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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> M Chapman Auto Services -v- WDOT Internet Ltd [2003] DRS 1012 (8 July 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1012.html Cite as: [2003] DRS 1012 |
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Nominet UK Dispute Resolution Service
DRS 01012
M Chapman Auto Services -v- WDOT Internet Limited
Decision of Independent Expert
1. Parties:
Complainant: M Chapman Auto Services
Country: GB
Respondent: WDOT Internet Limited
Country: GB
2. Domain Names:
The domain names in dispute are:
mchapmanautoservices.co.uk;
vwandaudiservicing.co.uk;
audiandvwservicing.co.uk
vwservicing.co.uk
3. Procedural Background:
The Complaint was lodged with Nominet on 21 May 2003. Nominet validated the Complaint on 27 May 2003, when it confirmed via Companies House Direct that the Respondent company WDOT Internet Limited was dissolved on 19 June 2001. Nominet therefore notified the Respondent, c/o the Treasury Solicitor, of the Complaint on 27 May 2003 and informed the Respondent that it had until 18 June 2003 to lodge a Response. At the same time, Nominet also notified by e-mail someone called Andy, who apparently had some connection with the Respondent. No Response was received from
the Treasury Solicitor or Andy. Mediation not being possible in those circumstances, Nominet so informed the Complainant and invited the Complainant to pay the fee to obtain an Expert Decision by 4 July 2003. On 26 June 2003, 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”)
On 1 July 2003, David King, the undersigned, (“the Expert”) 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 brought to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any):
No response to the Complaint has been received in accordance with paragraph 5a of the Procedure, the Respondent having been dissolved on 19 June 2001. This issue was considered in respect of this particular Respondent in paragraph 4 of DRS 0066 (Fiat S.p.A –v- WDOT Internet Limited). The Expert agrees with the conclusion of the Expert in that case, that there were no exceptional circumstances to prevent the Expert from proceeding with his Decision on the complaint. Therefore, in the view of the Expert, the dissolution of the Respondent has no bearing on the Expert’s ability to proceed to a Decision on this Complaint.
5. The Facts
The Complainant has provided no background information regarding its business. However, it is apparent from the Complainant’s compliments slip included with the Complaint that the Complainant is an unincorporated firm involved in servicing motor vehicles and that it describes itself as “Audi/Volkswagen Specialist”.
The Complainant submits that the Domain Names were registered by the Respondent on behalf of the Complainant for a fee of £180 plus VAT. When the Domain Names were due for renewal, Mr Chapman of the Complainant firm tried to contact the Respondent to arrange the renewal and discovered that the Respondent was no longer in business. The Complainant has recently noticed that the Domain Names have been incorrectly registered as owned by the Respondent instead of the Complainant. The Domain Names have recently been renewed but the Complainant was not contacted regarding the renewal and payment for the Domain Names. The Complainant has supplied a copy of the Respondent’s invoice dated 17 January 2001 in the amount of £180 plus VAT of £31.50 (total £211.50) and the Complainant’s cheque stub dated 24 January 2001 for £211.50 payable to the Respondent.
The WHOIS query searches made by Nominet confirm that the Domain Names were all registered in the name of the Respondent on 3 December 1999. They are due for renewal on 3 December 2003.
A printout of the web-sites of the Domain Names, included in the bundle of papers supplied by Nominet to the Expert, shows that the web-sites have been “detagged” and are, therefore, unavailable.
The Expert is satisfied that these are the facts in this case.
6. The Parties Contentions
Complainant:
The Complainant confirms that the Domain Names in dispute are identical or similar to a name or mark in which it has Rights.
As mentioned in paragraph 5 above, the Complainant submits that it paid the Respondent to register the Domain Names on behalf of the Complainant but the names are currently registered in the name of the Respondent company which has been dissolved.
The Complainant says that it has recently made contact with a gentleman called Andy who it believes has control of the Domain Names and that, on 27 January 2003, Mrs Chapman of the Complainant firm spoke to Andy, who told her that he would be able to transfer the Domain Names to the Complainant on payment of the renewal fee and a small administration fee. After several months of follow-up e-mails and phone calls a response was finally received in the form of an e-mail from Andy. The e-mail stated that the Domain Names would have to remain registered to the Respondent but could be leased to the Complainant for a period of 100 years for a fee of £150. Mrs Chapman then telephoned someone called Stephanie (as suggested in Andy’s e-mail of 12 May 2003) who told her that the Domain Names could not be transferred as the Respondent was in receivership. The Complainant believes that the Domain Names were incorrectly registered – the Complainant should have been listed as the owner of the Domain Names not the Respondent. The Complainant’s rights to these Domain Names are that it commissioned and paid the Respondent to purchase the Domain Names. Therefore the Domain Names should be transferred to the Complainant.
Respondent:
No Response to the Complaint has been received.
7 Discussion and Findings:
Complainant’s Rights
The Complainant has asserted that it has rights in a name or mark, which is
identical or similar to the Domain Names. The main issue at this stage is to
establish whether, on the balance of probabilities, the Complainant has rights in respect of the names or marks of mchapmanautoservices.co.uk, vwandaudiservicing.co.uk, audiandvwservicing.co.uk and vwservicinig.co.uk.
In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix <co.uk> which is of no relevant significance and wholly generic.
The Complainant has not specified the nature of the rights it asserts to any of the Domain Names or lodged any details or evidence to support its claim. It simply relies on its contractual relationship with the Respondent to register
the Domain Names on its behalf. The name mchapmanautoservices is identical to the name of the Complainant. The establishment of Rights is not a particularly high threshold test. The Expert is prepared to accept that, on the balance of probabilities, the Complainant has a claim to goodwill in this name sufficient to satisfy this requirement.
However, the other three Domain Names include the names Audi and/or VW, which are well known manufacturers of motor vehicles. Furthermore, the word “servicing” is descriptive and is a generic term. The Expert cannot see that the Complainant can assert Rights in respect of the other three Domain Names. The fact that the Respondent registered these Domain Names on behalf of the Complainant in 1999 does not mean that the Complainant has acquired any Rights in respect of these names.
The Expert finds that, for the purposes of the Policy, the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name of mchapmanautoservices.co.uk.
The Expert finds that, for the purposes of the Policy, the Complainant does not have Rights in respect of the Domain Names vwandaudiservicing.co.uk, audiandvwservicing.co.uk and vwservicing.co.uk. Accordingly, the Complaint in respect of these three names must fail and will not be considered further in this Decision.
Abusive Registration
Is the Domain Name of mchapmanautoservices.col.uk, in the hands of the
Respondent, an 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 detrimental to the Complainant’s Rights.”
A non-exhaustive list of factors, which may be evidence that a Domain Name is an Abusive Registration, is set out in Paragraph 3 a of the Policy and reads as follows:
“i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A 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 documented out-of-pocket costs directly associated with acquiring or using the Domain Name
B as a blocking registration against a name or mark in which the Complainant has Rights; or
C primarily for the purpose of unfairly disrupting the business of the Complainant;
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;
iii In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv It is independently verified that the Respondent has given false contact details to us”
Paragraph 3 b of the Policy provides:
“Failure on the Respondent’s part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration”
The Complainant has not specifically referred to any of the provisions of
paragraph 3 in the Complaint. It might be said that the Complainant is, in
part, relying on paragraph 3 a i A. However it is not clear what standing, if
any, Andy had in respect of the Respondent and it seems likely that the
alleged offer to renew and lease the Domain Names was made when the
Respondent had already been dissolved. It would therefore not be
safe to make a finding of Abusive Registration under paragraph 3 a i A.
However, the list of factors which may indicate Abusive Registration is non-
exhaustive and other circumstances can therefore be considered. Whilst the
evidence supplied is scant, the Expert is satisfied that, on the balance of
probabilities, the arrangement between the Complainant and Respondent
was such that the Domain Name of mchapmanautoservice.co.uk ought to
have been registered in the name of the Complainant and that the
Complainant has been adversely prejudiced by the Respondent’s failure to
register the Domain Name in the name of the Complainant.
The provisions of Paragraph 4 do not appear to be relevant in this case and need not be considered in this Decision.
In all the circumstances, the Expert is satisfied that the Complaint of Abusive
Registration has been established as regards the Domain Name of mchapmanautoservices.co.uk.
8 Decision
In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name of mchapmanautoservices.co.uk and that this Domain Name, in the hands of the
Respondent, is an Abusive Registration, the Expert directs that the Domain Name of mchapmanautoservices.co.uk be transferred to the Complainant.
As the Expert has found that the Complainant does not have Rights in respect of the other Domain Names of vwandaudiservicing.co.uk, audiandvwservicing.co.uk and vwservicing.co.uk, the Expert directs that no action be taken in respect of these Domain Names.
David King
Date: 8 July 2003