500
Nominet UK Dispute Resolution Service
DRS 00500
Future Labs Ltd -v- Stephen Towse
Decision of Independent Expert
Complainant: | Future Labs Ltd |
Country: | GB |
Respondent: | Stephen Towse |
Country: | GB |
Computabits.co.uk ("the Domain Name")
The complaint was lodged on the 17 July 2002 and received in full by Nominet on the 17 July 2002. On the 18 July 2002 Nominet validated and notified the Respondent of the complaint stating that a response was due within 15 working days.
On the 6 August 2002 Nominet received the response from the Respondent which was forwarded to the Complainant on the 7 August 2002. The Complainant submitted a reply on the 12 August 2002 and this was forwarded to the Respondent on the 13 August 2002.
Also on the 13 August 2002 Nominet informed the parties that the dispute was entering the informal mediation stage. On the 27 August 2002 Nominet confirmed that mediation had been unsuccessful and a proforma invoice for the referral of the dispute was issued and sent to the Complainant and a copy was forwarded to the Respondent. Nominet received the fee for an Expert's decision pursuant to paragraph 8 of the Nominet UK Dispute Resolution Service Procedure (the "Procedure") and a letter of approval to forward the case to the independent expert from the Complainant on the 5 August 2002 in advance of the mediation proceedings. On the 27 August 2002, Nominet forwarded a copy of the letter and of the cheque in respect of the fees for an independent expert received from the Complainant, to the Respondent.
On the 28 August 2002, Richard Kemp, 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. The appointment date for the Expert is 3 September 2002 and the deadline for the decision is set at 17 September 2002.
There are no outstanding formal or procedural issues.
The Complainant is a company incorporated under the laws of England and Wales. On 7 October 2000, a UK registration for the trade mark "COMPUTABITS" was issued in the name of Future Labs Ltd in classes 9, 37, 38 and 42. A copy of the registration certificate for registration No. 2248107 is annexed to the complaint (as Annex E). Future Lab Ltd operates a website at www.computabits.com. The registered UK company Computabits Ltd is owned by Michael Casey, director of Future Lab Ltd, company registration number 3802815. A copy of the certificate of incorporation of Computabits Limited dated 8th July 1999 is annexed to the complaint (Annex F).
The Complainant filed a complaint to Nominet in respect of the Domain Name on 4 October 2000 and informed Nominet of Future Labs Ltd intention to register the mark "COMPUTATBITS". Both Computabits Ltd and www.computabits.com were in existence at the time of the initial complaint. On the 16 November 2000 Nominet reached a decision not to take any action but did note that if Mr Towse or any future registrant were to use the Domain Name in the future in a manner likely to cause confusion to internet users, Nominet reserved the right to review its decision.
On 12 October 1999 the Respondent registered the domain name computabits.co.uk. A Nominet WHOIS search confirms that the registration was made via the service provider EXPLOIT.
The Complainant's contentions are summarised as follows:-
The Respondent's response is summarised as follows:-
Under paragraph 2 of the Nominet UK Dispute Resolution Service Policy (the "Policy") the Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts that:-
"Rights" and "Abusive Registration" are defined in paragraph 1 of the Policy.
The Complainant does make these assertions in the Complaint. The Expert therefore finds that the Respondent must submit to these proceedings.
Burden of ProofThe Complainant must prove both elements (i) and (ii) above on the balance of probabilities to succeed in its complaint.
Complainant's Rights"Rights", for the purposes of the Policy, "includes, but is not limited to, rights enforceable under English law". The Policy also provides that "a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".
When assessing whether the Complainant has Rights in an identical or similar name to the Domain Name, the first and second level suffixes of the Domain Name, being generic should be discounted. The questions are therefore (a) whether the Complainant has Rights in the name "Computabits", and (b) if so, whether the Complainant can rely on such Rights in these proceedings.
The Complainant:From the computabits.com website, the business of the Complainants is described as selling computer products to business clients. It follows that the Expert finds that 'computabits' is not wholly descriptive of the Complainant's business.
The Expert finds on the balance of probabilities the Complainant has Rights in a name identical to the Domain Name (discounting the first and second level suffixes), which may be relied upon in these proceedings.
Abusive RegistrationAn "Abusive Registration", for the purposes of this Policy, is "a Domain Name which either:-
The Policy provides non-exhaustive lists of factors which may be evidence that a domain name is an Abusive Registration (at paragraph 3 of the Policy) and factors which may be evidence that the Domain Name is not an Abusive Registration (at paragraph 4).
Paragraph 3(a)(ii) of the Policy sets out one of the non-exhaustive list of factors pointing towards an Abusive Registration as "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".
Paragraphs 4(a)(i) and (ii) set out on the list of non-exhaustive factors pointing away from an Abusive Registration factors including the following:
The Expert finds as follows:-
The Expert finds that on the balance of probabilities the Complainant has Rights in a name which is identical to the Domain Name and that the Domain Name , in the hands of the Respondent, is an Abusive Registration. The Expert therefore grants the Complainant's requested remedy of transfer, and directs that the Domain Name be transferred to the Complainant.
Richard Kemp
Date: 17 September 2002