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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Bee v Chao Investments Ltd [2007] DRS 4555 (3 May 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4555.html Cite as: [2007] DRS 4555 |
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Nominet UK Dispute Resolution Service
DRS 04555
Butters John Bee v Chao Investments Limited
Decision of Independent Expert
Complainant: Butters John Bee
Country: GB
Respondent: Chao Investments Limited
Country: NZ
buttersjohnbee.co.uk ("the Domain Name")
The complaint was entered into Nominet's system on 15th March 2007. Nominet validated the complaint and sent a letter to the Respondent on the 20th March 2007, noting that the Dispute Resolution Service had been invoked and notifying the Respondent that it had until 11th April 2007 to submit a Response. No Response was received.
On 12th April 2007 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy Version 2 ("the Policy"). The fee was duly paid on 13th April 2007.
On 13th April 2007 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case, Nominet duly appointed me as Expert with effect from 20th April 2007.
None.
I accept as a fact that the Complainant, "Butters John Bee" is an established trading partnership providing various services in the area of residential and commercial property, auctioneering, mortgage and financial services. It was formed in or around 2001 as a result of a merger between two venerable property firms (Charles Butters and John A Bee, which had been in existence since 1856 and 1921 respectively), with the combined name "Butters John Bee" intended to retain the residual goodwill of the two earlier businesses.
I also accept that it has traded under the name "Butters John Bee" since February 2001 and has operated a website at www.buttersjohnbee.com.
The Nominet WHOIS search with which I have been provided indicates that the Respondent registered the Domain Name on 17th March 2004.
As at the date of the print-out of the Respondent's site with which I have been provided by Nominet, the URL http://www.buttersjohnbee.co.uk resolves to a page depicting a model house, and apparently offering services closely similar to the field of activity of the Complainant.
The Respondent has been found to have made Abusive Registrations in at least six previous DRS Decisions: lurpackbreakfast.co.uk (DRS 04353), morganandstanley.co.uk (DRS 04297), hotwheels.co.uk (DRS 04297), wynsors.co.uk (DRS04271), papermillshop.co.uk (DRS 04253) and jhdonald.co.uk (DRS 04219)).
Complaint
The Complaint contains submissions to the following effect:
The Complainant, "Butters John Bee" is an established trading partnership providing various services in the area of residential and commercial property, auctioneering, mortgage and financial services. It has traded under the name "Butters John Bee" since February 2001 and has operated a website at www.buttersjohnbee.com, which has been heavily promoted and publicised and is very successful. The website is particularly important to the business because over one million properties are viewed on it in a typical month and a substantial part of the Complainant's business is derived from revenue resulting from leads directly generated by the website.
Annexed to the Complaint is a selection of promotional and advertising material, and a DVD, showing use of the name "Butters John Bee" (often followed by superscripted initials: "butters john bee bjb").
The Complainant says that it has expended many thousands of pounds on developing, advertising and promoting itself and its website, in such publications as The Sentinel Newspaper, The Crewe Chronicle, The Congleton Guardian, The Leek Post & Times, The Stafford Newsletter, The Nantwich Guardian and Opening Doors Magazine.
The Complainant submits that, given the heritage of the firm and its distinctive name "Butters john Bee", it owns "Rights" within the terms of the Policy because it enjoys a substantial reputation and goodwill under its trading name.
The Domain Name in the hands of the Respondent is said to be abusive on the basis that:
- The purchase and use of the Domain Name was intended to cause confusion and was an attempt to cash in on the success, publicity and reputation of the Complainant's business. The use of the Domain Name constitutes passing off and as a result is damaging the Complainant's reputation and business.
- The use of the Domain Name is also unfairly disrupting the Complainant's business as its clients and the public in general are confused and misled. The Complainant regularly receives complaints with regard to the matter as they believe the site www.buttersjohnbee.co.uk is under the Complainant's control and yet the public are unable to view the properties, goods and services which they expect the Complainant's site to provide.
- This is one of a series of registrations that the Respondent has made which because of its number, type and pattern suggest that the Respondent is in the habit of making registrations of domain names in which it has no apparent interest (the Complainant cites DRS 04297, DRS 04297, DRS04271, DRS04253 and DRS 04219).
Finally the Registration said to be "automatically abusive because the Registrant has had five or more DRS cases against him in the last two years in which experts have found abusive registration".
Response
As noted above, the Respondent did not file a Response.
General
Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
Complainant's Rights
The Complainant must affirmatively prove on the balance of probabilities that it has Rights in respect of a name or mark which is identical or similar to the Domain Name, notwithstanding the failure by the Respondent to file a Response. The effect of the Respondent's default, under paragraph 15(c) of the Procedure, (there being no exceptional circumstances in this case) is that I may draw such inferences from the Respondent's non-compliance as I consider appropriate.
On the basis of the materials I have been supplied with, I am satisfied that the Complainant owns sufficient Rights in the designation 'BUTTERS JOHN BEE'. The designation enjoys a high degree of inherent distinctive character, and has clearly acquired a degree of further distinctiveness through use (albeit use which appears to be fairly regional rather than nationwide). The Complainant – and, to the extent that it may be thought to be relevant, its predecessors in business – had clearly traded on a substantial scale in the UK prior to the registration of the Domain Name and the submission of the Complaint.
I am further satisfied that the name BUTTERS JOHN BEE is effectively identical to the Domain Name buttersjohnbee.co.uk (ignoring, as I am required to do, the first and second level suffixes).
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.
The effect of the Respondent's failure to file a Response is different in relation to 'Abusive Registration' than it is in relation to 'Rights', due to paragraphs 3(c) and 4(c) of the Policy which provide as follows:
"3 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 (see paragraph 4 (c))."
"4 c. If paragraph 3(c) applies, to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration."
The Respondent has been found to have made an Abusive Registration in three or more Dispute Resolution Service cases in the two years before the Complaint was filed, namely:
Chao Investments Limited DRS 04353 lurpackbreakfast.co.uk
Chao Investments Limited DRS 04323 morganandstanley.co.uk
Chao Investments Limited DRS 04297 hotwheels.co.uk
Chao Investments Limited DRS 04271 wynsors.co.uk
Chao Investments Limited DRS 04253 papermillshop.co.uk
Chao Investments Limited DRS 04219 jhdonald.co.uk
Therefore the Respondent's failure to file a Response rebutting the paragraph 3(c) presumption has the effect of 'automatically' (as the Complaint puts it) rendering the Domain Name an Abusive Registration in the hands of the Respondent.
Having concluded that the Domain Name is an Abusive Registration, the Expert determines that the Domain Name, buttersjohnbee.co.uk, should be transferred to the Complainant.
Date May 3rd, 2007
Philip Roberts
