NOMINET DISPUTE RESOLUTION SERVICE

DRS 05506

Decision of Independent Expert

Sussex Safetywear

and

Safetywear And Signs Limited

1.	Parties:

Complainant:		Sussex Safetywear
Country:		GB

Respondent:		Safety Wear And Signs Limited
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 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”.  

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 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

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.

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 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;

(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.”
Sc

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 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