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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Danish Dairy Board v Chao Investments Ltd [2007] DRS 4353 (9 March 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4353.html Cite as: [2007] DRS 4353

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The Danish Dairy Board -v- Chao Investments Limited Nominet UK Dispute Resolution Service DRS 04353 The Danish Dairy Board and Chao Investments Limited Complaint Reference Number 5017 Decision of Independent Expert

1. PARTIES:

Complainant: The Danish Dairy Board

Denmark

Respondent: Chao Investments Limited

New Zealand

2. DOMAIN NAME:

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

3. PROCEDURAL BACKGROUND:

3.1. A hard copy of the Complaint was received in full by Nominet on 11 January 2007. Nominet validated the Complaint and notified the Respondent of the Complaint.

3.2. No Response was received from the Respondent and therefore informal mediation was not possible. On 20 February 2007 the Complainant paid the fee to obtain the Expert Decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service ("the Procedure").

3.3. On 20 February 2007, Nick Phillips, the undersigned ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4. OUTSTANDING FORMAL/PROCEDURAL ISSUES:

4.1. The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

4.2. Paragraph 15(b) of the Procedure provides, inter alia, that "If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint".

4.3. Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. Consequently, there do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.

5. THE FACTS:

5.1. The Complainant is The Danish Dairy Board

5.2. The Respondent is Chao Investments Limited. The Domain Name was first registered on 19 January 2006 by a Mr R. Morrison and subsequently transferred to the Respondent some time between May and December 2006

5.3. The Complainant is the central organisation of Danish Dairy Companies. Its role includes safequarding a number of common interests in Denmark and abroad in relation to national and international dairy policies, particularly EU policies.

5.4. The Complainant first registered the Lur Brand in 1901 and the brand has since been used in Denmark and abroad. The Complainant and its subsidiaries and affiliates are the registered proprietors of a number of trade marks worldwide. These include US trade mark no. 2638403, for the device mark LURPAK registered with effect from 22nd October 2002, US trade mark no. 875725 for the word mark LURPAK registered with effect from 24 January 1995, UK trade mark no. 821079, for the word mark LURPAK which has a filing date of 23rd May 1961, and Canada trade mark registration no. TMA425127 also for the word mark LURPAK dated 25 August 1993.

5.5. The Domain Name is currently being pointed towards a web page which is headed up, "lurpackbreakfast.co.uk," which contains various links to cheap airplane tickets, accommodations, jobs, flowers, digital cameras, dating and music.

5.6. The Respondent has been found to have made an Abusive Registration in at least five earlier Dispute Resolution Service Cases within the last two years. These are DRS complaint numbers 04323, 04297, 04271, 04253, 04219.

1. THE PARTIES' CONTENTIONS:

The parties' contentions can be summarised as follows:

Complainant

6.1. In its Complaint, the Complainant makes the following submissions:

6.1.1. The Complainant has rights in the Domain Name because it first registered the Lur Brand in 1901 and the brand has since been highly incorporated in Denmark as well as abroad. Today LURPAK is a well-known trade mark and the LURPAK products are sold world-wide. The Danish Dairy Board is the rightful owner of registrations containing the word LURPAK in a very large number of countries. The Danish Dairy Board is also the owner of a large number of domain names, containing the words "lurpack" and lurpakbreakfast. The domain names lurpakbreakfast.com and lurpakbreakfast.co.uk were first registered by the Complainant on 4 April 2005.

6.1.2. There is no relationship between the parties and the Complainant

has never had any dealings with the Respondent;

6.1.3. By registering the Domain Name the Respondent is infringing the Complainant's intellectual property rights.

6.1.4. The registration constitutes an obvious case of "typosquatting" in relation to the Complainant's trade marks and domain names by attempting to profit by the misspelling of "lurpakbreakfast.co.uk by internet users.

6.1.5. The Respondent has no rights to or legitimate interest in the domain name in question what so ever.

6.1.6. Only the Danish Dairy Board has a legitimate interest in using the esteemed trade mark LURPAK.

6.1.7. The Complainant's representatives first contacted Mr R Morrison on behalf of the Complainant in May 2006 asking the then owner of the Domain Name to transfer the Domain Name to the Complainants. No answer was received. Mr R. Morrison has now transferred the ownership of the Domain Name to the Respondent. The Complainant has tried to contact the Respondent by email and by letters but has heard nothing from the Respondent.

2. DISCUSSIONS AND FINDINGS

General

7.1. Under paragraph 2 of the Dispute Resolution Service Policy ("the Policy") the Complainant is required to show, on the balance of probabilities that:

(1) It has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(2) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

7.2. The first question I must answer is therefore whether the Complainant has proved on the balance of probabilities that it owns Rights in a name or mark that is identical or similar to the Domain Name.

7.3. The Policy defines Rights as including but not being limited to, "…rights enforceable under English laws…". This has always been treated in decisions under Nominet's DRS as a test with a low threshold to overcome and I think that must be the correct approach.

7.4. The Complainant has provided evidence of its use of the Lur brand and in particular the name LURPAK dating back some years, and it is also common knowledge that LURPAK is an extremely well known name in the dairy industry particularly in relation to butter. Additionally, the Complainant holds registered trade marks in the name, LURPAK, all of which go back several years. The Complainant has also registered and uses the domain names lurpakbreakfast.com and lurpakbreakfast.co.uk to link to its website.

7.5. In the circumstances I have no difficulty in finding that the Complainant has Rights in the name "LURPAK". By virtue of its use of the domain names lurpakbreakfast.com and lurpakbreakfast.co.uk I also think that, on the balance of probabilities, it has Rights in the name LURPAKBREAKFAST.

7.6. Ignoring the first and second level suffixes, as I must do, I must now decide whether the names in which the Complainant has Rights, i.e. "LURPAK" and LURPAKBREAKFAST are identical or similar to the Domain Name i.e. "lurpackbreakfast". Taking first the name LURPAK. This is unquestionably a strong and well known brand. The Respondent's use of the name LURPAKBREAKFAST differs only in the addition of the letter "C" as the penultimate letter and by the addition of the word "BREAKFAST". I do not think that either change the overall character of the name because it is the brand name LURPAK (however it is spelt and particularly where it is a common misspelling as in this case) which has the distinctive qualities in this combination. I therefore have no doubt that the word LURPACKBREAKFAST is similar to the mark LURPAK. Applying the same reasoning I also have no doubt that the name or mark LURPAKBREAKFAST, in which the Complainant also has Rights, is similar to LURPACKBREAKFAST.

Abusive Registration

7.7. Having concluded that the Complainant has Rights in a name which is identical or similar to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration. An Abusive Registration is defined in the Policy as a Domain Name which either:

(a) 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

(b) has been used in a manner which took unfair advantage of, or was unfairly detrimental to the Complainant's Rights.

7.8. This definition allows me to consider whether a Domain Name constitutes an Abusive Registration at any time and not, for example, just the time of registration / acquisition.

7.9. Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may evidence that a domain name is an Abusive Registration. It is worthwhile setting out paragraph 3 of the Policy in full:

"3. Evidence of Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B as a blocking registration against a name or mark in which the Complainant has Rights; or

C for the purpose of unfairly disrupting the business of the Complainant;

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;

iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv. It is independently verified that the Respondent has given false contact details to us; or

v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A has been using the domain name registration exclusively; and

B paid for the registration and / or renewal of the domain name registration.

b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.

c. There shall be a presumption of Abusive Registration if the complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the complaint was filed. This presumption can be rebutted."

7.10. The Respondent has been found to have made an Abusive Registration in three or more Dispute Resolution Service cases in the last two years. These cases are as follows:

Respondent	Case No.	Domain Name	Decision
Chao Investments Limited	DRS 04323	morganandstanley.co.uk	Transfer
Chao Investments Limited	DRS 04297	hotwheels.co.uk	Transfer
Chao Investments Limited	DRS 04271	wynsors.co.uk	Transfer
Chao Investments Limited	DRS 04253	papermillshop.co.uk	Transfer
Chao Investments Limited	DRS 04219	jhdonald.co.uk	Transfer

7.11. Therefore, and in accordance with the provision of Paragraph 3c of the Policy, there is a presumption of Abusive Registration against the Complainant. This presumption may be rebutted; for example, by the Respondent making out one of the non-exhaustive list of factors which may evidence that Domain Name is not an Abusive Registration and which are set out in Paragraph 4. In this case, however, the Respondent has not filed a Response and the presumption has not been rebutted.

7.12. I therefore find that, pursuant to Paragraph 3c of the Policy, the Domain Name constitutes an Abusive Registration in the hands of the Respondent. Having reached this conclusion I do not need to go on to look at whether the Complainant has established whether the Respondent was guilty of an Abusive Registration for any other reason including under one of the non-exhaustive list of factors set out in Paragraph 3a of the Policy or otherwise.

3. DECISION

8.1. I find that the Complainant has proved on the balance of probabilities that it has Rights in a name or mark which is identical or similar to the Domain Name and that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore decide that the Domain Name should be transferred to the Complainant.

……………………………..

NICK PHILLIPS

9 March 2007