Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2003/1036.html
Cite as: [2003] DRS 1036

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Nominet UK Dispute Resolution Service

DRS 01036

Multiplex Media Ltd -v- SU Corporation Ltd

Decision of Independent Expert

1. Parties:

Complainant: Multiplex Media Ltd

Country: GB

Respondent: SU Corporation Ltd

Country: GB

2. Disputed Domain Name:

Barbarakelly.co.uk

3. Procedural Background:

A complaint (“the Complaint”) was entered onto the Nominet system on 29 May 2003. It was received in full by Nominet on 30 May 2003. This was forwarded to the Respondent on 4 June 2003. A Response was received by Nominet on 9 June 2003 and forwarded to the Complainant on 10 June 2003. A Reply was received on 11 June 2003 and forwarded to the Respondent on the same day.

Informal Mediation took place but no acceptable solution was achieved and on 24 June 2003 Nominet notified the Complainant that the Complaint would be referred to an independent expert upon payment of the requisite fee. The Complainant paid the fee on 1 July 2003 for a decision of an Expert pursuant to paragraph 6 of the Policy.

On 2 July 2003 I was appointed by Nominet as an Expert to determine this dispute. I confirm that I am impartial and independent. My decision was due to be given on or before 22 July 2003.

4. Outstanding Formal/Procedural Issues:

Neither party has elected to file documentary evidence in support of their case. In those circumstances the appointed Expert must look to the Complaint, the Response and the Reply plus any other materials that are available to him/her for example internet searching and so forth. Each of the Complaint, the Response and the Reply contain declarations that require the deponent to confirm that the information contained in the document is true and complete to the best of their knowledge and belief.

In the present dispute I have solely looked to the Complaint, Response, Reply and limited searches of the internet, to determine the correct factual position. I would however add, without making any comment on the factual position in this dispute, that generally speaking parties would put Experts in a better position to determine disputes if they filed documentation corroborating the facts as set out in their Complaint, Response or Reply.

5. The Facts:

The disputed Domain Name barbarakelly.co.uk was registered by the Respondent on 17 July 2001. The Respondent asserts that in or about November 2000 it was approached by “Steve” of “Barbara Kelly adult magazine” at a London exhibition. “Steve” instructed the Respondent to carry out website development work in respect to an adult dating site and the Respondent quoted for such work in the sum of approximately £8,000.

The Respondent also asserts that at the time of being instructed that he was asked to register a number of domain names for “Steve”. This included the Disputed Domain Name which was initially directed at a holding page following registration, but with “Steve’s” consent was directed to the Respondent’s website, also an adult dating site “ to see what sort of hits they were returning” . Three months into the work the Respondent contacted “Steve” and asked that a payment of £2,000 be made on account. No such payment was made and the Respondent thereafter was unable to contact “Steve” at all. The Respondent claims therefore to be out of pocket to the sum of £4,101 which sum includes registration fees for the Disputed Domain Name.

The Respondent is of the belief that the Complainant is the entity that instructed it to carry out the development works as described above and that it is entitled to withhold the Disputed Domain Name from the Complainant until payment of monies owed to it. Following service of the Complaint, the Respondent has in order to resolve the “nominet dispute” pointed the Disputed Domain Name away from its competing site to a site that offers a registration service for domain names.

The Complainant asserts that it has for the last 5 years operated an adult contact club, including over the internet under the name BARBARA KELLY CONTACT CLUB by using the domain name barbara-kelly.co.uk. Prior to filing the Complaint, the Complainant became aware that the Respondent was directing the Disputed Domain Name at a competing website.

In relation to the Respondent’s claim for payment of outstanding fees, the Complainant asserts that it has never instructed the Respondent to carry out any works and that “to assume because we have the name Barbara Kelly Ltd we must be the same company that stuffed them is preposterous”.

Following internet searches I have also ascertained that the domain name barbara-kelly.co.uk was registered on 4 February 2000 to the Complainant, and Barbara Kelly Ltd was incorporated on 13 August 2001.

6. The Parties Contentions:

Complaint

The Complainant submits that the disputed Domain Name is identical or similar to a name or mark in which it has rights and that in the hands of the Respondent it is an Abusive Registration.

The Respondent’s requested remedy is that the disputed Domain Name be transferred.

In support of its Complaint the Complainant asserts that the Respondent has used the Disputed Domain Name to divert customers and business away from the Complainant.

Response

The Respondent asserts that it has acted in good faith and that it is entitled to retain the Disputed Domain Name until their outstanding bill has been paid.

The Complainant rejects the Response and states that the Respondent is illegally holding the Disputed Domain Name.

7. Discussion and Findings

General

To succeed in this Complaint the Complainant must, in accordance with Paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that (1) 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 (2) 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 has asserted that it has Rights in a name or mark which is identical or similar to the disputed Domain Name.

The first (.uk) and second (.co) levels of the Domain Name should be discounted for the purposes of comparison as being of a generic nature.

The definition of “Rights” is set out in the Policy as “includes, but is not limited to, rights enforceable under English Law”. Under English Law rights in a name/mark are protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect the goodwill arising from that name/mark.

With regard to the former, the Complainant has not provided details of any registered trade mark. However turning to un-registered rights, for the Complainant to be able to assert rights, it must prove that (a) it has sufficient goodwill in the name Barbara Kelly Contact Club or Barbara Kelly, (b) that there is a misrepresentation by the Respondent likely to make the public believe that the goods or services of the Respondent are associated with those of the Complainant, and (c) that such misrepresentation has or will cause damage to the Complainant.

The Complainant has asserted that it has goodwill arising from 5 years use of the words “Barbara Kelly Contact Club”, including use on the internet via its domain name barbara-kelly.co.uk.

In the current dispute I am of the opinion that the Complainant does have sufficient goodwill in the name Barbara Kelly Contact Club and Barbara Kelly, that use of an identical or similar name would lead to a misrepresentation, and that such misrepresentation would cause damage to the Complainant.

For the reasons set out above, I find that the Complainant has established that it has Rights in respect of names or marks which are identical and/or similar to the Disputed Domain Name.

Because it is unclear to me what the relationship is between Barbara Kelly Ltd and the Complainant I have not considered rights that may have accrued to the Complainant by virtue of the incorporation of that company.

Abusive Registration

An Abusive Registration is defined in Paragraph 1 of the Policy 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”.

A non-exhaustive list of factors which may be evidence of an Abusive Registration are set out in Paragraph 3 of the Policy. They are:-

“i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. 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;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
ii. 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;
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. It is independently verified that the Respondent has given false contact details to us.

The Complainant does not specify which ground it relies upon other than to say that the Respondent has sought to divert business and customers away from the Complainant.

It is clear to me from the evidence contained in the Complaint, Response and Reply that the Respondent has no legitimate right to be using the Disputed Domain Name, although it may have a legitimate right to refuse transfer to the Complainant. However insofar as the Complainant has asserted that it has not contracted with the Respondent and does not owe it any money, in the absence of any evidence (including documentation) to contradict that statement, I do not find that the Respondent has a legitimate right to prevent transfer.

Whilst paragraph 1(i) of the Policy requires their to be “abusive” intent at the time of registration or acquisition, and arguably such is absent in the present dispute, and the list of what may constitute evidence of abuse are not met here, the list of factors is non-exhaustive and the definition of an abusive registration includes at 1(ii) use “in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights” which is not specific to registration or acquisition.

In my opinion where the Respondent had no legitimate interest in the Disputed Domain Name; its claim for payment of monies does not rest against the Complainant; and it directed the Disputed Domain Name at a site that competes with the Complainant (who does have such a legitimate interest) such conduct does take unfair advantage of or is detrimental to the Complainant’s rights.

As a result of the above, it is not necessary to go further, save to say that something that did trouble me with the Respondent’s Response was that according to its time-table of events it met with “Steve” in November 2000. The indication then given is that work commenced relatively quickly. Allowing for a delay of a month or so the initial work that took 2 months would have been completed by mid to end February 2001. The Respondent asserts that it requested payment for work carried out 3 months into the project which would have been mid to end March 2001, by which time it had already been instructed to register domain names. However the Disputed Domain Name was in fact registered on 17 July 2001. The evidence that is given on these dates is not particularly specific, and as such, I do no more than mention my thoughts.

8. Decision:

For the reasons set out above, in my opinion the Complainant has proven on the balance of probabilities that (i) it has Rights in respect of a name or mark which is identical or similar to the Disputed Domain Name; and (ii) the Disputed Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds and I direct that the Disputed Domain Name be transferred to the Complainant forthwith.

Simon Chapman

Date: 22 July 2003