172
Nominet UK Dispute Resolution Service
DRS 0172
Merlinroute Limited -v- Simon Oliver
Decision of Independent Expert
Complainant: | Merlinroute Limited |
Country: | GB |
Respondent: | Simon Oliver |
Country: | GB |
Lorientrust.co.uk ("the Domain Name")
The Complaint was lodged with Nominet on 20th December 2001. Nominet validated the Complaint and notified the Respondent of the Complaint on 9th January 2002 and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent responded on 9th January 2002 and a copy of the response was forwarded to the Complainant on 10th January 2002 with an invitation to the Complainant to make any further submission in reply to the Response by 17th January 2002. The Complainant replied to the Response on 14th January 2002 and a copy of this was sent to the Respondent on 16th January 2002.
The dispute was not resolved by mediation and was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
David Flint, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
None
Complainant
Respondent
Complainant:
The substance of the Complaint is short and reads as follows:
"The Domain Name in dispute is identical or similar to a name or mark in which the Complainant has Rights.
The Domain Name in the hands of the Respondent is an Abusive Registration."
Respondent:
The substance of the Response is short and reads as follows:
"As a guarantor of the original Lorien Trust charitable trust I feel I have as much right as anyone to that suffix [org.uk], under section 4.b.ii of [the] policy, which is, after all, the only use to which I have put the site so far.
I will happily put a prominent disclaimer and hyperlink on the page to redirect people to the Merlinroute site, as an assurance that no-one will mistake the site for an official one."
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 trade mark rights in the name Lorien trust. The Domain name comprises the name Lorien Trust and the suffix (.org.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 to the Domain Name.
Abusive Registration
This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" as:-
"a Domain Name which either:
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 subparagraphs i and ii, which read as follows:
The Expert interprets "as" in sub-paragraph i. B as being synonymous with "for the purpose of". Were it to be interpreted otherwise all domain name registrations would inevitably constitute "blocking registrations" for any later arrival wishing to use the name in question.
The Complainant asserts:
"When the Lorien Trust attempted to register the domain [name] that [is] under dispute it was found that [it was] already registered."
On the Expert's interpretation of the relevant sub-paragraph (see above), this submission of the Complainant is not good enough. It does not follow that, because the Domain Name is in fact blocking the Complainant from doing what it wants to do, the Respondent registered the Domain Name to achieve that purpose.
However the Complainant had its staff make further enquiries which disclosed as follows:
"I asked a member of my staff to contact the respondent by email, enquiring why he had registered these names. The respondent replied "just those two - call it an investment, as I would like to become a web site developer, I thought I might be able to persuade the LT to let me join the design team if I owned the most appropriate domains. Has it worked?" to which we responded "No". This demonstrates the respondent acquired the domain name[.] under dispute with the intention of transferring or allowing the Lorien Trust to use [it] for consideration in the form of a job to further his career."
The Respondent stated:
"I did not make any attempt to gain materially or otherwise from my ownership of the site except for a flippant reply to a question from Stuart Maher. At the time I knew perfectly well that I would never be asked to participate in the web site design as the complainant has, in the past, made sure that my participation in the company as a volunteer member of staff came to an abrupt end, and it is therefore highly unlikely to be resumed. If the whole of that conversation had been reported, it would include the fact that I said I had another use for the site, and that this use was "nothing bad"."
In an e-mail to Nominet of 4th February 2002, the Respondent stated:
"My reply to Stu Maher was facetious in intent and tone, and not the truth which I was attempting to hide from Merlinroute. The truth is that I want to use the domain as a pressure group aimed at maintaining the original intent of the Lorien Trust (Limited by Guarantee, of which I was a guarantor) to be answerable to the players. This is clearly within the allowed uses for a domain registration, under section 4(b) and not abusive."
This e-mail was sent to Nominet at 18:27 on the 4th February 2002, the final day of the period for Informal Mediation under the Policy. No similar suggestion had been made prior to this time and, indeed, the statement is in direct contradiction of the statement made by the Respondent in his Response of 9th January 2002.
The expert does not consider that the fact that an argument was not advanced in a Response but at a later stage in the Proceedings to be fatal to its introduction but the fact that the evidence sought to be introduced by a Party is materially different to previous evidence must be a factor requiring to be taken into account. If the Dispute Resolution System is to be effective, given its relatively short time scale, it is imperative that both parties make full and accurate disclosure of their position at an early stage.
The Complainant makes the following further submissions/allegations:
Having regard to the background of the parties, including their involvement in the original Lorien Trust Limited (Limited by Guarantee) and the trading activities between the Respondent and the Complainant, the Expert finds the test of paragraph 3 a.i.C to be met.
The Domain Name comprises in essence a distinctive made up name. It is identical to the Complainant's trading name. Some time prior to the making of the registration the Respondent was working for the Complainant as a volunteer. The Complainant did not ask the Respondent to register the Domain Name and did not give the Respondent permission to register the Domain Name. In the hands of the Respondent the Domain Name constitutes a threat hanging over the head of the Complainant. While it is not impossible to think of uses to which the Domain Name may be put, which could cause little or no damage to the Complainant, there are many obvious and potentially damaging uses to which the Domain Name could be put. The circumstances surrounding this registration understandably give the Complainant no comfort.
In the view of the Expert the Respondent clearly has a case to answer on the basis that in registering the Domain Name the Respondent took unfair advantage of the Complainant's rights.
It is here that paragraph 4 of the Policy has a part to play. Paragraph 4 of the Policy is headed "How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration". The onus is ordinarily upon the Complainant to prove what needs to be proved (for the exception see paragraph 4b), but where the Expert has found that the Complainant has made out a prima facie case and that the Respondent has a case to answer, the Respondent must have an answer. Here there is no answer. In other cases it may be that the circumstances will be such that the Expert will feel able to suggest a reasonable answer, but that is not this case.
As the Respondent makes much of the fact that he was the Guarantor of a previous business trading under the name "Lorien Trust", the Expert has considered this point. The original company traded from 1991 to 1995 when it was wound up. At that point the Complainant commenced a business under the name "Lorien Trust". From the WHOIS record produced to the Expert, it appears that the Domain Name was not registered until 28 September 2001. No evidence has been produced by the Respondent to indicate why he suddenly became concerned with his "rights" in the Domain Name some 6 years after the demise of the Guarantee Company.
The Expert considers that, in appropriate circumstances, the fact that a person were a guarantor of a business could of itself give that person the necessary rights to deflect a challenge under the Policy. However, such a guarantee obligation would require to be real and substantial having regard to the business being guaranteed. A £1 guarantee to an organisation such as the original Lorien Trust Limited by Guarantee is not such an obligation and does not, in the opinion of this Expert, provide its granter with any rights in the name of the business.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant's rights.
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 Name and that the Domain name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, lorientrust.org.uk, be transferred to the Complainant.
David Flint
Date: 3 March 2002