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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jewelultra Ltd. v. Splash Group
Case No. D2001-0283
1. The Parties
The Complainant is Jewelultra Ltd, a limited company incorporated under the laws of England and Wales, whose registered office is at 57 Upper Fant Road, Maidstone, Kent ME16 8BU. The Respondent is Splash Group, 18 Park Lane, Cottingham, East Yorkshire, HU16 5RD, England. See paragraph 6.1 below as to the precise identity of the Respondent.
2. The Domain Name and Registrar
The domain name in issue is <jewelultra.com>. The Registrar is Network Solutions, Inc.
3. Procedural History
3.1 The Complaint was dated February 23, 2001, and received by the WIPO Arbitration and Mediation Center ("the Center") on February 23, 2001.
3.2 No formal response to the Complaint has been filed. Notice of the proceedings was served on the Respondent in accordance with the rules applicable to the Uniform Domain Name Dispute Resolution Policy ("the Policy"). Notification of Respondent Default was served on March 29, 2001. A Panel was constituted on April 18, 2001, with a single panelist, Nick Gardner. A statement of acceptance and a declaration of impartiality and independence has been filed by the Panelist. The dated scheduled for the Panel to render its decision is May 1, 2001.
3.3 On the April 24. 2001, the Center was sent by e-mail from Splash Products Limited a copy of a letter addressed to Nominet UK (the United Kingdom body responsible for administration of the ".uk" domain space). This letter deals with a parallel complaint relating to the "jewelultra.co.uk" domain name. The Panel admits this letter and proposes to treat it as the Respondent’s Response.
3.4 The Complainant is represented by the Trade Mark Owners Association Limited, 30-35 Pall Mall, London SW1Y 5LY, England.
4. Factual Background
4.1 The facts (which do not seem to be challenged by the Respondent) are as set out below.
4.2 The Complainant was incorporated in 1992 under its present name and has traded since that date.
4.3 The Complainant is the proprietor of the registered trade mark "JEWELULTRA DIAMONDBRITE" (consisting of words together with a device) in respect of cleaning, polishing and scouring preparations and substances (Class 3). This registration has an effective date of August 7, 1996.
4.4 The Complainant has also filed an application to register "JEWELULTRA" before the Community Trade Marks Office in respect of cleaning, polishing and scouring preparations (Class 3). The application was made on June 2, 2000.
4.5 The Complainant says that it has used the trade mark JEWELULTRA to designate its products for over ten years. It has also produced evidence of its use of the mark JEWELULTRA DIAMONDBRITE in the form of a leaflet (undated) advertising a product for a paint and fabric protection process for cars.
4.6 The Respondent's registration of the "jewelultra.com" domain name occurred on November 19, 2000.
4.7 The Complainant has produced print outs of various web pages which it says show that the website accessed using the domain name directly links to a website selling the products of the Respondent. Firstly there is a web page at www.jewelultra.com showing an advertisement for a product called "Tefloseal" that is described as "the revolutionary paint, vinyl, leather and fabric protection system". It shows a photograph of a car with the caption "never wax your car again!" At the bottom of the advert there is a link which reads "click here and say goodbye to waxing your car" ("the Link"). The Complainant says that the Link takes the user to the website selling the products of the Respondent. Secondly there is a web page at www.tefloseal.co.uk/html/first.htm which shows further a further advertisement for Tefloseal together with details of two companies, namely, Splash Products Ltd and Splashgroup UK Ltd.
4.8 The Complainant says that correspondence was entered into to try and settle this matter amicably. The Complainant has not provided details of this correspondence except for a copy of a letter dated September 11, 2000 from Stuart Grimshaw of Splashgroup UK Ltd to a company called Global Group Network Limited. The Complainant has not explained the involvement of this latter company, or the circumstances that led to this letter. It appears that this letter was sent by Splashgroup UK Limited in response some earlier correspondence which the Panel has not seen. This letter is marked "without prejudice" (see paragraph 7.6 below as to the admissibility of this letter) and states:
"Please find below prices that our accountant has finally agreed to:
www.jewelultra.co.uk Ј6000 + Vat
www.jewelultra.com Ј4000 + Vat
At this present time .co.uk is having 8000 unique hits per month and .com is getting up to 5000 unique hits per month.
I think you will agree that these domain names will be very useful to you in your new business venture."
4.9 The Complainant has produced various e-mails which it says are evidence of confusion caused by the Respondent’s registration of the domain name. It states that a number of important customers have been mislead into thinking that the Respondent's site is linked to the Complainant. These e-mails are sent to the Complainant’s address at email@example.com. One email (dated February 14, 2001) suggests that a potential customer of the Complainant has visited the Respondent’s website when trying to look up the Complainant's product which has resulted in it being confused as to whether the Complainant’s and Respondent’s products are the same. Another potential customer looked up the Complainant’s product to find that ‘Tefloseal’ was using the Complainant’s name, but realized that Tefloseal was the Complainant's competitor and was thus not confused (email dated November 5, 2000). One customer has written to the Complainant to place an order for the Respondent's product Tefloseal (email dated September 4, 2000) but this shows confusion on the part of the Respondent’s potential customers rather than the Complainant’s.
5. The Complainants Contentions
5.1 These are set out in the Complaint as follows:
- The Complainant's name consists predominantly of the main element of domain name at issue.
- The Complainant's customers associate the Complainant's mark JEWELULTRA with the products of the Complainant.
- The Respondent is engaged in the same business area as the Complainants and so there is a significant risk of confusion to potential customers.
- The Respondent is trading off the reputation of the Complainant and deliberately deceiving potential customers of the Complainant to access the Respondent's website by mistake by virtue of the Link.
- The domain name at issue is identical to a distinctive element of the Complainant’s registered trade mark JEWELULTRA DIAMONDBRITE and that this will inevitably lead to confusion that the site accessed through the domain name is linked to the Complainant and that this has in fact already occurred.
- The Respondent does not sell any products bearing the trade mark JEWELULTRA and they are using the Complainant's trade mark as a way of attracting customers to their own website.
- The Respondent requested significant monetary compensation from the Complainant to return the domain names.
6. The Respondent’s Contentions
6.1 It is convenient first of all to deal with the identity of the Respondent. The Complaint is directed against an entity described as "Splash Group", that being the name that appears on the "Who-is" search for the domain name. The covering e-mail that accompanied the letter referred to at paragraph 3.3 above carried the name "Splash Products Limited". The enclosed letter to Nominet (being an electronic copy) was not on headed paper, and reveals no details as to the identity of the company writing the letter beyond the text of the letter. It bears a name at the bottom of Stuart Grimshaw, described as the Managing Director and contains within the letter a sentence "My company, Splash Group, has been established since February 1990". The website to which the Complainant says the Link referred to at paragraph 4.7 above leads, contains a sentence "UK Office: Splash Products Limited" and a further sentence "Tefloseal is a registered trade mark of Splashgroup UK Limited". The letter referred to at paragraph 4.8 above offering to sell the domain names bears a logo "Tefloseal"; is signed "Stuart Grimshaw, Splashgroup UK" and there is a name at the foot of the letter "Tefloseal". In these circumstances, the Panel is unable to determine without further information the precise identity of the Respondent although it appears likely to be Splash Products Limited. Since no point appears to have been taken in this regard by those submitting papers in these proceedings, the Panel will continue to refer to "Splash Group" in this regard.
6.2 The Respondent’s response to the Complaint, as contained in its letter of
April 23, 2001 appears in substance to be encapsulated in a sentence which reads as follows "My company, Splash Group has been established since February 1990 and operates a number of diverse businesses, namely Splash Car Valeting, Orbital Polisher Co., Toughguard UK, Splash Products Limited, Jewel Ultra Valeting Services, Jewel Aviation Valeting Services". The letter then goes on to deal with another domain name which appears to be in issue with Nominet (diamondbrite.co.uk) and says that it is unfortunate that "Jewel Ultra are marketing a similar product to one of our product ranges but it is entirely coincidental". That sentence does not seem relevant to the issue before this Panel.
6.3 The following passage then appears in the letter "We do not understand Jewel Ultra’s desire to take over the ownership of our domain names, however it seems evident they had an opportunity to purchase these names through Global Gold in September at a fair commercial price. This offer still stands".
6.4 The letter goes on to say "Since this matter has been raised, we have already taken the said names down and intend to resurrect them once our new valeting website has been constructed by Andrew Bruce of Destiny Internet Services, leaving no confusion or reference to Jewel Ultra Limited. I trust you will recognise that this is more a matter of sour grapes than us trying to capitalise on their trade mark and accordingly allow us to continue business as usual".
7. Discussion and Findings
7.1 The Panel has reviewed the Complaint and documents annexed to the Complaint and as referred to above. In the light of this material this Panel finds as set out below.
7.2 The domain name jewelultra.com is confusingly similar to the Complainant's registered trade mark.
7.3 The Complainant has been carrying on business since 1992 under this name. Its business relates to the supply of materials for the protection of car paint work and upholstery.
7.4 The Respondent’s letter is wholly inadequate to explain the Respondent’s activities and to rebut the various matters raises by the Complainant. The Respondent’s letter appears to raise the allegation that it is engaged in what is described as "Jewel Ultra valeting services". No proper explanation is given of this activity (which is in direct contradiction to the Complainant’s allegation in its Complaint that "The Respondents do not sell any products bearing the trade mark Jewel Ultra"). No attempt is made to explain why the Respondent thought it was entitled to register the domain name. The examples of the web pages provided by the Complainant show links to web pages which are operated by or associated with the Respondent and which relate to a completely different product, Tefloseal, which appears to be a competing paint and upholstery protection system. No proper explanation of this has been given by the Complainant nor has any proper attempt been made to rebut the allegation made by the Complainant in this regard. In these circumstances the Panel finds, on the balance of probability, the Complainant’s allegation proved insofar as the Complainant alleges that the Respondent was using the domain name to link to a site advertising products which compete with those of the Complainants.
7.5 The Panel makes no finding based on the e-mails relied upon by the Complainant, which seem inconclusive.
7.6 In addition, there is the matter of the offer to sell the domain name. The Panel was concerned that this offer was made in a letter marked "Without Prejudice" in circumstances which have not been fully explained and which might attract privilege or otherwise render the letter inadmissible. The Panel, however, notes in the Complainant’s letter to Nominet the statement made that the Complainant "had an opportunity to purchase these names through Global Gold in September at a fair commercial price. This offer still stands". That sentence appears to be, to the Panel, a reference to the offer which the Complainant has exhibited and, in the Panel’s view waives any privilege that might otherwise attach to that offer. In the circumstances, the Panel finds that the Respondent has offered to sell the domain name to the Complainant for Ј4,000 plus VAT. No justification for this figure is given, which clearly exceeds out of pocket registration costs.
8.1 In the light of the above findings, the Panel's decision is as set out below.
8.2 The domain name is confusingly similar to the Complainant's trade mark (see paragraph 4(a) (i) of the Policy).
8.3 The Respondent has not got any legitimate interests in the domain name (see paragraph 4(a)ii). The Respondent has not shown any genuine entitlement to use what is in substance the Complainant’s name.
8.4 The name has been registered and is being used in bad faith. The evidence establishes that it has been used to refer to products which compete with those of the Complainant and that an offer has been made to sell it to the Complainant for an amount which exceed the Respondent’s out of pocket expenses. In these circumstances the Respondent is certainly within paragraph 4(b)(iv) of the Policy (and may also be within 4(b)(i)).
8.5 The Panel directs that the domain name be transferred to the Complainant.
Dated: April 30, 2001