainant suggests that the Respondent must have had the intention of profiting from the use of the well known trade mark BENETTON, or that the Respondent would have intended to pass himself off as part of the Complainant, or to pass off the Complainant's products for his own.

6.7 The Complainant also states that internet users will be attracted to the Respondent's website by the Complainant's well known trade mark, and may be misled into believing that the Complainant offers the Domain Name for sale or has authorised the Respondent to do so.

6.8 Finally, referring to the fact that none of the correspondence addressed to the postal address given by the Respondent was claimed by the Respondent at the post office, and on the basis of the report provided by the enquiry agents, the Complainant believes that it has demonstrated that the Respondent has registered the Domain Name in bad faith, by voluntarily providing an incorrect name and address details.

6.9 The Complainant requests that the Domain Name is transferred to itself.

Respondent's Submissions

6.10 The Respondent has not filed a Response.

7. Discussion and Findings:

General

7.1 In order to succeed in these proceedings, paragraph 2.b of the 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 namely 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.

Complainant's Rights

7.2 The Complainant has clearly established that it has a significant reputation and goodwill in the United Kingdom in the use of the mark BENETTON which is identical to the Domain Name. The Expert therefore finds that the Complainant has succeeded in establishing the first element of the test as set out in paragraph 2.a.i of the Policy.

Abusive Registration

7.3 There is no attempt by the Respondent to explain its registration of the Domain Name. Although the onus is on the Complainant to prove that both elements of paragraph 2.a of the Policy are present on the balance of probabilities, in the absence of a Response from the Respondent, the Expert may draw such inferences from the absence of a Response as he or she considers appropriate (paragraph 15.c of the Procedure).

7.4 There is no doubt that, at the time the Domain Name was registered, the BENETTON trade mark was very well known in the United Kingdom, and elsewhere. It seems inconceivable, therefore, that the Respondent in registering the Domain Name, cannot have been aware of the Complainant. The name BENETTON is an unusual one and a name of which English-speakers would not normally be aware, other than by association with the Complainant's products.

7.5 The Complainant has referred to the absence of any connection between in and the Respondent, which the Respondent has not disputed (having not filed a Response).

7.6 However, at the same time, the Expert is not able to accept unconditionally a number of the Complainant's assertions. Although uncontradicted, a number of the Complainant's assertions appear to be largely unsupported by the evidence filed by the Complainant with the Complaint.

7.7 The Complainant has not specifically referred to the non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration set out in paragraph 3.a. of the Policy. However, the Expert proposes to address the Complainant's arguments, by reference to such of those factors as appear to him to be those relied upon.

7.8 The Complainant refers to the registration of the Domain Name as "impeding it" from "reflecting under the top level .uk one of the most important trade marks for the Complainant's group". The Expert takes this to be an assertion 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.B of the Policy). However, there is no evidence that the Respondent has indeed "blocked" the Complainant, nor indeed any evidence as to the Respondent's intentions. The Expert notes that the Domain Name was first registered on 24 August 2003, but that the Complainant did not feel it necessary to send a "cease and desist" letter until February 2006. This hardly suggests that the Complainant was, in fact, "blocked".

7.9 The Complainant also asserts that internet users will be attracted to the Respondent's website via the Complainant's well-known trade mark, and may be misled into believing that the Complainant offers the Domain Name for sale or has authorised the Respondent to do so. This appears to the Expert to be an attempt to rely upon paragraph 3.a.ii of the Policy ("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"). However, there is no "offer for sale" that the Expert can see upon the free holding page in question. The holding page promotes uk2.net's products and services, and not those of any other party. The only "confusion" would be the "initial interest" confusion arising from an internet user typing in the Domain Name, probably expecting to see the Complainant's UK operations, but instead finding something entirely different.

7.10 The Complainant also says that the Respondent has "registered the Domain Name in bad faith, voluntary (sic) providing incorrect name and address details" (which the Expert assumes is an attempt to rely upon paragraph 3.a.iv of the Policy – "It is independently verified that the Respondent has given false contact details to us"). Although the letters sent by the Complainant to the Respondent have been returned, and the Complainant's enquiry agents have been unable to identify a Mr Y Mahmoud as currently living at the address given, the enquiry agent's report falls some way short of establishing that Y Mahmoud has no connection with the address in question. All the enquiry agent's report appears to establish is that the agents spoke to someone at the property who indicated "that he was not Mr Mahmoud and that no person called Y Mahmoud was currently living at that address". That individual then refused to provide his name and telephone number, although explaining that he was the son of the owner of the house who was in Egypt. Although no Response has been filed contesting the Complainant's assertions, in this case it is not clear to the Expert that the Complainant has provided the necessary independent verification that the contact details are, in fact, false.

7.11 Nevertheless, despite the Expert's misgivings as to a number of the submissions made on the Complainant's behalf, the Expert does agree with the Complainant that this is a case where the Respondent has chosen to register a domain name containing a name which is both very unusual and indistinguishable from the trade mark of a market leading company, which is very well known in its field. The name is used without any adornment. Unless there is an obvious justification for the Respondent's choice of domain name, there has to be suspicion that the Domain Name was registered with the Complainant in mind. In the circumstances, it seems to the Expert to be impossible to avoid the conclusion that, in the absence of any explanation from the Respondent, the Respondent must have had in mind one of the three purposes set out in paragraph 3.a.i. of the Policy (in summary, selling for in excess of out-of-pocket costs, as a blocking registration, or to unfairly disrupt the Complainant's business). The Expert does not believe that it is incumbent upon the Complainant to establish that one or other of those three grounds has specifically been made out (the nature of the evidence in this case means that it is inherently difficult for the Complainant to do so, where the Domain Name is just "parked" and where there has been no communication of any kind from the Respondent either before or during the DRS proceedings). The Expert believes that this is therefore a case where it is legitimate for him to come to the conclusion that there can be no explanation for the Respondent to have registered the Domain Name, other than for one or more of the three purposes set out in paragraph 3.a.i of the Policy, and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.

8. Decision

8.1 The Expert finds that the Complainant has Rights in the name or mark BENETTON, which is identical to the Domain Name. The Expert further finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.2 The Expert therefore decides that the Domain Name should be transferred to the Complainant.

Bob Elliott

20 December 2006