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Nominet UK Dispute Resolution
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DRS Number 5121
Pricerunner
AB
v
Brainfire
Group
Decision of Independent Expert |
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2. Domain
Names
Priceunner.co.uk – registered 13
February 2005.
3. Procedural
Background
The Complaint was lodged with
Nominet on 8 October 2007. Nominet validated the Complaint and notified
the Respondent of the relevant Complaint on 8 October 2007 and informed
the Respondent that it had 15 days within which to lodge a
Response.
No response was received from the Respondent.
On 13 November 2007, a
Non-standard submission was received from the Complainants and sent to the
Respondent. |
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priceunner |
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No mediation having been
possible, on 16 November 2007 the dispute was referred for a decision by
an Independent Expert following payment by the Complainant of the required
fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK
Dispute Resolution Service Policy (“the Policy”).
David Flint, the undersigned,
(“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 drawn to
the attention of the parties, which might appear to call into question his
independence and/or impartiality. |
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4. Outstanding Formal/Procedural Issues (if
any)
The Non-standard submission
related to the identity of the party representing the Complainant and the
Expert does not consider that this affects the substance of these
proceedings.
5. The Facts
Complainant
Pricerunner AB is the registered
owner, internationally, of the Pricerunner trademark. Respondent has
registered a domain name which is confusingly similar to Pricerunner's
registered trademark and is likely to lead consumers to believe they are
using Pricerunner's web site. Respondent is infringing on Pricerunner's
trademark and the registrar, Fasthosts, is facilitating this
infringement.
6. The Parties’ Contentions
Complainant
I confirm that Domain Name(s) in
dispute are identical or similar to a name or mark in which I have
Rights.
I confirm that Domain Name(s) in
the hands of the Respondent is an Abusive Registration.
The Complainant seeks transfer of
the Domain Name.
Respondent
No response was received from the
Respondent
7. Discussion and
Findings: |
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General
To succeed in this Complaint the
Complainant has to prove to the Expert pursuant to paragraph 2 of the
Policy on the balance of probabilities, first, 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, secondly, 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
In this case the first limb of
that task is straightforward. The Complainant is the registrant of a
number of trademarks including Community Trademark No: 003908531. In those
circumstances the Expert is satisfied that the Complainant does have
Rights in respect of a name or mark which is identical or similar to the
Domain Name. |
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priceunner |
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Abusive Registration |
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This leaves the second limb. Is
each Domain Name, in the hands of the Respondent, an 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 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.”
A non-exhaustive list of factors,
which may be evidence that the Domain Name is an Abusive
Registration is set out in paragraph 3a of the Policy.
The Respondent has been the
respondent in a number of other cases (DRS 5063, DRS 4575, DRS 4551, DRS
4001, DRS 3817, DRS 3386, DRS 2908) in which his registration of the name
in question has been found to be abusive. Accordingly in terms of
paragraph 3 c of the Policy, there is a presumption of Abusive
Registration in respect of Brainfire Group. Although this presumption is
rebuttable, no attempt so to do has been made.
In the cases immediately before
this Expert relevant ‘factors’ in paragraph 3 are to be found in
subparagraph i , which reads as follows:
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;”
The Expert interprets “as” in
sub-paragraph i. B as being synonymous with “for the purpose of”. Were it
to be interpreted otherwise all domain name registrations would inevitably
constitute “blocking registrations” for any later arrival wishing to use
the name in question.
The Expert notes that the Domain
Name is almost identical to the trademark held by the Complainant; that
the Domain Name would be accessed only by a person who had mistyped the
Complainant's website name and that the Domain Name is not a word or
combination of words which could arise in the English language other than
as a typographical error.
Accordingly, the Expert finds
that each Domain Name is an Abusive Registration within the definition of
that term in paragraph 1 of the Policy on the basis that it was registered
in a manner which, at the time when the registration took place, took
unfair advantage of the Complainant’s rights.
The Expert also notes that the
Complainant's statement of the facts was very minimal and, had it not been
for the inclusion of the trademark documents and a reference thereto in
the 53 word Complaint, the Decision might have been
different. |
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priceunner |
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8. Decision |
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In light of the foregoing
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 priceunner.co.uk be transferred to the
Complainant. |
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David Flint
02 December 2007 |
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priceunner |
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