Automated Summary
Key Facts
This case involves a dispute over the domain name ziferblatuk.co.uk between Vorstar Investment Ltd (Complainant) and Digitalink Consultants Limited (Respondent). Vorstar, a Cyprus-based company, claims ownership of the ZIFERBLAT trademark (registered in the UK since 2013) and a franchise model for pay-per-minute cafés. The domain was registered in 2018 by Gareth Harold, a former director of My Happy Place Ltd (Vorstar’s ex-franchisee), and later transferred to Digitalink in 2020. The Respondent’s website, which the domain redirects to, uses the ZIFERBLAT name and logo (owned by Vorstar) during a rebranding to 'Clockwork'. Vorstar argues the domain is abusive due to trademark infringement and public confusion, while the Respondent claims prior use and no connection to Vorstar’s rights.
Issues
- The first issue is determining if Vorstar Investment Ltd has established rights in the ZIFERBLAT name or mark that are identical or similar to the domain name ziferblatuk.co.uk. This includes evaluating their registered trademark and franchise agreements.
- The second issue assesses whether the domain name ziferblatuk.co.uk, now registered to Digitalink Consultants Limited, constitutes an abusive registration under the Nominet DRS Policy. This involves checking if it was registered to block the Complainant's rights or to disrupt their business.
- The third issue addresses the Respondent's request to stay the DRS proceedings due to alleged ongoing legal actions. The expert found no evidence of such proceedings and denied the stay.
Holdings
- The Complainant has proved that they have rights in the ZIFERBLAT name and mark, which are identical or similar to the Domain Name. The Domain Name, in the hands of the Respondent, is an Abusive Registration due to its use in a manner likely to confuse the public into believing it is connected to the Complainant. The Domain Name is ordered to be transferred to the Complainant.
- The Respondent's request to stay DRS proceedings pending legal action was denied. No evidence was provided to support the existence of legal proceedings, and the response contained factually incorrect statements. The stay request was found to be an attempt to frustrate the DRS process.
Remedies
The court ordered the transfer of the domain name ziferblatuk.co.uk to the Complainant, Vorstar Investment Ltd, as it was found to be an abusive registration.
Legal Principles
The decision was based on the Complainant proving, on the balance of probabilities, that the Domain Name was an abusive registration under the Nominet DRS Policy. Key factors included the definition of 'Rights' (enforceable rights under English law, including trade marks) and 'Abusive Registration' (registrations that take unfair advantage or are detrimental to the Complainant's rights). The expert applied paragraph 5.1.2 of the DRS Policy, focusing on public confusion caused by the Domain Name's redirection to a rebranded website.
Cited Statute
Nominet DRS Policy
Judge Name
Chris Tulley
Passage Text
- The continuing use to which the Domain Name has been put since Digitalink Consultants Ltd became the registrant is to resolve, by automatic redirection, to the website at www.workslikeclockwork.co.uk. That is public facing use of the Domain Name.
- For the reasons outlined above, I find that the Complainant has proved, on the balance of probabilities, that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
- The potential for confusion is readily apparent given that the Complainant continues to operate under the ZIFERBLAT name and to use the domain name to resolve to a website for its UK venues in London and Coventry.