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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Gooch v Snorestore Ltd [2009] DRS 6518 (18 February 2009) URL: http://www.bailii.org/uk/cases/DRS/2009/6518.html Cite as: [2009] DRS 6518 |
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DISPUTE RESOLUTION SERVICE
DRS 06518
Decision of Independent Expert
Jessica Gooch
and
Snorestore Limited
Complainant: Snorestore Limited
Country: United Kingdom
Respondent: David Cock
Country: United Kingdom
Snore-store.co.uk
This domain name is referred to below as the "Domain Name".
A hardcopy of the Complaint was lodged with Nominet on 12 November 2008. Nominet validated the Complaint and notified the Respondent. A Response was submitted in time on 5 December 2008. The Complainant submitted a Reply in time on 8 December 2008. The dispute was not resolved in mediation. On 22 January 2009, the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 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 formal issues.
The Complainant
The Complainant was incorporated on 7 September 2001 and has been continuously trading since that time supplying earplugs and sleep-related products such as eye masks, sound pillows and lavender scented items. The Complainant's customers are mainly individuals with a problem with snoring or sleep deprivation. The Complainant uses the domain name snorestore.co.uk. This domain name was registered by one of the Complainant's directors, Jessica Gooch, on 18 January 2001 and has been used by the Complainant since it began trading (September 2001). The Complainant has an online advertising presence through Google and Yahoo as well as in print where it advertises in magazines such as Private Eye, New Statesman and Literary Review. This is confirmed by copies of (i) invoices from magazines in which advertisements have been placed and (ii) sample advertisements which accompany the Complaint and span the period 2002-8. The advertisements give the domain name snorestore.co.uk as the point of contact for the Complainant.
The Complainant does not own registered trademarks, although two trademark applications have been made for SNORESTORE and similar marks.
The Respondent
The Respondent registered the Domain Name on 3 October 2008. The Response suggests that the Domain Name will be used in connection with a website which is in the course of development but which is not yet up and running. The website will "concentrate on the relief come cure side of snoring" (sic). Attached to the Response, as evidence that the site will be used for legitimate trade, is a copy of email communications from May 2008 between the Respondent and an Australian supplier for supply of a product described as "Anti Snoring Blend". The email correspondence does not mention Snore-store. The Respondent is a party to the correspondence and is described as managing director of a company called Northern Vending Limited.
The Respondent states that he has invested considerable time and money to-date researching and obtaining products to sell on the projected website. He points out that he was not intending to supply earplugs which are a product with which Snorestore is particularly associated.
Pending finalisation of the website the Domain Name has been used to link to a domain parking service. The Complaint exhibits a screenshot dated 12 November 2008 to this effect. It shows sponsored links relating to snoring-related treatments, none of which is apparently connected to the Complainant. A search by the Expert on 16 February 2009 provided no results for the Domain Name. This suggests that the linking of the Domain Name to the parking service ceased on an unknown date after this dispute arose.
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.
For convenience, the decision will set out the Complainant's submissions. Where the Respondent has responded to a submission, the Respondent's response will follow.
Rights in a mark identical or similar to the Domain Name
Complaint and Reply
The Complainant relies on the goodwill generated by its use in the course of trade of the Snorestore mark and domain name since 2001. It points out that a Google search of the Domain Name (Snore-store) shows as first results, Snorestore (i.e. the Complainant) (stated in the Complainant's Reply). The Complainant also refers to its trademark applications in the context of conferment of Rights and points out that the Domain Name contains exactly the same two words as the Snorestore corporate and domain name.
Response
By implication, the Respondent denies that the Complainant has rights in the SNORESTORE mark. He states that the Snorestore mark was not known to him before this dispute (which would mean that he became aware of the Complainant's rights in mid November 2008 on receipt of correspondence from Nominet). He also relies on the fact that the mark is not a registered trademark. He points out that ample time has passed since Snorestore began trading in 2001 for trademark registrations to have been acquired if the mark was felt to be such an essential part of the Snorestore company.
Abusive Registration
Complaint
• The Domain Name in the hands of the Respondent is Abusive because it was primarily registered to confuse the Complainant's customers into believing that the Domain Name is operated by the Complainant.
• The Domain Name could be used in a way that could confuse people and businesses into believing that the Domain Name is registered to, operated by, authorised by or otherwise connected to the Complainant.
• The Complainant refers to the 12 November 2008 screenshot of the domain parking service to which the Domain Name was linked and points out that none of the advertisements on that page was placed by Snorestore. There is no direct submission that the use of the Domain Name to link to the parking service was abusive in itself, although this is arguably implied.
Response
• The Complaint is an attempt to stop the Respondent from going about his legitimate trade.
• The Respondent did not know of the Complainant until the dispute (i.e. by implication it was unaware of it at the time of registration of the Domain Name in October 2008).
• The Domain Name is intended to be used for legitimate trade as evidenced by the May 2008 order for Anti Snore Blend placed with an Australian supplier. The Respondent has invested time and money researching and obtaining products for the website. By implication, the Respondent suggests that there will be no direct overlap between the Snorestore product range and his products. He has not thought of supplying earplugs (which are particularly associated with the Complainant) and intends to concentrate on products that relieve or cure snoring.
• Pending finalisation of the website the Respondent parked the Domain Name with a third party and was not responsible for the advertisements that appeared on the parking page. The Respondent received no money from the advertisements that were associated with the parking page.
Reply
• It is irrelevant that the Respondent has not heard of the Complainant before this dispute arose. However, it is curious that he was not on notice given the research that the Respondent has carried out. The results of the Google search are relied on to support the alleged link between the SNORESTORE mark and the Complainant.
• Given that the Respondent has not yet begun trading, the risk to its business of having to switch to an alternative domain name is very slight.
• The submission about lack of overlap between the Parties' respective product ranges is rejected- both businesses would be selling products designed to help people sleep and get relief from snoring.
• The Complainant has no desire to stop the Respondent from launching his business. The complaint is limited to stopping him from using a domain name that is so similar to the name that the Complainant has been using successfully since 2001.
• The registration of the Domain Name, and the apparently planned online trading associated with it, will cause confusion and annoyance to the Complainant's customers and affect the Complainant's ability to trade and to grow its business.
Complainant's Rights
Rights are defined in clause 1 of the Policy as including but not limited to "rights enforceable by the Complainant whether under English law or otherwise".
The Complainant's Rights
The Expert finds that the Complainant's use in the course of trade of the SNORESTORE mark and domain name for more than 7 years has conferred sufficient brand recognition to give rise to goodwill (i.e. a reputation in the course of trade). The goodwill is owned by, and confers Rights on, the Complainant for the purposes of the Policy. The Policy has no requirement that a mark must be protected by a trademark registration.
The next question is whether the SNORESTORE mark in which the Complainant has Rights is identical or similar to the Domain Name. This is clearly the case. The only difference between the Domain Name and the SNORESTORE mark is the addition of the hyphen between "snore" and "store". This difference is not material. For example, the Expert has confirmed the Complainant's assertion that a Google search for "snore-store" produces first results for the Complainant's business (Google search carried out by the Expert on 16 February 2009). The insertion of the hyphen in the Domain Name is not therefore considered material by at least one major search engine.
It follows that the Complainant has met the first requirement of the Policy, namely it has shown that it has Rights in a name which is identical or similar to the Domain Name.
For the avoidance of doubt the Complainant's trademark applications do not confer Rights under the Policy. The validity of these applications has not yet been determined and the applications in themselves afford no legal right on the Complainant to prevent others from using the SNORESTORE mark.
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.
The Complainant's case is based on the Respondent's registration. It also submits that future use of the Domain Name by the Respondent in connection with its products would cause confusion. Mention is also made in the Complaint of the parking of the Domain Name as at 12 November 2008.
General
The Respondent denies prior knowledge of the Complainant's Domain Name until receipt of notification of this dispute in mid November 2008. The Complainant casts doubt on this assertion in its Reply. It relies on the results of a Google search as establishing a clear link between Snore-store and the Complainant.
The Expert does not agree. The mere suggestion that the Complainant finds it curious that the Respondent was not previously been aware of SNORESTORE is not a sufficient basis to support a finding of bad faith on the part of the Respondent in relation to the contents of the Response. There is no evidence of prior communication between the Parties before this dispute arose. While the Complainant's trading activity is sufficient to have given rise to goodwill this does not mean that the SNORESTORE mark is a household brand or a well-known mark of which one would expect third parties to be aware. The Expert therefore accepts on the balance of probabilities that the Respondent was not aware of the Complainant's SNORESTORE mark or domain name at the time it registered the Domain Name in October 2008.
In the DRS appeal decision in Verbatim Limited v Toth (DRS 04331) the appeal panel noted that some knowledge of the Complainant and/or its brand/Rights is a prerequisite for a successful Complaint of the kind at issue in this decision. The appeal panel noted that the DRS is a "first-come, first-served system" and suggested that a registrant who was wholly unaware of the Complainant and its Rights could not be said to be taking unfair advantage of or causing unfair detriment to the Complainant's Rights.
In the light of the finding that in this matter the Respondent was unaware of the Complainant and its Rights until mid November 2008 it follows that the Expert can only take into account matters arising after that date in this Decision when considering whether the Domain Name is an Abusive Registration.
Registration
Because there is no evidence before the Expert to suggest on the balance of probabilities that the Respondent was aware of the Complainant at the time that the Domain Name was registered (October 2008) the Expert does not find that the mere registration of the Domain Name at the time of registration in itself amounted to an Abusive Registration under the Policy.
Use or threatened use
The overriding concept behind abusive use is as stated in clause 1 of the Policy:
[The Domain Name] 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 that the use of the Domain Name is an Abusive Registration is given in clause 3a of the Policy. They include the following factor:
ii Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant…..
Parking
For reasons explained earlier the Expert finds it appropriate to consider only such use or threatened use that has occurred since the Respondent was made aware of the Complainant's Rights in mid-November 2008. This does not include the parking of the Domain Name. The Domain Name was parked as at 12 November 2008 as the screenshot annexed to the Complaint shows. The date that the parking began is not relevant. It has since ceased (evidenced by the search by the Expert on 16 February 2009). The date that it ended is not available to the Expert. Because the expert has no evidence that the parking continued after the Respondent was made aware of the Complainant and its Rights it would not be appropriate to take it into account in this Decision.
Actual use
There has been no substantive use of the Domain Name by the Respondent since the respondent became aware of the Complainant and its Rights or indeed at all.
Threatened use
The Response (filed on 5 December 2008) records that plans are afoot to operate a website selling products that are similar to those sold by the Complainant (products relating to combating snoring). The Expert finds that the indication in the Response of the Respondent's plans to trade under the Domain Name amounts to a threat to use the Domain Name for the purposes of the Policy.
The Complainant relies on the likelihood of confusion occurring once the website is up and running. Clause 3a of the Policy expressly provides that the likelihood of confusion can be taken into account in determining whether there is an Abusive Registration. The Expert finds that the Respondent's proposed website amounts to a threat to use the Domain Name in a way that will inevitably cause confusion among those sectors of the public with an interest in snoring-related products. The overall range and theme of products that would be on offer by both Parties is similar within a relatively specific marketplace. Given the strong similarity between the Domain Name and the Complainant's SNORESTORE mark and the equally strong similarity in the respective product range it is difficult to conceive that the Respondents website could avoid creating the impression that the Respondent's site is at the very least associated with the Complainant (even if such confusion were not intended by the Respondent). The Expert does not accept that the Respondent's omission of earplugs from its proposed range will mean that there is a significant difference between the products sold by the Respondent and the Complainant such as to displace any risk of confusion.
The Expert accordingly finds that the Respondent's plans amount to a threat to use the Domain Name and that any such use in these circumstances will on the balance of probabilities cause people or businesses to be confused into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
There is accordingly a threshold case of Abusive Registration. But this must be considered in the light of the Response.
Clause 4 of the Policy provides a non-exhaustive list of ways in which the Respondent may demonstrate that the Domain Name is not an Abusive Registration.
I. Before being aware of the Complainant's cause for complaint (not necessarily the "complaint" under the DRS), the Respondent has
A. used or made demonstrable preparations to use the Domain Name….. in connection with a genuine offering of goods or services……
Before becoming aware of this dispute, the Respondent states that it has spent time and expense preparing to trade. Correspondence with a supplier is produced. There is also reference to the Respondent's website being prepared-although no specific information is given as to what work this has involved. The correspondence between the Respondent and the Australian supplier predates registration of the Domain Name and makes no reference to the name Snore-Store. No evidence is before the Expert about preparations that specifically involve the Domain Name or the Snore-Store trading name or mark. As such, the Expert does not find that the Respondent has made demonstrable preparations to trade using the Domain Name as required under the Policy to displace the finding of Abusive Registration.
For these reasons the Expert finds that the use of the Domain Name (as defined in the Policy) by the Respondent amounts to an Abusive Registration. This finding is not, of course, intended to suggest that the Respondent is restricted from launching his new business venture. There is nothing abusive about fair competition. But within the remit of the Policy it would be abusive for the Respondent to make use of a Domain Name that is so similar to the Complainant's already well-established domain name in relation to such a similar product range.
The Expert finds that the Complainant has proved on the balance of probabilities that it owns Rights in respect of 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.
Accordingly, the Expert finds in favour of the Complainant and directs that the Domain Name be transferred to the Complainant.
Signed: Sallie Spilsbury 18 February 2009
