WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Edmundson Electrical Limited v. Mercers Electrical Distributors Ltd

Case No. D2009-1412

1. The Parties

The Complainant is Edmundson Electrical Limited of Knutsford, Cheshire, United Kingdom of Great Britain and Northern Ireland, represented by internally represented.

The Respondent is Mercers Electrical Distributors Ltd of Ballymena, Antrim, United Kingdom of Great Britain and Northern Ireland, represented by Johnsons Solicitors, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <edmundsonelectrical.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2009. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 28, 2009.

On October 29, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On October 30, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the amended satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2009. The Response was filed with the Center on November 19, 2009.

The Center appointed David Perkins as the sole panelist in this matter on November 25, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On December 9, 2009 the Panel issued a Procedural order requesting additional information from the Parties by December 16, 2009. Those requests were duly answered by the Respondent on December 15, 2009 and by the Complainant on December 16, 2009.

4. Factual Background

4.A The Complainant

The “Edmundson Electric” corporate name and identifier

4.A.1 The Complainant does not have registered trade name rights for the names EDMUNDSON or EDMONSON ELECTRICAL. However, the Complainant asserts common-law trade name rights in the name EDMUNDSON ELECTRICAL. In a Witness Statement from Martin Wright, the Complainant explains the basis for that assertion. Mr. Wright is the Complainant's System Support Manager and has been employed by the Company for nine and a half years.

4.A.2 Mr. Wright has exhibited documents which establish the following history behind the Complainant Company and detail its use of the EDMUNDSON and EDMUNDSON ELECTRICAL names. Joshua Edmundson founded a business bearing his name, EDMUNDSON, at the beginning of the nineteenth century. By the 1870's EDMUNDSONS Limited, as it was then called, appears to have pioneered the establishment of a national electricity supply network in the United Kingdom. After 1948 when its business was nationalized the Company moved into the electrical wholesaling activities which it continues to carry out today.

4.A.3 By the early 1970's it was trading as EDMUNDSONS ELECTRIC Company and the Complainant in this administrative proceeding began trading as EDMUNDSON ELECTRIC Limited in January, 1992. Currently, the Complainant estimates that it has 25% of the wholesale electrical product distribution market in the United Kingdom and is the largest wholesale distributor of electrical products in the country.

4.A.4 The Complainant operates from over 260 branches around the United Kingdom. Some 170 of those branches trade under the EDMUNDSON ELECTRICAL name. The others trade under a variety of names, including Walter S. Mercer in Northern Ireland and Edmundson - Walsall Bennett & Fountain in England. Those companies' literature refers to them as being “A member of Edmundson Electrical Limited”.

4.A.5 The Complainant's Annual Reports from 2000 to 2008 exhibited to Mr. Wright's statement disclose annual turnover from £551 million in 1999 rising to £865 million in 2008.

4.A.6 In addition to use of the corporate identifier of EDMUNDSON ELECTRICAL, Mr. Wright's Statement exhibits an illustration of one of some 600 EDMUNDSON ELECTRICAL delivery vehicles currently used throughout the United Kingdom.

The EDMUNDSON ELECTRIC domain names

4.A.7 The Complainant has registered the following domain names:

- The disputed domain name <edmundsonelectrical.com> registered on October 19, 2000;

- <edmundson-electrical.co.uk> registered on December 12, 1999;

- <edmundson-electrical.net> registered on June 28, 2007; and

- <edmundson-electrical.com> registered on June 29, 2009.

4.A.8 Mr. Wright states that since 1999 the Complainant has continuously operated a website at “www.edmundsonelectrical.co.uk” at which it promotes its services and the products it supplies. From January to November, 2009 that website received an average of over 14,800 visits a month from unique visitors. The comparable average for 2008 was 12,400 unique visits per month. Of the 21,484 hits recorded on that website over the period of January to November 2009, some 40% came from users entering the search words “EDMUNDSON ELECTRICAL”. The hits in 2008 numbered 16,692 as in 2007 10,481.

4.A.9 Although the disputed domain name was not used to resolve to a website, it redirected users to “www.edmundsonelectrical.co.uk” website. Mr. Wright explains that the disputed domain lapsed in January 25, 2009 through an administrative error. When the Complainant sought to rectify that error and re-register the disputed domain name, it discovered in late June, 2009 that the name had been registered by the Respondent earlier that month on June 18, 2009.

Other uses of the EDMUNDSON ELECTRICAL name

4.A.10 Mr. Wright explains that, although in the past the Complainant produced EDMUNDSON brochures, now its products are detailed on the website at “www.edmundsonelectrical.co.uk”. However, the Complainant still produces catalogues for customers, which also prominently refer to EDMUNDSON ELECTRICAL. By way of illustration, Mr. Wright exhibits a Catalogue illustrating this.

4.A.11 The Complainant also Sponsors trade events, namely “The Edmundson ECA [Electrical Contractor's Association] Apprentice of the Year” and “the Scottish Joint Industry Board (SJIB) Edmundson Apprentice of the Year” awards. The former has been awarded for the last 30 years.

4.A.12 The Complainant also undertakes various organizational roles for The Electrical and Electronic Charity [EECBA] and is a major contributor to that charity.

4.A.13 The Complainant has also sponsored the Halle Orchestra at the Royal Exchange Theatre and Bridgewater Hall in Manchester for over 10 years. Mr. Wright exhibits a Bridgewater Hall flyer listing the Complainant as a Corporate member.

4.A.14 Finally, the Complainant has held a Royal Warrant as Supplier of Electrical Products since 2003.

4.B. The Respondent

4.B.1 Mr. Ian Mercer, the Respondent's Managing Director, is a former employee of the Complainant. In 1994 the Complainant acquired a business in Northern Ireland known as Walter S. Mercer & Son Limited. That business was founded by Mr. Mercer's grandfather. Mr. Mercer left the Complainant in 2002 and established his own electrical distribution Company, the Respondent.

4.B.2 The Respondent states that when the Complainant had allowed the disputed domain name to lapse for some 3 months earlier this year, it assumed that the Complainant no longer had an interest in maintaining that registration.

4.B.3 The Respondent says that it has no present plans to use the disputed domain name in the United Kingdom but would consider doing so specifically targeting the Republic of Ireland and Continental Europe where – the Respondent says – the Complainant does not trade and, consequently, has no reputation or goodwill in the EDMUNDSON ELECTRICAL name and identifier.

4.B.4 The Respondent exhibits a letter in September 2003 to the Complainant's solicitors in response to the Complainant taking issue with use of the trading name, Mercer Electrical Distribution Limited.

4.B.5 Responsive to the Procedural Order, the Complainant has provided a cease and desist letter to the Respondent dated September 11, 2009. The Respondent replied by letter dated September 15, 2009 saying:

“We acknowledge your offer for the transfer of this domain name to your Company, however, we have intended use for this domain and we are in the process of marketing with the intention of using this domain name.

If you wish to discuss the matter further, please do not hesitate to contact me by letter or by telephone on the address or phone number stated on our letter heading.”

5. Parties' Contentions

5.A. Complainant

Identical or Confusingly Similar

5.A.1 The Complainant asserts that, in the context of the use of EDMUNDSON for some 150 years and more recently of EDMUNDSON ELECTRICAL since 1992 it has established in its field of activity namely, the wholesale distribution of electrical products, common law/unregistered trademark rights in the EDMUNDSON ELECTRICAL name and identifier.

5.A.2 The disputed domain name is identical and/or confusingly similar to that trademark.

Rights or Legitimate Interests

5.A.3 Mr. Mercer of the Respondent, as a former employee of the Complainant, was well aware of the Complainant's reputation and use of the EDMUNDSON ELECTRICAL name when he registered the disputed domain name in June 2009 after the Complainant had inadvertently allowed that domain name - originally registered by the Complainant in October, 2000 - to lapse.

5.A.4 The Complainant has not licensed or otherwise authorised use by the Respondent of the EDMUNDSON ELECTRICAL name. Indeed, if the Respondent were to use the disputed domain name, the Complainant would sue in passing-off.

Registered and Used in Bad Faith

5.A.5 The Complainant repeats paragraph 5.A.3 above and refers to the correspondence summarised in paragraph 4.B.5 above.

5.A.6 The Complainant says that, in the circumstances, any use by the Respondent of the disputed domain name will create a likelihood of Internet users within paragraph 4(b)(iv) of the Policy.

5.A.7 As evidence of the Respondent's bad faith use of the disputed domain name, the Complainant exhibits the “parking page” to which that domain name presently resolves. That page directs users to competitors of the Complainant, such as DDH Electrical; OUS Electrical Supplies; Elektra Electrical Services and others.

5.B. Respondent

Identical or Confusingly Similar

5.B.1 The Respondent contends that the Complainant has no reputation or goodwill and, hence no trademark rights, in the EDMUNDSON ELECTRICAL name such as to enable the Complainant to assert a case in passing-off. Specifically it has provided no evidential basis to establish such rights. For example, no details of the identity of the goods and/or services upon which the EDMUNDSON ELECTRICAL name has been used; no indication of the size and geographical extent of the goodwill and reputation claimed by the Complainant for that name; and no details of turnover, advertising expenditure or promotional activities related to that name.

5.B.2 Additionally, the Respondent points to EDMUNDSON ELECTRICAL as being “highly descriptive and non-distinctive” and, hence, incapable of acquiring the secondary meaning required to qualify it as a trademark.

5.B.3 Still further, the Respondent points to the fact that the disputed domain name has never, since its registration in 2000, been used by the Complainant to resolve to a website.

5.B.4 Finally, the Respondent points to the fact that in its trading area – namely, Northern Ireland – the Complainant does not trade under or by reference to the EDMUNDSON ELECTRICAL name. Instead, the Complainant trades as “Walter S. Mercer”, the “Electrical Equipment Company” and “Walsall”.

Rights or Legitimate Interests

5.B.5 Consequently, the Respondent says that its registration of the disputed domain name cannot impinge on any trademark rights of the Complainant.

5.B.6 Further, any use by the Respondent of the disputed domain name outside the United Kingdom – for example, in the Republic of Ireland and /or Continental Europe – cannot mislead consumers, since the Complainant has no reputation, goodwill or trademark rights in EDMUNDSON ELECTRICAL in those geographical areas.

Registered and Used in Bad Faith

5.B.7 The Respondent relies on the apparent abandonment by the Complainant of the disputed domain name [paragraph 5.A.3 above] and its present intention only to use the disputed domain name to attract customers in geographical areas where the Complainant does not trade or have any reputation [paragraph 5.B.6 above].

5.B.8 As to the parking page [paragraph 5.A.3 above], the Respondent says that this is “the result of a search engine and not something that is in the control of the Respondent”.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the disputed domain name.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of the disputed domain name in bad faith.

6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be relevant evidence of the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical or Confusingly Similar

6.5 The evidence provided by Mr. Wright clearly establishes that the Complainant is well known – as EDMUNDSON ELECTRICAL in the field of the wholesale electrical product distribution in the United Kingdom. Proportionately, 170 EDMUNDSON ELECTRICAL outlets out of a total of 260 branches operated by the Complainant, is approximately 65%. Applying that to the Complainant's 2008 turnover would produce revenues generated under the EDMUNDSON ELECTRICAL name and identifier of some £560 million, which is not inconsiderable.

6.6 The EDMUNDSON ELECTRICAL name also clearly has a long established heritage and in its trading sector is a very significant entity, if not the leading wholesaler of electrical products in the United Kingdom. Its promotional activities in England and Scotland within the industry [see paragraphs 4.A.11 and 12] and its sponsorship [paragraph 4.A.13] also prominently feature the names EDMONDSON and EDMUNDSON ELECTRICAL.

6.7 Use of the EDMUNDSON ELECTRICAL name and identifier for the Complainant's website at “www.edmundsonelectrical.co.uk” is also significant [paragraphs 4.A.8 and 9 above].

6.8 As to the Respondent's contentions, paragraph 4(a)(i) of the Policy does not require a trademark to be such as to enable a Complainant to sustain an action in passing off. However, in the Panel's opinion, Mr. Wright's evidence and the documents exhibited are powerful evidence of an established reputation in the trading name EDMUNDSON ELECTRICAL in the relevant field of activity and is sufficient to establish common law trademark rights in that name following the guidelines provided by the consensus view in paragraph 1.7 of the http://www.wipo.int/amc/en/domains/search/overview/index.html.

6.9. Consequently, the Panel does not accept the Respondent's contention that, because the EDMUNDSON ELECTRICAL name is “highly descriptive and distinctive” [paragraph 5.B.2 above], it cannot constitute trademark rights for the Complainant.

6.10 In the circumstances, the Panel considers that the Complainant has provided adequate evidence to establish trademark rights in EDMUNDSON ELECTRICAL. The disputed domain name is identical to that trademark. Consequently, the Complainant satisfies the requirements of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.11 Manifestly, the Respondent has not established any of the circumstances set out in paragraph 4(c) of the Policy. As a former employee of the Complainant, the Respondent's Managing Director (Mr. Mercer) was well aware of the Complainant's extensive use of the EDMUNDSON ELECTRICAL identifier in relation to its branches in the United Kingdom, its fleet of vehicles, its promotional activities and its use since 1999 of the “www.edmondsonelectrical.co.uk” website. Mr. Mercer remained an employee of the Complainant until 2002. In the circumstances, the Panel finds that the Complainant does not have rights or legitimate interests in the disputed domain name.

Registered and Used in Bad Faith

6.12 Given Mr. Mercer's prior knowledge of the Complainant's business and its use of the EDMUNDSON ELECTRICAL name and identifier, it is just not credible to assert that by June 2009 he assumed that the Complainant had abandoned the disputed domain name. But, in any event, given the Complainant's long use of and established reputation in the EDMUNDSON ELECTRICAL name and identifier, the Respondent must have known that any use of the disputed domain name would conflict with the Complainant's rights in that name.

6.13 It is not adequate for the Respondent to say that it had no control of the use made of the parked disputed domain name by a search engine. The Respondent must take responsibility for such use, particularly in the light of its Managing Director's prior association with the Complainant.

6.14 Finally, the Respondent's suggestion that it may only use the disputed domain name to attract business outside the United Kingdom does not cure its bad faith. Unlike domestic trademarks, domain names know no territorial boundaries. Hence, such use by the Respondent of the disputed domain name will constitute a bad faith use under the Policy. Consequently, any such use will inevitably fall within paragraph 4(b)(iv) of the Policy and probably also paragraph 4(b)(iii). The Complainant invited the Respondent to assist its recovery of the disputed domain name but the Respondent refused; see paragraph 4.B.5 above.

6.15 In the circumstances, the Complainant satisfies the dual requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <edmundsonelectrical.com> be transferred to the Complainant.

 


David Perkins
Sole Panelist

Dated: December 23, 2009