elitemodelmanagement.co.uk (2010): A figurative registered trade mark can be sufficient to generate rights for the purpose of Nominet's domain name dispute arbitration service
Background
The Complainants were a group of companies which operate the famous "Elite" model agency, founded in 1972. They owned some registered trade marks, including one for the stylised word "elite" above the stylised words "Elite Model Management". This is known as a figurative trade mark because it does not consist purely of words as such. The domain name was registered in June 2005. Since 2010 it resolved to a 1&1 holding page. The registrant of the domain name did not answer correspondence from the Complainants and did not file a response.
Rights
The Nominet UK expert who gave the original domain name dispute decision concluded that the Complainants had acquired unregistered rights in the name "Elite" deriving from longstanding reputation and goodwill but that there were no rights deriving from the registered trade mark. She felt that, because the mark was figurative and the textual elements were not very distinctive, the protection of the trade mark did not extend to the words.
The Nominet appeal panel disagreed. In its view, the figurative trade marks conveyed rights also. It quoted from a UK High Court case (Phones4u Ltd v phones4u.co.uk (2006) to the effect that – for the purposes of assessing confusing similarity in the context of trade mark infringement – one makes a global comparison between the mark and the infringing sign, including the words in the registered mark. In this case, although figurative, the registered trade mark consisted primarily of the words "elite model management" and it was therefore similar to the domain name in dispute.
Initial interest confusion
Nominet's expert decided that there was no abusive registration. She said that she was not a fan of the doctrine of "initial interest confusion". This is the principle whereby an internet user is initially confused into thinking that a website is operated by or connected with a particular entity but that confusion is dispelled when the user reaches the site eg because it is obvious that the site is nothing to do with that business. In this case, someone looking for the Elite model agency would realise almost immediately from the 1and1 parking page that he or she had come to the wrong place. Many DRS experts take the view that initial interest confusion is a basis for a finding of abusive registration, because the user has been sucked in or deceived by the domain name.
The Chivas Brothers case
However the appeal panel said that "initial interest confusion" was not the only route to a finding of abusive registration. The panel referred to another Nominet UK domain name dispute case, concerning chivasbrothers.co.uk. In that decision, the expert said that where someone registers a domain name which is exclusively referable to the trade mark owner with no obvious justification and there was no explanation from the domain name registrant, it would usually be reasonable to infer that the registrant's purpose was abusive.
Similarly, in this case the domain name was in substance identical to the name of the one of the Complainants and the registrant had failed to come forward with an explanation. The appeal panel concluded that the overwhelming probability was that the domain name had been registered for an abusive purpose.
The appeal panel therefore upheld the appeal and awarded the domain name to the Complainants.
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