WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
B & Q Plc v. Jolyon Orme
Case No. DBIZ2002-00084
1. The Parties
The Complainant is B&Q Plc, a public limited company incorporated in the United Kingdom under no. 973387, whose registered address is Portswood House, 1 Hampshire Corporate Park, Chandlers Ford, Eastleigh, Hampshire SO53 3YX, United Kingdom, represented by Willoughby & Partners, Solicitors, The Isis Building, Thames Quay, 193 Marsh Wall, London, E14 9SG , United Kingdom.
The Respondent is Jolyon Orme of Surrey, United Kingdom.
2. The Domain Name and Registrar
Domain Name: <diy.biz> ("the Domain Name").
The Registrar is Register.com, Inc., of New York, New York, United States of America.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center on April 26, 2002. WIPO has verified that the Complaint satisfies the formal requirements of the Start-up Trademark Opposition Policy ("the STOP Policy"), the Rules for Start-up Trademark Opposition Policy (the "STOP Rules"), as well as the the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules") relating thereto and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
On May 14, 2002, WIPO notified the Respondent of the Complaint in the usual manner and a Response was received by WIPO on May 29, 2002.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
(1) The Domain Name was registered by the Respondent on March 27, 2002. On April 6, 2002, the Complainant was notified that the Domain Name, which matched its IP claim for the trade mark ‘DIY’, had been registered by the Respondent. The Complainant was listed with first challenge priority to file a STOP complaint within 20 days from April 8, 2002. The Complainant duly registered its intent to file a STOP Complaint through its Registry account with NeuLevel on April 23, 2002, and was allocated a case ticket number.
(2) The mark "DIY" in which the Complainant alleges it has rights is not a registered trade mark.
(3) The domain name DIY.co.uk was registered on July 23, 1996, in the name of the DIY Store Limited, and the Complainant has promoted itself via that domain name since 1998.
(4) On February 22, 2000, the Complainant acquired the domain name <diy.com>.
(5) In March 2001 the Complainant’s website, which was hosted at both domain names <diy.co.uk> and <diy.com> became "transactional" and offered a comprehensive range of products to the consumer in addition to other information.
(6) The Complainant conducts a very large business in home improvement products, principally, but not exclusively, within the United Kingdom.
(7) The Respondent is a private individual, whose business activities (if any) have not been disclosed by him.
5. Parties’ Contentions
The Complainant contends, inter alia, as follows:
(i) The Complainant is one of the United Kingdom’s most successful and innovative home product retailers. The Complainant was founded in 1969 by Richard Block and David Quayle, who opened the first of the Complainant’s stores in Southampton in March 1969.
(ii) The Complainant’s business grew rapidly, and in 1979 the Complainant had opened 26 stores in the United Kingdom. As the Complainant continued to grow, its product range grew accordingly and included products such as home maintenance products, garden furniture, garden power and care products, home storage, lighting, mats, rugs and bathroom accessories. By the end of the 1980s the Complainant had expanded to 280 stores some of which were larger than usual stores with an even greater product range sourced from all around the world. In 1994 the first of the largest format of the Complainant’s stores, the "Warehouse", opened, and the Complainant’s stores began opening on Sundays.
(iii) In January 1996, the Complainant’s first store outside the United Kingdom opened in Taiwan. In 1998 the Complainant merged with France’s leading home product retailer, "Castorama" to become the largest home product retailer in Europe.
(iv) The Complainant’s international expansion continued in 1999 with the opening of stores in Shanghai and the acquisition of "ScrewFix Direct" a UK based hardware mail order specialist. In 2000 the Complainant opened its 50th "warehouse" store in York and its 300th store in the United Kingdom.
(v) The Complainant’s turnover for the year 2000 was £2.2 billion and for the year 2001 £2.6 billion.
(vi) The Complainant has made extensive use of the trade mark DIY through the use of its website, in advertising and in its DIY domain names continuously as part of its corporate image in the United Kingdom since 1998. The Complainant has actively ensured that its DIY trade mark features prominently whenever and wherever it is used. The DIY domain names have been promoted throughout the Complainant’s stores, promotional literature, catalogues, price listings, on advertising hoardings, television advertisements, the national press, on its delivery lorries and on other advertising media. [It should be noted that, in relation to this and the following contentions, the Complainant uses a ‘logo’ comprising the letters "B&Q" above "www.diy.com." The letters "B&Q" are about four times the size of the letters of the website, which are all in lower case – Panelist].
(vii) It should be noted that the "www." prefix, necessary to resolve a domain name, is in a lighter shade than the domain name, putting further emphasis on the DIY trade mark. The Complainant’s use of the DIY trade mark on its website is clearly used in the same manner and same position as the Complainant’s house name i.e. as a trade mark and features on every web-page. This has been deliberately done by the Complainant to make sure the DIY mark is perceived as a trade mark and not just a web address.
(viii) The Complainant consistently uses the trade mark DIY in the same manner as its house name B&Q in order to ensure that the DIY trade mark has established itself within the mind of the Complainant’s actual and potential consumers as a sign indicating a source of origin. Such use has resulted in the Complainant having developed a substantial goodwill and reputation in the DIY trade mark.
(ix) The Complainant sells a vast diversity of goods through its website hosted at the DIY domain names. The Complainant concedes that there are many products on its website which are ‘do-it yourself’ related and that the letters "D I Y" are used as an acronym for this expression. However, there are equally many products sold by the Complainant which are not ‘do-it yourself’ products.
(x) The trade mark "DIY" cannot be seen as descriptive or generic when used in respect of such non ‘do-it yourself’ products. As such, the trade mark DIY is capable of distinguishing such goods of the Complainant from those of other traders and is distinctive of the Complainant.
(xi) An extract from a recent consumer survey conducted by Quaestor Research and Marketing Strategists on behalf of the Complainant indicates that awareness of <diy.com> amongst the 18-34 year age group was 35%, and amongst 35-44 year age group was 30%.
(xii) It is clear from the above that the Complainant’s DIY trade mark has gained a significant level of public recognition as a result of the Complainant’s extensive use and is a distinctive indication of origin in relation to products for which the DIY trade mark could not be said to be descriptive.
(xiii) As a result of the IP Claim notification that the Respondent had registered a domain name that matches the Complainant’s DIY trade mark, the Complainant engaged an inquiry agent to contact the Respondent with a view to finding out why the Respondent had acquired the Domain Name.
(xiv) On April 19, 2002, the Complainant’s inquiry agent received an email from the Respondent which indicated he would sell the <diy.biz> domain name for the sum of "£125,000".
The Response was in the following terms:
"(i) The domain name DIY.BIZ was registered for an intended future business project which would encourage individuals to set up their own website and business projects - ‘DO IT YOURSELF BUSINESS’. My interest in this domain name, extends specifically to the .BIZ suffix as well as to the main DIY content. It is admitted that the Domain Name is identical to the Trade Mark.
(ii) This domain name was pre-registered as soon as possible with the anticipated demand for the new business suffix and due to the fact that no short, catchy and suitable domains were currently available. Registrars adopted the practice of actively encouraging domain name registrations in order to avoid disappointment.
(iii) The generic term DIY or DO IT YOURSELF is a very common everyday phrase within the English language, which can relate to many different issues and concepts.
(iv) I was approached by an anonymous organization that asked whether I had any intention of using the domain name DIY.BIZ. To which I responded as point 1. (above). The organization in question was not forthcoming in regards to their interest in this domain name – as DIY is a generic phrase, they could have represented any third party. The question "would you sell this domain?" was then asked. This was followed by "how much?…..hundreds?…..thousands?". A figure was stated in anticipation of serious negotiation, should I have reached the decision to sell this domain name and assuming the organization in question wanted to go ahead. The figure was also representative of other generic domain name sales. In much the same way as if I approached a well-known car manufacturer and asked, "how much is a particular car?" – I would then have the option to purchase, if I was happy with the price.
(v) At the time of registering I had no idea that B and Q held/had any rights to this generic term. I would have assumed that B&Q went by the domain name BandQ.com/co.uk/biz. In much the same way, if I want to find out information about Ford cars, I would go to Ford.com/co.uk/biz and not cars/automobiles.com.co.uk/biz..
(vi) IT WAS NOT AND IS NOT MY INTENTION TO INFRINGE THE INTELLECTUAL PROPERTY RIGHTS OR TRADEMARKS OF ANY OTHER INDIVIDUAL OR ORGANISATION AT ANY TIME, IN ANY WAY, REGARDLESS OF MEDIA.
(vii) Having now become aware of the existence of the very comprehensive website DIY.com/co.uk through the printed materials that have been made available, facts that I was previously unaware of. Also taking in to consideration the hard work that must have been involved in setting up this site and with a view to point (vi) (above) – I would like to confirm that the domain name DIY.BIZ should be transferred to B&Q PLC, the owners of both DIY.COM and CO.UK."
6. Discussion and Findings
According to paragraph 4(a) of the STOP Policy, the Complainant must prove that:
(i) The Domain Name is identical to a trademark 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 or is being used in bad faith.
There is no doubt that the Domain Name is identical to the letters DIY in which the Complainant claims to have rights.
However, the Panelist has come to the conclusion that the Complainant has failed to show that it has any such rights in a trademark, for the following reasons:
(i) It is clear that the letters "B&Q" are extremely well-known to the general public in the United Kingdom and are identified with the Complainant’s very large business in home improvement products. Those letters are manifestly used as a trademark.
(ii) The Complainant has extensively promoted its website <diy.com>, and it would seem from the rather limited evidence referred to in paragraph 5.A(xi) above that there is a degree of awareness of this website. (The Panelist notes that the supporting evidence exhibited by the Complainant shows that the awareness related to www.diy.com, and not DIY as suggested in the Complaint).
(iii) There is no evidence before the Panelist to demonstrate that the alleged trademark "DIY" (simpliciter) suggests to the general public the business of the Complainant rather than that of any other DIY (Do It Yourself) retailer.
(iv) Indeed, it is curious that whereas in the Complaint the Complainant stresses that it is claiming rights in "DIY", it seems mainly to use capital letters in its website or literature when it is using the letters wholly generically. Thus on the first page of a very thick exhibit consisting of pages from the Complainant’s website, apart from <diy.com> (in lower case letters) there are three mentions of "DIY Advice" and also the claim "Driving down the cost of DIY … and keeping it down".
(v) In short, the Complainant demonstrates what is self-evident, i.e. that it is in practice impossible to run a business in do-it-yourself products without using the letters DIY in a wholly generic, descriptive way.
(vi) It may be the case that the Complainant has built up valuable goodwill in the name of its website, <diy.com>, but it is only because of the addition of ".com" that that has been possible.
The finding that the Complainant has failed to establish that it has any rights in "DIY" is sufficient for dismissing this Complaint, and it might therefore be unnecessary for the Panelist to make any finding as to the Respondent’s interests and/or conduct.
However, this Panelist has been informed that there are other IP Claimants. In such circumstances, paragraph 4(l) of the STOP Policy requires the Panelist to decide, in accordance with the criteria there set out, whether to allow any further challenges. Having decided that the Complainant has failed to establish its case, two options are open to the Panelist, as set out in paragraph 4(l)(ii)(2) and (3) of the STOP Policy.
"2. In the event that you [i.e. the Respondent] demonstrate that you have legitimate rights to the domain name, the Panel will dismiss the complaint, and decide that no subsequent challenges under this Policy against the domain name(s) that is/are the subject of the Panel’s decision shall be permitted.
3. In the event that you do not, or are unable to demonstrate legitimate rights to the domain name(s), and the Complainant is unable to demonstrate either (a) it has legitimate rights, or (b) the domain name(s) was/were registered in bad faith, the Panel will dismiss the complaint, and decide that subsequent challenges under this Policy against the domain name(s) that is/are subject of the Panel’s decision shall be permitted. Such challenges under this Policy, however, may not be brought by the same Complainant."
The question is whether the Respondent has demonstrated that he has "legitimate rights" to the Domain Name. The Panelist is not satisfied that the Respondent has made out the requisite case.
It is probably unnecessary for the Panelist to make any finding on the issue of bad faith, but in the Panelist’s opinion the mere fact that in answer to an enquiry as to the price at which he would sell the Domain Name the Respondent replied "£125,000" is not indicative of bad faith – generic as the letters "DIY" may be a domain name containing them may be very valuable.
The Complaint is dismissed.
In accordance with STOP Policy paragraph 4(1)(ii)(3), the Complainant having failed in the Complaint and the Respondent not having proved to the satisfaction of the Panel that it has legitimate rights in respect of the Domain Name, the Panel permits subsequent challenges to the Domain Name.
Dated: June 25, 2002