WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Asda Group Limited v. Mr Paul Kilgour
Case No. D2002-0857
1. The Parties
The Complainant is Asda Group Limited, Asda House, Southbank, Great Wilson Street, Leeds LS11 5AD, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mr. Paul Kilgour, 128 Spottiswoode Gardens, Midcalder, Livingston, West Lothian, EH53 0JY, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <asdasucks.net> is registered with Address Creation.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center, (the "Center"), by email on September 12, 2002, and in hard copy form on September 13, 2002. The Center has verified that the Complaint satisfies 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 Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
Address Creation has confirmed that the domain name <asdasucks.net> ("the Domain Name") was registered through Address Creations and that Mr. Paul Kilgour is the current registrant. Address Creations has further confirmed that the Policy is applicable to the Domain Name.
On September 24, 2002, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was October 16, 2002.
No Response was received by the Center. On October 18, 2002, the Center issued a Notification of Respondent Default.
The Panel was properly constituted. The undersigned Panelist submitted Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís decision is November 11, 2002.
4. Factual Background
The Panel uses the term "the Complainant" to embrace the Complainant and the other member companies of the group of companies of which the Complainant forms part. In the absence of a response from the Respondent, the Panel accepts as fact most of the Ďfactsí asserted by the Complainant.
The Complainant owns and operates one of the UKís major supermarket chains. The business trades under and by reference to the name ASDA, which is a household name in this country. The Complainant is the proprietor of numerous trade mark registrations of or including the name ASDA and is the proprietor of substantial unregistered rights in respect of the name.
The Respondent, who has not responded to the Complaint, appears to be one Paul Kilgour.
The Registrarís Whois Database gives no name or address for the Respondent (other than an email address), but the Complainant has exhibited an earlier Whois search result, which provided an address for the Respondent, namely 128 Spottiswoode Gardens, Mid Calder, Livingstone, EH53 0JY, West Lothian, England.
The Respondent is a disgruntled ex-employee of the Complainant. He registered the Domain Name on July 23, 2001, while still employed by the Complainant. When he registered the Domain Name he was operating a website connected to another of his domain names, <asdasucks.co.uk>. The website at "www.asdasucks.co.uk" at that time contained a selection of material directed at the management of the Complainant, which can only sensibly be described as scandalously and disgustingly abusive.
The Respondent left the Complainantís employ in August 2001.
The Domain Name was not connected to an Internet facility until about August 2002. Visitors to the site found themselves linked to the Complainantís official site at "www.asda.co.uk". The Panel has visited the site recently and was met with the message "This Website is now officially closed! This website is in no way associated with the ASDA stores chain".
It is convenient to mention here that in relation to the <asdasucks.co.uk> domain name, the Respondent indicated to solicitors for the Complainant that the Respondent was "open to negotiation" in relation to that domain name.
5. Partiesí Contentions
The Complainant contends that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered in bad faith and is being used in bad faith.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the 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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
Identical or Confusingly Similar
Manifestly, the Domain Name is similar to the Complainantís trade mark in that it commences with that trade mark, but is it Ďconfusingly similarí to the Complainantís trade mark?
What is meant by "confusingly similar"? In the view of the Panel, if the word "confusingly" is to be given any meaning, the expression cannot equate to "similar". The Panel construes "confusingly similar" in this context to mean that the Domain Name, by reason of its similarity with the Complainantís trade mark, is likely to lead to a substantial (i.e. not insignificant) level of confusion among Internet users.
What sort of confusion? A confusion in the minds of Internet users that the Domain Name is or may very well be a domain name belonging to the Complainant or licensed by the Complainant. This is consistent with the meaning of the term "confusingly similar" in the trade mark context (which is appropriate in that the Policy is expressly designed to protect the legitimate interests of the trade mark owners) and the Panel can think of no other type of confusion that could be said to apply.
The Complainant appears to acknowledge that that is the meaning. The Complaint includes the following paragraph:
"The Domain Name incorporates as its most prominent feature the Complainantís trade mark "ASDA" together with the pejorative word "SUCKS". The first and immediate striking element of the Domain Name is the Complainantís name. The adoption of the Name in the Domain Name is inherently likely to lead some people to believe that the Complainant is connected with the Domain Name. Although some may treat the word "SUCKS" as a pejorative exclamation and dissociate it from the Complainant, a substantial number of people are likely to be confused about the potential association of the Domain Name with the Complainant particularly given that the Domain Name is not being used (as might be expected for such a name) in relation to a website which criticises the Complainant but instead takes the user directly to what is clearly the official "ASDA" website without any indication that this has been done through framing or any other mechanism without the consent of the Complainant."
Subject to one possible exception, which is addressed below, the Panel is unable to accept that "a substantial number of people are likely to be confused about the potential association of the Domain Name with the Complainant .." The Panel believes that by now the number of Internet users who do not appreciate the significance of the Ď-sucksí suffix must be so small as to be de minimis and not worthy of consideration. The Panel notes that the Complainant puts forward no evidence to substantiate that contention. The Panel believes that Internet users will be well aware that a domain name with a Ď-sucksí suffix does not have the approval of the relevant trade mark owner.
The fact that confusion may have arisen from the linking of the Respondentís site at "www.asdasucks.net" to the Complainantís site at "www.asda.co.uk" is support for the proposition that the Respondent has made confusing use of the Domain Name. It is not support for the proposition that the Domain Name is confusingly similar to the Complainantís trade mark.
In the view of the Panel the only possible confusion will be among Internet users, who are aware of the existence of the Complainant, who are not fluent in English and who do not therefore appreciate the significance of the Ď-sucksí suffix. The Complainant has not sought to put this argument to the Panel in this administrative proceeding; nonetheless, the Panel has examined the Complainantís website for signs of a foreign clientele and has found nothing of relevance. The website is an English language website devoted essentially to a UK orientated business. Accordingly, the Panel finds that this potential is not applicable in this case. Internet users unfamiliar with the English language, yet aware of the existence of Asda are unlikely to exist in significant numbers.
In the result the Complainant has failed to prove that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights and the Complaint fails.
The Panel is aware that other panelists take a different view in relation to this issue, apparently taking the view that the intentional presence of the Complainantís trade mark in the domain name suffices for the purposes of paragraph 4(a)(i) of the Policy. The Panel respectfully suggests that such an approach deprives the word "confusingly" of all meaning.
The Ďjustificationí for the contrary view is sometimes said to be the traditional test adopted for trade mark infringement purposes in the UK, namely comparing the plaintiffís trade mark against the defendantís "sign" and ignoring any additional distinctive matter such as, in this case, the Ď-sucksí suffix (ie an Asda/Asda comparison). Paragraph 4(a)(i) does not call for a mark/sign comparison. It calls for a comparison between the mark and the domain name, which is a different test altogether.
Respondentís Rights or Legitimate Interests
In light of the foregoing finding it is unnecessary for the Panel to address this issue.
In light of the Panelís finding in relation to paragraph 4(a)(i) of the Policy it is unnecessary for the Panel to address this issue.
The Complaint is dismissed. The Panel takes no pleasure in coming to this finding. The Respondentís behaviour in relation to the <asdasucks.co.uk> domain name has been grotesque and the Panel has no doubt that the Respondent registered the Domain Name for a similar purpose. Sadly, however, in the Panelís view, the abuse in question is outside the scope of the Policy when used in relation to a domain name which is not identical or confusingly similar to the Complainantís trade mark. The Panel contemplated taking a broad brush approach on the basis that there has been a clear abuse in relation to a domain name featuring a trade mark of the Complainant, but the Panel took the view that this could be dangerous. The Policy is narrow in scope and is not intended to cover all abuses.
Dated: November 11, 2002