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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carpetright PLC v. Carpets Direct
Case No. D2001-0287
1. The Parties
The Complainant is Carpetright plc of Amberley House, New Road, Rainham, Essex, RM13 8QN, UK.
The Respondent is Mr. Graham Thurston, trading as Carpets Direct of 37 Kingsway,
South Woodham Ferrers, Chelmsford, Essex, CM3 5QH, UK.
2. The Domain Name and Registrar
The Domain Name is <harrisathome.com>, and the Registrar is Domain Bank Inc.
3. Procedural History
The Complaint was filed on February 26, 2001. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2 (a). On March 19, 2001 the Respondent filed an informal response. Due to allegations made in that informal response, having completed a preliminary review of the case file, the Panel ordered on April 4, 2001, pursuant to Rule 12, that:
1. the Respondent be given until April 17, 2001 to produce a full response giving evidence and full details of what is asserted in the Response.
2. the Complainant be given until April 17, 2001 to comment on the allegation that the Complainant has taken the Respondent's name and be given the opportunity to counteract it by trade evidence.
The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
The Complainant is the owner of a number of registered trade marks in the United Kingdom for carpets and floor coverings including the name HARRIS including HARRIS CARPETS AT HOME. Both parties are in the carpet business in the same area of England, Essex.
5. Parties’ Contentions
The Complaint stated:
The Complainant, Carpetright plc is a retailer of carpet products and services including carpets, floor coverings, tiles, underlay, rugs, mats and linoleum, and their delivery and fitting. The Complainant has been operating in the UK since 1988.
Harris Carpets is the trademark of a successful product range offered by the Complainant, so called because Lord Harris of Peckham began trading as a carpet retailer in about 1957 under the name C W Harris Linoleum Limited. In 1971 the name of the company was changed to Harris Carpets. As the business grew it became incorporated into the Queensway Group, which subsequently became Harris Queensway. The company continued to evolve and has been involved in several subsequent transactions, the most recent of which was the sale of the Harris brand by Allied Carpets Limited to the Complainant in 1998.
The Harris carpet range is a high quality product which relies on the goodwill in the name Harris Carpets to maintain its substantial reputation. The Complainant has registered the trade mark "harriscarpetsdirect.com" registered number 2226591, the trade mark "harriscarpets>>direct" registered number 2219839B, the trade mark "Harris Carpets Direct" registered number 2219839A, the trade mark "Harris Carpets At Home" registered number 2231731, the trade mark "Harris Carpets" registered number 1575744, and the trade mark "Harris Carpets" registered number 1575745. These trade marks are registered in the United Kingdom Trade Marks Registry in relation to carpets and flooring coverings, including fitting and delivery. In addition, the Complainant has registered several companies in the name of Harris Carpets. These are Harris Carpets Limited, company number 3685173; Harris Carpets at Home Limited, company number 3942189; Harris Carpets Direct Limited, company number 3881150; and Harris Carpets Direct.com Limited, company number 3942172. The brand name "Harris" is therefore strongly associated with the Complainant's trading activities.
The internet has become an important marketing and retail tool for the Harris Carpet range. The Complainant operates a website, which uses the internet addresses "www.harriscarpets.co.uk" and "www.harriscarpetsathome.com", to provide an internet based home shopping, delivery and fitting service to potential customers. The website sells the Harris Carpet range, offers on line product samples and a variety of other customer services. To protect its commercial interests the Complainant has registered the domain names <harriscarpetsathome.com> and <harriscarpets.co.uk>. The website went online on the 20 June 2000 and has been increasingly successful. By the
October 12, 2000 there had been a total of 3325 visits and 58843 hits through both web addresses. Usage of the website is growing, in the whole month of July there were 543 visits whilst between 1 and 12 October there had been 572 visits.
The Respondent, a competing retailer of carpets also based in the United Kingdom, registered the domain name <harrisathome.com> on or around May 11, 2000. However, at present the Respondent is not trading from a website bearing this domain name. This is confusingly similar to the Complainant's legitimate domain name <harriscarpetsathome.com> by reason of the use of the words "harris" and "at home", used in relation to services identical to those provided by the Complainant. This similarity is likely to confuse potential customers, particularly when searching for Harris Carpet products using an internet search engine. Customers and potential customers who are unaware of the specific domain name of Harris Carpets would be presented with a confusing choice.
It is reasonable to infer that the Respondent intends to attract customers from the Complainant to its own website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website, or of a product or service on the Respondent's website.
The Respondent has no rights or legitimate interests in respect of the domain name <harrisathome.com>. The Respondent does not supply any bona fide flooring services using the name Harris or, we contend, intend to. In addition, they have not yet used the domain name to establish a web presence, despite 6 months elapsing from the date of registration. Furthermore, no attempts have been made to utilise the domain name for a legitimate non-commercial purpose.
The Respondent was alerted to the similarities in the domain name and given an opportunity to justify their registration in a letter from Travers Smith Braithwaite, the Complainant's representatives, on May 26, 2000. The Respondent has so far failed to reply to this correspondence, from which it is reasonable to infer that they have no bona fide reason for registering the domain name.
From the Respondent's failure to provide any justification for the registration of the domain name, it is reasonable to infer that the name has been registered in bad faith for the primary purpose of disrupting the Complainant's business, by causing customers and potential customers to visit a website with a confusingly similar name providing identical goods and services. This would result in a loss of sales and reputation to the Complainant.
The Complainant is concerned that, in the absence of any legitimate justification for the Respondent registering the domain name <harrisathome.com>, the Respondent intends to cause damage to the goodwill and reputation of the Harris brand and to unfairly hinder the attempts of the Complainant to attract new customers. The result of this would be financial damage to the business of the Complainant.
The Complainant requests that the panel transfers the domain name <harrisathome.com> to the Complainant given that:
1) the domain name registered by the Respondent is confusingly similar to the Complainant's UK registered trademark relating to the provision of identical goods and services;
2) that the Respondent does not appear to have any legitimate rights or interests in respect of the domain name; and
3) the Respondent has acted in bad faith by registering the domain name.
The informal response filed by the Respondent stated:
The Respondent contacted a James Renaham who stated he would speak to his clients and come back to the Respondent and this has not happened.
Carpets Direct has been trading since 1995, for the last four years the Respondent has seen it as vital to its continual success to have a high profile award winning site on the Internet. It was one of the first carpet sites with fully interactive room sets. It was using carpets-direct. It then purchased carpetsdirect. It has devoted a lot of financial resources and time establishing its name on the Internet.
Last year Harris carpets launched an identical service to the Respondent’s home service headhunting two members of the Respondent’s staff and contacting another who declined their offer, this was all from the Respondent’s Basildon branch in Essex. Harris then took the Respondent’s name Harris Carpets Direct.
The Respondent was then advised by its computer programmers that it was possible for Harris carpets to put in links via metatabs which would divert traffic intended for the Respondent’s site to theirs. The Respondent then took harrisathome.com with the intention of only using it if Harris used links from its name to the Respondent’s site.
If the Respondent was forced to give up this site what recourse would it have against a large organisation using its name to poach orders, as stated in the Complainant’s letter the Respondent has not used the harrisathome.com domain name and as far as the Respondent is aware the Complainant’s have not linked to the Respondent’s site. The internet was not intended to allow the companies with the most monetary backing to disadvantage smaller companies.
C. Procedural Order
The Respondent’s informal response appeared not to be prepared with legal advice and it was unclear to the panelist what exactly was being alleged. The main allegation being that "Harris then took the Respondent’s name Harris Carpets Direct." The ICANN dispute resolution procedure is not designed for disputes between competing legitimate users of trade marks, but unsubstantiated allegations of this kind cannot be allowed to be used as a method to avoid proceedings. Accordingly, the Panel ordered on April 4, 2001, pursuant to Rule 12, that the Respondent be given until April 17, 2001 to produce a full response giving evidence and full details of what is asserted in the Response and that the Complainant be given until April 17, 2001 to comment on the allegation that the Complainant has taken the Respondent's name and be given the opportunity to counteract it by trade evidence.
D The Complainant’s Further Submission states:
The allegation that the Complainant took the Respondent’s name "Harris Carpets Direct" is denied for the following reasons.
The Respondent has no legitimate claim to the name Harris Carpets Direct. The Respondent's name is Carpets Direct Limited. As far as the Complainant is aware, the Respondent trades on the internet under the domain name <carpets-direct.co.uk> and on the high street under the name "Carpets Direct" only.
The Harris brand is exclusive to the Complainant. The Complainant acquired the "Harris" brand from Allied Carpets by an assignment dated January 11, 1999. The Complainant has not licensed the Respondent to use the "Harris" mark. The Respondent therefore has no claim to the "Harris" mark.
The "carpets" element of the Respondent's name is both descriptive and generic. The "direct" element is descriptive. Both are words indicating the characteristics of the goods and services provided in the trade of selling carpets over the Internet. The Respondent cannot therefore restrict the bona fide use of these common English words when used in conjunction with the word "Harris" in the phrase "Harris Carpets Direct".
The Complainant has a legitimate interest in the name "harriscarpetsdirect".
The Complainant has registered "harriscarpetsdirect" and "harriscarpets>>direct" as trade marks effective as of January 19, 2000 and <harriscarpetsdirect.com> effective as of 21st March 2000. The Complainant registered the domain name <harriscarpetsdirect.com> on the 8th March 2000.
The Complainant has also registered both "Harris Carpets Direct" and <Harriscarpetsdirect.com> as private limited companies on the January 4,2000, and the April 4, 2000 respectively
The Complainant's intention in registering "harriscarpetsdirect" was to set up a nation-wide home shopping service. Potential customers would access the service directly via the internet and the Complainant would then send a van and sales representatives directly to the customer's house.
The table below illustrates that it was the Complainant's original intention to use the "harriscarpetsdirect" name. It shows the sequence in which the various trade names were incorporated as private limited companies.
Date of registration
Harris Carpets Limited
Company No. 3685173
11th January 1999
Harris Carpets Direct Limited
Company No. 3881150
4th January 2000
Company No. 3942172
4th April 2000
Harris Carpets At Home Limited
Company No. 3942189
9th May 2000
The Complainant did not act in bad faith in choosing the <harriscarpetsdirect.com> name.
i). The "Harris" element reflects the Complainant's strong association with the "Harris" brand.
ii). The "carpets" element is descriptive of the products sold and also reflects the "Harris Carpets" trade mark registered by the Complainant.
iii). The "direct" element was chosen to reflect the intention of providing a service to customers whereby they could select and arrange to purchase carpets direct from their homes over the internet (the "Internet Service").
There was no intention to "take" the Respondent's name, indeed the Complainant did not do so.
Although it was the Complainant's original intention to use the "harriscarpetsdirect" name for its website and Internet Service, after market research evaluation, the Complainant decided to use <harriscarpetsathome.com>.
The Complainant has not used the <harriscarpetsdirect.com> domain name and has no intention of doing so, although it may wish to use this name for legitimate purposes in the future.
The Complainant does, however, run a home shopping service on the internet, which is accessible via "www.harriscarpets.co.uk" or "www.harriscarpetsathome.com". This went live on the June 20, 2000, although a pilot scheme had been running in April and May 2000. The "harriscarpetsathome" home page, demonstrates that it can be accessed from either of the above two addresses.
The Harris brand is extremely important to the Complainant.
The Complainant possessed 6 stores bearing the "Harris Carpets" name in 1999. This has now grown to 13 stores in 2000. The Complainant sells the "Carpets by Harris" range in its stores.
The Complainant has spent considerable time and money since acquiring the Harris Brand, promoting it.
"The Marketing and Retail Operations teams have been developing the new Harris Carpets format to ensure credible competition in the high street carpet market. The Buying, Merchandising and Marketing teams have been working closely with our manufacturers to create new own brand merchandise aimed at providing customers with excellent quality and unbeatable value." (B) - (Annual Report 1999).
The name "harriscarpetsathome" is integral to the development of the Complainant's Internet Service. The "Harriscarpetsathome" name is not only used as a domain name but is also displayed on the vans that are dispatched to the customer's home.
The "harriscarpetsathome" concept is also important to the Complainant's overall strategy. The Complainant's 2000/01 Interim Report shows that the Internet Service is both successful and expanding:
"The business undertaken by Harris Carpets at home has proved the strength of the business model, and the acceptance of the service profile. Early profiling of the customer base has confirmed the differentiation of its target market from that of Carpetright stores. Since the end of the half year, sales, excluding insurance replacements, have strengthened to an average of Ј70,000 a week from ten vans." (F)
The Complainant exhibited an article in the Times dated December 13, 2000, in which the Complainant is quoted as saying that:
"…it expected its new home delivery carpets business to account for 30% of sales and up to half of group profits within three to five years."
The Complainant can provide details of its advertising and marketing spending since 11th January 1999 in promoting the Harris name if the Arbitrator requires it. However, this information is both confidential and highly sensitive. The Complainant is reluctant to submit it, in circumstances where it will not remain confidential to the Arbitrator.
The Complainant denies "headhunting" members of staff from the Respondent.
Two former members of the Respondent's staff have worked for the Complainant, although one has now left the Complainant's employment. The positions were advertised and no improper advances were made to either employee. The Complainant questions the relevance of this to the present dispute.
The Complainant denies using metatabs in the way asserted by the Respondent, and has never had, and does not have, any intention to do so.
Furthermore, the Complainant does not have, and has never had any intention of using the Respondent's name to "poach orders".
By the Respondent's own admission, it only registered the <harrisathome.com> site in response to the Complainant's registration of "harriscarpetsdirect". It is implicit in the Response that the Respondent is aware of the similarity between its registration "www.harrisathome.com" and the Complainant's registration "www.harriscarpetsathome.com" and that the Respondent acquired <harrisathome.com> as a bargaining tool.
D. Further Submission by the Respondent
The registered domain name holder is Carpets Direct, 37 Kingsway, Chelmsford, Essex, which is the trading name of a sole tradership. Carpets Direct (a sole tradership), has no knowledge of who Murdoch McDonald or Rodney Vallery are and furthermore has no connection with Carpets Direct Limited, a Scottish company, Registered No. SC198329, of Aberdeen.
We therefore request that these proceedings be dismissed because:
- the Complaint fails to satisfy Rule 3(b)(v) which requires that the domain name holder to be indicated as Respondent;
- Carpets Direct (a sole tradership) does not have the authority to speak for or on behalf of Carpets Direct Limited, a Scottish company, Registered No. SC198329, of Aberdeen;
- Carpets Direct (a sole tradership) can not accept any liability with respect to proceedings instigated against the Respondent as they have no connection with them and no knowledge of them;
- the Respondent, a Scottish company, Registered No. SC198329, of Aberdeen, is not the proprietor of the domain name;
- the Panel, in the form of Mrs. Dawn Osborne, cannot order the transfer of property from an alleged domain name holder whose is not the relevant domain name holder of <harrisathome.com>.
Carpets Direct (a sole tradership) contact details are as follows :-
Mr. Graham Thurston,
trading as Carpets Direct
| || |
South Woodham Ferrers
Essex, CM3 5QH
| || |
+ 44 (0) 1245 327332
| || |
+ 44 (0) 1245 323060
| || |
The Respondent’s authorised representatives in the administrative proceedings are unknown to Carpets Direct (a sole tradership). Otherwise, Carpets Direct (a sole tradership) authorised representatives are as follows :
Sanderson & Co.
| || |
34 East Stockwell Street
Essex, CO1 1ST
| || |
Tel. No. :
+ 44 (0) 1206 571187
| || |
Fax No. :
+ 44 (0) 1206 578164
| || |
Carpets Direct (a sole tradership)and its representatives cannot provide a response for or on behalf of Carpets Direct Limited, a Scottish company, Registered No. SC198329, of Aberdeen, because they have no authority to do so. Otherwise, Carpets Direct (a sole tradership) would respond as follows: -
The domain name that is the subject of the complaint is not covered by the policy because to the best of our knowledge and belief the Respondent, a Scottish company, Registered No. SC198329, of Aberdeen, did not agree to be bound by the policy and could not agree to be bound by the policy in respect of the domain name at issue because they are not the proprietors of the said domain name.
Under the policy, paragraph 4(a) indicates that for the Complainant to succeed it must establish that the following three conditions are satisfied :
i. The domain name is identical or confusingly similar to a Trade Mark or Service Mark in which the Complainant has rights; and
ii. That the Respondent has no rights or legitimate interest in respect of the domain name; and
iii. That the domain name has been registered and is being used in bad faith.
With respect to paragraph 4(a)(i) we note:
The current domain name being disputed was recorded as "created on" the 5th November 2000 and predates the identical British Trade Mark Registration No. 2,231,731 harriscarpetsathome filed and registered as of the May 8, 2000. [Note from panelist – this would not appear to make sense.] This is despite the somewhat misleading statement made in paragraph 5 of the Complaint where it is claimed harrisathome.com was registered on or around the May 11, 2000. Therefore British Trade Mark Registration No. 2,231,731 can be dismissed as otherwise a transfer of ownership would constitute granting retrospective rights to the Trade Mark Registration which itself was suspiciously filed days after the Domain Name was registered.
With respect to the other Marks mentioned, we note <harriscarpetsdirect.com> which is registered as of the March 21, 2000, harriscarpets direct registered as of the January 19, 2000 and harriscarpetsdirect registered as of the
January 19, 2000 which are rights that pre-exist the domain name at issue but all contain our client’s trading name Carpets Direct. To date none of the domain names or trade marks have been used but our client has every intention of preventing the use of such Marks and domain names on the basis of its earlier common law rights in the name CARPETS DIRECT featured in their award wining site carpets-direct.co.uk which we invite the panel to visit. This site has been the leading Internet carpet retailer in the United Kingdom for several years having first started trading in 1994.
Any Trade Mark containing the totality of our client’s brand should not be relied upon for the panel to justify a transfer of ownership. This is because the validity of the Marks is questionable and the panel does not have the authority to consider the validity of the Marks relied upon nor does the policy allow for counter claims against the validity of the Marks. As a result this is not an appropriate forum to decide the issue.
With respect to paragraph 4(a)(ii) Carpets Direct (a sole tradership) agrees that the Respondent (a Scottish company) has no rights or legitimate interest in respect of the domain name because it does not belong to them.
With respect to paragraph 4(a)(iii) it is noted that paragraph 5 of the factual and legal grounds given by the Complainant states "at present the Respondent is not trading from a website bearing this domain name [<harriscarpetsathome.com>]". It is further noted in paragraph 7 "they have not yet used the domain name to establish a web presence".
The grounds of the Complaint fail to indicate that the domain name is being used in bad faith. It is a mandatory requirement of paragraph 4 of the uniform domain name dispute resolution policy that a domain name not only be registered but also must be used in bad faith.
The Complainant has therefore completely failed to show use in bad faith and has further admitted that there is no use either by the Respondent or in the alternative Carpets Direct (a sole tradership). In short, <harrisathome.com> is a "ghost" domain name, registered but not used in any way.
[The Respondent made extensive submissions as to non use, but since the basis of this finding is Paragraph 4(b)(iii) the only relevant submissions relate to that paragraph] "you have registered the domain name primarily for the purpose of disrupting the business of a competitor". This does not apply because the only way in which the registration of the domain name can possibly disrupt the business of a competitor is if it were used or otherwise prevented the competitor from using its own domain name which does not apply in this case.
We would also like to bring to Mrs. Dawn Osborne’s attention that the letter referred to by the Complainant in paragraph 8 of their "Factual and Legal Grounds" was never received by Carpets Direct (a sole tradership). We can only assume that this correspondence was sent to the Scottish company instead. Nevertheless, we maintain the view that it is not reasonable to read into the failure to provide a response inferences that are nothing more than conjecture.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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 and is being used in bad faith.
A The Respondent
Unfortunately there appears to be a manifest error in that the party formally cited as Respondent in the Complaint is not the owner of the Domain Name. However, clearly the true Respondent and owner of the domain name was always intended, has had notice of these proceedings and has been given ample opportunity to comment, indeed has submitted a Response and a further submission in these proceedings. Accordingly, the panelist is satisfied that all relevant parties have taken part in the proceedings and no unfairness has accrued to the true Respondent. To err on the side of caution the panelist has taken no notice of the unanswered letter before action that the true Respondent states that it did not receive. Accordingly, the panelist is of the view that the de facto Respondent should be regarded as the true Respondent in these proceedings and that this error of form should not prevent these proceedings from being decided. All further references in this decision to the Respondent should be read as references to the de facto Respondent in these proceedings.
B Identical or confusing similarity
The Domain Name is confusingly similar to the Complainant’s HARRIS CARPETS AT HOME registered trade mark. Despite the Respondent’s contentions the Domain Name appears to have been registered after the Complainant’s Trade Mark Registration was filed.
C Rights or Legitimate Interest of the Respondent
Despite the assertion in the informal Response that "Harris then took the Respondent’s name Harris Carpets Direct." the Respondent does not appear to have any rights or legitimate interest in the name "Harris" and therefore to the Domain Name <harrisathome.com>.
D Bad Faith
Paragraph 4 (b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor"
The Respondent has admitted that it only registered the <harrisathome.com> site in response to the Complainant's registration of "harriscarpetsdirect". The panellist makes no comment in relation to the "harriscarpetsdirect" registration which is not the subject of these proceedings. However, it is clear from the Response that the Respondent is aware of the similarity between its registration "harrisathome.com" and the Complainant's registration "harriscarpetsathome.com" and that the Respondent acquired <harrisathome.com> as a bargaining tool and to disrupt the business of the Complainant. Such conduct is specifically designated under the Policy to be registration and use of a domain name in bad faith.
In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainant’s HARRIS CARPETS AT HOME trade mark and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registration of the Domain Name <harrisathome.com> be transferred to the Complainant.
Dated: April 26, 2001