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Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Right Ascension Inc v Cosgrove [2004] DRS 1619 (7 May 2004)
URL: http://www.bailii.org/uk/cases/DRS/2004/1619.html
Cite as: [2004] DRS 1619
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Nominet UK Dispute Resolution Service
DRS 01619
Right Ascension Inc. v Cosgrove
Decision of Independent Expert
1. Parties:
Complainant: Right Ascension Inc.
Country: US
Respondent: Mr. A Cosgrove
Country: US
2. Disputed Domain Name:
adultdvdempire.co.uk (the “Domain Name”)
3. Procedural Background:
The Complaint in this case was lodged with Nominet UK ("Nominet") on 11 March 2004. Nominet validated the Complaint on 16 March 2004 and notified the Respondent, giving them 15 working days within which to lodge a response. As of April 8, 2004, no response was received. On 26 April 2004, 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”).
The undersigned, Andrew Murray (the “Expert”), was formally appointed on 4 May 2004. The Expert has formally confirmed to Nominet that he knows of no reason why he cannot properly accept the invitation to act as an expert in this case and further confirmed that he knows 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):
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”).
The Expert has seen copy communications from Nominet to the Respondent and has no reason to doubt that the Respondent has been properly notified of the complaint in accordance with paragraph 2 of 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 laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint.”
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.
The lack of a response does not entitle the Complainant to a default judgement. The Complainant must still prove its case to the required degree. The Expert will evaluate the Complainant's evidence on its own merits and will draw reasonable inferences from it in accordance with paragraph 12b of the Procedure.
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.”
Generally, the absence of a Response from the Respondent does not, in the Expert’s view, entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit. In this case it seems to the Expert that the probable facts speak for themselves and that it is not necessary to draw any special inferences. The Expert finds that the probable facts asserted by the Complainant and set out in the next following section are indeed facts.
5. The Facts
The Complainant is named as right Ascension Inc.. The Complainant is a US Registered Corporation which trades under the names “dvdempire”, “adultdvdempire” and “gaydvdempire”. Since 1997, the Complainant has, through its websites dvdempire.com and adultdvdempire.com, traded worldwide, offering for sale general and adult DVDs, VHS recordings, CD-ROM recordings, electronic games and novelties.
The Nominet Whois search, which was provided to the Expert, shows that the Domain Name was registered on behalf of the Respondent on 20 January 2002. The address www.adultdvdempire.co.uk is currently being used to forward customers to a competing supplier of adult DVDs at www.adultdvdsite.co.uk.
It appears from the file that during the Dispute Resolution process the parties were in communication with each other in the hope of achieving an amicable solution. An e-mail from Mr. Hugo Kleinman, representing adultdvdsite.co.uk, dated 16 March 2004 states that the Respondent would agree to transfer the Domain Name to the Complainant, in return for payment of a £65 administration fee. This assertion cannot be confirmed as there is no independent record of the Respondent’s intentions. Whatever the position was at that date though, such a transfer failed to proceed, leading to the current action.
6. The Parties' Contentions
Complainant
The Complainant submits that the Domain Name in dispute is identical or similar to a name or mark in which it has rights and that the Domain Name in the hands of the Respondent is an Abusive Registration.
In particular the Complainant submits:
(1) The Complainant is the owner of the following US Registered Trade Marks: (a) “DVD EMPIRE” (No.2,700,216), (b) “DVD EMPIRE and design (No.2,338,706), (c) “DVDEMPIRE.COM” (No.2,779,189), (d) “ADULTDVDEMPIRE.COM” (No.2,702,451), (e) “WWW.ADULTDVDEMPIRE.COM and design (No.2,752,189) and (f) “GAYDVDEMPIRE.COM” (Nos. 2,739,960 and 2,792,510).
(2) At the time the Domain Name was registered the Respondent took unfair advantage of the “adultdvdempire.com” registered US trade mark which was detrimental to the Complainant’s rights.
(3) This registration constitutes a blocking registration as it prevents the Claimant from registering its US registered trade mark “adultdvdepire.com” in the .co.uk ccTLD.
(4) The Respondent’s registration is primarily for the purpose of unfairly disrupting the business of the Complainant. The Complainant has been doing business under the names “DVD Empire”, “dvdempire.com”, “adultdvdempire” and “adultdvedempire.com” since 1997. Through the investment of significant resources, the Complainant has built up considerable goodwill in its marks and consumers worldwide have come to associate this mark exclusively with the Complainant.
(5) The DVD Empire marks have come to identify the products and services of the Complainant and the Complainant enjoys valuable goodwill attached to the marks. The Respondent’s use of the Domain Name has the purpose of directing internet traffic to the site, “adultdvdsite.co.uk”. This has the effect of unfairly trading on the Complainants goodwill in the US trade mark “adultdvdempire.com”.
(6) Residing at the registrant address given by the Respondent in “Transglobal Networx Inc.”, a corporation registered in the State of Delaware, United States. Transglobal Networx Inc. was the respondent in another domain name dispute, involving the city of Potsdam, Germany, arbitrated under WIPO procedures, that resulted in the transfer of domain names to the city. The previous dispute, coupled with the current action, establishes that the Respondent is engaged in a pattern of making abusive registrations.
Respondent’s Response
No response was received from the Respondent.
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 Name; and
ii. the disputed domain name is an Abusive Registration (as defined in paragraph 1 of the Policy).
These matters must be proven by the Complainant, notwithstanding the failure by the Respondent to respond. The effect of the Respondent’s default is rather that, under paragraph 15(c) of the Procedure (there being no exceptional circumstances in this case) the Expert is required to draw such inferences from the Respondent’s non-compliance as he considers appropriate.
Complainant's Rights
To establish rights in a name or mark identical or similar to the disputed Domain Name, the Complainant relies upon their six US Registered trade marks set out above. In particular they rely upon registration nos. 2,702,451 and 2,752,189, “Adultdvdempire.com” and “Adultdvdempire.com and design”. The Expert notes however that the Complainant provides no specific evidence of any rights or registrations in the United Kingdom. A US registered trade mark is of limited value in the United Kingdom in legal proceedings due to the domestic nature of a trade mark, see for example Prince plc. v Prince Sports Group [1998] FSR 22. The Expert though further notes that the definition of “Rights” in paragraph 1 of the Policy defines rights as “including but not limited to rights enforceable under English Law”. Previously, a US registered trade mark has been found to fulfil this requirement in the decision in Park Hospitality Worldwide LLC v Maggie Davis DRS 01093 while Turkish trade marks were held to be sufficient in the decision in Turkcell Iletisim Hizmetleri AS v Zafer Metin Atas DRS 00286. The Expert sees no reason to deviate from these decisions and consequently, 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 Name.
Abusive Registration
Paragraph 1 of the Policy defines “Abusive Registration” as:-
“a Domain Name which either:
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
has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.”
Under paragraph 3a of the Policy is listed a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These are 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.”
In their complaint, the Complainant relies upon paragraphs 3(a)(i)(B), 3(a)(i)(C), 3(a)(ii) and 3 (a)(iii).
Paragraph 3(a)(i)(B)
In their complaint, the Complainant claims that: “this registration constitutes a blocking registration as it prevents the Claimant from registering its US registered trade mark “adultdvdepire.com” in the .co.uk ccTLD.” To succeed under paragraph 3(a)(i)(B) the complainant must demonstrate to the Expert that the registration was/is “a blocking registration against a name or mark in which the Complainant has rights” (emphasis mine). As previously discussed the Complainant relies upon six US registered trade marks to establish their rights in respect of name or mark which is identical or similar to the disputed Domain Name, in particular Nos. 2,702,451 and 2,752,189, “Adultdvdempire.com” and “Adultdvdempire.com and design”. An examination of the certificates of registration issued for these marks reveals though that No. 2,702,451, “Adultdvdempire.com” was registered on 1 April 2003, while No. 2,752,189 “Adultdvdempire.com and design” was registered on 19 August 2003. The Domain Name meanwhile was registered by the Respondent on 20 January 2002. The Complainant therefore has failed to demonstrate that the Domain Name is one in which the it had rights at that time. Further of the six trade marks produced by the Complainant only one, No.2,700,216 “DVD Empire” predates the Respondent’s registration of the Domain Name. In the Expert’s opinion this is not sufficient to demonstrate that the registration was a blocking registration under paragraph 3(a)(i)(B). The Complainant does further aver that they have traded under the adultdvdempire.com name since 1997, but they provide no evidence to support this contention, nor to suggest that at 20 January 2002 they had any goodwill in such a name in the United Kingdom. Therefore I find that the Complainant has failed to demonstrate that at 20 January 2002 they had the requisite rights in the name in terms of paragraph 3(a)(i)(B) and therefore reject their contention that this was a blocking registration.
Paragraph 3(a)(i)(C) and 3(a)(ii)
The Complainant bases their claim under these sub-paragraphs on their assertion that “The Complainant has been doing business under the names “DVD Empire”, “dvdempire.com”, “adultdvdempire” and “adultdvedempire.com” since 1997. Through the investment of significant resources, the Complainant has built up considerable goodwill in its marks and consumers worldwide have come to associate this mark exclusively with the Complainant. The DVD Empire marks have come to identify the products and services of the Complainant and the Complainant enjoys valuable goodwill attached to the marks. The Respondent’s use of the Domain Name has the purpose of directing internet traffic to the site “adultdvdsite.co.uk”. This has the effect of unfairly trading on the Complainants goodwill in the US trade mark “adultdvdempire.com””
Paragraph 3(a)(i)(C) requires that the Respondent has “registered or otherwise acquired the Domain Name; primarily for the purposes of unfairly disrupting the business of the Complainant.” The emphasis of this particular claim is the primary motive of the Respondent. This claim, like that under paragraph 3(a)(i)(B) is complicated by the nature of the rights in the name held by the Complainant at the time the name was registered. As the Complainant has provided little evidence that they traded under the name “adultdvdempire.com” at the date the Domain Name was registered it is difficult to establish that the registration was “registered primarily for the purposes of unfairly disrupting the business of the Complainant.”. Fortunately, this thorny issue need not disrupt the analysis of this Complaint as the Complainant makes a stronger claim for abusive registration under paragraph 3(a)(ii).
Paragraph 3(a)(ii) provides that a registration is abusive if there are: “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.” To support their claim under this sub-paragraph the Complainant contends that “The Respondent’s use of the Domain Name has the purpose of directing internet traffic to the site “adultdvdsite.co.uk”. This has the effect of unfairly trading on the Complainants goodwill in the US trade mark “adultdvdempire.com.”” Having examined the layout and content of the two websites (adultdvdempire.com and adultdvdsite.com) it is clear that the casual user who entered the name adultdvdsite.co.uk with the aim of accessing a UK mirror of the Complainant’s website would likely believe that the two sites are linked. There appears to be little doubt that the Respondent is using the Domain Name purely to capture potential customers of the Complainant and to redirect them to his website. This clearly demonstrates 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.” I therefore find that the Respondent’s use of the Domain Name is an abusive registration under the terms of paragraph 3(a)(ii).
Paragraph 3(a)(iii)
Finally, the Complainant claims that under paragraph 3(a)(iii) the Respondent is engaged in a pattern of making abusive registrations. This claim is based on the asserted facts that: “Residing at the registrant address given by the Respondent in “Transglobal Networx Inc”., a corporation registered in the State of Delaware, United States. Transglobal Networx Inc. was the respondent in another domain name dispute, involving the city of Potsdam, Germany, arbitrated under WIPO procedures, that resulted in the transfer of domain names to the city.” Paragraph 3(a)(iii) requires that the Complainant can demonstrate that “the Respondent is engaged in a pattern of making abusive registrations”. The Complainant’s only evidence to suggest that the Respondent in this dispute and the respondent in the dispute involving the town of Potsdam, City of Potsdam v Transglobal Networx Inc. WIPO D2002-0856 is a shared postal address. There are many reasons why two separate individuals or entities may share the same postal address and the Complainant has failed to demonstrate a clear link between the Respondent and Transglobal Networx Inc.. The Complainant has therefore failed to demonstrate that the Respondent is engaged in a pattern of abusive registration and this claim is rejected.
8. Decision:
In light of the foregoing findings, namely that the Complainant has rights in respect of a name which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, adultdevempire.co.uk, be transferred to the Complainant.
Andrew Murray
Date: 7 May 2004