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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> By Design (UK) Ltd (t/a "mydeco") v Pepin [2007] DRS 4843 (13 September 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4843.html Cite as: [2007] DRS 4843 |
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Nominet UK Dispute Resolution Service
DRS 4843
By Design (UK) Limited t/a "mydeco" v. John Pepin
Decision of Independent Expert
Complainant: By Design (UK) Limited t/a "mydeco"
Country: GB
Respondent: John Pepin
Country: GB
The domain name in dispute is mydeco.co.uk ("the Domain Name").
3.1 The Complaint was received in full (including annexes) by Nominet on 4 July 2007. Nominet validated the Complaint and sent a copy to the Respondent on 5 July 2007, informing the Respondent that he had until 27 July 2007 to lodge a Response.
3.2 The date for filing the Response was extended by Nominet following receipt of a Response that did not comply with the word count limitation set out in paragraph 5(c)(i) of the Nominet UK Dispute Resolution Service ("DRS") Procedure ("the Procedure"). The revised Response was received from the Respondent on 31 July 2007 and was forwarded to the Complainant on the same day. The Complainant submitted a Reply on 2 August 2007, which was forwarded to the Respondent the same day.
3.3 The dispute proceeded to Informal Mediation, which did not result in a settlement. On 31 August 2007 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the DRS Policy ("the Policy").
3.4 Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet appointed me as Expert on 7 September 2007.
4.1 The file throws up one procedural matter. Following notification by Nominet that the initial Response submitted by the Respondent exceeded the limit of 2,000 words imposed by paragraph 5(c)(i) of the Procedure (being 4,432 words long), the Respondent re-submitted a shorter version, but asked for the original version to be included as an "exhibit". His justification for making this request was that paragraph 5(c)(i) only imposes the word count on the Response itself, not including annexes, and he was concerned that, in shortening the document, he might have hurriedly deleted a word or sentence that was important. In response to this request, Nominet added the original Response ("the Long-form Response") as an additional annex to the Response, which was then included in the papers sent to the Complainant.
4.2 The Respondent has complied with the letter of the rule concerning the length of the Response, but not with its spirit. The rule is there to ensure that DRS proceedings are manageable and user-friendly, and it should not be evaded by loading the annexes with material that could be summarised in the Response itself. The purpose of annexes is to enable parties to present evidence to the other side and the expert in support of the contentions contained in the main submission document (Complaint, Response or Reply). Usually these will be pre-existing documents such as company and trade mark registration certificates or printouts from websites. Sometimes they will contain tabulated material or summaries that are difficult to present in the main document. They are not intended to contain the party's expanded version of his primary submissions.
4.3 In this case, the Respondent (who is unrepresented) does not appear to have flouted the word count rule deliberately, and his inclusion of the Long-form Response as an annex is effectively an insurance policy, in case an important point fell through the cracks when he shortened his original version. The overall documentation annexed to the Response is not excessive. Having read the Long-form Response, I have concluded that there is one matter of some importance to the Respondent's case that he omitted when producing the shorter version. In my view, it would be unfair to exclude this point simply because it was in an irregular document. In the absence of any objection from the Complainant to the inclusion of the Long-form Response as an annex, I therefore permit the inclusion of the annex and will refer to it in my decision below.
5.1 The Complainant is a company that was incorporated under the name, By Design (UK) Limited, on 5 December 2006. The Complainant's executive chairman, Brent Hoberman, and one of its other directors, Martha Lane Fox, are well-known to the general British public for their involvement in founding and floating the on-line travel agency and 'e-tailer', Lastminute.com. Therefore, the announcement in late May 2007 that the Complainant was to launch a new on-line business called "Mydeco" received some immediate interest from the press and public.
5.2 The Mydeco business is not yet up and running as a service to customers, but the Complainant has been fundraising and approaching retailers and suppliers since at least May 2007. The Complainant registered the domain name mydeco.com on 2 June 2006, and now uses this to direct internet users to its website at www.mydeco.com. To date, this website consists of a single page, featuring the "Mydeco" name and inviting visitors to submit their e-mail addresses so that they can be informed by the Complainant about the business in the future.
5.3 The Complainant does not rely on any registered trade marks for the name "Mydeco".
5.4 The Respondent is an individual. His activities include dealings in domain names. I do not make any findings as to the nature and extent of the Respondent's business in domain names, since the evidence about this is rather scant. While my job might have been easier if I had more information about the Respondent's business, it is not vital for me to do so in order to reach my decision.
5.5 The Domain Name was previously registered by a German company, Meindeko. This company let the Domain Name lapse on 29 June 2007. The Respondent had identified the possibility that this would happen and had a system in place, ready to re-register the Domain Name. The Complainant had hoped to do the same, but was beaten to it by the Respondent who successfully registered the Domain Name on 30 June 2007.
5.6 The Domain Name resolves to a webpage at www.mydeco.co.uk, which currently simply states: "Welcome to mydeco.co.uk. The site mydeco.co.uk is under construction". It appears from Nominet's file that, at the time the Complaint was made, the Domain Name resolved to a webpage at www.mydeco.co.uk that contained a number of "Sponsored Listings", providing links to various third party websites connected with financial services.
5.7 On 1 July 2007, the Respondent sent an e-mail to Paul Chudleigh of the Complainant, asking the following question: "Please advise if you would like to sell mydeco.com?". The Complainant did not reply. On 2 July 2007 the Respondent telephoned David Hickson of the Complainant and again asked if the Complainant would sell the domain name mydeco.com to the Respondent. The Complainant started this Complaint two days later.
The Complaint
6.1 The Complainant states that it has rights in the Domain Name because:
(a) it trades under the name "mydeco" and has done so since May 2007, "mydeco" being the new on-line venture of Brent Hoberman, the ex-CEO and co-founder of lastminute.com;
(b) it is the owner of the domain name "mydeco.com"; and
(c) Mydeco received significant national coverage in the national press during May 2007 and also received a good level of attention in the 'blogosphere'. Exhibits have been produced, showing an article from the Sunday Times dated 27 May 2007 and extracts from a social networking blog at mashable.com and the on-line marketing website at www.e-consultancy.com from around the same time.
6.2 The Complainant states the following in relation to the circumstances surrounding the Respondent's registration of the Domain Name:
(a) The Domain Name was, until 29 June 2007, owned by Meindeko. The Domain Name was not renewed by Meindeko and came up for renewal on 30 June 2007. The Complainant had the Domain Name on "snapback", i.e. it was ready to buy the Domain Name when was it was released by Meindeko.
(b) On or around 22 June 2007, David Hickson of the Complainant received a phone call from a man who called himself "Kevin Reed". Mr Reed offered to sell the Domain Name to the Complainant, explaining that he would "shortly be its Respondent (sic.)". The Complainant refused this offer.
(c) On 1 July 2007 Paul Chudleigh of the Complainant received an e-mail from the Respondent asking if Mr Chudleigh would be prepared to sell "mydeco.com" to the Respondent. This e-mail went unanswered.
(d) On 2 July 2007, David Hickson of the Complainant received a phone call from the Respondent, whose voice sounded very similar if not the same as the man calling himself Kevin Reed. The Respondent informed Mr Hickson that he (the Respondent) was the owner of the Domain Name.
(e) In DRS 04214 (The Financial Times v. Mr Kevin Reed, ftalphaville.co.uk) the decision of the Independent Expert concluded that Mr John Pepin (the Respondent) and Mr Kevin Reed are "in some way connected", Mr Reed having the same residential address (6 Kingsgate, 21 – 23 Kingsway, Surrey) as the Respondent.
6.3 The Complainant states that the Domain Name in the hands of the Respondent is abusive because:
(a) it was primarily registered for the purposes of selling, renting or otherwise transferring it to the Complainant or its competitor at a price greater than its costs; and
(b) the Domain Name is one of a series of registrations that the Respondent has made which because of their number, type and pattern prove that the Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well known names in which the Respondent has no apparent interest.
6.4 In support of contention (a) above, the Complainant cites the fact that the Respondent (or his agent, Mr Reed) called the Complainant a week prior to the release of the Domain Name, offering to sell it, and "wasted no time informing the Complainant of his ownership of the Domain Name once he became the Respondent". (I believe that this last point should in fact refer to the Respondent having become "the registrant" - i.e. of the Domain Name.)
6.5 In support of contention (b), the Complainant asserts that the Respondent has a history of losing domain name arbitration proceedings: together with DRS 04214 referred to above, the Complainant cites additional examples of WIPO Case No. D2000-0402, Steven Rattner v. BuyThisDomainName (John Pepin) and, "as concluded by the Independent Expert in DRS 04214", DRS 02582 and WIPO Case Number D2005-1255. The Complainant submits that the Respondent appears to use a series of pseudonyms or agents (John Pepin, S N Pepin, Kevin Reed) as a veiled attempt to avoid his registrations being automatically abusive.
6.6 Finally, the Complainant adds that in an on-line article in "The Register" in 2000 a John Pepin of "Surrey" confessed to purchasing 5,000 web addresses for £40,000, including personal domain names such as tonyblaironline.com, ronaldbiggs.com and davidshaylor.com. The Complainant submits that this John Pepin, who, in the article, was denying he was a cybersquatter, is the same John Pepin as the Respondent.
6.7 The Complainant asks for the Domain Name to be transferred to the Complainant.
The Response
6.8 The Respondent starts out by stating that it is perverse of the Complainant to have issued the Complaint, when it is the Complainant and not the Respondent who is potentially violating the rights of the owner of Community trade mark ("CTM") no. 3523396, consisting of the words "my deco" in a logo, registered for what the Respondent says is the same area of business as that of the Complainant. He later asserts that the Complainant's proposed use of "mydeco" will amount to passing off in relation to the CTM owner.
6.9 The Respondent claims that he is in confidential discussions with the trade mark owner in relation to a proposed business transaction, and that he registered the Domain Name in connection with such discussions.
6.10 He adds that the Complainant was far from the first to register a "mydeco" domain name, and gives the following list of registrations and registrants, including three owned by the CTM owner:
(a) mydeco.net registered on 22nd March 2001 by Lee Sang Ki
(b) mydeco.info registered on 3rd November 2003 by Karl F. Buchheister(c) mydeco.eu registered on 7th April 2006 by Karl F. Buchheister(d) mydeco.de registered in 2002 by Karl F. Buchheister (meindeco)(e) mydeco.fr registered on 25th October 2001 by Florian Huber(f) mydeco.com registered on 2nd June 2006 by "By Design UK Ltd"
6.11 The Respondent also points out that the Domain Name itself had previously been registered by a company that has a UK trade mark for "My Deco", whereas the Complainant does not have any trade mark and has not yet used the name "mydeco" for trading. The strongest claim the Complainant can make is that it "had the idea of using the name".
6.12 In relation to the Complainant's allegation about receiving a call from "Kevin Reed" on 22 June 2007, the Respondent points out that at that date the Domain Name was owned by Meindeco of Germany, which would have been the only entity able to offer it for sale. The Respondent then states: "some while ago Mr Reed used the Respondent's address as his contact address but after some disagreement that is definitely no longer the case and I do not and never have worked with Mr Reed". He then states his belief that the Complainant has used the name "Kevin Reed" simply to help its case, rather than because anyone actually called the Complainant in June.
6.13 The Respondent points out that his call to the Complainant on 2 July 2007 was to offer to purchase mydeco.com from the Complainant and not to offer to sell the Domain Name. (There has been a separate exchange of letters about this and the Complainant has confirmed that the Respondent did not offer to sell the Domain Name during the call. However, the Complainant draws the inference that the real reason for the Respondent's call was not to buy mydeco.com but to alert the Complainant to the fact that he now owned the Domain Name, in an attempt to solicit an offer from the Complainant.)
6.14 In relation to the Complainant's reference to DRS 04214 (ftalphaville.co.uk), the Respondent says that he never owned the domain name concerned and that Mr Reed, the respondent in that case, is not and never has been the Respondent's agent. Nor is Mr Reed a pseudonym for the Respondent: Mr Reed does exist. The Respondent repeats that Mr Reed did use the Respondent's address "some long while ago" but no longer does so. The Respondent adds that he is not S N Pepin either (another name that comes up in the ftalphaville case), nor is S N Pepin his agent. He is not responsible for either Mr Reed or S N Pepin. Finally, he says, "... even if Mr Reed had called the complainant it had absolutely nothing to do with myself". The Respondent confirms that he is John Pepin.
6.15 Regarding the Complainant's assertion that the Respondent has registered a series of domain names that are trade marks and has a history of domain name arbitration proceedings, the Respondent says that this is "utter hogwash". He has simply lost one WIPO procedure in 2000 in relation to what he terms "a generic name", steven rattner.
6.16 The Respondent points out that the Complainant had done no more than putting up a holding page on its website when it brought the Complaint. He summarises the position by saying that the Complainant has no more rights than the Respondent in the name "mydeco" and that it has far fewer rights than the CTM owner.
6.17 As I stated in section 4 above, the Respondent raises one additional point of importance in the Long-form Response annexed to the Response, which is as follows:
"The Respondent noticed back in February 2007 that the domain mydeco.co.uk was nearing the end of its registration period and thus made a note to check the domain again. When the Respondent checked the domain again he found that the domain was showing as requiring renewal. At this time the Respondent (sic.) the process of regular checking of the domain was started until such time as a request was sent to Nominet and the domain registered for myself the Respondent. The previous owner had either intentionally or unintentionally let it expire. I have noted that the Complainant was also trying to "catch" this domain as it expired, which really brings home the point that this Complainant does not have any real claim on the domain over and above my own claim."
6.18 In connection with this point, the Respondent asserts in the Long-form Response that there is a whole industry built on tracking domain names that are approaching expiration, referred to by the Complainant as "snapback". He suggests that, if anyone really did contact the Complainant on 22 June 2007, they may have been offering a "snapback" service in relation to the Domain Name, having seen the Complainant's ownership of mydeco.com from a Whois check.
The Reply
6.19 The Complainant's submissions in reply can be summarised as follows:
(a) There is no ongoing, or threat of any, trade mark infringement claim between the Complainant and any third party in relation to the "my deco" (+ logo) CTM or any other trade mark.
(b) The Respondent's challenge to the Complainant's rights in the Domain Name is predicated on a hopeless misunderstanding of both the DRS rules and UK and European trade mark law.
(c) The Respondent may or may not be negotiating with the CTM owner, but this is transparently "after the fact". The Respondent has failed to give any evidence of any alleged negotiation or legitimate business use (before the fact) for the Domain Name.
(d) It is clear that the Respondent's plan was to resell the Domain Name to the Complainant (or other legitimate rights owners) at a premium.
(e) The 'allegations' about the Respondent's connection with John Reed were not made by the Complainant but by an independent arbitrator in a previous DRS decision.
(f) It is instructive that the Respondent does not deny that he is John Pepin, the subject of the Register article titled "Cybersquatter? Not me, says owner of Greattrainrobbery".
6.20 To the extent that I have not expressly set out any point made by either party, I have nevertheless read all the material submitted in and with the Complaint, Response and Reply and take it all into account in reaching my decision.
General
7.1 Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
i. it 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 (as defined in paragraph 1 of the Policy).
Complainant's Rights
7.2 Under paragraph 1 of the Policy:
"Rights includes, but is not limited to, rights enforceable under English law."
7.3 Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off in the United Kingdom and similar rights in jurisdictions elsewhere.
7.4 The Complainant has no relevant registered trade mark rights, but contends that it has rights that have arisen through trading under the name "mydeco". The evidence of the Complainant's trading activities is sparse, comprising: the registration of the domain name mydeco.com; its use to point to a webpage which does little more than give a "coming soon" message to any visitors; and some press and blog commentary from May 2007 about the Complainant's plans for its website to become, in the words of one comment, a "one-stop shop for people who want to redecorate their homes, selling furniture and other items, as well as giving help and advice". But it is clear that this planned business had not yet got off the ground at the date of the Complaint.
7.5 When one digs a little deeper, it is possible to list some further activities that had been conducted by the Complainant before making the Complaint, and indeed before the Respondent registered the Domain Name: it had raised seed capital for the business - stated in one article to be £5 million; it had approached retailers and suppliers with a view to doing business with them; and through its website it had invited interest from both potential customers and people who might be interested in working for the Complainant. Although all of these activities are preparatory to the main proposed trading activity of the Complainant, they will have generated - together with the press exposure - a demand for the Complainant's services when they are fully launched.
7.6 The question of whether actual trading is necessary to build up the goodwill necessary to found a passing off action is a complex one. A DRS decision is not the place for a detailed treatise on the issue. However, for those who are interested, a good source of relevant authority is the respected textbook, "The Law of Passing-Off: Unfair Competition by Misrepresentation" by Christopher Wadlow, 3rd edition, published by Thomson Sweet & Maxwell (paragraphs 3-55 to 3-65). The balance of authority supports the contention that the Complainant's various promotional and preparatory activities were sufficient to have built up goodwill which could be relied on to bring a passing off action against third party traders if the facts of the case were such as to demonstrate that the third parties were making a misrepresentation of a connection with the Complainant and that damage was likely to result.
7.7 While it may be the case, as contended by the Respondent, that the owner of the "my deco" (plus logo) CTM himself has passing off rights against the Complainant or any third party, there is no evidence as to his trading activities, so I am not in a position to draw any conclusions about the CTM owner's unregistered rights. Furthermore, the fact that one entity has a potential claim against another does not preclude the latter from potentially having a claim against a different third party.
7.8 In conclusion, I find that the Complainant has done just enough to establish that it has Rights in the name "mydeco" and that, for the purposes of paragraph 2(a)(i) of the Policy, ignoring the .co.uk suffix, this name is identical to the Domain Name.
Abusive Registration
7.9 Paragraph 1 of the Policy defines an "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."
7.10 I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.
7.11 Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are brought into play by the Complainant are as follows:
"3(a)(i)(A) Circumstances indicating 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 out-of-pocket costs directly associated with acquiring or using the Domain Name; ..."
and
"3(a)(iii) The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern; ..."
7.12 Although the Complainant does not expressly refer to it, the following provision is also relevant:
"3(c) There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4(c))."
7.13 Paragraph 4 of the Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. The Respondent has not expressly referred to any of these, but the following fall for consideration:
"4(a)(i)(A) Before being aware of the Complainant's cause for 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; ...
4(a)(iv) In relation to paragraphs 3(a)(iii) and/or (c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent."
and
"4(c) If paragraph 3(c) applies, to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration; ..."
7.14 In order to be able to deal with some of the paragraph 3 and 4 provisions, I must first tackle the issue concerning the Respondent's alleged connections with Kevin Reed, the Respondent in DRS 04214 (ftalphaville.co.uk) and WIPO Case no. D2005-1255 (tamifluvaccine.com), and SN Pepin, the Respondent in DRS no. 02582 (caesars-wembley.co.uk and caesarswembley.co.uk).
7.15 The Complainant relies on the following conclusion of the Independent Expert in the ftalphaville.co.uk decision dated 1 February 2007 (at paragraph 7.12, last sentence): "It is clear that the Respondent is in some way connected to S N Pepin and John Pepin who share the same address as the Respondent". Indeed, the Complainant goes further, speculating that the Respondent may in fact be Mr Reed, given the similarity between the Respondent's voice on 2 July and that of Mr Reed when he had called on 22 June.
7.16 There is no doubt that the Respondent and Mr Reed have in the past shared an address (a fact that the Respondent admits), but the Respondent asserts that this is no longer the case and he is adamant that he had nothing to do with any phone call on 22 June 2007 and that Mr Reed is neither his alter ego, pseudonym or agent, and that he is not responsible for Mr Reed's actions. It is rather a coincidence that both Mr Reed and the Respondent have had some involvement with the ftalphaville.co.uk domain name and the present Domain Name, but it is perhaps not entirely surprising given that both men appear to undertake the common activity of registering and dealing in domain names as at least a hobby, if not a business, and they know each other.
7.17 In the face of the Respondent's denials and in the absence of any evidence other than the historic common address and the fact that both men appear to have been interested in two domain names, I am unable to conclude either that the Respondent had any involvement in the 22 June phone call in this case or that the DRS and WIPO decisions referred to above involving Kevin Reed as respondent should be counted against the Respondent. On the other hand, in relation to the Respondent's suggestion that the Complainant has invented the 22 June phone call and simply used Mr Reed's name in order to assist in a finding of abuse, there is no evidence to suggest that the Complainant did this. I proceed on the basis that the call did take place.
7.18 In relation to S N Pepin, the common surname and address inevitably lead to the conclusion that there is some connection with the Respondent. However, again, that is not sufficient for me to conclude that a previous DRS decision against S N Pepin may be counted as one against the Respondent, particularly as there is no suggestion of any involvement of the Respondent in the caesarswembley case, nor any involvement of SN Pepin in this case.
7.19 The Complainant may find my refusal to draw adverse inferences against the Respondent, and thus my lack of reliance on the previous adverse DRS and WIPO decisions against Kevin Reed and S N Pepin, rather frustrating in the light of its own beliefs. However, where an inference to be drawn would be tantamount to branding a person as a liar, the evidence relied on must be particularly compelling. While the Complainant only needs to establish its case on the balance of probabilities, it is more difficult to establish the probability that someone is blatantly lying than to establish an uncontested fact, particularly in a paper-based procedure.
7.20 This discussion leads me directly to consider paragraph 3(c) concerning cases involving a respondent found to have made an Abusive Registration in three or more DRS cases in the two previous years. The only previous adverse decision against the Respondent was WIPO Case no. 2000-0402 (stevenrattner.com) which is neither a DRS case nor in the past two years.
7.21 In relation to the contention of a pattern of registrations under paragraph 3(a)(iii), I am aware of the stevenrattner.com registration, and I also accept that it is likely that the Respondent is the John Pepin referred to in the Register article which mentions registration of tonyblaironline.com, ronaldbiggs.com and davidshayler.com. However, these domain names were all registered in or before the year 2000. They are also of a completely different nature from the Domain Name in this case, all relating to the names of individuals. (I note in passing that it was not always as clear as it is today that such domain names would necessarily be objectionable.) Therefore, I disagree that the Domain Name is part of a pattern as contended for by the Complainant.
7.22 Turning back to paragraph 3(a)(i)(A), there is no evidence that the Respondent registered the Domain Name for the purpose of selling it to the Complainant. I have already found for the Respondent in relation to his lack of involvement in the 22 June telephone call which did include an offer to sell the Domain Name (contingent on Mr Reed managing to get hold of it). The Complainant seeks to infer an underlying offer to sell the Domain Name based on the Respondent's offer in his e-mail and telephone call on 1-2 July 2007 to purchase the Complainant's mydeco.com domain name. However, the alternative explanation that the Respondent really did want to get hold of mydeco.com at a time when he was already in discussions with the CTM owner about the Domain Name is at least as plausible.
7.23 The only remaining questions are whether the Respondent registered the Domain Name for the purpose of selling, renting or otherwise transferring it to a competitor of the Complainant and, if so, whether that in itself renders the Domain Name an Abusive Registration.
7.24 If the Respondent's confidential discussions with the CTM owner related to such a proposed transaction, and if the CTM owner could be said to be a competitor of the Complainant, then perhaps paragraph 3(a)(i)(A) could be satisfied. However:
(a) the nature of the transaction under discussion between the Respondent and the CTM owner has not been revealed; and
(b) there is no evidence on the file as to the CTM owner's business and therefore as to whether he really is a competitor of the Complainant.
7.25 Even if the Respondent did register the Domain Name to transfer it to the CTM owner, and the latter were a competitor of the Complainant, it would only make sense for the Complainant to be able to object on this basis if the CTM owner did not himself have rights in the name or mark comprised in the Domain Name. By virtue of his ownership of the CTM, and bearing in mind his registration of the three earlier mydeco domain names, the CTM owner clearly does have rights in the name "mydeco", and these pre-date the Complainant's rights. I therefore conclude that the sale or rental of the Domain Name to him by the Respondent could not support a claim that the Domain Name is an Abusive Registration as against the Complainant. It does not matter for these purposes whether the Respondent approached the CTM owner before or after he was aware of the Complainant's objection.
7.26 Finally, the fact that the Respondent had been planning to try to obtain the Domain Name on being left to lapse by its previous registrant from as early as February 2007, which was three months before any public announcement about the Complainant's proposed use of the "mydeco" name, strongly indicates that the Respondent had no intention of taking unfair advantage of or causing unfair detriment to the Complainant's Rights. If he had such an intention as against the CTM owner (as to which I make no finding), that is a matter for the CTM owner to pursue, but it is not a basis for requiring the transfer of the Domain Name to the Complainant.
7.27 In all the circumstances, the Complainant has failed to persuade me that the Domain Name is an "Abusive Registration" in the hands of the Respondent.
I find that the Complainant has Rights in respect of a name ("mydeco") which is identical to the Domain Name (mydeco.co.uk), but that it has failed to establish that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore direct that that no action should be taken in relation to the Domain Name.
Anna Carboni
13 September 2007
