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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> ISL Informer Systems Ltd -v- Dallaway [2003] DRS 1014 (7 July 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1014.html Cite as: [2003] DRS 1014 |
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NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 01014
ISL INFORMER SYSTEMS LIMITED –V- JOHN DALLAWAY
DECISION OF INDEPENDENT EXPERT
1 Parties
Complainant: ISL Informer Systems Limited
United Kingdom
Respondent: Mr John Dallaway
United Kingdom
2 Domain Name
The domain name is sentrinet.co.uk (the "Domain Name").
3 Procedural Background
The Complaint was lodged with Nominet on 21 May 2003, hard copies of the Complaint being received on 22 May 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 27 May 2003 and informed the Respondent that he had 15 days in which to lodge a Response. The Respondent failed to respond. Mediation not being possible in these circumstances, Nominet so informed the Complainant and on 25 June 2003 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
On 26 June 2003, Mr Clive Thorne, 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. He 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.
4 Outstanding Formal/Procedural Issues (if any):
Here it is convenient to deal with the consequences of the Respondent not having submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure").
Paragraph 15(b) of the Procedure provides, inter alia, that "if in the absence of exceptional circumstances a Party does not comply with any time period laid down in this
Policy or the Procedure, the Expert will proceed to a Decision on the Complaint".
There is no evidence before the Expert to indicate the presence of exceptional circumstances. Accordingly, the Expert will now proceed to a Decision on the Complaint and notwithstanding the absence of a Response.
Paragraph 15(c) of the Procedure provides that "if in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure ….. the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate".
What inferences would it be appropriate for the Expert to draw from the absence of a Response in this case? The Expert is conscious that Respondents may fail to respond for a variety of reasons. The reason may simply be that the Respondent has nothing useful to say in his defence, or it may be that he has not received the Complaint, perhaps because he is away and not in email contact or perhaps because he has not kept his contact details with Nominet up to date.
Generally, the absence of a Response from the Respondent does not, in the Expert's view entitle an Expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.
In many cases, and in this one, the principal disadvantage attached to failing to respond would be the loss of an opportunity for the Respondent to demonstrate, pursuant to paragraph 4 of the Policy circumstances tending to show that the Domain Name is not an abusive registration. Where, as here, the Respondent has a case to answer (i.e. the Complainant has made out a prima facie case) and there is no answer, the Complaint must ordinarily succeed.
5 The Facts
The Complainant has chosen in its Complaint to set out the briefest of facts. The Complainant is an English registered company (number 01655171) incorporated on 30 July 1982. The Complaint is signed by Mr Cliff Robinson who has been a director of the company since before 4 October 1991. It would appear that the Complainant is in the business of computer software and hardware. A certificate of registration of a US trade mark (registered on 15 October 2002) of which the Complainant is the registered owner (registration number 2634136) for the mark "Sentrinet" is exhibited to the Complainant. This registration is in class 9 for "computer software and hardware for use to authenticate the identity of a user before giving access to a computer network or application through the use of a biometric scan".
The basis of the Complaint is set out in one paragraph in the Complaint form. It is therefore convenient for the Expert to set this out;
"SentriNET is a product name manufactured and marketed by ISL Informer Systems Limited and registered as a trade mark in the UK, Europe and the USA. SentriNET.co.uk was originally registered to J Dallaway on 12 November 1999 and is currently detagged, it has been detagged since January 2002, Mr Dallaway was originally employed by Misson Data Systems (MDS), MDS was purchased together with all Intellectual Property Rights by ISL Informer Systems Limited on 2 November 1999. The product name (SentriNET) has been marketed as an ISL product since then. Mr Dallaway left ISL's employ approximately 6 months later. ISL currently own sentrinet.com, esentrinet.com, esentrinet.co.uk, e-sentrinet.com and e-sentrinet.co.uk. Mr Dallaway took the sentrient.co.uk domain name as a private individual. Mr Dallaway took unfair advantage of ISL's rights to sentrinet.co.uk, as he had inside knowledge of the plans ISL had for the product name. I believe that the domain registration was an Abusive Registration."
The Expert notes that the only evidence adduced in support of the Complaint is the United States certificate of trade mark registration referred to above.
In terms of trade mark rights the position, according to the Complaint would appear to be as follows:-
(a) an assertion that there are trade mark rights in the UK, Europe and the USA. The only evidence of registered rights is the US certificate of registration registered on 15 October 2002;
(b) the name, Sentrinet, has been used as a product name by the Complainant since 2 November 1999;
(c) the Complainant currently owns the domain names; sentrinet.com, e-sentrinet.com, esentrient.co.uk, e-sentrinet.com and e-sentrinet.co.uk.
There is no evidence before the Expert of the nature of the intellectual property rights purchased from Mission Data Systems on 2 November 1999 nor is there any evidence of the dates of registration of the UK and European trade marks.
6 The Parties Contention
Complainant
The Complainants contentions are set out in the paragraph referred to in Section 5 above.
Respondent
The Respondent has not responded.
7 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).
Complainant's Rights
The difficulty that the Expert has in this case is the limited evidence contained in the Complaint of the Complainant's rights. No evidence has been adduced of the registered trade marks other than the United States registration. In any event the United States registration was registered on 15 October 2002 which was almost 2 years after the registration of the Domain Name by the Respondent on 12 November 1999.
Moreover, the Complainant fails to adduce evidence as to the manner in which the product name SentriNet has been marketed as a Complainant product since 2 November 1999. The Expert is therefore unable to reach any conclusion as to whether the Complainant had any unregistered trade mark rights or trading goodwill in the mark, SentriNet. In addition, the Respondent registered the domain name 10 days after 2 November 1999 when the Complainant appears to have first marketed products under the name SentriNet. This 10 day period of time is a very short period in which the Complainant could have acquired a trading goodwill or unregistered rights. It may be that Mission Data Systems had been trading for some time by the time of the acquisition on 2 November 1999 and that unregistered rights (or indeed registered rights) were assigned to the Complainant. This may have been so because the Complainant refers to a purchase of Mission Data Systems "together with all Intellectual Property Rights". The difficulty from the Expert's point of view is that no evidence is submitted by the Complainant to explain or support this.
The Complainant also relies upon current ownership of the five domain names incorporating the mark "SentriNet" referred to above. The Complainant merely refers to current ownership and does not adduce evidence as to the use of these domain names nor the period of time in which it has owned or used these names.
The Expert therefore finds, relying upon the evidence of the US trade mark registration that the Complainant has rights in respect of a name or mark which is identical or similar to the domain name. It does not, however, find that the Complainant had such rights when the Respondent registered the Domain Name on 12 November 1999.
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".
The Expert having found that the Complainant did not have rights in respect of a name or mark which was identical or similar to the Domain Name at the time when the Respondent's registration of the Domain Name took place therefore finds under paragraph 1(i) of the Policy that the Respondent could not have taken unfair advantage of the Complainant's rights nor that the registration was unfairly detrimental to the Complainant's rights because the Complainant did not have rights at the date of registration.
In these circumstances, it is not strictly necessary for the Expert to consider paragraph 1(ii) of the Policy relating to the use of the domain name. Were he to do so, the Expert considers that there is no evidence adduced by the Complainant to support a finding of use in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights. The evidence is limited to the fact that the Respondent was a former employee of Mission Data Systems, was subsequently employed by the Complainant, registered the Domain Name on 12 November 1999 and left the Complainant's employ some 6 months later. There is an assertion by the Complainant that the Respondent "had inside knowledge of the plans that ISL had for the product name" but this assertion is unsupported by any evidence.
Accordingly, the Expert finds that the Domain Name is not an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that the Domain Name was not registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant's rights.
8 Decision
In the 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 not an Abusive Registration, the Expert directs that the Domain Name, sentrinet.co.uk should not, as is requested by the Complainant, be transferred from the Respondent to the Complainant.
Clive Duncan Thorne
Date: 7 July 2003