Nominet UK Dispute Resolution Service
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URL: http://www.bailii.org/uk/cases/DRS/2005/02321.html
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Quantel Ltd v- Wright [2005] DRS 02316 (18 April 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02321.html |
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Complainant: Quantel Limited
Country: GB
Respondent: Mr Ellis Wright
Country: GB
quantel.co.uk
The Complaint was lodged with Nominet on 24 January 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on 27 January 2005 and informed the Respondent that he had 15 until 18 February to lodge a Response. A response was received on 18 February 2005 and forwarded to the Complainant on the same day with an invitation to make any further submission in reply to the Response by 1 March 2005. The Complainant filed a reply on 25 February 2005. On 17 March 2005 Nominet informed the parties that it had not been possible to achieve a resolution of the dispute by Informal Mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 4 April 2005 . On 29 March 2005 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").
On 5 April 2005, David King, 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 and further confirmed that he knew of no matters which ought to be brought to the attention of the parties, which might appear to call into question his independence and/or impartiality.
There are no outstanding issues in this case.
The Complainant is a UK company registered at Companies House, which
designs, manufactures and sells hardware and software solutions to the post-
production, live news production and digital graphics markets in the UK and
other parts of the world. On the internet, the Complainant operates from its
website at www.quantel.com. which provides access to information and
updates to users around the world. The Complainant also owns the domain
quantel.org and the UK domains quantel.me.uk and quantel.org.uk
The Respondent registered the Domain Name on 18 May 2004.
Complainant:
The Complaint reads as follows:
"1. The Complainant has rights in the Domain Name because:
a. It is registered at Companies House under the name Quantel Limited (Company No: 01130271) and has been since the 21st of August 1973 - Exhibit A.
b. It trades under the name Quantel and has done so since the 21st of August 1973 Exhibit A, B and C.
c. It has advertised under the name Quantel since 21st August 1973 and has included using the Quantel name on its website at www.quantel.com (Exhibit D). The domain name Quantel.com was first registered by the Complainant on 29 August 1995.
d. It provides goods and services under the name Quantel as evidenced by the brochures exhibited at Exhibits E,F and G
e. It has sixty one registered UK trade marks including as a representative example: i. Quantel (TM Number 1051637) Exhibit H ii. Quantel (TM Number 1535651) Exhibit I iii. Quantel (TM Number 2120334) Exhibit J
f. It trades under the name Quantel in several other countries including Japan & Korea and is the registered owner of sixteen trademarks in the United States including the following as a representative example: i. Quantel (SN 73068499, Country: USA) Exhibit K
g. It has the following trade mark registered with the Office for Harmonization in the Internet Market granting the Complainant a uniform right in all Member States of the European Union. i. Quantel (TM Number 000174573) Exhibit L
2. A recent history exists between the Complainant and Respondent as detailed below:
a. An offer by the Complainant to purchase the Domain Name Quantel.co.uk was made on the 12th January 2005. This offer was of the sum of one hundred twenty five Pounds Sterling (£125.00).
b. A counter offer was made by the Respondent later in the day of the 12th January 2005. This counter offer was of the sum of thirty four thousand Pounds Sterling (£34,000.00).
c. The Complainant made a subsequent offer on 13th January 2005 of one hundred twenty five Pounds Sterling with the notification of the intention to initiate proceedings through the Nominet Dispute Resolution Service.
d. The Respondent subsequently cancelled negotiations on 13th January 2005. Details of the negotiation can be found in Exhibit M.
3. The Domain Name in the hands of the Respondent is abusive because it was/is:
a. Registered for the purposes of selling or otherwise transferring the domain to either the Complainant or a Competitor for a price greater than the Respondent's costs. i. Exhibit M Showing offer and counter offer made for the Domain Name.
b. Being used in a way that may confuse people when trying to find Quantel Limited i. Exhibit N Showing domain holding page as targeted by the Domain Name (page 1) and the weekly average of visitors to the Quantel.co.uk Domain Name on page 2. ii. Exhibits O & P Since 13th January 2005 showing a webpage entitled Quantel.co.uk but now showing full page adverts for Competitors/Third-Parties
c. Was added to the Sedo database for sale on the 19/05/2004, the day after the domain was registered by the Respondent indicating his intention of selling the domain Exhibit Q. Exhibit R shows the WHOIS query result for the Domain Name.
4. The Complainant, Quantel Limited designs, manufactures and sells hardware and software solutions to the post-production, live news production and digital graphics markets. Quantel is a well known brand in such markets which extend out of the United Kingdom to countries including Australia, United States, China, Europe and Japan. The Complainant currently owns the UK domains Quantel.me.uk and Quantel.org.uk as well as the domains Quantel.com and Quantel.org.
The Complainant's website provides access to information and updates to customers and partners around the world with many such users using local domains (Quantel.co.jp for Japan, Quantel.cn for China) to gain quicker access to local language versions of the website. A project is currently underway to re-design and re-launch the Quantel website with additional features; significant funds have been expended on the provision of services via the website. It is likely that users typing in the Domain Name will be looking for the website of the Complainant rather than that of the Respondent and as a result of the visit believe that they are on a website affiliated with the Complainant. A figure quoted on the Sedo domain holding page shows a unique visitor count in excess of 220 visitors per month for the Domain Name Quantel.co.uk.
Until the 12th January 2005 the Domain Name was pointed to a domain holding page operated by Sedo (Exhibit N), describing themselves to be " the global marketplace for buying and selling domain names ". A description given to the Domain Name presumably by the Respondent describes the Domain Name as "Ideal domain for those delivering post production/editing using the Quantel product set or use as a redirect for a competitive business." (Exhibit N). Only after the Respondent had cancelled the negotiation (13/01/2005) was the Domain Name was pointed to a new website (Exhibits O & P) showing advertisements/descriptions for competitors and related industries provided via the Google Syndication program. A statement on each page of the website continues to advertise the Domain Name for sale and clicking through this link takes you to the Sedo website inviting an offer to be made for the Domain Name.
Prior to our contact with Effect Systems Ltd, a Quantel business partner, to establish any possible affiliation with the Respondent, they had no knowledge of the content purporting to be an advertisement via the Domain Name nor do they endorse said content.
On Monday 17th January 2005, the Complainant observed another update to the website at the Domain Name which saw a logo and link to donate to the Tsunami appeal via way of the DEC.co.uk website. Such practice could clearly be confusing to a visitor this incarnation of the website is at Exhibit S.
A subsequent visit to Quantel.co.uk by the Complainant on 19th January 2005 showed a further update to the website sited at the Domain Name purporting to offer further information about the Tsunami appeal. A statement on the page suggests another update in ten days. This incarnation of the website is at Exhibit U. We continue to rely on our web presence and could not afford to dedicate it in full to non commercial activities.
Quantel distributes its own magazine publication entitled "Thinking". This magazine not only carries the Quantel name but articles on its products, projects and examples of its products in use with some of the largest names in post and broadcast production (Exhibit T).
Index of Included Exhibits * Exhibit A: Companies House record * Exhibit B: Company Letter Head * Exhibit C: Example of Company Stationary * Exhibit D: Company Website (Front page shown as a representative example) * Exhibit E: Quantel Brochure "Quantel A revolution in Post and Broadcast production" * Exhibit F: Product Marketing Brochure "Version2 for Quantel" * Exhibit G: Product Marketing Brochure "generationQ Video Design" * Exhibit H: Quantel registered trade mark (1051637) * Exhibit I: Quantel registered trade mark (1535651) * Exhibit J: Quantel registered trade mark (2120334) * Exhibit K: Quantel US registered trade mark (73068499) * Exhibit L: Quantel European registered trade mark (000174573) * Exhibit M: Domain negotiation * Exhibit N: Sedo holding pages including advert listing and description of the domain prior to 13/01/2005. * Exhibit O: Example 1 of web page as of 13/01/2005 at the Domain Name * Exhibit P: Example 2 of web page as of 13/01/2005 at the Domain Name * Exhibit Q: Email contact between Complainant and Sedo * Exhibit R: WHOIS query result for the Domain Name * Exhibit S: 'Tsunami Appeal incarnation' of the website * Exhibit T: Quantel Thinking magazine * Exhibit U: Updated 'Tsunami Appeal' website Exhibits B, C, E, F, G & T are not available in electronic form and are provided in the full complaint as provided via postal service."
The Expert confirms that he has perused the Exhibits to the Complaint supplied by the Complainant with the hard copy of the Complaint.
Respondent:
The Response reads as follows:
"I object to the Complainant and ask that the Expert does not grant the Complainant the remedy of transference as has been requested. The Respondent believes the Complainant does not feel they have a valid claim, as the Complainant did not pursue this remedy via Nominet in the first instance. Instead the Complainant attempted to gain this domain name by making a minimal cash offer.
1. The Respondent does not dispute that the Complainant has trademarks relating to their business.
2. A recent history exists between the Respondent and the Complainant: i. 12th January 2005 informed by Sedo that an offer of £125 had been for the purchase of "quantel.co.uk" ii. 12th January 2005, the Respondent made a counter of £34,000. The price was determined by estimating the potential annual revenue for the domain, then halving that number as the domain has not realised such incomes (adding on £4000 to cover sale & transfer costs by Sedo). This figure was achieved by the following calculations (presuming the potential, anonymous purchaser was to use the domain as a commercial site) a) Average of 212 views per month x 12 months = 2544 (Exhibit A) b) Conversion rate of 5% = 127 sales (rounded down) c) Annual revenue from website = £59,690 (average online spend value of £470 Exhibit B) iii. The Complainant responded to the counter offer by offering £125 again and informing the Respondent that the Complainant was now pursuing the domain via the DRS. iv. The Respondent cancelled the negotiations as any negotiations had clearly broken down.
3. Brief background of "quantel.co.uk": i. As far back as 1998, "quantel.co.uk" has been a website offering email and web hosting services as well as being a global listing website of online newspapers. These listings carried links for online newspapers from all continents. (Exhibits C & D) ii. Online records show the last time that "quantel.co.uk" was archived was Oct 14 2002. The nature of the use of this domain did not change in the time between the first archive record and the last record. (Exhibit E) iii. On 18th May 2005, the Respondent registered the domain name with 1and1.co.uk. The domain name was freely available, with WHOIS query result showing that there was not a registrant for "quantel.co.uk" iv. On 19th May 2005, the Respondent parked the domain with sedo.co.uk, until such time as the domain name was to be associated with a website. As part of the service provided by Sedo, they publish a webpage that carries links that are syndicated with Google Adwords (Exhibit F). Sedo decide the relevance of keywords associated with the parked domain name and this is used by Google to determine with links are shown. Therefore, anyone who advertises with Google on a Pay Per Click basis (for example: Effect Systems Ltd quantelsupport.com (reference: Text of the Complainant, point 4, paragraph 4) will have their advertising link shown as this association will be deemed to return qualified click through traffic.
4. The registration in the hands of the Respondent is not abusive because: i. The domain name although available for purchase, was not registered with the specific intent to resell it. ii. The domain name and associated website once developed, is going to be used, as it has been historically, as a news / informational site. Once the site is fully developed, any links with Sedo will be severed. iii. Any webpage's that have been published with this domain name have never had (to the Respondents knowledge or intended to ever have) any layout design or use of logos that are the same or similar to that of the Complainant or any indication that it has direct affiliation with the Complainant. iv. In the life of this domain name and not within the time it has been registered to the Respondent, it has never been used (to the Respondents knowledge) as a vehicle to directly promote the Complainant or intentionally denigrate the name of the Complainant and it is not the intended purpose to do so. v. The Respondent has at no time and has no intention of holding the Complainant to ransom over the disputed domain name. vi. At no time has the Respondent solicited the Complainant, either verbally or via any written communication, asking for monies for the domain name."
The Expert confirms that he has perused the Exhibits to the Response supplied by the Respondent with the hard copy of the Response.
Complainant's reply
The Complainant's reply to the Respondent's Response can be summarised as follows:
The Complaint lodged is to the registration of the Domain Name by the Respondent and the Complainant fails to see why the Respondent objects to the Complainant rather than the Complaint.
The Respondent's statement that the Complainant does not have a valid claim is pure speculation to which the Complainant's response is that it is not in their interests to be entering into lengthy and costly proceedings without a clear belief of their position
An amount estimated to cover the direct costs invoked by the Respondent was offered by the Complainant. This amount was thought to be a realistic figure in respect to the Respondent's initial outlay and made in good faith having been arrived at through the consideration of the costs of domain registration via a representative sample of agents including One & One Internet Limited at whose services the Domain Name is currently pointed [Exhibit Reply/1].
The Complainant is unable to see the relevance or even source of the conversion rate figures provided by the Respondent and fails to understand what reflection they are to the Complainant's business or this case. The Terms and Conditions (Exhibit Reply/2) of the source of the Exhibit (Aspin.co.uk/Aspin Management Systems Limited) state that they do not warrant that the information is accurate, complete or current. On this basis the Complainant fails to see how the figures quoted for website annual revenue can be any more than circumstantial. Quantel Limited do not and never have traded directly via their website.
The Complainant fails to see the relevance of the points made by the Respondent regarding the earlier use of the Domain Name and the associated exhibits as they address the use of the Domain Name prior to the Respondent's registration of that Domain Name. The use of the Domain Name by a previous owner is not under dispute in the Complaint. As set out in the Complaint the dispute is purely in relation to the existing registration.
The Complainant is unable to speculate on the status or use of the Domain Name prior to the current registration as no evidence has been provided to support the Respondent's claim that the Domain Name was freely available. The lack of supporting evidence does not rule out that the previous owner may have transferred it to the Respondent. The Complainant disputes that the registration of the Domain Name was made on the 18th May 2005 or that the Domain Name was added to the Sedo Global Domain Marketplace on 19th May 2005 and as such can only assume that the Respondent has provided erroneous information.
The Complainant disputes that the Domain Name was parked with Sedo.co.uk on the 19th May 2005 and as such can only assume that the Respondent continues to provide factually incorrect information.
In using the Google Adwords service whether through direct sign-up with Google or via the parking program offered via the Sedo service, the latter being the case in this instance, the Respondent is effectively trading on the Quantel name and in his own admission states that the keywords used by Google to generate links are based on the Domain Name. Section 6.3 of the Sedo Terms and Conditions (Exhibit Rep/3) state that "Sedo will pay the Parking Program participant ("Participant") a percentage of all revenues generated by the Participant's parked domain names" thus adding further indication that the Respondent looks to seek financial gain from the Quantel name.
The description provided by the Respondent as referred in Exhibit N submitted by the Complainant for the Domain Name clearly suggests intent to sell the Domain Name to competitors
The Complainant notes that the Complaint is in relation to the registration of the Domain Name not speculation around its future use.
The Expert confirms that he has perused the Exhibits to the Complainant's Reply supplied by the Complainant with the hard copy of the Reply.
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it
must prove to the Expert, on the balance of probabilities, both that it has
Rights in respect of a name or mark which is identical or similar to the
Domain Name and 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 Complainant has provided extensive evidence of its use of the name
"Quantel", including details of its UK Registered Trade Marks Nos. 1051637,
filed 4 September 1975, 1535651 filed 14 May 1993 and 2120334 filed 9
January 1997, its US Trade Mark SN 73068499, filed 10 November 1975 and
Trade Mark No. 000174573 registered with the Office for Harmonization in the
Internet Market, filed 1 April 1996.
A Company search dated 27 January 2005 supplied by Nominet to the Expert
confirms that Quantel Limited was incorporated on 21 August 1973 under
Company No. 01330271 and that no previous name information has been
recorded over the last 20 years.
On the basis of the evidence submitted, it is clear that the Complainant has
substantial rights in the name "quantel" within the meaning of the Policy. The
Domain Name is identical to the name of the Complainant. In assessing
whether or not a name or mark is identical or similar to a domain name, it is
appropriate to discount the domain suffix
significance and wholly generic and also to discount the word "Limited" in the
name of a company registered at Companies House.
The Expert finds that, for the purposes of the Policy, the Complainant does
have Rights in respect of a name of mark which is identical to the Domain
Name.
Abusive Registration
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 detrimental to the Complainant's Rights."
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy.
Although the Complainant has not referred specifically to paragraph 3 of the Policy, it is apparent that the Complainant relies on the provisions of paragraphs 3 a i A and 3 a ii.
Under paragraph 3 a i A, there may be evidence of Abusive Registration if circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name 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".
The Respondent denies that he registered the Domain Name with the specific intent to resell it and states that at no time has he solicited the Complainant asking for monies for the Domain Name. It is apparent from the evidence submitted by the Complainant that the Domain Name was added to the Sedo database for sale on 19 May 2004, the day after it was registered by the Respondent. It was the Complainant who first offered to purchase the Domain Name at the price of £125, which the Complainant considered to be a reasonable sum based on the estimated costs of registering a domain name. The Respondent made a counter offer of £34,000 and, in his Response, he explains how he calculated the market value of the Domain Name. The figure is substantially higher than the usual cost of registering a Domain Name and the Expert concludes that the Respondent sought to make a profit from the sale of the Domain Name. The Expert is satisfied that it was in order for the Complainant to attempt to resolve the matter by making its offer before invoking Nominet's Dispute Resolution Service.
The Respondent submits that he has plans to develop the website but he has not provided any evidence that he has made demonstrable preparations to use the Domain Name in connection with a genuine offering of goods or services. It is significant that the Domain Name is identical to the name of the Complainant and that the Respondent must have been aware of the existence of the Complainant before he registered the Domain Name. On the evidence before him, the Expert concludes that, on the balance of probabilities, the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant or to a competitor of the Complainant for a profit.
Under paragraph 3 a ii there may be evidence of Abusive Registration if there are "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." The Domain Name is identical to the name of the Complainant and the Expert considers that anyone visiting the website would assume that it is connected with the Complainant. It is apparent from the available evidence that the website has been receiving a significant number of visitors each month. The Expert is therefore satisfied that there are circumstances which fall within paragraph 3 a ii of the Policy and which reinforce the Expert's view that the registration of the Domain Name by the Respondent is an Abusive Registration.
The Complainant has not submitted that the Respondent registered the Domain Name as a blocking registration or primarily for the purpose of unfairly disrupting the business of the Complainant. The Expert has no reason to conclude that paragraph 3 a i B or C of the Policy applies.
There is no need to consider paragraph 3 a iii, iv or v of the Policy as there is no suggestion that the Respondent is engaged in a pattern of registrations relating to well know names or trade marks, that the Respondent has given false contact details to Nominet or that the Domain Name was registered as a result of a relationship between the Complainant and the Respondent.
The Expert has considered paragraph 4 of the Policy headed "How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration". Under paragraph 4 a i a there may be evidence that the Domain Name is not an Abusive Registration if, before being informed of the Complaint, the Respondent has used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services. As already mentioned above, the Respondent has not submitted any evidence of "demonstrable preparations" of this type. The mere reference to an intent to develop the website is not sufficient to satisfy the provisions of paragraph 4a i. The Respondent's stated intention to develop the website also appears to be inconsistent with the fact that the website was added to the Sedo database for sale the day after registration by the Respondent. The Respondent might argue that he has "made legitimate non-commercial or fair use of the Domain Name" as referred to in paragraph 4 a C of the Policy but, in the opinion of the Expert, the evidence in this case indicates Abusive Registration by the Respondent for the reasons set out above. Furthermore, it is the manner in which the Respondent has registered the Domain Name which must be considered, not the previous use of the Domain Name, to which the Complainant had no objection. On the evidence available, the Expert does not consider that paragraph 4 of the Policy would assist the Respondent. Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.
8 Decision
In light of the above 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 an Abusive Registration, the Expert directs that the Domain Name www.quantel.co.uk be transferred to the Complainant.
David King 18 April 2005