Nominet UK Dispute Resolution Service
DRS Complaint No 05369
Decision of Independent Expert
Complainant: Rupert Hunt (t/a Page Developers)
Country: GB
Respondent: Aaron Georgiou
Country: GB
studentspareroom.co.uk and unispareroom.co.uk
The Complaint was validated by Nominet on 10 January 2008 and sent to the Respondent on that date by post and email to the respective contact details held by Nominet. Nominet informed the Respondent that it had 15 working days, i.e. until 01 February 2008, to respond to the Complaint.
On 27 January 2008 the Respondent sent an email to Nominet with an attachment purporting to be the Respondent's response. Nominet sent this document to the Complainant on 28 January 2008 asserting that it had not checked whether the response was correct or complete, and notifying the Complainant that it had 5 working days to reply, i.e. until 4 February 2008. The Complainant filed a Reply on 1 February 2008. Attempts to mediate a resolution proved unsuccessful and the Complainant was therefore invited to request an Expert Decision.
The Complainant paid the fee within the relevant time limit and thereafter I was contacted by Nominet and asked to confirm that I was able to provide an Expert Decision. I responded to Nominet confirming that I was able to provide a decision.
On 17 March 2008, the matter was duly referred to me, Simon Chapman, ("the Expert") for an Expert Decision.
The Respondent has failed to use the automated response form that is located on Nominet's website, but instead opted to send his response as a document attached to an email sent to Nominet. The DRS Procedure does not make it mandatory to use the automated response form, however it does make it mandatory (paragraph 5(c)(v)) for a response to conclude with a signed statement as follows:-
"The information contained in this response is to the best of the Respondent's knowledge true and complete and the matters stated in this response comply with the Procedure and applicable law."
No such statement appears on the Respondent's response.
The Procedure provides in Paragraph 15 that:-
"c. If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate."
I am not aware of any exceptional circumstances to explain why the Respondent should not have included the statement referred to above. I do not consider this a minor omission on the part of the Respondent. Recent Appeal decisions have put particular emphasis on the intention of registrants and their knowledge and belief at the time of registering or using a domain name. In circumstances where experts have to make determinations as to the knowledge and/or conduct of parties, they must take decisions as to the truthfulness of the submissions that the parties have made, often with very little evidence to rely upon, and as such confirmation by a party that its submission is true and complete has particular importance.
In light of the above, I will treat the evidence submitted by the Respondent with some caution.
I set out below those facts that I believe to be pertinent to this dispute.
The Complainant registered the domain namein 2002 and in 2004. It launched a website in 2004 offering services under the name "SPAREROOM" relating to the flat sharing market, and has since that time received a significant amount of publicity for its website and its services, including national and regional newspapers, television and radio. It has since its launch spent in excess of £200,000 on marketing and advertising.
The Respondent, a dealer in domain names, registered the Domain Names in July 2005. Shortly thereafter (Oct 2005) he approached the Complainant and asked whether the domains "could be an extension of your business". The Complainant did not respond to that approach, but 2 years later it made attempts to anonymously purchasevia Sedo. However once the Respondent became aware who the purchaser was, he increased his asking price to a level that the Complainant was not prepared to meet. In September 2007, the Respondent attempted to link the Domain Name with the Complainant as an affiliate to the Complainant's website.
The Respondent has previously registered domain names that include third party trade marks.
The Parties' Contentions
Complaint
The Complainant asserts that it has Rights in respect of a name and mark which is similar to the Domain Names and the Domain Names in the hands of the Respondent are "Abusive Registrations" as defined in the Dispute Resolution Service Policy (the "Policy").
In support of the claim to Rights, the Complainant says that it has traded using the domain namesand and under the name 'SPAREROOM' since 2004, and that the name has become distinctive of its services.
The Complainant asserts that the Domain Names are Abusive Registrations but does not specify any particular grounds relied upon. It also asserts that the Respondent has registered other domain names that include third party trade marks.
Response
The Respondent asserts that he has not used the Domain Names to associate himself with the Complainant, that he did not know that the party bidding forwas the Complainant, that his purpose for registering the Domain Names is to create a number of property "portals" evidenced by a substantial number of other property related domain name registrations, and further that the term 'spareroom' is generic. He acknowledges that he has in the past registered domain names that included registered trade marks, but that was before he understood intellectual property rights.
Reply
The Complainant disputes that the name relied upon is generic, and also refutes the Respondent's assertion that he has not at least attempted to hold himself out as connected to the Complainant by virtue of his request to be affiliated to the Complainant.
General
To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that:
(i) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Names; and
(ii) the Domain Names in the hands of the Respondent are Abusive Registrations (as defined in paragraph 1 of the Policy).
The Complainant must make out its case to the Expert on the balance of probabilities.
Complainant's Rights
The DRS Policy defines Rights as follows –
"Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business"
The Complainant has made extensive use of the word 'SPAREROOM' as a trade mark for its services, and notwithstanding the descriptive nature of that word, from the evidence that I have seen I am prepared to accept that it is likely to have created some goodwill therein, and that the use of the name is not "wholly" descriptive of the Complainant's business. The Complainant therefore qualifies as having the necessary Rights in that name/mark.
The Policy requires such Rights to be in a name or mark identical or similar to the Domain Names. The Domain Names areand . For the purpose of analysing whether the Domain Names are identical or similar to the name or mark in which rights are claimed, one must ignore the .co.uk suffix. The two are similar in my opinion and I therefore determine that the Complainant has established that it has Rights in a name or mark similar to the Domain Names.
Abusive Registration
I now go on to consider the extent to which the Domain Names are Abusive Registrations.
The Policy defines an 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(a)(i)(A) of the Policy provides that a Domain Name may be an abusive Registration where the Respondent has registered the Domain Name –
"for the purpose 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."
Shortly after registering the Domain Names, the Respondent approached the Complainant and proposed that they be used as an extension of the Complainant's business. I take that approach in the context of the Respondent's business of dealing in domain names to have been an invitation for the Complainant to make an offer to purchase the Domain Names. It is clear that the Respondent was aware of the Complainant's business at that time, and I believe that it is reasonable to infer that the Respondent was probably aware of the Complainant and its use of the mark 'SPAREROOM' prior to him registering the Domain Names, and that he registered the Domain Names with the intention of offering them for sale to the Complainant at an inflated price. In that respect it is of interest that the Respondent has not given any explanation or justification of his approach to the Complainant in his Response.
For the reasons set out above, I find that on the balance of probabilities the Complainant does have Rights in respect of a name or mark which is similar to the Domain Namesand , and that the Domain Names in the hands of the Respondent are Abusive Registrations. The Complaint therefore succeeds.
The Domain Namesand should be transferred to the Complainant.
Simon Chapman
8 April 2008