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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Telegraph Group Ltd v Morrison [2006] DRS 3237 (1 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3237.html Cite as: [2006] DRS 3237 |
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Nominet UK Dispute Resolution Service
DRS 3237
Telegraph Group Limited v. Robert Morrison
Decision of Independent Expert
Complainant: Telegraph Group Limited
Country: GB
Respondent: Robert Morrison
Country: Malta
telegraphbooks.co.uk ("the Domain Name")
The Complaint was submitted to Nominet on 20 December 2005. Hardcopies were received in full on 6 January 2006. On 11 January 2006 the Complaint was validated by Nominet and sent to the Respondent by post and by email both to [email protected] and to the email address which Nominet held for the Respondent on the register database. The Respondent was informed in this correspondence that he had 15 workings days, that is, until 5 February 2006 to file a response to the Complaint.
The Respondent did not file a response and the case did not proceed to the mediation stage. On 10 February 2006 the Complainant paid the fee for referral of the matter for an expert decision pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy"). On 14 February 2006, Andrew Lothian, 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 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. Nominet duly appointed the Expert with effect from 17 February 2006.
No response
The Respondent has failed to submit a response to Nominet in time in accordance with paragraph 5(a) of 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 the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."
Paragraph 15(c) of the Procedure provides that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down 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." In the view of the Expert, if the Respondent does not submit a Response the principal inference that can be drawn is that the Respondent has simply not availed himself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration. This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration, nor does it in the Expert's view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.
Deficiencies in the Complaint
The Complainant has failed to describe in accordance with the Policy why the Domain Name should be considered to be an Abusive Registration in the hands of the Respondent as required by paragraph 3(c)(v) of the Procedure.
The Complainant does assert that it has Rights within the meaning of the Policy in the name or mark 'Telegraph Books' and that the registration of the Domain Name in the hands of the Respondent is an Abusive Registration. However, while the Complainant provides some submissions on the question of Rights (a total of 85 words), it offers no submissions whatsoever on the question of Abusive Registration other than the standard submission inserted into the Complaint by Nominet's online system, namely "I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration."
In addition to submissions as to the complainant's Rights, a complainant must provide the Expert with a minimum amount of information regarding the conduct of the Respondent in registering or using the Domain Name. As the expert stated in Equazen UK Limited v Mr Robert Morrison (DRS 2735):-
"At the very least, a Complainant should explain why it believes the Respondent has registered the Domain Name and/or what use has been made of the Domain Name by the Respondent. Second, a Complainant would be expected to explain why such registration/use constitutes an Abusive Registration under the Dispute Resolution Policy."
As the expert in 2sms.com Limited v Global Publications Limited (DRS 2052) set out in detail, Nominet provides comprehensive guidance notes on its website for prospective complainants. While these do not form part of the Policy and Procedure, they seek to provide (and, in the opinion of the Expert they do provide) a helpful and non-technical explanation of how a complaint should be prepared. The guidance notes contain certain key observations and recommendations, for example:-
"In our experience the two main reasons why complainants fail in the DRS is...They have not read the DRS Policy or the DRS Procedure or this help...They do not provide any evidence to back up what they say..." and in a later paragraph:-
"...State the reasons why you consider the registration of the dispute [sic] domain names to be Abusive, in particular you should view paragraph 3 of the DRS Policy..."
It would appear that in the present case the Complainant did not view Nominet's guidance notes before preparing the complaint. Nor does it appear to be aware of the Equazen case which coincidentally features exactly the same Respondent and which suffered from similar deficiencies in the complaint to that of the present case. While a consideration of past cases is neither expected nor required of complainants it is deeply unfortunate (for the Complainant) that it did not come across that decision.
This leaves the Expert in a position where there is nothing to go on in the present case when considering the question of Abusive Registration. The Expert could make enquiries, including for example online searches, that might bolster the complaint and provide evidence for the general assertion of the Complainant. The question of whether an expert should take this type of action has been considered in previous cases under the DRS. Experts have been prepared to conduct enquiries or research in certain circumstances. For example, in Chivas Brothers Limited v David William Plenderleith (DRS 292) the expert was prepared to verify the existence of an Assignment of a registered trade mark, 'a check which need take no more than a couple of minutes of the Expert's time.' The expert also stated that the principal determining factor was that the complaint was (in all respects other than the absence of averments relating to the Assignment) a full and properly prepared document.
The present Expert has also considered a similar question in the case of HIT Entertainment Plc v Tom Loosemore (DRS 1544). In that case, the Expert was presented with a submission that the complainant was the proprietor of certain registered trade marks. The complainant was not listed as the proprietor on any of the corresponding certificates. The Expert considered whether or not the complaint was a properly prepared document and found that it was not. Accordingly, the Expert did not conduct any further enquiries or seek further information from the complainant regarding its apparent rights in the trade marks cited.
Likewise, the expert in the case of Equazen found that the complainant had not set out a coherent case of whether the domain name was an Abusive Registration in the hands of the respondent. As in the present case, the complainant had merely made a blanket assertion that the registration of the domain name was abusive. The expert in that case considered that his role was not to write the Complainant's case but to reach a decision on the basis of the information and submissions provided by the parties. He considered it inappropriate to undertake further work on the Complainant's behalf.
The present case, in the Expert's opinion, unfortunately falls into the second category of cases. All that the Expert has been provided with by way of submissions on the question of Abusive Registration is what the expert in Equazen termed the 'blanket assertion'. The Expert agrees with the approach adopted by the expert in that case. In these circumstances the Expert considers that the complaint is not a properly prepared document and that it would be inappropriate to conduct investigations on the Complainant's behalf or otherwise to assist the Complainant in making out its case.
The Complainant was incorporated in the United Kingdom on 31 March 1948 and has been named Telegraph Group Limited since 1 August 1996.
A company currently named Telegraph Books Limited was incorporated on 20 March 1986; it changed its name on 2 May 1986 from Modegate Limited. The relative Companies House information sheet states that the nature of the company's business is a non-trading company and its last accounts, made up to 31 December 2004, showed it to be dormant.
The Respondent registered the Domain Name on 11 December 2004.
The screenshot of the web page associated with the Domain Name which has been provided by Nominet shows that the site is being used as a portal for sponsored links.
Complainant
The complaint is extremely brief and may be set out verbatim:-
"I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.
"I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.
"The Complainant has rights in the Domain name because: It is registered at Companies House under the name Telegraph Books Limited and has been since 20/03/1986. It trades under the name Telegraph Books Limited and has done so since 20/03/1986. It has advertised using the name Telegraph Books since 20/03/1986 and spent about £10,000 on such advertisements, examples of which are exhibited at Exhibit (1). It provides a Book Shop service under the name Telegraph Books as evidenced by Exhibit (2)."
Respondent
The Respondent has not filed a response.
General
In terms of paragraph 2(b) of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, namely that:
(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
Paragraph 1 of the Policy provides that Rights "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". Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the name or term in which the Complainant has these is wholly descriptive of its business; (3) if not wholly descriptive, whether the name or mark is identical or similar to the Domain Name.
Complainant's Rights in the mark 'Telegraph Books'
There is some confusion in the Complainant's submissions here. These refer to Telegraph Books Limited, a different company from the Complainant. Furthermore, it is evident from the copy printout provided by the Complainant of a search performed on the web site of Companies House that Telegraph Books Limited has a non-trading SIC code and that its last accounts indicated that it was dormant. It is not clear how this company is connected to the Complainant, Telegraph Group Limited; it may be a wholly-owned subsidiary or similar but it is not for the Expert to speculate upon this. It is also not entirely clear whether the Complainant is attempting to claim Rights on behalf of itself or Telegraph Books Limited.
Given that the Complainant is Telegraph Group Limited, the Expert will consider its submissions from this perspective. The first submission relates to the registration of Telegraph Books Limited at Companies House. In the Expert's view the mere registration of a company name (whether it be the Complainant's name or not) does not confer any rights in that name - some further evidence of use (and of consequent goodwill in the name) is required.
The Complainant states that it trades as 'Telegraph Books Limited'. Clearly the Complainant itself cannot trade under that name although it may trade under the name 'Telegraph Books'. The examples of advertisements provided by the Complainant appear to demonstrate that this is the case. Each advertisement bears the prominent legend 'telegraph books' at the top, and the address for correspondence is given as 'Telegraph Books, Orders Dept, PO Box 582, Norwich NR7 0GB'. One of the advertisements shows that it has been placed in the national press (The Daily Telegraph) and indeed it appears from the logo and style of the Complainant's web site, of which a screenshot is provided, that the book shop itself is connected in some way with The Daily Telegraph although no averment has been made to this effect.
In the Expert's opinion, these advertisements do support the Complainant's position that it trades as 'Telegraph Books' and that it advertises and operates a book shop service using this name. Although the examples of advertisements are all recent there seems no reason to doubt the Complainant's averment that it has been using this name since 1986.
The requirement to demonstrate Rights under the Policy is not a particularly high threshold test. Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark. No registered trade marks have been cited by the Complainant. However, the evidence and submissions do support the proposition that the Complainant has built up a certain amount of goodwill in the unregistered mark and trading name 'Telegraph Books'. Some further evidence of the extent of the Complainant's activities, its turnover, its customer base or similar would have assisted the Expert here. However, on the basis of what has been provided, the Expert is prepared to find that the Complainant has proved that it has Rights on the narrowest of margins.
The second question for the Expert is whether the name or mark 'Telegraph Books' is wholly descriptive of the Complainant's business. While this name does contain a descriptive element (the word 'Books') and the Complainant has not provided any evidence of that word having acquired a distinctive character through use, in the opinion of the Expert this does not render the complete trading style 'Telegraph Books' wholly descriptive of the Complainant's business.
The only remaining question therefore is whether the name or mark is identical or similar to the Domain Name. The first (.uk) and second (.co) levels of the Domain Name can be disregarded as being wholly generic. The Expert is then left with a comparison between the mark 'Telegraph Books' and the third level part of the Domain Name 'telegraphbooks'. Internet domain names are not case sensitive, albeit that they are conventionally represented in lower case letters, nor is the use of 'white space' permitted. Accordingly, on this comparison, the Expert is satisfied on the balance of probabilities that the Complainant has Rights in respect of a name or 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 unfairly detrimental to the Complainant's Rights."
A non-exhaustive list of factors which may constitute evidence of Abusive Registration is set out in paragraph 3 of the Policy. Whether or not a complainant wishes to frame its submissions along the lines of the non-exhaustive factors or indeed to rely on other factors, the Complainant must explain as a minimum why it considers that the Domain Name in the hands of the Respondent is an Abusive Registration.
Besides the general assertion of Abusive Registration to be found in the complaint the only material which has been provided to the Expert relating to the Domain Name itself is the screenshot of the associated web site which was provided by Nominet. This clearly shows that the site is a portal for sponsored links, having presumably been placed by the Respondent with the well-known provider of such portals that is named at the bottom of the screenshot. This would appear to be an identical use to that made by the Respondent of the domain name in the Equazen case. As the expert pointed out in that case, not every use of a site as a portal for sponsored links constitutes an Abusive Registration. The Complainant must explain its assertion of Abusive Registration; the Expert cannot make the case for the Complainant.
For completeness, the Expert wishes to add that he has also considered the case of Lintran v Robert Morrison (DRS 03021). This was a case with similar facts, again involving the same Respondent as in the present case and Equazen. However, in Lintran, the expert found that the domain name did constitute an Abusive Registration in the hands of the respondent. The key difference between Lintran and Equazen, in the Expert's view, is that in the former case the complainant did make submissions (including one specifically relating to confusion) stating why it considered that the domain name was an Abusive Registration; in the latter case, and in the present case, no such submissions were made.
The Expert finds, on balance of probabilities, that the Complainant has proved that it has Rights in a name or mark identical to the Domain Name but that it has failed to prove that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the complaint be refused.
Andrew D S Lothian
1 March, 2006
