Pastorfrigor S.p.A. v Howard [2009] DRS 6302 (9 February 2009)

[ Home ] [ Databases ] [ World Law ] [ Multidatabase Search ] [ Help ] [ Feedback ] [ DONATE ] Nominet UK Dispute Resolution Service You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Pastorfrigor S.p. A. v Howard [2009] DRS 6302 (9 February 2009) URL: https://www.bailii.org/uk/cases/DRS/2009/6302.html Cite as: [2009] DRS 6302 [ New search ] [ Printable RTF version ] [ Help ] Dispute Resolution Service DRS 6302 Decision of Independent Expert Pastorfrigor S.p. A. and Paul Alfred Howard 1. Parties Complainant: Pastorfrigor S.p. A. Country: Italy Respondent: Paul Alfred Howard Country: GB 2. Domain Name pastorfrigor.co.uk ("the Domain Name") 3. Procedural Background The Complaint was filed with Nominet on 19 September 2008. Nominet validated the Complaint on 22 September 2008 and notified the Respondent by post and by email, informing him at the same time that he had until 13 October 2008 to file a Response. The Respondent filed a Response on 7 October 2008. Nominet notified the Complainant that it had until 15 October 2008 to file a Reply, and the Complainant did so on 15 October 2008. The Informal Mediation procedure failed to produce an acceptable solution for the parties and so on 3 December 2008 Nominet informed the Complainant that it had until 17 December 2008 to pay the fee for the decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy"). On 11 December 2008 the Complainant paid Nominet the required fee. On 15 December 2008 the undersigned, Jane Seager ("the Expert"), confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as an 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/or impartiality. On 9 January 2009 the Expert sent a request for an additional submission by the Respondent to Nominet, in accordance with paragraph 13a of the Nominet Dispute Resolution Service Procedure ("the Procedure"). Nominet sent this to both parties by email on 12 January 2009 and gave the Respondent until 19 January 2009 to file a further statement and the Complainant until 26 January 2009 to file a reply to that further statement only. No further submissions were received by Nominet from either party. On 27 January 2009 Nominet sent the Respondent an email asking him to confirm that he did not wish to file a further statement, but no response was received. 4. The Facts The Complainant is an Italian manufacturing company working in the commercial refrigeration industry. It was founded over 40 years ago and now has a number of foreign subsidiaries. The Complainant is the registered proprietor of UK trade mark registration number 2481669 (filed on 6 March 2008) and Italian trade mark registration number 922405 (filed on 13 March 2000). Both of these trade marks are word and design marks consisting of the letters PF in large stylized capital letters and the word "pastorfrigor" in smaller text beneath. The Complainant had a UK subsidiary known as Pastorfrigor UK Limited, but at some point in January 2008 this company changed its name to Coolfast Limited ("Coolfast"). Around the same time, Coolfast became independent of the Complainant, but continued to operate in the refrigeration industry. The Complainant now has a different UK subsidiary company, Pastorfrigor Limited, and thus the Complainant and Coolfast no longer operate as part of the same group and are effectively competitors of one another. The Domain Name was registered by the Respondent on 9 July 2001 in his capacity as a representative of the Complainant's UK subsidiary. However as a result of the above reorganisation, the Respondent is no longer connected with the Complainant's group. The Respondent/Coolfast was previously also the registrant of , , , , , but these domain names are now in the ownership of the Complainant (the Complainant filed a complaint with the World Intellectual Property Organisation (WIPO) in relation to the last four domain names, but this was settled before decision). At the time that the Complaint was filed, the Domain Name was pointing to a blank page. This is still the case at the date of the decision. 5. The Parties' Contentions Complaint The Complainant asserts that the Domain Name is absolutely identical to its UK and Italian trade marks, both used for products in Class 11 ("refrigeration appliances, installations, equipment and apparatus; cooling appliances and installations; industrial refrigerated display units and cabinets; parts and fittings for all of the aforesaid goods"). Furthermore, the Complainant points out that the Domain Name is also absolutely identical to the legal name of the Complainant, Pastorfrigor S.p. A, and to the domain name , registered in early 1997. According to the Complainant, Pastorfrigor UK Limited was formed in 2001 as a joint venture between the Complainant and UK employees to establish imported sales in the UK. However in 2008 the agreement between the parties came to an end and the UK company changed its name to Coolfast and started to sell its own products manufactured to customer order. The Complainant asserts that the Respondent has no rights or legitimate interests in the Domain Name because Pastorfrigor UK Limited no longer exists. As a result the Respondent no longer has any rights or legitimate interests in the word "pastorfrigor", which is owned solely by the Complainant. The Complainant points out that it and its current UK distributor, Pastorfrigor Limited, are now competitors of Coolfast. The Complainant states that the Respondent/Coolfast holds five other domain names which are absolutely identical to the Complainant's trade marks ( , , , , ) and adds that it has filed a complaint with the WIPO Arbitration and Mediation Center in relation to the last four. The Complainant asserts that the only reason that the Respondent is holding the Domain Name is to prevent the legitimate owner of the PASTORFRIGOR trade marks from using it and developing its business on the web for UK customers. According to the Complainant, the Respondent has no interest in holding the Domain Name because it is not being used and is just directing to an empty page. Until the Respondent was formally asked to transfer the Domain Name to the Complainant, several weeks before the Complaint was filed, it was redirecting to the Coolfast website at www.coolfast.com, along with the other five domain names referred to above. In the Complainant's opinion this clearly demonstrates that the Respondent's goal was to mislead potential customers looking for the Complainant's products. The Complainant supports this contention with screen shots taken from www.archive.org, both whilst the Respondent's company was part of the Complainant's group and afterwards, when the agreement between the Complainant and the Respondent's company had come to an end. The first screenshot, taken on 15 January 2008, shows the Domain Name redirecting to a website displaying information about Pastorfrigor UK Ltd, including the Complainant's distinctive logo, whilst the second (no date given) shows the Domain Name redirecting to a blank page with the words "Coolfast" at the top and bottom, plus various links and the email address sales@coolfast.com. The Complainant also asserts that, before the Respondent was aware of the commencement of the WIPO proceedings, the Domain Name was pointing to a blank page, but the icon in the address bar at the top was a stylized C, which is the same as the icon in the address bar of www.coolfast.com. In the Complainant's opinion, this created confusion and a risk that Coolfast would be associated with the Complainant, now a competitor. According to the Complainant, the icon was removed once the Respondent became aware of the WIPO proceedings. The Complainant states that the Respondent is using , , , to earn money while displaying links to the Complainant's competitors or even adult sites. According to the Complainant, the domain names are parked with Sedo, which allows the Respondent to earn money from them. The Complainant therefore requests transfer of the Domain Name. Response The Respondent states that he registered the Domain Name in 2001 for the use of the then UK distributor of the Complainant's products. According to the Respondent, the five other domain names were registered in 2007 in order to improve marketing for Pastorfrigor products in the UK. The Respondent asserts that the Complainant had the same opportunity to purchase these domain names but did not do so. The Respondent states that when the company changed its name to Coolfast, all the pastorfrigor domain names (including the Domain Name) were redirected to a blank web page. The Coolfast icon was left in place inadvertently and displayed in the address bar, but this was done in error and there was no intention to mislead or confuse. According to the Respondent, the icon and redirects were removed as soon as the Respondent was notified of this. The other domain names now display the default UKREG parking page for non-hosted domains and all links are placed there by UKREG. According to the Respondent, Coolfast is not responsible for these links, and has no interest in making money from domain clicks. The Respondent asserts that, as the Domain Name has been in use for more than seven years, there is still considerable email traffic to the corresponding email address. Whilst a great deal of it is now unimportant, there are still significant numbers of emails containing commercially sensitive information. According to the Respondent, every effort has been made to make customers and suppliers aware of Coolfast's new email address. However, the Respondent asserts that Coolfast has no control over distribution lists and historical email contact lists in use by other people, and it can typically take up to five years to clear email traffic. To demonstrate this, the Respondent attaches a list of email traffic linked to the Domain Name for the first three weeks of September 2008, with sensitive details blacked out (although the Respondent states that such details could be made available for the Nominet mediator should this be required). The Respondent points out that, if the Domain Name was transferred to the Complainant, the corresponding email traffic would become available to the Complainant, and this would be unacceptable to the Respondent. In addition, the Respondent points out that the Complainant is also using the Coolfast name as a Google Adword. This results in a Google search on the term "Coolfast" displaying a sponsored link to the website of the Complainant's new UK distributor at www.pastorfrigoruk.com. The Respondent asserts that, despite accusing Coolfast of using misleading and confusing tactics, the Complainant is actively engaged in deception itself, and in the Respondent's opinion, the Complainant would certainly scan emails for sensitive information in order to gain a commercial advantage. In conclusion, the Respondent requests that he be allowed to keep the Domain Name for a period of at least two years in order to prevent confidential commercial information from becoming available to a competitor, namely the Complainant. In the interim period, and as a gesture of goodwill, the Respondent would be prepared to redirect the Domain Name to a website of the Complainant's choice, on condition that the Complainant ceased using the Coolfast name to display Adword sponsored links to its new UK distributor. Reply In its Reply, the Complainant points out that the Respondent's request to hold the Domain Name for at least two years has no legal basis as far as the Policy is concerned. In addition, in the Complainant's opinion, the Respondent's statement confirms the fact that the Respondent has no rights in the Domain Name. As far as the Complainant is concerned, if the Respondent has been unable to communicate the change of email address to all contacts after nine months, this is the Respondent's own fault. Furthermore, the Complainant states that it has also suffered as a result of its confidential commercial information becoming available to a competitor, because as soon as the Respondent's company changed its name to Coolfast many potential customers were falsely induced by the Respondent's use of the Domain Name to think that some kind of relationship still existed between the parties, even though this is no longer the case. The Complainant asserts that the Respondent could use the Domain Name (via the corresponding email address) to enable Coolfast to make contact with customers looking for the Complainant's products and then divert them to Coolfast products instead. According to the Complainant, this has in fact been happening for over nine months and is still happening at the present time. Finally, the Complainant states that it does not want to unfairly obtain Coolfast sensitive information and says that it will deploy any possible system to avoid this. The Complainant asserts that it is prepared to evaluate any proposal from the Respondent as long as this involves immediate transfer of the Domain Name. 6. Discussion and Findings General Under paragraph 2(a) of the Policy, the Complainant is required to demonstrate, on the balance of probabilities, that: (i) It 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. Complainant's Rights The Complainant has demonstrated that it holds Italian and UK trade marks in the term PF PASTORFRIGOR. The Expert is therefore satisfied that the Complainant has Rights in this term under the Policy (which defines Rights as including, but not limited to, rights enforceable under English law). Furthermore, the Policy stipulates that the name or mark in which the Complainant has Rights (PF PASTORFRIGOR) must be identical or similar to the Domain Name (pastorfrigor.co.uk). It is accepted practice under the Policy to discount the ".co.uk" suffix, and so the only difference between the Domain Name and the Complainant's mark is the additional letters PF. The Expert is of the opinion that this is not significant, especially because the word "pastorfrigor" features prominently as text in the overall design of the Complainant's mark. The Complainant's mark and the Domain Name are thus similar to one another. As a result the Expert finds that paragraph 2(a)(i) of the Policy is satisfied and the Complainant has Rights in respect of a mark which is similar to the Domain Name. Abusive Registration Abusive Registration is defined in paragraph 1 of the Policy to mean a Domain Name which: (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. There seems to be no suggestion on the part of the Complainant that the Domain Name took unfair advantage of or was unfairly detrimental to the Complainant's Rights at the time that it was registered . Indeed, given the facts as set out above, it would appear that the Respondent registered the Domain Name with the consent of the Complainant in order to use it in connection with the Complainant's UK operation. Limb (i) of the above definition must therefore be discounted. In order to succeed in obtaining a transfer order under the Policy, it is therefore necessary for the Complainant to prove, on balance of probabilities, that the Domain Name was used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights, in accordance with limb (ii) of the definition of Abusive Registration above. In this regard, paragraph 3(a) of the Policy sets out a non-exhaustive list of five factors which may be evidence of Abusive Registration. In the Expert's opinion, paragraph 3(a)(ii) is particularly relevant in this case, and this reads as follows: " 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 " Before the reorganisation of the Complainant's group, the use of the Domain Name was indeed connected with the Complainant, as it was used to promote the Complainant's UK operations. However, once the reorganisation took place and the Complainant and the Respondent effectively became competitors of one another, this was no longer the case. The use of the Domain Name after the split and the corresponding change of name to Coolfast is therefore key to establishing whether or not abuse took place. In this regard, the Complainant provides a screen capture showing the Domain Name being used to point to the Coolfast website. Given the surrounding facts (as evidenced by the Complaint, the Response and the accompanying annexes) the Expert is satisfied that, during the time that such pointing took place, any customers wishing to access information about the Complainant's products via the Domain Name would have effectively found themselves on a competitor's website, namely that of the Respondent. In the Expert's view, certain customers may have been astute enough to realise this, but others may well have been misled by the Respondent's use of the Domain Name into thinking that the Complainant and the Respondent were still somehow connected with each other, as was previously the case. In this regard it is worth noting that even though the name of the Respondent's company changed as a result of the split, the address and telephone numbers did not, and these details clearly appear on the website that the Domain Name was pointing to, both before and after the reorganisation. In the Expert's opinion, the Respondent's conduct thus falls squarely within paragraph 3(a)(ii) of the Policy. In any event, whether confused or not, once on the Respondent's website, certain customers may then have decided to do business with the Respondent anyway, thus resulting in the Respondent's unfair enrichment as a result of the use of the Domain Name, and potentially the Complainant's unfair detriment, had the customer been planning to buy from the Complainant in the first place. The Expert therefore finds that, on balance of probabilities, limb (ii) of the definition of Abusive Registration is satisfied and that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. The fact that the Domain Name is no longer being used to point to a website is of no assistance to the Respondent, as if this was the case all Respondents could correct abusive use simply by ceasing it once notified of a Complainant's grievance. Furthermore, the Respondent asserts in his Response that the redirection was done in error, but was unable to elaborate further on this, even when invited to do so by the Expert in a further submission. The Expert also remains unconvinced by the Respondent's argument that transfer of the Domain Name may result in the Complainant obtaining the Respondent's confidential commercial information by email. This is partly because it is now over a year since the Respondent's company changed its name (and thus its email address) and partly because the Respondent chose not to supply any more detailed information about such confidential emails when invited to do so by the Expert in the request for a further submission. In conclusion, the Expert has considered the admissibility, relevance, materiality and weight of the evidence as a whole and is satisfied that the Complainant has succeeded in proving, on balance of probabilities, that the Domain Name is an Abusive Registration in accordance with paragraph 2(a)(ii) of the Policy. 7. Decision In light of the above findings, namely that the Complainant has Rights in a mark which is similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name be transferred to the Complainant. Jane Seager 9 February 2009 BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII URL: https://www.bailii.org/uk/cases/DRS/2009/6302.html