[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Imperial Tobacco Ltd v Brainfire Group [2006] DRS 3386 (26 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3386.html Cite as: [2006] DRS 3386

[New search] [Printable RTF version] [Help]

 


Imperial Tobacco Limited –v- Brainfire Group

Nominet UK Dispute Resolution Service

DRS 03386

lambertandbutler.co.uk

Decision of Independent Expert

1. PARTIES:

Complainant: Imperial Tobacco Limited

Great Britain

Respondent: Brainfire Group

Canada

2. DOMAIN NAME:

lambertandbutler.co.uk ("the Domain Name").

3. PROCEDURAL BACKGROUND:
3.1      The Complainant has complained to Nominet.uk ("Nominet"). The dispute was entered into the Nominet Dispute Resolution Service (DRS) system on 31 January 2006. Hardcopies of the Complaint were received in full by Nominet on 31 January 2006 and Nominet validated the Complaint and sent a copy to the Respondent on the same day. No response has been received from the Respondent and the Complainant paid the fee for an expert decision on 6^th March 2006.
3.2      On 6th March 2006 Nominet invited Nick Phillips the undersigned expert (the "Expert") to provide an expert decision on the case. The Expert confirms that he knows of no reason why he should not accept the appointment and that he knows of no reason why his independence or impartiality might be called into question.
4. OUTSTANDING FORMAL/PROCEDURAL ISSUES:
4.1      The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5(a) of the DRS Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure").
4.2      Paragraph 15(b) of the Procedure provides that: "If, in the absence of exceptional circumstances, a party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the Complaint."
4.3      Nominet has used all available contact details to try and bring the Complaint to the Respondent's attention. There do not appear to be any exceptional circumstances involved, and in accordance with Paragraph 15(b) of the Procedure, a decision will be made on the Complaint notwithstanding the absence of a response.
5. THE FACTS:
5.1      The Domain Name was registered by the Respondent on 17th February 2005.
5.2      The Complainant is a wholly owned subsidiary of Imperial Tobacco plc, and has a world-wide presence and history of doing business in the tobacco industry.
5.3      The Complainant is the registered owner of numerous trade mark registrations in the UK, throughout Europe and worldwide for both the word mark LAMBERT & BUTLER and a number of related device marks.
5.4      The Complainant is the owner of the domain names: lambert-and-butler.com; lambert-and-butler.co.uk; lambert-and-butler.eu and lambert-butler.nl.
5.5      The Domain Name is used by the Respondent to link to a site offering links to a number of other sites grouped by category including a category for "cigarettes".
6. THE PARTIES' CONTENTIONS:

The parties' contentions can be summarised as follows:

Complainant

6.1      The Complainant has rights in respect of a name or mark to which the essential identifying feature of the domain name is identical.
6.2      The Complainant also contends that the Domain Name in the hands of the Respondent is an abusive registration because:
6.2     .1 In the UK, the name LAMBERT & BUTLER is properly and uniquely associated with Imperial Tobacco Limited. The nature of the Respondent's business sees it registering domain names to which it has no connection simply for the purposes of generating income.
6.2     .2 By their nature, domain names identified as having a high level of traffic will be connected to well known trade marks, trade names, persons or business undertakings. The very nature of the Respondent's business is to obtain domain names to which it has no legitimate right with the aim purely of taking unfair advantage of rights that third parties have established.
6.2     .3 The motive behind the Respondent's actions in registering the www.lambertandbutler.co.uk domain name clearly was to take unfair advantage of the reputation that the Complainant has built up. Further, the domain name has been put to use in a manner which is for the sole purpose of generating advertising income. This clearly takes unfair advantage of and is unfairly detrimental to the Complainant's rights.
6.2     .4 By selecting the www.lambertandandbutler.co.uk domain name for registration on the basis of the criteria the Respondent applies, and by using the domain name for this purpose, the Respondent does so in the full and conscious knowledge that;

(a) the registration and use of the domain name are likely to cause confusion and to deceive consumers into mistakenly believing that the Respondent's domain name and website are offered, authorised, or sponsored by the Complainant, or are otherwise affiliated with the Complainant;

(b) as a consequence of its action in registering and using the domain name, the Complainant's business will be unfairly disrupted by the redirection of Internet users which will deprive the Complainant of Internet traffic rightly intended for its websites;

(c) by registering and using the domain name it is misappropriating the Complainant's goodwill solely for its value derived from the famous LAMBERT & BUTLER mark;

(d) it will be blocking the Complainant from registering a name in which the Complainant has rights; and

(e) by registering and using the domain name in this manner, its actions are unfairly detrimental to the Complainant's rights in the LAMBERT & BUTLER mark.

6.2     .5 There is no innocent explanation as to why the Respondent should have chosen to adopt the Complainant's trade mark other than to the detriment of the Complainant. The Complainant is unable to think of any good reason why the Respondent could reasonably be said to have any legitimate rights or interest in the disputed domain name.
6.2     .6 Due weight should also be given to the fact that the Complainant would be in the position to bring a claim before the High Court for trade mark infringement. In accordance with Section 10(3) of the UK Trade Marks Act 1994 and the Court's decision in the case Marks & Spencer Plc (and others) vs. One in a Million, the Respondent is using the Complainant's trade mark in the course of its business of improperly registering domain names without authorisation in the UK, the use being without due cause and taking unfair advantage of, and being detrimental to, the distinctive character and the repute of the Complainant's trade mark. The Complainant submits that the fact that it would succeed with an action for trade mark infringement is a strong indication that the domain name registration constitutes an abusive registration in the hands of the Respondent.
6.2     .7 Further weight should be given to the fact that the Respondent is not using the domain name in connection with a genuine offering of goods or services, that the Respondent has not been commonly known by the name, and the Respondent has made no legitimate non-commercial or fair use of the domain name.

Respondent

6.3 The Respondent has not filed a Response.

7. DISCUSSIONS AND FINDINGS
7.1      Paragraph 2 of the policy requires that the Complainant must prove, on the balance of probabilities, 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.

7.2      Rights are defined in Paragraph 1 of the Policy as follows: "includes, but is not limited to, rights enforceable under English law. However, the Complainant would be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".
7.3      The Complainant is the registered proprietor of a number of registered trade marks for the word mark LAMBERT & BUTLER, including at least one for the UK, and has used the mark Lambert & Butler in connection with the sale of cigarettes for a considerable period of time. I therefore have no difficulty in concluding that the Complainant has Rights in the mark LAMBERT & BUTLER.
7.4      The only difference between the mark in which I have found that the Complainant has Rights i.e. LAMBERT & BUTLER and the Domain Name is the use of the word "and" in the Domain Name instead of the "&" symbol. This is, in my view, clearly immaterial particularly given that the "&" symbol cannot be used as a character in a domain name. In any event I am satisfied that the mark in which the Complainant has Rights is, at the very least, similar to the Domain Name.
7.5      Having concluded that the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name I must now go on to consider whether the Domain Name is in the hands of the Respondent an Abusive Registration.
7.6      Abusive Registration is defined in Paragraph 1 of the Policy 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.

7.7      Paragraph 3 of the Policy sets out a non-exhaustive list of the factors which may be evidence that the Domain Name is an Abusive Registration. The Complainant relies on a number of these and the most relevant are set out below:

3 a i Circumstances indicating that the Respondent has registered or has otherwise acquired the Domain Name primarily

A ….

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

C for the purpose of unfairly disrupting business of the Complainant;

ii Circumstances indicating that the Respondent is using the Domain Name in a way which is confusing people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant; and

iii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

7.8      The evidence produced by the Complainant is that the Domain Name resolves to a website headed "lambertandbutler.co.uk" providing sponsored links to a number of other business sites including those in the tobacco business. This website looks to be one of the increasingly popular "domain name parking" type websites which work by paying the owner of the domain name a fee every time the website is accessed. Indeed, investigators instructed by the Complainant, have managed to speak to a Robert Montgomery of the Respondent who has confirmed that his business is to buy up domain names which attract a high volume of traffic and then to use these domain names to generate income by placing advertisements and sponsored links on sites linked to the domain names.
7.9      It is clear to me that by using the Domain Name in this way, i.e. by relying on the Complainant's Rights in the Domain Name to generate traffic to a site linked to the Domain Name, the Respondent is taking unfair advantage of the Complainant's Rights. The Respondent's use of the Domain Name is also likely to have confused people into mistakenly believing that the Domain Name is registered to, or operated or authorised by, or otherwise connected with the Complainant.
7.1     0 Having reached this conclusion I will not go on and consider the other contentions put forward on behalf of the Complainant and I therefore conclude that the Respondent's use of the Domain Name constitutes an Abusive Registration.
8. DECISION

For the reasons set out above, I find that, on the balance of probabilities, the Complainant has Rights in 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. I therefore direct that the Domain Name be transferred to the Complainant.

……………………………………..

Nick Phillips

27^th March, 2006