Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service
DRS 5284 Bourne Leisure Limited & Bourne Holidays Limited -v- Radoslaw Ciepielowski

Decision of Independent Expert

1. Parties:

Complainants: Bourne Leisure Limited &

Bourne Holidays Limited

Country: UK

Respondent: Radoslaw Ciepielowski

Country: Poland

2. Domain Name:

("the Domain Name")

3. Procedural Background:

Nominet received the Complaint on 28 November 2007. Nominet validated it on 29 November 2007. The same day the Complaint was sent by Nominet to the Respondent at the postal and email addresses provided to Nominet by the Respondent for Nominet's Whois database. The Response was due on or before 21 December, 2007.

No Response was received (in time or at all), so mediation was not possible.

On 11 January 2008, the appropriate fee having been paid to Nominet by the Complainant, and Tony Willoughby, the undersigned Expert, having indicated to Nominet that there was no reason why he should not handle the case, the case was referred to the Expert for a decision.

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

None.

5. Factual Background

The Complainants are associated companies, one being a subsidiary of the other and the Panel proposes to treat them as one.

One of the names under which the Complainants trade is "The Wildlife Park at Cricket St Thomas".

The park has been in existence for several decades, but has only been owned and operated by the Complainants for the last 10 years. The Complainant has produced evidence to demonstrate that the park is an established and significant tourist attraction.

Until 2003 the Domain Name was owned by the Complainants and resolved to their website for the park. The registration lapsed when the Complainants failed to renew it and on 26 April, 2005 the Domain Name was registered by the Respondent.

As at 13 May, 2006 the Respondent had the Domain Name connected to a website, which featured (a) text copied from an earlier version of the Complainants' website and (b) links to adult/pornographic sites.

On 6 March, 2006 the Complainants' solicitors wrote to the Respondent drawing attention to the Complainants' rights and seeking transfer of the Domain Name. The Respondent did not reply. On 5 May, 2006 and 10 July 2007 the Complainants' solicitors sent 'chasers' but to no avail.

5. The Parties' Contentions:

Complainants' Contentions

The Complainants contend that they are the owner of rights in the name, "The Wildlife Park at Cricket St Thomas", and widely used variants including "The Cricket St Thomas Wildlife Park", acquired by virtue of their extensive use of the name over the last 10 years.

The Complainants contend that their names are similar to the Domain Name, a domain name, which they previously owned and used to connect to their website.

The Complainants have produced evidence to show that the Complainants' web address still appears on some listings as 'www.cricketwildlifepark.co.uk'.

The Complainant contends that in the hands of the Respondent the Domain Name is an Abusive Registration. The Complainant draws attention to the use, which the Respondent has made of the Domain Name, namely to connect it to a website featuring text copied from the Complainants' website, a website intended for children as well as adults, and also featuring adult pornographic links.

The Complainant contends that the Respondent registered the Domain Name to earn pay-per-click revenue from the adult pornographic links on his site, hoping and anticipating that he would attract visitors intending to visit the Complainants' site.

The Complainants point out that the Respondent has no obvious right to the name. The Respondent is not named by reference to the Domain Name and the Complainants have not licensed the Respondent to use the name as a domain name.

Respondent's Contentions

The Respondent has not responded to the Complaint.

6. Discussion and Findings:

General

To succeed in this Complaint the Complainants must prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that they have 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).

Complainants' Rights

The Expert is satisfied from the evidence filed by the Complainants that the Complainants have common law rights in respect of the name, "The Wildlife Park at Cricket St Thomas", and widely used variants including "The Cricket St Thomas Wildlife Park", acquired by virtue of their extensive use of the name over the last 10 years.

The Expert is also satisfied that those names are similar to the Domain Name, .

The Expert finds that the Complainants have rights in respect of a name or mark similar to the Domain Name.

Abusive Registration

This leaves the second limb. Is the 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."

Paragraph 3 of the Policy contains a non-exhaustive list of what may constitute an Abusive Registration for these purposes. Paragraph 4 of the Policy contains a non-exhaustive list of what a Respondent may show to demonstrate rights or legitimate interests in respect of the Domain Name.

The circumstances of this case are such that the Expert sees no need to examine in any great detail what might or might not have been the Respondent's intentions at the time of registration of the Domain Name. The Expert prefers to deal with this case by reference to a use which the Respondent has made of the Domain Name.

In and around 2006 the Respondent used the Domain Name to connect it to a website featuring text, which apart from some typographical errors, was lifted straight out of a 2001 version of the Complainants' website. The content of the Respondent's website at this time demonstrated clearly that the Respondent was fully aware of the Complainants and their website.

Thus, the Respondent would have been well aware that much of the Complainants' website is devoted to material intended for children. The Respondent must also have been well aware that visitors to the Respondents' website would include many people looking for the Complainants, including children.

In those circumstances it was manifestly a gross misuse of the Domain Name for the Respondent to use it to seek to gain commercially by way of pay-per-click links to other sites and particularly links to adult pornographic sites.

The fact that the Respondent subsequently discontinued that use following representations made by the Complainants' solicitors is of no account.

Moreover, the Respondent has no obvious legitimate connection with the Domain Name and has not seen fit to answer the Complainants' allegations. The Expert is satisfied that he can have no satisfactory answer.

The Expert finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration

7. Decision:

Having concluded that the Complainants have rights in respect of a name or mark which is similar 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, , be transferred to the Complainants.

Tony Willoughby 24 January, 2008