Kingspan Group plc v Thomas [2005] DRS 02806 (02 August 2005) 

Nominet UK Dispute Resolution Service

DRS 002806

Kingspan Group Plc and Kingspan Access Floors Limited v Mark Thomas

Decision of Independent Expert

1.	Parties: 

First Complainant:Kingspan Group Plc 
Country:		Ie

Second Complainant: Kingspan Access Floors Limited 
Country:		UK

Respondent:	Mark Thomas
Country:		UK

2.	Domain Name:

kingspanfloors.co.uk (“the Domain Name”)

3.	Procedural Background:

The Complaint was lodged with Nominet on March 23, 2005.  Nominet validated the Complaint and notified the Respondent of the Complaint on April 4, 2005 and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent did not reply.  On May 10, 2005 the Complainants paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The Complainants filed a supplementary submission on July 18, 2005 recording that its ICANN complaints against the Respondent had been successful. 

Dawn Osborne, the undersigned, (“the Expert”) 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/or impartiality.

4.	The Facts:

The First Complainant is the owner of UK and CTM registered trade marks for KINGSPLAN and has traded under this name since 1972. The Second Complainant has traded under the name Kingspan Access Floors since 2001.

On June 17, 2002 the Respondent registered the Domain Name.

5.	The Parties’ Contentions:

Complainant:

The substance of the Complaint is as follows:

1.	The First Complainant has many registered UK and CTM trade marks for KINGSPLAN and has traded under this name since 1972. It is a market leader in the UK, trades throughout the world and is quoted on the Irish and London Stock Exchanges. It provides goods/services relating to access floors, insulated panels, insulation, building systems,building materials, transportable buildings and building elements, structural products, environmental containers and pollution control apparatus.     

2.	The Second Complainant has provided goods/services relating to access floors under the name Kingspan Access Floors since 2001. 

3.	The Domain Name is comprised of the registered and unregistered Trade Marks of the Complainants. The element “floors” in the Domain Name is generic and non distinctive. The Domain Name is either identical or very similar to the Trade Marks of the Complainants. 

4.	The predecessor of the Complainants had an informal referral relationship with the Respondent which ceased between 1996 and 1998. Since then the Respondent has been a customer of the Complainants purchasing products for installation for its customers. The Respondent and the Complainants offer competing installation services and the Respondent indicated the Domain Name would be used to market its services. The Domain Name was registered following the cessation of this informal referral relationship and at the time when the Complainants were announcing to their customers their intention to rebrand the Second Complainant under the name “Kingspan Access Floors”. The Respondent has offered the Domain name to the Respondent for purchase, but refused to sell for a reasonable out of pocket sum. The Respondent appears to have registered the name in an attempt to coerce the Complainants back into the former business relationship by disrupting their business, attracting internet visitors seeking the Complainant and/or to benefit from the customer confusion created by the domain name and any web site it may post thereon. The Domain Name currently resolves to an error page however other domain names held by the Respondent resolve to an active infringing site. 

5.	The Respondent has registered nine other Domain Names including the KINGSPAN Trade Mark to which it has attached a website offering its services. The Respondent admitted it had done this since the referrals from the Complainants had ceased to provide a new avenue for customer enquiries. The Respondent admitted there may be confusion but answered this by putting a disclaimer on its site which was inadequate as it did not state there was no connection between the parties (albeit that the current version of the disclaimer does). The site also featured the trade marks and logos of the Complainants and links to the Complainants’ web site.   

6.	The Respondent has never had any right to use the trade marks of the Complainants.

7.	The Respondent has registered the Domain Name to sell it for profit to the Complainants or to try to get other business benefit in money’s worth from the Complainants, to block the domain for its own purposes, to disrupt the Complainants’ business and to take advantage of custom from confused customers. The Registration of a number of Domain Names incorporating KINGSPLAN constitutes a pattern of conduct. The Domain Name in the hands of the Respondent is an abusive registration.             

Respondent:

The Respondent did not submit a Response. 

6.	Discussion and Findings:

General

To succeed in this Complaint the Complainants have to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that they have rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainants’ Rights

The Complainants are the proprietor of registered trade marks for KINGSPLAN. The Domain Name consist of the Complainants’ trade mark plus the generic element “floors” which indicating the industry in which the Complainants and the Respondent operate and, therefore, cannot distinguish the Domain Name from the Complainants’ Trade Mark. It is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic. 

The Expert finds that the Complainant has rights in respect of a name or mark, which is similar to the Domain Name.

Abusive Registration

This leaves the second limb. Are the Domain Names, in the hands of the Respondent, Abusive Registrations? Paragraph 1 of the Policy defines “Abusive Registration” as:-

“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.”

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. The only potentially relevant ‘factors’ in paragraph 3 are found in subparagraphs i, ii and iii which read as follows:

i	“Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A.	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.	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 or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.”
iii ”The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern”.    

The Respondent has not responded to refute any of the Complainants’ allegations. 

The Expert is of the opinion that the Respondent’s conduct and use of the Domain Name is indicative of relevant abusive conduct. The Respondent has offered to sell the Domain Name to the Complainants. However, the panel finds that it is most likely that the Respondent registered the Domain Name and the nine other domain names containing the Complainant’s trade mark to coerce the Complainants into recommencing referrals to the Respondent or to obtain customer enquiries direct. As such the Respondent registered the Domain Name to obtain valuable consideration in excess of out-of-pocket costs or to obtain business in circumstances where customers could be confused, where the Complainant’s business could be disrupted and the Complainants blocked from registering the Domain Name. Further the registration of ten domain names containing the Complainants’ trade marks constitutes a pattern of conduct. In the view of the Expert in its registration and use of the Domain Name the Respondent took unfair advantage or was unfairly detrimental to the Complainants’ rights. 

Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.

7.	Decision:

In light of the foregoing findings, namely that the Complainants have rights in respect of a name or 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 kingspanfloors.co.uk be transferred to the First Complainant.

August 2, 2005
Dawn Osborne