Nominet UK Dispute Resolution Service

 


Electric Motors Ltd v Vamplew [2005] DRS 02717 (29 July 2005)

Nominet UK Dispute Resolution Services MSF Ltd v Big Brother CCTV DRS 02717 Decision of Independent Expert
1. Parties

Complainant:

MSF Ltd

United Kingdom

Respondent:

Big Brother CCTV

United Kingdom

2. Domain Name

msfltd.co.uk ("The Domain Name")

3. Procedural Background

On 8 June 2005, the Complainant lodged a Complaint against the Respondent in relation to the Domain Name with Nominet UK under the Dispute Resolution Service Policy ("the DRS Policy"). Hard copies of the Complaint were received on 7 June 2005.

On 10 June 2005, Nominet sent the Complaint by hard copy and by email to the Respondent at the above address whose details appeared on a whois search. The hard copy was sent to the above address by post and by email to the Respondent at the email address given on the whois search, i.e. ian@chapman2003.karoo.co.uk and postmaster@msfltd.co.uk.

No Response was received to the Complaint by the required date of 6 July 2005.

An email dated 13 July 2005 was received by Nominet from a Rita Hambly, on rita@msfltd.co.uk which reads as follows:-

"For the attention of LeeAnne Watkins.

Re email dated 6 July in response I would like to say that we have not received any communication regarding the domain name of msfltd.co.uk your email was the first details I have had on the matter. I have been abroad on business and have only just picked up your emails. As for the domain msfltd.co.uk it was bought legitimately for a company called msf ltd. The domain has already been owned for 2 years previously to the company msf ltd and the company where it was previously bought from went bankrupt and the domain was lost for a year. We have an invoice from printers of our business cards from 3 years ago with that Domain name on and in use we can send you a copy if you so wish to see proof. In future could you please send any communications to rita@msftd.co.uk and I will deal with the matter immeadiately.

Yours sincereley"

Nominet responded to this email pointing out that Rita Hambly had missed the deadline for making a response and indicating that if she wish to make a non-standard submission she was to ensure the submission is made is accordance with Nominet's Procedure at paragraph 13. (Paragraph 13b requires that any non-standard submission must contain a separate brief explanation of why there is an exceptional need for the non-standard submission). The email fails to comply with this requirement. The Expert therefore does not consider it as a non-standard submission. No other non-standard submission appears to have been received from the Respondent. The Expert therefore proceeds to determine the Complaint on the basis of the Complaint as submitted by the Complainant and on the basis that there is no Response.

Because no Response had been received the informal mediation procedure could not take place. The Complainant has paid the necessary fee of £750 plus VAT for an expert decision.

The Expert, Mr Clive Duncan Thorne was selected and appointed on 21 July 2005. He has completed a declaration of impartiality and independence and indicated his independence and willingness to act.

In the Expert's view there are no outstanding formal or procedural issues.

4. Facts

The only facts before the Expert are as set out in the Complaint. In the Expert's view it is simplest merely to set these out as they appear in the Complaint:

"Mid Sussex Fire Protection Company Limited registered the name MSF Ltd, Registration Number 1395639 on February 1989. We trade throughout the UK, we have been trying to get the Domain Name MSF Ltd but we have just found that the Domain Name has been registered to a company called Big Brother CCTV in Hull this will cause confusion to our customers throughout the UK the only company in the UK using that name is ours. On those grounds I hope you will see that they have no rights to use our name."

5. DRS Policy

Section 2 of the DRS Policy states that a Respondent must submit to proceedings under the Nominet Dispute Resolution Service if a Complainant asserts to Nominet, according to the DRS Procedure 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.

The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.

"Abusive Registration" is defined in Section 1 of the DRS Policy as meaning 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 of the DRS Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration.

6. The Complainant's Contentions

The Complainant's contentions are limited to a "confirmation" that the Domain Name is "identical or similar to a name or mark" in which the Complainant has rights and to a "confirmation" that the Domain Name in the hands of the Respondent is an Abusive Registration for the reasons set out in the passage from the Complaint quoted above.

7. The Respondent's Contentions

In the absence of a Response there are no Respondent's contentions to be considered by the Expert.

8. Discussion and Findings

(i) does the Complainant have rights in respect of a name or mark which is identical or similar to the Domain Name?

The only evidence of the Complainant's alleged rights is that the name of the Complainant was changed to MSF Ltd in February 1989 and that the Complainant trades throughout the UK. No evidence is given as to the circumstances in which the Complainant trades. For example there is no evidence adduced of any Trademark Rights, the nature of the business of the Complainant and the extent to which it trades using the trading name MSF Ltd.

In the circumstances the Expert is unable to decide that the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name. The burden of proof falls upon the Complainant. The Complainant has failed to satisfy that burden of proof and the Expert finds that the Complainant has failed to show that it has rights in respect of a name or mark which is identical or similar to the Domain Name.

(ii) is the Domain Name in the hands of the Respondent an Abusive Registration.

Having found that the Complainant has failed to prove that it has rights in respect of a name or mark which is identical or similar to the Domain Name it is not strictly necessary for the Expert to consider this second limb of Section 2 of the DRS Policy. Nevertheless in the event that the Expert is wrong in his findings in respect of the first limb he proceeds to deal with the second limb.

The only evidence adduced to support a finding of an Abusive Registration is the assertion that the fact the Domain Name has been registered to Big Brother CCTV "will cause confusion to our customers throughout the UK, the only company in the UK using that name is ours."

Again bearing in mind that the Complainant has the burden of proof the Expert finds that the assertion made by the Complainant, in the absence of any evidence to support such assertion, does not satisfy the requisite burden of proof.

The Expert finds that the Complainant has not succeeded in proving:

1. The Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name; and

2. That the Domain Name in the hands of the Respondent is an Abusive Registration.

9. Decision

In the light of the foregoing findings, the Expert does not direct as requested by the Complainant that the Domain Name "msfltd.co.uk" be transferred to the Complainant from the Respondent.

Signed …………………………………..

Clive Duncan Thorne

Date: 29 July 2005