Freely Available British and Irish Public Legal Information
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Lashed Ltd -v- Silk Promotions [2003] DRS 1215 (17 November 2003)
URL: http://www.bailii.org/uk/cases/DRS/2003/1215.html
Cite as: [2003] DRS 1215
[New search] [Help]
NOMINET UK DISPUTE RESOLUTION SERVICE
DRS01215
DECISION OF INDEPENDENT EXPERT
1. Parties:
Complainant : Lashed Limited
Country : GB
Respondent : Slik Promotions
Country : GB2. Domain Name
Onthelashmag.co.uk (“the Domain Name”)
3. Procedural Background
The Complaint was lodged with Nominet on 16 September 2003. Nominet validated the Complaint and notified the Respondent by letter dated 18 September 2003. The notification was sent by Nominet by post, fax, and e-mail.
There was no response from the Respondent. Mediation was therefore not possible. Nominet so informed the Complainant on the 14 October 2003. On 28 October 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 5 November 2003 Bob Elliott, the undersigned (“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 drawn to the attention of the parties, which might appear to call into question his independence or impartiality.
4. Outstanding Formal/Procedural Issues
The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”).
Paragraph 15b of the Procedure provides, inter alia, that “if, in the absence of exceptional circumstances, a Party does not comply with any time period set down in the Policy or Procedure, the Expert shall proceed to a Decision on the Complaint”.
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 Procedure, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate”.
Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent’s attention. There do not appear to the Expert to be any exceptional circumstances involved, and the Expert will therefore proceed to a Decision on the Complaint notwithstanding the absence of a response.
5. The Facts
The Complainant is Lashed Limited. In the Complaint, which was completed by a Director of the Complainant, the Complainant refers to (and provides certificates in respect of) registered trade marks for ON THE LASH dating from 2000 and 2001, registered in classes 21, 25, 32, 33, 38, and 41.
The Complaint asserts that the Complainant has been trading using the trade name “on the lash” since 2000, and has registered the domain names onthelash.com, onthelash.co.uk, onthelash.tv, lashed.com and lashed.co.uk.
The Complaint also asserts that the Complainant’s websites have achieved over 1,000 page views per day, and have delivered 6,000 “on the lash” mobile phone logos to members of the public. However, although the Expert has attempted in the course of his preparation of this Decision to access those sites, all the domain names appear to resolve to the same page, which provides the information that the On The Lash site is no longer operational, and that the site and associated assets (including the registered trade marks referred to) are for sale.
The Complaint asserts that On The Lash Magazine has recently begun providing information over the internet via the Domain Name. The Respondent (Slik Promotions) appears to have registered the Domain Name on 6 February 2003. There appears to be an active website at the Domain Name in a magazine style.
The Complainant says that it wrote to On The Lash Magazine by email on 7 September 2003 to ask them to cease using the Domain Name or to enter into commercial discussions with them for a licence or sale of the Complainant’s assets. The Complainant says that On The Lash Magazine refused to do this, by an e-mail which was apparently received by it on 8 September 2003. The correspondence has not been provided to the Expert.
6. The Parties Contentions
Complainant
The Complainant believes that the style and typeface of the onthelashmag.co.uk website is confusingly similar to its sites, and is seeking to take advantage of the goodwill in its brand. It also believes that the Domain Name is in clear breach of its registered trade mark. It says it is continuing to trade using the trade name “On The Lash” and is also in the process of selling its trade marks, domain names and other assets. The Respondent’s continued use of the Domain Name is diminishing the value of the Complainant’s assets unfairly and is in clear breach of its rights.
The Complainant apparently seeks a transfer to it of the Domain Name, but also refers to suspension.
Respondent
The Respondent has not responded.
7. Discussion and Findings
General
The Complainant must prove its case to the Expert on the balance of probabilities (2.b, Policy). It must prove 2 elements: firstly that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; secondly that the Domain Name, in the hands of the Respondent is an Abusive Registration. Both “Rights” and “Abusive Registration” are defined in paragraph 1 of the Policy.
Complainant’s Rights
“Rights” as defined in the Policy “includes, but is not limited to, rights enforceable under English law”. The Complainant has provided evidence of its registered trade marks ON THE LASH. That trade mark is obviously not identical to the Domain Name. The Domain Name contains the addition of the word “mag” (a common abbreviation for a magazine) to the Complainant’s trade mark. Does that addition mean that the trade mark and the Domain Name are not similar? The expression “on the lash” is itself relatively common parlance (although slang and perhaps limited to certain parts of the country). Although that might suggest that an Expert should be slow to find similarity between the two names, judging from the trade mark registrations, it would appear that ON THE LASH has acquired some distinctiveness in the Complainant’s hands. The test for a Complainant to establish that it has Rights in the context of the Policy is in any event a relatively low threshold. In the circumstances and given that the addition of “mag” does not itself seem to be distinctive the Expert is prepared to find that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.
Abusive Registration
It is for the Complainant to establish on the balance of probabilities that the Domain Name in the hands of the Respondent is an Abusive Registration. As has been made clear by a number of Nominet’s Experts in preceding decisions, it is not for the Expert to conduct investigations and carry out enquiries so as to assist the Complainant in that task.
In this case no extraneous evidence has been provided by the Complainant, beyond the Complaint itself and the certificates of registration referred to above. There is no evidence to support the assertion that the style and typeface of the onthelashmag.co.uk website is confusingly similar to the Complainant’s sites. There is no evidence to support the contention that the Respondent is seeking to take advantage of the goodwill in the Complainant’s brand. The bare assertion that the Domain Name is in clear breach of the Complainant’s trade mark is irrelevant for the purposes of the Policy. The “belief” that the continued use of the Domain Name is diminishing the value of the Complainant’s assets unfairly and in breach of its rights is equally unparticularised, and unsupported. Even the e-mails referred to in the Complaint have not been provided.
Nominet’s guidance to completing the on-line Complaints Form (which has been used in this instance) refers to the Complainant being required to provide the “fullest evidence possible”. The Complainant is also directed to highlight any of the non-exhaustive list of factors which may be evidence of Abusive Registration, which are set out in paragraph 3 of the Policy. The Complainant has clearly failed in both respects.
Although the Respondent has not responded, the Expert does not feel that he can treat that as any form of admission on the Respondent’s behalf. The Complaint itself says that the Respondent has refused to transfer the Domain Name.
In the end, the only point which the Expert considers the Complainant has substantiated on the balance of probabilities is the similarity between its trade mark, and the Domain Name. That might be sufficient for the purposes of establishing that the Complainant has Rights (as discussed above). It does not begin to address what is required under the Policy in order to demonstrate Abusive Registration, and as the Complainant has singularly failed in that respect, the Complaint is rejected.
8. Decision
The Expert finds that the Complainant has Rights in a name or mark which is similar to the Domain Name, however the Complainant has not made out its case that the Domain Name is an Abusive Registration in the hands of the Respondent. The Expert therefore decides that the Complaint should be rejected.
Bob Elliot
17 November 2003