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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> JD Edwards & Company -v- Bedar [2002] DRS 495 (11 October 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/495.html Cite as: [2002] DRS 495 |
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Nominet UK Dispute Resolution Service
DRS 00495
J.D. Edwards & Company -v- Nadeem Bedar
Decision of Independent Expert
| Complainant: | J.D. Edwards & Company |
| Country: | USA |
| Respondent: | Nadeem Bedar |
| Country: | GB |
jdedwards.co.uk ("the Domain Name")
The complaint was lodged with Nominet on 22 July 2002. Nominet validated the Complaint and informed the Respondent on 23 July 2002 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days (until 13 August 2002) to submit a Response. The Respondent submitted a Response on 12 August 2002.
On 12 August 2002 Nominet forwarded the Response to the Complainant. On 19 August 2002 the Complainant lodged a Reply. The Reply was forwarded to the Respondent on 19 August 2002. It was not possible to achieve a resolution to the dispute by mediation. On 20 September 2002 the Complainant paid Nominet the appropriate fee for a decision by an expert pursuant to paragraph 6 of the DRS Policy ("the Policy").
On 23 September 2002 Nominet appointed Andrew Clinton ("the Expert"). On 24 September 2002 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.
On 3 October 2002 the Expert made the following request of the Parties pursuant to paragraph 13 of the DRS Procedure:
The Complainant refers in the Complaint to "the mocking nature of the content of the web site and the references to J.D. Edwards & Company's headquarter city.." The Parties are requested to provide a complete print-out of the web site as it was prior to notification of the Complaint to the Respondent (which was on 23 July 2002) as the copy of the web site that the Expert has is of part of the web site only and it appears that the web site has since been changed.
Responses were received by Nominet from the Complainant on 3 October 2002 and from the Respondent on 9 October 2002.
The Domain Name was registered on 11 June 2002 for the Respondent.
The Complaint, so far as is material, reads as follows:
"J.D. Edwards & Company is the holder of United Kingdom Trademark Registration No. B1507733 for "J.D. EDWARDS". Registration issued July 29, 1994. The domain name in question is identical to the registered trademark, and was registered many years after the effective date of the trademark. Nadeem Bader, for whom the domain name was registered by Firanet, is an employee of European System Solutions, a former business partner of J.D. Edwards. This fact, together with the mocking nature of the content of the web site and the references to J.D. Edwards & Company's headquarter city makes it clear that the registrant was aware of Complainant's business and trademark, and took unfair advantage of these".
The Complainant seeks a transfer of the Domain Name.
6.2 ResponseThe Response (which was filed on the Respondent's behalf by Parvez & Company), so far as is material, reads as follows:
6.2.1 "My client, Mr. Nadeem Bedar has registered the domain name www.jdedwards.co.uk to start his online business to sell Cat Photographs. He found that three more web sites have been registered using word "jdedwards" including www.jdedwards.org, www.jdedwards.net, and www. Jdedwards.org.uk. which are still active until August, 7, 2002 but are not registered by J. D. Edwards & Company (see appendix A, B and C).
6.2.2 Even though J. D. Edwards & Company has registered the trade mark on July 29, 1994. But they were not interested in www.jdedwards.co.uk that is why it was available in the market place when my client has registered it.
6.2.3 My client has NOT put any information good or bad in favour or against J. D. Edwards & Company or their businesses on the www.jdedwards.co.uk. He has not use any J. D. Edwards and Company and / or their competitors Logo on the disputed domain web site.
6.2.4 My client has NOT showed any intension to sell, rent or otherwise transfer www.jdedwards.co.uk to the Complainant or to a competitor of the Complainant, for the valuable consideration in excess of the Respondent's documented out of pocket costs directly associated with acquiring or using the above domain name. [Disputed Resolution Service Policy, paragraph 3(a)(i)(A)]
6.2.5 My client always indicates his intention and cooperation to J. D. Edwards & Company to resolve this matter.
6.2.6 When my client was registering domain name www.jdedwards.co.uk, it was available in the market place for long time along with other similar domain names including
www.jdedwards.biz, www.jdedwards.tv, www.jdedwards.cc,
www.jdedwards.dk, www.jdedwards.bz, www.jdedwards.ac,
www.jdedwards.sh, www.jdedwards.jp, www.jdedwards.ms,
www.jdedwards.uk.com, www.jdedwards.gb.com,
www.jdedwards.gb.net, www.jdedwards.uk.net,
www.jdedwards.us.com, www.jdedwards.me.uk,
www.jdedwards.de.com, www.jdedwards.hu.com,
www.jdedwards.no.com, www.jdedwards.qc.com,
www.jdedwards.ru.com, www.jdedwards.sa.com,
www.jdedwards.se.com , www.jdedwards.se.net,
www.jdedwards.uy.com, and www.jdedwards.za.com.
My client has only registered www.jdedwards.co.uk and www.jdedwards.biz NOT all the above available domain names (these domain names are still available to buy in the market place till August 7, 2002). This means my client has NO intension to block registration against a name or mark in which the Complainant has Rights. [Disputed Resolution Service Policy, paragraph 3(a)(i)(B)].
6.2.7 My client has put a Disclaimer to www.jdedwards.co.uk. Saying "This web site is NOT affiliated with J.D. Edwards & Company. Contents of this site are neither endorsed nor approved by J.D. Edwards & Company." Even though my client does not think that www.jdedwards.co.uk is disturbing the business of J. D. Edwards & Company, but he has put the above Disclaimer for courtesy sake. [Disputed Resolution Service Policy, paragraph 3(a)(i)(C) and paragraph 3(a)(ii)]
6.2.8 My client has registered only two domain names for his business as explain in above paragraph 6. He is not engaged in a pattern of making the similar registration in a view to create Abusive Registration for the Complainant. [Disputed Resolution Service Policy, paragraph 3(a)(iii)]
6.2.9 The contact detail of my client is always true and he always replies to all the correspondence whether they are electronics (e-mail) and hard copy proves that he is a genuine person. [Disputed Resolution Service Policy, paragraph 3(a)(iv)]
6.2.10 The all of the above explanation indicates that www.jdedwards.co.uk is NOT an Abusive Registration as per definition of Nominet UK Disputed Resolution Service Policy. My Client has bought the disputed domain name in good faith and he has right to use it in future. Documentation in Support Appendix A, B and C are attached here with.
6.3 Complainant's ReplyThe Reply, so far as is material, reads as follows:
"In his Response, Respondent offers a number of purported justifications for his use of the Reference Domain Name. Given the fact that Complainant has a registered trademark on the Reference Domain Name, Respondent's purported justifications are irrelevant. Complainant has the right to fully use its registered trademark for the benefit of its business, and Respondent's use of the mark constitutes infringement as a matter of law.
Moreover, Complainant can further reply to Respondent's arguments as follows:
6.3.1 Respondent's registration and use of the Reference Domain Name does constitute Abusive Registration under DRS Policy. Respondent has pre-empted the Reference Domain Name and prevented Complainant's use of the name to further its business. Furthermore, Respondent is trading off of Complainant's good will. Persons going to the domain name will find Respondent rather than Complainant, all to the detriment of Complainant and the improper benefit of Respondent. This clearly meets the definition of Abusive Registration.
6.3.2 Contrary to Respondent's claims, Complainant has been engaged in active efforts to register the Reference Domain Name since August of 2001, long before Respondent's registration of the name. Complainant's efforts were unsuccessful due to an error on the part of its third-party registration service. Nevertheless, Complainant can produce documentation showing its diligence in its efforts.
6.3.3 Respondent's purported rationale for its legitimate use of the Reference domain name is specious and contrived. First, Respondent has not used the Reference domain name to sell cat photographs. The cat caricature on the Reference Domain Name site was of a mocking nature and was removed after the Complaint in this case was filed. Second, Respondent has not and can not present any evidence that use of Complainant's trademark is related to or would benefit the sale of cat photographs other than by trading off of the good will Complainant has built in its trademark. Finally, the fact that Respondent was previously employed by one or more business partners of Complainant means that Respondent was in a position to recognize the good will created in the trademark by Complainant.
6.3.4 The disclaimer that Respondent claims to have put on the Reference Domain Name site has since been removed.
6.3.5 Lack of registration of other domain names containing Complainant's trademarks is irrelevant and cannot be used to defeat Complainant's right to fully utilize its trademark in the UK, a location where Complainant maintains offices and conducts a substantial amount of business".
Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities: first, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and, secondly that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
7.1 Complainant's RightsThe Expert is satisfied that the Complainant has Rights in the mark "jdedwards" as it is the registered proprietor of the trade mark registration number B1507733 issued on 29 July 1994.
Whilst the Complainant might have done more to prove its rights (by attaching a copy of the trade mark certificate) the Expert accepts that the Complainant is the registered proprietor of the trade mark as it signed the declaration attached to the Complaint confirming the information is to the best of its knowledge true and complete. The Respondent concedes in the Response that the Complainant registered the trade mark. An expert is able to verify the details of a particular trade mark registration from the Trade Marks Database operated by the Patents Office but, in view of paragraph 16 of the Procedure (which states the Expert will decide a complaint on the basis of the Parties' submissions, the Policy and Procedure), the prudent course must be for a Complainant to attach evidence of its trade mark.
The issue is whether the mark "jdewards" is identical or similar to the Domain Name. If one ignores the suffix (which is without legal significance for these purposes) the only distinction is that the Domain Name does not include full stops after the initials j and d.
The Domain Name is clearly similar to the mark in which the Complainant has rights. The Expert is of the view that, for the purposes of the DRS, the Complainant's mark should be treated as identical to the Domain Name. Under the Nominet rules for domain names the only characters (barring letters and numbers) that can be used in domain names are hyphens. It is therefore not possible to register the domain name j.d.edwards.co.uk.
Accordingly, the Expert finds that the Complainant has satisfied the first element of paragraph 2 of the Policy in that it has rights in a name which is identical to the Domain Name.
7.2 Abusive RegistrationAbusive Registration is defined in paragraph 1 of the Policy to mean a Domain Name which either:
The Complainant refers in the Reply to the fact that it has a registered trade mark, that it has the right to fully use it trade mark for the benefit of its business and the Respondent's use of its trade mark constitutes infringement as a matter of law. The Complainant therefore dismisses the Respondent's purported justifications in the Response as irrelevant.
This illustrates a misunderstanding of the Policy and its purpose. The issue is not one of trade mark infringement, it is whether the Domain Name is an Abusive Registration. The Complainant needs to prove that by reference to the definition of Abusive Registration referred to above. It is not enough to assert that a trade mark is being infringed as a matter of law and therefore the Respondent's submissions are irrelevant.
The Respondent in turn claims he brought the Domain Name in good faith and he has the right to use it in the future. This also illustrates a misunderstanding of the Policy - it is not a question of good faith but whether the Domain Name is an Abusive Registration.
Non-exhaustive factors - paragraph 3 of PolicyA non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3 of the Policy is as follows:
It is convenient at this stage to dispose of those factors that have no application in this dispute as follows:-
Primary Purpose of Selling Etc - Paragraph 3aiAThe Complainant does not seek to argue that the Domain Name is an Abusive Registration on the basis of paragraph 3aiA.
Pattern of Abusive Registration - Paragraph 3aiiiThe Complainant does not seek to argue that the Domain Name is an Abusive Registration on the basis of paragraph 3aiii.
False Contact Details - Paragraph 3aivThe Complainant does not seek to argue that the Domain Name is an Abusive Registration on the basis of paragraph 3aiv.
This leaves 3 factors that need to be considered in detail as follows:-
Blocking Registration - Paragraph 3aiBThe Complainant states in the Reply that the Respondent has pre-empted the Domain Name and prevented the Complainant's use of the name to further its business. As the Appeal Panel observed in Case DRS 00359 (parmaham.co.uk) it will always be the case in any dispute under the Policy that the Domain Name does in fact block any registration by the Complainant as .uk domain names are allocated by Nominet on a first-come, first-served basis.
The Appeal Panel took the view that the paragraph 3aiB requirement has to involve some deliberate intent to register as a blocking registration at the time of registration. If it can be shown that the Respondent was unaware of the Complainant at the time of registration no such intention could be present.
The Complainant asserts that the Respondent was at the time of registration aware of the Complainant because the Respondent was an employee of European System Solutions, a former business partner of the Complainant. A similar assertion is made in the Reply where it is said that the fact that the Respondent was previously employed by one or more business partners of the Complainant meant the Respondent was in a position to recognise the goodwill created in the trade mark of the Complainant.
The Complainant produced no documentary evidence in support of the assertion that the Respondent knew of the Complainant prior to registration. It would be wholly undesirable to allow the DRS to become saddled with a disclosure process such as exists in litigation. However, if a Complainant wishes to persuade an expert on the balance of probabilities of certain facts the core document or documents might assist in that process. The Expert takes into account the fact that in his Response the Respondent did not challenge the assertion that he was aware of the Complainant's business prior to registration of the Domain Name.
The Respondent claims he registered the Domain Name to start his on-line business to sell cat photographs. The Respondent has not started to use the web-site for that purpose. There is no explanation as to why he chose this particular domain name which has no obvious connection to a business that sells cat photographs nor indeed does it have any obvious connection to the Respondent himself.
The Respondent seek to rely upon the fact that the Complainant did not register the Domain Name and for that reason it was available to him. This is not an argument that can be legitimately deployed since it will apply in every dispute under the Policy and, if accepted, would defeat every complaint.
The Respondent lists a large number of domain names that incorporate the name 'jdedwards' which he says were available in the market place as at 7 August 2002. The Respondent claims that the fact that he only registered jdewards.co.uk and jdedwards.biz shows he had no intention of registering the Domain Name as a blocking registration. This is not an argument that assists the Respondent - whilst registering a large number of domain names incorporating the mark in question may be evidence of an intention to register a blocking registration, it does not necessarily follow that registration of only one or two domain names incorporating the mark is evidence of the absence of such an intention.
Unfairly Disrupting the Business of the Complainant - Paragraph 3aiCThe Appeal Panel in case DRS 00389 (scoobydoo.co.uk) was of the view that an Expert is entitled to look at all use of the Domain Name from commencement of that use to date.
Nominet supplied with the file a print-out of the web-site as at 23 July 2002, which was the day after the Complaint was lodged. The Expert accessed the web-site on 27 September 2002 and noted it had been changed since 23 July 2002.
The print-out of the web-site dated 23 July 2002 supplied by Nominet contains a message which reads "Welcome to www.jdedwards.co.uk". That message has subsequently been removed and in its place is a message which reads as follows:-
"This site is under construction. This web site is NOT affiliated with J.D.Edwards® & Company. Contents of this site are neither endorsed nor approved by J.D.Edwards® & Company".
The Complainant refers to the mocking nature of the content of the web-site. The print-out dated 23 July 2002 includes a picture of what appears to be a caricature of a cat with its tongue sticking out. That picture has since been substituted with a picture of what appears to be a real cat.
There is a dispute between the Parties about when the disclaimer was added to the web-site. The print-out supplied by the Complainant does not include a disclaimer, whereas the print-out supplied by the Respondent does. Neither print-out is dated. The print-out supplied by Nominet was incomplete in that only that part of the web-site that was visible has been printed. It seems clear from the scroll down bar on the right hand side that there was a further section to the web-site page that could have been accessed by scrolling down. In view of the confusion on this point the Expert makes no finding on whether the web-site included a disclaimer prior to intimation of the Complainant's objection to the Respondent.
Confusion - Paragraph 3aii
The Complainant says in the Reply that persons going to the Domain Name will find the Respondent rather than the Complainant, to the detriment of the Complainant and the improper benefit of the Respondent.
The Appeal Panel in case DRS 00248 (seiko-shop.co.uk) pointed out that it was clear from paragraph 3(a)(ii) of the Policy that the Complainant is required to prove that there has been actual confusion, not merely that there is a likelihood of confusion. The Complainant has adduced no evidence of actual confusion and therefore this ground is not made out under the Policy.
Non-exhaustive factors - paragraph 4 of PolicyGenuine Offering of Goods or Services - paragraph 4aiA
The Respondent says that he registered the Domain Name to start his on line business to sell cat photographs. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a genuine offering of goods and services.
Use of Identical/Similar Name - paragraph 4aiB
The Respondent does not seek to rely upon this factor and indeed on the information before the Expert it is quite clearly not made out.
Legitimate or Non-Commercial Use - paragraph 4aiC
There is no evidence that before being informed of the Complainant's dispute the Respondent made legitimate non-commercial or fair use of the Domain Name.
Descriptive or Generic - paragraph 4aii
The Respondent does not seek to rely upon this factor and indeed on the information before the Expert it is quite clearly not made out.
In the Expert's view the Respondent has failed to demonstrate any of the factors set out in paragraph 4 of the Policy. That of course is not an end to the matter as paragraph 4 contains a non exhaustive list of factors and, it is for the Complaint to prove its case on the balance of probabilities.
Conclusion
Weighing up all of the factors in this case the Expert is of the view that, on the balance of probabilities, the registration in the case was an Abusive Registration in that at the time of registration it took unfair advantage of or was unfairly detrimental to the Complainant's rights. That is because either it was a blocking registration (paragraph 3aiB of the Policy) or was registered primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 3aiC of the Policy). In particular, the Expert has regard to the following factors:-
The Domain Name is for these purposes identical to the mark in which the Complainant has rights.
The Respondent failed to challenge the assertion that he was aware of the Complainant prior to the registration of the Domain Name.
The Expert believes it is unlikely that anyone establishing a web-site to sell photographs of cats would put up a web-site in the form this web-site was in at 23 July 2002, i.e. with a caricature of a cat with its tongue sticking out.
Following intimation of the Complainant's objections the Respondent altered the web-site by removing the cat caricature and replacing it with a picture of a cat. The Respondent also removed the wording "Welcome to www.jdedwards.co.uk".
There is no obvious reason why anyone called Nadeem Bedar would establish a web-site at jdedwards.co.uk to promote an on-line business of selling cat photographs. The Respondent has failed to offer any explanation for his choice of domain name.
The Expert finds that on the balance of probabilities the Complainant has rights in a name which is identical to the Domain Name and that the Domain Name is, in the hands of the Registrant, an Abusive Registration. The Expert directs the Domain Name be transferred to the Complainant.
Andrew Clinton
Date: 11 October 2002