Realcare Villa Services SC v Visit Menorca Ltd [2005] DRS 02592 (22 June 2005)
Complainant: Realcare Villa Services SC
Address: Apartado de Correos 77
07720 Es Castell
Menorca
Baleares
Postcode: 07720
Country: ES
Respondent: Visit Menorca Limited
Address: 145-157 St John Street
London
Postcode: EC1V 4PY
Country: UK
The domain name in dispute is
On 25 April 2005 the Complaint was lodged with Nominet UK in accordance with the Dispute Resolution Service Policy (the "DRS Policy") and hard copies of the Complaint were received in full on the same date.
On 28 April 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 (i.e. until 23 May 2005) within which to respond to the Complaint.
On 23 May 2005 no Response had been received from the Respondent by Nominet UK and the Complainant was advised accordingly.
On 2 June 2005 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.
On 3 June 2005 James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure
The Complaint is engaged in services relating to real property in Spain.
The Respondent has not filed any Response. A Companies House search included in the file shows that the Respondent was incorporated on 16 November 2004 and it has two directors viz. Kay Carter and Nicholas Carter.
The domain name in dispute was registered onn 12 March 1998. The registration was last updated on 9 March 2005.
Complainants's Submissions
The Complainant submits that the disputed domain name was previously registered to Premier Villa Management CB on 12 March 1998 and was due for re-registration on 12 March 2006.
The Complainant claims that in the month of January 2003 it purchased a business from Mr Steve Street and his other 3 partners engaged in said Premier Villa Management CB. The Complainant submits that said purchase agreement provided that all registered names and titles owned by said Premier Villa Management CB, including the domain name menorca.co.uk, would be transferred to the Complainant as the new owner of the business.
The Complainant further submits that as part of the said purchase agreement, a company Menorca Gold Limited was also transferred to the Complainant. This company carried on a villa letting agency business that was managed by a Mrs Kay Carter. The Complainant further submits that a web site that was established at the menorcagold.co.uk and menorca.co.uk Internet addresses was maintained by said Mrs Carter's husband Mr. Nicholas Carter. The Complainant submits that Mrs Carter ceased working for Menorca Gold Limited in June 2004 having established another agency in direct competition to Menorca Gold Limited.
The Complainant further submits that "[a]t the same time", which presumably means June 2004, the web site menorca.co.uk was disrupted and was no longer operational as a web site.
The Complainant carried out investigations and confirmed that the renewal date was not until March 2006, the Complainant took the view that there remained sufficient time for the legal disputes between Mr and Mrs Carter and the Complainant to be resolved.
The Complainant submits that these disputes were finally resolved in late December 2004. The Complainant claims to have been trying to pursue its "right to have the web site re-registered to Realcare Villa Services SC since this time"
The Complainant has submitted certain copies of e-mails and faxes to support its application. The Complainant has also furnished copy correspondence from Mr. Nick Carter to Menorca Gold Limited relating to work to maintain and upgrade the web site owned by Menorca Gold Limited and a proposal to carry out work on an annual design of the web site maintained at the menorca.co.uk domain name.
The Complainant submits that the domain name menorca.co.uk has subsequently been registered to the Respondent herein, Visit Menorca Limited, without the Complainant's knowledge or approval.
The Complainant further submits that as at 6th August 2004 said domain name menorca.co.uk was still registered to Premier Villa Management CB and the Complainant claims to have been informed by said Mr Steve Street that he has neither sold the domain name nor given permission to transfer the domain name to any other person or company.
The Complainant submits that the domain name in dispute had been the Complainant's main advertising medium and has now been out of action since June 2004. The Complainant submits that it has lost considerable business as a result, and that the change in ownership has caused considerable confusion to potential customers, and the Complainant submits that it should be reimbursed for the loss.
The following documents were submitted in hard hard copy with the Complaint:
(a) a copy fax to an Internet service provider in Spain with authorisation from Steve Street (described as "the previous registrant") to allow a nominated person to carry out necessary steps to transfer ownership of said menorca.co.uk domain name to the Complainant;
(b) A copy e mail from the Complainant's web site advisor advising the Complainant that the name and address of the registrant of said domain name menorca.co.uk had been changed;
(c) A fax to Nominet UK regarding the registration of the domain name in dispute;
(d) A letter attached to an e-mail dated 3 February 2004 to the Complainant from a business styled Max Communications signed by a Nick Carter quoting for the web site maintenance of and upgrade of the web site established at the menorcagold.co.uk address and the redesign of the web site established at the menorca.co.uk address;
(e) A copy invoice from Max Communications regarding this work and a letter dated 23 August 2004 to said Mr and Mrs Carter's solicitors relating to payment of same.
(f) An e mail sent to the Complainant stating that the results of a WHOIS search showed that the said domain name menorca.co.uk was registered to Premier Villa Management CB as at 6th August 2004.
Respondent's Submissions
The Respondent has not filed any Response.
In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. that
i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
There is no evidence of any use of the word MENORCA as a trademark or name by the Complainant. The Complainant carries on business as "Realcare Villa Services Limited". The Complainant makes no claim to having any registered trademark.
The Complainant claims to have purchased certain assests from an enterprise based in Spain and styled Premier Villa Management CB. One of the parters in that enterprise was a Mr Steve Street. The assets that the Complainant claims to have purchased include the goodwill of a business as a going concern, a company named Menorca Gold Limited and two Internet domain names being the domain name that is in issue in these proceedings and menorcagold.co.uk. The Complainant has however, failed to provide any evidence of that agreement.
While the Complainant has claimed to have purchased said Menorca Gold Limited, the exact relationship between the Complainant and said Menorca Gold Limited has not been explained in the Complaint. It is probably implicit that the company is either a subsidiary of the Complainant or a related enterprise, but this is not explained in the Complaint and there is no explanation as to how the Complainant claims to have rights in the word "menorca", either as a trademark or a name.
The correspondence from Max Communications/Nick Carter indicates that Menorca Gold Limited had an Internet presence and was engaged in developing web sites at the menorca.co.uk address and the menorcagold.co.uk address. However the Complainant has not provided any evidence of these sites or their content.
Even if a connection between the Complainant and Menorca Gold Limited were to be established, it is not likely that Menorca Gold Limited could claim any trademark rights of any great value in either the word MENORCA or the word GOLD, separately or in combination, as the former element is a geographical place name and the latter element is a laudatory ephitet.
Therefore, the Complainant has not provided any information as to how it claims to have rights in a trademark that is identical or similar to the domain name in issue. The Complainant has failed to prove the first element of the test set out in paragraph 2 of the DRS Policy.
Abusive Registration
The Complainant argues that a Mrs Kay Carter was employed to manage said Menorca Gold Limited. At the same time, her husband, Mr Nicholas Carter was engaged in web site design and maintenance and the provision of services to Menorca Gold Limited relating to the web sites established at the menorcagold.co.uk domain name and the menorca.co.uk domain name.
Said Mrs Carter established a competing business, and was no longer employed by Menorca Gold Limited and/or the Complainant from the month of June 2004.
It would appear from the commercial documentation from Max Communications/Nicholas Carter, sent to the Complainant in February 2004, that Mr Carter had access to certain information relating to the domain name.
As of the 6 August 2004, it would appear that the domain name in dispute was still registered in the name of Premier Villa Management CB. The domain name was subsequently transferred to the present owner, the Respondent. This transfer appears to have been effected without the knowledge or consent of the Complainant or its predecessor in title. The Complainant has submitted an undated letter signed by Mr Street in which he describes himself as being "previously owner of Premier Villa Management" in which he purports to give authorisation to the Complainant's nominee to manage and transfer ownership of the domain name menorca.co.uk to the Complainant.
It is also significant that the Respondent, a British company, was incorporated on 16 November 2004 and it has two directors viz. Kay Carter and Nicholas Carter.
There is a complex set of facts in this case and they are not sufficiently explained in the Complaint. Many of the claims and allegations in the Complaint are not supported by any evidence and are merely assertions that could not support a finding in favour of the Complainant. For example:
• the Complainant has not furnished any documentation supporting its claim to have had an agreement with said Premier Villa Management CB relating to the transfer of the ownership of the domain name;
• neither is there any information in relation to the status of said Menorca Gold Limited or any explanation of the relationship between that company and the Complainant or any evidence of how it carries on business or uses its name and/or trademarks;
• neither is there any information in relation to what protectable trademarks or service marks, if any, the Complainant or said Menorca Gold Limited may have, either by way of registration or at common law.
Many other questions remain unanswered: for example in his letter Mr Street describes himself as being "the previous owner of Premier Villa Management": there is no documentation in the Complaint relating to the present owners of Premier Villa Management CB.
It may be that this Complainant could have a remedy in another forum. Alternatively, it may be that Menorca Gold Limited may have a remedy under the Nominet DRS. It is not possible to say from the information in the Complaint.
In any event however the Nominet DRS is limited in scope and if a Complainant does not provide any evidence that it has rights in a trademark or name that is identical or similar to the domain name in issue, the Nominet DRS cannot provide a remedy and is not the appropriate forum for the dispute.
As the onus rests on the Complainant to prove both elements of the test set out in paragraph 2 of the DRS Policy and as the Complainant has failed to prove either element, this application must fail.
This Expert therefore directs that the application be refused.
______________________ ______________________
James Bridgeman Date: 22 June 2005