1292
NOMINET DISPUTE RESOLUTION SERVICE
DRS 01292
Parasol IT Plc -v- Cevan Thompson
DECISION OF INDEPENDENT EXPERT
1. The Parties
The Complainant
1.1 The Complainant is Parasol IT Plc.
The Respondent
1.2 The Respondent is Cevan Thompson.
2. The Domain Name
2.1 The domain name in dispute is <parasol-it.co.uk> (“the Domain Name”).
3. Procedural Background
3.1 This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure (“the Procedure”) and the Nominet UK Dispute Resolution Service Policy (“the Policy”).
3.2 The Complaint entered Nominet’s system on 22 September 2003. Following suspension for a procedural reason, it was validated and sent to the Respondent on 13 November 2003. The Response was received on 8 December 2003. The Complainant made no Reply. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me on 23 February 2004 for a Decision. On that date, I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.
4. Outstanding Formal/Procedural Issues
4.1 There are no such issues in this case.
5. The Facts
5.1 The Domain Name was registered by the Respondent on 18 September 2003.
6. The Parties’ Contentions
The Complainant
6.1 The Complainant’s submissions are short and I will set them out in full:
“I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration. The respondent has registered a domain name (www.parasol-it.co.uk) for the express purpose of defaming our company simply to resolve a service issue which we are in the process of resolving. It is very close to our domain name www.parasolit.co.uk and also expressly mentions our domain in content. I also believe that the respondent will also try to exhort money for the domain name one the issue is resolved. Under the terms of the DRS policy this would clearly confuse people who may be searching for our domain.”
6.2 The Complainant seeks a transfer of the Domain Name.
The Respondent
6.3 The Response is difficult to follow. I will also set it out in full:
“To whom it may concern, the domain is not abusive as per 4cii of the DRS policy. “How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration i.Before being informed of the Complainant's dispute, the Respondent has: 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. 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: The claimant wrongly states that defamatory comments about his company were on the site - this is incorrect and I still have a copy of the site to prove this. Also the claimant suggests I would try to exhort (possibly this should have been extort??) money from his company for the transfer of the URL to his company, this is an unfounded allegation and not once did I make any such request or even hint at doing so. As proof of this I would point to the fact that the claimant asked name to take the site down, in order to settle the dispute, which I did within 24 hours, yet I have still not been paid nearly three months later. Had the claimant paid me the outstanding monies this whole incident would have been sorted, with the site down and the domain registration left to run out. However they haven’t paid and instead have made unfounded allegations against me, this was supposed to be a professional relation ship – with a professional company, which instead has reverted to name calling on behalf of Rob Crossland & Parasol IT. The site will be published again in a couple of days - outlining why I put it up in the first place, including excerpts from e-mails between myself and various employees of Parasol IT. It will also give anyone who visits my site the opportunity to leave his or her view on the situation. There will be nothing defamatory only facts, as I believe that if a company is offering a service, which is found to be wanting then this information should be made available. The claimant's own site has a link: "what people have said" - there are only complimentary statements on there, so I believe we need to see both sides of the coin for the benefit of potential customers. I work with other people who are dissatisfied with the service they receive from Parasol IT, and there are numerous complaints on newsgroups. I believe my site will give the opportunity to highlight these problems, both to Parasol themselves and any future customers.”
7. Discussion and Findings
7.1 Under paragraph 2 of the Policy:
“(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the 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.
(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.”
7.2 Under paragraph 1 of the Policy the term “Rights”:
“includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”.
7.3 The term “Abusive Registration” is defined in paragraph 1 of the Policy as referring to 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.”
7.4 Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.
Rights
7.5 The Complainant has provided little assistance with regard to the issue of Rights. It is discernible from the Complaint is that it is named Parasol IT Plc and that it owns the domain name parasolit.co.uk which resolves to a website at www.parasolit.co.uk. However, no evidence is submitted of any registered or unregistered trade mark ownership or of any reputation or goodwill in the name or mark relied upon.
7.6 It appears, however, from the website at www.parasolit.co.uk that the Complainant operates an active business under the name Parasol IT. It is a distinctive name. For those reasons, I infer that the Complainant has at least the minimal degree of reputation and goodwill in that name necessary to give rise to Rights. The Complainant’s name is identical to the Domain Name but for the formal suffix and the hyphen, which I regard as inconsequential.
7.7 The Complainant has therefore satisfied the first limb of the test under paragraph 2 of the Policy.
Abusive Registration
7.8 The Complainant first alleges that the Domain Name was registered for the express purpose of defaming the Complainant. However, since no particulars are given by the Complainant and no supporting evidence provided, I am unable to take this allegation any further.
7.9 The Complainant next alleges that the Respondent intends to try to extort money in respect of the Domain Name. However, there is no evidence that the Respondent has made any such demand or that he intends to do so. Therefore, I also dismiss this submission.
7.10 Finally, the Complainant alleges that the Domain Name will confuse people who are searching for the Complainant’s domain. In this regard, paragraph 3(a)(ii) of the Policy refers to:
“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”.
7.11 Certainly the Complainant has a prima facie case in this regard. The Respondent has registered a domain name that is to all intents and purposes identical to the Complainant’s name. But for the hyphen, it is identical to the Complainant’s own domain name which resolves to the Complainant’s website. It is a domain name that an internet user would be liable to use in the expectation of accessing the Complainant’s website.
7.12 Much of the Respondent’s Response appears to relate to a commercial dispute between himself and the Complainant and to the nature of the material that has, or has not, appeared upon the website to which the Domain Name resolves. However, he appears to rely on two of the factors mentioned in paragraph 4 of the Policy as evidence that the registration is not abusive.
7.13 First, the Respondent contends that the Domain Name is generic and descriptive and that he is making fair use of it. However, I fail to see how the Respondent can regard the name <parasol-it.co.uk> as generic or descriptive and I reject this submission.
7.14 Secondly, the Respondent claims that before being made aware of the dispute he has made legitimate non-commercial or fair use of the Domain Name, for the purposes of paragraph 4(a)(i)(C) of the Policy. That use appears to be as a “protest” site concerning the Complainant’s business practices. In these circumstances, paragraph 4(b) of the Policy applies. It states:
“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.”
7.15 I do not consider that the Respondent has discharged this burden. By its nature, the Domain Name is liable to cause internet users to believe that it links to a website owned or operated by the Complainant, which is not the case. Although anyone visiting the site would, presumably, realise it is not the Complainant’s, they would nevertheless have visited the site in the mistaken belief that it was. In my view, that “initial interest confusion” is an unfair use of the Complainant’s name or mark. There are other domain names that the Respondent could have chosen for a protest site, that could have included the Complainant’s name, without the misrepresentation that the domain name was the Complainant’s.
7.16 I therefore find 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. The registration is an Abusive Registration and the second limb of the test under paragraph 2 of the Policy is satisfied.
8. Decision
8.1 The Complainant has demonstrated on the balance of probabilities (i) that it has Rights in respect of a name or mark which is identical or similar to the Domain Name and (ii) that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Domain Name be transferred to the Complainant.
Steven A. Maier
Date: 2 March 2004