Loewe SA v Blackburn, Court of Appeal - Nominet UK Dispute Resolution Service, May 15, 2008, [2008] DRS 5386

Resolution Date:May 15, 2008
Issuing Organization:Nominet UK Dispute Resolution Service
Actores:Loewe SA v Blackburn
 
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Nominet UK Dispute Resolution Service

DRS Number 05386

Decision of Independent Expert

  1. Parties

    Complainant: Loewe S.A.

    Country: Spain

    Respondent: David Blackburn

    Country: United Kingdom

  2. Domain Name

    (the ``Domain Name'')

  3. Procedural Background

    The Complaint of the Complainant was entered in the Nominet system on 16 January 2008. Nominet validated the Complaint and transmitted a copy to the Respondent. A Response from the Respondent was entered in the Nominet system on 12 February 2008, and a Reply from the Complainant was entered on 25 February 2008. On 27 March 2008, a non-standard submission was received from the Respondent. On 22 April 2008 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy (the ``Policy'').

    The undersigned (the ``Expert'') has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality. The undersigned, Christopher Gibson, was appointed as Expert in this case on 8 February 2008.

    Respondent's Non-Standard Submission:

    As noted above, the Respondent has submitted a non-standard submission. In accordance with paragraph 13(b) of the DRS Procedure, Nominet has forwarded to the Expert only the first paragraph of that submission, which paragraph 13(b) specifies should explain ``why there is an exceptional need for the non-standard submission.'' The Expert can then determine ``at his or her sole discretion'' whether to receive the remainder of the non-standard submission. The first paragraph of Respondent's non-standard submission is as follows:

    "This submission is necessary because the Complainant's Reply contained

    matters that ought to have been properly contained in the Complaint -

    including evidence and allegations that are inadmissible at this stage. If

    they are admitted, these are all things that I must be given an opportunity

    to comment on - including fresh (and incorrect) allegations about new

    allegedly abusive domains supposedly registered to me; new search engine

    evidence; fresh and significant admissions; and repeated attempts to

    mis-appropriate the Policy in an attempt at reverse domain name hijacking.

    This submission is essential to enable the Expert to properly review the

    case and to avoid allowing the Complainant from taking unfair advantage of

    new and incorrect assertions at the Reply stage, without my having the right

    to reply."

    The Expert has carefully reviewed the arguments and evidence included in the Complainant's Reply. The Expert's objective is to assess whether the Complainant has submitted new allegations or evidence that bring about some element of unfair surprise and thus should have been included in the Complaint and, if so, to determine whether the Respondent's non-standard submission should therefore be accepted. The main points of the Reply are summarized in section 5 below. Paragraph 6(a) of the DRS Procedure provides that the Complainant ``may submit to us a reply to the Respondent's response,'' but adds nothing more about the permissible scope of the Reply. In any event, the Expert finds that the Complainant's Reply contains arguments and evidence that are directly responsive to the points raised by the Respondent in his Response. The matters covered in the Reply are therefore properly within the scope of that submission, and do not give rise to grounds for accepting the Respondent's non-standard submission. The Expert therefore decides not to accept the remainder of the Respondent's non-standard submission.

  4. The Facts

    The Complainant, Loewe S.A., is the owner of the LOEWE brand and trade marks, which have been used for many years in the UK, the European Union and elsewhere around the world in relation to leather items, ready-to-wear silk accessories and fragrances. The Complainant has registered LOEWE as a trade mark before the UK Trade Marks Registry and the Community Trade Mark Office (Office for Harmonization of the Internal Market). Complainant operates its business on the Internet through websites at www.loewe.com (registered in 1996), as well as , , , , , , , and , all of which allow the Complainant to reach clientele across a wide geographic area.

    The Respondent is David Blackburn, an individual who has a portfolio of over 1,000 domain names. From the WHOIS records, the Domain Name was registered by the Respondent on 18 May 2004. The URL for the Domain Name, www.loewe.co.uk, resolves to a website containing links to all sorts of other websites providing goods and services (e.g., birthday gifts, car loans, casinos, London hotels, mortgages, ringtones, etc.). The Domain Name thus resolves to a pay-per-click parking page, enabling Respondent to earn money by means of click-throughs using links on the parking page. This continues to be the case as of the date of this decision.

    On 24 September 2007 a lawyer for the Complainant wrote to the Respondent drawing his attention to its trade mark rights and seeking transfer of the Domain Name to the Complainant. The Respondent's lawyers replied on 4 October 2007, denying the Complainant's allegations and rejecting the demand for transfer. Further correspondence was exchanged between the parties.

  5. The Parties' Contentions

    Complainant's Complaint

    The Complainant contends that the Domain Name in dispute is identical to registered trade mark rights for its mark, LOEWE, and that the Domain Name in the hands of the Respondent is an Abusive Registration.

    Complainant Rights:

    The Complainant has submitted extensive documentary evidence to demonstrate that it has Rights in the LOEWE mark, which is identical to the Domain Name. Complainant contends that the LOEWE brand is well-known in the UK and throughout the world as a Spanish luxury clothing and accessories brand. The earliest of the Complainant's relevant trade mark registrations dates back to July 1992, although the Complainant explains that the LOEWE mark has been used in the European Union since at least 1910 and in the UK since at least 1969. The LOEWE brand was originally founded in 1846 in Madrid by a group of Spanish leather craftsman and the brand originated in its current form in 1872 when Enrique Loewe Roessberg, a German craftsman, joined the group. In 1905, the LOEWE brand became the official supplier to the Royal family of Spain and by 1910 the LOEWE brand had secured a reputation as the most luxurious and renowned boutique in Madrid. International expansion eventually followed with the opening of a new boutique in London in the late 1960's. In 1985, Loewe entered into an agreement with the Complainant regarding international distribution of its products and by 1993 there were over 51 Loewe shops present in Europe, Japan, South East Asia and the Pacific Region. In 1996, during the 150 year anniversary of the creation of the LOEWE brand, the Complainant purchased the brand. Loewe boutiques can now be found throughout the world including London, Bangkok, Barcelona, Beijing, Bogota, Hong Kong, Honolulu, Jakarta, Kuala Lumpur, Madrid, Mexico City, Osaka, Paris, Seoul and Sydney.

    Since purchasing the LOEWE brand in 1996, Complainant submits that it has spent considerable time and money in promotion of the brand, and as a result, enjoys considerable goodwill and reputation in its LOEWE trade marks in the UK and European Union. Reference has been made above to the various domain names used by Complainant to promote its goods on-line. Complainant has submitted documentary evidence to show the range of LOEWE products that are currently available in the UK. These products are available from outlets such as Harrods stores in both central London and at Heathrow International Airport and Selfridges. Complainant has also submitted evidence to show that substantial sums have been spent on promotion of the LOEWE brand in the UK, across a broad range of print media, such as Vogue Magazine, Harpers Bazaar, Tatler, FT HTSI, Asharq Al Awsat, In London, SP Magazine, DP Magazine, Harpers & Queen, Vanity Fair, Conde Nast Traveller, Red, Elle, I-D, Hello and Dazed & Confused. Complainant highlights that the earliest of these advertisements dates back to October 1981, which refers to the opening of a new store in Brompton Road, London. Media plans for the years 2000, 2001, 2004 and 2005 have been submitted...

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