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NOMINET DISPUTE RESOLUTION SERVICE
DRS 05506
Decision of Independent Expert
Sussex Safetywear
and
Safetywear And Signs Limited
1. Parties:
Complainant: Sussex Safetywear
Address: East Lodge Farm, Malthouse Lane
Hurstpierpoint
Sussex
Postcode: BN6 9LA
Country: GB
Respondent: Safety Wear And Signs Limited
Address: Unit 19B Golding Barn Farm
Henfield Road
Small Dole
West Sussex
Postcode: BN5 9XH
Country: GB
2. Domain Name:
sussexsafetywear.co.uk (the “Domain Name”)
3. Procedural Background:
3.1 The Complaint was submitted to Nominet on 3 March 2008 with the
Complaint entered into the database system on 4 March 2008, and hard copies of
the Complaint were received in full by Nominet on 6 March 2008. On 10 March
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2008, the Complaint was validated by Nominet and it was sent to the Respondent
by post and e-mail on 10 March 2008, with a letter informing the Respondent that
it had 15 working days in which to respond to the Complaint.
3.2 No response was filed by the Respondent. On 8 April 2008, the
Complainant paid the requisite fee to obtain an Expert Decision pursuant to
paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).
3.3 On 10 April 2008, Kathleen Harris-Fox, the undersigned (“the Expert”),
confirmed to Nominet that she knew of no reason why she could not property
accept Nominet’s Invitation to him to act as an Expert in this case and a formal
appointment of the Expert was made on 17 April 2008.
4. Outstanding Formal/Procedural Issues
There are, so far as I am aware no live procedural issues raised by either party
which have a bearing upon this decision.
5. The Facts
5.1 The Complainant carries on the business in the supply and sale of safety
wear and equipment, signs and corporate clothing under the name “Sussex
Safetywear” continuously since 1995 and is located in Hurstpierpoint, Sussex. The
range of products include various different styles and forms of footwear, helmets,
gloves, knee pads, first aid kits, gas detectors, torches and signage amongst other
products. According to the Complainant, it currently employees 14 staff with an
average year-on-year turnover of approximately £1,350,000 over the past five
years, although no evidence in support of these contentions was supplied by the
Complainant.
5.2 The Complainant does not operate a website related to its business for
reasons of religious conviction, but rather chooses to rely on what some might wish
to call traditional means of advertising and publicity, namely, through catalogues,
calendars, the telephone directory Yellow Pages, passing trade, word of mouth and
personal recommendation. Although the Complainant does not have a website it
does receive emails using the address “@sussexsafety.com”.
5.3 The Respondent is a limited company (Company No. 01585597) having
changed its name in May 2007 to its present identity of “Safety Wear And Signs
Limited”. The Respondent is located in Small Dole, West Sussex. From a review of
the Respondent’s website which may be accessed using the Domain Name, the
Respondent is involved in a similar area of business to the Complainant, namely,
the supply and sale of safety wear, including safety footwear, safety goggles,
gloves, signs, embroidery, high visibility clothing, etc and it operates a bespoke sign
manufacturing service . According to the Complainant, the distance between the
competing businesses is approximately 9.5 miles.
5.4 A Nominet Whois search shows that the Respondent registered the Domain
Name on 23 July 2007 and has used the Domain Name to link to its website
operating under the domain name of “safetywearandsigns.co.uk”.
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6. Contentions of the Parties
Complainant
The Complainant’s contentions may be summarised as follows:
6.1 The Domain Name is identical or similar to a name or mark in which it has
Rights
6.2 The Complainant does not have a registered trade mark for the name
SUSSEX SAFETYWEAR. However, the Complainant asserts that it has Rights, as
defined in the Policy, in the name. To support this assertion, the Complainant
exhibits a number of pages from its most recent catalogue of which the
Complainant states that 5000 copies are distributed, including DVDs; a listing
from the most current Yellow Pages covering the Sussex area which contains an
entry listing Sussex Safetywear with its address and telephone number; a copy of
the cover from the Sussex Safetywear 2008 calendar and the Complainant has
even supplied photographs of the signage displayed at their premise.
6.3 The Complainant states it has acquired Rights in its name “by the law of
passing off” even though in their words the name “is descriptive of part of the
Complainant’s business”. The Complainant cites a previous DRS decision (DRS
4662 Fireplace Traders Ltd v Fireplace Consultants Ltd) in support of its argument
that “according to Nominet DRS policy where a name has become distinctive of a
business, it is not debarred from protection on the ground that it is wholly
descriptive” of the business.
6.4 The Complainant asserts that the Domain Name is identical or similar to
the Complainant’s name, SUSSEX SAFETYWEAR, in which it has built up goodwill
and has a reputation.
6.5 The registration of the Domain Name by the Respondent is an Abusive
Registration.
6.6 The Complainant contends that the Respondent purposely registered the
Domain Name for the purpose of unfairly disrupting the business of the
Complainant. The Complainant submits that the Respondent has used the
Domain Name in a way which has confused people into believing that the Domain
Name is registered to, operated or authorised by, or otherwise connected with the
Complainant.
6.7 The Complainant states that the Respondent’s directors purposely
registered the Domain Name and “boasted that they would be getting the
Complainant’s business”. In the Complaint the Complainant refers to an
Affirmation of Jim Lewis and an Email from Charles Crouchman in support of this
contention.
6.8 The Complainant asserts at paragraph 26 of the Complaint that the
Respondent is using the Domain Name unfairly to divert away customers and
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potential customers of the Complainant through use of confusion. The
Complainant then went on to argue that the Complainant’s name is distinctive of
the Complainant’s business and that SUSSEX SAFETYWEAR is not in normal use
except as the Complainant’s name and that use of the term SUSSEX does not
impart any special quality, real or reputed, to safeywear. The Complainant
however in paragraph 11 does state that the name is descriptive of part of the
Complainant’s business.
6.9 Finally, the Complainant also asserts that the Domain Name is confusingly
similar to the Complainant’s trading name such that the use of the Domain Name
by the Respondent is unfairly disrupting the business of the Complainant. In this
regard, the Complainant seeks to rely on an incident of confusion, namely an order
was faxed in September 2007 by a customer (Lloyds TSB Registrars) to the
Respondent where the intended recipient was clearly the Complainant--the
Respondent subsequently handed the order over to the Complainant. The
Complainant supplied a copy of the faxed order form which was indeed sent to the
Respondent’s fax number but was clearly for the attention of the Complainant.
The Complainant states in paragraph 20 of its Complaint that the customer had
used a fax number taken from the Respondent’s website which she believed to be
the Complainant’s website. The Complainant also contended that “in other cases
where orders were less specific, such confusion is liable to remain undetected.”
The complainant also points to a further episode where there was confusion on
the part of a loan officer from the Royal Bank of Scotland stating that he found it
“extremely confusing to come across a company with the same name in the same
industry and in fact we did think it was you [Domain Name] until we were able to
clarify at our meeting.” In support, the Complainant provides a copy of an email
received by the Complainant from the RBS loan officer as independent evidence
verifying the loan officer’s confusion regarding the Domain Name.
The Complainant also refers to an incident where a customer had contacted the
Complainant to enquire why the Complainant’s website (of which there is none)
would transfer to another company. As a result, the Complainant states that the
customer was confused and had thought the Domain Name was the Complainant.
The Complainant also described an incident where a customer mistakenly
assumed that after reviewing the Respondent’s website that it was the
Complainant’s website and then while en route to the address listed on the
website (the Respondent’s presumably) he came across the Complainant’s
premises having spotted the SUSSEX SAFETYWEAR signage. The Complainant
however provides no independent evidence supporting the facts of these incidents.
Respondent
The Respondent has not filed a Response.
7. Discussion and Findings
General
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In order to succeed, the Complainant must prove, on the balance of probabilities
that:-
it has Rights in respect of a name or mark which is identical or similar to the
Domain Name (paragraph 2(a)(i) of the Policy); and
the Domain Name in the hands of the Respondent, is an Abusive Registration
(paragraph 2(a)(ii).
Paragraph 2b of the Policy provides that “the Complainant is required to prove to
the Expert that both elements are present on a balance of probabilities”.
7.1 The Complainant’s Rights
a. First, it is necessary for the Complainant to show that it has Rights in a
name which is identical or similar to the Domain Name. The Policy defines
“Rights” 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 a term which
is wholly descriptive of the Complainant’s business.”
b. Accordingly, it is necessary to consider (1) whether the Complainant has
rights in the name SUSSEX SAFETYWEAR, which are enforceable under English law
and (2) whether the name is wholly descriptive of the Complainant’s business.
c. Does the Complainant have Rights in a name which is similar or identical to
the Domain Name which are enforceable under English Law?
d. As it is usual in domain name disputes to disregard the top level or country
code suffix, as being a necessary component of a domain name’s address, it is
necessary to consider whether the Complainant has Rights in the name
SUSSEXSAFETYWEAR. Because internet addresses do not permit spaces between
words, there is no practical distinction to be drawn for these purposes between
SUSSEX SAFETYWEAR and SUSSEXSAFETYWEAR.
e. First, it is accepted that the Domain Name is identical or similar to the
name SUSSEX SAFETYWEAR.
f. Does the Complainant have rights in this name? It does not have a
registered trade mark for the name SUSSEX SAFETYWEAR. Accordingly it will be
necessary to consider whether SUSSEX SAFETYWEAR, which is sufficient for it to
claim Rights.
g. In support of its assertion that it has Rights in the name SUSSEX
SAFETYWEAR, the Complainant places reliance on the facts and matters set out at
paragraph 6.2 above. Regrettably the Complainant did not provide much
evidence in support of its claim that it has acquired rights in the name, such as,
evidence of the amount it has spent on advertising and promoting the name or of
the extent of geographic coverage of the Complainant’s client base, etc. It would
have been useful for the Complainant to have submitted this type of evidence
however there are other factors that could be considered in reaching this
determination.
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h. The Complainant, however, has provided samples of its latest customer
calendar, its catalogue and listings from the Yellow Pages. The Complainant only
provided the most recent samples and again, it would have been helpful had the
Complainant provided samples of its catalogues, of any advertisements or
promotions from newspapers (if any), pervious calendars, etc. that would have
shown the extent of the business and use of the name since opening its doors in
1995. No evidence has been provided which in fact supports that the business has
been trading under the name SUSSEX SAFETYWEAR since 1995. The Respondent
however has not filed any evidence to dispute this assertion by the Complainant
regarding its rights in the name SUSSEX SAFETYWEAR and no dispute on this
point was raised in various private communications between the Parties submitted
with the Complaint.
i. In the DRS appeal decision of Seiko UK Limited v Designer
Time/Wanderweb (DRS 00248) it was noted that the requirement to demonstrate
“rights” is not a particularly high threshold test. However, from the various
samples provided by the Complainant and owing to the lack of evidence directly
contradicting that the Complainant has been trading under the name SUSSEX
SAFETYWEAR since at least 1995, the Expert finds on a balance of probabilities
that the Complainant has rights in respect of the name SUSSEX SAFETYWEAR.
j. Is the name, SUSSEX SAFETYWEAR, wholly descriptive?
k. Under the Policy, even if a Complainant has established rights in a name, it
cannot rely on rights in a name or term which is wholly descriptive of its business.
Is SUSSEX SAFETYWEAR wholly descriptive or generic of Complainant’s business?
l. I am persuaded by the arguments raised by the Complainant in its
Complaint, particularly in paragraph 11 of its Complaint, namely that where a
name has become distinctive of a business it should therefore not be debarred
from protection under the Nominet DRS Policy on the grounds of being “wholly
descriptive”. In a similar situation to that of the present case, the Expert in
Aldershot Car Spares v. Gordon (DRS 02464) found that the domain name of
“aldershotcarspares” was not wholly descriptive or generic of the services (namely
a business owner located and operating out of Aldershot Hampshire in the
automotive trade). It was found that the Complainant in that case had been
trading under “Aldershot Car Spares” for over 10 years and as such had acquired a
bundle of rights in the form of common law or unregistered rights in that name
and therefore was not generic or wholly descriptive of that Complainant’s
business. See also Sussex Skips v. Sussex Waste Recycling Ltd (DRS03886) wherein
the Complainant in that case regarding the domain “sussexskips.co.uk” had been
trading under the name Sussex Skips for three years and that satisfactory goodwill
existed in the name to satisfy the Expert that the Complainant had sufficient
rights in their name to continue with the complaint.
m. In the present case, the Complainant claims that it has traded under the
name “Sussex Safetywear” for 13 years (since 1995). The Complainant contends
that Sussex Safetywear is not generic or wholly descriptive but rather refers
exclusively to the Complainant. The Complainant has provided examples of
catalogues, the Yellow Pages, calendars, etc indicating that they are no “fly by
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night” affair but are in fact a substantial business with an average turn-over for
the past five years of over £1.3 million.
n. Accordingly, the Expert is satisfied that the Complainant has adequate
goodwill and thus unregistered rights in respect of Sussex Safetywear and that the
Domain Name comprises the Complainant’s name along with the generic domain
suffix (.co.uk). Further, the Expert finds that the Domain Name is not wholly
descriptive or generic of Complainant’s business and as such the Complainant is
able to rely on its Rights in the name for purposes of this DRS complaint.
o. On the basis of the above, the Expert finds that the Domain Name is
identical to a name which the Complainant has Rights.
7.2 Abusive Registration
The next question to be answered is whether the registration of the Domain Name
is an Abusive Registration? An 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 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.”
A non-exhaustive list of factors which may constitute evidence that the Domain
Name is an Abusive Registration are set out at paragraph 3 of the Policy.
Paragraph 3 provides that:
“A non-exhaustive list of factors which may be evidence that the Domain Name is
an Abusive Registration is as follows:
(i) Circumstances indicating that the Respondent has registered or otherwise
acquired the Domain Name:
(A) primarily for the purposes of selling, renting or otherwise transferring
the Domain Name to the Complainant or to a competitor of the Complainant, for
valuable consideration in excess of the Respondent’s documented out-of-pocket
costs directly associated with acquiring or using the Domain Name;
(B) as a blocking registration against a name or mark in which the
Complainant has Rights; or
(C) primarily for the purpose of unfairly disrupting the business of the
Complainant;
(ii) Circumstances indicating that the Respondent is using the Domain Name in
a way which has confused people into believing that the Domain Name is
registered to, operated or authorised by, or otherwise connected with the
Complainant;
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(iii) In combination with other circumstances indicating that the Domain Name
in dispute is an Abusive Registration, the Complainant can demonstrate that the
Respondent is engaged in a pattern of making Abusive Registrations.”
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The burden is on the Complainant to prove that the Domain Name in the hands of
the Respondent should be regarded as an Abusive Registration.
7.3 The Complainant has argued that the Respondent purposely registered the
Domain Name in order to divert the Complainant’s customers to themselves and
that there were numerous examples of confusion by members of public and
Complainant’s own customers. The Complainant also states that the
circumstances and evidence indicate that the Respondent registered the Domain
Name for purposes of disrupting Complainant’s business and/or as a blocking
registration against the Complainant’s name.
7.4 Used in a way which has caused confusion
The Complainant has provided examples (undisputed by the Respondent)
supporting their argument that various customers and/or potential customers
confused the Respondent as being in fact Sussex Safetywear. Examples include a
loan officer from the Royal Bank of Scotland being greatly confused when
searching for background information concerning the Complainant during the
process of completing a loan application. The loan officer supplied independent
comment regarding the confusion he met when attempting to research
information regarding the Complainant using the internet.
A further example, although rectified by the Respondent, was for a product order
intended for the Complainant but mistakenly faxed to the Respondent when the
customer had used contact details taken from the Respondent’s website.
The Complaint also discusses other examples of confusion (telephone calls)
although no direct evidence in support is provided. Again, the Respondent has
provided no contradictory evidence and the evidence provided by the Complainant
appears, by and large, to be independently verified. There can be little doubt that
such a choice of Domain Name was calculated to cause confusion and has caused
confusion.
The Expert is satisfied that the Domain Name is being used by the Respondent in
such a way which has resulted in confusion by people believing that the Domain
Name is registered to, operated by or authorised by or otherwise connected with
the Complainant.
7.5 Disruption and being a blocking registration against a name in which the
Complainant has Rights
A supplier to the Complainant, (Mr. Couchman), has confirmed that he attended a
meeting with the Respondent and in the course of which the Respondent stated
that they had registered domain names incorporating the Complainant’s name
and boasted that they would be getting the Complainant’s business. The
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Complainant’s supplier understood from this that the Respondent had registered
the Domain Name with a view to diverting the Complainant’s business.
There is little, if any, evidence to the contrary that the Respondent was not aware
at date of registration of the Domain Name of the existence of the Complainant
and therefore would have known that their use of the Domain Name was likely to
divert business from the Complainant to the Respondent. The evidence of the
Complainant’s supplier referred to above strongly supports the Complainant’s
contention that the Domain Name was registered with that intent. Moreover, the
Expert finds it wholly unlikely that when the Respondent registered the Domain
Name and when the Respondent renamed its company in July 2007, that the
Respondent was not fully aware of the existence of the Complainant operating in
the same line of business in the same geographical area---less that 10 miles apart.
The Expert finds that the Respondent has no rights or legitimate interests in
respect of the Domain Name.
8. Conclusion
I find that the Complainant has proven that they have the necessary 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. As a consequence, the Domain Name should be transferred to the
Complainant.
Signed: Kathleen D. Harris-Fox
Dated: 1 May 2008
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