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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Miss Selfridge Retail Ltd v ewca.org [2006] DRS 3392 (24 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3392.html Cite as: [2006] DRS 3392 |
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Nominet UK Dispute Resolution Service
DRS Number 03392
Parties Miss Selfridge Retail Limited v ewca.org
Decision of Independent Expert
Complainant: Miss Selfridge Retail Limited
Country: UK
Respondent: ewca.org
VC
miselfridge.co.uk
This domain name is referred to below as the "Domain Name".
The Complaint was lodged with Nominet on 1 February 2006. Nominet validated the Complaint and notified the Respondent on the same date. The Respondent filed a Response in time on 8 February 2006. A Reply was filed by the Complainant in time on 9 February 2006. On 24 February 2006 Nominet informed the Complainant that it had not been possible to achieve a resolution to the Complaint by informal mediation and on 6 March 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").
Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
There are no outstanding procedural issues.
The Complainant was incorporated on 12 July 2001 under company number 04251393. It trades in the field of clothing retail under the mark MISS SELFRIDGE. The Complaint gives no further details about the Complainant's trading activities beyond stating that its MISS SELFRIDGE brand is a well-known trade mark with considerable reputation and goodwill. The Complaint refers to the Complainant's website at www.missselfride.co.uk. The Expert visited this website on 22 March 2006 and noted that the MISS SELFRIDGE brand featured prominently on the Complainant's website.
The Complainant owns a number of registered trade marks consisting of the MISS SELFRIDGE mark. The Complaint gives details of the following registrations (trade mark certificates for the marks are annexed to the Complaint):
MISS SELFRIDGE [SCRIPT] registered in class 25 of the UK Trade Marks Register under trade mark number 905743*
MISS SELFRIDGE [WORDS] registered in classes 03, 14, 18, 25 and 35 of the Community Trade Marks Register under trade mark number 001598960
*The trade mark certificate annexed to the Complaint shows the proprietor of the UK registration to be A.G. Clothing Limited. However the covering letter from its trade mark agent forwarding the certificate to the Complainant (which is also annexed to the Complaint) records that the mark is owned by the Complainant. No assignment document is annexed. This disparity does not apply to the Community Trade Mark.
Very little information is before the Expert about the identity or business activities of the Respondent. The Respondent registered the Domain Name on 15 February 2005. In its Response the Respondent states that the Domain Name was bought in order to provide medical education information because it was "a combination of "Mis Elf Ridge" (Mis - Management Information System, Elf - Extremely Low Frequency (Used for the treatment of osteoarthritic knees))".
On 27 January 2006 the Complainant typed in the URL www.miselfridge.co.uk (the Domain Name) and accessed a website. A printout of some of the webpages is annexed to the Complaint. These show that the website offered a range of clothing apparently for sale under the banner name MISELFRIDGE.CO.UK. Photographs of items of clothing are also featured. In smaller letters was the statement "THIS DOMAIN IS FOR SALE".
Following the filing of the Response by the Respondent the Complainant repeated the exercise in February 2006. The Reply states that the website at the Domain Name had changed and now appeared to relate to a medical information provider. An (undated) printout of some of the new webpages is annexed to the Reply. There is no longer any reference to clothing on what is apparently the homepage. The "MISELFRIDGE" banner has also been removed. The statement about the Domain Name being available for sale remains. The Reply states that clicking on some of the links on the website take the user to a general shopping site which includes a link to "fashion". A printout of the shopping site is annexed to the Reply. The exact sequence of links from the homepage to the shopping site is not apparent but the URL for the shopping site is shown as the Domain Name. This version of the Respondent's website is referred to as the "Amended Website" below.
On 23 March 2006 the Expert searched against the Domain Name. No results were found.
The submissions put forward by both parties are relatively sparse. They are as follows:
Complainant
Rights
The Complainant asserts that the Domain Name is identical or similar to the marks in which the Complainant has Rights.
Abusive Registration
The Complainant submits that the Domain Name constitutes an Abusive Registration. It points out that the website operated by the Respondent as at 27 January 2006 took visitors to a clothing website which competed with the Complainant's business of clothing retail. The Respondent does not dispute this statement in its Response. The Reply points out that the Amended Website retains links which relate to the retail of fashion items.
The Reply makes an additional submission relating to the Amended Website. The Complainant refers to a separate complaint under Nominet's Dispute Resolution System. The Expert understands from Nominet that the complaint in that matter has been disposed of without determination by an Expert. It is not appropriate for the Expert to comment on it further. In any event the Complainant's submission takes the form of unfounded speculation. The Expert has accordingly disregarded it in reaching her decision.
Respondent
In the Response the Respondent states that it bought the Domain Name in order to provide medical education information. and "does not have any relation to the Complainant". Accordingly the Respondent states that it sees no reason not to use the Domain Name for its business purposes.
General
Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts 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.
The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (clause 2b of the Policy).
Complainant's Rights
Rights are defined in clause 1 of the Policy as including but 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 Complainant has established that it owns a Community Trade Mark in the MISS SELFRIDGE brand as a word mark.
The Complainant clearly owns Rights for the purposes of the Policy. It is therefore unnecessary for the Expert to clarify that the UK trade mark registration is also owned by the Complainant (as referred to in section 5 above).
The Domain Name MISELFRIDGE is not identical to the Complainant's MISS SELFRIDGE mark. However the omission of the letter "s" does not change the overall impact and impression of the MISS SELFRIDGE mark. In particular the marks are phonetically identical. Nor is it relevant that the Domain Name consists of a single word and the Complainant's trade mark consists of 2 words. Customers readily convert brands into a single word in connection with domain names. Similarly it is customary to ignore the suffix ".co.uk". It can also be readily imagined that customers wishing to access the Complainant's website could misremember or misspell the Complainant's Miss Selfridge brand or mistype it. The Domain Name is therefore similar to the Complainant's trade mark for the purposes of the Policy.
It follows that the Expert finds that the Complainant has Rights in the brand MISS SELFRIDGE and this mark is similar to the Domain Name. The first criterion of the Policy has accordingly been proved.
Abusive Registration
Abusive Registration is defined in clause 1 of the Policy as follows:
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
Clause 2 of the Policy sets out a list of non exhaustive factors which may be evidence that the Domain Name is an Abusive Registration.
Registration or Acquisition
The Complainant bases its Complaint on the way in which the Domain Name has been used by the Respondent. It does not submit that the motivation for registering the Domain Name was itself abusive. The Respondent puts forward its explanation for the choice of the Domain Name as being for the purposes of medical education. This is not challenged by the Complainant. The Expert makes no finding in relation to whether the registration or acquisition of the Domain Name was abusive in itself.
The Complainant's concern with the Respondent's activities is the manner in which the Respondent has chosen to use the Domain Name, namely the fact that it has used the Domain Name in connection with the sale of clothing and fashion in competition with the Complainant.
Use of the Domain Names
Clause 2a of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name has been used in a manner which took unfair advantage of or was wholly detrimental to the Complainant's Rights. The most relevant ground in the Complaint is that there are;
ii Circumstances indicating that the Respondent is using the Domain Name in a way that has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with The Complainant.
Clause 2b of the Policy provides that failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.
The Expert finds that the manner in which the Respondent has used the Domain Name would on the balance of probabilities confuse the public into believing that the Domain Name is connected with the Complainant. While there is no evidence of actual instances of confusion the Expert is able to infer the likelihood of confusion from the surrounding circumstances. The average consumer who is familiar with the Miss Selfridge brand would associate the Domain Name with the Complainant. On visiting the Respondent's website as it existed in January 2006 the references to types of clothing and photographs of fashion items would not dispel this association. The way that the Respondent has used the Domain Name accordingly takes unfair advantage of and is unfairly detrimental to the Complainant's Rights. The Respondent is benefiting from customer interest by association with the Complainant with the result that the Complainant may lose sales.
The Expert finds that the use of the Domain Name in January 2006 constituted an Abusive Registration.
It is less clear whether confusion would be caused by the operation of the Amended Website. In the Response the Respondent explains that the Domain Name is relevant to medical education information and, in fact, is a play on the name for a type of medical treatment. The homepage of the Amended Website does provide medical information and a reference to the medical treatment described in the Response. The homepage makes no obvious reference to clothes. However the Response shows that there are still links on the Amended Website to shopping for fashion. In the Expert's view the question whether the Domain Name is likely to cause confusion in connection with the Amended Website is very much a borderline question. The links to fashion items are not obvious. However when the Amended Website is considered alongside the earlier version of the website it is possible that customers who have previously visited the Respondent's site could, by following the links, remain under a mistaken impression that the site is connected with the Complainant. It is significant that the shopping site to which the links are directed operates under the Domain Name. In any event the borderline nature of the Complaint in relation to the Amended Website does not alter the Expert's finding that the earlier use was abusive. It is well established under the Policy that abusive use cannot automatically be "made good" by the changed use of the Domain Name.
The apparent abandonment of the use of the Domain Name by the Respondent makes no difference to the finding of Abusive Registration. There is nothing to prevent the Respondent from reactivating use of the Domain Name and, should it do so in connection with the supply of fashion items and clothing, it is difficult to see how this use would not cause confusion.
The Expert finds that the Complainant has proved on the balance of probabilities that it owns Rights in respect of names or marks which are identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name is transferred to the Complainant.
Sallie Spilsbury
24 March 2006
