Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2004/1831.html
Cite as: [2004] DRS 1831

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Nominet UK Dispute Resolution Service

DRS Number 01831

Société Française de Radiotéléphonie -v- Redpoint Consulting Ltd

Decision of Independent Expert

1. Parties:

Complainant: Société Française de Radiotéléphonie

Country: France

Respondent: Robin Szemeti

Country: GB

2. Domain Name:

cegetel.co.uk

3. Procedural Background:

The complaint was lodged with Nominet electronically on 15 June 2004 and in hard copy on 23 June. On 29 June Nominet sent details of the complaint to the Respondent asking for a reply by 21 July. A response was received electronically on 20 July and in hard copy on 21 July. This response was forwarded to the Complainant, with an invitation to comment by 28 July on any new issues raised in the response. The Complainant did not reply. An Informal Mediation stage followed, from 4 to 18 August. In accordance with Nominet's usual practice I have no information on what happened during the mediation, but the outcome was failure to reach agreement.

The Complainant decided to refer the matter for an expert decision and on 3 September Nominet confirmed that it had received the required fee. On the same day this expert, Claire Milne, confirmed that she had no connection with either of the parties. She was then appointed to decide the dispute.

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

None.

5. The Facts:

The name Cegetel is best known as representing a major force in the French telecommunications market, being the pioneering alternative operator for both fixed and mobile telephony. Cegetel was set up in 1996, and has been used as a trading name ever since (fixed services are offered on its website www.cegetel.com), although in December 2003 the company changed its name to that of its former mobile subsidiary, Société Française de Radiotéléphonie (SFR). The Complainant has supplied evidence that it is proprietor of numerous trademark registrations throughout the world and the European Union covering the name Cegetel. These registrations date from 1997-8 and relate to a range of communications product and service classes.

On 6 November 2002 the Domain Name cegetel.co.uk was registered to the Respondent, who is based in Worcestershire and is active in software development (described on his website www.redpoint.org.uk) and also in the manufacture of metal-cutting machinery (described on his website www.rapidcut.co.uk).

On 10 October 2003 the legal office Dreyfus, acting on behalf of Cegetel, wrote to the Respondent, saying that it was aware of his registration of the Domain Name (which appeared not to be in active use at the time), asserting rights in the name, and undertaking not to sue the Respondent if he agreed to an amicable transfer of the name. During the next few weeks there was some correspondence and negotiation between the parties, which has been supplied to me as part of the Complainant's evidence and to which I will return below. However, no amicable transfer took place. The next development of which I am aware is the current complaint in June 2004.

6. The Parties' Contentions:

Complainant:

Rights in the name

The Complainant provides copies of European Community trademark registrations for the name Cegetel, and UK company registrations for Cegetel Holdings Ltd (incorporated in 1997) and Cegetel International Limited (incorporated in 1999). In addition it points to continuing active trading using the name Cegetel, as evidenced by the website at www.cegetel.com.

Abusive registration

The Complainant asserts that the Respondent:

a) has no legitimate claim to use the Name, as he lacks any registered trademark using the name Cegetel, and has no connection with any identical or similar mark.

b) has been fully aware of the Complainant's Rights, at least since their exchange of correspondence in late 2003; and has recognised these Rights by agreeing to a transfer and cutting the link to the registrar's website.

c) cannot have searched thoroughly at the time of registration, or he would have found the UK company registrations and European trademarks referred to above.

Furthermore, the name Cegetel is very well known in the UK because the British company Vodafone is a major shareholder of the French company.

The Complainant cites the Respondent's willingness to sell the Domain Name (first for £5000 and later for €3000) as evidence of abusive registration under the Policy 3 a (i) A ("...the Respondent has registered or otherwise acquired the Domain Name ..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").

The Complainant also asserts that the registration is a blocking registration, because as an identical name "it is likely to be the initial guess of an Internet user seeking the Complainant's website" (quoted from Nominet DRS 00160).

Respondent:

The Respondent argues that his registration of the name was not abusive, mainly as allowed for in 4 a (i) A of the Policy (use or demonstrable preparations for use in connection with a genuine offering of goods or services):

"The name cegetel.co.uk was registered for use in connection with a product we are developing in relation to our CNC manufacturing business (specifically a torch-height controller for use on various 'plasma' cutting systems). Development has not been as quick as we had hoped and as such the product is not yet ready for market....We can show photographs of the product we are developing to use with the name."

Although no use of the URL www.cegetel.co.uk was apparent when the Complainant visited it, in fact ftp.cegetel.co.uk and test.cegetel.co.uk (together with email) were in use at the time in connection with product development. At the date on which the DRS received the complaint, the Domain Name was configured and pointing to a valid server - "this meets the test of having 'used or made demonstrable preparations to use'" the name.

He also defends the legitimacy of his use of the name:

"We have not attempted in anyway to pass-off as the complainant."

"We acted with due diligence to ensure there was not a UK company 'Cegetel Limited'....quite why a French company, who no longer uses the name in question even for itself, would want a registration within UK namespace is unclear"

"We strongly feel that the name 'cegetel' can be used by us in our chosen field, without infringing on the trademarks held by the complainant, who operates in a market sector entirely unrelated to CNC metal cutting machinery.....It is not necessary to register a trademark before using a mark in a particular market sector, only to ensure that mark is not registered already for that market area."

Finally, he says that he was not trying to sell the name for profit, but aimed simply to recover his costs. He says that the Complainant did not proceed to an amicable settlement even though he, the Respondent, had accepted its suggestion of transferring the name for €3000. The Respondent's earlier request for £5000 (€8000) had been arrived at as a rough upper bound on the costs incurred in developing the website, and was never intended to be an estimate of the costs. The figure of €3000 does not represent a proper cost assessment either, but he was prepared to accept it as a gesture of goodwill and to conclude the issue quickly.

7. Discussion and Findings:

According to section 2 of Nominet's Dispute Resolution Service Policy, in order to succeed, a complainant must demonstrate two points, each on the balance of probabilities:

The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name, and

The Domain Name, in the hands of the Respondent, is an Abusive Registration.

I shall discuss these points in turn.

Complainant's Rights

The evidence provided as part of the Complaint demonstrates to my satisfaction that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name. In this case, the name is identical.

Any doubt about the Complainant having a use for the name in the UK (as voiced by the Respondent) is irrelevant here. The Complainant has Rights, and is entitled to use the name or not as it chooses.

Abusive Registration

Nominet's Dispute Resolution Policy (1) 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.

Section 3 a) of the Policy is a non-exhaustive list of factors which may be evidence of abusive registration. As explained above, the Complainant has called in aid two of these factors - 3 a) (i) A (profit) and B (blocking). The Respondent argues that he has not been seeking profit from the name, and on the contrary has an independent use for it in connection with a genuine offering of goods. He does not address the allegation of blocking.

To deal first with the blocking issue: I see no evidence that this registration was carried out for the purpose of blocking, even if it may have had that effect (as in the cited Nominet case). There is no suggestion in the case papers of any relationship between the parties pre-dating this case, or of any possible motive for a blocking registration. I therefore dismiss blocking as grounds for an abusive registration.

I turn now to the major and interlinked issues of the Respondent's independent interest in the Domain Name, and his possible profit motive in acquiring the Name.

I accept the Respondent's account of his new product, and corresponding website development. But there is a critical omission: the Respondent has made no attempt to explain why he wants to use the particular name Cegetel for his product. In his letter to the Complainant dated 13 October 2003, he says:

"...we are confident that if required we could show good reason why we made the registration..."

but he does not do so, either in this correspondence or later in his response to the complaint. Any connection between his torch-height controller and the name Cegetel remains obscure to me, even after looking at his metal-cutting website. The name Cegetel has no clear associations in the English language (it is based on the French abbreviation CG Tel, the telecoms arm of CGE, Compagnie Générale des Eaux). Given that the Respondent has taken trouble to provide a sensible response, I feel that the most likely reason for this important omission is that there is no connection.

On his own account, at the time of registration the Respondent was well aware of the French company's use of the name Cegetel. He says that he checked the use of the name in the UK and in his own market sector, in order to avoid possible conflict with the French company's activities. But why should he choose this particular name for his product, when it is well-known in another sphere, and when he could easily invent alternative names for a new product (including, doubtless, some more obviously suggestive of the product)?

Plainly Cegetel's interest in the name was in his mind at the time of registration, and the possibility of benefiting from this interest must also have occurred to him. In the absence of other explanations for his choice of name, I am driven to conclude that, on the balance of probabilities, benefiting from Cegetel's interest was the primary reason for the choice. This amounts to abusive registration.

There is a difference of opinion between the parties as to what was meant by some of the points exchanged in correspondence about an amicable settlement in late 2003. It does not seem necessary for me to retread this ground. What is clear is that the Respondent was interested in exchanging the Domain Name for a sum of money which was plainly in excess of his acquisition costs. Losing the name does not affect the bulk of his website development, as it does not appear to include any significant external use of the name. He retains the benefit of the website development, and there is no case for him to be compensated for his development costs.

8. Decision:

The Complainant has Rights in the Domain Name. On the balance of probabilities, I find that this was an Abusive Registration on grounds of a primary motive to make money from the Complainant. As requested by the Complainant, I therefore direct that the Domain Name should be transferred to the Complainant.

Claire Milne 7 September 2004