1154
Nominet UK Dispute Resolution Service
DRS 01154
Mr Computer -v- Mr A Cooper
Decision of Independent Expert
1. Parties:
Complainant: Mr Computer
Country: GB
Respondent: Mr A Cooper
Country: GB
2. Domain Name:
The domain name in dispute is mrcomputer.co.uk
3. Procedural Background:
The Complaint was lodged with Nominet on 5 August 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 8 August 2003 and informed the Respondent that he had until 2 September 2003 to lodge a Response. A Response was received on 27 August 2003 and forwarded to the Complainant on the same date with an invitation to make any further submission in reply to the Response by 3 September 2003. A Reply was received on 1 September 2003. On 18 September 2003, Nominet informed the parties that it had not been possible to achieve a resolution of the dispute by Informal Mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 2 October 2003. On 29 September 2003, 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 3 October 2003, David King, 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 brought to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any):
None.
5. The Facts
The Facts are somewhat sketchy in this case. The Complainant is “Mr Computer”, which is the name of an unincorporated business run by Mr A Jones. The nature of the business is the retail of computers and the provision of IT services. The Respondent is Mr A Cooper who trades as “Common Sense Computers” which is the registrant of the Domain Name. The nature of Mr Cooper’s business is trading in computer components. In effect the Complainant is Mr Jones trading as “Mr Computer” and the Respondent is Mr Cooper trading as “Common Sense Computers”.
From the documentation submitted with the Complaint, it appears that, in 1999, Mr Jones and Mr Cooper were in the process of acquiring or forming a private limited company called “Mr Computer Limited” on a 50/50 basis. However, it is not clear exactly when, or indeed if, they acquired the company.
To his complaint, Mr Jones has annexed a copy of an agreement dated 28 December 1999 “Concerning the future of Mr Computer Limited” between himself and Mr Cooper whereby Mr Cooper agreed to resign as a director of “Mr Computer Limited” and to sell his 50% shareholding in the company to Mr Jones.
The Domain Name was registered by Common Sense Computers on 16 June 1999. It has been detagged and, currently, is not available. A search carried out by Nominet on 8 August 2003 directed to the website of
www.microbits.co.uk, which gave details of the products and services of the Complainant’s business. It appears, from the copy of a headed letter submitted with the Complaint, that Mr Jones also trades as “Microbits”.
6. The Parties Contentions
Complainant:
The substantive part of the Complaint reads as follows:
“The domain name of mrcomputer.co.uk was originally purchased and set up for the use of a partnership between myself and Mr Cooper, operating under the name of Mr Computer Ltd. The nature of the business was as a computer retailer/provision of IT services. That partnership was dissolved on 28th December 1999 and I bought out all of the business assets belonging to Mr Computer Ltd, including the domain name, it was understood. However, since the partnership was dissolved, the domain has remained registered under Mr Cooper's own computer company's name, Common Sense Computers, which contradicts point #10 in the agreement (see attached) signed by Mr Cooper. It has been three years since the partnership ended, and I still have not been able to obtain ownership of mrcomputer.co.uk. I assert that the domain name is identical to a name to which I have Rights, and that Mr Cooper's continued hold over the domain is an Abusive Registration. Mr Cooper's refusal to transfer the domain name to me, as agreed, is unfair and thus entitles me to lodge this complaint. Included with this complaint is a copy of the original statement that dissolved the partnership, and a copy of a letter to Mr Cooper highlighting that the transfer of mrcomputer.co.uk should be effected, since the agreed payment had been made. Alan Jones Mr Computer 145, Victoria Street St Albans Herts, AL1 3AQ”
The Expert confirms that he has read the documentation annexed to the Complaint.
Respondent:
The Respondent’s response reads as follows:
1. I Alistair Terrence Cooper of 34 Ellis Fields St Albans Herts AL3 6BQ carry on in business as a trader of computer components, trading as “Common Sense Computers” and do not accept that my holding of this Domain Name is abusive.
2. The Domain name was never purchased by and for the use of a partnership between myself and Mr Alan Jones as Mr Jones suggests in his submission.
3. Mr Jones had no input into the initial registration of the domain name.
4. Mr Jones made no contribution towards the initial costs of purchasing and registering the domain name.
5. Mr Jones had not traded as “Mr Computer” prior to the purchase of the domain.
6. I have not refused to transfer the domain to Mr Jones.
7. Mr Jones made no attempt, even out of basic courtesy to inform me of his intention to refer the matter to Nominet.
8. I have received no communication from Mr Jones regarding the matter since our dissolution agreement on 28.12.1999.
9. Mr Jones, quite correctly, refers to an agreement dated 28.12.1999 to transfer my shareholding in Mr Computer Ltd to him. No mention is made of the domain name www.mrcomputer.co.uk.
10. Mr Jones is in breach of that agreement anyway, in that he has failed to make payments in accordance with the schedule detailed in sections 6 and 9 of that signed agreement. Mr Jones remains in arrears in the sum of £650 plus interest to date.
11. I have maintained the domain and paid the renewal fees to date.
12. I have no objection to transferring the domain to Mr Jones as long as he fulfils his obligations under the agreement dated 28.12.1999 and pays monies owed under this agreement, interest to date and reasonable costs in respect of maintaining the domain and renewal fees etc.
I have written today to Mr Jones in this respect, however until such time as the issue is settled amicably between myself and Mr Jones I do not accept that my current holding of the domain is in any way “abusive” and would ask you to find in my favour in this respect.”
Complainant’s reply
The Complainant’s reply to the Respondents’ response reads as follows:
“Item 1. I would argue that a) the web site was paid for by myself (see Item 2 below) and b) Common Sense Computers has never traded as Mr Computer, and thus null and voids any moral justification for retaining a domain which is not utilised by Mr Cooper, and by retaining this domain name it is therefore abusive.
Item 2. Mr Alistair Cooper and myself in 1999, agreed to dissolve our partnership, namely – Mr Computer – the shop (as above). www.mrcomputer.co.uk is an intrinsic part of the company which I purchased via a solicitor for the sum of £13,500.
When we proceeded to take over the web site, we were told by CM2NET that a further payment needed to be made to purchase the site. We even agreed to this and provided (at Mr Morrison’s request and instruction) a computer to the value of £700 to be given to a solicitor in Victoria St. St Albans. This I did without any argument. However, once again when I instructed CM2NET, to proceed with the transfer, I came up against resistance and no Cupertino, and came to an impasse.
Item 3. I agree, I did not have input into the registration of the domain name.
Item 7. This is categorically not true, I have made numerous attempts to acquire the site, and even spoke to Mr Cooper about three weeks before applying to Nominet for assistance.
Item 8. I had spoken to Mr Cooper in person, (at a Luton Computer Show) approximately 3 weeks before my Application to Nominet.
Item 10. I have withheld final payment of the total £13,500 agreed, until the domain name is transferred to myself, which I will pay immediately on transfer of the Domain name to myself.”
7 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 which is 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 has asserted that it has rights in a name or mark, which is
identical or similar to the Domain Name. The main issue at this stage is to
establish whether, on the balance of probabilities, the Complainant has rights in respect of the name or mark of mrcomputer.co.uk. The name “mrcomputer” is identical to the name in which the Complainant asserts it has Rights. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix <co.uk> which is of no relevant significance and wholly generic.
Although the evidence is scant, it appears that the Complainant has traded under the name Mr Computer since the dissolution agreement dated 28 December 1999. The Complainant might well have built up goodwill in the name since then. It has frequently been said in Experts’ decisions under Nominet’s Dispute Resolution Service that the threshold for establishing Rights for the purposes of the Policy is a low one. It is not necessary for complainants to establish exclusive rights. In the circumstances, the Expert finds that, for the purposes of the Policy and on the balance of probabilities, the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive Registration
Is the Domain Name, 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 detrimental to the Complainant’s Rights.”
A non-exhaustive list of factors, which may be evidence that a Domain Name is an Abusive Registration, is set out in Paragraph 3 a of the Policy and reads as follows:
“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”
Paragraph 3 b of the Policy provides:
“Failure on the Respondent’s part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration”
Although the Complainant has not referred to any of the factors in Paragraph
3 of the Policy, the Expert has considered whether any of the factors are
present in this case.
There is no evidence that the Respondent registered the Domain Name for
any of the purposes set out in Paragraph 3 a i A. The Complainant and the
Respondent are in dispute as to whether monies are owing by the
Complainant to the Respondent but there is no suggestion that this issue could come within the provisions of Paragraph 3 a i A.
No doubt the retention of the Domain Name by the Respondent is blocking registration by the Complainant but that will always be the case in a dispute under the Policy. Under Paragraph 3 a i B, it is necessary to establish some deliberate intent on the part of the Respondent at the time of registration. There is no evidence of any such intent in this case. Nor is there any evidence of unfair disruption of the Complainant’s business under Paragraph 3 a i C.
With regard to paragraph 3 a ii, it is necessary to establish that the
Respondent is using the Domain Name in a way which has actually caused
confusion to Internet users. As already mentioned, the website of www.mrcomputer.co.uk is not currently available. The Expert has seen no evidence that the Respondent has ever used the Domain Name. In the circumstances, no finding can be made under this heading.
Paragraph 3 a iii and iv do not apply as there has been no suggestion that the
Respondent is engaged in a pattern of Abusive Registrations or that the
Respondent has given false contact details.
Paragraph 3 b provides that “ Failure on the Respondent’s part to use the
Domain Name for the purposes of e-mail or a web-site is not in itself evidence
that the Domain Name is an Abusive Registration”. In the view of the Expert,
non-use of the Domain Name might amount to Abusive Registration if there
are other circumstances, which, combined with non-use, would amount to
Abusive Registration. Are there any such circumstances in this case? The list of factors set out in Paragraph 3 is non-exhaustive . Therefore, the Expert has considered whether there are any other factors present in this case, which could amount to Abusive Registration. In the Response to the Complaint, the Respondent denies that the Domain Name was acquired for the purpose of a partnership between himself and Mr Jones but, at the same time, he says that he has no objection to transferring the Domain Name to Mr Jones if he fulfils his obligations under the agreement dated 28 December 1999. Essentially, this dispute is a contractual dispute between Mr Jones and the Respondent. It is the view of the Expert that disputes of this type cannot be resolved under the provisions of the Policy and that they should be referred to some other more appropriate forum.
Paragraph 4 a sets out a non-exhaustive list of factors which may be
evidence that the Domain Name is not an Abusive Registration. None of
these factors is not relevant in this case and they need not be considered in
this Decision.
In all the circumstances, the Expert cannot reach the conclusion that there is evidence of Abusive Registration as defined by the Policy in this case.
8 Decision
In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name but that the Domain Name, in the hands of the Respondent, is not an Abusive Registration, the Expert directs that the Complainant’s request to transfer the Domain Name be refused.
David King
Date: 16 October 2003