Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 05806 SEMTEC Limited TA SAQ v 4 Names Limited

Decision of Independent Expert

1. Parties:

Complainant: SEMTEC Limited TA SAQ

Country: UK

Respondent: 4 Names Limited

Country: UK

2. Domain Name:

semtec.co.uk ("the Domain Name")

3. Procedural Background:

The Complaint was lodged with Nominet on June 12, 2008. Nominet validated the Complaint and notified the Respondent of the Complaint on June 13, 2008 and informed the Respondent that it had 15 days within which to lodge a Response. A Response was received on July 2, 2008. On July 30, 2008 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Dawn Osborne, the undersigned, ("the Expert") 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/or impartiality.

4. The Facts:

The Complainant is a company providing Internet services and broadband connections. It is registered at Companies House under the name SEMTEC Limited and was incorporated on January 23, 2008 but trades as SAQ.

On March 29, 2008 the Respondent registered the Domain Name. The Domain Name directs to a links page with links to websites which provide similar services to the Complainant.

The Respondent has had three Nominet DRS cases decided against it DRS04513;, DRS5568 and DRS05266.

5. The Parties' Contentions:

Complainant:

The substance of the Complaint and Reply is as follows:

1. The Domain Name is identical to the SEMTEC mark in which the Complainant has rights. The Complainant is registered at Companies House under the name SEMTEC Limited. SEMTEC Limited was incorporated on January 23, 2008 following a management buy-out of SAQ Internet Limited, an ISP and trading brand since 1996. SEMTEC Limited has registered semtecuk.com and semtecuk.net domain names for use which point to the brand website at www.saq.co.uk. SAQ Limited, SAQ Administrative Services Limited and SEMTEC Limited are all trading under the SAQ Group name with SEMTEC Limited being the primary company for official and financial purposes. As the company is new it does not appear in many directories yet.

2. The Respondent registered the Domain Name on March 29, 2008. The Domain Name directs to websites which provide similar services to the Complainant. There is no legitimate reason for the Respondent to possess the Domain Name.

3. The Complainant contacted the Respondent on May 10, 2008 by leaving a message regarding an enquiry about semtec.co.uk. A representative of the Respondent contacted the Complainant on May 11, 2008 and advised the Respondent that the Domain Name could be bought for £750 through sedo.com or by cheque. The Respondent advised the Complainant to 'sort it out in a friendly way or go through Nominet' and that "I'd have to pay £750 anyway because 4 Names would not give in.".

6. The Respondent has three registered DRS cases against them, DRS04513, DRS5568 and DRS05266. The registration is automatically abusive because the registrant has had three or more DRS cases against it in the last 2 years where the Expert has found abusive registration
7. The Domain Name was primarily registered to be disposed of at a profit. It directs to websites which provide similar services to the Complainant so Customers may wrongly believe the services are associated with the Complainant. The Respondent is engaged in a pattern of registrations which correspond to known names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern. As such the registration is an abusive registration.

Respondent:

Response received July 1, 2008.

The substance of the Respondent's Response is as follows:

1. The Complainant has no trademark on the word "SEMTEC".

2. The Respondent could not find the Complainant listed as a business under the name 'SEMTEC' in any business directories. This demonstrated that the Complainant does not have an established business name. All the Complainant has is a limited company registration. The Complaint states that Semtec Limited started trading on 1 May 2008, this is after the Respondent registered the domain name on 29 March 2008.

3. SEMTEC is not a famous name. SEMTEC is not a famous trademark. SEMTEC is not a famous brand name. SEMTEC is not a famous product.

4. Prior to the DRS complaint, the Respondent had not heard of the Complainant's company and it was unknown to the Respondent at the time of the domain being registered.

5. By the Complainant's own admission, it was 'non trading' at the time of registration and didn't begin trading until over a month after the domain name was registered.

6. The Complainant is reverse domain hijacking.

7. The Complainant does not own any of the following top level and country code SEMTEC domains and has no rights to any of them: semtec.com, semtec.net, semtec.org, semtec .biz, semtec.eu, semtec.ch, semtec.de, sentek.dk, semtec.it, semtec.nl, semtec.ro, semtec.cn. All of these semtec domains are owned and run by other companies.

8. The Respondent has not had any contact with the Complainant.

9. The Domain Name is being used for a legitimate web site.

8. Discussion and Findings:

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).

The definition of Rights is:

"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."

Paragraph 3c of the Policy provides that:

"There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three or more Dispute Resolution Service cases in the two years before the Complaint was filed. This presumption can be rebutted.."

Paragraph 4c of the Policy provides:

If Paragraph 3(c) applies to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.

Complainant's Rights

The Complainant must prove it has enforceable legal rights in a name or mark which is identical or similar to the Domain Name. The definition of "Rights" in the Policy is not confined to intellectual property rights and could extend to other enforceable legal rights such as contractual rights, but not for wholly descriptive names which have not been used and therefore do not have any secondary meaning exclusively denoting the Complainant.

The Complainant does not have any registered trade marks for SEMTEC and has not produced any evidence of actual trading using his name. It appears from the Complainant's evidence that at present the name SEMTEC has only been registered as a name on the Companies Register and in two domain names which are not used on the Complainant's stationery. As the Complainant has been trading as SAQ it he has not built up any trading goodwill or secondary meaning denoting his business in the SEMTEC name by use.

Accordingly, the Expert finds that the Complainant has not demonstrated that he has "Rights" in respect of a name or mark, which is identical or similar to the Domain Name under the Policy.

The Respondent has demonstrated that the Complainant has failed to satisfy the first limb of the Policy and as such the Complaint fails. There is accordingly no need to consider the question of Abusive Registration or any question of any presumption under Paragraph 3 (c) of the Policy.

9. Decision:

In light of the foregoing findings, namely that the Complainant does not have Rights in respect of a name or mark which is identical to the Domain Name, the Expert directs that the Domain Name remain in the hands of the Respondent.

Dawn Osborne Date: 15 August 2008