1336
Nominet UK Dispute Resolution Service
DRS 01336
Wired Sussex Limited -v- Web Optionz Limited
Decision of Independent Expert
1. Parties:
Complainant: |
Wired Sussex Limited |
Country: |
UK |
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Respondent: |
Web Optionz Limited |
Country: |
UK |
2. Disputed Domain Names:
wiredsussex.co.uk and wired-sussex.co.uk (the “Domain Names”)
3. Procedural Background:
The Complaint in this case was lodged with Nominet UK ("Nominet") on October 20, 2003, with hard copies received in full on October 21, 2003. Nominet validated the Complaint on October 24 and notified it to the Respondent, giving him 15 days within which to lodge a Response. The Respondent failed to respond on or before November 17, 2003. On November 19, 2003 Nominet wrote to the Parties confirming that it had not been possible to achieve a resolution of the dispute by informal mediation, and advising that the dispute would be referred to an independent expert for a Decision if the Complainant paid the appropriate fee by December 3, 2003. On December 2, 2003, the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").
On December 10, 2003, the undersigned, Christopher Gibson ("the Expert"), formally confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an 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 and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any)
Paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”) requires the Respondent to submit a response to Nominet. In this case no such response has been received.
Under paragraph 15b of the Procedure, 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 or the Policy.
There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.
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…, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.”
In light of the absence of a Response in this case, it is necessary for the Expert to consider whether to draw any special inferences from the Respondent’s non-compliance with paragraph 5a of the Procedure. There are many reasons why a Respondent may not provide a Response and the Procedure does not require the Expert to speculate upon these. In the view of the Expert, if the Respondent does not submit a response the principal inference that can be taken is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Names are not an Abusive Registration. This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration.
5. The Facts
The Complainant is a business development agency for new media businesses in the East and West Sussex counties. It operates from offices in Brighton in East Sussex and from a web site at www.wiredsussex.com. The Complainant has been trading under the name Wired Sussex since around 1997.
The Nominet WHOIS searches show that on December 2, 2000, the Respondent Web Optionz Limited registered the Domain Names wiredsussex.co.uk and wired‑sussex.co.uk. The Domain Names have been redirected to the site of Squared Web at www.squaredweb.com.
The Respondent did not file a Response. However, the Complainant made reference to correspondence with a Mr David Abbott who appears to be an officer of the Respondent. On April 26, 2003, Mr Abbot offered the Domain Names for sale to the Complainant, priced at £80 each. On receipt of the Complainant’s offer for one of the Domain Names www.wiredsussex.co.uk, Mr Abbott insisted on both Domain Names being sold together for a total fee of £145. On May 5, 2003, Mr Abbot threatened to remove the Domain Names from the market and “use them for one of [his] web sites”. On May 6, 2003, the Complainant made a counter offer of £130 which was accepted by Mr Abbot on the same day. The Complainant’s solicitor DMH alleges that Mr Abbott, having accepted the counter offer and cashed the resulting cheque for £130 on May 29, 2003, failed to take any of the steps necessary to effect the transfer. On August 20, 2003, DMH wrote to Mr Abbott requesting that he take the necessary steps to effect the transfer. This request was rejected by Mr Abbot on September 23, 2003. Mr Abbot claimed that the documents necessary to execute the transfer had been sent to the Complainant, but the Complainant denied ever receiving such documents from Mr Abbot. On September 23, 2003, Mr Abbot attempted to obtain an increased sum of money from the Complainant by claiming he had received a better offer from “an electrical engineer”.
6. The Parties' Contentions
Complainant
The Complainant submits that the Domain Names in dispute are identical or similar to a name or mark in which it has rights and that the Domain Names in the hands of the Respondent constitute abusive registrations.
The Complainant makes reference to several British press clippings to illustrate that the Complainant has been using the trading name Wired Sussex since around 1997 and has built-up a goodwill in that period in relation to the mark.
The Complainant asserts that the Respondent’s registrations of the Domain Names are abusive for the following reasons:
i. The Respondent registered the Domain Names primarily for the purpose of selling the Domain Names to the Complainant or another business, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly associated with acquiring or using the Domain Names. The Complainant refers to the correspondence between the Complainant and Mr David Abbott, and suggests that Mr Abbott after having agreed and obtained a sum of £130 for the transfer of the Domain Names, tried to coerce the Complainant into paying further sums of monies by threatening to sell the Domain Names to another business.
ii. Mr Abbott’s subsequent failure to transfer or cooperate in the transfer of the Domain Names effectively acted as a blocking registration against the mark in which the Complainant has rights.
iii. During the negotiation to sell the Domain Names, Mr Abbott threatened to remove the Domain Names from the market. This threat if carried out would have amounted to a blocking registration against a name or mark in which the Complainant has rights and a deliberate attempt to unfairly disrupt the business of the Complainant.
iv. The Respondent and Mr Abbott appear to have made no attempt to use the Domain Names for email or web site purposes.
The Complainant seeks the transfer of the Domain Names.
Respondent
The Respondent did not file a Response.
7. Discussion and Findings:
General
According to paragraph 2 of the Policy, in order to succeed in this Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities:
i. the Complainant has Rights (as defined in paragraph 1 of the Policy) in respect of name or mark which is identical or similar to the disputed Domain Names; and
ii. the disputed Domain Names constitute Abusive Registrations (as defined in paragraph 1 of the Policy).
Complainant's Rights
The Complainant has traded under its existing name Wired Sussex in the United Kingdom since around 1997 and will undoubtedly have acquired a trade reputation in that time. The Expert considers it reasonable to infer that the Complainant has goodwill in the name and unregistered trade mark Wired Sussex sufficient to amount an action for passing off that name or mark.
The Domain Names (wiredsussex.co.uk and wired-sussex.co.uk) comprise the word ‘wiredsussex’ or ‘wired-sussex’ and the suffix ‘.co.uk’. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to disregard the domain suffix, which is of no relevant significance and wholly generic. In addition, it is appropriate to discount the fact that the each of the Domain Names contains either a hyphen or no space between the words ‘wired’ and ‘sussex’ as this has no significance. The Expert therefore considers that the Complainant’s mark is very similar (and identical in the context of URL syntax) to the Domain Names.
Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of a name or mark, which is identical or similar to the Domain Names.
Abusive Registration
Under the second factor above, the Complainant must prove on the balance of probabilities that the disputed domain name, in the hands of the Respondent, is an 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 that the domain name is an Abusive Registration, is set out in paragraph 3(a) of the Policy. Those relevant to this case are discussed in turn below. Paragraph 4(a) of the Policy sets out how the Respondent may demonstrate in its Response that the domain name in issue is not an Abusive Registration. Although the Respondent has not responded, the Expert wishes to consider any evidence before it, including the communications between the Complainant and the Respondent or Mr Abbott referred to in the Complaint.
3(a)(i)(A): 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 . . . for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name.
Based on the evidence submitted by the Complainant, it is clear that the Respondent’s motivation in registering the Domain Names was to eventually sell or otherwise transfer the Domain Names to the Complainant or another business, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly associated with acquiring or using the Domain Names. Unlike trade mark rights, in which the holder of a registered trade mark has ownership rights as recognised by the law, the registration of a domain name does not confer “ownership” rights, as opposed to contractual rights, and does not necessarily entitle the registrant to sell the registration on to a third party. The contractual rights granted in the domain name registrations are subject to the Policy.
3(a)(i)(B): Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name as a blocking registration against a name or mark in which the Complainant has rights.
Based on the records in the case, the Expert finds that the name Wired Sussex is so unique, particular and well-known in the East and West Sussex counties that it is plainly one in which the Complainant has clear and obvious rights. The Expert also finds it highly probable that, the fact that the Complainant would legitimately desire to register the Domain Names that are very similar to its name and mark Wired Sussex, would have been obvious to the Respondent at the time of registration.
There is no evidence that the Respondent (with an address in Sussex) has been commonly known by the name nor that it is legitimately connected with a mark which is identical or similar to the Domain Names. The Expert has no difficulty in finding that the Respondent has no legitimate connection with the Wired Sussex name and that it had obtained no proper authorization from the Complainant.
The correspondence between the Complainant and Mr Abbott suggests that the Respondent after having agreed and obtained from the Complainant a sum of £130 for the transfer of the Domain Names, refused to cooperate in the transfer of the Domain Names. Mr Abbott also threatened to remove the Domain Names from the market during the negotiation to sell the Domain Names to the Complainant. Furthermore, the Respondent has not presented any evidence showing that it has made fair use of the Domain Names. The Domain Names have been redirected to the site of Squared Web at www.squaredweb.com.
Consequently, the Expert finds that, on the balance of probability, the registrations of the Domain Names were blocking registrations, and accepts that the Domain Names has been registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
The Expert therefore concludes that it has been established, on the balance of the probabilities, that the Domain Names in the hands of this Respondent must be considered Abusive Registrations.
8. Decision
The Expert finds that the Complainant has Rights in respect of a name or mark which is similar to the Domain Names and that the disputed Domain Names, in the hands of the Respondent, constitute Abusive Registrations. The Expert therefore directs that the disputed Domain Names, wiredsussex.co.uk and wired-sussex.co.uk, be transferred to the Complainant.
Christopher Gibson |
22 December 2003 |
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