Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 03035 SEARCH PRESS LIMITED v. ROBERT MORRISON Decision of Independent Expert
1. Parties:

Complainant: Search Press Ltd

Country: GB

Respondent: Robert Morrison

Country: Malta

2. Domain Name:

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

3. Procedural Background:

The complaint was received by Nominet in full on 14 October, 2005. Nominet validated the complaint and informed the Respondent, by both letter and by email on 14 October, 2005, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 7 November, 2005) to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 10 November, 2005, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly paid on 16 November, 2005.

Nominet invited the undersigned, Keith Gymer ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert with effect from18 November, 2005.

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

For the record, it is noted that, although the Complaint mistakenly indicated the Respondent's address as in Montana, USA, Nominet addressed its correspondence correctly to the email and street addresses given by the Respondent as shown in the WHOIS record. The mistake in the Complaint is therefore not considered to be material.

5. The Facts:

The Complainant, Search Press Limited was incorporated under its present name in 1969. It trades as an Art and Craft book publisher and operates an established web site at www.searchpress.com (the domain name searchpress.com was registered September 1997).

The Respondent, Robert Morrison, has been the Respondent in at least two previous DRS Complaints: DRS 02735 equazen.co.uk (Complaint rejected for inadequate supporting evidence); DRS 02775 guilbertonline.co.uk (Complaint upheld).

From the WHOIS records, the Domain Name searchpress.co.uk was registered for Robert Morrison on 11 November, 2004 via Melitaweb, for which Mr Morrison is himself the administrative contact. At the time of the Complaint, the URL www.searchpress.co.uk resolved to a link page at www.sedoparking.com/searchpress.co.uk.

6. The Parties' Contentions:

Complainant:

The Complainant has asserted that:

1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and

2. The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).

In support of its Complaint, the Complainant made the following submissions:

"Search Press Ltd was incorporated in the UK in 1970 and has been trading under that name ever since. We are Art and Craft Book publishers and produce books with the imprint Search Press. Approximately 1.5ml books are sold each year under that imprint. Every book carries the name Search Press in the spine, imprint page and copyright page. Sales are made for these books all over the world but the majority is still sold in the UK. We actively trade on the web using the URL www.Searchpress.com which we registered in 1997. www.searchpress.co.uk takes you to http://www.sedoparking.com/searchpress.co.uk which, when one clicks on the 'Search Press' link appears to be a page of sponsored links to companies which are related to Art and Craft. They are therefore using our name and benefiting from our marketing to sell products related to what we do. This is clearly an abusive registration of Searchpress.co.uk. I therefore believe that we have a clear and unequivocal right to www.searchpress.co.uk because: 1 It is our registered Ltd name since 1970 2 We actively trade under the name Search Press since 1970 3 It is a clear abusive registration."

Additionally, with the hardcopy of the Complaint, the Complainant provided a copy of its certificate of incorporation on change of name (which showed that in fact the change of name to Search Press Limited was officially recorded in 1969), and copies of catalogues and other promotional material demonstrating use of the Search Press name.

Complainant asks that the Domain Name should be transferred to it.

Respondent:

The Respondent made no Response to, and raised no challenge to, any of the facts and statements submitted by the Complainant.

7. Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

Complainant's Rights

The Complainant in this case has asserted that it has rights in the name SEARCH PRESS and that this name is identical or similar to the Domain Name.

The Complainant did not provide any evidence of trade mark registrations for this name.

However, as the Complainant has stated, and in the light of the evidence, it is clear that it has used the SEARCH PRESS name at least since 1970 in relation to its company name and for sometime since 1997 in relation to its website on the internet. Its name appears on its headed paper and on the catalogues and on the website. It is apparent that such use predates the registration of the Domain Name at issue by the Respondent.

The Respondent has not challenged any of the submissions made by the Complainant regarding the Complainants rights in the name SEARCH PRESS. In the Expert's view, in these circumstances, these submissions are quite sufficient to establish a basic claim to common law rights in the name as a company name and as an unregistered trade mark.

Accordingly, for the purposes of the Policy, the Expert concludes that the Complainant does have Rights in this case in respect of a name or mark, which is similar to the Domain Name.

Abusive Registration

The Complainant also has to show that the Domain Name is 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 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.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy. The most relevant factor in the present case is as set out in Paragraph 3a(i)C:

C primarily for the purpose of unfairly disrupting the business of the Complainant.

Also potentially applicable is the example in Paragraph 3a(ii):

ii 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."

However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

The evidence shows that the Domain Name has been used to redirect surfers seeking Search Press to a parking page with links, which, if clicked through, would generate income for the Respondent, with no reference to the Complainant.

The inference must be that the Respondent has knowingly taken the Complainant's name and used it in the Domain Name for the specific purpose of diverting potential customers of the Complainant away from the Complainant and to a holding page with links which are in the same or a similar field to the Respondent's business and which would generate income for the Respondent if visited by the potential customer. The Respondent has thereby misappropriated the Complainant's property – their goodwill in the SEARCH PRESS name – and used that name in the Domain Name searchpress.co.uk with the intention of unfairly profiting from that misrepresentation.

Consequently, the Expert concludes that the Domain Name has been used by the Respondent in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and that it is an Abusive Registration for the purposes of the Policy.

8. Decision:

Having concluded that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert orders that the Domain Name, searchpress.co.uk, should be transferred to the Complainant.

December 6, 2005

Keith Gymer