Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 02462 Ashsale Limited t/a Marks Sattin –v- Balata.com LLC Decision of Independent Expert
1. Parties:

Complainant: Ashsale Ltd. t/a Marks Sattin

Country: GB

Respondent: Balata.com LLC

Country: IL

2. Domain Name:

marksattin.co.uk ("the Domain Name")

3. Procedural Background:

14/03/2005 Dispute entered into system

14/03/2005 Hardcopies received in full on: 11/03/2005

16/03/2005 Complaint validated

16/03/2005 Complaint documents generated and sent to Respondent

13/04/2005 No Response received

13/04/2005 No response to complaint documents generated

13/04/2005 Complainant notified

22/04/2005 Fees received from Complainant on: 19/04/2005

26/04/2005 Mr. Iain M Tolmie selected as expert

4. 1. On the 26^th April 2005, I (Iain M. Tolmie, the undersigned, "the Expert") was contacted by the Nominet Dispute Resolution Service and I confirmed to them that:

"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties."

5. 2. I was appointed as the Independent Expert for this Case as from 26^th April 2005 to respond on or before 11^th May 2005. This process is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") and the Decision is made in accordance with the Dispute Resolution Service Policy ("the Policy"). Both of these documents are available on the Nominet UK website (http://www.nominet.org.uk/DisputeResolution).
6. Outstanding Formal/Procedural Issues:
7. 1. The Respondent has not submitted a response to Nominet in time or at all as provided for under paragraph 5a of the Procedure. The Respondent accepted that he was bound by the Nominet Dispute Resolution Procedure at the time of the registration of the Domain Name. Nominet have therefore acted as set out in paragraph 5d of the Procedure.
8. 2. The Respondent is apparently an Israeli registered company whose contact address as on the Nominet register is shown above.
9. 3. Nominet has attempted to communicate the complaint to the Respondent at the address provided on his registration by e-mail (addressed to ....), letter and FAX. The e-mail was not acknowledged but the FAX was apparently successfully transmitted. The Respondent apparently reacted to correspondence from the Complainant to the contact addresses provided. The efforts made by Nominet to contact the Respondent are in accordance with the Procedure and I find that the Respondent was properly notified of the complaint.
10. 4. There is no evidence before me to indicate that there are any exceptional circumstances which I should take into account. Accordingly I will now proceed to a Decision on the complaint notwithstanding the absence of a response, as is provided for in Paragraph 15b of the Procedure:

"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."

11. 5. Furthermore, since I am not aware of any exceptional circumstances in this case, I will act in accordance with Paragraph 15c of the Procedure which 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."

12. The Facts:
13. 1. I accept the following as facts:
14. 2. The Complainant is a UK Financial Recruitment Consultancy which has been trading for 16 years. The Complainant is the registrant of the domain name "markssattin.co.uk" and has been for 7 years. The website operated by the Complainant ("www.markssattin.co.uk") offers an online recruitment service and provides visitors with news and information about job opportunities in the UK financial sector.
15. 3. The Complainant has invested in promoting the brand "Marks Sattin" for 16 years and the brand has substantial reputation and goodwill. The turnover for the company from 1st October 2003 to 30th September 2004 was £12.2 million.
16. 4. The Complainant generates much of its business from traffic to its web site and that its other publicity material positively encourages use of the web site as a source of employment information.
17. 5. The Respondent is an Israeli company and the registrant of the Domain Name "marksattin.co.uk" which was registered via a German agent on 30^th August 2004.
18. The Parties' Contentions:

Complainant

19. 1. The Complainant's submissions (made on his behalf by a solicitor) are in summary as follows:

6.1.1. I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

6.1.2. I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

6.1.3. The Respondent's domain name "marksattin.co.uk" is the subject of this dispute as it is a misspelling of, and confusingly similar to the Claimant's domain name in which the Claimant asserts it has rights.

6.1.4. The website was set up to intentionally mislead the public into believing that it is in fact the website of the Complainant. It was set up to offer financial recruitment consultancy service and contained links to the Complainant's competitor Joslin Rowe Financial Recruitment.

6.1.5. In addition, on the homepage of the Website there was a link for making offers to buy the domain name.

6.1.6. The Complainant wrote to the Respondent on 25 January 2005 demanding that it should cease and desist from operating the site; the letter was sent by airmail and via the Website.

6.1.7. On 26 January 2005 the Respondent changed the Website into a site providing information about loans rather than a recruitment site and removing the link to make an offer for the domain

6.1.8. However, the Complainant considers there is a possibility that the Respondent may change the site back to a recruitment site in future and also believes that due to the similarity in the domain names, it is losing hits to its own site.

6.1.9. The Complainant believes that the Respondent's domain should be considered as an abusive registration in that it was registered in a manner which, at the time when the registration took place:-

•    the Respondent had no legitimate interest in registering the domain name other than to use it as an instrument of fraud; and

•    the registration is unfair and detrimental to the Complainant as it is likely to divert customers intending to do business with the Complainant to other companies who knowingly or unknowingly have been linked to the website associated to the Respondent's domain name.

6.1.10. The Complainant is seeking to have Applicant's domain name transferred to the Complainant.

Respondent

20. 2. The Respondent has not submitted a response in time or at all.
21. Discussion and Findings:

Burden of Proof

22. 1. In order for a Complainant to succeed he must (under Paragraph 2 of the Policy) prove to the Expert, on the balance of probabilities, both:

i that he 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 as defined in Paragraph 1 of the Policy.

23. 2. Rights are defined in the Policy as:

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;

Complainant's Rights

24. 3. The Complainant by making his Complaint has agreed to be bound by the Procedure and has also signed a statement of truth in respect of the Complaint and associated documentation supplied.
25. 4. The Complainant does not claim ownership of a protected mark (e.g. trademark) of any kind and relies upon the established use of the company trading name, Marks Sattin, as the basis of its rights. It has an established reputation in its sphere of operations, has been in operation for 16 years and has operated an associated website for 7 years (see section 5 above). I therefore find that the Complainant has established rights in the name Marks Sattin.
26. 5. The Domain Name (excluding the ".co.uk" which is generic and is usual to ignore) is "marksattin", which is strikingly similar the Complainant's trading name excluding the blank (i.e. MarksSattin") which the Complainant has registered as a domain name (in the form "markssattin") and which he makes extensive use of in his business. Since it is usual for domain names to be rendered in lower case and since blanks are not permitted in domain names, I find that there is a similarity between the Complainant's trading name in which he has rights and the Domain Name.
27. 6. I therefore find that the Complainant has established to my satisfaction that he has Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

28. 7. Having found that the Complainant has established to my satisfaction that he has Rights in respect of a name or mark which is identical or similar to the Domain Name, I must now examine his allegations of an Abusive Registration by the Respondent.
29. 8. An Abusive Registration is defined in the Policy as follows:

Abusive Registration means 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;

30. 9. The Complainant alleges that the Domain Name:

7.9.1. is confusingly similar to its own name

7.9.2. was set up to intentionally mislead the public into believing that it is in fact the website of the Complainant [in that]… [i]t was set up to offer [a] financial recruitment consultancy service and contained links to the Complainant's competitor Joslin Rowe Financial Recruitment

7.9.3. was registered in a manner which, at the time when the registration took place:-

•    the Respondent had no legitimate interest in registering the domain name other than to use it as an instrument of fraud; and

•    the registration is unfair and detrimental to the Complainant as it is likely to divert customers intending to do business with the Complainant to other companies who knowingly or unknowingly have been linked to the website associated to the Respondent's domain name.

31. 10. There is little point in the Complainant making allegations which cannot be dealt with under the Policy. This administrative process is not a suitable forum for dealing with allegations of fraud. Should the Complainant require such matters to be dealt with it seems to me more appropriate that they seek remedies either in the UK or Israeli courts.
32. 11. Paragraph 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. It is for the Claimant to prove his case on those or related grounds and extensive help is provided on the DRS web pages to that end.
33. 12. It is not necessarily against the Policy to offer a domain name for sale.
34. 13. I have accepted as fact that the Complainant generates much of its business by use of its web site (see 5.4).
35. 14. I have examined the additional documentation supplied with the Complaint, which includes hard copies of pages from the Respondent's web site. I find that the web pages associated with the Domain Name included links to the web site of a competitor of Marks Sattin – that is I am satisfied from the documentation supplied by the Complainant that the Domain Name immediately subsequent to registration was used to point to a web page which pointed to further web pages which were the property of a competitor (www.joslinrowe.com).
36. 15. Since the Respondent was using the Domain Name which is similar to the Complainant's domain name to access material similar to that supplied by the Complainant, it was likely in my opinion only to be doing so to take advantage of mistyped searches by the Complainant's customers. In my opinion that is evidence of registration for the purpose of unfairly disrupting the business of the Complainant (the Policy paragraph 3aiC) and hence that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights (the Policy definition of Abusive Registration).
37. 16. The Domain name now points to "click through" pages on the topic of loans, having the strange title "Loan enough money to get completely out of debt". The Complainant alleges that the change took place subsequent to a communication sent by him on 25^th January 2005.
38. 17. I accept that the Domain Name is not only similar but could be regarded as confusingly similar to that of the Complainant. Of itself, that is not contrary to the Policy; however in this case I find that 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 (the Policy paragraph 3ii)

7.17.1. It is not clear to me why a foreign company might have a reason for registering the Domain Name, and it has not taken the opportunity provided under the Procedure to explain its reasoning to me.

7.17.2. Without an explanation from the Respondent (which could have made reference to grounds in paragraph 4 of the Policy - How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration) I can only draw inferences from the behaviour of the Respondent (see 4.5 above).

7.17.3. Under different circumstances, for example an individual named Mark Sattin having registered the Domain Name, there may have been some difficulty in deciding whether the Domain Name was abusive since there may have been a reasonable alternative use.

7.17.4. However in this case there is no explanation offered and so the only inference I can draw is that the registration of the Domain Name was a deliberate attempt to benefit from the Complainant's web traffic.

39. 18. It might be argued that the Respondent has ceased his abusive activities, however under these particular circumstances, and in the absence of any Response providing an explanation of the situation, I can only infer that the abusive behaviour (as set out in 7.14 and 7.17 above) could be resumed at any time.
40. 19. I find that the association between the Domain Name, its close correspondence to the Complainant's name in which he has established rights, and the use to which the Domain Name is put (see 7.16) will continue to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant (the Policy paragraph 3ii) and that such use would be unfairly detrimental to the Complainant's rights.
41. 20. I therefore find that the Complainant has established to my satisfaction that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
42. Decision:
43. 1. For the reasons set out above I find that the Complainant has established that he has Rights in respect of a name or mark which is identical or similar to the Domain Name and I find that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
44. 2. I therefore Determine that the Domain Name should be transferred to the Complainant.

______________________ Date: 3^rd May 2005

Iain M. Tolmie ("the Expert")