Nominet UK Dispute Resolution Service
DRS Number 04448
Parties: CSMA v Denys Ostashko
Decision of Independent Expert
Complainant: CSMA
Country: GB
Respondent: Denys Ostashko
Country: GB
csma.co.uk
This domain name is referred to below as the "Domain Name".
A hardcopy of the Complaint was lodged with Nominet on 14 February 2007. Nominet validated the Complaint on 15 February 2007 and notified the Respondent. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response to the Complaint. A Response was submitted within this time limit on 6 March 2007. The Complainant did not submit a Reply. The dispute was not resolved in mediation. On 19 April 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").
Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
On 8 May 2007 pursuant to clause 13 of the Dispute Resolution Procedure (the Procedure) the Expert invited Further Statements from the Parties on developments which had occurred in relation to the use of the Domain Name subsequent to the filing of the Complaint (these are detailed below in section 5 of this Decision.) A further statement was filed by the Complainant on 10 May 2007 and by the Respondent on 15 May 2007. In both cases this was within the timeframe set by the Expert.
There are no outstanding issues.
The Complainant
The following information about the Complainant is available from the Complaint and its appendices (and has not been disputed by the Respondent).
The Complainant is the Civil Services Motoring Association (CSMA). It is the UK's largest private home, motoring and leisure association. It has traded since 1923. It provides its members (of which there are currently around half a million) with over 50 categories of benefit, including branded products such as "csma Carshop & Travelshop", "csma Credit Card", "Britannia Rescue" breakdown cover and also home, car and travel insurance. Since 1923 it has predominantly traded under the csma mark (the Mark). A selection of the Complainant's marketing material for 2006-2007 is enclosed with the hard copy of the Complaint as Appendix 2. The Mark features prominently in the documents and this supports the Complainant's position that the services it offers are heavily branded with the Mark. The Complainant's turnover for 2005 was £37.1 million. It is anticipated that turnover will be higher for 2006 but accounts have yet to be finalised. The Complainant states that it invests "substantial amounts" in order to educate the public at large, and specifically its prospective future members, that the Mark is synonymous with the Complainant and is to be associated with its services alone. No details are given for the marketing expenditure. The Complaint also asserts that a significant proportion of the relevant public (including its half a million members) and the insurance industry as a whole, recognise the Complainant by reference to the Mark and associate the Mark with the Complainant's services. There is no independent evidence put forward to support this assertion.
The Complainant owns 21 trade mark registrations which feature the Mark either alone or in conjunction with other words (e.g. csma Cars.) Details of these registrations are set out in Appendix 1 of the Complaint. The registrations include registration numbers 1535368, 1535369, 1535370, 1535371, 1535372, and 1535373 all for the word mark "CSMA" without any additional word or device. These 6 registrations were registered as of 10 May 1993 in classes 16, 36, 37, 39, 41 and 42 respectively. The goods or services that the registrations cover are wide ranging and include printed matter, mortgage, insurance, credit card and debit card services, vehicle maintenance and repair, recovery, towing and transport of vehicles and legal and legal advisory services.
The Complainant's official internet presence is the website at "www.csma.uk.com". Printouts of the website are enclosed at Appendix 3 to the Complaint. The printout shows consistent use of the Mark throughout the Complainant's website.
The Respondent
A Nominet WHOIS search shows that the Domain Name was registered by the Respondent on 26 October 2005. The Respondent's status is given as "UK individual".
The Complaint asserts that the Domain Name has since its registration been used by the Respondent to provide an income stream by way of pay-per-click revenue from unconnected third party domain name parking websites. Two screen shots dated 24 July 2006 are exhibited at Appendix 4 to the Complaint and confirm the Complainant's description. The screen shots feature a list of businesses offering services which include cheap car hire, insurance, loans and travel.
On 24 July 2006 the Complainant's solicitors wrote to the Respondent seeking an agreement from the Respondent that it would, amongst other matters, transfer the Domain Name to the Complainant. A copy of the letter and attachments are enclosed with the Complaint at Appendix 4. The Respondent replied to the letter by email dated 6 September 2006 (exhibited at Appendix 5 to the Complaint.) The Respondent refused to transfer the Domain Name to the Complainant. The Complainant states that this refusal is evidence of bad faith. The Respondent's stated reasons for refusing will be considered below and in the next section of this decision.
In the Response the Respondent gives further information about the way that the Domain Name was being used at the date of the Complainant's letter in July 2006. It states that at that time the Domain Name was parked with an organisation which provided categorised advertisement listings on e-commerce topics. The Response explains that this practice of domain parking is a widely recognised practice utilised on the Internet for domains currently not used and/or pending development. Parking provides a set of tools for the domain name owner to "assess domain characteristics and assist in the development stage". The Respondent states in the Response that;
"As I learned about Complainant and services they have trademarked under the 'CSMA' word, I immediately took required measures to prevent any possible confusion or advertisement of services similar to those protected under the trademark classes. This included removing domain from parked service, to completely avoid 3-rd party advertisements, who could potentially deliver all sort of ads for the word 'CSMA', which I can't control".
The Complainant has not challenged this assertion by service of a Reply.
The Respondent goes on in the Response to state that it chose the Domain Name for a new project it is developing "Classified Search Marketing Agency" (CSMA.) This venture is also referred to in the Respondent's reply to the Complainant's letter in September 2006. In the Response the Respondent states that the project;
"is still in development [and it] pursues a goal to deliver brand new experience for Internet users in their search for goods and services. As soon as Agency becomes operational, domain name will be used for it's main website, while 'searcher.co.uk' (where 'csma.co.uk' is now redirected) is intended to provide end user interface".
The Complainant makes no reference to this new use in its Complaint and did not serve a Reply.
The Expert carried out a search of the Domain Name on 7 May 2007 which confirmed that the Domain Name no longer reverts to the site captured in the screenshots dated July 2006. The Expert was taken to searcher.co.uk, a search page which in turn led to a listing of various types of goods and services. This changed use of the Domain Name appeared to the Expert to raise new considerations. The Expert felt that to make a decision without reference to the new use could be artificial. However in the absence of submissions from both parties about the new use she felt that it would be inappropriate for her to make a decision which took the new use into account. Accordingly she invited the Complainant to make submissions about the new use of the Domain Name by way of a Further Statement under clause 13 of the Procedure. The Respondent was then given an opportunity to respond to the Complainant's additional submission.
In its Further Statement the Complainant states that the domain name searcher.co.uk, to which the Domain Name now points, was registered by the Respondent on 9 August 2006. This is confirmed by a Nominet WHOIS search appended to the Further Statement dated 10 May 2007. The Respondent does not take issue with this.
Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts according to the 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.
For convenience the decision will set out the Complainant's submissions and, where the Respondent has responded to a submission, the Respondent's response will follow.
Issue one
Rights in a mark identical or similar to the Domain Name
Complainant
The registration of the Domain Name by the Respondent incorporates the Complainant's registered trademark and was not authorised by the Complainant. The registration and use of the Domain Name falls within the definition of an instrument of fraud set out in the One In A Million case (British Telecommunications plc v One in a Million [1998] 4 All ER 476) (whereby the mere act of unauthorised registration of a well known or registered trade mark is evidence of an intention to deceive.)
Respondent
The registration of .co.uk domain names works on a first come – first served basis and the fact that the Complainant owns trademarks for 'CSMA' in several classes does not automatically grant rights to the Domain Name or restrict others from registering and using the Domain Name for other purposes in the course of trade.
The Complainant's reference to the One in a Million case is not applicable on the facts at issue. The Domain Name is not distinctive of the Complainant and is a generic acronym. It can be used in myriad ways not connected to the Complainant, while in One in a Million the domains were considered as instruments of fraud, only because they were so distinctive, that 'any realistic use of them would result in passing-off'.
Issue two
Abusive Registration
Complainant
The Domain Name has, since registration, been used by the Respondent to provide an unauthorised income stream by way of pay-per-click revenue from unconnected third party domain name parking websites.
Respondent
At a time when the Respondent was not aware of the Complainant's existence the Domain Name was parked and unconnected third parties were able to display advertisements there. As soon as the Respondent was made aware there could be possible trade mark issues with the advertisements displayed, the Domain Name was taken down. The Domain Name was recently brought back online. It is temporarily pointing to the 'searcher.co.uk' website.
Issue three
Complainant
The Respondent's refusal to agree to transfer the Domain Name indicates bad faith on the part of the Respondent.
Respondent
This is a false statement. Good faith was shown by the prompt removal of all advertising listings from the Domain Name.
Issue four
Complainant
The Complainant has received reports from confused customers/enquirers that they had searched for the Complainant's official internet presence and that they had assumed that the Domain Name was connected or associated with the Complainant. The Respondent has accordingly used the Domain Name in a way which has confused people into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. The Respondent has not made any attempts to publish a corrective statement on any website at the Domain Name.
Respondent
There is no evidence to support these reports. Under the Respondent's ownership the Domain Name has never looked similar to the Complainant's website. It is impossible to assume it is connected to the Complainant, as all it contained were links to other websites. The Response submits that;
"The Complainant is called 'Civil Service Motoring Association' and is proud to be a non-profit organisation. It's therefore unknown to me, why the Complainant is so much concerned to obtain 'csma.co.uk' domain name, when '.co.uk' internet suffix is intended for commercial organisations. On other hand, 'csma.org.uk' is owned by 'Club Secretaries and Managers Association' and 'csma.ltd.uk' is owned by 'Centre for Surface and Materials Analysis'. However, the Complainant is only bothered about "confusion" related to the '.co.uk' suffix. Considering the Complainant's spending on advertising, it's also hard to understand why it's members keep looking for 'CSMA.uk.com' elsewhere and create problems for owners of other domain names."
Issue five
Complainant
There is no evidence that before being informed of the Complainant's dispute, the Respondent has used or made demonstrable preparations to use the Domain Name or a similar domain name in connection with a genuine offering of goods or services. The Respondent is not using (and has never used) the Domain Name in relation to any legitimate business which makes use of a trading name similar with or identical to the Mark.
Respondent
This is not evidence of abusive registration.
Issue six
Complainant
The Domain Name, although comprising an acronym, is not generic or descriptive and the Respondent is not making fair use of it.
Respondent
This statement is not true. Two domain names (csma.org.uk and csma.ltd.uk) are used by two different entities, not related to the Complainant. This shows that the acronym is not distinctive. In addition to that, a quick search within the UK Internet segment, shows how the 'CSMA' acronym is widely used and popular: The Respondent mentions the following organisations; The Centre for Surface & Materials Analysis (CSMA) Ltd. Concrete Sleeper Manufacturers' Association, CSMA Cementitious (sic) Slag Makers Association (www.ukcsma.co.uk)
Respondent's summary (extracted from the Response)
"Considering how the Complainant's makes up it's statements, I have all reasons to believe this is an attempt to reverse-hijaq domain name from me. I appreciate that the Complainant is known under the name of 'CSMA', but Internet and DNS was developed by it's origins to support multiple suffixes, allowing different companies to happily co-exist, therefore I deny that the Complainant has exclusive right to the domain name 'csma.co.uk', when already using 'csma.uk.com'. The Domain Name is registered in a good faith for genuine project and is not abusive".
Submissions made in the Parties Further Statements Pursuant to Clause 13 of the Procedure
Complainant
The Complainant confines its additional submissions to the vagueness of the Respondent's description of its future plans set out in the Response. Surprisingly the further statement makes no submissions about the actual content of the website to which the Domain Name is diverted (at searcher.co.uk).
Respondent
The Respondent's further statement repeats some of the submissions set out above. Where new information is given it does not relate to the amended use of the Domain Name and as such will be discounted.
Under clause 16 of the Procedure the Expert must decide a complaint on the basis of the parties' submissions, the Policy and the Procedure. The Expert is of the view that the Complainant's amended use of the Domain Name could be problematic under the Policy as a result of the content of the website operated at searcher.co.uk. However the Complainant has chosen not to raise this issue- despite having been invited by the Expert to make additional submissions about the amended use. The Expert will accordingly proceed with a decision based on the use of the Domain Name that is referred to in the Complaint (and which has now ceased.) This is somewhat artificial but it would not be appropriate for the Expert to strengthen the Complainant's case beyond the matters raised in its submissions.
General
Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts according to the 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 (clause 2b of the Policy).
Complainant's Rights
Rights are defined in clause 1 of the Policy as including but not limited to "rights enforceable under English law."
The Complainant's Rights
The Complainant is the proprietor of trade marks consisting of the CSMA word mark for a range of goods and services. The Complainant has therefore demonstrated that it owns Rights in the Mark for the purpose of the Policy. Even if it did not own registered trade marks the Expert finds that the CSMA brand is sufficiently well known in connection with its provision of a wide range of leisure, credit and insurance services (having been in use since 1923) to have generated goodwill in the UK. Although the Expert has no financial information about annual marketing spend she is satisfied from Appendix 2 to the Complaint that the Mark has been marketed extensively in a variety of advertising and promotional material. The unregistered rights in the goodwill would also be sufficient to establish Rights under the Policy.
The Respondent casts doubt on the distinctiveness of the Mark and refers the Expert to other organisations that make use of the CSMA acronym. This position does not alter the Expert's finding. The Complainant's Rights in this matter may or may not extend across an infinite range of goods and services and market sectors. Sometimes goodwill and trade mark registrations do extend beyond the goods and services that are actually provided by the brand owner. But the Expert is not required to make a finding on whether that is the case in this matter and would in any event be unable to do so on the basis of the evidence before her. Her finding is therefore limited to confirmation that the Complainant does have Rights under the Policy in the Mark and that these rights relate to the goods and services that the Complainant currently provides.
The next question is whether the csma brand in which the Complainant has Rights is identical or similar to the Domain Name to invoke the Policy. It clearly is. The only difference to the Mark is the addition of the suffix ".co.uk" which it is customary to disregard.
It follows that the Complainant has met the first requirement of the Policy, namely it has shown that it has Rights in a name which is identical or similar to the Domain Name.
Abusive Registration
Abusive Registration is defined in clause 1 of the Policy as follows:
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.
The Complainant's case is based on the Respondent's use of the Domain Name.
A non-exhaustive list of factors which may be evidence that the use of the Domain Name is an Abusive Registration is given in clause 3a of the Policy. They include the following:
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;
Use
The general concept behind Abusive Registration as defined in clause 1 of the Policy is that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. It should be noted that the motives of the Respondent are not specifically referred to as a factor for consideration in connection with the way in which the Domain Name has been used. It is the effect of the Respondent's use that is most relevant. The Respondent places weight on the fact that it registered the Domain Name in good faith and that it did not know of the existence of the Complainant when it parked the Domain Name. It also states that it had no control over the businesses that were listed when it parked the Domain Name. Further on being made aware of the Complainant's concerns it took the Domain Name down. The Complainant disputes the general bona fides of the Respondent but it does not dispute the specific points that the Respondent raises in this regard and the Expert accepts them. The Expert also rejects the Complainant's submission that the fact that the Respondent refused to transfer the Domain Name to the Complainant in September 2006 is in itself evidence of bad faith. Nevertheless under the Policy innocence or ignorance does not in itself excuse use of a Domain Name that has the abusive effect of taking unfair advantage of or causing unfair detriment to the Complainant's Rights.
The Complainant bases its submissions on the former use the Respondent has made of the Domain Name (i.e. before the searcher.co.uk domain name was used). This consisted of parking the Domain Name in a way that income could be generated through "click-through" payments from Internet users who mistakenly typed the Domain Name when seeking the Complainant's website address and who were instead referred to a list of businesses offering a range of goods and services. The Expert accepts that this use has now stopped. However the fact that use of a Domain Name has ceased does not render the past use non-abusive. There is a body of decisions under the Policy in which a finding of Abusive Registration is based on past use. For example see the decision of the Appeal Panel in DRS case 00389 Hanna-Barbera Productions, Inc, v G Hay. In that decision the panel were of the view that the Expert is entitled to look at ALL use of the Domain Name from commencement to the date of the adjudication even where the manner of use of the Domain Name had changed.
Did this the historic use of the Domain Name take unfair advantage of or was it unfairly detrimental to the Complainant's Rights?
The Complainant submits that the use of the Domain Name is abusive because it has received reports from confused customers/enquirers that they had searched for the Complainant's official internet presence and that they had assumed that the Domain Name was connected or associated with the Complainant. This may be the case but no evidence is adduced to support this assertion. The Complainant must make out its case on the balance of probabilities (clause 2b of the Policy). It is not possible to assess the nature of the confusion and the weight to be attached to it from a simple statement that it has occurred. The Respondent draws the Expert's attention to the fact that the way in which the Domain Name has been used bears no similarity to the Complainant's use of the Mark and it is impossible to assume that confusion has occurred. This is a difficult question for the Expert to resolve simply on the basis of the 2 screen shots annexed to the Complaint. As such the Expert finds that the Complainant has failed to meet its burden of proof that customers remained under a mistaken assumption that the website to which the Domain Name referred them was connected or associated with the Complainant.
However this is not to say that the use of the Domain Name did not take unfair advantage of or cause unfair detriment to the Complainant's Rights in another way. Even where Internet users quickly appreciated that the site to which the Domain Name was linked was unconnected with the Complainant, they nevertheless found themselves in receipt of a list of businesses some of which were in competition with the Complainant. In this way the short term confusion that caused an Internet user to type the Domain Name rather than the Complainant's actual website address could readily operate to deprive the Complainant of future business. Once provided with details of alternative providers customers could divert their custom to one of the competing businesses to which they have been alerted. This situation benefited the Respondent who would receive commission in the form of click-through payments (the Respondent does not dispute having received such payments.) The receipt of such payments meant that the Respondent was taking advantage of the fact that customers seeking-for example- insurance services might enter csma into their search engine in the expectation that they would be taken to the Complainant's site. This advantage is unfair because it amounts to the unauthorised exploitation of the brand recognition and goodwill of the Complainant's csma mark. Under the Policy this amounts to taking unfair advantage of the Complainant's Rights.
The Respondent asserts that the Complaint "is an attempt to reverse-hijaq domain name from me. I appreciate that the Complainant is known under the name of 'CSMA', but Internet and DNS was developed by it's origins to support multiple suffixes, allowing different companies to happily co-exist, therefore I deny that the Complainant has exclusive right to the domain name 'csma.co.uk', when already using 'csma.uk.com'.
This is a laudable sentiment. But co-existence of businesses means that no trader should seek to trade unfairly.
It follows that the Expert finds that the use of the Domain Name prior to September 2006 took unfair advantage of the Complainant's Rights.
Clause 4 of the Policy provides a non-exhaustive list of ways in which the Respondent may demonstrate that the Domain Name is not an Abusive Registration. The Respondent presents his case by disputing the Complainant's submissions. Nevertheless implicit within the Response is reliance on some of the matters that are set out in clause 4a of the Policy, as follows:
I. Before being aware of the Complainant's cause for complaint (not necessarily the "complaint" under the DRS), the Respondent has
A. used or made demonstrable preparations to use the Domain Name….. in connection with the genuine offering of goods or services
…….
C. made legitimate non-commercial use or fair use of the Domain Name
II. The Domain Name is generic or descriptive and the Respondent is making fair use of it
In its Response the Respondent acknowledges that its proposed new venture is not yet operational. In relation to preparations for use it refers to the fact that the Domain Name was originally parked for market research purposes and the Response states that "Parking provides a set of tools for the domain name owner in order to "assess domain characteristics and assist in the development stage". In a similar vein the Response says that the current use of the Domain Name is in the context of the development of a new project "[and it] pursues a goal to deliver brand new experience for Internet users in their search for goods and services. As soon as Agency becomes operational, domain name will be used for it's main website, while 'searcher.co.uk' (where 'csma.co.uk' is now redirected) is intended to provide end user interface".
It seems to follow from this that the Respondent has embarked on planning for an embryonic business venture which will make use of the Domain Name once it is up and running. However the Expert finds that this falls short of the "demonstrable preparations" for use in connection with "a genuine offering of goods or services" that is required by the Policy. Accordingly she finds that neither the Respondent's use of the Domain Name nor its preparations for use displaces a finding of Abusive Registration (clause 4aIA of the Policy).
For the reasons discussed above the use of the Domain Name by the Respondent has not been for non-commercial purposes and nor has it been fair. Clause 4aIC does not therefore apply.
In relation to clause 4aAII the Respondent provides a list of organisations operating under the acronym csma in order to demonstrate that the Mark is generic or descriptive. However none of the organisations referred to by the Respondent operate in the same field of activity as the Complainant. For the reasons discussed in relation to the Complainant's Rights the Mark is not generic or descriptive in relation to the goods and services offered by the Complainant. The Complainant's long standing use of and marketing of the Mark has rendered the Mark distinctive of the Complainant such that it is associated with the Complainant alone in connection with the goods and services that it actually offers. The Mark is not therefore generic or descriptive. Even if it were, the Respondent's use of the Domain Name has not been fair.
The Respondent submits that the Domain Name is registered in a good faith for a genuine project.
This aspect of the Respondent's submissions is in the view of the Expert the most persuasive. The Respondent puts forward a plausible case (on paper of course) for his choice of Domain Name and appears to have genuine (but embryonic) plans to use the Domain Name for a new business venture. On learning that the former use of the Domain Name was objected to by the Complainant it ceased that use. Whilst there is nothing in the Policy that requires Abusive Registration to depend on bad faith the fact that the Respondent's submissions appear to show a lack of bad faith should be taken into account.
However the Policy seeks to set out the correct approach in such circumstances in clause 4 which provides a measure of protection where a Respondent has made fair use of the Domain Name or demonstrable preparations to use the Domain Name in connection with a genuine offering of goods or services. For the reasons set out above this is not the case here. It is the effect of the Respondent's use that amounts to unfair advantage which may not be what was intended by the Respondent. If domain name owners wish to park their domain name for market research purposes, as the Respondent suggests, it is incumbent on them to ensure that the domain name is not used in a way that takes unfair advantage of or causes unfair detriment to a third party's rights.
The Respondent has accordingly used the Domain Name to take unfair advantage of the goodwill and trading reputation generated by the Complainant's well known brand with a potential consequence of lost revenue for the Complainant. This conduct is abusive under the meaning of the terms of the Policy.
The Complainant's submissions about the One in a Million case are noted but are of no effect. The Policy does not purport to equate to intellectual property law. References to legal cases are often unnecessary and can render the policy inaccessible to the general public. In any event the Expert agrees with the Respondent that on the facts before her there is insufficient information to lead to a finding that the Domain Name in the hands of the Respondent is an instrument of fraud. The finding of Abusive Registration is based on the Respondent's use of the Domain Name in connection with identical goods and services to those offered by the Complainant. Not all third party uses of the Domain Name would automatically be abusive.
The Expert finds that the Complainant has proved on the balance of probabilities that it owns 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.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name is transferred to the Complainant.
Sallie Spilsbury
18 May 2007