986
DRS 00986
NOMINET-UK DISPUTE RESOLUTION SERVICE
B E T W E E N :
ORDNANCE SURVEY
Complainant
- and -
SYMPLAN MAP A.G.
Respondent
_____________________________________________________
DECISION OF INDEPENDENT EXPERT
_____________________________________________________
Appointment
1. I was appointed on the 15 July 2003 to decide, under the DRS Procedure, a complaint of Abusive Registration. I am required to give my decision by the 29th July 2003.
Terminology
2. In this Decision:
· “Nominet” means Nominet-UK
· “the DRS Procedure” means Nominet’s current dispute resolution procedure
· “the Policy” means Nominet’s current dispute resolution policy
· “the Domain Name” means the domain name “mastermap.co.uk.”.
Materials
3. I have been provided with the following materials:
(1) Dispute History
(2) Complaint
(3) Response
(4) Reply
(5) Standard correspondence between Nominet UK and the parties
(6) Register entry for mastermap.co.uk.
(7) Nominet WHOIS query result for mastermapco.uk.
(8) Printout of website at mastermap.co.uk
(8) Copy of Nominet UK’s Policy and Procedure.
The Complaint
4. The Domain Name was registered by the Respondent on the 24th November 2000. The Complainant asserts that the Domain Name, in the hands of the Respondent, is an “Abusive Registration”. The Complainant seeks a transfer of the Domain Name to itself.
Response
5. The Response, which is in the form of a letter, dated the 5th June 2003, from the Chief Executive Officer, Mr Samuel Widmann, of Endoxon AG, (with which company the Respondent has, apparently “merged”) is in the following terms:-
“mastermap.co.uk
Dear Sirs
We have received Ordnance Survey’s complaint regarding the domain name mastermap.co.uk, registered by us on the 24th of November 2000.
MasterMap is our past company name by which we are still known in different parts all over the world, including the United Kingdom. Business related to this domain name is still taking place. The name is associated to our company.
We plan to launch future products which will be related to MasterMap.
If someone e.g. Ordnance Survey wants to get the rights on mastermap.co.uk we are willing to negotiate this.
Kind regards
Endoxon AG”
6. In the light of the fact that the Complainant had twice written to the Respondent (i.e. on the 7th December 2001 and 3rd February 2003) requesting the transfer of the Domain Name and offering to pay the transfer fees and agreed reasonable expenses involved in the transaction, the Response can only be construed as a denial of the Complaint.
Jurisdiction
7. Under paragraph 2a of the Policy a Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that
“i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name: and
ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration”.
8. Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.
Rights
9. Paragraph 1 of the Policy defines “Rights” as including “rights enforceable under English law”. This definition is subject to a qualification which is not material.
10. The Complainant’s contentions in relation to this issue are summarised in the Complaint (which is verified by the Complainant’s authorised representative, Ms Elizabeth May) as follows:
“… A great deal of goodwill and reputation has been built up by Ordnance Survey in the MASTERMAP name and product, … Ordnance Survey has registered MASTERMAP as a UK trade mark in classes 9, 16, 35, 41 and 42. A copy of the trade mark certificate is attached at Annex 3. … Ordnance Survey has also registered the following domain names on the dates mentioned below:- a. os-mastermap.co.uk - 1 October 2001 b. master-map.co.uk - 1 October 2001 … Accordingly it can be seen from the above that Ordnance Survey has both registered and unregistered rights in respect of the mark MASTERMAP which is identical to the first part of the Domain Name “mastermap.co.uk”, which is the subject of this complaint. … Accordingly it is submitted that the Complainant has rights in respect of a name or mark which is identical to the Domain Name.”
11. As can be seen, none of these contentions is challenged in the Response.
12. Detailed information is provided in the Complaint (together with exhibits) to support the Complainant’s assertion as to the existence of goodwill and reputation in the MASTERMAP name and product. The Complaint recites that:
“(i) … The Complainant in these proceedings is Ordnance Survey, a Government Agency that produces, maintains and owns rights in the definitive mapping base of Great Britain. It has been collating mapping data for the production and publishing of maps for more than 200 years. The Complainant’s mapping and digital data is protected by Crown Copyright. …
(ii) Ordnance Survey has a number of mapping products. One of these products is “MASTERMAP”, the latest, most definitive and accurately detailed digital map of Great Britain. MASTERMAP is not a map in the traditional sense but is a digital map framework through which precise mapping data is assessed. It is a complete reference system for Britain’s geographical data. MASTERMAP is based on the National Grid and includes detailed geographical information on all features. The data required can be selected in a range of ways by areas, layers or by theme. …
(iii) MASTERMAP was developed between 2000 and 2001 and has been marketed and available since November 2001. MASTERMAP was launched at the trade exhibition GIS 2001 in September 2001 at Earls Court London and has achieved significant success since then. Since the launch of MASTERMAP it has been a finalist in the Product of the Year category of the Information Management 2002 Awards and enabled Dumfries and Galloway Regional Council to be runner up t the same Awards in the Geographical Information Systems (GIS) category.
(iv) To date 318 customers have licensed the data, 249 of these being local authorities plus 43 government departments. Ordnance Survey have recently signed by DEFRA on behalf of the government and 144 further government departments will be using MasterMap. Other users include utility companies, Ordnance Survey licensed partners, various commercial companies and educational establishments. Revenue accrued in the last year totals £338,000. This figure only accounts for those licencees who paid for a new licence for a full year’s use of MasterMap. Most of the use for that year includes users transferred from their previous Land-Line products to MasterMap at no additional cost to them. It is anticipated that the revenue will increase dramatically once those who have transferred from Land-Line pay for their first full yearly use of MasterMap.
(v) In the financial year 1 April 2002 to 31 March 2003, £170,000 was spent on promoting the product. It was exhibited at GIS 2002, the Digital Data Show, the Address and Data Management Show, plus there were various events at ordnance Survey which ordnance Survey’s customers and licensed partners attended. Articles were placed in GI News and the Government IT Magazine and various brochures have been produced. …”
13. On the basis of the material referred to above, and the absence of any challenge to that material, I am satisfied, on the balance of probabilities that the Complainant would be able to sustain a passing-off action at common law in the name MASTERMAP.
14. The trade mark certificate referred to in paragraph 10 above shows, as the Complainant asserts, that the mark MASTERMAP was registered in the name of Ordnance Survey as of the 20th July 2001 in respect of classes 9, 16, 35, 41 and 42.
15. The Complainant’s assertions (see paragraph 10 above) as to the registration of the domain names os-mastermap.co.uk (both on the 1st October 2001) are not disputed. Such registration would, under English law, provide the Complainant with contractual rights in respect of those domain names.
16. Accordingly, I am quite satisfied that the Complainant has “Rights” in
(1) a name and a mark which is identical to the Domain Name - I refer to the common law rights and the rights resulting from the registered trade mark;
(ii) names which are similar to the Domain Name - the contractual rights in the domain names referred to paragraph 15 above.
Abusive Registration
17. 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.”
18. The policy provides:
“3. Evidence of Abusive Registration
a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is 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.
b. 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.
4 How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration
a. A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:
i. Before being informed of the Complainant’s dispute, the Respondent has:
A used or made demonstrable preparations to use the Domain Name or a Domain name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C made legitimate non-commercial or fair use of the Domain Name; or
ii. The Domain Name is generic or descriptive and the Respondent is making fair use of it.
b. Fair use may include sites operated solely in tribute to or criticism of a person or business, provided that if:
i. the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts Rights, without any addition; and
ii. the Respondent is using or intends to use the Domain Name for the purposes of a tribute or criticism site without the Complainant’s authorisation.
then the burden will shift to the Respondent to show that the Domain Name is not an Abusive Registration.”
The Respondent
19. The Domain Name was and is registered in the name of the Respondent. However, it appears that a “merger” took place between the Respondent and another Swiss company, Endoxon A.G, in 2001.
20. The Complainant’s perception is set out in the Complaint in the following terms:-
“… investigations have established that Symplan, a Swiss company, merged with a company called Endoxon AG (“Endoxon”) on 16 March 2001 and does not now exist as a separate legal entity. A printout from Endoxon’s website confirming the merger and a copy of an investigation report into Endoxon dated October 2001 can be found at Annex 4. Endoxon is a leading provider of geodata, geomarketing and air and satellite mapping services in Switzerland. Given the merger between Symplan and Endoxon, it is believed that the Domain Name is now under the control of Endoxon. … The investigation at Annex 4 and other searches have established that neither Symplan nor Endoxon have any current trade mark rights, registered or unregistered, to MASTERMAP. It is understood that Endoxon was called “Mastermap” in Switzerland for a matter of months in 2000 but rebranded to Endoxon and had no products called “Mastermap”. Symplan was the registered proprietor of other domain names such as matermap.com, mastermap.net and mastermap.org but these have since been abandoned by Symplan. There is no active web site at www.mastermap.co.uk and as far as the Complainant is aware, there never has been …”
None of this is challenged in the Response, but, as can be seen, Endoxon assert that they are still known by the name of Mastermap in parts of the world, including the UK, that business related to the Domain Name is still taking place, that the name is associated with their company, and that they plan to launch future products which will be related to “MasterMap”.
21. Although the Complainant makes the suggestion that the Respondent “does not now exist as a separate legal entity”, there is a dearth of information to support it. It is not at all clear to me how the “merger” took effect. I do not know whether a new company was formed to take over the business of the two old companies, whether one company took over the other, whether one or both of the old companies was wound up or remained in existence in “shell” form. I do not know whether, under Swiss law, two companies can “merge” into one company so that the rights and obligations of the old companies are automatically absorbed into and inherited by the new combined entity.
22. In these circumstances I propose to approach this matter on alternative bases. I will first proceed on the assumption (“Scenario 1”) that the Respondent has ceased to have any legal existence. I will then consider the position (“Scenario 2”) on the alternative basis, namely that it does still exist as a separate legal entity, whether in “shell” form, or as a subsidiary of Endoxon, or has a legal existence as a component part of a “merged” company, or in some other manner.
SCENARIO 1
23. Scenario 1 reflects the assumption that the Respondent at the present time does not still have a legal existence because
(1) the Respondent has in fact been “wound up” or liquidated so that it has in law ceased to exist; or
(2) the effect of the “merger” in Swiss law was to extinguish the Respondent’s legal existence rather than to prolong it as a component of some new combined entity.
24. If this is the position I have no doubt that the registration is Abusive. This is because the maintenance of a registration of a domain name to a non-existent company which has the effect of blocking the registration of that name to a company which has legitimate rights in the name (as the Complainant does in the present case) in my opinion is unfairly detrimental to those rights within the terms of paragraph 1 a ii of the Policy.
SCENARIO 2
The Respondent’s Case
25. The Domain Name is registered to the Respondent, Symplan. On the face of it, Symplan, and not Endoxon, is the Respondent. It is not suggested that any of Symplan’s rights have been subject to an explicit assignment to Endoxon. The Response filed by Endoxon does not assert that Symplan was ever known by the name Mastermap, that the name is associated with Symplan, that business related to this domain name is still being done by Symplan, or that future products are to be launched by Symplan.
26. The Response does not contradict the assertions in the Complaint (see paragraph 20 above) that
(1) Symplan has no current trade mark to Mastermap;
(2) There is no active web-site at www.mastermap.co.uk and never has been;
(3) Symplan was the registered proprietor of domain names very similar to the Domain Name, but that these had been abandoned.
27. Further, I have been provided with no evidence that the web-sites referred to in sub-paragraph (2) of the last paragraph were ever active, or that Symplan ever planned to use any of the web-sites in connection with a genuine offering of goods or services.
28. In the premises, I am not satisfied that Symplan had, before being informed of the Complainant’s dispute in respect of the Domain Name,
“A used or made demonstrable preparations to use the Domain Name or a Domain name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C made legitimate non-commercial or fair use of the Domain Name.”
29. There is no question of the Domain Name being “generic or descriptive” within the terms of paragraph 4 a ii of the Policy, or of the web-site being used “in tribute to or criticism” of a person or a business within the terms of Paragraph 4(b) of the Policy. Accordingly, I am of the opinion that none of the non-exhaustive list of factors which are identified in paragraph 4 of the Policy (as being capable of being evidence that the Domain Name is not an abusive registration) is established, and that the Respondent has not by reference to that paragraph demonstrated that the Registration is not abusive.
30. If Symplan does still exist as a separate legal entity, then it seems to me that Endoxon’s position is immaterial, because it is not the registrant of the Domain Name and is not the Respondent. Nevertheless, in case this view should be erroneous, or if in fact the company trading as Endoxon has succeeded to all the rights of both companies it is appropriate to consider this matter on the basis of the combined position of Symplan and Endoxon.
31. In this context it is material to refer to the Complainant’s Reply to the letter of Response (see paragraph 5 above), which includes the following observations:-
“1. While it is accepted that Mastermap is Endoxon’s past company name, it is not accepted that Endoxon is known as “Mastermap” in any country of the world, including the United Kingdom. We note that the Respondent has produced no evidence of its claim.
2. The Respondent claims that business related to the Domain Name is still taking place. This is not accepted. A search on the Endoxon website at www.endoxon.com makes no reference to “Mastermap”. The Respondent does not own any domain names that include the word “Mastermap”, other than the Domain Name under dispute. Again, it is noted that the Respondent has not produced any evidence of its claim that business related to the domain name is still taking place.
3. It is not accepted that the name “Mastermap” is associated with Endoxon and the Respondent has produced no evidence of this allegation. As far as the Complainant is aware, the Respondent has never established a website at “mastermap.co.uk”.
4. We note that the Respondent states it is to launch future products which will be “related to Mastermap”. All the Complainant’s rights are reserved in this regard. It is noted that the Respondent has not produced any evidence of its plans.”
32. The fact is that, although Endoxon has stated that it plans to launch future products “which will be related to Mastermap” (see paragraph 5 above),
(1) it has produced no evidence that it has made “demonstrable preparation to do so” within the meaning of Paragraph 4(a)(i)A of the Policy;
(2) it has produced no evidence that it had done this before being informed of the present dispute;
(3) the uncontradicted evidence before me is that Endoxon itself is not the registrant of any “mastermap” or similar domain name, and that neither it nor Symplan has ever used the web-sites referred to in paragraph 24 above;
(4) the Response does not in fact state that it intends to use the disputed web-site for the purpose of the launch or provision of future products.
33. Further, whilst it is accepted that Endoxon was known by the name Master Map, there is uncontradicted evidence that it did not market its products in this name. There is also uncontradicted evidence that neither it nor Symplan have any current trade marks in respect of the name MASTERMAP. Nevertheless, the fact that Endoxon was for a time, apparently in 2000, known as Mastermap, does provide some evidence that it was “commonly known by” that name and did make “fair use” of it, within the terms of paragraph 4 a i B and C of the Policy.
The Complainant’s Case
34. The Complainant advances a number of grounds for contending that the Domain Name in the hands of the Respondent is an Abusive Registration, namely:-
(1) The Respondent is using the Domain Name as a blocking registration against the mark in which the Complainant has rights.
(2) The Respondent is unfairly disrupting the business of the Complainant by failing to transfer the Domain Name to it. This is because MASTERMAP is one of the Complainant’s most important products and it is inevitable that customers and potential customers will search for the product on the internet or type in the Domain Name “mastermap.co.uk” in an attempt to establish further information about the product or to order the product. If a customer is faced with a blank/inactive site and can not access a website relating to the Complainant’s product, it may decide not to purchase MASTERMAP and accordingly, this will unfairly disrupt the Complainant’s business and cause confusion. It is also possible that customers and potential customers will believe that Symplan or Endoxon are licensed by the Complainant to produce/sell MASTERMAP.
(3) There is a likelihood of confusion and potential disruption to the Complainant’s business.
(4) Given the registrant of the Domain Name is listed on the WHOIS search report as “Symplan Map AG” and given that Symplan has merged with Endoxon and no longer exists as a separate entity, the respondent’s details are false and misleading.
(5) There is no legitimate reasons therefore which can account for the Respondent’s continued registration of the Domain Name save for benefiting from the registration by selling it on to a third party, or by disrupting the Complainant’s business and using it as a blocking registration. The Respondent has not used or made demonstrable preparation to use the Domain Name or a domain name which is similar to the Domain Name in connection with a genuine offering of goods or services. The Complainant has seen no evidence that the Respondent has been commonly known by the name or that it is legitimately connected with a mark which is identical or similar to the Domain Name. Nor has the Respondent made legitimate non-commercial or fair use of the Domain Name. Neither Symplan nor Endoxon have rights to the Domain Name.
(6) The Respondent has been given no permission or authority to register the Domain Name by the Complainant. The Complainant’s trade mark MASTERMAP is so well known and given the identical nature of the trade mark and the Domain Name, it is clear that the Domain Name registration takes unfair advantage of the Complainant’s rights.
35. Certain of the factors listed in paragraph 3 of the Policy as being capable of being evidence of an Abusive Registration can be disposed of summarily. Thus there is no evidence that
(1) people or businesses have actually been confused into believing that the Domain name is registered to be operated or authorised by, or otherwise connected with the Complainant – paragraph 3 a ii;
(2) either Symplan or Endoxon have been engaged in a pattern of making Abusive Registrations – paragraph 3 a iii;
(3) the contact details given by Symplan were false – paragraph 3 a iv: the complaint is not that the contact details were false when given but that they were not updated when Symplan merged with Endoxon, but a failure to update contact details is not one of the factors listed in paragraph 3 of the Policy.
36. The factors in paragraph 3 a i of the Policy merit more detailed consideration, firstly in relation to Symplan, and secondly in relation to the combined position of Symplan and Endoxon. However, before addressing the position of either company it is relevant to note paragraph 3b of the Policy (see paragraph 14 above), which provides that lack of user of a relevant web-site is not by itself evidence that a registration is Abusive.
Symplan
37. Endoxon publicity material provided by the Complainant includes the following history, under a title “A World of Geographical Data”:-
“The company was formed in 1988 under the earlier name of Symplan Map AG and rapidly established itself as the leading Swiss supplier of geo data and geo marketing services. In recognition of its success in these areas the company was awarded a prize for innovation in 1989.
Building on the expertise in cartography and information technology, Symplan Map implemented a number of highly successful internet solutions.
The merger with Endoxon AG in March 2001 has laid the foundations for an international dimension to our business and the addition of wireless capability to our technology portfolio”.
There is no reason to doubt the accuracy of this information, which together with material in other exhibits before me, shows that Symplan plainly did have a geographical data and cartographic business.
38. In the light of the fact that the Domain Name was registered by Symplan on the 24th November 2000, of the fact that the Complainant’s mark was not applied for until July 2001, of the fact that the product MASTERMAP was not launched until September 2001, and the fact that it is not alleged that Symplan had any prior knowledge of the Complainant’s plans, suggestions that Symplan registered or acquired the Domain Name either
A primarily for the purpose 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; or
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;
cannot be sustained. The more likely explanation is that Symplan originally registered the Domain Name for possible use in its own geographical data and cartographical business, even though it did not in fact use it for that purpose or “demonstrably” prepare to do so.
39. On the information available Endoxon “acquired” Symplan and the Domain Name (assuming it did) in March 2001. However, for the reasons given in paragraph 38, again the most likely explanation for Endoxon having acquired the Domain Name (if it was aware of having done so at all) was some possible use in the (now) combined geographical data and cartographic business.
40. However, the factors listed in paragraph 3 of the Policy as being capable of being evidence of an Abusive Registration are not exhaustive. I see no reason why a registration which was not abusive when it took effect may not become Abusive if it is maintained by a Respondent for purposes such as those mentioned in paragraph 3 a i of the Policy. Again, I consider that a registration may be Abusive if it is likely to confuse people or businesses even if there is no evidence that it has actually done so.
41. On the material before me:-
(1) The Complainant has well established rights in (see paragraphs 12 to 16 above) and is making active use of the name MASTERMAPPING in the course of its business.
(2) Neither Symplan nor Endoxon are trading in the name of Mastermap, or marketing any products using that or any similar name, and I consider it unlikely that that name is now associated with either of those companies, or that either company has any substantial plans to launch products using that or any similar name.
(3) No active use is being made of the web-site in issue.
(4) The Complainant received no reply to the letters in which it drew attention to its rights in the name Mastermap.
(5) In the letter of Response dated the 5th June 2003 Endoxon (which had failed to respond to the Claimant’s letters and take up the offer to pay the transfer fees and agreed reasonable expenses for the transfer of the Domain Name) indicated a willingness to negotiate. The inference which I draw from this is that such transfer might be possible at “the right price”.
42. Since, as I have found, the Domain Name is not being used for the purposes of the business of Symplan or Endoxon, I am of the opinion that the registration is being maintained
(1) primarily for the purpose of selling the same at “a premium”; and
(2) in the meantime, or in the alternative, as a blocking or disrupting mechanism.
43. On the basis of the material before me, therefore, I am satisfied, on the balance of probabilities, that the Domain Name, in the hands of Symplan or Endoxon or the combination of the two, is now an Abusive Registration.
44. Furthermore, I consider that, for the reasons given by the Complainant (see paragraph 34(2) above), the registration of the Domain Name in the hands of the Respondent or Endoxon or the combination of the two is a use of the Domain Name which is likely to confuse people or businesses into believing that that name is registered to, or operated or authorised by, or otherwise connected with the Complainant.
45. By way of summary, therefore, for the reasons given in paragraphs 42 and/or 43 above, my conclusion on the basis of this Scenario is that the Domain Name has been used in a manner which was unfairly detrimental to the Complainant’s Rights (within the terms of paragraph 1 a ii of the Policy – see paragraph 17 above) and is so being used at the present time.
Decision
46. On the basis of either Scenario, therefore, I find that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
47. The Complainant has requested the transfer of the Domain Name. On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Name should now be transferred to the Complainant, as it requests.
David Blunt Q.C.
Date: 24th July 2003