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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Audiotech Systems Ltd v The Videotech Group [2007] DRS 4739 (27 July 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4739.html Cite as: [2007] DRS 4739

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Nominet UK Dispute Resolution Service

DRS 04739

Audiotech Systems Ltd.

–v–

The Videotech Group

Decision of Independent Expert

1. Parties:

Complainant:	Audiotech Systems Ltd.
Country:	GB
Respondent:	The Videotech Group
Country:	GB

2. Domain Name: 121wholesales.co.uk ("the Domain Name").

3. Procedural Background:

The Complaint was lodged with Nominet on 29 May 2007. Nominet validated the Complaint and notified the Respondent of the Complaint on the same date and informed the Respondent that he had 15 days within which to lodge a Response. Following an extended response deadline at the request of the Respondent, the Respondent failed to respond. Mediation not being possible in those circumstances, Nominet so informed the Complainant. The Complainant originally appeared not to have paid the requisite fee for an Expert Decision in time; upon investigation it became clear the cheque payment had been lost in transit during a UK national postal strike. In these circumstances the Complainant was offered an extension of five working days and on 18 June 2007 the Complainant lodged the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy") and paragraphs 5(d) and 8 of the Nominet UK Dispute Resolution Service Procedure ("the Procedure").

Andrew Murray, the undersigned, ("the Expert") has 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 25 July 2007, Nominet invited the undersigned, the Expert, to provide a decision on this case.

4. Outstanding Formal/Procedural Issues (if any):

4.1     The Complainant was awarded a five working day extension to the deadline for the receipt of fees for the appointment of an Expert as set out in paragraph 8(a) of the Procedure. The Expert is satisfied that due to the national postal strike at this time Nominet were clearly within their general powers set out in paragraph 12(a) of the Procedure and were permitted to grant this extension.

4.2     Legal Counsel for the Respondent wrote to Nominet on 10 July 2007 indicating that they '[had] actually been instructed on behalf of our client company to institute proceedings against [the Complainant]'. Should proceedings be instigated then by paragraph 20(a) of the Procedure the Dispute Resolution Service would be suspended pending the outcome of these proceedings. The Expert is satisfied that at the date of this decision no proceedings have been launched or if so have not been communicated to Nominet as required by paragraph 20(b). The Expert therefore finds that paragraph 20(a) is at this time not in effect and will proceed to a decision.

4.3 The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

The Expert has seen copy communications from Nominet to the Respondent and has no reason to doubt that the Respondent has been properly notified of the Complaint in accordance with paragraphs 2 and 4(a) of the Procedure. In fact as outlined in 4.2 above, Legal Counsel for the Respondent has been in contact with Nominet. 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.

The lack of a Response does not entitle the Complainant to a default judgement. The Complainant must still prove their case to the required degree. The Expert will evaluate the Complainant's evidence on its own merits and will draw reasonable inferences from it in accordance with paragraph 12(b) of the Procedure. 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."

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 this case it seems to the Expert that the probable facts speak for themselves and that it is not necessary to draw any special inferences. The Expert finds that the probable facts asserted by the Complainant and set out in the following section are indeed facts.

5. The Facts

5.1     Audiotech Systems Ltd, is a private limited company (Co. Reg. No. 03530579), formed in April 1998 and registered and trading in Whitechapel Road, London.

5.2     The Complainant appears to operate an import and wholesale business through several corporate identities.

5.3     The Complainant owns and operates an online trading business from the domain name '121wholesale.co.uk'. The Nominet WHOIS registry confirms that this domain name was first registered on 26 October 2005. The Complainant indicates they began trading from that address soon thereafter.

5.4     The Respondent appears to operate an import and wholesale business in direct competition to Complainant and with the focus of their activities being their 123 Wholesale.co.uk e-commerce page.

5.5     The Domain Name was registered on 11 October 2006 by the Respondent. The Domain Name currently resolves to a page which contains links to audiotechsystems.com (also owned by the Respondent) and 123wholesale.co.uk (the Respondent's main commercial site). The site content also reads 'Forget about 121…visit our new store…now open 123 Wholesale.co.uk'.

6. The Parties' Contentions

Complainant:

The Complainant contends that:

The Complainant has rights in the Domain Name because:

6.1     The Complainant trades under the domain name www.121wholesale.co.uk and has done since October 2005.

6.2     The Complainant has a customer base which uses and is familiar with this address, and therefore associates this address with the Complainant.

6.3     But for the addition of a single letter 's', the Domain Name is identical to Complainant's '121wholesale.co.uk' domain name.

6.4     The Respondent registered the Domain Name on 11 October 2006 long after Complainant acquired rights to their domain name.

6.5 The Respondent has no apparent rights to the Domain Name.

The Domain Name in the hands of the Respondent is abusive as:

6.6     The Respondent has registered the Domain Name with the intention of causing damage to the Claimant's business. It is contended that the Complainant registered the Domain Name (and also the equivalent .com domain) so that should any of the Complainant's customers by mistake type the extra 's' at the end of their domain name (which happens every now and then), s/he will be taken to the Respondent's website.

6.7     The Respondent has used the Domain Name to host a webpage containing a variety of links to their 123wholesale.co.uk site in a manner that misleadingly suggests a connection with the Complainant and their 121wholesale.co.uk site. For example, they said things like 'Forget about 121...visit our new store ...now open ...here.' Many of the Complainant's customers have contacted them to say that they thought they had moved to a new store. An examination of the example given, explains the reason of this confusion.

6.8     The Respondent gives their name as 'Admin Webmaster' in their registration details. We (the Claimant) can guarantee you that there is nobody with first name as 'Admin' and last name as 'Webmaster' at that address or in that company (the registration type is a UK individual as we found in the WHOIS search. This is a clear violation of Nominet, UK's name registration law.

Respondent:

6.9 The Respondent has not responded.

7. Discussion and Findings

7.1 General

According to paragraph 2 of the Policy, in order to succeed in this complaint, the Complainant has to prove to the Expert that, on the balance of probabilities 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.

These matters must be proven by the Complainant, notwithstanding the failure by the Respondent to respond.  The effect of the Respondent's default is rather that, under paragraph 15(c) of the Procedure (there being no exceptional circumstances in this case) the Expert is required to draw such inferences from the Respondent's non-compliance as he considers appropriate.

7.2     Complainant's Rights

2.1     Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. This is usually demonstrated by reference to a trade mark registration or evidence of active trading using the name or mark in question.

2.2     In this case, the Complainant relies upon their domain name registration in the name '121wholesale.co.uk' and the fact that they have traded at that name since late 2005.

2.3     The requirement of 'rights' in a name may be satisfied by the development of goodwill in a name or part of a name [Delamar Academy v. Go-Catch Media Limited [2004] DRS 1543; University of Strathclyde v Hastie & Anor [2005] DRS 02119] or by the registration of a preceding domain name [GE Capital Corporation (Holdings) v. Perry [2002] DRS 186.

2.4     Therefore, on the basis of the evidence presented the Expert is satisfied that the Complainant has rights in respect of the mark '121wholesale.co.uk' which is sufficiently similar to the Domain Name in question. Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of a name or mark, which is identical or similar to the Domain Name.

7.3 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."

Under paragraph 3(a) of the Policy is listed a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The Complainant have indicated that they believe that in particular they may make out a claim under paragraph 3(a)(i)(C):

The Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.

And further under paragraph 3(a)(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.

Additionally the Complaint seems to be suggesting a claim under paragraph 3(iv):

It is independently verified to us that the Respondent has given false contact details to us.

Paragraph 3(a)(i)(C)

3.1.1     In making their claim under paragraph 3(a)(i)(C), the Complainant asserts: 'The Respondent has registered the Domain Name with the intention of causing damage to the Claimant's business. It is contended that the Complainant registered the Domain Name (and also the equivalent .com domain) so that should any of the Complainant's customers by mistake type the extra 's' at the end of their domain name (which happens every now and then), s/he will be taken to the Respondent's website.'

3.1.2     Further, the Complainant asserts: 'The Respondent has used the Domain Name to host a webpage containing a variety of links to their 123wholesale.co.uk site in a manner that misleadingly suggests a connection with the Complainant and their 121wholesale.co.uk site. For example, they said things like 'Forget about 121...visit our new store ...now open ...here.' Many of the Complainant's customers have contacted them to say that they thought they had moved to a new store. An examination of the example given, explains the reason of this confusion.'

3.1.3     Although the second assertion (at 7.3.1.2) is given as evidence of a claim under paragraph 3(a)(ii) I believe it provides strong supporting evidence for this claim.

3.1.4     The evidence appears to be overwhelming that the Respondent is using the Domain Name in an attempt to either (a) confuse customers of the Complainant into believing the Complainant has migrated their business the 123 Wholesale.co.uk site operated by the Respondent or (b) to simply poach customers to their site whether or not such confusion occurs. Whichever is the case both clearly are designed to unfairly disrupt the business of the Complainant.

3.1.5     I therefore find that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant, under paragraph 3(a)(i)(C) of the Policy.

7.3.4 Finding

Accordingly, the Expert finds that the Domain Name is an Abusive Registration as defined by paragraph 1 of the Policy on the basis that it is being used in a manner which takes unfair advantage of the Complainant's rights.

8. Decision:

In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is similar 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 be transferred to the Complainant.

Andrew Murray Date: 27 July 2007