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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Bott Ltd v Bott Partnership [2007] DRS 4824 (24 July 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4824.html Cite as: [2007] DRS 4824 |
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Complainant: Bott Limited
Country: United Kingdom
Respondent: The Bott Partnership
Country: United Kingdom
The domain name in dispute is: bott.co.uk ("the Domain Name").
The Complaint was submitted to Nominet on 25 June 2007, and hard copies of the Complaint were received in full by Nominet on 26 June 2007. On 26 June 2007, the Complaint was validated by Nominet. The response was due on 19 July 2007. No response was submitted.
On 24 July 2007, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").
On 24 July 2007, Antony Gold, the undersigned, confirmed to Nominet that he knew of no reason why he could not properly accept Nominet's invitation to him to act as an expert in this case and was duly appointed as Expert to determine the dispute.
The Respondent has not submitted a response to Nominet in time (or at all) notwithstanding the provisions of paragraph 5(a) of the Dispute Resolution Service Procedure ("the Procedure") which require the Respondent to submit a Response within 15 days of the commencement of proceedings.
Nominet had informed the Respondent, by way of letter dated 26 June 2007, that a complaint had been filed, and had notified the Respondent of the fifteen day period in which to file a Response.
Paragraph 15(b) of the Procedure provides that "if, in the absence of exceptional circumstances, a party does not comply with any time periods laid down in the Policy or the Procedure, the Expert will proceed to a decision on the complaint".
There do not appear to be any exceptional circumstances involved and the Expert will therefore proceed to a decision on the Complaint, notwithstanding the absence of a Response.
The Complainant is a UK company and has been trading under the name BOTT for over a decade. It is apparently the UK division of a German company, Wilhelm Bott GmbH & KG, that has been trading under the name BOTT for over 40 years. Wilhelm Bott GmbH & KG own the domain name bott.de and a number of county code Top Level Domain names have been registered by subsidiaries of Wilhelm Bott GmbH & KG including for example, bott.de, bott.at, bott.ie, and bott.fr.
The Respondent registered the Domain Name on 16 December 1998. The website located at The Domain Name is no longer active and attempts to access a website at the Domain Name produce an error message stating "server not found".
The Complainant has made several attempts to contact the Respondent by way of e-mails but has received no response.
Complainant
The Complainant's assertions are brief and are not directed at attempting to meet the criteria required in order for its Complaint to succeed (see below). What the Complainant says is as follows:
First, the Complainant has traded under the name BOTT for over ten years. Its parent company, Wilhelm Bott GmgH & KG has been trading under the name BOTT for over 40 years.
Second, when the Complainant wanted to register the Domain Name, it found that it had been registered by another organisation. That company now appears to be out of business as the Respondent's telephone and fax have been disconnected and no response has been received to letters or e-mails.
Third, the Complainant asserts that as the website located at the Domain Name is no longer in operation, potential customers will go to the website thinking it is that of the Complainant and, upon finding it is inoperable, may go to a competitor, causing the Complainant loss of business.
For these reasons, the Complainant requests that the Domain Name be transferred to it.
Respondent
No response has been submitted.
7.1 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 that:
7.1.1 it has rights in respect of a name or mark identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy); and
7.1.2 the Domain Name, in the hands of the Respondent, is an Abusive Registration (paragraph 2(a)(ii) of the Policy).
The Complainant bears the onus of proof and must prove both elements on the balance of probabilities. Even where no Response is submitted, the Complainant must meet this burden and no adverse inferences may be drawn from the failure to submit a Response.
7.2 Complainant's Rights
The domain suffix .co.uk is discounted for the purposes of establishing whether the Complainant has Rights in a name or mark which is identical or similar to the Domain Name.
Rights are defined in paragraph 1 of the Policy as including, but not limited to, rights enforceable under English law.
In order to establish its Rights, the Complainant relies on its company name, Bott Limited , its trading style BOTT (and the documents provided to evidence this trading style) and the fact that it is a division of a German company, Wilhelm Bott GmbH & KG which has been trading under the BOTT name for over 40 years.
Although the Complainant has not submitted evidence of any registered trade marks in the name BOTT, the Expert accepts that the evidence of use of BOTT as a trading name is sufficient to demonstrate the Complainant's Rights in the Domain Name.
7.3 Abusive Registration
In order to demonstrate Abusive Registration, the Complainant must show that the Domain Name 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, that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights (paragraph 1(i) and (ii) of the Policy).
The Policy therefore allows for the Expert to consider whether the Domain Name constitutes an Abusive Registration at any time and not, for example, just at the time of registration/acquisition.
Paragraph 3 sets out a non-exhaustive list of factors which may establish that the Domain Name is an Abusive Registration. These include the Respondent acquiring the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant, or registering the Domain Name as part of a blocking registration, or for the purpose of unfairly disrupting the business of the Complainant. This non-exhaustive list also includes using the Domain Name in a way which has confused people into believing that the Domain Name is associated with the Complainant.
The Complainant does not expressly refer to any of these provisions in its Complaint nor is it apparent whether the Complainant has had any of these non- exhaustive grounds in mind when submitting its Complaint. But there is no evidence at all (whether in the Complaint or in the documents submitted with it) that the registration is Abusive. All the Complainant has said is that the Respondent (called The Bott Partnership) registered - over 8 years ago - a Domain Name which matches the Complainant's trading style. Having regard to the Respondent's apparent trading name, a reasonable starting point would be that the Respondent had a bona fide reason for registration. The fact that the Respondent has subsequently ceased to use the Domain Name (possibly because it may no longer be trading) does not render the registration Abusive. There is nothing to which the Complainant points which is suggestive of any improper motive for registration or use on the part of the Respondent.
Lastly, the Complainant implies that the present inactive status of the Domain Name is Abusive. It argues, in effect, 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 (paragraph 3(a)(ii) of the Policy). The Complainant asserts that customers may visit the website located at the Domain Name and assume that the Complainant has gone out of business and take their custom elsewhere. However, the Complainant has not provided any evidence to support this. Moreover, it is questionable whether an inactive Domain Name is being "used" or is capable of causing confusion of the type referred to in this sub-section.
Conclusion
The Expert finds on the balance of probabilities that the Complainant has Rights in respect of a name or mark identical or similar to the Domain Name but that the Complainant has failed to show, on the balance of probabilities, that the Domain Name, in the hands of the Respondent is an Abusive Registration.
Having found that the registration is not Abusive, the Expert directs that no action be taken in respect of the Respondent's registration of the Domain Name and that the Complaint be dismissed.
Signed Antony Gold
Date
