Imperial Tobacco Ltd -v- Swoon [2003] DRS 761 (20 January 2003)

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This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure (“the Procedure”) and the Nominet UK Dispute Resolution Service Policy (“the Policy”).

The Complaint entered Nominet’s system on 6th December 2002 and was validated on 11th December 2002. On that date, Nominet wrote to the Respondent allowing 15 working days, ie until 7th January 2003, for a Response. No Response having been received and the Complainant having paid the relevant fee, the Complaint was referred to me on 14th January 2003 for a Decision. On 15th January 2003, I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.

4. Outstanding Formal/Procedural Issues

Having reviewed the file, I am satisfied that Nominet took all appropriate steps under paragraph 2(a) of the Procedure to bring the Complaint to the attention of the Respondent. In particular, Nominet wrote to the Respondent at the postal address provided by it and e-mailed the Respondent at the address provided by it for “Admin Contact”, namely admin@wirelesscomm.co.uk and at postmaster@imperialtobacco.co.uk. However, the letter was returned by the Post Office marked “addressee has gone away” and both e-mails were bounced back to Nominet as “host unknown”.

It is the responsibility of the registrant of a domain name to provide Nominet with accurate contact details and to keep such details updated. Nominet’s terms and conditions of registration state, under paragraph 2, “What you must do”:

“2.3. You must inform us promptly of any change in your registered details, and those of your Agent if applicable. It will be your responsibility to maintain and update any details you submit to us and to ensure that your details are up to date, and accurate. In particular, it is your responsibility directly or by your Agent to ensure that we have your full and correct postal address.”

5.2. That the details and information submitted by you to us are true and correct, and that any future additions or alterations to your details and information will be true and correct, and that you will submit them in a timely manner.”

The Complainant is a private limited company registered in England & Wales. The status of the Respondent is unclear. The Domain Name was registered on 3rd September 1999. A “Whois” query report provided by Nominet, dated 11th December 2002, discloses that the registration is detagged. Accordingly, the Domain Name does not resolve to any active website.

The Complainant makes the following submissions of fact which, in the absence of any Response or evidence to the contrary, I accept as proven:

(1) that it is the world’s fourth largest tobacco company and is known globally as “Imperial Tobacco”; and

(2) that it is the proprietor of UK trade mark number 1399545 in the name “Imperial Tobacco”.

The Complainant also provides evidence of a second trade mark, number 2280270, comprising a device including the name “Imperial Tobacco”.

The Complainant relies solely upon the ground that: “the current registrant can have no purpose for the registration of the name other than to block [the Complainant] from owning the name”.

“(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, 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.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.”

“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”.

The term “Abusive Registration” is defined in paragraph 1 of the Policy as referring to 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.”

Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.

With regard to the first limb of the test, the name of the Complainant (ignoring the space between the words “Imperial” and “Tobacco” and the formal suffix “Limited”) is identical to the Domain Name (ignoring the formal suffix “.co.uk”). I have accepted that the Complainant has a global reputation associated with its name and there is accordingly substantial goodwill attached to the name which the Complainant is entitled to protect. Further, the Complainant is the proprietor of a registered trade mark which is also essentially identical to the Domain Name. I therefore have no hesitation in finding that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name. The first limb of the test is satisfied accordingly.

Under paragraph 3(a) of the Policy, the factors which may be evidence that a registration is an Abusive Registration include:

“(i) Circumstances indicating that the Respondent has registered or otherwise acquired the domain name…

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

This is the sole ground upon which the Complainant relies, contending that the Respondent can have had no other purpose to the registration other than to prevent the Complainant from owning the Domain Name.

In this case, there is no evidence of any use by the Complainant of the Domain Name and there is no allegation that the Respondent has sought to sell it to the Complainant for a sum in excess of its documented out-of-pocket costs. It is accordingly a purely “passive holding”. Nor is there any allegation that the Respondent has been engaged in a pattern of abusive registrations.

In my view, the Complainant has put its case somewhat narrowly by relying on the ground of “blocking registration” alone. I do not believe it is necessary to infer that the Respondent’s only motivation in the case can have been to block the Complainant from owning the Domain Name.

Nevertheless, I am of the view that the Respondent can have had no legitimate purpose in registering the name. Bearing in mind the observations of the Court of Appeal in British Telecommunication plc and Others –v- One in a Million Limited and Others, [1998] 4 All ER 476, I find that:

(1) the trade name “Imperial Tobacco” is well-known brand name in use by the Complainant in the course of its business and that it has substantial goodwill attaching to that name;

(2) there is no evidence that, so far as the general public is concerned, the name “Imperial Tobacco” denotes any entity other than the Complainant; and

(3) although the Domain Name is (apparently) unused, any realistic use of it by the Respondent would constitute passing off and/or trade mark infringement. The Domain Name is therefore an “instrument of fraud” in the hands of the Respondent.

In the circumstances, I conclude that the Domain Name was registered and/or has been used by the Respondent in a manner which took unfair advantage of, or was unfairly detrimental to, the Complainant’s rights. The Domain Name is therefore an Abusive Registration in the hands of the Respondent. The second limb of the test under paragraph 2(a) of the Policy is satisfied accordingly.

The Complainant has established on the balance of probabilities that it has rights in a name or mark that is identical or similar to the Domain Name. It has also established on the balance of probabilities that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Accordingly, the Complaint succeeds and I direct that the Domain Name be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Imperial Tobacco Ltd -v- Swoon [2003] DRS 761 (20 January 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/761.html Cite as: [2003] DRS 761