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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Cardpoint Plc -v- Riga Industries [2002] DRS 538 (20 September 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/538.html Cite as: [2002] DRS 538 |
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Nominet UK Dispute Resolution Service
DRS 00538
Cardpoint Plc -v- Riga Industries
Decision of Independent Expert
| Complainant: | Cardpoint plc |
| Country: | GB |
| Respondent: | Riga Industries |
| Country: | Botswana |
The domain name in dispute is cardpoint.co.uk ("the Domain name")
The Complaint entered Nominet's system on 12th August 2002 and was validated on 15th August 2002. On that date, Nominet wrote to the Respondent allowing 15 working days, ie until 6th September 2002 for a Response. No Response having been received and the Complainant having paid the relevant fee, the Complaint was referred to me on 12th September 2002 for a Decision. On that date I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.
On 10th September 2002 Nominet wrote to (and e-mailed) both parties informing them that, subject to the Complainant's payment of fees, the matter would now proceed for a Decision. The Respondent replied on the same date, stating that it had never received Nominet's letter of 15th August 2002 and had not responded for that reason. After investigation, Nominet informed the Respondent that it was satisfied that the Complaint had been served correctly and that it was unable to allow any extension of time for service of a Response, but that the issue of the Respondent's claimed non-receipt would be referred to the Independent Expert.
Under paragraph 12(a) of the Nominet UK Dispute Resolution Service Procedure ("the Procedure") the Independent Expert has discretion "in exceptional cases" to extend any period of time in proceedings under the Nominet UK Dispute Resolution Service Policy ("the Policy"). In this case, however, for reasons which will become apparent, it is unnecessary for me to consider whether or not that discretion should be exercised.
The Complainant is a public limited company registered in England & Wales. According to Companies House records, it was incorporated on 27th October 2000 under the name Hallco 528 PLC. It changed its name to Cardpoint plc on 13th November 2000.
The status of the Respondent is unclear. Its administrative contact is named as Mr Russ Gittlestone at the address stated above and an e-mail address is provided. Nominet has received responses to communications sent to that e-mail address and there is no suggestion in this case that the Respondent has provided false contact details.
The Domain Name was registered for the Respondent by Register.com on 22nd November 1999.
The Complainant makes the following contentions in support of its Complaint:
With regard to item 2 above, the Complainant provides no further information regarding the earlier Complaint to which it refers. As a matter of policy, Nominet will not provide the Expert with information regarding any earlier Complaint and its file merely records "DRS 79 - closed". In the circumstances, I infer that an earlier Complaint was made by the Complainant against the Respondent concerning the Domain Name but, for whatever reason, that Complaint was not pursued. The present Complaint must in any event stand or fall wholly on its own merits.
The Complainant provides no further explanation, nor any evidence, of its "operations in the UK" referred to in item 4 above.
The Complainant seeks a transfer of the Domain Name.
The RespondentAs discussed above, no Response has been filed in this case.
Under paragraph 2 of the Policy:
Under paragraph 1 of the Policy the term "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".
The term "Abusive Registration" is defined in paragraph 1 of the Policy as referring to a Domain Name which either:
Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.
RightsWith regard to the first limb of the test, the Complainant is a limited company the name of which (without the suffix plc) is identical to the Domain Name (without the suffix .co.uk). While that may be a starting point to establish Rights for the purposes of paragraph 2 of the Policy, it is in my view insufficient in the absence of a trade mark or, at least, some evidence of reputation and goodwill associated with the name. A mere trade mark application (as opposed to registration) is inadequate for these purposes and the Complainant has provided no evidence regarding its "operations in the UK" referred to in the Complaint.
An investigation of the various domain names referred to in the Complaint reveals that only two, cardpointplc.com and cardpointplc.co.uk resolve to an active website, which is located at www.cardpointplc.com. However, this website does provide information regarding the business of the Complainant under the name Cardpoint together with contact details. It appears from the website that the Complainant is in the business of supplying ATMs (automatic teller machines, more commonly called cash machines) to petrol stations, motorway service stations, hospitals and convenience stores.
In these circumstances I am prepared to accept, on the balance of probabilities, that the Complainant has at least the minimal degree of reputation and goodwill in the name Cardpoint necessary to give rise to Rights for the purposes of paragraph 2 of the Policy.
Abusive RegistrationI now turn to the second limb of the test under paragraph 2, that of Abusive Registration.
In this case, the Domain Name was registered on 22nd November 1999. However, the Complainant was not incorporated until 27th October 2000 and did not change its name to Cardpoint plc until 13th November 2000. The Complainant does not assert that it had any rights in the name Cardpoint prior to that date (or that it has acquired any such rights) and certainly there is no evidence to that effect. Furthermore, according to the Complainant's website referred to above, it commenced trading under the name Cardpoint only during 2001, following the merger of two companies, Direct Cash and Card Cash.
In the circumstances, the Complainant is clearly unable to establish 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 its Rights. The Complainant had no such Rights at the date of registration of the Domain Name.
Notwithstanding the above, the Complainant may still succeed in the Complaint if it can establish that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. However, the Complainant has provided no evidence to this effect. The Domain Name does not currently resolve to an active website and there is no evidence that the Respondent has made any use of the Domain Name at all. Under paragraph 3(b) of the Policy, failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration. As there is no other evidence of an Abusive Registration in this case, the Complainant must fail on this limb of the test.
Paragraph 16(d) of the Procedure states as follows:
"If the Expert concludes that the dispute is not within the scope of paragraph 2 of the Policy, he or she shall state that this is the case. If, after considering the submissions, the Expert finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, the Expert shall state this finding in the Decision. If the Complainant is found on three separate occasions within a 2 year period to have brought a complaint in bad faith, Nominet will not accept any further complaints from that Complainant for a period of 2 years."
The term "Reverse Domain Name Hijacking" is defined in paragraph 1 of the Procedure as:
"using the Policy in bad faith in an attempt to deprive a registered Domain Name holder of a Domain Name".
In this case, I am of the view that there were no reasonable grounds for the Complaint to have been brought and that the Complainant ought to have known this. However, that is essentially an objective judgement and I consider that a finding of bad faith also requires a subjective element, namely that it be shown, or inferred from the circumstances, that the Complainant had a lack of honest belief in the legitimacy of the Complaint. In this regard, I consider there to be three relevant factors.
First, it is notable that nowhere in the Complaint does the Complainant set out any grounds why it considers the registration in the hands of the Respondent to be an Abusive Registration. The Complainant cites none of the potential grounds set out in paragraph 3 of the Policy, nor any other ground, contrary to paragraph 3(v) of the Procedure which specifically requires it to do so. The Complainant merely asserts that the Domain Name is "rightly ours" given its operations in the UK and the fact of its trade mark application.
Secondly, it is significant that, at the time the Complainant commenced trading as Cardpoint, the Domain Name had already been on the register in the Respondent's name for one or possibly two years. This information was therefore available to the Complainant well before it commenced trading under the name in question. On the evidence, there has been no subsequent change in the use of the Domain Name (which does not, in fact, appear to have been used at all). In these circumstances it is difficult to discern how, in bringing this Complaint, the Complainant can honestly have believed that the Respondent's registration of the Domain Name, as against its own Rights, was abusive.
Thirdly, the Complainant submits that the Complaint was brought following the Respondent's failure to reply to its approaches made "in an attempt to resolve the matter". I accept that these approaches were made, initially, in the context of an earlier Complaint (which was not pursued), but that is a point of little significance in view of the merits of the case. In all the circumstances, I infer that the Complainant pursued this Complaint out of frustration at the Respondent's refusal to negotiate terms for a transfer of the Domain Name, rather than out of any genuine belief that the registration was an Abusive Registration under the Policy. There was no obligation upon the Respondent to negotiate terms for a transfer, and to invoke the Policy in such circumstances amounts to an abuse of process.
In the light of the matters referred to above, I consider that grounds for a finding of bad faith are present and that the Complaint in this case constituted an attempt at Reverse Domain Name Hijacking.
Steven Maier
Date: 20 September 2002