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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sussex Safetywear v. Theo Lyons

Case No. D2008-0380

1. The Parties

The Complainant is Sussex Safetywear of East Lodge Farm, Hurstpierpoint, United Kingdom of Great Britain and Northern Ireland, represented by Sprecher Grier Halberstam LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Theo Lyons of Safety Wear & Signs of Golding Barn Farm, Henfield, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <sussexsafetywear.com> (the “Domain Name”), is registered with Schlund + Partner (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2008. On March 11, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 12, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 17, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2008.

The Center appointed Tony Willoughby as the sole panelist in this matter on April 16, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a business, which as its name indicates, is based in Sussex and is engaged in the marketing of safety wear.

The Respondent is a director of Safety Wear & Signs Limited, a company incorporated in England in 1981, formerly named Supreme Discount Rentals Limited (until December 1992) and Presidental Laboratories (until May 2007). The Respondent’s company, like the Complainant, is also based in Sussex and is also engaged in the marketing of safety wear. It adopted its current name on May 25, 2007.

The Respondent registered the Domain Name on July 23, 2007. The Domain Name resolves to the Respondent’s website at “www.safetywearandsigns.co.uk”.

5. Parties’ Contentions

A. Complainant

The Complainant claims to have been trading since 1995 under its name, Sussex Safetywear, and claims unregistered trademark rights in respect of that name. The Complainant contends that the Domain Name is identical to a trademark in which it has rights.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent has not replied to the Complainant’s contentions in this administrative proceeding, but the Complainant has exhibited correspondence with the Respondent in which the Respondent and/or its lawyers have contended as follows:

- The Domain Name is generic and not capable of giving rise to unregistered trademark rights.

- The Respondent and his company have never misrepresented that they are anybody other than themselves. They have not passed themselves off as the Complainant.

- The Respondent has been using the Domain Name for a bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.

- If there has been any confusion, it has been confusion, which is inevitable given the descriptiveness of the Complainant’s name and not a form of confusion in respect of which the Complainant is entitled to any relief by way of a passing off action.

- The Domain Name was registered for no reason other than that it accurately describes the Respondent’s company’s geographical location and the goods it sells.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

B. Identical or Confusingly Similar

The Domain Name is identical to the Complainant’s trading name. The issue is as to whether or not the Complainant has trademark rights in its trading name.

There are no registered rights, so the Complainant relies upon its claimed common law rights generated as a result of its use of the name since 1995. The unchallenged evidence of the Complainant is that its turnover over in each of the last five years has exceeded one million pounds and the manner in which the Complainant has used its trading name has been put in evidence before the Panel. The Panel is satisfied that, in principle, sales of that order are capable of giving rise to unregistered trademark rights in respect of the name under which they are conducted. The Panel is also satisfied that the manner in which the Complainant has used its name has been as a prominent indication of trade origin.

In correspondence the Respondent has contended that the Complainant’s name is so descriptive that it is incapable of generating common law rights.

It is true that the Complainant’s trading name is strongly descriptive of the Complainant’s location and business, however it is not the case that strongly descriptive names are incapable of generating trademark rights. English China Clay is an example; as is British Gas.

The Complainant is a much smaller business than either of those examples, but from the evidence put in by the Complainant (and unchallenged by the Respondent) the Respondent is in no position to contend that the Complainant’s name has not acquired a secondary meaning in the field in which both parties operate. A supplier to the Complainant, has confirmed that he attended a meeting with the Respondent and his co-director 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.

If this is true (and the Respondent has not challenged it), the Respondent knew that the Complainant’s name had already acquired a secondary meaning when he registered the Domain Name.

For the purposes of this administrative proceeding, the Panel finds that the Complainant has unregistered trademark rights in its name, Sussex Safetywear, and that the Domain Name (absent the generic domain suffix) is identical to the Complainant’s trademark.

C. Rights or Legitimate Interests

The Respondent contends in correspondence with the Complainant that the fact that it carried on business using the Domain Name from July to October 2007, when the Complainant first raised its concerns with the Respondent, constitutes a bona fide use of the Domain Name for the purposes of paragraph 4(c)(i) of the Policy.

However, the date at which the Complainant first raised its concerns with the Respondent is not the key date. If the Respondent was aware at date of registration of the Domain Name of the existence of the Complainant and knew that his use of the Domain Name was likely to divert business from the Complainant to the Respondent, no subsequent use of the Domain Name could conceivably be regarded as bona fide.

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 Panel finds it impossible to believe that when the Respondent registered the Domain Name and when his company adopted its name in July 2007, he was not well aware of the existence of the Complainant in the same line of business in the same geographical area.

Such a choice of Domain Name was calculated to cause confusion and did in fact cause confusion. The Complainant cites several examples, one of which involved and is independently verified by a senior officer of the Complainant’s bank.

While the Respondent has protested his innocence in correspondence with the Complainant, the Panel is persuaded that the evidence to the contrary is overwhelming.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

In light of the above findings the Panel has no hesitation in finding that the Domain Name, which the Respondent has used to redirect visitors to his company’s website, was registered by the Respondent with a view to diverting business from the Complainant to his company.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <sussexsafetywear.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: April 29, 2008