654
Nominet UK Dispute Resolution Service
DRS 00654
Big Yellow Group plc -v- Inca Research Inc
Decision of Independent Expert
1. Parties:
Complainant: Big Yellow Group Plc
Country: GB
Respondent: Inca Research Inc
Country: GB
2. Domain Name:
bigyellow.co.uk
3. Procedural Background:
A brief chronology is as follows:
10 October 2002: Complaint lodged with Nominet electronically
11 October 2002: Hardcopies received by Nominet
15 October 2002: Nominet forwarded complaint to Respondent
7 November 2002: No response received
15 November 2002: Complainant sent fee for expert decision
On 18 November 2002 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.
4. Outstanding Formal/Procedural Issues:
The Respondent has not submitted a response to the complaint to Nominet in time (or at all) in compliance with paragraph 5a of Nominet’s Dispute Resolution Service (“DRS”) Procedure (“the Procedure”).
I have seen the copy communications from Nominet to the Respondent and have no reason to doubt that the Respondent has been properly notified of the complaint. There is a copy of a cover letter from Nominet dated 15 October 2002 addressed to the Respondent at the whois address. This accords with paragraph 2ai of the Procedure. On 10 November 2002 Internic Limited (“Internic”) emailed Nominet (in response to an email of 7 November from Nominet to webmaster@internic.co.uk attaching the complaint) saying: “We are looking into this and will be providing you with a reply soon”. As explained below, Internic is at least the registrant’s agent and it may in fact be the registrant itself.
Paragraph 15b of the Procedure states that “If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint.” There is no evidence of exceptional circumstances here.
The lack of a response does not entitle the Complainant to the equivalent of a default judgment. The Complainant must still prove its case to the required degree. I will evaluate the Complainant’s evidence on its own merits and draw reasonable inferences from it in accordance with paragraph 12b of Nominet’s DRS Policy (“the Policy): “The Expert shall determine the admissibility, relevance, materiality and weight of the evidence.”
Further, 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 this Procedure or any request by … the Expert, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.” I draw such inferences from the Respondent’s non-compliance as are specified below.
5. The Facts:
The Complainant
The Complainant was incorporated in 26 August 1998 according to a Companies House printout included in the bundle supplied by Nominet. It provides storage facilities and services and related goods in the UK.
The Complainant registered the domain name thebigyellow.co.uk on 8 January 1999 and operates a trading website at that domain.
The Respondent
The domain name in issue, bigyellow.co.uk, was registered in the name of the Respondent Inca Research Inc (“Inca”) on 16 October 1999. According to the whois printout supplied by Nominet, the Respondent’s address is: “Victoria Chambers, Fir Vale Road, Bournemouth BH1 2JN” and the Respondent’s agent is “Internic Ltd t/a Inca Research Inc”.
The complaint says that there is a website at www.bigyellow.co.uk headed “InterNIC.co.uk” which states that bigyellow.co.uk is registered but is not in use by Internic’s client and that the domain is being held on behalf of the client until the client is ready to use it. The complaint does not exhibit a dated (or any) printout of the website but Nominet’s bundle includes a printout of the website which bears out the assertion.
I visited the website on 3 December 2002. It was then headed “InterNIC” and contained the same statement mentioned above. It also said: “Welcome to the UK International NIC, Direct Online Domain Registration Service”. There was an Internic copyright notice and various other references to Internic from which I infer that Internic controlled the website.
There is no evidence of any other use of the website.
Communications concerning bigyellow.co.uk
On18 June 2002 Stuart Grinnall, an employee of the Complainant, emailed info@internic.co.uk from a Hotmail account asking whether bigyellow.co.uk was available as he wished to use it for his website.
On about 26 June 2002 Internic Customer Support emailed (from webmaster@internic.co.uk): “It is for sale. But we have had some large offers already. You are welcome to make a bid £00000”.
On 8 July 2002 Mr Grinnall emailed and bid £250.
On 8 July 2002, Internic emailed: “Sorry but we have already had offers for £5000 already which were refused”.
On 30 July 2002 the Complainant’s solicitors, Walker Morris, emailed to Internic a letter addressed to “Inca Research Inc c/o Internic” alleging abusive registration and seeking transfer of bigyellow.co.uk.
On 5 August 2002 Internic emailed back “This was registered for a client in reference to UK tourists visiting Yellowstone Park in the USA. The client has not decided to us (sic) it yet as the project planed (sic) has fallen through due to lack of financing”.
On 14 August 2002 the Complainant’s solicitors emailed that the Complainant did not find this explanation credible, pointing out that Yellowstone had said that it did not describe itself as “Big Yellow” nor did others so far is it was aware. The Complainant’s solicitors asserted that UK tourists would not recognise “Big Yellow” as indicating Yellowstone National Park. The Complainant’s solicitors said that Internic’s email of 8 July proved that it was then authorised to negotiate a sale in excess of £5000 and that this did not marry with the statement that its client intended to use the name to advertise trips to Yellowstone and had ‘not decided’ what subsequent use to make of it. The Complainant’s solicitors asked for confirmation that their correspondence had been passed on to Internic’s customer and of the identity of the customer. They also asked for an undertaking from “Internic and its sister company Inca Research” that it would not sell bigyellow.co.uk to any UK business.
Internic emailed on 14 August 2002:
“You obviously have not read the email
It has nothing to do with “Yellowstone Park” the owners.
Our client was originally setting a site up to advertise package deals to go to Yellowstone Park (fly drive etc …) To clarify “Like a travel agency.
The name is a generic name, as per “Nominet Terms and Conditions”
Nominet state very clearly “Is there confusion to the internet user as to where they are to which company they are viewing on the web
1) The name is not in use.
2) As the client has had so many offers to sell the name the client has decided not to proceed with the original project for the time being with a view to sell the name to recoup losses in the original project.
3) This name was NOT purchased to sell and it is only because of a financial problem and offers which have been made that the client will accept a bid.
The client still maintains that they will accept a reasonable offer to recoup most of the loss of approx £5000”
Communications concerning another domain name
The complaint also exhibits extensive email correspondence between the Complainant’s solicitors and Internic concerning another (unidentified) domain name. The relevant parts are as follows:
9 May 2002: The Complainant’s solicitors said that a domain name had been registered “by you on behalf of one of your clients Inca Research Inc”, that they (the solicitors) had been trying to discover the contact details for Inca Research and that they had previously been told by Internic that it had no contact details for “your client”.
9 May 2002: Internic said that they had looked into this and that “this name has not been renewed by the client”.
10 May 2002: Internic said “we have taken ownership of this name due to the original payment not being paid” and “it is in the name of our sister company in the US”.
10 May 2002: The Complainant’s solicitors asked for “a contact at your sister company”
11 June 2002: Internic said “Inc (sic) Research Inc”, 520 Washingon Blvd, Suite 501, Marina Del Rey, CA 90292 is the company address in the US. They have asked us to act on behalf of them …” and “Inca Research are the owners on behalf of the client, hence why that (sic) have the authority to sell due to none (sic) payment.”
The Complainant’s solicitors subsequently sent a letter before action to the Marina del Rey address concerning that other domain name but it was returned as undeliverable.
6. The Parties’ Contentions:
Complaint:
1. The Complainant is a well-known provider of storage facilities and services and related goods in the UK. The Complainant and its associated companies have traded under a name incorporating or solely consisting of “Big Yellow” (defined as “the Big Yellow Name”) since 1989 and have built up valuable goodwill which attaches to that name. The Big Yellow Name is associated by the relevant public in the UK exclusively with the Complainant’s particular goods and services. Other than those registered in the name of the Complainant, there are no trade mark registrations for the words “Big Yellow” alone in force in the United Kingdom, and no other party has a reputation in the Big Yellow Name.
2. The Complainant is the proprietor of the following trade marks:
- Community Trade Mark number 1632546 for the word mark BIG YELLOW for use classes 16, 17, 39. The trade mark was filed on 28 April 2000 and registered on 25 May 2001.
- Community Trade Mark number 2141760 for the figurative mark depicting the words THE BIG YELLOW SELF STORAGE COMPANY on a box device for use classes 16, 17 and 39. The trade mark was filed on 20 March 2001 and registered on 22 May 2002.
- Trade Mark number 2061017 for the word mark BIG YELLOW for use class 39. The trade mark was filed on 14 March 1996 and registered on 24 July 1998. It was registered by BYSS Co. Limited, which is a previous name of Big Yellow Self Storage Company Limited (company number 2286547), a subsidiary of the Complainant.
3. The Complainant advertises its goods and services on and sells its goods through its website at www.thebigyellow.co.uk and has attracted considerable business using this domain name. The Complainant has expanded the goodwill in the Big Yellow Name through its website.
4. The Complainant is the proprietor of the trade marks mentioned above and uses the website www.thebigyellow.co.uk (defined as “the Domain Name”) in the operation of its business. The Domain Name is similar and /or identical to the trade marks and the domain name in which the Complainant has rights. The Respondent has no rights in the Big Yellow Name.
5. The Domain Name is a .co.uk name which is a top-level domain name for commercial organisations in the UK. The UK is the Complainant’s biggest market and the registration and use of the Domain Name by a company that is wholly unconnected with the Complainant, whether that use be by the Respondent or a business acquiring the Domain Name from the Respondent, is or will be detrimental to the Complainant’s business and the goodwill established in that business through the Big Yellow Name.
6. This is an abusive registration in the hands of the Respondent. The Respondent is clearly intending to sell the Domain Name for profit. To sell the name for the sum of £5,000 far exceeds the out of pocket expenses the Respondent would have incurred in registering the name. The Respondent refused the offer of £250 which would have covered its expenses and will only consider sums exceeding £5,000.
7. The Respondent registered the Domain Name in 1999, after the Complainant had registered its domain name and over ten years after the Complainant started trading under the Big Yellow Name. The Respondent would have known about the Complainant’s business and the Big Yellow Name when the Domain Name was registered. This registration has effectively blocked the Complainant’s ability to register the Domain Name for itself. The Respondent has not been known by the Domain Name nor is it legitimately connected with the Complainant’s business, the Big Yellow Name or the Complainant’s Trade Marks.
8. For the reasons set out in The Complainant’s solicitors’ email of 14 August 2002, Internic’s explanation for its registration and subsequent offers for sale of the Domain Name are mutually contradictory and lacking in credibility. Given that the Complainant’s Big Yellow Name is a mark with a valuable reputation, it appears likely that the Respondent purchased the Domain Name for profit.
9. Even if the Respondent does not sell the Domain Name, the Complainant will still suffer loss and damage because customers looking for the Complainant’s website but finding the website at the Domain Name will be led to believe that the Complainant does not have an active website and / or that its services are limited or discontinued.
10. If the Respondent does sell the Domain Name then any use of the Domain Name by the buyer is likely to be abusive since only the Complainant has a reputation in the Big Yellow Name and the Trade Marks in the United Kingdom.
Response:
The Respondent has not filed a formal response.
7. Discussion and Findings:
General
To succeed in this Complaint the Complainant has to prove in accordance with 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 bigyellow.co.uk and, second, that that domain name, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the Policy).
Complainant’s Rights
Paragraph 1 of the Policy defines “rights” as including, but not being limited to, rights enforceable under English law (but excluding names or terms which are wholly descriptive of a complainant’s business).
The Complainant relies on three registered trade marks. Two (one UK and one community trade mark) are for the words “BIG YELLOW” and the other (a community trade mark) is a figurative mark depicting the words “THE BIG YELLOW SELF STORAGE COMPANY” on a box device.
The Complainant also relies on its common law rights. It asserts that it and its “associated companies” have traded under a name incorporating or solely consisting of “Big Yellow” since 1989, that it has built up valuable goodwill in that name which is associated by the relevant public in the UK exclusively with the Complainant’s particular goods and services.
However, there are some difficulties with the Complainant’s case on rights:
First, the Complainant has provided no copy trade mark certificates or other evidence as to the existence of the trade marks.
Second, the two community trade marks (ie one of the word marks and the device mark) postdate the Respondent’s registration of bigyellow.co.uk on 16 October 1999.
Third, the UK word trade mark that pre-dates bigyellow.co.uk is owned, not by the Complainant, but by BYSS Co Limited which is said to a subsidiary of the Complainant (and there is no evidence as to this relationship).
Fourth, the Complainant has provided no evidence in support of the claimed trading activities since 1989. The complaint does not address or even mention the fact that the Complainant only came into existence in August 1998 nor state when the Complainant started trading on its website at www.thebigyellow.co.uk. Nor does it identify the “associated companies” or their relationship with the Complainant or explain why the Complainant should benefit from their goodwill.
That said, it is now well established that the requirement to demonstrate rights is not a particularly high threshold test. See for example the appeal panel decision in seiko-shop.co.uk (DRS 00248). That also said that an assertion that a Complainant is a subsidiary or associated company of the trade mark proprietor will be sufficient to establish rights in the absence of any good reason to doubt the veracity of the assertion. I am also conscious that the Respondent has not put any of these matters in issue by contesting the proceedings.
So, although the Complainant could have done more to prove rights, I accept that the trade marks are as claimed and that the UK trade mark for the words “BIG YELLOW”, which pre-dates bigyellow.co.uk, is owned by the Complainant’s subsidiary and that is sufficient to establish the Complainant’s rights in that name.
The word community trade mark which postdates bigyellow.co.uk also constitutes rights in the name. Previous DRS cases are divided as to whether rights must be established by the time of registration of the disputed domain or merely by the date of the complaint. My opinion is that latter suffices and that the consequence of any earlier lack of rights should be considered in the context of abusive registration.
I do not need to consider the figurative community trade mark or the common law rights.
I conclude that the Complainant has rights in the name “Big Yellow” and succeeds under this head. The name is not wholly descriptive of the Complainant’s business and, ignoring suffixes, is identical to the domain name bigyellow.co.uk.
Abusive Registration
Definition of abusive registration
Is the domain name bigyellow.co.uk, in the hands of the Respondent, an abusive registration? 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.”
Non-exhaustive factors evidencing abusive registration
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. However, I do not think it necessary to have recourse to those.
The Yellowstone project
In my view, the key factor in this case is the veracity or otherwise of the Respondent’s explanation of its purpose in registering bigyellow.co.uk. (When referring to “the Respondent”, I draw no distinction between Inca and Internic. As explained below, Internic is at least Inca’s agent and it may in fact be the registrant itself.)
Internic stated on the bigyellow.co.uk website that the domain had been registered but was not in use by its client and that the domain was being held for the client until it was ready to use it.
In its initial response to the Complainant’s solicitors, Internic claimed that bigyellow.co.uk was “registered for a client in reference to UK tourists visiting Yellowstone Park” and appeared to say (although the email is unclear) that the client had not yet decided how to use it as the project had fallen through. The Complainant’s solicitors pointed out that this was inconsistent with Internic’s 8 July email indicating that it was authorised to negotiate to sell. Internic responded that as the client had many offers it decided to sell the name to recoup losses in the project but the name had not been purchased with a view to sale.
While this explanation (“the Yellowstone project”) looks like an ex post facto justification for the domain name, it is not on the face of it completely implausible. This is despite the fact that Yellowstone Park apparently told the Complainant’s solicitors that it did not describe itself as “Big Yellow” and was not aware that others described it as such.
Internic might have a client which might have chosen such a name for such a project.
The assertion does however cry out for some supporting evidence such as correspondence with, or a statement from, the alleged client. Yet nothing was produced in the course of the correspondence with the Complainant’s solicitors and indeed Internic did not even respond to the request to identify the client or confirm that it had passed correspondence to it. Nor has the Respondent seen fit to contest this case and supply such evidence.
Status of Inca
There is in fact evidence which casts doubt on the veracity of Internic’s explanation.
When corresponding with the Complainant’s solicitors concerning the different domain name, Internic did nothing to disabuse the solicitors of their belief that Inca was a client of Internic. Indeed it appears that Internic had previously told the solicitors that it had no contact details for Inca.
Yet later in the same line of correspondence Internic said that “Inc (sic) Research Inc” was its “sister company” and provided a California address. A letter sent to that address was returned. In its email of 14 August 2002 concerning bigyellow.co.uk, Internic did not object to the Complainant’s solicitors’ description of Inca Research Inc as its “sister company”.
The Complainant says that it was unable to check whether Inca is a US registered company without knowing the state of incorporation. The whois for the bigyellow.co.uk in fact shows a Bournemouth address for Inca but that could in theory be a UK contact address for a US company.
The Complainant also says that it has recently acquired information giving it very good reason to believe that in fact “Inca Research Inc” is merely a trading name of Internic and that “INCA” is one of the ISP Tags used by Internic. The Complainant does not disclose the recently acquired information or provide any supporting evidence concerning the tag. So this assertion does not advance matters.
However, the bigyellow.co.uk whois describes the registrant’s agent as “Internic Ltd t/a Inca Research Inc”. The abbreviation “t/a” means “trading as” and is normally used to denote a trading name. Presumably Internic itself has provided this formulation. (If it is a trading name, then it seems, at the least, odd that Internic would use a name suggestive of a US corporation.)
So Internic has stated, or at least implied, at different times that Inca was its client, its sister company and its trading name. It seems reasonably clear that Inca is not an independent client of Internic but is connected with it either as a trading name or related company. It is I suppose possible that bigyellow.co.uk is nonetheless being held in the Inca name on behalf of another client independent of Internic.
Respondent’s purpose - conclusion
However, taking the contradictory representations in conjunction with Internic’s failure to respond to the request to disclose the client’s identity and to confirm that it had forwarded correspondence to the client and with its failure to produce any evidence supporting its explanation and with the failure of the Respondent to contest these proceedings, I conclude that on the balance of probabilities there is no independent client of Internic and that in any case bigyellow.co.uk was not registered for the purpose claimed by Internic or for any other genuine purpose.
The fact of this misleading explanation leads me to the further conclusion that the Respondent registered bigyellow.co.uk with the Complainant in mind and with a view to profiting from it in some way at the Complainant’s expense.
Non-exhaustive factors evidencing no abusive registration
A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is set out in paragraph 4 of the Policy.
Only two of these are conceivably relevant.
Genuine offering of goods and services
The factor in paragraph 4aiA is that: “Before being informed of the Complainant's dispute, the Respondent has 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.”
There is no evidence of any use or demonstrable preparations in connection with the Yellowstone project or any other genuine offering of goods or services.
Generic or descriptive
The factor is paragraph 4aii is that: “The Domain Name is generic or descriptive and the Respondent is making fair use of it.”
The Respondent has claimed that the name “Big Yellow” is generic. Whether or not it is generic or descriptive is academic as there is no evidence that the Respondent is making fair use of bigyellow.co.uk.
Abusive registration - conclusion
I find that on the balance of probabilities the domain name bigyellow.co.uk is an abusive registration in that it was registered in a manner which took unfair advantage of, or was unfairly detrimental to, the Complainant’s rights in its name.
8. Decision:
The domain name bigyellow.co.uk should be transferred to the Complainant.
Adam Taylor Date: 6 December 2002