Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS : 04779

Shires (GP) Limited –v- Mel Gordon

Decision of Independent Expert

1. Parties

Complainant

Complainant: Shires (GP) Limited

Country: GB

Respondent

Respondent: Mel Gordon T/A WEBWORDWIZARDS.COM

Country: GB

Disputed Domain Name

< highcrossquarter.co.uk>

2. Procedural Background

On 13 June 2006 the Complaint was lodged with Nominet UK in accordance with the Nominet UK DRS Policy and hard copies of the Complaint were received in full on the same date.

On 15 June 2006 Nominet UK validated the Complaint.

On 15 June 2006 Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the procedure for the conduct of proceedings under the Dispute Resolution Service had been invoked and allowed the Respondent 15 working days to respond to the Complaint to file a Response to the Complaint.

On 16 July 2007 following submissions from the Respondent, the deadline for filing the Response was extended by 10 days for personal reasons that presented a difficulty for the Respondent and was subsequently extended by a further 9 working days due to the delay in receiving the annexes to the Response due to floods.

On 23 July the electronic version of the Response was received from the Respondent and on 6 August 2007 the hard copy of the Response was received by Nominet UK.

On 16 August 2007 the Complainant furnished the Reply in electronic form and in hard copy.

On 11 September 2007Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.

On 13 September 2007, following a conflict check, James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure.

3. The Facts

The Complainant, is general partner of The Shires Limited Partnership ("the Partnership"), a partnership between Hammerson UK Properties plc ("Hammerson") and Hermes Property Asset Management ("Hermes").

The Complainant was formed in 2002 for the purpose of operating and managing "THE SHIRES" shopping centre in Leicester. Since 2005, "THE SHIRES" shopping centre has been under substantial development with investment from the Complainant of £350 million. The redevelopment project is to extend the existing shopping centre into a mixed-use development with over 100,000 square metres of retail space, 6,000 square metres of new family-based catering and leisure amenities, a 7,000 square metres multiplex cinema, three major department stores, over 3,000 parking spaces, new public transport facilities, and 118 new homes.

The Complainant is the registered proprietor of UK registered trade mark number 2427031C HIGHCROSS QUARTER/HIGH CROSS QUARTER (series of two) in respect of a range of goods and services in classes 6, 16, 18, 26, 27, 28, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.

The Respondent owns and runs a web development firm called Webwordwizards.com, which is part of an IT business called the Leics Techs Group.

On 12 July 2006 the application for registration of said HIGHCROSS QUARTER/HIGH CROSS QUARTER (series of two) trade mark was filed by the Complainant and the trademark was subsequently registered on 11 May 2007.

On 14 July 2006 the Complainant announced in the press that it planned to change the name of the shopping complex from "THE SHIRES" to "HIGHCROSS QUARTER".

On the same day, 14 July 2006, the disputed domain name was registered by the Respondent.

4. The Parties' Contentions

Complainant's Submissions

The Complainant submits that it has clearly established rights in the name "HIGHCROSS QUARTER" which is identical to the domain name at issue.

Since 14 July 2006, when the Complainant announced that "HIGHCROSS QUARTER" would be the new name of the new development in Leicester, the Complainant has made substantial use of the name.

The Complainant submits that advertising and promotional materials relating to the development have all prominently featured the name "HIGHCROSS QUARTER" name. In support of this submission, in an annexe to the Complainant, the Complainant has submitted a copies of publications including the front page of the first edition of the Leicester Mercury dated 14 July 2006, in which the headline article announces the change of name for the shopping complex. The Complainant has also furnished further substantial evidence documenting its use of the HIGHCROSS QUARTER name in relation to the centre including significant use by third parties of "HIGHCROSS QUARTER" as the name of the Complainant's development in the form of articles published in the local and trade press.

The Complainant submits that the Respondent owns and runs a web development firm called Webwordwizards.com, which is part of an IT business called the Leics Techs Group. As part of this business, the Respondent registers domain names on behalf of clients wishing to remain anonymous. In support of this assertion the Complainant has furnished a print-out from the website at www.webwordwizards.com as an annexe to the Complaint.

The Complainant submits that the domain name < highcrossquarter.co.uk> is an Abusive Registration in the hands of the Respondent on the grounds that:

a) the Respondent acquired the domain name in dispute for the purposes of selling, renting or otherwise transferring the domain name in dispute 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 in dispute; and

b) the Respondent is engaged in a pattern of registrations where the Respondent (or an associated third party under the Respondent's control) is the registrant of domain names which correspond to well-known names or trade marks in which the Respondent has no apparent rights, and the registration by the Respondent of the domain name < highcrossquarter.co.uk> is part of that pattern.

The domain name in dispute was registered by the Respondent on 14 July 2006, the same date on which the Complainant first announced that "HIGHCROSS QUARTER" would become the name of its re-development of "THE SHIRES" shopping complex in Leicester. On the same day, the Respondent also registered the gTLD domain name .

The Complainant first became aware of the registration of the domain name by the Respondent on 19 July 2006, when it set out to register the domain name in its own name.

A representative of the Complainant immediately contacted the Respondent to make enquiries as to how the Respondent intended to use the domain name in dispute. The Respondent informed the Complainant that he had registered the domain name on behalf of a client, the identity of whom he could not disclose. At the time, the Respondent indicated that his client was on holiday, that he would be returning on 30 July 2006 and that he would speak to his client regarding his intentions for the domain name on his return.

Further discussions by telephone with the Respondent revealed that the Respondent's client, for whom the domain name was registered, claimed that he intended to establish and promote a "sabbat" website.

The telephone discussions, during which the Complainant requested that the Respondent's client considers using another domain name and offered to pay the Respondent a small sum reflecting the out-of-pocket costs incurred by the Respondent in acquiring the registration, were followed by an exchange of email communications. In an email sent by the Respondent to the Complainant on 6 September 2006, the Respondent stated that his client was only prepared to consider transferring the domain name in dispute, together with the gTLD domain name , for a seven-figure sum in respect of each domain name. The Complainant has submitted evidence of said exchange of correspondence in an annex to the Complaint.

The Respondent, in his email of 6 September 2006, stated "A seven figure sum is certainly representative of the current value of the domains to Hammerson. An advanced five figure to low six figure sum would represent the value of each domain to my client. But my client owns the domains already therefore it is only about what they are worth to the buyer and not the seller".

At the time, the website to which the domain name resolved was under construction and contained no substantive content. The Complainant submits, therefore, that the figure presented by the Respondent, on behalf of his client, for the transfer of the domain name to the Complainant did not represent the value of the domain name to the Respondent (or his client), and that the domain name was registered by the Respondent primarily for the purposes of selling the domain name to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring said domain name.

The Complainant submits that as of the date of the Complaint, said domain name resolved to an undeveloped website containing information concerning "sabbat" (a midnight meeting of sorcerers and witches). However, the website to which the domain name resolved remained undeveloped until, at least, 14 December 2006.

The Complainant submits that the adoption of the "sabbat" theme on the website to which the domain name in dispute resolves, is a spurious attempt to demonstrate fair use of the domain name. It is clear from the history and content of the website to which the domain name resolves that the purported use is a sham, and does not constitute use of, or preparations to use, the domain name in connection with a genuine offering of goods or services.

Amongst other domain names, the Registrant or his firm, Webwordwizards, is the registrant of the following domain names:

(a) and ;

(b) ; and

(c) .

The domain names and were both registered by the Respondent on 25 March 2006. "The Minerva Tower" is the name of a skyscraper once planned for the eastern edge of London's main financial district by developers, Minerva Plc. Press articles relating to the Minerva Tower were published in The Daily Telegraph, The Independent and The Financial Times on 25 March 2006, the same day on which the Respondent registered the domain names. A copy of the article that was published in The Daily Telegraph, together with Whois searches in respect of the and domain names, are annexed to the Complaint.

The websites to which the domain names and resolve comprise a holding page. Enquiries made on behalf of the Complainant of the IT Manager of Minerva Plc, revealed that the domain names and had been registered without Minerva Plc's knowledge.

The domain name was registered by Webwordwizards on 19 November 2003. "London Bridge Tower", is a major new skyscraper planned for London, next to London Bridge Station. After a lengthy public enquiry, it was granted planning permission in November 2003. Press articles relating to the London Bridge Tower were published in The Press Association, The Evening Standard and EGI Web News on 19 November 2003, the date on which Webwordwizards registered the domain name. A copy of the article that was published in The Evening Standard, together with a Whois searches in respect of the domain name, have also been furnished as an annex to the Complaint.

The website to which the domain name resolves offers the domain name for sale for £20,000. Enquiries made on behalf of the Complainant of the developer of London Bridge Tower, revealed that the domain name had not been registered on behalf of Sellar Property Group.

Similarly the domain name was registered by Webwordwizards on 10 April 2002. "The Walkers Stadium" is the home of Leicester City Football Club. The all-seater stadium, inaugurated in July 2002, holds 32,500 and is named after the sponsor, Walkers, a former sponsor of Leicester City Football Club. Press articles relating to the Walkers Stadium were published in the Leicester Mercury and on the BBC News on 10 April 2002, the same date on which Webwordwizards registered the domain name. A copy of the article that was published in the Leicester Mercury, together with Whois searches in respect of the domain name, are included as an annex to the Complaint.

The website to which the domain name resolves still contains a statement by Webwordwizards that it has registered the domain name on behalf of a client. Enquiries made on behalf of the Complainant of the director of sales and marketing at Leicester City Football Club, revealed that the domain name had not been registered on behalf of the football club. The football club subsequently registered the domain name .

The Complainant submits therefore that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well-known names in which the Respondent has no apparent rights, and that the domain name in dispute is part of that pattern.

Respondent's Submissions

In his Response, the Respondent states that he is the owner and manager of an Internet and IT consultancy trading as Webwordwizards.com. He carries on business in a network of IT professionals who work together under the Webwordwizards.com name to design and manage websites, web servers and email servers for individuals, informal groups and formal groups organisations, businesses and local authorities across the midlands and home counties.

The business was first established in 1996 and operated as a partnership until January 2006 when the Respondent assumed full and sole control. The business became the website design and internet consultancy arm of the Respondent's other business: Leics Techs. The Respondent's Leics Techs business provides IT support services to businesses, organisations and local authorities specialising in network management and network and data security. The Respondent provides systems administration services as well as intrusion detection and disaster contingency planning. He works with a small group with no more than two dozen IT professionals working together any one time on various client projects around the London and the south east and across the midlands.

Much of the Respondent's argument is in the annexes to the Response, in which he, in particular, seeks to establish that he had made preparations on behalf of clients, to use the domain name incorporating the words "highcross quarter" as the address of a website dedicated to wiccan beliefs. He has submitted an exchange of emails dating back to 2005 and copies of a number of documents relating to, and explaining that the words "high cross quarter" have a wiccan significance.

The Respondent states that his IT business projects include contracts for social and voluntary sector groups often funded by Lottery Fund or European Union, or Local Authorities. As part of the service provided by the Respondent, the Respondent registers and manages Internet domain names for clients or assists them in registering and managing their own domain names and websites. The Respondent's group manages or assists in the management of in excess of 8500 Internet domain names for clients.

Addressing the fact that he is the owner of the Internet domain name , the Respondent explains that he usually takes orders to register domain names as part of written website design projects for clients. From time to time the Respondent will take a verbal telephone instruction from a known client instructing him to acquire domain names. This is discretionary and rarely done due to the need for accuracy. The Respondent will usually in such circumstance ask that client to send a confirmation email. Due to the negligible cost of some domain names, on verbal requests for one or two domain names the Respondent will sometimes use discretionary judgment to waive the cost to the client who may be spending many thousands of pounds on individual orders as any margin of profit made on domains would be wiped out by the work in generating and issuing the order forms, invoices and statements for it. The Respondent therefore usually provides one or two domains with website orders on a complimentary basis.

What the Respondent describes as this "quickfire informal domain purchasing practice" for clients has left the Respondent with the domain name . He does not know for whom or why that was registered. The Respondent cannot find any records for it in his email system. At £8 for a two year registration, it was auto-renewed by the Respondent's staff. The Respondent has never contacted the football club in question about it and has never sought to sell it. The Respondent has no personal interest in football.

As to the other domain names to which the Complainant refers, the Respondent explains that he also purchases Internet domains names for personal use for personal website projects current or planned. These include the establishment of websites to address neighbourhood management issues - a field in which the Respondent has kept a long term interest and community level involvement. The Respondent actively participates on a voluntary basis as a resident and Chairman of St Peters Neighbourhood Management Board and has developed and managed the neighbourhood website at www.stpetersnm.com. This website has been applauded by councillors and the police and a great many others. It was born from an idea going back several years to use the Internet to resolve issues surrounding service delivery and quality of life issues initially in the high rise tower blocks within St Peters where the Respondent has lived for 13 years. The website is used by the Respondent to lobby Leicester City Council on various local issues. He registered the Minerva tower domain name to demonstrate, in a sarcastic and ironic way, the disparity and incongruity between first class multi-occupancy buildings and developments on the one hand, and the buildings and neighbourhood infrastructure St Peters on the other hand.

The Respondent submits that the Complainant is trying to clearly assert expansive rights on their trademark into a term used by wicca. The shopping centre is now not even being called "HIGHCROSS QUARTER".

In correspondence with Nominet UK, that is part of the record, the Respondent states that his commissioning clients for the website established at the address of the domain name in dispute are "a small local group of 'wiccans', 'witches' or 'wizards' who are followers of the Wiccan faith and/or earth based faith and occult orientated traditions." He states that this group is this group, driven by a fear of persecution, is oath bound not to divulge their identities or those of their fellow coven or group members.

The Complainant's Reply

In submissions relating to a procedural issue, the Complainant submits in its Reply, that in spite the numbering (which suggests that a total of 31 Annexes have been filed), the Respondent has attached 24 Annexes to the Response. Whilst a number of these Annexes comprise or contain evidence on which the Respondent purports to rely in support of assertions made in the Response, Annexes 1a1, 1a3, 22 and 31a comprise or include additional argument. The Complainant submits that these Annexes, (to the extent that they comprise or include additional argument) should be disregarded, not least because should they be taken into account, the Response will exceed the 2000 word limit.

Many of the remaining Annexes are not referred to in the Response, and it is unclear in what context they should be read or what assertions they are intended to support. For this reason, any Annexes not referred to in the Response should also be disregarded.

Addressing the substantive issues, and without prejudice to its submission that certain Annexes should be disregarded, the Complainant submits that there is a number of key inaccuracies and assertions made in the Annexes to the Response.

The Respondent states that he never had and does not have any intention to sell the domain name at issue. The Complainant submits that this is wholly inconsistent with the Respondent's own evidence. It is clear from the Respondent's emails of 30 August, 5 September and 6 September 2006 that the Respondent wanted to sell the domain name for a seven figure sum. The Respondent stated "if I was advising Hammerson on this, my advice would be to acquire them at all costs and to do so without delay if you really are set on using Highcross Quarter" and "I hope this gives you a more precise picture of what my client's will seriously consider".

The Complainant submits that the Respondent is also incorrect in stating that the Complainant approached the Respondent to sell the domain name. The Complainant approached the Respondent to ask the Respondent to use alternative domain names. The email sent on behalf of the Complainant on 4 September 2006 expressly states that "as you were aware, my initial enquiry was whether or not your client would consider using a domain name other than or …" Furthermore, it is clear from the second paragraph of the email that the Complainant was simply offering a reasonable sum for the Respondent's out-of-pocket expenses.

Since filing the Complaint, and receiving the Response, the Complainant has received an email from a named individual, demanding that the Complainant offers the Respondent £10,000 and a reasonable commission in return for permission from the Respondent to use the name "Highcross Quarter" in connection with the Complainant's development in Leicester The Complainant has submitted a copy of said email as an annex to the Reply..

The email was copied to a general email address, Webwordwizards.com being the web development firm owned and operated by the Respondent. It can only be inferred from this that the named individual is somehow connected to the Respondent, and that this email forms part of the campaign to extract valuable consideration for the domain name from the Complainant.

The Respondent states that he can demonstrate 'preparation to use' the domain name at issue. The domain name at issue was registered by the Respondent on 14 July 2006, the same date on which the Complainant first announced that "HIGHCROSS QUARTER" would be the name of its development in Leicester. The Respondent was contacted by the Complainant by telephone immediately upon becoming aware of the registration of the domain name at issue by the Respondent on 19 July 2007. The Respondent would have been aware of the Complainant's cause for complaint on this date, if not earlier.

All of the evidence in relation to the Respondent's claim that it had begun 'preparations to use' the Domain Name post-date 19 July 2007.

The Respondent states in an annex to the Response that he has no intention of selling the domain name . The Complainant refers to a print-out of the website to which the domain name resolves, that offers the domain name for sale for £20,000.

The Respondent states in an annex to the Response that the Complainant has filed the Complaint in bad faith. This allegation is rejected. The Complainant has, and had at the time of filing the Complaint, clearly established rights in the name "HIGHCROSS QUARTER" which is identical to the domain name in dispute, and facts and evidence exist supporting the Complainant's submission that the domain name at issue is an Abusive Registration in the hands of the Respondent.

5. Discussion and Findings:

Procedural Matter

This Expert has considered the Complainant's submission that the annexes to the Response (to the extent that they comprise or include additional argument) should be disregarded, because if they were to be taken into account, the Response exceeds the 2000 word limit. Given that the Complainant has not been prejudiced in any way by the annexes or their content, the Expert has admitted and fully considered the annexes and their content.

Substantive Matters

In order to succeed in these proceedings, paragraph 2(b) of the Nominet UK DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. 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.

Complainant's Rights

The Complainant has established rights in the trademark HIGHCROSS QUARTER being the registered proprietor of the abovementioned UK trade mark registration No. 2427031C HIGHCROSS QUARTER/HIGH CROSS QUARTER (series of two).

The domain name < highcrossquarter.co.uk> is identical to the Complainant's registered trademark and the Complainant has therefore satisfied the first element of the test as set out in paragraph 2(a)(i) of the Nominet UK DRS Policy.

Abusive Registration

As defined in paragraph 1 of the DRS Policy, the concept "Abusive Registration" means

"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 application for the abovementioned registration of the HIGHCROSS QUARTER/HIGH CROSS QUARTER (series of two) trade mark was filed on 12 July 2006. This application pre-dates the creation of the domain name in dispute by two days.

The domain name was registered by the Respondent on 14 July 2006. The Complainant's evidence is that the domain name was registered on the same date on which the Complainant first announced that "HIGHCROSS QUARTER" would be the name of its development project in Leicester.

It is improbable that the Respondent, with an address and connections in Leicester, should co-incidentally choose to register such an unusual domain name on the same date as the Complainant first announced the new name of its development in that city.

Paragraph 3 of the Nominet UK DRS Policy sets out a non-exhaustive list of factors which may be evidence that a disputed domain name is an Abusive Registration including:

"i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:


A. primarily 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;…"

It is clear from the exchange of emails in which the Respondent requested a seven figure sum for the domain name that the Respondent registered the domain name on the date that the Complainant's new name was announced, primarily for the purposes of selling the domain name to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring the domain name in dispute.

The Complainant has also submitted evidence that the Respondent is engaged in a pattern of registration in which the Respondent is the registrant of Internet domain names which correspond to well-known names in which the Respondent has no apparent rights, and that the domain name in dispute is part of that pattern.

In the circumstances, given the fact that he has engaged in a pattern of such registrations and given the fact that he registered the domain name in dispute on the date on which the Complainant announced the new name for its shopping complex project, on the balance of probabilities, the Respondent's claim that he had made preparations to use the domain name incorporating the words "high cross quarter" prior to the establishment of the Complainant's rights is not credible.

The domain name is therefore clearly an Abusive Registration.

As to whether the domain name is "in the hands of the Respondent", the Respondent has stated that he has registered the domain name for an oath-bound covert group of wiccans and has purported to use of the domain name is as the address of their website dedicated to wiccan beliefs. In the circumstances this is not credible either. On the balance of probabilities the Respondent has registered the domain name for himself and not on the instructions of any group of clients. In any event he clearly has control over the Internet domain name in dispute and the website to which the domain name resolves and the domain name in dispute is clearly "in the hands of the Respondent" as required for the test in paragraph 2(a)(ii) of the Nominet UK DRS Policy.

In the circumstances, the Complainant has therefore satisfied the second element of the test as set out in paragraph 2(a)(ii) of the Nominet UK DRS Policy also and is therefore entitled to succeed in its application.

6. Decision

This Expert therefore directs that because the Complainant has established both elements of the tests set out in paragraph 2(a) of the Nominet UK DRS Policy, the Complainant should succeed in its application and this Expert directs that the domain name < highcrossquarter.co.uk> be transferred to the Complainant.

______________________ ______________________

James Bridgeman Date: 2 October 2007