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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Beds Direct Nationwide Ltd v Edoco Ltd [2007] DRS 5125 (19 November 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/5125.html Cite as: [2007] DRS 5125

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NOMINET UK DISPUTE RESOLUTION SERVICE DRS 05125 DECISION OF INDEPENDENT EXPERT

1. Parties

Complainant : Beds Direct Nationwide Limited

Country : GB

Respondent : Edoco Limited

Country : GB

2. The Domain Name

heli-beds.co.uk

3. Procedural Background

3.1. On 9^th October 2007 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 11^th October 2007.

3.2. On 15^th October 2007 Nominet validated the Complaint. On the following 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. The envelope containing the hard copy of the Complaint was returned to Nominet on 18 October 2007 marked "refused". The email copy of the Complaint was also returned as undeliverable with a message "delivery expired (message too old) [Errno61] Connection refused". There is no sign that other subsequent communications were returned.

3.4. No response was received from the Respondent. On 8 November 2007 the Complainant paid the relevant fee to Nominet in order for the matter to be referred to an independent Expert for a Decision. On the same day Bob Elliott was selected and duly appointed as Expert.

4. Outstanding Formal/Procedural Issues

4.1. Although it appears that the Complaint was returned to Nominet as undelivered, the reason for that appears to have been that it was "refused". The contact details used by Nominet were correct. Subsequent communications do not appear to have been returned.

4.2. In the circumstances, the Expert does not believe that there are any exceptional circumstances which would prevent him from proceeding to a Decision on the Complaint.

5. The Facts

5.1. The Complainant is a UK-registered company which retails beds and related products in England and Wales. It says that it has used the name Helibeds or Heli-Beds since 2002.

5.2. The Complainant apparently runs 50 shops, and has a fleet of 30 vehicles. Each of those bears the name Heli-Beds. On its stationery and advertising, it typically uses the phrase "BEDS DIRECT from Heli-Beds, the same day delivery people. Order by lunchtime – Delivered by Bedtime". The Complainant has produced copies of its artwork, emails, labels and various advertising material, including Yellow Pages advertisements which date back to 2005, each of which shows its use of the Heli-Beds name.

5.3. The Complainant is the owner of two relevant UK registered trade marks, one for a series HELIBEDS, HELI-BEDS and HELI BEDS in class 20, which was filed on 14 January 2002, and another mark which was applied for on the same day – "HELI-BEDS THE SAME DAY DELIVERY PEOPLE", again in class 20.

5.4. The Complainant asserts that it has a substantial reputation under the name HELIBEDS in southern England and Wales, as a result of extensive advertising and successful trading using this name since 2002.

5.5. The Complainant's own website uses the Domain Name helibeds.co.uk and has done so since April 2003. The Complainant also owns a number of other Domain Names, including hellibeds.co.uk, helli-beds.co.uk and heli-beds.com.

5.6. The Domain Name was registered by the Respondent on 8 July 2007.

5.7. The Complainant does not know and has never heard of the Respondent.

5.8. The use made of the Domain Name by the Respondent is to provide links to third parties' websites operating in the Complainant's field of business. As at 15 October 2007, the Domain Name was used for the purposes of a website which contained links to a number of sites advertising beds and mattresses.

6. The Parties' Contentions

Complainants' Submissions

Rights

6.1. The Complainant relies upon its evidence of the use of Heli-Beds and Helibeds in respect of its business since 2002, and its registered trade mark rights, in establishing that it has Rights under the Policy in both Heli-Beds and Helibeds. Those Rights pre-date the registration of the Domain Name by some five years.

6.2. The Domain Name is the same as the mark Heli-Bed, and essentially the same as the mark Helibed, save for the addition of the hyphen.

Abusive Registration

6.3. The Complainant says that the name Heli-Beds is an invented word, devised and put into use by the Complainant in 2002. The difference between the Domain Name, and the Complainant's website address www.helibeds.co.uk is so minor that a consumer seeking the Complainant's website could easily mis-spell or simply mis-remember the Complainant's name and mark. With such similarity, confusion is inevitable.

6.4. There is nothing to indicate that the Respondent has used the name "Heli-Beds" in any legitimate fashion. The Respondent's registration and use of the Domain Name is so inherently likely to cause confusion among internet users searching for the Complainant that it cannot constitute a bona fide offering of goods or services nor can it constitute a legitimate non-commercial or fair use of the Domain Name.

6.5. The current use of the Domain Name to provide links to third parties' websites operating in the Complainant's field of business seems to indicate that the Respondent must have registered the Domain Name in circumstances where it knew full well of the Complainant's reputation in and legal rights to its trade marks. Likewise, a re-direction to a competitor's website is a circumstance which is an indication of registration in bad faith.

6.6. The common experience of mis-typing any entry using a keyboard, especially when trying to type from memory a word which is invented, leads to the conclusion that it would be an easy and very likely mistake for users of browser software to type in heli-beds.co.uk when seeking helibeds.co.uk, adding an extra "hyphen", and it would be quite as likely for an English person to seek this domain when searching for the Complainant as he or she might seek helibeds.co.uk.

6.7. It is impossible to know how the Respondent happened upon so similar a word, or how it could have any legitimate interest in it. Also, the Respondent's use of the Domain Name to link to websites of suppliers of products of the same kind as those supplied by the Complainant (whether or not competing with the Complainant), must support a conclusion that the Respondent was fully aware of the Complainant's name and business before registering the Domain Name.

6.8. The Complainant also contends that the registration is automatically abusive because the registrant has had three DRS cases decided against it in the last two years. The Complainant relies upon DRS case numbers 4522, 4924 and 4325. Two of those cases (4522 and 4924) were against the Respondent. The third case, however, was against Easy Domain Connect Limited, with the same contact details as the Respondent. The Complainant points out that the initial letters of that name (E/DO/CO) are the same as the Respondent in this case.

Respondent's Submissions

6.9. The Respondent has not replied.

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 clearly has Rights in both HELI-BEDS and HELIBEDS arising out of its trade mark registrations, and the evidence of use provided in support of its Complaint.

7.3. The Expert agrees with the Complainant that the use of the hyphen is to be disregarded in comparing the mark and the Domain Name. The Expert is therefore satisfied that the Complainant has established that it has Rights in names or marks (HELI-BEDS and HELIBEDS) which are identical to the Domain Name.

Abusive Registration

7.4. The Complainant also has to show that the Domain Name is an 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.

7.5. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3.a. of the Policy. Those include, under 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".

7.6. As the Complainant has pointed out, under paragraph 3.c of the Policy "There shall be a presumption of Abusive Registration if the Complainant proves that the 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". Although that presumption can be rebutted, there has been no attempt to do so in this case.

7.7. In this case, the Domain Name has been used to misdirect those potentially seeking the Complainant's website to websites with links which if clicked through, would in all probability generate "click-through" income for the Respondent. Those websites have no reference to the Complainant or its business. Indeed, the website serves to operate so that potential customers of the Complainant would be diverted to direct competitors of the Complainant, although believing that they were seeking out a website connected with the Complainant.

7.8. Although the Respondent has not sought to justify its acquisition of the Domain Name, the clear conclusion from its use of an invented name, without adornment, is that it has intended to misappropriate the Complainant's property, namely its goodwill in the Helibeds/Heli-Beds names, with the intention of unfairly profiting from the use of the Domain Name. In doing so, the registration and use of the Domain Name have taken unfair advantage of and/or been unfairly detrimental to the Complainant's rights.

7.9. The Expert therefore finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration within the meaning of the Policy.

7.10. As regards the presumption of an Abusive Registration under paragraph 3.c of the Policy, the Expert would in any event have been prepared to find that such a presumption applied. The Expert in DRS case number 4522 gave the Respondent the benefit of the doubt in that respect, on the basis that there were two separate legal entities involved. She concluded that the connection between the two companies was not enough to pierce the corporate structure and find that the companies are a potential sham. In this Expert's view, it is not necessary to go so far in order for the presumption under paragraph 3.c to arise. The Complainant in this case expressly relies upon the presumption, and the Respondent has chosen not to respond. The contact details of the companies in question are the same. The name Edoco Limited is a shortened form of Easy Domain Connect Limited (even if there are two separate companies involved). The inevitable conclusion is that the companies are both operated by the same controlling mind. If it had been necessary to do so, the Expert would therefore have concluded on the balance of probabilities that the presumption of Abusive Registration applied.

8. Decision

8.1. The Expert finds that the Complainant has rights in the names or marks HELI-BEDS and HELIBEDS which are 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

19th November 2007