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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Bristol Industrial Engraving -v- TK Soft/Tim Kinsella [2003] DRS 1142 (25 September 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1142.html Cite as: [2003] DRS 1142 |
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Nominet UK Dispute Resolution Service
DRS 01142
Bristol Industrial Engraving v TK Soft /Tim Kinsella
Decision of Independent Expert
1. PARTIES
Complainant: Bristol industrial Engraving
Country: GB
Respondent: TK Soft / Tim Kinsella
Country: GB
2. DOMAIN NAME
b-i-e.co.uk (the "Domain Name")
3. PROCEDURAL BACKGROUND
The complaint was entered on to the Nominet system on 28 July 2003. Nominet validated the complaint on 30 July 2003 and on the same day despatched a copy of the complaint to the Respondent by post to the address recorded in the register entry for the Domain Name and by e-mail to the e-mail address appearing in the register entry for the domain name and to an e-mail address used by the Respondent on an invoice (see below). The record indicates that notification was received by Nominet that the e-mail to one of the addresses was not delivered. There is no such indication for the other e-mail address. The Respondent was informed that he had 15 days within which to lodge a Response. The Respondent failed to respond and was informed by a letter dated 27 August 2003 and an email of the same date (again to the two addresses indicated above)that if the Complainant paid the requisite fees by 10 September 2003 the matter would be referred to an Expert for a decision under the Dispute Resolution Service. On 3 September 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").
I, Stephen Bennett, the undersigned, have confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and have further confirmed that I know 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.
4. OUTSTANDING FORMAL/PROCEDURAL ISSUES
The Respondent has not submitted any response to Nominet under 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 laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint."
There is no evidence before the Expert to indicate the presence of exceptional circumstances. Nominet has attempted to communicate the complaint to the Respondent by e?mail and post. The efforts made by Nominet are in accordance with the Procedure and accordingly, I will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.
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 this Procedure …, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate." I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.
5. THE FACTS
The Domain Name, b-i-e.co.uk, was first registered on 8 July 2000 with the proprietor named as the Complainant, Bristol Industrial Engraving. The Domain Name was due for renewal on 8 July 2002. Nominet wrote to the Complainant on 28 August 2002 seeking payment of its invoice for renewal of the domain name. According to Nominet's letter of 28 August 2002, the invoice had been returned marked "addressee gone away". The Nominet record then shows that the original registration of Domain Name was cancelled on 17 February 2003. The Domain Name was then re-registered on 2 March 2003 by the Respondent.
The Respondent has provided website hosting and design services to the Complainant as evidenced by an invoice issued by the Respondent dated 1 August 2001 and addressed to the Complainant.
The chronology of events as set out in the Complaint and the copy records supplied by Nominet is as follows.
Chronology
Date Event
8 July 2000 Complainant registers Domain Name
8 July 2002 Domain Name due for renewal
17 February 2003 Original registration cancelled non-payment of renewal.
2 March 2003 Respondent registers Domain Name
As of the date Nominet compiled the complaint file, the website at www.b-i-e.co.uk resolved to a page which states "YOU ARE AN IDIOT" and contains a series of smiley faces. The website at that address now reverts to a page which states: "LCN - Low Cost Names Domain Name Holding Page. This Domain name b-i-e.co.uk has been registered on behalf of a client of ours. Low cost Names offer .co.uk, .me.uk, .com, .net. .org, .biz and .info domain names from £7.50 for two years…."
THE PARTIES’ CONTENTIONS
Complainant:
The Complainant contends that it has rights in the name"b-i-e". The basis for the claim to rights in this name is the use of the name "BIE" as part of its trading name and the promotion of the web site address www.b-i-e.co.uk over a period of time. In support of this claim, the Complainant has supplied a copy of extracts from the Yellow Pages starting from the 2001/2002 edition showing use of the name "BIE" and, in each case, containing the website address www.b-i-e.co.uk. The Complainant has also provided samples of its letterhead, invoices and delivery notes, each showing use of the BIE name and the website address www.b-i-e.co.uk. The Complainant has also supplied a sample promotional calendar and coaster which, again, use the BIE name and, in the case of the coaster, displays the website address, www.b-i-e.co.uk. The Complainant states that it is commonly known by business contacts as BIE. The Complainant asserts no registered trade mark rights.
The Complainant states that it asked the Respondent (Tim Kinsella) to create and maintain a website from July 2000. An invoice dated 1 August 2001 is exhibited in support of this claim. When the renewal of the Domain Name was due, the Complainant states that it was suffering bad cash flow and decided not to re-register on the basis that it felt no-one else would want to register "his website". The Complainant states that the website at www.b-i-e.co.uk then showed "not available" when attempts were made to access it.
Mr Nick Bath of the Complainant says he was subsequently phoned by a customer and went online to find that the Respondent was selling "the web address" (presumably, the Domain Name). The Complainant asserts that the Respondent is selling bristolindustialengraving.co.uk, bristolindustialengraving.com and bristolindustial engraving.net. The "whois" records show that all three of these domain names are registered to the Respondent. The Complainant states that contact was made with the Respondent, Mr. Kinsella, who offered to sell the Domain Name for £400. The Complainant states it did not accept this alleged offer. Nick Bath of the Complainant says that, at that stage, he settled all outstanding bills with the Respondent. The Complainant states that he subsequently found that the website www.b-i-e.co.uk resolved to a web page displaying the words "You are an idiot". This is the web page Nominet found as of the date the file on this complaint was compiled, a copy of which has been supplied to me. The Complainant alleges that the page "sang" "you are an idiot" and the locked the computer of the person visiting the site.
Respondent:
The Respondent has not responded.
6. DISCUSSION AND FINDINGS
General
The Complainant annexes documentary evidence to support the claim to rights in the name BIE. On other issues, such as the alleged offer for sale by the Respondent, no supporting material is supplied. The complaint is, however, the subject of a declaration signed on behalf of the Complainant stating that the information in the complaint is true to the best of the Complainant's knowledge. Accordingly, I will treat the complaint itself as the Complainant's evidence on points where there is no supporting material. That does not mean that the submissions made in the complaint are to be treated as proof, merely that those statements can be weighed to assess the Complainant's case.
Complainant's Rights
The Complainant relies on use of the name "BIE" as its trading name or part of its trading name to establish its rights in that name. The Complainant asserts use of that name since 1973. It is clear from the material submitted by the Complainant that BIE is used as part of its trading name and that the web site address www.b-i-e.co.uk had been given prominence on a wide range of promotional materials since the year 2000. This is the type of use which is capable of establishing goodwill and reputation in a name for the purpose of establishing a case in passing off.
In this case I find that the Complainant has Rights in the name "BIE" on the basis of its use of that as its trading name and in the variation on that name "b-i-e" as used in the address for its website.
Abusive Registration
To be an Abusive Registration the Domain Name must be one which "…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…".
Section 3 of the Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These are as follows:
"3. EVIDENCE OF ABUSIVE REGISTRATION
(a) A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is 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.
(b) Failure on the Respondent's part to use the Domain Name for the purposes of email or a web-site is not in itself evidence that the Domain Name is an Abusive Registration."
Although the Complainant does not specifically identify the provisions upon which it relies to establish Abusive Registration, the thrust of the Complainant's allegations are that the Respondent has offered to sell the Domain Name for an amount in excess of out of pocket expenses by offering it for sale at £400. The Complainant also seems to allege that the Respondent has acted so as to interfere with the Complainant's business by use of the "you are an idiot" web page referred to above. Whilst there is no need to fit the Abusive Registration allegation under any particular head of the non-exhaustive list of factors under paragraph 3 of the Policy, it appears the Complainant makes it case under paragraphs 3(a)(i)(A) (registration 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) and 3(a)(i)C (registration primarily for the purpose of unfairly disrupting the business of the Complainant).
The only evidence put forward to support the allegation under paragraph 3(a)(i)(A) of the offer for sale at £400 is the complaint itself. There is no written record of the offer for sale accompanying the complaint (it may be, in any event, that the offer was not made in writing). As the complaint is verified by a statement of truth, I am, however entitled to treat the complaint as evidence.
I have a copy of the website operated at www.b-i-e.co.uk with the page stating "you are an idiot". That page had been removed by the time I checked so I have not been able to verify that it locks the computer of anyone visiting that site. Whois searches also confirm that 3 domain names all incorporating the name "BristolIndustrialEngraving" are registered in the Respondent's name although there is no evidence or allegation that these domain names have been offered for sale or used by the Respondent.
On balance, I find there is sufficient evidence to support a finding that the registration is an Abusive Registration. The "you are an idiot" page appears to have been designed to cause disruption to the Complainant's business. I am entitled to rely on the verified complaint as evidence of the offer to sell at £400 which would be considerably in excess of any fee for registering the Domain Name. Given the past business dealings of the parties, it is clear that the Respondent would have had the Complainant in mind when he registered the Domain Name. Whilst I make no finding as to the abusive nature of the other domain names incorporating the BristoI Industrial Engraving name, they do, in this context, give support to the Complainant's case. On the basis set out above, I find that the Domain Name is an Abusive Registration in the hands of the Respondent.
DECISION
The Complainant has Rights in the name BIE / b-i-e. The Domain Name in the hands of the Respondent is an Abusive Registration.
The Complainant's request for a transfer of the Domain Name is granted.
Stephen Bennett
Date: 25 September 2003