1810
Nominet UK Dispute Resolution Service
DRS 01810
Savvis UK Limited and Alif Terranson
Decision of Independent Expert
1. PARTIES:
Complainant: Savvis UK Limited
Respondent: Mr Alif Terranson
2. DOMAIN NAME:
Savvis.co.uk
3. PROCEDURAL BACKGROUND:
3.1 The Complainant has complained to Nominet.uk ("Nominet"). A hard copy of the Complaint was received in full by Nominet on 2nd June 2004. Nominet validated the Complaint and notified the Respondent of the Complaint. The Respondent then filed a Response and hard copies of this were received by Nominet on 29th June 2004. The Complainant’s Reply was received by Nominet on 8th July 2004.
3.2 Mediation has failed to settle this dispute and the Complainant paid the fee to obtain an expert decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy") on 9th July 2004.
3.3 On 15th July 2004 Nominet appointed Nick Phillilps the undersigned expert (“the Expert”) to provide an expert decision on the case. The Expert confirms that he knows of no reason why he should not accept the appointment and that he knows of no reason why his independence or impartiality might be called into question.
4. OUTSTANDING FORMAL/PROCEDURAL ISSUES:
4.1 The only potential issue of which I am aware is that the Respondent filed a short amendment to his Response shortly after the Response. This amendment is not dated and I am therefore not aware of whether it was received by Nominet within the time for filing a Response. In any event, this amendment is a very short document, it does not appear to change the Respondent’s case materially and although it is not clear to me that the Complainant has had a chance to comment on it I see no reason to exclude it from the Respondent’s Response. I therefore intend to treat this amendment as part of the Respondent’s Response.
5. THE FACTS:
5.1 The Complainant is Savvis UK Limited which is the wholly owned subsidiary of the US based Savvis Communications Corporation. Both the Complainant and its parent carry on business as suppliers of Internet Service Provider (ISP) and related IT type services.
5.2 The Respondent is an ex-employee of the Complainant’s parent company. He left the employ of the Complainant’s parent on 19th April 2004.
5.3 The Complainant was incorporated as a UK company on 26th July 1999 and the Complainant asserts that it has been operating in the UK since that date and that as a result of its activities has built up, “a substantial and extremely valuable reputation and goodwill in the Savvis trade mark in the UK”. In addition, the Complainant’s parent is the owner of a UK trade mark for the mark Savvis (this consists of a series of two marks for "Savvis" and "SAVVIS"). This was filed in August 1999 and was granted on 23rd February 2001. The Registration is for a fairly broad specification of services covering for example consultancy services and information and consultancy services in relation to communications networks in Class 38.
5.4 The Complainant’s parent owns at least the domain names, Savvis.com and Savvis.net from which it operates a website which contains information about the Savvis business globally. The Respondent asserts (and this does appear to be disputed by the Complainant) that the Domain Name was previously owned by the Complainant (or possibly by the Complainant’s parent). The Respondent acquired the Domain Name on 13th April 2004 after having registered with the SnapNames service which allows a domain name to be acquired as soon as it is not renewed by the current owner. In addition to the Domain Name the Respondent also owns the domain name savvis.info.
5.5 The Respondent is currently using the Domain Name to link to a site in which he criticises the business and the working practices of the Complainant and its parent generally. The site is very much “work in progress” and it is clear that the Respondent intends to expand the content of his site by providing more criticisms of the Complainant and its parent. Indeed the site invites people to email to the site with details about the Complainant and its parent generally which are put under the headings nepotism/cronyism/employment practices and anecdotes. The domain name savvis.info also links to this site.
5.6 The home page of the site being operated from the Domain Name has the prominent disclaimer “IF YOU ARE LOOKING FOR THE OFFICIAL SAVVIS COMMUNICATIONS CORPORATION WEBSITE, IT CAN BE FOUND AT HTTP://WWW.SAVVIS.NET. THIS SITE IS NOT OWNED, OPERATED OR AFFILIATED WITH SAVVIS COMMUNICATIONS CORPORATION".
6. THE PARTIES' CONTENTIONS:
The parties' contentions can be summarised as follows:
Complainant
6.1 In its Complaint and Reply, the Complainant made the following submissions:
6.1.1 It has both registered and unregistered rights in the name “Savvis”. It claims to have unregistered rights because it has been operating in the UK continuously since 1999, because globally it leads the industry in its field and by virtue of its substantial worldwide presence including an impressive international client base. It says that because of its operations in the UK and worldwide it has built up a substantial and extremely valuable reputation in goodwill in the "Savvis" trade mark in the UK. The Complainant’s assertion that it has registered rights relates to its parent’s UK trade mark registration for the marks “Savvis” and "SAVVIS" of which it is a licensee.
6.1.2 The Respondent's acquisition of and subsequent use of the Domain Name amounts to an Abusive Registration because the Respondent has both acquired and is using the Domain Name in a way which takes unfair advantage of and is unfairly detrimental to the Complainant's Rights. In support of this submission, the Complainant says the following:
· There is no legitimate or fair use of the Domain Name that could be made by the Respondent without confusing and misleading users or abusing or taking advantage of the Complainant's trade mark rights.
· The Domain Name consists solely of the Complainant's registered trade marks and does not contain any additional words to differentiate the Domain Name from the official website of the Complainant. This will inevitably lead to internet users mistakenly visiting the Domain Name URL when searching for the official Savvis website. In support of this proposition, the Complainant cites the previous DRS cases of Nokia Corporation v Just Phones Limited (DRS case number 00058), Hannah-Barbera Productions, Inc v Graeme Hay (DRS case number 00389), Pharmacia AB v Steve Wagstaff (DRS case number 00048) and Mistral Internet Group Limited v David Pinnegar (DRS case number 00909).
· The Respondent is engaged in a pattern of making Abusive Registrations because in addition to the Domain Name, he is also the registrant of the domain name "savvis.info".
· The Respondent has registered the Domain Name as a blocking registration against a name or mark in which the Complainant has Rights. The Complainant contends that because the "Savvis" mark is unique, particular, and certainly known to the Respondent, it would have been obvious to the Respondent that the Complainant would legitimately desire to register the Domain Name. In support of this contention, the Complainant relies on two previous DRS decision, namely Foot Anstey Sargent v Adrian Cameron (DRS case number 00160) and Bacardi and Company Limited v Strathmade Limited (DRS case number 004000).
· The Complainant denies that the Respondent has been making legitimate non-commercial and/or fair use of the Domain Name and that as the Domain Name is identical to the name in which the Complainant has rights and the Domain Name is being used for the purposes of a criticism site, then the burden of proof of showing that the Domain Name is not being used as an Abusive Registration rests with the Respondent and the Respondent has failed to discharge that burden of proof.
· The disclaimer which the Respondent uses on the website which links to the Domain Name is not sufficient to avoid confusion occurring and in particular, fails to take account of the "initial interest confusion" that will arise. In support of this contention the Complainant cites the Hannah-Barbera case.
· The link to the Complainant's website which appears on the Respondent's website serves to compound the likely confusion in the minds of users, many of whom are likely to believe that the link has been incorporated with the Complainant's permission even if other pages of the website say otherwise.
· Part of the Respondent's home page links to a page offering to "post whatever you send us" with the clear statement that anonymously emailed postings are preferred. Reference is made to avoiding detection by law enforcement agencies.
Respondent
6.2 In his Response, the Respondent made the following submissions;
6.2.1 The Respondent's acquisition and subsequent use of the Domain Name is not an Abusive Registration because the Respondent is and has always made legitimate non-commercial and/or fair use of the Domain Name (namely as a criticism site).
6.2.2 The Complainant has at all times during this dispute, including at all times previous to the filing of this Complaint, been aware of the circumstances surrounding the use of the Domain Name.
6.2.3 The Complainant's submission that the Respondent's use of the Domain Name will confuse parties who are attempting to contact the company is wholly manufactured as the Respondent's website has at all times carried a prominent disclaimer on its homepage which makes it clear that the website is in no way connected with Savvis Communications Corporation.
6.2.4 The Complainant was previously the owner of the Domain Name. In spite of repeated reminders from Nominet, it declined to renew the name in question for almost a year. It was only after this name was finally released by Nominet that the Respondent was able to acquire the Domain Name.
6.2.5 The Complainant has been aware of the exact nature of the website which the Respondent links to the Domain Name well before the filing of this Complaint which the Respondent contends has been filed completely in bad faith and with malice.
7. DISCUSSIONS AND FINDINGS
General
Under clause 2 of the DRS Policy ("the Policy") the Complainant is required to show, on the balance of probabilities that:
7.1 It has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
7.2 The Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
7.3 The first question I must answer is therefore whether the Complainant has proved on the balance of probabilities that it owns Rights in a name or mark that is identical or similar to the Domain Name.
7.4 The Policy defines Rights as including but not being limited to "… rights enforceable under English law…". This has always been treated in decisions under Nominet's DRS as a test with a low threshold to overcome and I think that must be the correct approach.
7.5 It is beyond dispute that the Complainant's parent company holds a UK trade mark registration for the trade marks "Savvis" and "SAVVIS". The Complainant also asserts that as the wholly owned subsidiary of its parent, Savvis Communications Corporation, that it is a licensee of the UK trade mark. This seems entirely logical and sensible to me and I have no difficulty in accepting it.
7.6 The Complainant also asserts that it has unregistered rights in the name Savvis by virtue of the use which it has made of this name. The Complainant's case on this point never really gets above the level of bare assertion and there is a lack of evidence to show the Complainant's use and therefore the reputation and goodwill which it has built up in the name Savvis. I have however looked briefly at the Complainant's parent's website at both www.savvis.com and www.savvis.net and it would certainly appear from that website that the Complainant's parent at least, is in a substantial way of business using the name Savvis and also that its operations extend globally and include the UK.
7.7 Accordingly, I am satisfied that the Complainant, by virtue both of being a licensee under its parent company's UK registered trade mark and also because of the use which it appears to have made of the name Savvis, has Rights in the name "Savvis".
7.8 Next, I must satisfy myself that the name in which I have found that the Complainant has Rights is identical or similar to the Domain Name ignoring the first and second level suffixes. Having held the name in which the Complainant has rights, is the name "Savvis", this is clearly identical to the Domain Name and I need go no further on this point.
Abusive Registration
7.9 Having concluded that the Complainant has Rights in a name which is identical to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration. An Abusive Registration is defined in 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 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.
7.10 This definition allows me to consider whether a Domain Name constitutes an Abusive Registration at any time and not, for example, just at the time of registration/acquisition.
7.11 As I have set out above, the burden of proof is generally on the Complainant to make out the essential elements of its Complaint. However, paragraph 4(b) of the Policy sets out a situation in which the burden of proof is reversed.
"(i) [If] 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."
7.12 I have already decided that the Complainant has Rights in a name which is identical to the Domain Name. It is also common ground between the parties that the Respondent uses the Domain Name for the purposes of a criticism site and that this is done without the Complainant's authorisation. For the avoidance of doubt, even if it was not accepted by the Respondent that his use of the Domain Name was either as a criticism site or without the Complainant's authorisation (and there may be an argument which I shall deal with later that the Complainant in some way acquiesced to the Respondent’s use), I would also have reached the same conclusion simply by looking at the Respondent's website which is self evidently a criticism site. It is also self-evident that the Respondent's use of the Domain Name is without the Complainant's permission (but see later for a discussion on this).
7.13 This is therefore a case which paragraph 4(b) of the DRS Policy applies. In other words, this is a case in which the burden of proof is reversed and it is for the Respondent to demonstrate that its use of the Domain Name is not an Abusive Registration.
7.14 I should make it clear that reversing the burden of proof in this way does not automatically mean that the registration is an Abusive Registration but it raises a presumption that the registration an Abusive Registration which is open for the Respondent to disprove. Therefore, in deciding whether the Domain Name is an Abusive Registration, I intend to follow the approach which was set out by the Appeal Panel in the case of Hannah-Barbera Productions Inc v Graeme Hay (DRS case number 00389):
"…the Panel is of the view that the sensible way of addressing the question as to whether or not the Domain Name is an Abusive Registration is to start by evaluating the Domain Name and reviewing the use made of it as a whole."
7.15 Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may evidence that a domain name is an Abusive Registration. It is worthwhile setting out paragraph 3 of the Policy in full:
"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 Respondents 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.
7.16 Paragraph 4 of the Policy provides a non-exhaustive list of the factors which may evidence that a domain name is not an Abusive Registration. Again, it is well worth setting out paragraph 4 of the Policy in full:
"3. 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 or 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.
7.17 The Domain Name is identical to the name in which the Complainant has Rights. Further, the Domain Name is used by the Respondent in a trade mark sense rather than in a purely descriptive sense to refer to the Complainant's business (and/or that of its parent company). It is of course completely open to the Respondent to set up a website which criticises the Complainant (subject of course to the content not offending the laws of defamation, confidentiality etc, which are beyond the scope of this decision to comment on). It is however, not necessary for the Respondent to use the exact same name in which the Complainant has Rights and he could have chosen any combination of names e.g. "ihatesavvis.co.uk" or "savvissucks.co.uk". Moreover, by selecting the identical name to which the Complainant has Rights, it is inevitable that people will visit the Respondent's site, believing it to be in some way connected with the Complainant. Indeed, I would imagine that it would be fairly usual for anyone who was looking for the official website of the Complainant in the UK to think that it may well be at www.savvis.co.uk and therefore to simply type this domain name into their browser without carrying out a search.
7.18 The Appeal Panel in the Hannah-Barbara case reached a similar conclusion and said:
"…in the context of a tribute site, the vice is in selecting a domain name, which is not ones own name, but which to one's knowledge is identical to the name of another, which one has selected precisely because it is the name of that other and for a purpose which is directly related to that other. For a tribute or criticism site, it is not necessary to select the precise name of the person to whom one wishes to pay tribute or criticise."
Similar conclusions were also reached in the Pharmacia and Mistral cases referred to in the Complainant's Reply, which I shall not refer to here in any further detail. Indeed, the purpose of clause 4 (b) of the Policy is, clearly to dissuade the use of domain names which are identical to the name in which the company being praised or criticised has Rights. As was said in the Hannah-Barbara case:
"… the Panel is unanimous in the view that the purpose of 4(b) is to dissuade people from taking the name of another without adornment and without permission and with a view to making direct reference to that person whether for tribute or for criticism."
7.19 The Respondent says that its acquisition and use of the Domain Name does not amount to an Abusive Registration for a number of reasons. These can be summarised as follows:
· The Respondent's website carries a prominent disclaimer on its home page, which makes it clear that the website is in no way connected with Savvis Communications Corporation;
· The Respondent is and has always made legitimate non-commercial and/or fair use of the Domain Name;
· The Complainant has always been aware of the exact nature of the website run by the Respondent;
· The Complainant effectively allowed the Domain Name to lapse without renewing it.
Looking at each of these points in turn:
The Disclaimer
7.20 I am aware that in the Pharmacia case relied on by the Complainant, the respondent's argument that his use of a disclaimer on the homepage of a criticism site which was linked to the domain name in issue in that case failed because the disclaimer was in small print, included a link to the real website of Pharmacia and because the way that the homepage was set up meant that the reader would have to read it very carefully, to tell that it was not connected to Pharmacia itself.
7.21 I do not think that these criticisms can be levelled at the disclaimer which the Respondent uses. True, the disclaimer does carry a link to the Complainant parent's true website, but it is plain from this disclaimer that the Respondent's website is nothing at all to do with the Complainant or its parent and further, it is difficult to see how this disclaimer could be made any more prominent. I therefore think it likely that once people visit the Respondent's site, they will read the disclaimer and will know that the site is not connected with the Complainant or its parent.
7.22 I am however concerned that people are likely to visit the Respondent's website, thinking that it is the official website of the Complainant or its parent. This is the phenomenon known as, "initial interest confusion", which is referred to by the Appeal Panel in the Hannah-Barbara case meaning that regardless of the disclaimer and its effectiveness, the use by the Respondent of a name which is identical to the name in which the Complainant has Rights will inevitably attract visitors to the Respondent's site on the basis that they are visiting the official site of the Complainant. This will lead to the Respondent gaining unfair advantage because he will be using the Complainant's Rights to attract visitors to his site. I should stress that when I say "unfair advantage", I am not talking about financial gain in any sense, I simply mean that the Respondent will be increasing the amount of traffic to his site to the detriment of the Complainant’s Rights.
Legitimate Non-Commercial and/or Fair Use
7.23 I accept that the Respondent's Domain Name has not been commercially used in the sense that the Respondent is clearly not seeking to make any money out of it and is simply airing a grievance against the Complainant and its parent company. However, by adopting a name which is identical to the name in which the Complainant has Rights, then by using that name to refer to the Complainant and not in a descriptive or non-trade mark sense, the Respondent's use of the Domain Name is not fair and the Respondent is not making fair use of it, regardless of any commercial intent.
Complainant's Knowledge or Acquiescence
7.24 The Respondent appears to be arguing that because the Complainant has been aware of the content of the Respondent's site prior to the bringing of this Complaint, that the Complainant has in some way consented to it. I have seen no evidence that this consent has been given expressly for example in a letter or an email, and therefore I assume that what the Respondent is arguing is that there has been some form of implied consent, estoppel or acquiescence by the Complainant. Given that the Respondent only acquired the Domain Name on 13th April 2004 and therefore presumably has only been operating his website from that date at the very earliest, it is difficult to see how this argument can succeed, particularly in the absence of any evidence that the Complainant has in any way encouraged the Respondent's activities. I must therefore reject this contention on behalf of the Respondent.
Complainant's Abandonment of the Domain Name
7.25 I have some sympathy with the Respondent here. The Complainant previously owned the Domain Name and for reasons which are not clear, allowed it to lapse. In these circumstances, I can well see that the Respondent would believe that he was entitled to acquire the Domain Name. As I have said however, I do not know why the Complainant allowed this Domain Name to lapse and it could easily have been because of an administrative error on the part of the Complainant rather than the Complainant taking a positive decision not to renew this Domain Name. In these circumstances, I cannot accept the Respondent's argument and I do not think that this rebuts the presumption that the Domain Name is an Abusive Registration.
7.26 In conclusion therefore, I find that the Domain Name is an Abusive Registration because its use by the Respondent to link to a criticism site takes unfair advantage of and is unfairly detrimental to the Complainant's Rights in the identical name.
7.27 The Complainant makes two other submissions which I have not expressly dealt with above. These submissions are that the Domain Name has been registered as a blocking registration and that the Respondent is engaged in a pattern of making abusive registrations. For completeness, I will deal with these two points very briefly below.
Blocking Registration
7.28 As well as the Bacardi Breezer and the Foot Anstey Sargent cases which the Complainant refers to in support of its allegation that the Domain Name is a blocking registration, I am aware of two other previous DRS cases which specifically discuss the requirements for a Domain Name to be a blocking registration within the meaning of the Policy. These decisions are Thomas Cook UK Limited v Whitley Bay Uncovered (DRS case number 00583) and Peoplesoft UK Limited v KL Cane (DRS case number 00120). There is some disagreement in these cases as to what the test for a "blocking registration" should be. I do not at this time wish to add any further to as this debate, particularly because I do not need to in reaching a decision on this Complaint. It does however seems to be that a common feature of all four cases on this issue is that the registration must be designed to prevent a legitimate owner of Rights in a name from registering and using the associated domain name.
7.29 In both the Bacardi Breezer and the Foot Anstey Sergent cases which the Complainant cites, the expert was prepared to make this finding because it would have been obvious to the respondent that the complainant would have legitimately desired to register the domain name. This was no doubt helped in both cases because the respective respondents had failed subsequently to make any use of the domain names in issue. In other words, it was easier to make a finding that the domain names were registered as blocking registrations when no use had been made of them other than to prevent a use by the complainants in each case.
7.30 Here, the situation is different in two important respects. Firstly, the Respondent has used the Domain Name as a criticism site. This is not to say that mere usage of a domain name will necessarily mean that the domain name has not been used or registered as a blocking registration, but I do think that it would tend to lead against such a finding, particularly, as here, in the absence of any evidence that this was the Respondent's intention in acquiring or maintaining the Domain Name.
7.31 Secondly, the Complainant has previously owned the Domain Name. This is rather double edged. It could be said that the Respondent has simply been opportunistic in waiting for the Domain Name to lapse and then by registering it to block the Complainant recovering it. Alternatively, it could equally be said that the Respondent cannot be accused of making a blocking registration given that it is a Domain Name which the Complainant has at one point held and has, for one reason or another, allowed to lapse. Either way, I am not satisfied that the Respondent has acquired this Domain Name as a "blocking registration".
Pattern of Abusive Registrations
7.32 The Respondent alleges that because the Respondent is also the registrant of savvis.info that he is engaged in a pattern of making Abusive Registrations. I am not satisfied that this is the case for two main reasons. Firstly, the savvis.info registration does not fall under Nominet's jurisdiction and therefore cannot, strictly speaking, be an Abusive Registration, although I may have been prepared to accept an adverse finding under ICANN's UDRP as being akin to a finding of an Abusive Registration in this sense. To my knowledge there has been no such finding and therefore I do not think that I can say that the Respondent's registration of “savvis.info” is an Abusive Registration or the UDRP equivalent.
7.33 Secondly, I have the gravest of doubts as to whether only two Abusive Registrations can ever amount to a pattern, although I would not discount that possibility completely and this would turn on the evidence of every particular case. In this case, I would certainly be looking for a history of rather more than two Abusive Registrations to make a finding that the Respondent was involved in a pattern of making Abusive Registrations.
8. DECISION
In the circumstances, I find that the Complainant has Rights in a name or mark which is identical to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration. I therefore decide that the Domain Name "savvis.co.uk" should be transferred to the Complainant.
Nick Phillips
Date: 23rd July 2004