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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Watermark Group plc -v- Watermark Recruitment Bureau [2002] DRS 657 (20 December 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/657.html Cite as: [2002] DRS 657 |
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Nominet UK Dispute Resolution Service
DRS 00657
Watermark Group PLC-V-Watermark Recruitment Bureau
Decision of Independent Expert
1. PARTIES
Complainant: Watermark Group PLC
Country: GB
Respondent: Watermark Recruitment Bureau
Country: GB
2. DOMAIN NAME:
watermark.co.uk (“the Domain Name”)
3. PROCEDURAL BACKGROUND
3.1 The Complaint was lodged with Nominet UK (“Nominet”) on October 10, 2002, and received in full on October 14, 2002. Nominet validated the Complaint and notified the Respondent of the Complaint on October 17, 2002. Nominet informed the Respondent that he had 15 working days (until November 7, 2002) to lodge a response. The Respondent failed to respond. Mediation not being possible in those circumstances, Nominet so informed the Complainant and on November 14, 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
3.2 On November 15, 2002 Mr Nick Gardner, the undersigned, (“the Expert”) was selected by Nominet to be the Expert in this case. He 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.
3.3 On 21st November 2002 the Expert (through Nominet) issued to the Parties a direction as follows:
“In accordance with the Nominet DRS procedure section 13a, the Expert requests the Complainant to provide the following:-
1) Details of the evidence the Complainant relies upon in support of its claim that "watermark" is a name or mark in which it has rights.
2) Evidence confirming its contention that the Respondent does not exist.
3) Details of whether the Complainant relies upon anything further in support of the allegation that the registration is abusive other than the Respondent's non existence.
4) Details of any arguments the Complainant wishes to advance as to why the registration (which is in respect of what is an ordinary English word) should be transferred to the Complainant.”
3.4 The request further provided that the Complainant was to have until the 6th December to file the above, and that the Respondent was to have until the 13 December for the Respondent, if so advised, to file any further material in response. A decision would then be given by the 20th December.
3.5 By letter dated December 5th 2002 the Complainant provided further material. No filing was made by the Respondent.
4. OUTSTANDING FORMAL/PROCEDURAL ISSUES
4.1 The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the DRS Procedure”).
4.2 Paragraph 15b of the DRS 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.”
4.3 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.
4.4 Paragraph 15c of the DRS 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.” The Expert is not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.
5. FACTS
5.1 The information provided by the Complainant as to its business and activities is very limited. In the Complaint as originally filed it comprised no more than a one line statement from a Mr John Day whose title is “Group IT and Communications Manager” that read “I confirm that Domain Name(s) in dispute are identical or similar to a name in which I have rights”. The Company search accompanying the papers (obtained by Nominet) indicates the Complainant to be incorporated under its present name since 1989 and to have the activity of “Management activities holding company”. The further letter of 5th December 2002 filed by the Complainant (see above) added to this that the Complainant had traded as Watermark Limited since 1985 (this is not consistent with the company search referred to above – an obvious possibility being that a different group company is being referenced here but insufficient information is provided to verify this) and had been listed on the London Stock Exchange as Watermark Group plc since 1998.
5.2 The 5th December 2002 letter from the Complainant also contained a list of other domain names owned by the complainant, being around 23 names including the word watermark, such as watermarkplc.com, watermarktravel.co.uk, watermarkmerchandise.co.uk and so on.
5.3 On October 7, 1996 the Respondent registered the Domain Name. Since that time, the Complainant has tried to contact the Respondent in connection with the Domain Name, but has been unsuccessful in obtaining a reply.
5.4 The Respondent does not have an active site which uses the Domain Name.
6. THE PARTIES’ CONTENTIONS
6.1 The parties’ contentions can be summarised as follows:
Complainant
6.2 The Complainant set out its contentions in both its initial Complaint and in the letter to Nominet dated December 5th, 2002.
6.3 The Complainant asserts that the Domain Name registered by the Respondent is identical or similar to the Complainant’s company name. The Complainant has been trading as Watermark Limited since 1985 under the company number 1475938, and has been listed on the London Stock Exchange as Watermark Group PLC since 1998. The Complainant further holds the majority of “Watermark” domains (see above). The Complainant therefore asserts that it has rights in respect of a name or mark which is identical or similar to the Domain Name (paragraph 2.a.i. of the Policy).
6.4 It is the Complainant’s contention that the Domain Name in the hands of the Respondent is an Abusive Registration. (paragraph 2.a.ii. of the Policy). The webspace has never been used, and an internet search under the Domain Name produced the result that the webpage could not be found. All attempts to contact Mr Peter Evans, the Domain Name’s administrative contact, at either Watermark Recruit Bureau or Avenir Communications Limited have failed as they do not exist at the address listed on the registry. Furthermore, Avenir Communications Limited are not and have never been listed as a limited company with Companies House.
6.5 The Complainant has also attempted to contact the Respondent through Netbenefit, the organisation which effected the registration of the Domain Name on behalf of the Respondent (this appears to be a refernce to a company called Netbenefit UK Limited according to the whois search carried out by Nominet). The Complainant says this organisation has purported to pass on messages to the Respondent, but the Complainant has never received a reply. No further details are given of these communications with Netbenefit.
6.6 The Complainant also asserts that Netbenefit has attempted on several occasions to sell the Domain Name to the Respondent at a highly inflated price. These attempts began within a matter of a few weeks from the date of the initial registration of the Domain Name, which the Complainant says does not accord with the normal practises of a valid recruitment company. No further details are given of these attempts.
6.7 The Complainant states in its complaint that it believes these events are what it describes as ‘some sort of “front” that was use by netbenefit.com for the purpose of obtaining the Domain Name for future resale’.
6.8 The Complainant requests transfer of the Domain Name, pointing out that it has a website ready for use with the Domain Name.
Respondent
6.9 The Respondent has not responded.
7. DISCUSSION AND FINDINGS
General
7.1 Under paragraph 2 of the Policy the Respondent must submit to proceedings under the Dispute Resolution Service if the Complainant asserts that:
i. The Complainant has rights in respect of a name which is identical or similar to the Domain Name; and
ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration.
“Rights” and “Abusive Registration” are defined in paragraph 1 of the Policy.
The Complainant does make these assertions in the Complaint. The Expert therefore finds that the Respondent must submit to these proceedings.
Burden of Proof
7.2 The Complainant must prove both elements i. and ii. in paragraph 7.1 above on the balance of probabilities if it is to succeed in its Complaint.
7.3 The absence of a response from the Respondent does not necessarily mean that the Respondent is deemed to have no answer to the Complaint. The lack of response is a factor to be taken into account (particularly given the allegation by the Complainant that the Respondent has given incorrect contact details). Nevertheless the Complainant must still make out its case on the balance of probabilities.
7.4 As a general observation the Expert notes the lack of any degree of detail or supporting material in relation to many of the allegations made. It is not the function of the Expert in this type of proceeding to make his own enquiries to establish what the underlying facts are; it is for the Parties to file appropriate, sufficient and credible evidence.
7.5 As matters currently stand, on the evidence so far filed, the Expert has no idea what the business and activities of the Complainant actually are, how and where it trades, what the size of its operation is, whether it has any registered trademarks and so on. This is highly unsatisfactory – the Expert is left with the evidence of the Complainant’s name, the fact it is listed on the Stock Exchange, and a list of domains it holds. The Complaint as originally filed was so devoid of useful information that the direction referred to above was issued. The further information filed in response to that direction only marginally improves the position.
7.6 This is particularly unsatisfactory where, as here, the domain name in issue is an ordinary English word. In such a case it is obviously at least a possibility that a respondent may have registered such a name independently of any knowledge of the Complainant or its business. This is a factor the Expert bears in mind in considering the Complainant’s case.
7.7 The Expert has also been provided with very little detail to support the allegation that various approaches have been made by Netbenefit to seek to sell the name and that all of this is ‘some sort of “front” by Netbenefit’. The Complainant’s letter of 5th December states that “Netbenefit have tried to sell us the Domain Name on a number of occasions for vast sums of money” One would normally expect a Complainant to provide copies of any correspondence or e mails documenting such attempts, or if oral to provide proper details of the conversations concerned, identifying the individuals who spoke and giving at least the gist of what was said. As matters stand a rather sweeping statement has been made with little underlying detail.
7.8 The Domain Name is filed in the name of “Watermark Recruitment Bureau”. The administrative contact was filed as “Mr Peter Evans” of “Avenir Communications Limited” with an address in Leeds. The Complainant says that “Avenir Communications Limited” is not, and never has been listed as a Limited Company at Companies House , and that attempts to contact the Respondent, Mr Evans or Avenir Communications Limited at the address concerned have all been unsuccessful. Technical and Billing contacts are given at Netbenefit UK Limited. The Complainant says that Netbenefit have always said that it will “pass on” messages to the Respondent but nothing has come from this. No further details of these conversations are given.
7.9 The Expert has verified that Avenir Communications Limited does not exist – taking the view that consulting a publicly available statutory register is permissible. The Expert has not relied upon any further independent enquiries in reaching his decision.
Rights
7.10 The definition of Rights under the Policy “includes but is not limited to, rights enforceable under English law” but excludes rights in a name which is wholly descriptive of the Complainant’s business.
7.11 The Domain Name uses the word “watermark”. The Expert accepts that the Complainant has been in existence under this name since at least 1988, is listed on the London Stock Exchange, and has a large number of domain names incorporating the name watermark. In the circumstances the Expert takes the view that this filed evidence just satisfies the threshold in establishing that the Respondent has applicable rights in the name watermark. As a general observation, Complainants in future determinations would be well advised to provide the Expert with somewhat more detail about their business and activities in order to assist the Expert in forming a better view of what rights the Complainant really has.
7.12 Nevertheless the Expert finds find that the Complainant has filed sufficient evidence to establish it has rights in respect of a name which is identical to the Domain Name.
Abusive Registration
7.13 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.
7.14 A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. Those factors which appear to be relevant to this case are at paragraphs 3.a.i.A, and 3.a.iv.
7.15 The evidence in relation to paragraph 3.a.i.A relates to the approaches allegedly made by Netbenefit offering to sell the Domain Name. These, if made out, could establish that the Domain Name may have been registered “primarily for the purposes of selling …. to the Complainant for valuable consideration in excess of the Respondent’s documented out of pocket costs”. The Expert finds this evidence unsatisfactory, given the lack of detail that has been provided and the fact that Netbenefit is not itself the registrant. In isolation the Expert takes the view that although some evidence has been provided it is insufficiently detailed, on its own, to establish the registration was abusive. The Expert does not however discount this evidence entirely.
7.16 Under paragraph 3.a.iv of the Policy, one of the list of factors which may be evidence that the Domain Name is an Abusive Registration is if “It is independently verified that the Respondent has given false contact details to us [Nominet]”. The Expert is satisfied that the contact details given are false in that Avenir Communications Limited does not exist. Taking this into account, the failure of the Respondent to file a Response, and the Complainant’s evidence (again in very summary form) of being unable to contact the Respondent, the Expert is satisfied that false contact details have been given.
7.17 The Expert takes the view that the combined effect of the rather sketchy evidence about netbenefit’s offers to sell the Domain Name; and the false contact details; together establish that, on the balance of probabilities, the registration was an Abusive Registration.
8. DECISION
8.1 In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical 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, watermark.co.uk, be transferred to the Complainant.
Nick Gardner
December 20th 2002