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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Babette Wasserman Ltd v Aimpro UK Ltd [2007] DRS 4291 (2 February 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4291.html Cite as: [2007] DRS 4291 |
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Decision of Independent Expert
Complainant: Babette Wasserman Ltd
Country: GB
Respondent: Aimpro UK Ltd
Country: GB
babette-wasserman.co.uk and babettewasserman.co.uk
On 12/12/2006 the Complainant lodged the Complaint online with Nominet and on 13/12/2006 the hard copy of the Complaint with its enclosures was received. Copies of the Complaint were sent to the Respondent by post and to two email addresses on 13/12/2006. The email to [email protected] returned a "delivery failure" message as an unknown address. The Response was due by 09/01/2007 but no response was received from the Respondent to the postal copy or to the email copy sent to [email protected]. Mediation was therefore not possible.
The Complainant was informed of the failure of the Respondent to respond and had until 24/01/2007 to pay the fee for the appointment of an expert. The payment deadline was then extended until 29/01/07. On that day the Complainant made a credit card payment of the fee but the payment was not received by Nominet until the following day, one day after the deadline. On 02/02/2007 Mr. Chris Tulley was selected as the Expert
The only issue is in relation to the date of payment by the Complainant of the fee for the appointment of an expert.
Paragraph 21 of the DRS Procedure states that "If we [Nominet] have not received the fees from the Complainant as set out in paragraph 21(a) above within ten (10) Days of receipt by the Complainant of notice from us that an Expert is to be appointed under paragraphs 5(d), 7(e) or 15(a)(ii) we will deem the complaint to be withdrawn."
Whislt the fee was paid by the Complainnat by credit card on the last day of the extended deadline, it was not actually recived by Nominet until the following day. However, under paragraph 12a of the DRS Procedure the Expert may, in exceptional cases, extend any period of time in proceedings under the Dispute Resolution Service. As the Complainant made the paymnet by credit card within the extended deadline and the receipt of the payment by Nominet was only one day outside the deadline, I will extend the deadline by one day under paragrah 12a.
The Complainant has traded since 1997 selling jewellery under the name Babette Wasserman Limited, the name also being the personal name of the owner of the business, Babette Wasserman. The Complainant has also had a UK registered trade mark for BABETTE WASSERMAN covering jewellery and other associated goods since 11 May 2000.
The Domain Names babette-wasserman.co.uk and babettewasserman.co.uk were registered by the Respondent on 16 May 2006 and have resolved to a website advertising its web design business called Aimpro UK. The Respondent also registered babettewasserman.com which resolved to a website claiming to be the Complainant's business, offering diamond engagement rings with the claim "Hi, I'm Babbette Wasserman, Top Jewellery Designer for the last 4 years running. All my jewellery is custom made".
The Respondent also received an order from one of the Complainant's customers sent by mistake to the Respondent's website at www.babettewasserman.com. The Respondent forwarded this to the Complainant, along with a request saying "I would love to hear from you regarding the possibility of commission for future orders sent to yo [sic] via my website, as well as this one. I believe the going rate is 10%. I look forward to hearing from you."
In summary the Complainant says that:
• The Complainant has rights in the Domain Names because:
o It is registered at Companies House under the name Babette Wasserman Ltd.
o Babette Wasserman has been the personal name of the owner of the Complainant since birth.
o Babette Wasserman is an extremely unusual name and an important part of the Complainant's identity.
o The Complainant is a well-known jewellery company who designs and exports products to shops all over the world.
o There is no justification for the Respondent to use the Babette Wasserman name for the purpose of operating a misleading website.
o The Complainant has traded under the name Babette Wasserman since 1997.
o The Complainant has a registered UK trade mark for BABETTE WASSERMAN number 2232217 filed on 11th May 2000.
• The Domain Names are, in the hands of the Respondent, abusive because:
o It is unfairly disrupting the Complainant's business as it misleads existing clients and prospective clients who are searching for the Complainant on the internet and get the Respondent's Aimpro website instead.
o The Respondent's other website at www.babettewasserman.com is a site selling jewellery that says: "Hi, I'm Babbette Wasserman, Top Jewellery Designer for the last 4 years running. All my jewellery is custom made". The Complainant acknowledges that Nominet does not deal with .com website disputes but says that this shows how deceitful the Respondent is.
o The Domain Names have been registered for the purposes of gaining the Complainant's jewellery clients and directing them to their Aimpro business instead. Several clients have been misled.
o The Respondent has even had the audacity to suggest 'the possibility of commission for future orders sent to you via my website' which is clear evidence of the Respondent wanting to gain business and money from the Babette Wasserman name and ruining the Complainant's reputation.
o The Complainant's clients and internet users are being confused into believing that the Respondent's website is the Complainant's official website.
o The Complainant derives a substantial amount of business from its website and the Respondent's conduct could be causing substantial loss.
o The Respondent is passing itself off as Babette Wasserman and Babette Wasserman Ltd.
The Respondent has not responded to the Complaint.
General
In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:
These terms are defined in the Nominet UK DRS Policy as follows:
• Rights include, 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 ample evidence of its Rights in the name "Babette Wasserman" having exhibited details of its trade mark registration and samples of its headed notepaper, goods and marketing materials all bearing the Babette Wasserman name. I find that the Complainant does have Rights in the name BABETTE WASSERMAN, being a name or mark which, ignoring the .co.uk suffix in both Domain Names and the hyphen in babette-wasserman.co.uk, is identical to the Domain Names.
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:
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."
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."
It seems clear that the Domain Names are, in the hands of the Respondent, Abusive Registrations. The Respondent has chosen not to respond to the Complaint and I can draw adverse inferences from that failure where, as in this case, the Domain Names incorporate an inherently distinctive name and there appears to be no plausible reason for the Respondent to have registered the Domain Names.
The registration of the Domain Names act as a block to the Complainant's ability to register them. The Domain Names have been used by the Respondent to resolve to a website advertising the Respondent's web design business. Whilst that is not the same as or similar to the Complainant's jewellery business, it is almost inevitable that the Complainant's customers will be confused if they are trying to find the Complainant's website at www.babette-wasserman.com and end up at the Respondent's Aimpro UK web design website at www.babette-wasserman.co.uk or www.babettewasserman.co.uk.
In addition, the Respondent has registered babettewasserman.com and used this to resolve to a website that pretends to be the Complainant's business. At least one customer has placed an order via that website which was intended for the Complainant. Whilst the Respondent forwarded the order to the Complainant with an email claiming this was being done because the Respondent was "wanting to act in a professional manner" the Respondent also raised the issue of commission being paid to it for that order and any future orders received via the website.
Whilst the Nominet DRS does not deal with .com domain names, the Respondent's behaviour in relation to this misplaced customer order does give a clear indication of why the Respondent registered that domain name or, at the very least, shows that the Respondent was more than willing to take unfair advantage of, and to profit from, the customer's confusion at the expense of the Complainant. In the absence of any other plausible explanation I believe I am entitled to conclude that the Respondent registered the equivalent .co.uk Domain Names for the same purposes, and that those purposes are abusive.
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 BABETTE WASSERMAN being a name or mark which is identical or similar to the Domain Names, and that the Domain Names, in the hands of the Respondent, are Abusive Registrations.
In the circumstances I order that the Domain Names be transferred to the Complainant.
Chris Tulley
12 February 2006
