Nominet UK Dispute Resolution Service

 


Aldershot Car Spares v Gordon [2005] DRS 02464 (16 June 2005)

Nominet UK Dispute Resolutions Service DRS02464 Aldershot Car Spares v gordon Decision of independent expert

1. Parties


Complainant: Aldershot Car Spares

GB

Respondent: gordon

MT

2. Disputed Domain Name

The domain name in dispute is aldershotcarspares.co.uk ("the Domain Name").

3. Procedural background

On 14 March 2005 the Complaint was lodged with Nominet UK in accordance with the Dispute Resolution Service Policy (hereinafter "the DRS Policy") and hard copies of the Complaint were received in full on 17 March 2005.

On 22 March 2005 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the procedure for the conduct of proceedings under the Dispute Resolution Service ("the DRS Procedure") had been invoked and allowed the Respondent 15 working days (ie until 14 April 2005) within which to respond to the Complaint.

On 10 April 2005 Nominet UK received the Response from the Respondent.

On 12 April 2005 Nominet UK notified the Complainant that the Response had been received and sent the Complainant a copy allowing the Complainant until 19 April 2005 to file a Reply. The Reply was received by Nominet UK on 18 April 2005.

The mediation process then ensued but to no effect.

On 23 May 2005 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.

On 31 May 2005 Tony Willoughby, the undersigned, ("the Expert") confirmed to Nominet UK that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of nothing which ought to be drawn to the attention of the parties which might appear to call in to question his independence and/or impartiality.

On reading the papers the Expert came to the conclusion that the Complainant's Reply to the Response, which sought to make good some of the defects in the original Complaint, ought in all fairness to be put to the Respondent to enable the Respondent to respond.

On 2 June 2005 the Expert issued a procedural order directed to the Respondent in the following terms:

"In his Response to the Complaint, the Respondent asserted that the name "Aldershot Car Spares" is generic. In its Reply the Complainant answered that allegation by producing information which ought to have been in the Complaint, namely that the Complainant's business had been trading under the name Aldershot Car Spares for over ten years and that it is recognised by that name by the Motor Vehicle Dismantlers Association and the British Salvage Federation.

Additionally, in his Response, the Respondent refers to a Google search that he conducted for Aldershot Car Spares. The Expert has conducted the same search and it seems plain to the Expert that the Complainant's business is the business to be found at www.aldershotcarspares.com.

That site provides all the information that the Expert would have expected to find in the Complaint to establish the Complainant's rights in respect of the name.

Accordingly, combining the information supplied by the Complainant in the Reply with the information obtained from the Google search referred to by the Respondent, the Expert has before him powerful support for the proposition that the Domain Name is not generic. All this information should have been in the original Complaint.

In the circumstances, the Expert believes it to be just that the Respondent should have a further opportunity to respond. The Expert invites the Respondent to examine the site at www.aldershotcarspares.com and to respond to the Complainant's assertion that the domain name is not generic. If the Respondent wishes at the same time to produce any further evidence or make any further submissions relevant to the Dispute, he is welcome to do so.

Any further submission from the Respondent must be filed by 4pm today week, namely Thursday 9 June 2005."

No further submissions were received from the Respondent.

4. The Facts

The Complainant is a business which appears to have been trading in Aldershot for at least ten years and operates a website at www.aldershotcarspares.com.

The Respondent registered the domain name on 20 August 2004. It is connected to a Sedo parking page at www.aldershotcarspares.co.uk. The page is a holding page. It is stated at the top of the page that the Domain Name "may be for sale by its owner". A further link indicates that the Domain Name is for sale and invites offers. The rest of the page is taken up with advertising links to various car parts websites. This advertising may vary from time to time. At the time of the Experts visit to the site none of the links were to the Complainant's website.

It appears from the parties' submissions that the Complainant made attempts to contact the Respondent with a view to acquiring the Domain Name but was unable to make contact.


5. The Parties Contentions

The Complaint

The Complaint, which is the shortest that this Expert has ever come across, reads as follows:


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


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

The domain name is identical to my clients trading name Aldershot Car Spares and though it is currently being offered for sale, the current holder has failed to respond to any requests either directly or through the sedo.com domain name auction system as they have requested on the web page currently being displayed at http://www.aldershotcarspares.co.uk. The domain name is valuable only to my client as it his established trading name and is currently being used to advertise competitor services."

The Response


The Response, which is also very short reads as follows:


"Dear Sir/Madam, I currently work at sea for many months of the year and am not always in a position to check my computer for emails, offers, etc. The Complainant made his offers whilst I was away and, due to Sedo time constraints, the offer was automatically cancelled. However this is really no basis for a complaint as the domain is registered to me and how I use it or when I use it is of no concern to the Complainant or this DRS system. At no time except during this offer did the Complainant attempt to contact me to advise me of his concerns. The first I heard about all this was when I returned to discover the DRS waiting. This domain is generic and, being now based outside of UK, I have never heard of this company. A quick search reveals no trademarks and a search in google for aldershot car spares results in a majority NOT related to the Complainant. So basically I had never heard of, nor approached, the Complainant in any manner. I may have come to some agreement had he taken the time to contact me directly. This domain is earmarked for development and thus placed at Sedo whilst I am away, as is common with domains awaiting development. I am not responsible for the adverts that Sedo choose to display. The complaint that the site links to the Complainant's competitors is irrelevant for two reasons. 1) I do not know the Complainant nor his company so could not be aware of any business rivalries he may have. 2) The adverts shown are not always the same and vary depending where the visitor is viewing from. In conclusion I ask for this complaint to be deemed invalid as it appears the Complainant is attempting to hijack a generic domain that *might* be suitable for his untrademarked, and locally known only, company. Regards Gordon Norris."

The Reply

In the Reply the Complainant counters the Respondent's allegation that the Domain Name is generic by indicating that it has been trading under its name for over ten years and that it is recognised as such by various organisations at which it is registered, namely the Motor Vehicle Dismantlers Association and the British Salvage Federation.

The Complainant refers to the Respondents Google search and points out that the majority of the results do in fact relate to the Complainant.

The Complainant makes reference to the Sedo parking page and states that this clearly demonstrates abusive registration within the meaning of paragraph 3aiA of the DRS Policy.

The Complainant rejects the Respondent's denial of responsibility for the advertising links on the Sedo parking page connected to the Domain Name. The Complainant seems to accept that the advertising links are links selected by Sedo rather than the Respondent, but observes that those links would not be there at all if the Respondent had not sanctioned their presence. The Complainant contends that the Respondent is responsible for those advertising links. The Complainant contends that this is further evidence of abusive registration on the part of the Respondent.

6. Discussion and Findings

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the DRS Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of DRS Policy).

Complainants Rights

In its Reply the Complainant claims that it has traded under the name Aldershot Car Spares for over ten years and that it is registered with various organisations under that name. It contends that the name Aldershot Car Spares is not generic and that it refers exclusively to the Complainant. The Complainant has produced no supporting documentation to make good those assertions, but, ironically, it is the Respondent's Google search to which the Expert has been referred, which makes good the defect. A visit to the Complainant's website at www.aldershotcarspares.com makes it clear to the satisfaction of the Expert that the Complainant is a substantial business which has been operating under the name Aldershot Car Spares for many years and that if a competitor sought to trade under that name in the Aldershot area the Complainant would be likely to succeed in a passing off action.

Accordingly the Expert is satisfied that the Complainant has unregistered rights in the form of common law rights in respect of the name Aldershot Car Spares.

The Domain Name comprises nothing other than the Complainant's name Aldershot Car Spares and the generic domain suffix.

The Expert finds that the Complainant has rights in respect of a name or mark identical to the Domain Name.

Abusive Registration

This leaves the second limb. Is the domain name, in the hands of the respondent, an abusive registration? Paragraph 1 of the Policy 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 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."

Accordingly, there are two potential abuses, namely registration with abusive intent and abusive use.

As to the first, we have a domain name which comprises the Complainant's name, the name of a car parts dealer in the English town of Aldershot. Immediately (insofar as this Expert is concerned) the question arises as to why the Respondent, someone with an address in Malta who "currently [works] at sea for many months of the year", would wish to register a domain name identifying a car parts dealer in Aldershot? While the Expert is aware that some experts might not regard the surrounding circumstances as being enough to call for an answer to that question, this Expert does.

The Respondent provides no reason. He says that he had never heard of the Complainant when he registered the Domain Name, but he provides no reason for registering the Domain Name. All he says is "how I use it and when I use it is of no concern to the Complainant or this DRS system." That somewhat sweeping statement ignores the very understandable concern that the Complainant is likely to have over someone else using its name, a name which cannot sensibly refer to anybody else.

As to the DRS Policy, much depends upon whether the Respondent's denial of all knowledge of the Complainant can be taken at face value.

The Expert is of the view that the Respondent's denial of all knowledge of the Complainant cannot be taken at face value. The circumstances (ie the Domain Name itself, its identity with the Complainant and the fact that the Respondent has no obvious connection with either Aldershot or car spares) calls for an explanation.

The Respondent has refused to provide an explanation and notwithstanding the further opportunity provided by the Procedural Order.

In the circumstances, the Expert adopts the line he took in case number DRS 00658 Chivas Brothers Limited –v- David William Plenderleith (chivasbrothers.co.uk).

"Where a respondent registers a domain name

(1) which is identical to a name in respect of the which the complainant has rights; and

(2) where that name is exclusively referable to the complainant; and

(3) where there is no obvious justification for the respondent having adopted that name for the domain name; and

(4) where the respondent has come forward with no explanation for having selected the domain name, it will ordinarily be reasonable for an expert to infer first that the respondent registered the domain name for a purpose and secondly that that purpose was abusive."

In this case the Expert draws those inferences and finds that the Domain Name was registered in a manner which at the time when the registration or the acquisition took place took unfair advantage of or was unfairly detrimental to the Complainant's rights.

In light of that finding it is not strictly necessary for the Expert to deal with the second aspect of Abusive Registration, namely abusive use of the Domain Name. However, in case this case is referred for Appeal, the Expert makes the following findings in bullet point form:-

The Domain Name is such that visitors to www.aldershotcarspares.co.uk are likely to be expecting to visit the Complainant's website (it is to be noted that the Complainant's website is in fact at www.aldershotcarspares.com). They will be surprised to find themselves at the Sedo Parking site.

Visitors to www.aldershotcarspares.co.uk expecting to find themselves at the Complainant's website will be faced with advertising links to competitor car spares sites. In so doing, the Respondent is behaving in a manner unfairly detrimental to the Complainant's rights.

While the Sedo advertising links are selected by Sedo, to the Respondent's knowledge those links are links selected by Sedo as being appropriate to a website having the address www.aldershotcarspares.co.uk. Accordingly, while the selected links are links selected by Sedo, the Respondent knows that those links are likely to be links to other car spares sites.

As is plain from the Sedo Parking website, which the Expert has visited, the Respondent has entered into this arrangement with Sedo in order to earn money from the Domain Name either by way or sale or by way of click/hit earnings.

In summary, the Respondent is using the Complainant's name to attract by deception visitors to websites of the Complainant's competitors and for commercial gain.

The Expert sees no reason why he should not assume that the Respondent has succeeded in achieving what he has plainly been striving to achieve. In so doing the Respondent has taken unfair advantage of the Complainant's rights.

The Panel finds that as a result, the Domain Name is a domain name which is being used by the Respondent in a manner which takes unfair advantage of and is unfairly detrimental to the Complainant's rights.

While the Complaint has succeeded, the Expert observes that if the Respondent had not responded, the Complaint would have failed. The Complaint was hopelessly inept. Having read the Response and having referred to the Google search to which the Response draws attention and having also read the Reply, the Expert could see that there was clearly a case to answer.

In a formal Court proceeding it is possible that the Complaint would have been thrown out as disclosing no arguable case.

With the DRS, however, the Expert has a wide discretion to take into account all the evidence before him/her as disclosed in the Complaint, the Response and the Reply.

In recognition of the somewhat anomalous position in this case, namely the fact that it was the Response which enabled the Complainant to improve its position, the Expert gave the Respondent an opportunity to make further submissions in response to the Reply. The Respondent declined to take advantage of that opportunity.

However, complainants would do well to have in mind that respondents do not always respond and complainants are not necessarily therefore given a second bite of the cherry.

7. Decision:

Having concluded that the Complainant has Rights in respect of 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, the Expert determines that the Domain Name, aldershotcarspares.co.uk, should be transferred to the Complainant.

______________________

Tony Willoughby

16 June 2005