DRS Decision 1202

.nz Dispute Resolution Service DRS Reference: 1202

Salamander Enterprises Ltd, Blair Salter v Michael Sables

Key words

Domain name

furniturebydesign.co.nz

Identical or similar trade mark or name

Registered mark - unregistered mark - identical - generic - descriptive

Rights

Demonstrable preparations to use - legitimate non-commercial or fair use - generic - descriptive

Unfair registration

Unfair registration - unfair use - fair use - likely to confuse, mislead or deceive -unfairly disrupting the business of the complainant - used the Domain Name or a similar Domain Name in connection with genuine offering of goods or services - commonly known by a mark similar to the Domain Name

1. Parties

Complainant:

Blair Salter
Salamander Enterprises Ltd
416 Maidstone Terrace
Upper Hutt
New Zealand

Respondent:

Michael Sables
9 Maldon Court
Auckland
NZ (NEW ZEALAND)

Represented by: ByDezign Furniture (ByDezign NZ Ltd)

2. Domain Name/s

furniturebydesign.co.nz

3 Procedural history

3.1 The Complaint was lodged on 21 November 2016 and Domain Name Commission (DNC), notified the Respondent of the validated Complaint on 22 November 2016. The domain was locked on 21 November 2016, preventing any changes to the record until the conclusion of these proceedings.

3.2 The Respondent filed a Response to the Complaint on 06 December 2016 and the DNC so informed the Complainant on 14 December 2016. The Complainant did not file a reply. The DNC informed the parties on 16 February that informal mediation had failed to achieve a resolution to the dispute.

3.3 The Complainant paid Domain Name Commission Limited the appropriate fee on 21 February 2017 for a decision of an Expert, pursuant to Paragraph 9 of the .nz Dispute Resolution Service Policy ("the Policy").

3.4 Sheana Wheeldon, the undersigned, ("the Expert") confirmed to the DNC on 02 March 2017 that she knew of no reason why she could not properly accept the invitation to act as expert in this case and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.

4 Factual background

The Complainant's rights

4.1 The Complainant is Mr Blair Salter. His organisation is Salamander Enterprises Ltd ("Salamander"). The distinction is important because Mr Salter personally is the owner of a trade mark registration on which he relies.

4.2 The Complainant's company, Salamander, is a furniture wholesaler which supplies retailers around New Zealand. It has two websites:

a) www.salamander.co.nz (which the Complainant describes as "Business to Business" and meant only for trade customers).

b) www.furniturebydesign.co.nz (which the Complainant describes as "Business to Consumer".)

4.3 According to the Complaint, Salamander deals with Business to Business and has been doing so for 30 years.

4.4 More recently the Complainant, (or more accurately, the Salamander business) has set up what he describes as "Furniture by Design", "to communicate our products better to consumers through the web and social media, and in retail stores throughout New Zealand.… [Furniture by Design] is meant for marketing purposes only. It is for informing consumers about our products and for pushing consumers into the retail stores/websites that stock our product."

4.5 The Complaint states that "we" have been working on Furniture by Design for nearly two years "behind the scenes", and in the past two months (presumably from around 17 September 2016 to the date of the Complaint, 17 November 2016) "we" have publicly launched the Furniture by Design website.

4.6 Two screenshots of the website were filed with the Complaint, and the Expert has viewed the website. At the top of the homepage the letters "FbD." in large font are dominant, and those letters also appear elsewhere in windows on the homepage which can be clicked on. The only reference on the homepage to the words "FURNITURE BY DESIGN" is a very small one at the bottom of the homepage, in a note which also includes in much bigger type the abbreviation "FbD." and the words "powered by Salamander Importers & Wholesalers" which are also relatively small.

4.7 The Complainant owns trade mark registration no. 1019258 which covers the word trade mark Furniture by Design in class 20 in respect of "Bedroom furniture; chairs being furniture; furniture". This registration dates from 12 May 2015.

4.8 The Complainant registered the domain furniturebydesign.nz in May 2015. According to the Complaint, at that time there were other variants of the domain available but he saw no need to acquire any of those, thinking he had "the best one" and "why would anyone buy another .nz version of a name I have trademarked in NZ?"

4.9 On 8 November 2016 the Complainant, after a discussion within his office about customers potentially typing ".co.nz" by mistake, decided "we" should probably register the ".co.nz" domain and redirect it to their webpage. On attempting to do so he discovered the Respondent had already registered furniturebydesign.co.nz.

The Respondent's activities

4.10 The Respondent is Mr Michael Sables. His business is ByDezign Furniture which appears to be the trading style of the company ByDezign NZ Ltd.

4.11 According to the Response, ByDezign Furniture is a family business owned by Mr Sables' father, Paul Sables, for more than ten years. An earlier iteration of the family business, Timeless Ltd, was selling furniture from 1996 onward.

4.12 Mr Sables says in his Response that his company has been well known to the Complainant for years. Specifically he says there have previously been dealings between his company and Salamander, and members of the Sables and Salter families have had personal contact over the years through the furniture business.

4.13 The Response states that Salamander is in direct competition with ByDezign Furniture and refers to the fact that a current sales representative of Salamander, Derek Lynch, was at one time a sales representative in the lower North Island for ByDezign Furniture. The Respondent has provided a screenshot showing an archived version of ByDezign Furniture's website's contact page, where Mr Lynch is indeed listed as the contact for Wellington.

4.14 The Respondent and his father have acquired a number of domains they consider pertain to ByDezign Furniture, and that are variations on its trading name. Some of these predate the Complainant's registration of furniturebydesign.nz. The reasons these have been acquired are said to be for brand protection, to avoid confusion, and because of the workings and business practices of Google. These cause a problem to ByDezign Furniture because its name includes an intentional incorrect spelling of the word "Design".

4.15 The domains acquired for ByDezign Furniture and listed in the Response include the following, which appear to have been registered before Mr Salter registered furniturebydesign.nz:

Bydezign.co.nz
Bydezignfurniture.co.nz
Bydesignfurniture.co.nz

4.16 The Respondent registered furniturebydesign.co.nz ("Domain") on 10 October 2016. This was the same day that, according to the Complaint, Mr Lynch of Salamander visited the Respondent and his father at ByDezign Furniture and informed them about Salamander's new "B2C webpage".

4.17 For completeness the Expert notes that the Respondent also registered the domain furniturebydezign.co.nz, on 8 November 2016.

4.18 All the above domains re-direct to the primary domain of ByDezign Furniture, bydezignfurniture.co.nz, with the exception of bydezign.co.nz due to an issue of penalties from Google.

4.19 The Respondent has also attempted to acquire the domain bydesign.co.nz, however this is already owned by another party.

4.20 The Respondent considers that "Furniture by Design" and "By Dezign Furniture" are variations of the same name. He believes the Complainant, in choosing the name "Furniture by Design" was either negligent, or disregarded the fact that the name would conflict with that of ByDezign Furniture. He goes on to suggest the Complainant's purpose may have been to cause confusion and potentially gain business from the established goodwill of ByDezign Furniture. In this regard the Response gives an account of one possible source of customer confusion, relating to Southern Hospitality.

4.21 Southern Hospitality is a customer of ByDezign Furniture. It is a major industry player. Historically Southern Hospitality has used the letters "FbD" as their in-house code for ByDezign Furniture. The Respondent provided a link to the website of Southern Hospitality which shows the letters "FbD" alongside an image of a chair which has presumably been supplied by ByDezign Furniture. These of course are the letters now being used prominently by Salamander to refer to its "Furniture by Design" sub- business.

4.22 The Response goes on to note that Southern Hospitality has now shortened ByDezign Furniture's acronym to "FB", but he anticipates that emails and orders will continue to use the code "FbD". If Southern Hospitality takes on Salamander/Furniture by Design as a supplier, the Respondent anticipates that this will create a huge amount of confusion for their sales representatives and people on the floor. He says the Complainant stands to gain customers by capitalising on this confusion within Southern Hospitality.

4.23 The Respondent states that the ByDezign Furniture business has extremely strong brand recognition within its industry, that the goods and services of ByDezign Furniture are almost identical to those of Salamander (that is, residential and commercial furniture), and their trade channels are also almost identical.

Communications between the parties

4.24 The Complainant states that he has emailed the Respondent and his father "about them registering the domain by my brand name (sic)". He gives no dates for this correspondence. He says, "They will not transfer the domain to me as they think I am a threat to their website; yet they have a totally different company name and website: By Dezign NZ. Website: www.bydezignfurniture.co.nz."

4.25 This account is consistent with the Response, which confirms that the Respondent considers Salamander's adoption and use of the name "Furniture by Design" will cause confusion with ByDezign Furniture.

5 Parties' contentions

Complainant

5.1 The Complainant seeks to have the Domain Name transferred to him from the Respondent. The Complaint itself is somewhat lacking in detail.

5.2 As mentioned above the Complainant owns a trade mark registration covering the phrase "Furniture by Design". While it is not spelt out in the Complaint, the Complainant seems clearly to be relying on his registered trade mark rights.

5.3 The Complaint does not refer to unregistered trade mark rights. Nor does it contain any information at all on the activities of the Complainant and/or Salamander with reference to "Furniture by Design" other than what is set out above.

5.4 The Complaint does not refer specifically to any of the provisions of the Policy. It does assert that "the Domain Name, in the hands of the Respondent, is an Unfair Registration", so invoking paragraph 4.1.1.

5.5 The Complaint goes on to assert that the Complainant obtained his trade mark registration of "Furniture by Design" "to make sure we were not using a brand name that was already in use by another company and to protect ourselves against people like [the Respondent] who is trying to take advantage by piggybacking off our brand name when potential customers type the domain name .co.nz."

5.6 He asserts it is unfair for ByDezign Furniture "to use my brand and link it to their website".

5.7 These assertions could be interpreted as references to:

a The Domain having been registered and/or used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's prior rights (limbs (i) and (ii) of the definition of Unfair Registration).

b The Domain having been registered primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 5.1.1(c) of the Policy).

c The Respondent using the Domain Name in a way which is likely to confuse, mislead or deceive people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant (paragraph 5.1.2 of the Policy).

Respondent

5.8 As mentioned earlier, the Respondent states that his registration of the Domain is merely to protect the brand awareness and goodwill of ByDezign Furniture.

5.9 The Respondent rejects the Complainant's assertion that he is trying to take advantage by piggybacking off its brand name. He asserts that the Complainant has little or no brand awareness, and has built little or no goodwill.

5.10 The Response also states that as at 23 November 2016 the website that had been publicly launched under the Domain "is all but a redirect to [Salamander's] B2B site salamander.co.nz." The Respondent provided a link to a YouTube clip demonstrating that that was the situation on that date. While the site appears to redirect to salamander.co.nz, the contents on the screen include the various references to "FbD." noted earlier.

5.11 The Respondent takes this as indicating that the Complainant is attempting to capitalise on the goodwill of ByDezign Furniture, rather than vice versa.

5.12 The Respondent also asserts that the phrase "bydesign" or "by design" is generic. He says the Complainant is attempting to lay claim to a generic term, which describes what many traders within the furniture industry do - that is, "make furniture by design."

5.13 He further asserts that it is unethical to allow a single company to claim rights to a generic term.

5.14 Referring to the Policy itself, the Respondent points to paragraph 6.1, and specifically to the factor set out in paragraph 6.1.1 (b) as potential evidence that a Domain Name is not an Unfair Registration. This factor reads, "before being aware of the Complainant's cause for complaint… the Respondent has been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name."

5.15 The Complainant has filed no reply.

6 Discussion and findings

Relevant Provisions of the Policy

6.1 The Complainant is required to prove that it has met the requirements in paragraph 4 of the Policy namely that:

    6.1.1 The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

    6.1.2 The Domain Name, in the hands of the Respondent, is an Unfair Registration.

6.2 Paragraph 4.2 requires the Complainant to prove to the Expert that both elements are present on the balance of probabilities.

6.3 The expression 'Rights' is defined in paragraph 3 of the Policy. That definition goes on to state:

    However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.

6.4 The Policy provides that 'Unfair Registration' means a Domain Name which either:

a was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or

b has been, or is likely to be, used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

6.5 Paragraph 5.1 of the Policy sets out a series of non-exhaustive factors which may be evidence that a Domain Name is an Unfair Registration. They include the following that, as noted earlier, may be relevant here:

    5.1.1 Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

    a. ...

    b ...

    c. for the purpose of unfairly disrupting the business of the Complainant; or

    5.1.2 Circumstances demonstrating that the Respondent is using the Domain Name in a way which is likely to confuse, mislead or deceive people or businesses into believing that the Domain name is registered to, operated or authorised by, or otherwise connected with the Complainant;

6.6 Paragraph 6.1 of the Policy sets out a series of non-exhaustive factors which may be evidence that the Domain Name is not an Unfair Registration. They include the following:

    6.1.1 Before being aware of the Complainant's cause for Complaint (not necessarily the Complaint itself), the Respondent has:

    a used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

    b been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;

    c made legitimate non-commercial or fair use of the Domain Name; or

    6.1.2 The Domain Name is generic or descriptive and the Respondent is making fair use of it in a way which is consistent with its generic or descriptive character.

Application of the Policy in this case

6.7 The first question is whether the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name. Rights must be enforceable under New Zealand law and may be registered or unregistered.

Complainant's rights

6.8 The Complainant asserts registered rights in "Furniture by Design".

6.9 As a preliminary point, the Expert notes that in both the Complaint and the Response there is considerable blurring between the rights and activities of, on the one hand, the Complainant and Salamander and, on the other hand, the Respondent and ByDezign Furniture.

6.10 It is clear that both the Complainant and the Respondent are closely and actively involved in their respective businesses, and that it is the Salamander business that has adopted and been using "Furniture by Design".

6.11 However, the Complainant's trade mark registration is in his name personally, and the registration of the Domain is in the Respondent's name personally.

6.12 Therefore for present purposes the Expert accepts that the Complainant himself owns the rights he is relying on, and the blurring of the lines between the individuals and their businesses has no real impact.

6.13 Since the Domain is furniturebydesign.co.nz the Expert inevitably finds that it is effectively identical to the Complainant's registered trade mark.

Complainant's registered trade mark rights

6.14 The Complainant's trade mark registration covers the phrase "Furniture by Design".

6.15 "Furniture by Design" is a relatively non-distinctive term in the furniture area. The Respondent has asserted that it is generic.

6.16 Were it not for the fact of this trade mark registration the Expert would have given close consideration to whether "Furniture by Design" is wholly descriptive. In that case it may have fallen foul of paragraph 3 of the Policy, or allowed the Respondent to invoke paragraph 6.1.2 of the Policy.

6.17 However since a wholly descriptive sign is not registrable, the Expert concludes that the Intellectual Property Office of New Zealand must have considered "Furniture by Design" was sufficiently distinctive to qualify for registration. This rules out a finding in this context that it is wholly descriptive.

Does the Complainant have unregistered rights in "Furniture by Design"?

6.18 The Complainant has not overtly asserted unregistered rights in "Furniture by Design". There is in any event virtually no evidence to support such an assertion.

6.19 The Domain was registered on 10 October 2016, by which time Salamander's new "Furniture by Design" website could have been live for only a few weeks. The Expert considers there is virtually no possibility that unregistered trade mark rights could have come into existence during that short period.

6.20 Therefore there is no basis for a finding that the Complainant has unregistered trade mark rights.

Is the Domain Name in the hands of the Respondent, an Unfair Registration?

6.21 As most of the facts and evidence on this question originate with the Respondent, and relate to his business ByDezign Furniture and his stated purpose in registering the Domain, the Expert will deal first with that evidence and the Respondent's contentions.

Factors evidencing not an Unfair Registration

6.22 The Respondent, and/or his business, appear to have their own common law rights in the name ByDezign Furniture. He and his father have a history of registering as domains, names that are variants of the name ByDezign Furniture. These include, before the Domain was registered, bydezign.co.nz.

6.23 The Respondent has been using the Domain to redirect to the website of ByDezign Furniture, at bydezignfurniture.co.nz.

6.24 The Respondent believes the Domain is almost identical to the name ByDezign Furniture, and that Salamander's use of "Furniture by Design" will cause confusion and diversion of business.

6.25 It is clear from the Response that the Respondent's purpose in registering the Domain was to limit the potential for such confusion, and for any associated damage to the ByDezign Furniture business, which he believes Salamander and its use of the Domain will cause.

6.26 The factors listed in paragraph 6.1 of the Policy are not exhaustive. In the Expert's view the above circumstances, which existed before the Respondent became aware of the Complainant's cause for complaint, are evidence that the Domain Name is not an Unfair Registration.

6.27 The activities of the Respondent and his business also potentially fall within two factors which are listed in paragraph 6.1.1 of the Policy as evidence that the Domain Name is not an Unfair Registration.

6.28 First, under paragraph 6.1.1 (b) of the Policy, where before becoming aware of the Complainant's cause for complaint, a Respondent has been legitimately connected with a mark which is similar to the Domain Name, this may be evidence that it is not an Unfair Registration. The Response itself makes reference to this factor.

6.29 In the present case the Expert finds that "furniturebydesign" is similar to the trading name ByDezign Furniture and to "bydezignfurniture", the name of the main website of ByDezign Furniture. The Respondent has been legitimately connected with both of these for some years.

6.30 Second, under paragraph 6.1.1 (a) of the Policy, where before becoming aware of the Complainant's cause for complaint, a Respondent has used the Domain Name or a similar Domain Name in connection with a genuine offering of goods or services, this too may be evidence that it is not an Unfair Registration.

6.31 In the present case the Respondent has, before becoming aware of the Complainant's cause for complaint, used the domain names bydezignfurniture.co.nz and bydesignfurniture.co.nz (which redirects to bydezignfurniture.co.nz) in connection with ByDezign Furniture's furniture business. Clearly this is a genuine offering of goods. Consistent with the finding above, bydezignfurniture.co.nz (and bydesignfurniture.co.nz) are similar to the Domain, which is furniturebydesign.co.nz.

6.32 Further, the Respondent has also, before becoming aware of the Complainant's cause for complaint, used the Domain itself by redirecting it to the website of ByDezign Furniture. This amounts to use of the Domain in connection with a genuine offering of goods. Importantly, the Respondent has done this for the commercial reasons set out earlier.

6.33 The Expert finds that the registration and use of the Domain by the Respondent and his business also comes within the above factors evidencing that the Domain is not an Unfair Registration.

Evidence of Unfair Registration

6.34 As mentioned earlier, the Complaint is not clear as to which provisions of the Policy the Complainant relies on in asserting that the Domain Name, in the hands of the Respondent, is an Unfair Registration. The potentially relevant provisions identified by the Expert and set out above are:

a The Domain having been registered and/or used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's prior rights (limbs (i) and (ii) of the definition of Unfair Registration).

b The Domain having been registered primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 5.1.1(c) of the Policy).

c The Respondent using the Domain Name in a way which is likely to confuse, mislead or deceive people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant (paragraph 5.1.2 of the Policy).

6.35 There is no evidence that any of these scenarios exists.

6.36 To the extent that people or businesses may believe the Domain is connected with the Complainant (or more likely, with Salamander) that would be because furniturebydesign.co.nz is almost identical to furniturebydesign.nz. However, this scenario has arisen because the Complainant/Salamander have chosen the trade mark "Furniture by Design" which in turn is very similar to the name used by the Respondent's business, "ByDezign Furniture". The Respondent has genuine concerns about potential confusion between those names.

6.37 There is convincing evidence that the Domain is not an Unfair Registration, and virtually no evidence that it is an Unfair Registration.

6.38 The Expert therefore finds that the Complainant has not proved that the Domain Name in the hands of the Respondent is an Unfair Registration.

7 Decision

7.1 In view of the findings made above the Expert directs that the Domain Name furniturebydesign.co.nz remain with the Respondent. The Complaint is dismissed.

Place of decision: Auckland

Date: 17 March 2017

Expert Name: Sheana Wheeldon

Signature: