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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Reebok International Ltd -v- Media Cafe [2003] DRS 1074 (18 August 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1074.html Cite as: [2003] DRS 1074 |
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NOMINET UK DISPUTE RESOLUTION SERVICE
DRS01074
DECISION OF INDEPENDENT EXPERT
1. Parties:
Complainant : Reebok International Limited
Country : GB
Respondent : Media Cafe
Country : UK
2. Domain Name
reebok.co.uk (“the Domain Name”)
3. Procedural Background
The Complaint was lodged with Nominet on 23 June 2003. Nominet validated the Complaint, and sought to notify the Respondent of the Complaint by letter dated 26 June 2003. Attempts were also made to send the same letter electronically to postmaster@reebok.co.uk and to the e-mail contact address originally provided to Nominet, being the original tag holder, BiblioTech. The contact details held on Nominet’s records have subsequently been altered, so that the current contact details are those of the Complainant itself.
The post copy of the letter was returned to Nominet marked “return to sender”. The e-mail copy of the letter to BiblioTech produced an e-mail response from BiblioTech itself on 26 June 2003 confirming that BiblioTech had already made a concerted effort to track down the Respondent several years ago, but with no success. The original postal address given for the Respondent was a previous address for BiblioTech.
There was no response from the Respondent. Mediation was therefore not possible. Nominet so informed the Complainant on 21 July 2003, and again sought to inform the Respondent through such contact details as it had. The postal copy of the letter was returned to Nominet marked “gone”. On 6 August 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 12 August 2003 Bob Elliott, 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 drawn to the attention of the parties, which might appear to call into question his independence or impartiality.
4. Outstanding Formal/Procedural Issues
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 Procedure”).
Paragraph 15b of the Procedure provides, inter alia, that “if, in the absence of exceptional circumstances, a Party does not comply with any time period set down in the Policy or Procedure, the Expert shall proceed to a Decision on the Complaint”.
Paragraph 15c of the Procedure provides that “if, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or Procedure, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate”.
Although it would appear that it is likely that the Respondent, if it still exists, may well not have received a copy of the Complaint, the Expert does not regard that as being an exceptional circumstance, as Nominet appears to have done all that it reasonably could to try to bring the Complainant to the Respondent’s attention. The Expert will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.
5. The Facts
The Complainant is Reebok International Limited. The Complaint states that the Complainant is the owner of the Reebok trademark portfolio, and trades as Reebok UK.
The Complaint states that the Domain Name was registered in 1997 by the Respondent who was acting as Reebok’s agent. The intention was for the name to be registered as owned by the Complainant. The Domain Name was, however, registered in the Respondent’s name. This state of affairs went unnoticed for several years. Once the Complainant became aware of the error, it tried extensively to contact the Respondent to rectify this state of affairs, without any success. The Complaint confirms that the Complainant has no contact details for the Respondent and attempts to try to trace the Respondent have failed.
The Complainant or its agents have apparently paid the renewal fee for the name each time it has fallen due, without any involvement of the Respondent. Since 2000, the Reebok UK site, at the Domain Name, has been live and is a valuable part of Reebok’s business in the UK.
Mr Omar Shabka of BiblioTech, in the e-mail to Nominet of 26 June 2003 referred to above, provides some support for the Complainant’s version of events. In that e-mail Mr Shabka states “as the registrar with whom this Domain was originally registered in 1997, I can confirm Reebok’s assertion that the Domain was registered by Media Café on behalf of Reebok for a planned website. Without doubt the Domain Name is clearly associated with their brand and trademarks. If Media Café were contactable, I would seriously doubt that they would dispute this transfer of ownership request. …………. It is my recollection that Media Café was in effect a freelance web designer and I suspect that it is highly unlikely that further efforts to contact him would produce results”.
A print out of the website at Reebok.co.uk confirms that it is being actively used to promote Reebok products.
6. The Parties Contentions
Complainant
In its Complaint, the Complainant states that the intention was always for the Domain Name, an essential element of the Reebok UK site, to be owned by Reebok. The Respondent’s ownership of the name is blocking this. Reebok wishes for the ownership of Reebok.co.uk to be transferred to it (in the name of Reebok International Limited).
Respondent
The Respondent has not responded.
7. Discussion and Findings
General
The Complainant must prove its case to the Expert on the balance of probabilities (2.b, Policy). It must prove 2 elements: firstly that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; secondly that the Domain Name, in the hands of the Respondent is an Abusive Registration. Both “Rights” and “Abusive Registration” are defined in paragraph 1 of the Policy.
Complainant’s Rights
“Rights” as defined in the Policy “includes, but is not limited to, rights enforceable under English law”. In its Complaint, the Complainant has referred to its ownership of the Reebok trademark portfolio. Although this is unsupported by any documentary evidence, it has not been contested by the Respondent. Although the Expert notes that it would have been comparatively easy for the Complainant to provide verification of its assertions, the Expert is nevertheless prepared to find that the Complainant has Rights in a name or mark, which is identical to the Domain Name.
Abusive Registration
The uncontested evidence set out above, supported by BiblioTech’s e-mail of 26 June 2003, suggests strongly that the Domain Name “belongs” to the Complainant. However, it is registered in the name of the Respondent, and the Expert only has jurisdiction to decide that a Domain Name registration should be transferred, if he is satisfied by the Complainant on the balance of probabilities that the Domain Name in the hands of the Respondent is an Abusive Registration.
The Policy (paragraph 3) contains a non-exhaustive list of factors which may be evidence of Abusive Registration. The Complainant refers to the Respondent’s ownership of the name “blocking” its intentions. Amongst the non-exhaustive list of factors is one which is directed to blocking registrations, which provides that those factors may include “circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name as a blocking registration against a name or mark in which the Complainant has Rights” (3aiB of the Policy). Although the Complainant asserts that the Respondent’s ownership of the Domain Name is blocking its intentions, it does not appear to assert that that was the intention at the time that the Respondent registered the Domain Name. The Expert does not therefore consider that the Domain Name is an Abusive Registration on the grounds that it amounts to a “blocking registration” within the Policy.
It does not appear to the Expert that any of the other non-exhaustive list of factors set out in paragraph 3 of the Policy applies either. However, those factors are expressly stated to be non-exhaustive, and the Expert has to have regard to the definition of Abusive Registration, which is contained in paragraph 1 of the Policy. That expression “means a Domain Name which either:
1. Was registered or otherwise acquired in a manner which, at the time that the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or
2. Has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights”.
It seems to the Expert that the thrust of the Complaint is that the continuing ownership by the Respondent of the Domain Name is unfairly detrimental to the Complainant’s Rights. There is a suggestion in the complaint that the registration should not have been in the name of the Respondent in the first place. The Complaint asserts that “the intention was for the name to be registered as being owned by Reebok International Limited”. However, this is not directly supported by BiblioTech’s e-mail of 26 June 2003 which states that “the Domain was registered by Media Café on behalf of Reebok for a planned website”. The Complainant’s own records do not appear to be able to provide further assistance: the Complaint refers to the Complainant not having kept any details of dealings with the Respondent, and apparently no personnel remain at Reebok UK who had any dealing with the Respondent.
Despite an element of uncertainty, on the balance of probabilities it seems to the Expert that the position was either that the registration should have been in the name of the Respondent in the first place, alternatively, it was intended that it should have been transferred to the Respondent at some stage in the future. In the former case, within the definition in paragraph 1 of the Policy, registration in the Respondent’s name would have been registration in a manner which was unfairly detrimental to the Complainant’s Rights. In the latter case, the subsequent “use” by the Respondent of the Domain Name (in the sense of failure to effect a transfer to the Complainant) would have been unfairly detrimental to the Complainant’s Rights. In the circumstances, the Expert is prepared to find that the Complainant has made out its case as to Abusive Registration on the balance of probabilities.
8. Decision
The Expert finds that the Complainant has Rights in the name Reebok, and that the name in which the Complainant has Rights is identical to the Domain Name. The Domain Name is an Abusive Registration in the hands of the Respondent. The Expert therefore decides that the Domain Name should be transferred to the Complainant.
Bob Elliott
Date: 18 August 2003