159
Nominet UK Dispute Resolution Service
DRS 00159
Newsquest London Limited v Ephi Raymond
Decision of Independent Expert
Complainant: | Newsquest London Limited |
Country: | UK |
Respondent: | Mr Ephi Raymond |
Address: |
Removed at the request of the Respondent with permission of the Expert |
hendontimes.co.uk; thehendontimes.co.uk ("the Domain Names")
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 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.
Complainant:
The substance of the Complaint is as follows:
Respondent:
The substance of the Response is as follows:
Complainant:
The substance of the Reply is as follows:
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.
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.