Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS 3724

Alternate Computerversand GmbH

- v -

24carat.co.uk/Chard

Decision of Independent Expert

1. Parties

Complainant: Alternate Computerversand GmbH

Country: Germany

Respondent: 24carat.co.uk/Chard

Country: United Kingdom

2. Domain Name

("the disputed domain name")

3. Procedural Background

The Complaint was lodged with Nominet UK ("Nominet") in full on September 1, 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on the same day, giving it 15 working days within which to lodge a Response. No Response was filed and so Nominet did not initiate its Informal Mediation procedure. On October 12, 2005 the Complainant sent Nominet its fee for a Decision by an Expert pursuant to paragraph 6 of Nominet's Dispute Resolution Service Policy ("the Policy"), but the amount was insufficient. This error was rectified the following day.

On October 14, 2005 the undersigned, Mr. David H Tatham ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an Expert in this case and further confirmed that he knew 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 and he was selected by Nominet as the Expert for this case on the same day.

1. Outstanding Formal/Procedural Issues (if any)

There are no outstanding formal or procedural issues.

2. The Facts

Complainant

The Complainant claims to be one of Germany's largest mail order companies for computers, computer equipment and accessories and to sell these products to consumers and businesses throughout Europe including the UK. It currently has well over 1 million registered customers.

The Complainant was incorporated in Germany in 1992 and it has subsidiaries and associated businesses in the Netherlands and Spain. It has a total workforce of over 1000 people. Its main website is at and it has approximately 16.000 different products in stock.

Over the past 13 years Complainant has advertised extensively under its name and acquired considerable goodwill as a result. Copies of various computer magazines in Spanish, Dutch and German which contained Complainant's advertisements were annexed to the Complaint. Complainant spends approximately €250,000.00 a month on advertising throughout Europe, most of it on mail order advertising such as that in the examples which were annexed to the Complaint.

The name ALTERNATE is protected as a Community trade mark under No. 2098234. and a copy of this mark was annexed to the Complaint.

Respondent

There was no Response to the Complaint so the only available information about the Respondent comes from the Complainant, and is outlined below.

3. The Parties' Contentions

Complainant

Complainant contends that it recently discovered that the disputed domain name had been registered by what it believes to be a sole trader located in Blackpool who runs a jewellery business through a website located at . Apart from selling gems, jewellery and coins the business has also registered a large number of domain names which it offers for sale. The disputed domain alternate.co.uk is on sale for £10,000.00 and a copy of two pages from this website offering for sale a number of domain names, all beginning with letter A, was annexed to the Complaint. Complainant carried out a few spot checks on these domain names and discovered 3 which bear the names of existing companies and/or trademarks, such as Aquaria (on sale for £10,000.00) Arezzo (on sale for £2,500.00), and Anglogold (on sale for £10,000.00). The Complaint alleges that this series of registrations shows a pattern by the Respondent which proves that it is in the habit of making registrations of domain names which correspond to well established names in which it has no apparent interest, and it also shows that the registration was solely carried out for the purpose of selling the domain name. The Complainant contends that, as a result, the registration of the disputed domain name is abusive.

The Complainant wrote to the Respondent explaining the legal situation demanding either the transfer of the disputed domain name or permission to have it transferred to itself. The Complainant even offered to be responsible for any charges involved, and signalled that further steps would be initiated in the case of non-compliance. Copies of this correspondence were annexed to the Complaint. No reply was received and Complaint contends that it is left with no other option but to launch a formal complaint.

Respondent

As noted above, there was no Response.

4. Discussion and Findings:

General

According to paragraph 2 of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that –

i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and

ii the disputed domain name, in the hands of the Respondent is an Abusive

Registration.

The absence of a response from the Respondent does not mean that he has no answer to the Complaint. The Complainant must still make out its case.

Complainant's Rights

'Alternate' is a common English word. It does not exist in German (the language of the Complainant). Nevertheless, the Complainant has a valid Community trade mark registration for the word ALTERNATE covering a variety of goods and services, dated February 21, 2001. When making a comparison under the Policy, it is customary to disregard the suffix '.co.uk' and, having done so, it is clear that the disputed domain name and the name in which the Complainant has rights are identical.

Therefore, the first of the above two requirements is met.

Abusive Registration

An 'abusive registration' is defined in paragraph 1 of the Policy as being "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."

Paragraph 3(a) of the Policy sets out a non-exhaustive list of factors that define what can be an Abusive Registration, and the following would appear to be relevant in this case:

(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A. for the purpose of selling, renting or otherwise transferring the Domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain name;

B. as a blocking registration against a name or mark in which the Complainant has rights;

………

(iii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern;

In the absence of any Response, the Expert must accept the Complainant's description of the Respondent as a sole trader selling jewellery and coins with a sideline in registering and selling domain names. This is a curious combination, but the message on the Respondent's website is clear: "We have registered the following domain names beginning with the letter A, which we will sell/transfer/rent for a reasonable price:" There follows a list of 61 domain names, all registered in the .uk ccTLD, from to , and all with a price alongside, ranging from £1,000 (the cheapest) to £25,000 (the most expensive). Some are priced in dollars. The Expert has conducted a search on his own initiative and discovered that similar pages appear for all the other letters of the alphabet as well as for the numerals 0-9.

The Complainant ran a check on the 61 names beginning with the letter A and identified 3 – apart from 'alternate' – which could be said to belong to third parties other than the Respondent, and annexed copies of registrations of the corresponding company names or trade marks as proof thereof. If this pattern is repeated throughout the alphabet, there could be a significant number of domain names being offered for sale by the Respondent, for not insubstantial sums of money corresponding to names which are not its to own or sell. In the opinion of the Expert, this is clear evidence that the Respondent is engaged in a pattern of selling domain names corresponding to trade marks in which it has no rights, and so it falls fairly and squarely within the circumstances of paragraph 3(a)(iii) as set out above. Therefore, the disputed domain name is indeed abusive.

5. Decision

The Expert finds that the Complainant has Rights in the name ALTERNATE and that this is identical to the disputed Domain Name.

The Expert further finds that the disputed Domain Name is an Abusive Registration in the hands of the Respondent.

The Expert therefore directs that the disputed Domain Name be transferred to the Complainant.

………………………………………………

David H Tatham

October 25, 2005