Brown (t/a Testament) -v- Xinc Ltd [2004] DRS 1502 (16 March 2004)

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A complaint (“the Complaint") was received in full by Nominet on 19 January 2004. Nominet forwarded the Complaint to the Respondent on 21 January 2004 and notified it that it had until 12 February 2004 to respond. The Respondent failed to respond. Mediation not therefore being possible Nominet notified the Complainant that the Complaint would be referred to an independent expert upon payment of the requisite fee. The Complainant paid the fee on 24 February 2004 for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy").

On 26 February 2004 and in accordance with paragraph 9 of the Nominet Dispute Resolution Service Procedure ("the Procedure") I, Simon Chapman, ("the Expert") confirmed to Nominet that I was impartial and independent and knew of no reason why I should not accept an appointment to act as Expert in this matter.

I was subsequently appointed by Nominet on 27 February 2004 and my decision is due by no later than 15 March 2004.

The Respondent has not submitted a Response to the Complaint. From the papers that have been submitted by Nominet to me it is apparent that efforts have been made to bring the Complaint to the attention of the Respondent by post, fax and e?mail using the contact details held on Nominet’s Register.

When registering a UK domain name applicants agree to be bound by Nominet's Terms and Conditions. Clause 2.3 of those terms and conditions provides that:?

'You must inform us promptly of any change in your registered details, and those of your Agent if applicable. It will be your responsibility to maintain and update any details you submit to us and to ensure that your details are up to date, and accurate. In particular, it is your responsibility directly or by your Agent to ensure that we have your full and correct postal address.”

"Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i. if sent by facsimile, on the date transmitted; or
ii. if sent by first class post, on the second Day after posting; or
iii. if sent via the Internet, on the date that the communication was transmitted; and
iv. where communications are received by more than one method, at the earliest date received;
and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.”

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.

I now move on to consider the consequences of the Respondent not submitting a response.

The Procedure envisages just such a situation and 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 responded to the Complaint, and as such believe it appropriate to proceed to a Decision. I will draw such inferences from the Respondent's failure to respond as I think appropriate.

The Complainant appears to be a partner in a business trading under the name ‘Testament’. Its business is described as that of a record company and has traded since 1991.

In about 1997 the Complainant asked the Respondent to build it a website and register the domain name testament.co.uk. The site ran from 1998 but the Complainant was not satisfied with it and requested another company to build a new website. The Complainant was invoiced for the services provided by the Respondent which were paid in full. It is noticeable from the Respondent’s invoice that seemingly no charges have been levied in respect of the registration of the Disputed Domain Name. Notwithstanding this payment the Respondent refused to relinquish the Disputed Domain Name despite several requests from the Complainant that they do so.

The Complainant has traded under the mark TESTAMENT and used the Disputed Domain Name extensively and has distributed over 40,000 catalogues and many thousands of CD’s which carry the Disputed Domain Name as the address of the Complainant’s website. The Complainant has asserted that the Respondent assured him that they would re-direct the Disputed Domain Name to its new website.

The Respondent is shown in a WHOIS query result as the Registrant of the Disputed Domain Name, with a registration date of 17 June 1998. The Disputed Domain Name is presently pointing to what appears to be a holding page of a domain name registering agency.

The Complainant has received notifications from customers which identify the difficulty they are having in now locating the Complainant because the Disputed Domain name does not take them to the Complainant’s website.

The Complainant submits that it has Rights in respect of a name or mark which is identical to the Disputed Domain Name.

The Complainant does not refer to any specific grounds, but generally asserts that the use of the Disputed Domain Name by the Complainant is having an adverse effect on its business.

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 (1) 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 (2) the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

The absence of a response from the Respondent does not mean that the Respondent is deemed to have no answer to the Complaint, but rather the Complainant must still make out its case to the Expert on the balance of probabilities. Where a Respondent does not avail himself/herself of the opportunity to respond to the Complaint it might be said that the Complainant's task is all the easier, but as I have previously indicated, notwithstanding the absence of a Response, it is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

As indicated above, the Complainant has asserted that it has Rights in a name or mark which is identical to the Disputed Domain Name.

The first (.uk) and second (.co) levels of the Disputed Domain Name should be discounted for the purposes of comparison as being of a generic nature. As such the mark in which the Complainant claims Rights, TESTAMENT, is identical to the Disputed Domain Name.

The Complainant has provided evidence which confirms that it has substantial goodwill in the mark and in the absence of any evidence to the contrary, I find that the Complainant has established that it has Rights in respect of a name or mark which is identical to the Disputed Domain Name.

An Abusive Registration is defined in Paragraph 1 of the Policy 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".

A non?exhaustive list of factors which may be evidence of an Abusive Registration are set out in Paragraph 3. They are:?

“i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes 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;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. It is independently verified that the Respondent has given false contact details to us.

As indicated above the Complainant has not identified any specific ground in support of its claim that the registration is abusive, but rather the Complainant has asserted that the Respondents use of the Disputed Domain Name is having an adverse effect on its business.

The difficulty that I find myself in when considering the Complaint is that essentially the Complainant and the Respondent were engaged in contractual relations, which included the registration of a domain name. What I have not been provided with is any details of the specific circumstances surrounding that domain name rather than the wider services relating to the Complainant’s website. I have no information as to why the Disputed Domain Name was registered in the name of the Respondent or for that matter whether the Complainant objected to it. In my view any legitimate complaint that the Complainant might have will arise from whether or not there has been a breach of contract between the parties. Notwithstanding the silence of the Respondent, given the relationship that the parties previously had I do not consider that the Complainant has raised any grounds upon which the registration of the Disputed Domain Name could be considered Abusive within the definition as set out in the Policy, and nor am I aware that any such grounds exist on the basis of the evidence as submitted by the Complainant.

Nothing that I have said should be taken by either party to mean that the Complainant does not have a legitimate claim to be the rightful registrant and user of the Disputed Domain Name, but it is apparent to me that the DRS is not the appropriate forum for this complaint.

For the reasons set out above, in my opinion the Complainant has proven on the balance of probabilities that (1) it has Rights in respect of a name or mark which is identical to the Disputed Domain Name; however it has not proven on the balance of probabilities that (2) the Disputed Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore fails.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Brown (t/a Testament) -v- Xinc Ltd [2004] DRS 1502 (16 March 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1502.html Cite as: [2004] DRS 1502

Nominet UK Dispute Resolution Service