Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2002/543.html
Cite as: [2002] DRS 543

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DRS 00543

Marc Nye Solicitor and Ian Lock t/a Legal Publishing Company

Decision of Independent Expert

Parties:
The Complainant is Marc Nye Solicitor.
Domain Names
The domain names in dispute are:
lawyer-mediator.co.uk

lawyermediator.co.uk

solicitor-mediator.co.uk

solicitormediator.co.uk

mediator.org.uk

(together the "Domain Names").
Procedural Background
A Complaint in respect of the Domain Names under Nominet UK's Dispute Resolution Service Policy (the "Policy") was received from the Complainant on 9 August 2002. Nominet forwarded the Complaint to the Respondent on 14 August 2002 both at his address on the register and also at his last known address and email address as provided to Nominet by the Complainant. The letter sent to him at his registered address was returned through the Post Office dead letter service. No response was otherwise received from the Respondent. On 9 September Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). The applicable fees were received from the Complainant on 17 September 2002. I was appointed as Independent Expert as of 24 September 2002 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
Formal/procedural issues
Paragraph 15b of the Procedure provides that if, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or Procedure, the Expert will proceed to a Decision on the Complaint. Nominet has taken the appropriate steps to serve the Complaint on the Respondent in accordance with the terms of the Procedure and I find that there are no exceptional circumstances. Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non-compliance with the Procedure as I consider appropriate.
The Facts
The Complainant is a solicitor in private practice and an accredited mediator. Two of the Domain Names, lawyer-mediator.co.uk and solicitor-mediator.co.uk resolve to a web page giving details of the Complainant and providing links to other web pages describing the services offered by the Complainant both in his capacity as a solicitor and as a mediator. All these web pages appear to be hosted by the legalpublishing.co.uk web site.

The other three Domain Names have been detagged, are no longer hosted on two valid name servers, and do not therefore resolve to any web page.

According to the Nominet WhoIs database, the Respondent (then trading as Legal Publishing UK) registered the Domain Name mediator.org.uk on 9 August 2000; the other four Domain Names had been registered by the Respondent (then trading as Legal Publishing UK) on 24 November 1999.
The Parties' Contentions

Complainant
1. Mr Nye explains that in or about November 1999 he entered into an agreement with the Respondent for the creation of a website and for the registration of the Domain Names which the Respondent agreed to host on his behalf. The websites were required in connection with Mr Nye's legal and mediation practice.
2. The agreed fee for registration for each of the website domain names was paid to The Legal Publishing Company.
3. At the same time it was agreed that the Respondent would also set up a website for the Complainant for a fee of £300.00. The Complainant supplied the text and the Respondent created links and obtained images. The website material is on the site www.lawyer-mediator.co.uk. The agreed fee of £352.50 inclusive of VAT for design of the website was paid. It was part of the agreement with the Respondent that he would include key words to facilitate location of the site by search engines. On 10th May the Respondent agreed that he would insert relevant meta-tags to facilitate this but no such meta-tags have been inserted.
4. On 18th March 2002 The Legal Publishing Company sent a fax to the Complainant saying that four of the websites had been removed from the register on that day. The Respondent was instructed immediately to retrieve those names. He submitted an invoice for £80.00 in respect of the fees of renewal of the names. The main site utilised by the Complainant is www.lawyer-mediator.co.uk and the Respondent was asked to ensure that the other three sites pointed to the main site. By 25th March that site was active and the site www.solicitor?mediator.co.uk was also pointing to the principal site. The Complainant accordingly paid the requested fee of £94.00 on that date. The other two sites remained and still are de-tagged despite payment to The Legal Publishing Company. The site www.mediator.org.uk was due for renewal on or before 9 August 2002.
5. Since about February 2002 The Respondent has repeatedly agreed that he would fax confirmation that ownership of the websites and copyright in them belongs to the Complainant but despite reminders he has failed to give such confirmation.
The Complainant has not provided any documentary evidence in support of his complaint.
Respondent
The Respondent has not filed any response to the Complaint.
Discussion and Findings
The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that:
1. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names; and
2. the Domain Names, in the hands of the Respondent, are Abusive Registrations.
Complainant's Rights
"Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."

The Nominet Complaint form requires a complainant to confirm that the Domain Name(s) in dispute are identical or similar to a name or mark in which he has Rights and that the Domain Name(s) in the hands of the Respondent is an Abusive Registration. The Complaint does therefore include confirmatory statements in those terms. However, the Complaint does not go on to put forward any case that makes good those bare contentions in any way.

If I were to do the best I can, then I would ignore hyphens and the suffixes ".co.uk" and ".org.uk" and look for some evidence that the Complainant has Rights in the names LAWYER MEDIATOR or SOLICITOR MEDIATOR or MEDIATOR or some similar names. There is no such evidence in the Complaint at all. There is not even any such assertion. The Complainant has not claimed to have any registered trade marks in respect of the names. That is perhaps not surprising. The terms are generic. What is more, they are clearly wholly descriptive of the business carried on by the Complainant as a solicitor (and therefore a lawyer) and a mediator. Even if the Complainant had adduced some evidence that he had some rights in those names he could not succeed because it is clear from the definition set out above that Rights do not include rights in a name or term which is wholly descriptive of the Complainant's business.

The Complainant appears to be asserting that as against the Respondent he has some right at law or in equity to the registrations of the Domain Names or to the transfer of the Domain Names to him or that the Respondent is in breach of some contractual obligation to the Complainant. He complains that the Respondent has failed to provide written confirmation of his agreement that the Domain Names belong to the Complainant. These allegations may or may not be justified but, as appears from its terms, the Policy is not intended to resolve such disputes and cannot do so.

In the circumstances, I find that the Complainant does not have any Rights in respect of a name or mark which is identical or similar to the Domain Names.
Abusive Registration
It follows that I need not go on to consider whether the Domain Names are, in the hands of the Respondent, Abusive Registrations.
Decision:
I find that the Complainant has failed to prove that he has Rights in respect of a name or mark which is identical or similar to the Domain Names. I therefore determine that no action be taken in respect of the Complaint.

Ian Lowe

Date: 7 October 2002