Nominet UK Dispute Resolution Service

You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> City ID Ltd -v- Icon MediaLab Ltd [2003] DRS 692 (18 February 2003)
URL: http://www.bailii.org/uk/cases/DRS/2003/692.html
Cite as: [2003] DRS 692

[New search] [Help]

DRS 00692

CITY ID LIMITED v. ICON MEDIALAB LIMITED

Decision of Independent Expert

1. Parties:

Complainant: City ID Limited
Country: GB

Respondent: Icon MediaLab Limited
Country: GB

2. Domain Name:

cityid.co.uk (“the Domain Name”)

3. Procedural Background:

The complaint was first received by Nominet on 1 November, 2002 with hardcopies subsequently being received in full on 18 November, 2002. The Respondent was initially identified as “Meta Union Design” with a contact identified as a “Mr. Tim Fendley”. Nominet first validated the complaint on that basis and informed Mr. Fendley, as the designated contact for Meta Union Design, by letter on 21 November, 2002, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 12 December, 2002) to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 16 December, 2002, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly paid on 23 December, 2002.

On 24 December, 2002, Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as Expert on 2 January, 2003.

On reviewing the case, the Expert raised concerns regarding whether or not the initially designated Respondent could properly be considered as the appropriate Respondent in the light of the submissions made in the Complaint itself (see further discussion below). On 3 January, 2003, therefore, the Expert raised these concerns with Nominet and, consequently, on 7 January, 2003 Nominet formally requested clarification and confirmation from the Complainant regarding whom it believed to have current title over the Domain Name. The Complainant responded on 9 January, 2003 expressing the belief that a company named Icon MediaLab Limited, as apparent successor in business to Meta Union Design [Limited], would now be the relevant Respondent.

As a result of this change, it was necessary for Nominet to formally re-serve the Complaint on Icon MediaLab Limited, which was done via its registered company address on 15 January, 2003, with a fresh deadline of 5 February, 2003 set for their response. Again, no response was forthcoming.

The Dispute was therefore referred back to the Expert for a decision on 6 February, 2003.

4. Outstanding Formal/Procedural Issues (if any):

None.

5. The Facts:

According to Nominet’s Register entry for the domain name cityid.co.uk, the domain was first registered on 31 August, 1999 by Nildram on behalf of a Registrant then identified as “MetaUnion Design”, but whose contact details were entered, somewhat inconsistently, as:
Contact: M D Rawlinson
Trading Name: Michael Rawlinson City ID Limited
with the same address details as the Complainant.

6. The Parties’ Contentions:

Complainant:

The Complainant has otherwise asserted that:

1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).
In support of these assertions, the Complaint comprises the following additional submissions:

“In August 1999 City ID Limited instructed Tim Fendley of Meta Union Design to register the Domain name cityid.co.uk for City ID Limited. The Domain was registered By: Nildram and Registered for MetaUnion Design, instead of City ID Limited. This was an error that only came to our attention in August 2001. MetaUnion Design was taken over by Icon Media Lab registered office situated at Martha's Buildings Classic House, 180 Old Street, London. EC1V 9BP on 27/11/2000. Since August 2001 we have been attempting to liaise with senior personnel at Icon Media Lab to initiate the transfer of the domain name to City ID Limited. We have been unable to succeed in getting the co-operation of Icon Media Lab UK to complete the necessary transfer declarations and letters. In August 2002, becoming increasingly frustrated with our inability to get a response from Icon Media Lab we appointed a Solicitor to act on our behalf. The solicitor wrote to Icon Media Lab whose registered office was now recorded as: Smith Williamson, Prospect House, 2 Athenaeum Road Whetstone, London N20 9YU. in Companies House records. Smith & Williamson are a company of Chartered accountants, they forwarded our Solicitors letter to Icon Media Labs head office in the Netherlands on 12 September 2002, as they stated that there were no longer any staff at Icon Media Lab Ltd in the UK. Despite a follow up telephone call from our solicitor to Smith & Williamson we have received no communication from Icon Media Lab regarding our desire to transfer the registration of cityid.co.uk to City ID Limited. The solicitor who acted on our behalf; Andrew Gregg, of Gregg Latchams Quinn, 6 Queen Square, Bristol. BS1 4JE., has suggested that we use the Nominet Dispute Resolution Service to resolve our situation. We are not clear whether City ID Ltd or Meta Union Design paid for the actual registration, however, we have been paying Nildram for the maintenance of this domain name since its registration and stated at the time of registration that we would incur all costs of registration and maintenance fees for the Domain name. We have on our records e-mail correspondence which details our initial request to Meta Union Design to register cityid.co.uk to City ID Limited. Furthermore, we trust that Tim Fendley formerly a Director of Meta Union Design would verify our claim and testify that City ID requested registration of cityid.co.uk to City ID Limited, and that the subsequent registration of cityid.co.uk to Meta Union Design was an error on the part of Meta Union Design. Tim Fendley may be contacted on Mobile number: 07768 780916. We would be very grateful if you would investigate this for us, and inform us of the outcome.”

The Complainant also stated expressly that it was not submitting any additional documentation in support of the Complaint.

Initial Respondent:

The Respondent (then initially identified as Meta Union Design, with Mr. Fendley as designated contact) made no Response to the Complaint.

Initial Review:

Given the specific references in the Complaint, to Mr. Fendley as “formerly a Director of Meta Union Design”, and to the takeover of Meta Union Design’s business by Icon MediaLab [Limited], the Expert was not satisfied that the Respondent had been properly identified in the original Complaint. Further clarification and confirmation was therefore sought from Nominet and the Complainant in the following terms:

[T]he Complainant needs to clarify whom it considers to be the appropriate Respondent and the basis for that consideration. Presently, the Complainant has specified as respondent MetaUnion Design in the person of Mr. T. Fendley. […] However, in the Complaint, it is specifically stated that Mr. Fendley is "formerly a Director" of MetaUnion Design, which suggests that Mr. Fendley may no longer have any relevant authority with respect to the domain name at issue and may therefore not be properly appropriate as Respondent.

The Complainant further states in the Complaint that "MetaUnion Design was taken over by Icon Media Lab" [sic] and goes on to identify a registered office address c/o Smith and Williamson, […], which Companies House records show is for the incorporated entity ICON MEDIALAB LIMITED. The Companies House record also shows that ICON MEDIALAB LIMITED was formerly named METAUNION DESIGN LIMITED (from 7/12/1994 to 27/11/2000). The Domain name at issue is presently recorded in the name of "MetaUnion Design", which may or may not have been intended to refer to the incorporated entity.

Nominet was requested to ask the Complainant to clarify (and explain) whether it considered that "MetaUnion Design" was distinct from MetaUnion Design LIMITED (now Icon MediaLab Limited) and, if so, on what basis Mr Fendley as an ex-Director was considered appropriate as Respondent or if, in fact, "MetaUnion Design" and MetaUnion Design Limited (now Icon MediaLab Limited) were one and the same entity, so that Icon MediaLab Limited ought properly to be the designated Respondent.

Complainant’s Supplementary Submission:

The Complainant responded:

“It would appear that MetaUnion Design and MetaUnion Design Limited are one and the same entity. Whilst we have no formal clarification from Icon MediaLab (as they have failed to respond to letters sent on our behalf by a solicitor), we feel that Icon MediaLab Limited should now have title over the domain name.

We are happy for Nominet to re-serve the complaint directly on Icon MediaLab Limitedat their registered address for the avoidance of doubt. We realise that this will necessitate a delay in the process to allow time for Icon MediaLab Limited to respond, but believe that this does seem necessary. […].

Accordingly, the Complaint was duly re-served, as noted above, with Icon MediaLab Limited as formal Respondent

Respondent:

No response was received from Icon MediaLab Limited as Respondent.

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 in this case has asserted that the domain name is “identical or similar to a name or mark” in which it has rights.

However, it has not explicitly identified what those rights might be. In particular, it has not identified nor provided any supporting documentary evidence of any relevant registered trade mark rights, nor has it claimed or provided any evidence of any common law rights established through use.

Nevertheless, it is clear that it does at least have a company name registration as City ID Limited (apparently dating from 1998). Such a registration would certainly provide it with some relevant legal and contractual rights (including, perhaps not insignificantly, the exclusive right to register the domain name cityid.ltd.uk with Nominet if desired).

The company registration predates the registration of the Domain Name at issue by the Respondent. The Respondent has not challenged the Complainant’s assertion regarding the Complainants rights. Additionally, as noted in the “Facts” above, the contact details for the Domain Name show that the Complainant’s name is directly relevant.

Accordingly, for the purposes of the Policy, the Expert is prepared to conclude that the Complainant does have Rights in this case in respect of a name or mark, which is similar to the Domain Name.

Abusive Registration

The Complainant also has to show that the Domain Name is 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.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy.

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.

a. 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.

The problem for the Complainant is that the registration appears more accurately to be characterised as a simple mistake rather than an abuse. The Complainant itself refers to the registration as being “an error that only came to our attention in August 2001”, and as “an error on the part of Meta Union Design” [Expert’s emphasis].

In the Expert’s view, it would go beyond the intent and the wording of the Dispute Resolution Policy to stretch the meaning of “Abusive” to encompass the result of what appears to be no more than an unintended, albeit unfortunate (for the Complainant), error. For a registration to be “Abusive”, there surely must of necessity be an element of intentional wrong or a manifest deceit. This does not mean that an enquiry into the original intent, or state of mind, of the registrant is required. In some cases, that a registration is abusive will be apparent simply from the facts, for example, where a famous mark is registered by a party with no connection with the rightful owner of the mark concerned.

However, that is not the situation in the present case. The Complainant acknowledges that it instructed Meta Union design to register the Domain Name. The evidence shows that Meta Union Design did so and provided the Complainant’s details as the relevant contact details for the Registrant. Unfortunately, through an “error” (and, owing to lack of any supporting documentary or other evidence, it is not entirely clear whether the “error” was actually made by Meta Union Design in the instructions to Nildram, or perhaps by Nildram in its interpretation of those instructions) the Domain Name Registrant was recorded as Meta Union Design instead of City ID Limited.

It is conceivable, of course, that Meta Union Design might have deliberately misrepresented the position to have itself recorded as Registrant so as to maintain some unfair leverage over City ID Limited as its client. That might have sufficed to qualify the registration as “Abusive”. However, there is no evidence of any such malign intent and no suggestion to that effect. Rather, the Complainant asserts that Mr. Fendley, who appears to have been the Director responsible for the work done by Meta Union Design at the time, would support the Complainant’s claim that the mis-registration was due to “an error”. It seems improbable, however, that Mr. Fendley would be willing to go so far as to characterise that mistake as an “Abusive” registration, particularly when the Complainant is apparently itself uncertain about what contractual terms were express or implied between the parties at the time the relevant work was commissioned.

However, as the Complainant did not submit any supporting documentation, whether by way of a witness statement from Mr. Fendley or otherwise, what might or might not have been said remains mere speculation.

Unfortunately, the Complainant also appears not to have understood that the basic legal maxim “he who asserts must prove” applies to the DRS, so that it is the Complainant’s responsibility, and not Nominet’s or the Expert’s to provide supporting evidence or conduct any further investigations that may be needed to verify its claims.

As it stands, therefore, the Expert can only conclude that the registration in the name of Meta Union Design was the result of an essentially inadvertent oversight at the time.

Thus it cannot reasonably be said that the Domain Name “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”; at that time there is no evidence that there was any unfair advantage or detriment. MetaUnion Design was evidently working on the Complainant’s behalf and, had the parties been aware of the “error”, the expectation would no doubt have been that MetaUnion Design would have corrected any mistake in due course in completing its contractual obligations, such as they may have been. Nor is there any claim or evidence that the Domain Name “has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”

Consequently, the Expert is unable to find that the registration qualifies as an “Abusive Registration” for the purposes of the Policy.

The Expert does not reach this view without some reluctance and some sympathy with the Complainant, as it appears to have been the victim both of incompetence and an apparent contractual default on the part of Meta Union Design, which have subsequently been compounded by a rude lack of any remedial effort whatever by Icon MediaLab Limited as successors in business. However, having regard to all the circumstances, in this case the Expert would suggest that it would appear more appropriate for a remedy to be sought in ordinary contract law rather than through the DRS.

8. Decision:

Having concluded that the Registration cannot be characterised as an Abusive Registration for the purposes of the Policy, notwithstanding a recognition that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name, the Expert denies the Complaint and orders that no action should be taken regarding the request for transfer.

Keith Gymer

Date: 18 February 2003