Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS 03435

Dreaminvest S.A. -v- Andrew Dodd

Decision of Independent Expert

1. Parties

Complainant: Dreaminvest S.A.

Country: BE

Respondent: Andrew Dodd

Country: GB

2. Domain Name

resto.co.uk

3. Procedural Background

The Complaint was lodged with Nominet on 15 February 2006. Nominet validated the Complaint and notified the Respondent of the Complaint on 15 February 2006 and informed the Respondent that he had until 9 March 2006 to lodge a Response. No Response was received from the Respondent and, on 10 March 2006, Nominet informed the parties that, in the circumstances the dispute would not move to the Informal Mediation Stage of the Dispute Resolution Service and invited the Complainant to pay the fee to obtain an Expert Decision by 24 March 2006. On 15 March 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

On 17 March 2006 the undersigned David King ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties which might appear to call into question his independence and/or impartiality. Nominet appointed the Expert in this matter on 22 March 2006.

4. Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with Paragraph 5a of the Procedure.

Paragraph 15b of the Procedure provides, inter alia, that "if in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

Paragraph 15c of the Procedure provides that "if in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure….., the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."

Are there exceptional circumstances present in this case? At this point in the Decision, the Expert wishes to consider whether the complaint has been properly communicated to the Respondent. Under Paragraph 2a of the Procedure, Nominet will send a complaint to the Respondent using, in its discretion, one of the following means:

i sending the complaint by first class post, fax or e-mail to the Respondent at the contact details shown as the registrant or other contacts in Nominet's Domain Name register database entry for the Domain Name in dispute;

ii sending the complaint in electronic form (including attachments to the extent available in that form) by e-mail to:

A postmaster@the domain name in dispute: or

B if the Domain Name resolves to an active web page (other than a genuine page which Nominet concludes is maintained by an ISP for the parking of Domain Names), to any e-mail address shown or e-mail links on that web page so far as this is practicable; or

Iii sending the complaint to any addresses provided to it by the Complainant under Paragraph 3 (b) (iii) of the Procedure so far as this is practicable.

Under Nominet's current Terms and Conditions the registrant must inform Nominet promptly

of any change in his registered details and those of his Agent if applicable. It will be the

registrant's responsibility to maintain and update any details he submits to Nominet and to

ensure that his details are up to date and accurate.

Nominet have written to the Respondent at the postal address and the e-mail address shown

in the Register Entry and to postmaster@resto.co.uk . The Royal Mail have returned the

letter marked "addressee has gone away" and the emails have resulted in Delivery Failure

Reports. The Domain Name did not resolve to an active web-site.

The Expert does not consider that there are exceptional circumstances present in this case,

which prevent him from proceeding to Decision of this Complaint.

5. The Facts

Nicolas de Borrekens is the owner of the Community Trade Mark for "resto" number 002400224, which was filed on 4 October 2001 and registered on 27 August 2003. The Classes are 16, 35 and 41, which include, amongst other things, guides relating to restaurants, advertising services and promotional publicity, information relating to restaurants consultable via the Internet and publishing of printed publications containing information relating to restaurants.

On 15 March 2005, the Complainant's solicitors wrote to the Respondent care of his Agent to make an offer for the transfer of the Domain Name.

The Complainant is the owner of the domain name "resto.com" which was registered on 29 July 1995. This web-site has links to other web-sites "resto.be", "resto.nl", "resto.lu" and "resto.fr". These web-sites provide information, ranging from location to cuisine and reviews on restaurants in Belgium, the Netherlands, Luxembourg and France.

On 6 January 2004, the Domain Name was registered in the name of the Respondent.

The print-out of the web-site of the Domain Name provided by Nominet to the Expert shows that, on 15 February 2006, the web-site resolved to a parking page operated by the hosting agency 123-reg at their site www.123-reg.co.uk.

6. The Parties' Contentions

Complainant

The Complaint, which was submitted by solicitors, can be summarised as follows:

The contact details for the Respondent are taken from the WHOIS query website (details attached). The Respondent is described as an individual who has elected to have their address omitted from the WHOIS database. The Respondent's registration agent is Pipex Communications Hosting Ltd t/a 123-Reg.co.uk.

The Complainant, has rights in the Domain Name because it owns the Community trade mark for "resto", number 002400224.

The Complainant operates a website http://www.resto.be which was registered in the name of Nicolas de Borrekens in 2000; the domain name was subsequently sold in 2001 to the Complainant., a company in which Nicolas de Borrekens is the majority shareholder. The website provides a variety of information, ranging from location to cuisine and reviews, on restaurants across Belgium. Since 2001 the Complainant. has exploited the name resto.com as a generic web site that leads visitors to: resto.be, resto.nl, resto.lu, resto.fr All of these web sites provide information in a similar style to resto.be. The Complainant also holds the following domain names: resto.es and resto.eu.

In addition the Complainant holds the name resto.org.uk. Whilst this is a UK site the clear continuation of the Complainant's branding would be resto.co.uk; according to the Nominet site the .org suffix is used for non commercial operations, such as charities, professional institutions or community groups. This is not the sort of category that the Complainant is in and therefore would not be a method by which potential customers of the Complainant would search for the UK site.

The Domain Name registered by the Respondent is similar to those owned by the Complainant and confusion and inconvenience could be caused to those seeking to find one of the Complainant's 'resto' sites.

It is clear that, in the UK, the Domain Name in the hands of the Respondent is abusive because it was primarily registered to stop the Complainant or others registering it, despite the Complainant's rights in the name, and is thereby unfairly detrimental to the Complainant's rights.

The Respondent's registration of the Domain Name is abusive because the Respondent has failed to use the Domain Name for the purposes of e-mail or a web-site and as far as the Complainant is aware the Respondent has not made any use of it since registration. The registration was therefore a blocking registration under Dispute Resolution Service Policy ("DRSP") section 3 a i B. Whilst that fact in itself is not evidence of the abusive registration, in the circumstances the Complainant considers that it should be considered as part of the abuse.

The Respondent has failed to answer communications from the Complainant which attempted to open a dialogue concerning a potential sale of the Domain Name. The Complainant has attempted to contact the Respondent by email, letter and telephone through the Domain Name registry 123.co.uk to no avail; the registry is unable to provide the Complainant with an address for the Respondent and the Respondent has taken advantage of this relative anonymity to avoid communication with the Complainant. To date the Complainant has received no response to any of its communications and in particular to its offer of a reasonable purchase price for the Domain Name.

The Complainant is trying to expand its business in order to have a site relating to each major European country in what is a logical progression from the starting point of the original Belgian site. It is essential for ease of access for potential users and for the credibility of the site in the UK that the Complainant use "resto.co.uk" in order to maintain the conformity of what is already an established brand. By his ownership of the Domain Name and a refusal to communicate the Respondent is deliberately and unfairly blocking the Complainant from building on the success of resto.com; this constitutes evidence of an abusive registration under DRSP section 3 a i C.

The Expert has read all the documentation supplied with the Complaint by the Complainant's solicitors in support of their contentions

Respondent

The Respondent has not responded to the Complaint.

7. Discussion and Findings:

General

Paragraph 2 of the Policy requires that, to succeed, the Complainant must prove to the Expert, on the balance of probabilities, both that the Complainant 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 Expert finds the Complaint submitted by solicitors, to be somewhat ambiguous. In the Complaint form, the Complainant is stated to be Dreaminvest S.A. but, in the letter enclosing the hard copy of the Complaint, the solicitors state that they act for Nicolas de Borrekens the owner of the company Dreaminvest S.A. After listing the various assets in which Dreaminvest S.A. claims to have rights, the solicitors say that "all of these assets are owned by Nicolas de Borrekens". The solicitors have not provided any documentary evidence regarding the registration or constitution of Dreaminvest S.A. or acquisition of the assets by the company.

The evidence supplied with the Complaint, shows that Mr de Borrekens is the owner of the Community Trade Mark in the mark "resto". The Complainant's solicitors have not provided any evidence to support their statement in the Complaint that the mark is owned by the Complainant. It is reasonable to infer that Mr de Borrekens has granted to the Complainant the right to use the mark but the Expert would have like to have seen some evidence or further information on this point.

The Complainant's solicitors have provided little information regarding the trading history of the Complainant but the evidence confirms that the Complainant is the owner of the web-site www.resto.com, which was registered in 1995 and that this web-site links to other web-sites in Europe providing information on restaurants in Belgium, the Netherlands, Luxembourg and France. The Expert is prepared to accept that the Complainant has acquired goodwill in the name "resto". It is not clear when the Complainant commenced trading in the name of "resto" but it would certainly appear to b prior to registration of the Domain Name by the Respondent.

The threshold for establishing "Rights" under the Policy is a low one and it is the Expert's view that the Complainant has met this threshold in this case but only just. Complainants and their solicitors are reminded that they should provide documentary evidence to support their submissions; otherwise they risk their complaints being rejected.

The name "resto" is identical to the Domain Name. It is appropriate to discount the domain suffix <.co.uk> which is of no relevant significance and wholly generic.

The Expert finds that, for the purposes of the Policy, the Complainant has Rights in respect of a name or mark which is identical to the Domain Name.

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 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 is set out in paragraph 3 of the Policy. The Complainant refers to factors 3 a i B and, secondly, 3 a i C and, by inference, to 3 a ii.

Under paragraph 3 a i B, it may be evidence of Abusive Registration if circumstances indicate that the Respondent registered the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights. As the Respondent has not responded to the Complaint, we do not know why he chose to register the name "resto", which is distinctive. It appears that the Respondent has not used the Domain Name for the purposes of e-mail or a web-site. Whilst this is not, in itself, conclusive evidence of Abusive Registration, it does cast doubts on the Respondent's motives.

Under paragraph 3 a i C, it may be evidence of Abusive Registration if circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant. The Complainant submits that, by registering the Domain Name and refusing to communicate, the Respondent is deliberately and unfairly blocking the Complainant from expanding its business. No evidence has been submitted of actual disruption of the Complainant's business but, as already mentioned, we do not know why the Respondent registered the Domain Name. It is apparent that the registration by the Respondent is preventing the Complainant from using its business name "resto" in the .co.uk Registry on the internet. As far as the Respondent's failure to communicate is concerned, the Expert notes that, when the Complainant's solicitors wrote to the Respondent on 15 March 2005, they merely said that they were contacting the Respondent on behalf of a client in order to make an offer for the Domain Name, that their client was willing to cover the Respondent's expenses in relation to the Domain Name and that they proposed a figure of £300 for transfer of the Domain Name. There was no heading to the letter or other indication of the identity of the solicitors' client. If the Respondent received this letter, he would have had no reason to conclude that the solicitors were approaching him regarding a client, who claimed Rights in the Domain Name and he might well have taken the view that there was no need for him to respond. The Expert has therefore disregarded this correspondence as evidence of Abusive Registration.

Under paragraph 3 a ii, it may be evidence of Abusive Registration if circumstances indicate that the Respondent is using the Domain Name in a way which has caused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. The Complainant submits that confusion and inconvenience could be caused to those seeking to find one of its "resto" sites. It appears that the Respondent has not used the Domain Name and that, when the Complaint was filed, the Domain Name resolved to a parking page. The name "resto" is distinctive and, in the view of the Expert, if the Respondent were to use the Domain Name as an active web-site, it is likely that visitors to the Domain Name would be confused. This is a further factor to be taken into account.

Of particular significance is that there appears to be no good reason for the Respondent having chosen to register such a distinctive name, which Mr de Borrekens filed as a Community Trade Mark well before the Respondent's registration of the Domain Name. Registration of the Trade Mark was granted some months before the Respondent's registration. In the absence of any evidence to the contrary, this, alone, points to Abusive Registration by the Respondent.

The Expert has also considered paragraph 3 a iv, under which it may be evidence of Abusive if Registration if it is independently verified that the Respondent has given false contact details to Nominet. It has not been suggested that the Respondent has given false contact details to Nominet but it does appear that he has not kept his contact details up to date. This is a factor to be taken into account in addition to any other relevant factors.

Taking into account the above comments and all the circumstances, the Expert considers that the Complainant has proved its case on the balance of probabilities.

8. Decision

In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is 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 www.resto.co.uk be transferred to the Complainant.

David King

31 March 2006