Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service
DRS 03195
Aston Media Ltd v Simon Bezant Decision of Independent Expert

1. Parties:

Complainant

Complainant: Aston Media Ltd. t/a Sundeckvip

Country: GB

Respondent

Respondent: Mr Simon Bezant

Country: GB

2. Disputed Domain Name:

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

3. Procedural Background:

The Complaint was lodged with Nominet on 8 December 2005, with papers being received by Nominet on the same date. The Complaint was validated on 12 December and the Respondent was informed of the Complaint by letter on that same day. The Respondent entered a Response which was received by Nominet on 4 January 2006. The Complainant was advised by Nominet of this Response on 10 January 2006 and on 19 January 2006 a Reply was received from the Complainant.

Nominet initiated its mediation procedure on 19 January 2006, but on 23 January both parties informed Nominet that they did not wish to pursue mediation. On 27 January 2006, the Complainant paid Nominet the required fees for a decision of an expert in accord with Paragraph 6 of the Nominet (UK) Dispute Resolution Service Policy ("the Policy"). On 31 January Nominet contacted myself (Andrew Murray) to inquire whether I might provide an independent decision in this dispute. I formally confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as an Expert in this case and further confirmed that I knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality. On 5 February 2006 I was appointed as Independent Expert for this dispute.

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

There are no outstanding formal/procedural issues.

5. The Facts

The Complainant (Aston Media Limited) is a company, registered in England & Wales and incorporated in February 1999 under the Companies Acts with Company Number 03721463 which has previously traded using the brands "Sundeck" and "Sun-Deck" and now trades as "Sundeckvip". The brand refers to a luxury lifestyle book published by the complainant which offers information and advertising relating to several luxury brands and goods but which has a close association with Sunseeker luxury yachts and which presumably provides the impetus behind the name "Sundeck", that being the name given to an unroofed deck on such boats.

The "Sundeck" publication has been published annually by the Complainant since 1999. From December 2001 the Complainant moved into the online environment through the domain name "sun-deck.com". On 16 October 2003 the Complainant registered the additional domain name "sundeckvip.com" and began to move their online presence to this new address. They also rebranded their business at this date with the new domain name being advertised in the 2004 edition of "Sundeck", and throughout 2004/05 all company communications and stationary were rebranded to reflect the "Sundeckvip" brand. Finally on 19 January 2005 the Complainant applied to registered the name "Sundeckvip" as a UK Trade Mark in classes 16 (Publications relating to luxury lifestyles) and 35 (Advertising of services provided over the Internet), an application which was granted on 29 July that year.

The Respondent is Mr Simon Bezant, a self-employed web developer and designer. Mr. Bezant runs an e-commerce business entitled "Old English E-commerce Solutions" and as part of this business registered the Domain Name on 16 January 2005 as one of a portfolio of luxury names which he intends to develop into a variety of luxury/VIP websites in partnership with established luxury brands. One example of his work is the luxuryhifi.com website which he developed on behalf of Audio Images Ltd. a luxury hi-fi company. It appears that prior to October 2005 Mr. Bezant was using the Domain Name to redirect web users to the luxuryhifi.com website and it was this that brought it to the attention of the Complainant.

On or about 24 October 2005 the Complainant contacted Audio Images Ltd. Asking that the Domain Name be transferred. Audio Images passed the request to the Respondent as the registered holder of the Domain Name. Unfortunately discussions between the parties became increasingly fraught and from October 2005 the link to the luxuryhifi.com website has been severed. The Domain Name now leads users to a login box, the Respondent having password protected the site.

6. The Parties' Contentions

Complainant:

The Complainant contends that:

1. The Respondent has registered the Domain Name with a view to "hijacking" the brand of the Complainant, in breach of Paragraph 3(a)(i)(C) of the Policy.

2. The Respondent is passing himself off as the Complainant, in breach of Paragraph 3(a)(ii)of the Policy.

3. Sundeckvip is like fcuk, a completely unique word not to be found in the dictionary. It must therefore be descriptive of only the Complainant's business.

4. When contacted the Respondent demanded payment of £7,500 for the Domain Name.

5. The Respondent is blocking the Complainant by retaining the Domain Name and by password protecting the website to which it resolves in breach of Paragraph 3(a)(i)(B) of the Policy.

6. The Respondent has registered the name with a view to selling it to the Complainant in breach of Paragraph 3(a)(i)(A) of the Policy.

Respondent:

The Respondent contends that:

1. The Respondent registered the Domain Name on 16 January 2005. This date is precedes by three days the date that the Complainant filed their Trade Mark application with the Patent Office, an application which was granted on 29 July 2005.

2. The Respondent sees no evidence to suggest that sundeckvip.com has been an actively trading website for the Complainant from 16 October 2003.

3. In reply to Claim 3 above, both the words 'sundeck' and 'vip' are both terms to be found in the Oxford English Dictionary and that many domains use two, three or more words added together to make a domain name. Some are descriptive, some are not. The intention that the Respondent has for using the domain sundeckvip.co.uk is a descriptive one and in no way connected with the business of the Complainant.

4. At no time was sundeckvip.co.uk being used to 'Pass Off'.

5. At no time was there a demand £7,500 for the domain sundeckvip.co.uk.

6. The Domain Name forms part of a plan involving the development of a variety of Luxury/VIP websites most of which require the Respondent to work in partnership with a variety of different companies providing Luxury/VIP services. An example of this is www.luxuryhifi.com which was developed to advertise and sell the products of Audio Images. The benefit of which to Audio Images was that they needed not to pay anything to the Respondent for the development of the website, but instead only commission on sales generated through the website, allowing them to expand their business with no added cost. To enter the relative markets the Complainant needed to acquire the relative domain names. This has led to a portfolio of nearly 50 Luxury/VIP related domains. These domains are either in use as www.luxuryhifi.com is, or are in development, or indeed are being redirected to other domains in the group until such time they are under development. Once under development the sites become password protected to allow for confidential online site testing. sundeckvip.co.uk and sundeckvip.net both form part of this portfolio.

7. The Complainant has attempted to recover the Domain Name by improper means including putting pressure on clients of the Respondent, pressurising the Respondent directly and by sending unprompted payments for the Domain Name.

Reply:

The Complainant was offered the opportunity to reply to the response and on 19 January 2006 these further replies were entered on behalf of the Complainant:

1. Sundeckvip is a wholly owned trade mark and product of the Complainant and is the trading brand under which the company operates.

2. Sundeckvip is a hybrid fictional word taken from the publication Sundeck and referring to readers as vip's. Sundeck has been published since 1999 and the word sundeckvip cannot be found in the English dictionary.

3. The website sundeckvip.com has indirectly been trading since December 2001. Prior to November 2003 it was called sun-deck.com. The name was changed to sundeckvip.com in October 2003. The website with its new domain name was first advertised in the 2004 edition of Sundeck (printed in November 2003).

7. Discussion and Findings:

General

The Complainant has to establish under paragraph 2(a)(i) of the Policy 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 under paragraph 2(a)(ii) of the Policy that the Domain Name, in the hands of the Respondent, is an Abusive Registration, again as defined in paragraph 1 of the Policy. The Complainant has the burden to prove on the balance of probabilities both that it has such rights and also that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

7.1 Rights in the Domain Name

The Complainant relies upon the goodwill they have established in the trading name "Sundeckvip". The definition of "Rights" for the purposes of the UDRP Procedure and Policy is contained in Paragraph 1 of both the DRS Policy Version 2, "the Policy". and the DRS Procedure Version 2, "the Procedure" and is "Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business". In this complaint both arms of this definition are in dispute and therefore I will deal with each in turn.

7.1.1 Rights

It is clear that if the Complainant can establish goodwill in the name "Sundeckvip" it will fulfil the first arm of the definition. This has been established in several DRS decisions, including The Rug Company v Wonderland Rug Company DRS 00370; Chris Dellar Ltd. v Jonathan Hunt DRS 02459 and T.C. Hayes Limited v Jason Green DRS 01180. The Complainant has produced evidence which shows that it was trading under the Sundeckvip brand from at least January 2004, with branded letterheads, membership cards and others and has further demonstrated that it has been using the domain name sundeckvip.com as part of its business portfolio from that date. Although the Complainant cannot prove that goodwill has definitely been established in the brand on the basis that goodwill has been accruing to the name from early 2004 and it was January 2005 before the Respondent registered the Domain Name then by applying the ratio of the decision of the Expert in Chris Dellar Ltd. v Jonathan Hunt DRS 02459, where the Expert assumed "that the Complainant here has begun to develop some reputation and goodwill, which over time will have given rise to common law rights that may well entitle it to restrain others from passing off their business as that of the Complainant by using the name Chris Dellar" and found that "the Complainant has Rights in respect of the name Chris Dellar" even though the Complainant had only been trading under that name for a period of four months at the time the Complaint was made, I believe that we can assume on the balance of probabilities that the Complainant had accrued substantial goodwill in the name by 16 January 2005. On this basis I am satisfied that for the purposes of Paragraph 1 the Complaint who had traded under the name "Sundeckvip" for around 12 months prior to the registration of the Domain Name had established by that time sufficient goodwill in the name. The subsequent trade mark application need not therefore be discussed.

7.1.2 Descriptive or Generic Terms

The Respondent further challenges the Complaint's ability to possess rights in the name on the basis that "both the words 'sundeck' and 'vip' are both terms to be found in the Oxford English Dictionary and that many domains use two, three or more words added together to make a domain name. Some are descriptive, some are not." (Response, Paragraph 3). This issue is one that I reviewed at length in the earlier decision Manorgate Ltd. t/a Direct Flooring v Ian Moffat DRS 02736. In that decision I noted that "it is quite common for generic terms to take on a secondary meaning when associated with a single company or individual." By applying the reasoning outlined in full in that decision and having taken account of the relevant materials discussed therein, namely the decision in Robert Smith & Others v Beds Direct Nationwide Limited [2001] WL 1479773 (Ch D), and the DRS decisions The Rug Company v Wonderland Rug Company DRS 00370; Flowers Direct Online Ltd v Peter Calvert DRS 00610, and Exeter Airport Direct v Clint Thrower DRS 01528, I believe that the term "Sundeckvip" is capable of a secondary meaning and is not merely a descriptive term . Therefore applying the standard set out in Manorgate Ltd. t/a Direct Flooring v Ian Moffat and Dawkes Music v Musical Instrument Megastore Limited DRS 02543 that the definition of "rights" "has always been treated in decisions under Nominet's DRS as a test with a low threshold to overcome" I find that that the Complaint has established that they have rights in respect of a name (Sundeckvip) which is identical or similar to the Domain Name.

7.2 Abusive Registration

To be an Abusive Registration the Domain Name must be one which either "...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 has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights" (Paragraph 1 of the Policy)

Paragraph 3(a) of the Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These are as follows:

"Evidence of Abusive Registration

i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily;

A. for the purposes 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; or

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

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;

iii. The Complainant can demonstrate that the Respondent is engaged in a pattern 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;

iv. It is independently verified that the Respondent has given false contact details to us; or

v. The Domain Name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A. Has been using the Domain Name registration exclusively, and

B. Paid for the registration and/or renewal of the Domain Name Registration.

In their complaint, the Complainant suggests claims under paragraphs 3(a)(i)(A), 3(a)(i)(B), 3(a)(i)(C) and 3(a)ii.

Paragraph 3(a)(i)(A)

The Complainant bases their claim under this sub-paragraph on their assertion that: "When we contacted Mr Bezant to bring to his attention that he was in our opinion 'passing off' as sundeckvip he demanded £7,500 for the domain name." The Respondent rejects this assertion claiming: "At no time did I demand £7,500 for the domain sundeckvip.co.uk. This is yet another claim from the complainant that is a lie." The Complaint re-asserts this assertion in their Reply, and provides a copy of an internal e-mail sent on 25 October 2005 from Simon Weir-Rhodes (Managing Director of Aston Media Ltd.) to fellow Director Ian Hornblow. This message is though merely an internal communication regarding the alleged offer, there is no independent written record of the offer and no independent corroboration of the discussion which is alleged to have taken place. Although the Complainant only requires to prove the "elements are present on the balance of probabilities" (Policy, paragraph 2(b)), the Complainant has not established to my satisfaction that such a conversation took place on or about 25 October 2005. As such there is no evidence that the Respondent registered the Domain Name primarily with a view to profiting from the name in breach of the conditions of paragraph 3(a)(i)(A). I therefore reject this part of the Complainant's claim.

Paragraph 3(a)(i)(B)

The Complaint contends that: "He (the Respondent) has now put it up as a password protected site." The Respondent rejects this contention stating that: "Domains are either in use as www.luxuryhifi.com is, or are in development, or indeed are being redirected to other domains in the group until such time they are under development. Once under development the sites become password protected to allow for confidential online site testing. Sundeckvip.co.uk and sundeckvip.net both form part of this portfolio."

To date the Respondent has made limited use of the Domain Name. For a period in early 2005 it was used to redirect individuals to the website operated by the Respondent on behalf of Audio Images Ltd. at the luxuryhifi.com domain. From late October 2005 this association was severed and any content at the site to which the Domain Name resolves is now hidden behind a login box.

As with the claim, above, under Paragraph 3(a)(i)(A), the Complainant is required to establish that the Respondent has "registered or otherwise acquired the Domain Name; primarily as a blocking registration against a name or mark in which the Complainant has Rights." The burden of proof thus rests initially with the Complainant and this burden requires them to discharge not simply that the Domain Names may act as a blocking registration, but that this was the primary intent of the Respondent at the time the registrations were made. This issue was discussed in the DRS Appeal decision Viking Office Products, Inc. v Wenda Sparey DRS 02201, where the majority panellists noted that "It is for the Complainant to prove on the balance of probabilities that the Domain Name, in the hands of the Respondent, is an Abusive Registration, that is that the Respondent is taking unfair advantage of, or is unfairly detrimental to the Complainant's rights". In that decision, the majority panellists noted that such decisions were often difficult to reach because of a lack of available evidence presented by the Complainant. This case is one such case.

The Complainant claims the Respondent is acting in an abusive manner by blocking access to the Domain Name through a password login system. Although it is clearly the case that this prevents use of the Domain Name by the Complainant this falls somewhat short of qualifying as a blocking registration. There is no evidence to show that the Respondent registered this Domain Name with the primary intent to block the Complainant as required by the Policy. In fact the Respondent's evidence that he wished to use the name as part of a portfolio of names in a business plan seems more compelling given his development of the luxuryhifi.com web site. As such I find that the Complainant has failed to establish on the balance of probabilities that the Respondent registered the Domain Name primarily with a view to block the Complainant in breach of paragraph 3(a)(i)(B). I therefore reject this part of the Complainant's claim.

Paragraph 3(a)(i)(C)

The Complaint further contends that: "The Respondent has registered the Domain Name with a view to 'hijacking' the brand of the Complainant, in breach of Paragraph 3(a)(i)(C) of the Policy." The Respondent replies to this claim on two grounds (1) "both the words 'sundeck' and 'vip' are both terms to be found in the Oxford English Dictionary and that many domains use two, three or more words added together to make a domain name. Some are descriptive, some are not. The intention that I have for using the domain sundeckvip.co.uk is a descriptive one and in no way connected with the business of the Complainant." And (2) "at no time was sundeckvip.co.uk being used to 'Pass Off'." The second of these responses seems quite correctly to be an issue for the Expert to decide and as such will be dealt with by way of the following analysis.

The question which remains to be established is whether there is a reasonable explanation as to why the Respondent decided to fuse together the common terms "sundeck" and "vip". The Respondent claims that this is part of his business of producing a number of luxury websites in partnership with established luxury brands. While this may be so the particular choice of these two terms is at least questionable. Although a sundeck is a well known luxury addition to a yacht or luxury home it is not a word commonly encountered such as the words luxury and hi-fi fused in his other example. Also there are many more commonly used terms to describe the luxury lifestyle choice this represents such as "luxury yachts", "boat club", "yachting vips" and many more. It seems fair to question the Respondent's motives in registering the exact combination "sundeckvip" which is used by the Complainant as a trading identity. In so doing I am reminded of Mr. Tony Willoughby's "four-stage test" set out in Chivas Brothers Limited v. David William Plenderleith DRS 00658:

Where a Respondent registers a Domain Name:

1. which is identical to a name in respect of 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.

In the instant case it is clear that the name chosen is identical to the Complainant's trading name, a name in which it may be assumed they had developed substantial goodwill by the date the Respondent registered the Domain Name. The name is in the words of the Complainant "like fcuk, a completely unique word not to be found in the dictionary…descriptive of only the Complainant's business." There is, to the Expert's knowledge, no other company or business using this name and an extensive Google search showed no other user of this term or name. There is from the Respondent no specific justification given for the adoption of these specific terms in this order. The generic justification of developing luxury brand websites seems not to address either head three or head four. I therefore draw the inferences set out that the Respondent registered the Domain Name for a purpose and that that purpose was abusive, the purpose in question being to disrupt in some form the business of the Complainant. I therefore find that the Complainant succeeds in their claim under Paragraph 3(a)(i)(C).

Conclusion

Having examined all the materials available to me, I find that the Complainant has rights in terms of paragraph 1 of the Policy and Procedure and that on the balance of probabilities I find that the Complainant has proven their claim under paragraph 3(a)(i)(C) of the Policy. Further I find that the Respondent has failed to satisfactorily rebut the claim that the registration in the hands of the Respondent is an Abusive Registration. Finally, as the Complainant has successfully discharged their claim under paragraph 3(a)(i)(C) there is therefore no need to examine the Complainant's other claim.

Comment

Although the Expert finds in favour of the Complainant on the basis of the relevant information the Expert feels that he should comment on the submissions of the parties generally, and upon the suitability of the Nominet Dispute Resolution Procedure in dealing with disputes such as this. Both parties in their submissions to the Expert made extreme personal attacks on one another, bringing into question each other's business practices and professionalism. The Expert has studiously ignored all such irrelevant considerations in dealing with this Complaint. It is apparent from the submissions that underlying this case is a bitter personal dispute between the parties, which seems to have unfortunately arisen during early contact between the parties in October 2005. It is not the role of the Nominet Dispute Resolution Procedure to intervene in such disputes and parties are reminded that submissions and responses should be strictly limited to the issues outlined in the Policy and Procedure.

8. Decision:

For the reasons set out above, namely that the Complainant has Rights in respect of a name or mark which is similar or identical to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name sundeckvip.co.uk be transferred to the Complainant.

Andrew D. Murray 7 March 2006