Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2002/159.html
Cite as: [2002] DRS 00159, [2002] DRS 159

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DRS 00159

Newsquest London Limited v Ephi Raymond

Decision of Independent Expert

Parties:

Complainant: Newsquest London Limited

Country: UK

Respondent: Mr Ephi Raymond

Address:
Removed at the request of the Respondent with permission of the Expert
Domain Names:
hendontimes.co.uk; thehendontimes.co.uk ("the Domain Names")
Procedural Background:
The Complaint was lodged with Nominet on December 13, 2001. Nominet validated the Complaint and notified the Respondent of the Complaint on December 17, 2001 and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent provided a non standard Response on December 19, 2001 which was communicated to the Complainant the same day. Complainant's Reply was received on December 21, 2001. Mediation not succeeding, on January 7, 2001 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Dawn Osborne, the undersigned, ("the Expert") confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed 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.
The Facts:
The Complainant is the owner of the newspaper The Hendon Times which has been established for 125 years.

On November 12, 1999 the Respondent registered the Domain Names.
The Parties' Contentions:
Complainant:

The substance of the Complaint is as follows:
1. The Complainant owns a newspaper called The Hendon Times which has been established for 125 years.
2. The Respondent's domain name registrations for hendontimes.co.uk and thehendontimes.co.uk were registered on November 12, 1999.
3. The Respondent's domain name registration is identical to the Complainant's trade mark. The Respondent's domain name registration is an abusive registration.
4. The Respondent agreed with former management of the Complainant to return hendontimes.co.uk to the Complainant provided no solicitors were involved. E mails and correspondence dated May 2000 exhibited by the Complainant evidence this. At this time the Complainant was not aware of the Respondent's ownership of thehendontimes.co.uk. The hendontimes.co.uk name was pointed to the Complainant's web site, but formal transfer was not completed. When the new management of the Complainant approached the Respondent about the names, it was agreed that the hendontimes.co.uk name would be transferred for a £200 donation to a charity of the Respondent's choice. Correspondence has been provided by the Complainant to prove this. The Respondent did not tell the new management of the Complainant about the agreement with the previous management. A little while later the Respondent requested a free banner as for his adult site instead of the charitable donation, but this was not acceptable to the Complainant. The Complainant then found out that the Respondent had previously agreed to transfer hendontimes.co.uk to the previous management of the Complainant. It expressed dissatisfaction, but continued to be prepared to make the charitable donation for transfer.
5. The Respondent delayed in transferring hendontimes.co.uk to the Complainant, insisting that the charitable donation be made before transfer. The Complainant indicated that it would make the charitable donation after the name was transferred. The Respondent then indicated it would not transfer the name and had it pointed away from the Complainant's web site to an Internet business the Respondent has an interest in called Cyber 2000 Limited. Until this point the Respondent had made no use of the name.
Respondent:

The substance of the Response is as follows:
1. The Respondent was setting up a charitable organisation for the community in Hendon to show the changing of times in Hendon. It would provide information on "entertainment, grants, schools and colleges, health and medical, help the homeless, marital aids etc."
2. It was a mistake that the hendontimes.co.uk was pointed to the Complainant's web site and this was done without the Respondent's authority.
3. The dates on the 2000 e mails were a mistake due to software the Respondent was using, they should read 2001.
4. The hendontimes.co.uk name was not transferred due to failure by Nominet to send the transfer forms and family crises experienced by the Respondent.
5. The Respondent never said he would not transfer the Domain Names, but due to offence taken at correspondence from the Complainant, he will not do so before the £200 charitable donation is made and he receives a letter of apology.
6. The Respondent never registered the Domain Names to sell them or make a profit and has not "broken" any trade mark or copyright laws.
Complainant:

The substance of the Reply is as follows:
1. The allegation by the Respondent that the Respondent's software was incorrectly set to 2000 instead of 2001 does not explain the contemporaneous e mails and correspondence from Newsquest also dated 2000.
2. The domain name could not have been pointed to the Complainant's site in error and the Respondent must have consented to this at the time of his first agreement with the previous management of the Complainant.
3. The delay in transfer was 20 weeks, too long to be explained away as family crises.
4. Since the hendontimes.co.uk was pointed away from the Complainant's web site to the Cyber 2000 Limited site before the Complainant's letter re its discovery about the agreement between the Respondent and the previous management was received by the Respondent, the Respondent's allegation that the pointing away was done due to offence at the Complainant's letter is not true.
5. The Complainant only found out about the other domain name registered by the Respondent thehendontimes.co.uk very recently. This was registered on the same date as the hendontimes.co.uk registration, November 12, 1999 and the nature of this domain name shows that the Respondent was targeting the Complainant all along.
6. The Respondent sent an e mail to the ISP Via Networks asking for the "removal of the domain name hendontimes.co.uk to his (Mr Raymond's server) until the occasion had arisen to 'sell' the name to the owners of hendon-times.co.uk (Newsquest)".
7. The offer of the charitable donation after transfer still stands, but the Complainant does not accept that it owes the Respondent an apology.
Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

In this case the first limb of that task is straightforward. The Complainant is the proprietor of goodwill in the unregistered trade mark THE HENDON TIMES. The Domain Names consist of the name or mark THE HENDON TIMES or HENDON TIMES and the suffix <.co.uk>. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic.

The Expert finds that the Complainant has rights in respect of a name or mark, which is identical or substantially identical to the Domain Names.

Abusive Registration

This leaves the second limb. Are the Domain Names, in the hands of the Respondent, Abusive Registrations? Paragraph 1 of the Policy defines "Abusive Registration" as:-

"a Domain Name which either:

i. 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
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant 'factors' in paragraph 3 are to be found in subparagraph i and ii, which read as follows:

i "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;"

ii "Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant."

The Expert is of the opinion that the Respondent's conduct and use of the Domain Names is indicative of relevant abusive conduct. The Domain Names are either identical or substantially identical to the name of the Complainant's longstanding newspaper. The Expert agrees that the choice of "thehendontimes.co.uk" indicates that the Respondent did indeed have the Complainant in mind when he registered the Domain Names and indicates that the names were registered to sell for profit to the Complainant, as blocking registrations or to be used to ride on the Complainant's goodwill, thereby disrupting the Complainant's business and taking undue advantage.

An e mail has been produced where the Respondent admitted to an ISP Via Networks that his intention was to sell the hendontimes.co.uk domain name to the Complainant. This confirms the Expert's conclusion that the Domain Names are Abusive Registrations.

There is no obvious reason why the Respondent might be said to have been justified in registering the Domain Names and he has produced no evidence to prove his alleged intention to use the names to point to a charitable site to show the changing times of Hendon. Indeed the Domain Names have both been pointed by the Respondent to Internet businesses which have no connection to the Complainant after allowing the hendontimes.co.uk name to be pointed to the Complainant's site for over a year and clearly creating a connection between that domain name and the Complainant's business. In so doing, the Respondent has clearly used the hendontimes.co.uk name to disrupt the Complainant's business and arguably to confuse Internet users into thinking that the Internet business sites are connected to the Complainant.

The Respondent appears to have agreed readily to transfer the domain name to the Complainant in 2000 as long as no solicitors were involved. The attempt by the Respondent to explain the date of relevant e mails as a software mistake does the Respondent no credit as this would not explain the dates of the contemporaneous accompanying e mails and correspondence from the Complainant which are also dated 2000.

In the view of the Expert in its registration and use of the Domain Names the Respondent took unfair advantage of the Complainant's rights.

Accordingly, the Expert finds that the Domain Names are Abusive Registrations within the definition of that term in paragraph 1 of the Policy.
Decision:
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations, the Expert directs that the Domain Names, hendontimes.co.uk and thehendontimes.co.uk be transferred to the Complainant.

*Complainant:*	*Newsquest London Limited*
*Country:*	UK

*Respondent:*	*Mr Ephi Raymond*
*Address:*	*Removed at the request of the Respondent* *with permission of the Expert*