Weir Valves & Controls UK Ltd -v- Leeds Valve Company Ltd [2003] DRS 1161 (10 November 2003)

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The Complaint was lodged with Nominet on 11 August 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 14 August 2003 and informed the Respondent that it had to lodge a Response by 8 September 2003. A Response was filed on 8 September 2003. Nominet informed the Complainant that it had 5 days to file a Reply and a Reply was filed on 11 September 2003. Mediation did not achieve a resolution of this dispute. On 14 October 2003 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

On 17 October 2002, Cerryg Jones, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as 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.

The Complainant, Weir Valves & Controls UK Limited, manufactures and supplies a range of valves for application in the power generation, oil and gas exploration and general industrial sectors. The Batley Valve name is used in relation to the butterfly valve section of the Complainant’s business. The Complainant is the registered proprietor of European Community Trade Mark Registration Number: 2577542 for the word mark “Batley Valve” registered on 14 February 2002 in classes 06, 07 and 09. Hopkinsons Limited, a valve manufacturing company, which is also owned by the Weir Group, purchased the Batley Valve Company Limited in 1998. Both Hopkinsons Limited and The Batley Valve Company Limited are part of the Weir Group Valves and Controls Division. The Complainant alleges that “Batley Valve” has been used in relation to its goods since incorporation of The Batley Valve Company Limited on 1 January 1964. The Complainant advertises its business through website addresses that incorporate the Batley Valve name, namely www.batley-valve.co.uk and www. batley-valve.com.

The Respondent, the Leeds Valve Company Limited, is also a manufacturer of butterfly valves, which is based in Batley, having moved there from Leeds about 5 years ago. The Respondent says it is a direct competitor of Hopkinsons Limited, which is part of the Weir Group of companies, which include the Complainant. A user typing www.batley.co.uk in its browser is taken directly to the Respondent’s website, located at www.leedsvalve.com. The Respondent says that it has been using the disputed domain name for about two years.

Complainant:
The Complainant asserts that the domain name is identical to a name and mark in which the Complainant has rights.
The Complainant asserts in its Complaint that the domain name is an abusive registration because it points to the Respondent’s website, and because the Respondent is a competitor of the Complainant, who has no legitimate claim to use the name. It is also said that by doing so the Respondent has taken unfair advantage of the Batley Valve trade mark and the investment that the Complainant has made in it.

The Respondent asserts in its Reply that it knew prior to 1987 that there was a company called Batley Valve Company that was taken over by Hopkinsons in the 1990’s. It says that this business has no connection with the place Batley as its production is now based in Huddersfield. The Respondent admits that Hopkinsons are direct competitors.
The Respondent says that the Complainant’s trade mark was registered after the registration of the disputed domain name. The Respondent states that the Complainant’s trade mark lacks distinctiveness and that it is not used in the form as registered. The Respondent further alleges that it has used the domain name in connection with a genuine offering of goods, namely the supply of valves from its premises in Batley. The Respondent alleges that the domain name is descriptive and that the Respondent is making fair use of it since the Respondent is a valve manufacturer based in Batley, in contrast to the Complainant, which, as has been explained, is based in Huddersfield.

3 That “Batley Valve” is being used as a brand name/generic name, and not being used to refer to the place “Batley”.

6 That the Complaint has not been authorised by anyone on behalf of the Complainant.

7 That the domain name was purchased for the purpose of the Respondent’s legitimate and established business; it is not a blocking registration; the use does not unfairly disrupt the Complainant’s business; and the Respondent is not engaged in a pattern of making abusive registrations.

The Complainant in its Reply states that the choice of domain name is not designed to attract internet traffic that is searching for valves made in Batley; it is said that such a search would be more likely to include a description of the type of valve, followed by Batley, so that a user searching for, say, a butterfly valve manufacturer in Batley would type into its browser “butterflyvalves[and]batley”. The Complainant implies that the real reason for choosing this domain name is to attract traffic seeking information about the Complainant.

The Complainant accepts that it has sometimes used the mark “Batley” above that of “Valve” but says that this does not affect the validity of the registration.

The Complainant asserts that its business would have been disrupted unfairly because internet users will arrive at the Respondent’s website when searching for Batley Valve, and that this website promotes competing products. The Complainant’s denies that it lacks proper authorisation.

Finally, the Complainant contends that the source code of Respondent’s website homepage contains the names of other third party valve companies whose products are not sold by the Respondent as well as the names of two companies that are owned by the Complainant’s Group, being Hopkinsons, Attwood and Morrell.

Paragraph 2 of the Policy requires that for the Complainant to succeed it has to prove to the Expert on the balance of probabilities, that it has rights in respect of a name or mark 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).

The Complainant has rights in the name “Batley Valve” by virtue of its Community Trade Mark registration. It is not necessary for the purposes of paragraph 1 of the Policy for the Expert to consider the nature of any common law rights the Complainant may have acquired through use of the mark “Batley Valve” prior to the date of this registration. The Expert finds that the Complainant has rights in respect of a name or mark that is identical to the domain name.

The Complainant also has to show that the domain name is an abusive registration. Paragraph 1 of the Policy defines this 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."
A non-exhaustive list of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration. The Complainant does not expressly state that the Respondent’s conduct falls into any of these categories but the substance of the complaint is clear; namely, that internet users searching for information about the Complainant and its products will be taken, unfairly, to the Respondent’s site and that the Respondent has deliberately registered and used the disputed domain, not as a mere descriptor of its location and business, but to target the Complainant’s actual and potential customers. If proven, this would amount to an abusive registration.
The Expert accepts the Respondent’s submissions that the domain name has not been used as a blocking registration or that it has been engaged in a pattern of abusive registrations. However, in the Expert’s view, the Complainant has discharged the burden of proof required under the Policy that the domain name is an abusive registration on the following grounds:
1 The Respondent admits that it knew of the existence of the Batley Valve Company when it registered the domain name, and that it sells competing products.
2 The Expert has not seen any evidence to suggest that the Complainant’s representative is not properly authorised.
3 The fact that the Complainant’s business is no longer based in Batley, is irrelevant to the validity of the Complainant’s registered right, or to the abusiveness or otherwise of the Respondent’s use of the domain name.

4 Although it appears that the domain name was acquired before the registration of the Complainant’s Community Trade Mark, the Complainant has used the Batley Valve name as a company name and a source identifier in relation to its goods prior to the acquisition of the domain name. Indeed, the Respondent concedes it knew of the Batley Valve business well before its registration and use of the domain name.

5 Whilst the Complainant’s trade mark bears a meaning which is descriptive in relation to valves that are manufactured in Batley, that is not to say that it may not have acquired distinctiveness as a trade mark through use, or that it has sufficiently distinctive character in a trade mark sense in relation to its other products. In any event, it is not the Expert’s role to investigate whether a registered trade mark relied upon for the purpose of these administrative proceedings is vulnerable to revocation or invalidity. Here the Complainant’s Community Trade Mark certificate is sufficient evidence of the Complainant’s “Rights” as defined under the Policy. The fact that Batley Valve Company may not actually be trading is irrelevant to the existence of rights in the registered trade mark “Batley Valve”, which is owned by the Complainant. In the Expert’s view, the Complainant’s evidence is sufficient, in any event, to establish use of the registered trade mark.

6 Whilst the domain name does bear a meaning that is descriptive, in the Expert’s view, in the hands of the Respondent it has not been used fairly, and so has not been used in connection with a genuine offering of goods. The evidence, in the expert’s view, establishes, on a balance of probabilities, that the mark Batley Valve has acquired a secondary meaning that denotes the business of the Complainant. In these circumstances, and in particular given the Respondent’s prior knowledge of the trade mark Batley Valve, and the business with which it is connected, it is the Expert’s view that the Respondent has not used the domain name as a pure descriptor; it is the Expert’s view that the Respondent did not adopt this domain name to anticipate the likely internet searches of users seeking information about valve products made in Batley, but to divert users seeking information about the Complainant and its products to its own website. An offering of goods cannot be genuine where that offering is dependent, as here, upon the use of a domain name that impersonates another’s trade mark.

Accordingly, the Expert finds that the Domain Name is an abusive registration. In the circumstances, it is not necessary to consider the Complainant’s submission that the Respondent has used site optimisation techniques that improperly used the trading names of third parties.

In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration, the Expert directs that the domain name be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Weir Valves & Controls UK Ltd -v- Leeds Valve Company Ltd [2003] DRS 1161 (10 November 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1161.html Cite as: [2003] DRS 1161