Nominet UK Dispute Resolution Service

DRS 3545

La Mer Technology Inc – v – Neil Robinson

Decision of Independent Expert

1.	Parties

Complainants:

La Mer Technology, Inc
USA

and

Estee Lauder Cosmetics Limited
UK

Respondent: 

Neil Robinson
UK

2.	Domain Name

<cremedelamer.co.uk>

3.	Procedural Background

A Complaint in respect of <cremedelamer.co.uk> (the “Domain Name”) under Nominet UK's Dispute Resolution Service Policy ("the Policy") was received from the Complainants and forwarded to the Respondent by Nominet on 22 March 2006.  No Response was received from the Respondent.

On 18 April 2006 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainants of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”).  The Complaint was referred for a decision by an Independent Expert following payment by the Complainants of the required fee on 19 April 2006.  I was appointed as Independent Expert as of 26 April 2006 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
4.	Outstanding Formal/Procedural Issues (if any)

There are no outstanding formal or procedural issues.

5.	The Facts

The Complainants are members of the Estee Lauder Group of companies.  The Group are manufacturers and distributors of cosmetics sold under well-known names including ESTEE LAUDER, CLINIQUE, ARAMIS and CRÈME DE LA MER.  The Complainants are respectively the registered proprietor and the UK licensee of the following trademarks:

-	UK trade mark no. 2,068,988 CRÈME DE LA MER as of 18 April 1996 in Class 3 (perfumes, cosmetics etc) ; 
-	Community trade mark no. 140,338 CRÈME DE LA MER as of 1 April 1996 in Class 3 (perfumery, cosmetics etc) ; 
-	Community trademark no. 2,220,572 CRÈME DE LA MER 16 May 2001 in Classes 35 and 42 (online retail sales services etc in respect of cosmetics, perfumery etc); 
-	Community trademark no. 3,478,261 CRÈME DE LA MER device mark as of 30 October 2003 in Class 3 (cosmetics, perfumery etc).  

According to the Nominet WhoIs database, the Domain Name was registered on 25 December 2003 and the registrant is a non-trading individual who has opted to have his address omitted from the WhoIs service.  At the date of the Complaint the Domain Name resolved to a domain holding page of UK2.net.

6.	The Parties’ Contentions

Complainants

In summary, the submissions on the part of the Complainants are as follows:

CRÈME DE LA MER is one of the divisions of the Estee Lauder Group and it is a name that is wholly distinctive of the business carried on by the Complainants under that name.  In the years since 2000 when the products were first sold in the UK, the CRÈME DE LA MER name has become a household name, at least among the kind of people who buy luxury cosmetics and read articles concerning such exclusive products.  Anyone using the name would be thought to be referring to the Complainants’ business and brand.

In late 2005, Estee Lauder Cosmetics Limited received a letter from Mrs Helen Robinson of the same address as the Respondent.  She requested supplies of Crème de la Mer products with a view to retailing them online and stated that she had registered the Domain Name some years before.  The correspondence from Mr and Mrs Robinson indicates that the Domain Name had been intended by them from the outset to be the name of an online CRÈME DE LA MER business retailing the Claimants’ products.

The registration of the Domain Name is abusive because it is exactly the same as the Claimants’ business name and registered trademarks and was intended to be used to generate the sale of goods and the supply of other services in respect of which those trademarks are registered.  The Domain Name is inherently misleading and the Respondent’s use of a sign that is identical to the Complainants’ trademark, which has become a famous mark in the UK, cannot fail to cause the Respondent’s business and web page to be associated with the Complainants.  If and when the Domain Name is used by the Respondent confusion seems inevitable and is very likely to cause loss and damage to the Claimants’ reputation, including diminution of the value of their exclusive use of their mark.

Even if there were no confusion, traffic directed to the Respondent’s website would only be directed there because the user was looking for information concerning the Complainants and their products by reference to their trademarks which is inherently taking unfair advantage of the rights and goodwill of the Complainants and detrimental to the distinctive character and repute of their mark.  

Any use by the Respondent of the Domain Name for online retailing or for the provision of other services Mrs Robinson wishes to offer would infringe the Complainants’ Community trademark no. 2,220,572.  

The Domain Name in the possession of the Respondent is a potential instrument of fraud.  It is also acting as a blocking registration in that it is preventing the Complainants from registering the CRÈME DE LA MER trademark as a UK domain name in its most obvious form.  La Mer Technology, Inc operates an official website at www.cremedelamer.com.

Respondent

The Respondent has not filed any response to the Complaint.  

7.	Discussion and Findings:

General

Although the Respondent failed to submit a Response to the Complaint, there is no scope for a decision in default under the Policy and Procedure.  Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non-compliance with the Procedure as I consider appropriate but the Complainants are still required under clause 2b of the Policy to prove to the Expert on the balance of probabilities that:

i	the Complainants have Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainants’ Rights

“Rights” are defined in the Policy and in the Procedure.  Rights “includes, but is not limited to, rights enforceable under English law”.  

On the basis of the evidence filed by the Complainants there is no doubt that as at 25 December 2003, the date of registration of the Domain Name, the Complainants had rights in the name CRÈME DE LA MER which, ignoring the “.co.uk” suffix, is identical to the Domain Name.

Abusive Registration

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 that may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy.  These include:

3ai	Circumstances indication that the Respondent has registered or otherwise acquired the Domain Name primarily:
…
B	as a blocking registration against a name or mark in which the Complainant has Rights

3aii	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 Complainants.

There is no evidence that the Respondent (or his wife) has made any active use of the Domain Name since it was registered in December 2005.  Nevertheless it is apparent from the original letter to Estee Lauder from Mrs Robinson in late 2005 and from a later email from the Respondent to the representative of the Complainants (in response to a letter before action in March 2006) that they had always intended to use the Domain Name to sell the Complainants’ Crème de la Mer products online.  They originally had it in mind to purchase those products from a distributor in the US.  Mrs Robinson’s request that Estee Lauder supply them in the UK was declined.  

The use of a domain name incorporating a Complainant’s trademark to sell the Complainant’s genuine goods has been the subject of a number of previous Nominet DRS decisions including two Nominet Appeal Panel decisions: DRS 248 Seiko UK Limited v Wanderweb and, more recently, DRS 5121 Epson Europe BV v Cybercorp Enterprises.

As the Panel noted in Seiko, 

“Essentially Seiko’s complaint is that Wanderweb’s registration of the Domain Names has gone beyond making the representation ‘we are a shop selling Seiko/Spoon watches’ and is instead making the representation(s) ‘we are the official UK Seiko/Spoon watch shop’.  The latter form of representation is what we understand the ECJ to be referring to when, in the ECJ case C-63/97 BMW v Deenik, it speaks of creating ‘the impression that there is a commercial connection between the other undertaking and the trade mark proprietor’.

In my view, if the Respondent were in a position to do so then the use of the Domain Name by him to sell CRÈME DE LA MER products would amount to his creating the false impression that there was a commercial connection between the Respondent and the Complainants, particularly where the Domain Name is exactly the same as the trade mark in which the Complainants have rights, without any addition.  It is not permissible for an entity to appropriate the trade mark of another in this way with a view to gaining commercial advantage over legitimate users of the name.  Such use would amount to use in a manner which takes unfair advantage of or is unfairly detrimental to the rights of the owner of the mark.

In this case, there has not, it seems, yet been any use of the Domain Name which, at the date of the complaint, resolved to a domain parking page.  The Respondent has not made any response to the Complaint but the correspondence exhibited by the Complainant makes it clear that the Respondent or his wife always had it in mind to use the Domain Name to sell the Complainants’ products.  It is also difficult, in any event, to see what other, legitimate, use the Respondent might have intended of the Domain Name.  

Furthermore, an inherent threat is revealed in the correspondence in that Mr Robinson has suggested that they had it in mind to import the Complainants’ products from the US in order to sell them online from a website operated under the Domain Name.  It is axiomatic, in view of the Complainants’ refusal to sell CRÈME DE LA MER products to the Respondent or his wife that they do not consent to the importation of such products into the EEA by the Respondent.  

On the basis of well-established principles of European trade mark law, if the Respondent were to put the Complainants’ products on to the market in the EEA without the consent of the trade mark proprietor then that would amount to trade mark infringement.  The use of the Domain Name in connection with such activity would inevitably, in my view, be use which took unfair advantage of or was detrimental to the Complainants’ Rights.  

In addition, since the Complainants already operate a website at www.cremedelamer.com, not only would they have it in mind to register the equivalent <cremedelamer.co.uk> but Internet users in the UK might well try to find the Complainants’ website by typing in www.cremedelamer.co.uk.  Accordingly, I find that the registration of the Domain Name by the Respondent is in fact acting as a blocking registration.

In the circumstances, since the uncontroverted evidence is that the Domain Name was registered by the Respondent with the purposes discussed above in mind, I consider that the Domain Name was registered and has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainants’ Rights and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.

8.	Decision

Accordingly, I find, on the balance of probabilities, that the Complainants have Rights in a name which is identical to the Domain Name and that in the hands of the Respondent the Domain Name is an Abusive Registration.  I therefore determine that the Domain Name be transferred to the Complainant La Mer Technology, Inc.  

Ian Lowe
10 May 2006