Complainant is W Nicholson & Co Ltd of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Stephenson Harwood, UK.
Respondents are PRIVATE INFORMATION PROTECTION of UK / Southern Grain Spirits NZ Ltd., Matthew Fitzpatrick of Canterbury, New Zealand and Michael Marneros, Nuweb Designs of Christchurch, New Zealand (the “Respondent”). 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2016. On September 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 9, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to Complainant on September 16, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 16, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as the “Complaint”) 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2016. The Response was filed with the Center on October 6, 2016.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on October 14, 2016. 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 October 20, 2016 the Panel issued Procedural Order No. 1 which directed the parties to confirm whether any appeal proceedings were pending against the decision rendered by the United Kingdom Intellectual Property Office (“UKIPO”) issued on December 8, 2014. Both Complainant and Respondent filed Responses with respect to the identified issue. 4. Factual Background
Complainant claims ownership rights to the historic NICHOLSON brand of gin, which traces its origins back to 1736 in England and a distillery business which came to be operated by J&W Nicholson & Co. Ltd. After a number of ownership transfers, Complainant currently owns a portfolio of registered and pending marks (including labels and word marks) in seven identified jurisdictions including New Zealand (registration date March 24, 1909), Australia (registration date March 18, 1965), Benelux (registration date June 11, 1971), Denmark (registration date November 12, 1976) and Italy (registration date June 24, 1987). Complainant also asserts through its predecessors-in-title certain common law rights which extend to the UK, through use and residual reputation from its long history of manufacturing and sales in its original market.
The principal Respondent operates a distillery in Kaiapoi, New Zealand under the business name Southern Grain Spirits NZ Ltd. (“SGS”). In the mid-1980s, SGS had contact with Complainant’s predecessor J&W Nicholson & Co. Ltd. The disputed domain names and were registered by Respondent respectively on October 21, 2008 and July 22, 2008. Respondent formerly owned trademark registrations for two versions of NICHOLSON labels in the UK (2427924; 2441805) and the word mark NICHOLSON in the European Union (005750096)1 . All of these registrations have been cancelled.
Respondent operates a website at the disputed domain name which promotes NICHOLSON branded gin products. The website contains many references to Complainant’s predecessor-in-title J&W Nicholson & Co. Ltd., including photographs and information about the history of the brand and its 18th century origins. The disputed domain name is not being used. 5. Parties’ Contentions A. Complainant
Complainant relies on its portfolio of NICHOLSON trademarks to allege that Respondent is engaged in a deliberate attempt to pass off its products as those of the historic founder of the NICHOLSON brand. In terms of rights, Complainant asserts that it holds registered trademarks (including a long-standing New Zealand registration), but also relies on common law rights arising from use of the NICHOLSON trademarks in the UK for more than 200 years. Complainant claims that Respondent has copied its principal word mark and its historic business name in the disputed domain names.
With respect to rights or legitimate interests, Complainant submits that Respondent has never held any entitlement to use the NICHOLSON marks, names or labels, in spite of the fact that Respondent actually owned trademark registrations in the UK for various NICHOLSON formative marks. Complainant relies on the fact that the Respondent’s trademark registrations were cancelled on various grounds, including explicit findings of bad faith by the UKIPO in 2014.
Finally, with respect to bad faith, Complainant asserts that Respondent has deliberately attempted to trade on the historic NICHOLSON reputation, by misappropriating its marks and labels without permission, and by presenting a website which intentionally misleads consumers into believing there is a substantial connection if not identity between the New Zealand distillery and the historic English supplier. Complainant relies on the analysis and findings in the UKIPO in cancelling the Respondent’s registrations, and setting out a detailed account of Respondent’s underlying bad faith conduct. B. Respondent
Respondent submits that it holds rights and legitimate interests in the disputed domain names for two principal reasons:
(1) the historical connection between its New Zealand Distillery and Complainant’s predecessor-in-title; and
(2) actual sales and marketing beginning in 1983.
In 1982, marketing arrangements were allegedly made between J&W Nicholson & Co. Ltd. and Respondent SGS, which included a form of assignment of trademark rights for NICHOLSON, along with recipes and equipment. Following this “assignment”, Respondent claims to have used the NICHOLSON marks to manufacture and sell NICHOLSON branded gin.
Respondent denies that it has acted in bad faith, as it claims to be fully entitled to use the NICHOLSON name, based on its historical relationship with the original UK-based NICHOLSON business. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
By virtue of Complainant’s registered rights in the NICHOLSON trademarks, as set out in paragraph 4, the Panel is satisfied that it holds enforceable rights in the NICHOLSON marks. The disputed domain name is confusingly similar to the word mark NICHOLSON, as the addition of the word “gin” - the principal associated product – only serves to augment the confusing similarity. The disputed domain name is also confusingly similar to Complainant’s word mark NICHOLSON (as it replicates the dominant element of the mark), and to the various registered design marks which include the letter elements “J&W” in combination with “Nicholson”.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This dispute raises complex issues of residual rights in historical trademarks held by Complainant, against more recently registered marks held in the name of Respondent. It is also unusual in that the evidentiary record includes a detailed decision of UKIPO which touches on a number of facts and findings relevant to this proceeding, and which includes cross-examination of a fact witness (Mathew Fitzpatrick) who is also a principal spokesman for Respondent.
In 2008, as a result of the complicated history of the NICHOLSON trademark in England, the rights to the brand had become divided. At that point, Respondent had actually secured three trademark registrations through UKIPO. When the disputed domain names were registered in mid-2008, Respondent could arguably have claimed that it held legal title to the marks in question which underlay the disputed domain names. At first glance, the existence of those registered rights at the material times seems to support a finding of legitimate interests on the part of Respondent. However, the decision of UKIPO on December 8, 2014, sheds a different light on that conclusion.
The proceeding before the UKIPO involved both revocation and invalidity challenges against Respondent’s three NICHOLSON trademark registrations, and oppositions against related applications filed by Complainant and its predecessor. After a detailed analysis of the evidence, including the consideration of viva voce testimony from Mr. Fitzpatrick on behalf of SGS, the tribunal concluded that the three NICHOLSON registrations held by SGS must be revoked and declared invalid, in part because of bad faith conduct on the part of SGS. For purposes of this analysis, the Panel takes particular note that the UKIPO decision included the following conclusion: “the invalidity actions…in respect of trademarks 2441804, 2441805 and 2427924 are successful. These marks are deemed never to have been registered.”2
The Panel issued Procedural Order No. 1 in this proceeding to determine if in fact any appeal had been undertaken in connection with the UKIPO decision. Complainant has confirmed that no appeal was taken, and that the time for appeal has long since expired. Respondent also replied to the Panel’s request, but in a manner which obscures rather than illuminates what has transpired since the decision was rendered. On behalf of SGS, Mr. Fitzpatrick raises undefined issues of “Conflicts of interest and Breach of Fiduciary Duty,” which “can and must be ruled upon by a higher court.” He then states “We take launching High Court Action very seriously.” The Panel is left to conclude that no appeal has been launched, and the decision of UKIPO is in fact a final decision.
Aside from Respondent’s invalidated trademark registrations, there is also some evidence relating to the alleged assignment of NICHOLSON trademark rights to Respondent. In its evidence, SGS relies on a letter from Richard Nicholson (“Managing Director” of J&W Nicholson & Co. Ltd.) to SGS dated April 30, 1982, which is alleged to constitute the assignment of “unqualified right to reproduce and use Nicholson’s Gin brands.” The actual letter is in evidence and on its face it does not constitute an assignment of rights or title. Complaint has also provided evidence in the form of a letter from the same Mr. Nicholson stating that “No trademark nor brand rights were sold” to SGS at the time in question.
In all the circumstances, the Panel is prepared to find that Respondent did not hold any rights or legitimate interests in the disputed domain names at the time of registration or subsequently.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In its evidence and submissions, Complainant provides a full copy of the UKIPO decision of December, 2014, and highlights a number of the findings in connection with the nature of Respondent’s conduct in appropriating and using the NICHOLSON trademarks. In particular, Complainant relies on the fact that Respondent was clearly aware of the existing reputation in the NICHOLSON marks when it first began using those marks in the mid-1980s, and subsequently in 2008 when it registered the disputed domain names. Complainant rightly points to the contents of Respondent’s associated website as compelling evidence that Respondent intended to deceive consumers into believing that there was a close connection or virtual merging of identities between the historic NICHOLSON brands and the SGS business. The following features of the SGS website are highlighted as proof of bad faith:
a. the signature “J & W Nicholson & Co Ltd” is used as the header for each webpage, being the same signature as used on the labels by the original J & W Nicholson & C Ltd and the same name in which Complainant owns goodwill;
b. images of bottles of gin that have labels which are substantially the same as those used by the original J & W Nicholson & Co Ltd and owned by Complainant as part of the Nicholson Gin Brand;
c. images of the original distillery owned by J & W Nicholson & Co Ltd;
d. the statement: “distilled London dry gin since 1736”;
e. the statement: “J & W Nicholson & Co Ltd distillers est. since 1736 London England”;
f. the statement: “The history of the House of Nicholson is inseparable from that of Britain. The horses of one of the Nicholson companies pulled the carriage at the funeral of the Duke of Wellington which he personally considered the finest Gin of the world”;
g. the statement: “Today the Nicholson crest – the lion and the crown – is recognised as a symbol of supreme quality the world over.
The Panel also notes the conclusory paragraphs in the UKIPO decision as follows:
“[46] …It is clear from the cross examination of Mr. Fitzpatrick [one of the directors of SGS] that he is trying to associate his company’s product with that of the predecessors in business of [Complainant’s predecessor in title].
[47] Mr. Fitzpatrick could have chosen any trademark but instead he clearly decided to refer on the label to the start of the London distillery in 1736, giving the impression that his company was connected to the original producer, even to the extent of registering its company name. The recipe might have been the same, it might have been made in the same stills but this does not given him the right to attempt to assimilate the history of the opponent’s predecessors in business. Such appropriation would be very useful to a relatively new business which appears to have no history in the UK gin trade.
[48] …I have no doubt that reasonable and experienced men in the UK gin trade would consider that the filing of applications 2441805 & 2427924 [the UK Bad Faith Trade Marks] fell short of the standards of acceptable commercial behaviour. The invalidity application under section 3(6) [on the basis that the trade marks had been applied for in bad faith] succeeds against both marks.”
(emphasis added)
Respondent’s conduct in acquiring the disputed domain names in 2008 can fairly be characterized in the same way, particularly in light of the manner in which the disputed domain name has actually been used by Respondent in the years from 2008 to the present. The fact that disputed domain name appears never to have been used does not preclude a finding of bad faith in relation to this disputed domain name. No credible evidence to the contrary has been provided by Respondent in this proceeding.
Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, and , be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Date: November 2, 2016
1 The Panel notes that this trademark was cancelled based on revocation on January 11, 2016.
2 The Panel notes that the trademark registration No. 2441804 referred to the trademark LAMPLIGHTER.
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