Nominet UK Dispute Resolution Service

You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Leisure Parcs Ltd -v- www.your-name-here.co.uk [2002] DRS 570 (25 October 2002)
URL: http://www.bailii.org/uk/cases/DRS/2002/570.html
Cite as: [2002] DRS 570

[New search] [Help]

DRS 00570

Leisure Parcs Limited -v- www.your-name-here.co.uk

Decision of Independent Expert

Parties:

Complainant: Leisure Parcs Limited

Country: GB

Respondent: www.your-name-here.co.uk

Country: GB
Domain Name:
blackpooltower.co.uk ("the Domain Name")
Procedural Background:
The Complaint was lodged with Nominet on 23 August 2002. Nominet validated the Complaint on 30 August and informed the Respondent to the Complaint, by notification dated 30 August 2002, sent by post and by e-mail, that it had 15 working days within which to lodge a Response. No Response was received. Mediation was accordingly not pursued. The Complainant was informed accordingly and by letter dated 8 October 2002, 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").

On 15 October 2002, Antony Gold, 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.
Outstanding Formal/Procedural Issues (if any):
It is first necessary to deal with the fact that no response has been made by the Respondent. Under paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure"), the Respondent is required to submit a response to Nominet within 15 days after the commencement of proceedings. Paragraph 15b of the Procedure provides that the Expert will proceed to a Decision on the Complaint if, in the absence of exceptional circumstances, a party does not comply with any time period laid down in the Procedure. There is no evidence before the Expert to indicate the presence of exceptional circumstances and a decision is accordingly made on the Complaint notwithstanding the fact that no response has been provided by the Respondent.

Paragraph 15c of the Procedure provides that if, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or the Procedure, the Expert will draw such inferences from the Party's non?compliance as he or she considers appropriate. Whilst it is not intended to draw any adverse inferences from the Respondent's failure to respond to the Complaint, the starting point for this decision is that the facts asserted by the Complainant are correct.
The Facts:
The Complainant asserts that the building known as "Blackpool Tower" is a world famous landmark, entertainment complex and tourist attraction located in Blackpool, Lancashire. The Complainant is the current proprietor of Blackpool Tower. The Complainant acquired Blackpool Tower from the previous owner, First Leisure Corporation Plc ("First") in the late 1990's. The Complainant is also the registered proprietor of a word mark for BLACKPOOL TOWER in class 41, and a word and image mark for BLACKPOOL TOWER, also in class 41 (together the "Registered Marks"). The Complainant took an assignment of the Registered Marks from First on 7 January 1999.

The Complainant states that it uses BLACKPOOL TOWER ("the Mark") in connection with the majority, if not all, of the goods and services for which the Registered Marks are registered, and also in connection with restaurant service and the sale of merchandise. The Complainant states that it has used the Mark and the Registered Marks in the course of trade for several years and has built up a substantial reputation and goodwill in its business through such use. The Complainant has provided samples of literature showing its use of the Mark.

A Nominet Whois search shows that the Respondent registered the Domain Name on 28 March 1999. The Complainant states that no website is hosted at the Domain Name, and, so far as the Complainant is aware, there is no evidence to suggest that the Respondent has made any demonstrable preparations to use the Domain Name. The Complainant states that, it is clear from the Respondent's website at www.your-name-here.co.uk (the "Respondent's Website"), that the Respondent's main business is the provision of a domain name brokering service through the Respondent's Website. The Complainant states that the Respondent's Website advertises the Domain Name as available for purchase or rent from the Respondent.

The Complainant notified the Respondent of its objections to the Respondent's ownership of the Domain Name by a letter dated 29 October 2001 from the Complainant's solicitors, Halliwell Landau. This letter was sent to the Respondent's address at 14 Northfield Avenue, North Shore, Blackpool, Lancashire FY1 2ND. A copy of this letter was attached to the Complaint. The Complainant states that it has not received any response to this letter from the Respondent.
The Parties' Contentions:

Complainant:
The Complainant asserts that:
1. The Domain Name is substantially identical to the Mark and the Registered Marks.
2. The Domain Name is an Abusive Registration because:
  1. the name is being used primarily for the purposes of selling, renting or transferring the Domain Name to the Complainant or to other parties who may include competitors of the Complainant for valuable consideration in excess of costs directly related to the Domain Name. In this respect, the Complainant relies on the fact that the main business of the Respondent is the provision of a domain name brokering service through the Respondent's Website, and that the Domain Name is advertised on that website as available for purchase or rent from the Respondent. The Complainant states that this indicates that the Respondent has registered the Domain Name for the above purposes;
  2. the Respondent has sought to prevent the Complainant from reflecting the Mark in a corresponding domain name. The Complainant asserts this on the basis that the Respondent is not making any legitimate non-commercial use of the Domain Name and, again, that the Respondent provides domain name brokering services and that the Respondent has registered the Domain Name and is offering it for sale or rent;
  3. the Respondent has engaged in a pattern of registering domain names which correspond to trade marks registered by third parties, and then offering those domain names for sale or rent. The Complainant has attached instances of such conduct to the Complainant. The Complainant's evidence shows, for example, that the Respondent has registered and is offering for sale or rent the domain name kwik-save.co.uk. The Complainant's evidence shows that Somerfield plc is the registered proprietor of UK marks for KWIK SAVE. In addition, the Complainant's evidence shows that the Respondent has registered the domain name fantasy-football-league.co.uk and is offering this domain name on the Respondent's Website for sale or rent. The Complainant's evidence shows that Fantasy League Limited has registered the trade mark FANTASY FOOTBALL LEAGUE in the UK;
  4. the Complainant asserts that it has not licensed or otherwise authorised the Respondent to use the Mark or the Registered Marks and there is no evidence to suggest that the Respondent has been commonly known by the Domain Name or the Mark. As at the date of submission of the Complainant, the Complainant states that no website was hosted at the Domain Name and, as so far as the Complainant is aware, there is no evidence to suggest that the Respondent has made any demonstrable preparations to use the Domain Name. The Complainant submits that there is no evidence that the Respondent has used or is using the Domain Name in connection with a bona fide offering of goods or services or for the purposes of tribute or criticism, nor is the Respondent making any legitimate non?commercial use of the Domain Name. When this and the above three factors are considered in combination, the Complainant asserts that they indicate that the Respondent has intentionally sought to prevent the Complainant from reflecting the mark in a corresponding domain name. It says that this takes unfair advantage of and is unfairly detrimental to the Complainant's rights.
Respondent:
As explained above, the Respondent has not responded.
Discussion and Findings:

General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert on the balance of probabilities, both that it has rights in respect of a name or mark identical or similar to the Domain Name and 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
The Complainant in this case has asserted that it has rights in the words BLACKPOOL TOWER and that this name is "substantially identical" to the Domain Name. In considering whether or not a name or mark is identical or similar to a domain name, it would usually be appropriate to disregard the domain suffix, that is co.uk. On that basis, save for the unavoidable lack of a space between BLACKPOOL and TOWER in the Domain Name, the mark is identical to the Domain Name.

From the evidence submitted by the Complainant, it appears that the Complainant is likely to have goodwill in the words BLACKPOOL TOWER. The Complainant is also the registered proprietor of the Registered Marks for BLACKPOOL TOWER. Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark which is identical to the Domain Name.
Abusive Registration
The Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
1. 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
2. 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. The first of these is circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

"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." (paragraph 3a1A)

It seems clear that the Respondent has registered the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to a third party. The Respondent does not appear to have used the Domain Name for any purpose other than to advertise it for sale on the Respondent's Website.

Can it be said, however, that the Respondent's primary purpose in registering the Domain Name was to sell, rent or otherwise transfer the Domain Name to the Complainant or a competitor of it? A feature of this Complaint is that, in view of the unique nature of Blackpool Tower, it is less easy than in many cases to define the class of businesses which might comprise the Complainant's competitors, although they might include, for example, operators of rival attractions. It is nonetheless necessary to analyse whether the placing of the Domain Name within a long list of other domain names for sale or rent was an activity aimed at specifically inducing an offer from the Complainant or one of its competitors, as opposed to soliciting offers from the public in general. In this respect, it is fair to conclude that the likely prospective purchasers of the Domain Name are extremely limited. In contrast to, for example, blackpoolengland.co.uk or blackpooltaxi.co.uk (both of which are also for sale, amongst many similar names, at the Respondent's website) which might interest a number of potential parties, the most likely prospective purchasers of the Domain Name, following registration, were most probably the Complainant or one of its competitors.

Is there evidence that the Respondent would have sought "valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name"? Whilst there is no direct evidence that this was the Respondent's intention, the Respondent's website provides an abundance of secondary evidence that this was his objective. By way of example, the explanatory text at the top of the list of available domain names comments "There are some [domain names] here that we wouldn't sell for less than £10,000 - can you spot which ones?" and comments "If you like one of these names let us know your ideas - we may be prepared to rent or lease it to you in return for a share of the profits". The Respondent's motivation in offering the Domain Name for sale was plainly to recover more than out-of-pocket costs.

On this basis, it is considered that the Domain Name is an Abusive Registration on the basis of the grounds set out in paragraph 3a of the Policy.

The Complainant makes two further submissions which require consideration. The first is that the Respondent has engaged in a pattern of abusive registrations. In support of this assertion, reference is made to the Respondent's registration of Kwik-Save.co.uk and Fantasy-Football-League.co.uk and has provided evidence that corresponding marks are owned by third parties. Although understanding the basis of the Complainant's arguments, section 3aiii of the Policy requires the Respondent to have engaged in a pattern of making Abusive Registrations. In order for this ground to be made out, each registration relied by the Complainant would need to be shown to be an Abusive Registration, as defined by the Policy. Whilst the two examples cited by the Complainants have all the signs of being Abusive Registrations, too little is known about the underlying facts for it to be said with certainty that they are Abusive within the terms of the Policy.

The Complainant also makes a more general complaint that the Respondent's conduct takes unfair advantage of and is unfairly detrimental to the Complainant's rights in view of the fact that the Respondent is making no bona fide use of the name and is refusing to surrender it. Having regard to the totality of the Respondent's conduct, it is accepted that this more general ground of complaint is made out.

Before concluding, it is necessary to consider paragraph 4 of the Policy which indicates grounds by which a Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration. These include, under Section 4ai, that "before being informed of the Complainant's dispute, the Respondent has:

A. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;

C. made legitimate non-commercial or fair use of the Domain Name."

and under Section 4aii that "the Domain Name is generic or descriptive and the Respondent is making fair use of it".

It is not easy to second-guess what the Respondent might have said, had it filed a Response, but there is nothing on the facts which are known which would suggest that the Respondent might have been able to avail itself of Sections 4ai or 4aii of the Policy.

Accordingly, the Expert finds that the Domain Name is an Abusive Registration as defined by paragraph 1 of the Policy.
Decision:
In light of the findings that the Complainant has rights in respect of a name or mark which is similar 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 blackpooltower.co.uk be transferred to the Complainant.

Antony Gold

Date: 25 October 2002

Complainant:	Leisure Parcs Limited
Country:	GB

Respondent:	www.your-name-here.co.uk
Country:	GB