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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Neil Pryde Ltd v Throop [2008] DRS 5719 (8 July 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5719.html Cite as: [2008] DRS 5719

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Nominet UK Dispute Resolution Service DRS Number 05719 Neil Pryde Limited and Richard Throop Decision of Independent Expert
1. Parties:

Complainant: Neil Pryde Limited

Country: Hong Kong

Respondent: Richard Throop

Country: UK

2. Domain Name:

neilpryde.co.uk

3. Procedural Background:

On 12/05/2008 the Complainant filed its electronic complaint to Nominet and hardcopies were received in full on 13/05/2008. A copy of the complaint documents was sent to the Respondent but no response was received. Mediation was therefore not possible. The Complainant was informed of the lack of response on 06/06/2008 and on 17/06/2008 the Complainant paid the fees for the matter to be referred to an expert. I was selected as the expert having confirmed that I was independent of the parties.

4. Outstanding Formal/Procedural Issues (if any):

None

5. The Facts:

I have taken the facts principally from the information and exhibits provided by the Complainant which have not been contested by the Respondent.

The Complainant is a Hong Kong based company with an international business involved in the manufacture and supply of windsurfing sails and associated products. The business was founded in 1970 by a Mr Neil Pryde and his name became the brand used by the business in the form of "NeilPryde Windsurfing" i.e. with no gap between the forename and surname. The Complainant has a number of trade mark registrations for the NeilPryde brand.

The Complainant's business expanded into other areas, including wetsuits and other clothing under the "NeilPryde Waterwear" brand, and into other products sold under different brands such as FLOW for snowboard products and CABRINA for kiteboarding products.

The Complainant's business appears to have flourished and, at least in relation to windsurfing products, has become the acknowledged leader in its field. Its website claims that in the professional windsurfing arena NeilPryde rigs were used in an uninterrupted reign of 14 World Titles from 1988 to 2002 and are the official one-design windsurfing rig for the 2008 Olympic Games.

The Respondent is an individual called Richard M. Throop based in the UK and he registered the Domain Name (i.e. neilpryde.co.uk) on 9 March 2004.

There is no suggestion that the Respondent has ever used the Domain Name. An attempt to access www.neilpryde.co.uk is automatically forwarded to http://registration.freeola.net/errors/e.php?ec=403 with a holding page with the following error message:

ERROR 403, Index Page Not Found...

The owner of this site has not yet uploaded an index/home/start page or the current index page may have been uploaded incorrectly.

If you are the owner you can find more help at the Freeola Support Centre. or by speaking to a member of our technical support team on: 0871 210 9977

Below the error message is an advertisement for broadband internet access from a business called Freeola.com, and instant internet access from a business called Emergency Internet .com+

The Complainant's solicitors in Hong Kong wrote to the Respondent on 26 October 2007 to complain about his registration of the Domain Name which The Complainant considered to be infringing its trade mark rights and passing off and to be an abusive registration on the basis that it would be likely to lead the public into mistakenly believing that the domain name is related to or associated with the Complainant. The letter confirmed that the Complainant would take no further action if the Domain Name was transferred to it for no cost other than the registration and renewal fees.

The Respondent responded by a letter dated 19 November 2007. The Respondent did not respond to the allegations of trade mark infringement, passing off and that the Domain Name was an abusive registration. The letter simply stated as follows:

"Thank you for your letter dated 26 October 2007.

Without prejudice, If your clients would like to purchase the domain name in question as registered by myself I would be pleased to receive and discuss further their genuine offer.

I look forward to receiving your further correspondence with regards to this matter.

Yours sincerely,

Mr. R. M. Throop"

The Complainant's Hong Kong solicitors replied on 17 December 2007 confirming that the Complainant considered that the Respondent had no legitimate right to register and use the Domain Name. The Complainant reiterated the allegation of trade mark infringement and passing off and refused to entertain any suggestion of purchasing the Domain Name. The letter threatened proceedings unless the Respondent transferred the Domain Name for no cost other than the registration and renewal fees as originally demanded in their first letter. The Respondent did not respond.

By a letter dated 7 February 2008, the Complainant's UK trade mark agents wrote to the Respondent offering to pay the sum of £94 for the transfer of the Domain Name, which they understood to be the cost of registering the Domain Name. The Respondent did not respond.

On 12 May 2008 the Complainant filed its complaint with Nominet, and again the Respondent has not responded.

6. The Parties' Contentions:

Complainant:

In summary the Complainant says that:

•    The Complainant is the proprietor of various NEILPRYDE trade marks covering the United Kingdom and Europe.

•    In the United Kingdom, the Complainant's rights through use and registration date back to circa 1976. The use includes, for example, advertisements in Wind Surfing Magazine, the No. 1 UK Wind Surfing Magazine, and other UK-based magazines. In addition the Complainant has made extensive use of the trade mark throughout Europe and beyond.

•    The Complainant and its subsidiary companies are the proprietors of a number of domain names incorporating the trade mark NEIL PRYDE.

•    In view of the lack of response from the Respondent to the correspondence from the Complainant's UK trade mark agent, it is clear that the Respondent is not prepared to assign the domain name for the cost of registering it to the Complainant.

•    As the Respondent has not used the Domain Name, registration has been for the purpose of preventing the Complainant, as trade mark owner, from using the Domain Name. Accordingly, this amounts to an Abusive Registration.

Respondent:

The Respondent has not responded to the complaint.

7. Discussion and Findings:

General

In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:

8. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
9. The Domain Name, in the hands of the Respondent, is an Abusive Registration.

These terms are defined in the Nominet UK DRS Policy as follows:

•    Rights includes, 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 provided ample evidence of its rights in the name NeilPryde / Neil Pryde through an extensive trade mark portfolio and use. In particular, the Complainant has exhibited:

•    a schedule and details of its NEILPRYDE / NEIL PRYDE trade marks throughout Europe;

•    pages from its website at www.pryde-group.com explaining the history and international success of the business dating back to the 1970s;

•    copies of numerous advertisements in windsurfing magazines dating from 2000 to 2005; and

•    a list of domain names for "neilpryde" registered by the Complainant being neilpryde.at neilpryde.cl neilpryde.cn neilpryde.co.il neilpryde.co.nz neilpryde.com.cn neilpryde.it neilpryde.lv neilpryde.ph and neilpryde.pl together with neilpryde.de neilpryde.fr and neilpryde.us registered by the Complainant's subsidiaries.

I find that the Complainant does have Rights in the name NEILPRYDE / NEIL PRYDE, being a name or mark which is identical or similar to the Domain Name ignoring the .co.uk suffix.

Abusive Registration

The Complainant has succeeded in overcoming the first hurdle of proving that it has Rights in the name but it must also overcome the second hurdle of proving that the Domain name is, in the Respondent's hands, an Abusive Registration.

There is no suggestion that the Respondent has ever used the Domain Name for anything so it is not possible for the Complainant to succeed by showing it has been used in a manner which took unfair advantage of or was unfairly detrimental to its Rights. The Complainant's case therefore stands or fall on whether or not it has proved, on the balance of probabilities, that the Respondent registered the Domain Name in a manner which, at the time when the registration took place on 9 March 2004, took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

The Complainant rests its case on the contention made in its complaint that "As the [Respondent] has not used the domain name, registration has been for the purpose of preventing the Complainant, as trade mark owner, from using the domain name. Accordingly, this amounts to an abuse of [sic] registration."

The Complainant therefore tries to rely on the Respondent's failure to use the Domain Name in support of its case. However, Paragraph 3b. of the DRS Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) states that "Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration".

I therefore do not accept that the lack of use of the Domain Name can or should be held against the Respondent.

Paragraph 3 a. i. A of the DRS Policy (being one of the factors which may be evidence that the Domain Name is an Abusive Registration) states "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily 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."

However, the fact that the Respondent responded to the letter of complaint from the Complainant's Hong Kong solicitors requiring a transfer of the Domain Name in exchange for the registration and renewal costs by inviting the Complainant to make a "genuine offer" to purchase the Domain Name does not of itself assist the Complainant's case. This exchange of correspondence took place more than 3 years after the Respondent had registered the Domain Name and was initiated by the Complainant not the Respondent.

Other parts of paragraph 3 of the DRS Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) are also 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."

The Complainant's case assumes that there can have been no legitimate purpose for the Respondent registering the Domain Name on 9 March 2004 and that it must have been for the purpose of preventing the Complainant from registering and using it. Quite clearly, the fact that the Respondent has himself registered the Domain Name necessarily prevents the Complainant from registering and using it. But that does not show that this was the Respondent's purpose for doing so. In order to succeed, the Complainant must at least prove that it is more likely than not that the Respondent was aware of and had the Complainant in mind when he registered the Domain Name.

There seems no doubt from the evidence put forward by the Complainant that in the field of windsurfing and other similar sports the NEIL PRYDE name is well known. However, it is not necessarily well known, or even known at all, outside of those fields. It is not a sports brand that could claim to be a household name such as Puma, Nike, or adidas. It is, in fact, a combination of a very common forename and, especially in Scotland, a common surname. For example, a search on BT.com reveals 116 entries for the surname "Pryde" in Edinburgh alone.

There are, therefore, a large number of people who could have legitimately registered the Domain Name. The question is, was the Respondent one of them?

There is no direct evidence before me to show whether or not the Respondent had any knowledge of or involvement in windsurfing activities when registering the Domain Name, nor whether he has a history of registering domain names comprising sporting brands or alternatively, comprising common names. I am therefore left to make my decision based on the circumstantial evidence before me.

One obvious comment to make is that the Respondent is called Richard M. Throop, and he therefore appears, on the face of it, to have no connection or claim to anything to do with the name "Neil Pryde".

The Respondent has only responded to the first of the letters from the Complainant's Hong Kong solicitors. He ignored their second letter and the subsequent letter from the Complainant's UK trade mark agents and the complaint to Nominet itself. His only response was to invite a "genuine offer" to purchase the Domain Name. He did not deny the allegations of trade mark infringement and passing off and of having made an Abusive Registration. He did not put forward any reason or explanation for having registered the Domain Name in the first place. He has had ample opportunity to do so if, in fact, there was any plausible legitimate reason for him having registered the Domain Name. I believe I can, in appropriate circumstances, draw inferences from a Respondent's failure to respond to such allegations.

The Complainant does undoubtedly have rights in the name NeilPryde / Neil Pryde as a leading well known brand in windsurfing products. The Respondent has no apparent connection to the name and has, despite several opportunities, failed to put forward any explanation for having registered the Domain Name. In the circumstances, I find that, on the balance of probabilities, the Respondent will have had the Complainant in mind when registering the Domain Name and the registration took unfair advantage of and was unfairly detrimental to the Complainant's Rights.

10. Decision:

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 NeilPryde /Neil Pryde being 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.

In the circumstances I order that the Domain Name be transferred to the Complainant.

Chris Tulley

8 July 2008