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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Moda In Pelle Ltd v Balata.com LLC [2008] DRS 5540 (24 April 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5540.html Cite as: [2008] DRS 5540

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Moda In Pelle Limited -v- Balata.com LLC Nominet UK Dispute Resolution Service DRS 05540 Decision of Independent Expert

1. PARTIES:

Complainant: Moda In Pelle Limited

GB

Respondent: Balata.com LLC

ISRAEL

2. DOMAIN NAME:

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

3. PROCEDURAL BACKGROUND:

This dispute was entered into the Nominet system on March 13, 2008. A hard copy of the Complaint was received in full by Nominet on March 18, 2008. That day Nominet validated the Complaint and took appropriate steps to notify the Respondent of the Complaint.

No Response was received from the Respondent so informal mediation was not possible.

On April 18, 2008, the Complainant paid the fee to obtain the expert decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service ("the Procedure").

On April 18, 2008, Alan L. Limbury, the undersigned ("the Expert"), was selected as the Expert. He 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.

4. OUTSTANDING FORMAL/PROCEDURAL ISSUES

Although Nominet appears to have used all available contact details in its attempts to transmit the Complaint to the Respondent, no Response has been submitted in compliance with paragraph 5(a) of the Procedure. Consequently, there are no exceptional circumstances and I will proceed to a decision on the Complaint in the absence of a Response, as required by paragraph 15(b).

5. THE FACTS

The Complainant markets fashionable shoes. It was incorporated in England on August 16, 1994 under the name Pointhurdle Limited and changed its name to Moda In Pelle Limited on January 23, 1995. Moda in Pelle means 'fashion in leather' in Italian.

On October 16, 1998, one of the Complainant's directors, Mr. Steven Andrew Buck, became the proprietor of a series of two UK registered trade marks under No. 2032237, registered as of September 2, 1995, for the words and logo MODA IN PELLE in Class 25. On November 2, 2007, he became the registered proprietor of the separate word and logo marks MODA IN PELLE, Nos. 2392947A and 2392947B in Classes 14, 18 and 25, registered as of May 27, 2005.

The Respondent registered the Domain Name on June 1, 2004. It leads to a webpage promoting shoes. A notice at the top right of the web site says 'This site may be for sale", the word 'sale' being linked to a page where money can be offered to buy the Domain Name.

6. THE PARTIES' CONTENTIONS

Complainant

The Complainant says it has rights in the Domain Name because:

(a) the Complainant is registered at Companies House under the name 'Moda In Pelle Limited' and has been since 17th June 1987;

(b) it trades under the name Moda In Pelle Ltd. and has done so since 17th June 1987;

(c) it has advertised using the name Moda In Pelle since 17th June 1987 and spent about £30,000 on such advertisements;

(d) it has the registered UK trade mark 'Moda In Pelle' under trademarks 2392947A and 2392947B.

The Complainant says no relationship between the parties exists apart from this dispute and any contact between the parties will cease once this dispute is resolved.

Further, the Complainant says the Domain Name is abusive because:

(a) it is primarily registered for the purpose of selling it, as is apparent from the notice at the top right of the website;

(b) it is registered unfairly to disrupt the Complainant's business. As the Complainant is based in the UK, many customers may assume its website to be www.modainpelle.co.uk, the domain in dispute. As the website does not contain a link to redirect customers who have accidentally visited the incorrect site, the Complainant will lose revenue;

(c) the registration of this domain is merely one of the registrations made by the Respondent. This can be seen on the Nominet website, where the Respondent appears in the '3 cases Respondent Table' no less than six times, specifically in cases DRS 03816, DRS 03470, DRS 02863, DRS 02462, DRS 02455 and DRS 02370. The registration is automatically abusive as these cases have occurred in the last two years;

(d) the site is registered under an incorrect name and address, as has been proven independently by Nominet in several of the six other cases against the respondent which can be found at: http://www.nominet.org.uk/disputes/drs/decisions/3cases/

Respondent

As mentioned, there is no Response.

7. DISCUSSIONS AND FINDINGS

GENERAL

Under paragraph 2 of the Dispute Resolution Service Policy ("the Policy") the Complainant is required to show, on the balance of probabilities, that;

(1) it has rights in respect of a name or mark which is identical or similar to the Domain Name; and

(2) the Domain Name in the hands of the Respondent is an Abusive Registration.

Complainant's Rights

The Policy defines 'rights' as including but not limited to "…rights enforceable under English law." This is a low threshold.

The Complainant claims to have been registered at Companies House under the name 'Moda In Pelle Limited' since June 17, 1987. The evidence establishes that a different company was incorporated that day under the name J & B Properties (Yorkshire) Limited and that it changed its name on June 6, 2006 to Moda In Pelle (UK) Limited. As earlier mentioned however, the evidence also establishes that the Complainant was incorporated on August 16, 1994 under the name Pointhurdle Limited and changed its name to Moda In Pelle Limited on January 23, 1995.

Accordingly, I am satisfied that the Complainant has rights in its corporate name Moda In Pelle Limited and that the Domain Name is similar to that corporate name.

The trade mark MODA IN PELLE on which the Complainant relies is not registered in its name but in that of Mr. Buck, a director. There is no evidence of a licence from Mr. Buck to the Complainant. Should such a licence be implied?

In DRS 00248, Seiko UK Limited v. Designer Time/Wanderweb (July 19, 2002), the Appeal Panel said:

"The requirement to demonstrate 'rights' is not a particularly high threshold test. It is satisfied in our view by the assertion of Seiko UK Limited that it is duly authorised by the trade mark owner to use the mark and to bring the Complaint. Where a complainant is a subsidiary or associated company of the trade mark proprietor, such an assertion will in our view generally be sufficient to demonstrate 'rights' in the absence of any good reason to doubt the veracity of that assertion".

There is no assertion here that the Complainant is duly authorised by the trade mark owner to use the mark and to bring the Complaint. Rather the Complainant claims (incorrectly) that it is the registered proprietor. Nevertheless Mr. Buck, as a director of the Complainant must, I think, be taken to have acquiesced in the Complainant's use of the mark and to the filing of this Complaint. I conclude accordingly that the Complainant has rights in the mark MODA IN PELLE and that the Domain Name is identical to that mark.

Abusive Registration

Abusive registration is defined in the Policy as:

"…a domain name which either;

(a) was registered or otherwise acquired in the 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

(b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

The Complainant relies, amongst other things, on paragraph 3(c) of the Policy, which provides:

"There shall be a presumption of Abusive Registration if the complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the complaint was filed. This presumption can be rebutted."

In support of its submission that paragraph 3(c) is applicable to this case, the Complainant relies on the following cases:

DRS 03816, v05.co.uk, decided on September 12, 2006;

DRS 03470, jacquesvert.co.uk, decided on April 27, 2006;

DRS 02863, remax.co.uk, decided on November 4, 2005;

DRS 02462, marksattin.co.uk, decided on May 3, 2005;

DRS 02455, ipaqchoice.co.uk, decided on May 9, 2005; and

DRS 02370, wagamamas.co.uk, decided on April 7, 2005.

In all of these cases the Respondent was found to have made an Abusive Registration. Only two of those decisions were made within the two years preceding the filing of this Complaint on March 13, 2008. However, there are in the Nominet database, to which the Complainant referred, two further cases in which the Respondent has been found to have made an Abusive Registration, namely:

DRS 04994, gaydor.co.uk, decided on October 23, 2007; and

DRS 05173, kidswindow.co.uk, decided on December 24, 2007.

Accordingly, despite certain inaccurate statements in the Complaint as to its incorporation and trade mark ownership that are belied by the evidence the Complainant provided, the Complainant's submission that the Respondent has been found to have made an Abusive Registration in at least three DRS cases in the last two years has been made out, thereby giving rise to a rebuttable presumption of Abusive Registration. By not filing a Response, the Respondent has failed to rebut this presumption.

I therefore conclude that the Respondent's use of the Domain Name constitutes an Abusive Registration.

8. DECISION

I find that the Complainant has proved, on the balance of probabilities, that it has rights in a name which is similar to the Domain Name and that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore direct that the Domain Name be transferred to the Complainant.

……………………………….

Alan L. Limbury

April 24, 2008