Autopage Ltd -v- Raymar (t/a Abel internet) [2003] DRS 745 (10 February 2003)

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  Autopage Ltd v Max Raymar t/a Abel Internet

   Decision of Independent Expert

1. Procedural Background:
The Complaint was lodged with Nominet on 29 November 2002. Nominet validated the Complaint and notified the Respondent of the Complaint on 5 December 2002 and informed the Respondent that it had 15 working days within which to lodge a Response. On 20 December 2002 a further copy of the Complaint was sent to the Respondent. The Respondent lodged a non-standard Response on 24 December 2002 (The Respondent responded by e-mail rather than completing the Response form on the Nominet website). The Response was forwarded to the Complainant on 24 December 2002 and Nominet advised the Complainant it had 5 working days within which to lodge a Reply. The Complainant lodged a Reply on 30 December 2002. The Informal Mediation stage of the Dispute Resolution service started on 31 December 2002 and finished on 13 January 2003. Informal Mediation was not successful and the Complainant was informed accordingly on 13 January 2003 and invited to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly paid on 20 January 2003. On 22 January 2002, Nominet invited me, Niel Ackermann, to provide a decision on this case. 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. Nominet duly appointed me as Expert.

2. Outstanding Formal/Procedural Issues (if any):
There are no outstanding procedural issues.

3. The Facts:
The limited matters I can find as facts in this decision are the following:

1. The Domain Name is registered in the name of the Respondent
2. The Respondent is an Internet Service Provider (“ISP”) which, in addition to the normal services provided by most ISP’s, also provides the ability for his customers to pick a personal e-mail address from an extensive list of domain names, including the Domain Name.
3. The Complainant is a limited company incorporated on 20 November 1984 which changed its name to Autopage Limited from Cellular Radio (Norwich) Limited on 20 February 1995.
4. The domain names “autopage.ltd.uk” and “autopage.info” and the registered to the Complainant

4. The Parties’ Contentions:
Complaint:
In summary the Complainant made the following submissions:
1. The Complainant has been trading since 1995 and before that the director of the Complainant used Autopage as a trading name and as the name of his primary product from about 1981.

4. Some customers and potential customers are unable to find the Complainant’s website and receive no response to e-mails. In some cases, this has been because they were trying to use autopage.co.uk.

5. The Complainant first approached the Respondent about the Domain Name in 1997.

8. This will allow any competitor of the Complainant to borrow/hire an e-mail address and presumably to set up a misleading web site in competition to ours. According to the Complainant, this constitutes being used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights. The Complainant refers to a page on the Respondent’s website, http://www.abelgratis.com/cgi-bin/your_domain.py, which it claims shows that the Respondent falls within paragraphs 3.a.i.A, 3.a.i.B, 3.a.ii, and 3.a.iii of the Policy.

In summary the Respondent made the following submissions:
1. The Domain Name is owned by AutoPage Web Design and its partner company Abel Internet.

2. The Domain Name has been very actively used since it was purchased by AutoPage Web Design many years ago

3. When AutoPage Web Design’s business was transferred to Abel Internet the website services were transferred to Abel Internet’s website

4. The Domain Name has always been used for e-mail for AutoPage Web Design and its clients.

5. The website www.autopage.co.uk merely shows an index page but AutoPage Web Design may at some stage in the future again want a separate website.

7. There are no grounds for holding that the owner of a .info domain name is entitled to claim the equivalent .co.uk domain name.

1. The respondent's reply is inaccurate as the Domain Name is owned by the Respondent "Max Ramyar t/a Abel Internet”.

2. The Complainant believes the Domain Name has recently been transferred to the Respondent from Abel Internet Ltd.

3. As a TAG holder the Respondent should be aware that the correct owner should be shown.

4. The Complainant suggests that AutoPage Web Design may have been created very recently and that it does not have a long trading history as the Respondent claims. Searches on the major search engines on the Internet today have failed to show any sign of a business called AutoPage Web Design in the UK. A call to BT directory enquiries today was unable to find any "Autopage" in the vicinity of Edinburgh or Glasgow.

5. The only active use of the Domain Name for a web site since 1997 has been as a referral to Abel sites. A search at www.archive.org shows no web presence since 1996.

6. The Complainant believes that it was only as a consequence of its complaint that www.autopage.co.uk now produces an empty index page instead of the auto-referral to www.abelgratis.co.uk that was in place at the time the complaint was lodged.

7. A visit to www.abelgratis.co.uk shows that autopage.co.uk is still 'for hire'. The offer at the top of the page says: "You can personalise your email, free web space and e-commerce solution with your chosen name and your choice of domain ending from Abel Gratis 'vast list of pre-registered domains. For example, rather than being restricted to using the email address joe@bloggs.abelgratis.com, you are also able to choose the email address joe@your-choice-of-from-the-list and the web address www.bloggs.your-choice-from-the-list."

8. The Respondent’s use for autopage.co.uk is to offer it for the use of his (potential) clients, making the third level domain (i.e. joe@autopage.co.uk in their example) readily available to any of its competitors for e-mail, and a fourth level as a web address.

9. The Complainant is using autopage.ltd.uk and autopage.info for two reasons. The primary reason is that it was unable to acquire autopage.co.uk in 1997 when it first tried to get it. At that time it was held by Abel Internet.

10. The Complainant claims the Domain Name because “it is the generic and descriptive name under which people expect to find our company” and to prevent any competitors causing confusion by misusing its registered company name.

General
The Complainant has to establish under paragraph 2 of the Policy that it has Rights as defined in paragraph 1 of the Policy in respect of a name or mark identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in paragraph 1 of the Policy. Rights, as defined, “includes but is not limited to rights enforceable under English Law”. Neither party has seen fit to produce any documentary proof to support their assertions and this makes it very difficult to assess the evidence but the burden to prove on the balance of probabilities both that it has the Rights and also that the Domain Name, in the hands of the Respondent, is an Abusive Registration fall on the Complainant.

While Paragraph 2 (a) of the Policy requires a Respondent to submit to the DRS if the Complainant asserts to Nominet that it has Rights, Paragraph 2 (b) of the Policy requires the Complainant to prove to me that it has Rights “on a balance of probabilities”. The burden on proving this is therefore clearly on the Complainant. Obviously where ownership of a relevant UK or Community registered trade mark asserted, it is easy for an expert to conclude that there is a right enforceable under English Law however, where an unregistered right is or a right not enforceable under English Law is asserted, the Complainant must not only assert that right but produce evidence to prove it.
The evidence in this case is very thin but the Complainant has made the uncontroverted assertions that it has been trading since 1995 as Autopage Limited, that the Complainant’s primary product is called “Autopage for Windows” and that customers and potential customers are unable to find the Complainant’s website trying to use autopage.co.uk, suggesting that such customers know it as “Autopage”.
On balance, the Complainant has shown that it has some goodwill and reputation in the name “Autopage” which would enable it to assert a passing off claim under English Law against another person seeking to use that name in respect to a similar business or product as that of the Complainant.
For the reasons given above, I find that the Complainant has proven, on a balance of probabilities, that it has Rights in respect of a name or mark, which is identical or similar to the Domain Name.

To be “abusive” according to the policy, the Domain Name must either have been:
i. 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. used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights
The Complainant has stated, and I find, that it has been trading since 1995. It also stated that the director of the Complainant used Autopage as a trading name and as the name of his primary product from about 1981. There is no evidence of the transfer of any goodwill in the name from the director to the Complainant. There is also no evidence of the date of the registration or the acquisition by the Respondent of the Domain Name. However, it was apparently registered by 1997, when the Complainant first approached the Respondent to acquire it. It is not clear who, if someone other than the Respondent, originally owned the name and when it was transferred to the Respondent. In the Complaint, the Complainant says that the ownership “has changed from time to time” but that the same person, presumably the Respondent, always controlled it. In its Reply, the Complainant states that it believes the Domain Name has recently been transferred to the Respondent from Abel Internet Limited. The Respondent states that the Domain Name is owned “by AutoPage Web Design and its partner company Abel Internet”, neither of which is the Respondent. The Complainant has done searches and can find no trace of the existence of “AutoPage Web Design”. According the Nominet whois search the Domain Name is owned by the Respondent, not the entities he refers to. The Respondent has produced no evidence to support his statements regarding the existence of AutoPage Web Design and, if it were necessary, I would have preferred the Complainant’s evidence on this point. However, without any corroborative evidence from either side, I am unable to form a view on when the Respondent registered or acquired the Domain Name. I am confident it was after 1981 have no idea whether it was before or after 1995.
I find, insofar as necessary, that the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts Rights, without any addition.

Under Paragraph 3 of the Policy is listed a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The Complainant has indicated that it wishes to rely on the following:

“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

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”

Because I have no clear evidence on dates or circumstances of registration or acquisition of the Domain Name, I am not able to find that the Domain Name was registered or 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 that it was acquired as a blocking registration against a name in which the Complainant has Rights.
It seems clear from the nature of the Respondent’s business that the Respondent acquired the Domain Name primarily for the purposes of renting the Domain Name and it is arguable that the Respondent profits from running its ISP business would exceed the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name. However, there is nothing before me to suggest that it was acquired for the purpose of renting it to “the Complainant or to a competitor of the Complainant”. It is true that a competitor of the Complainant might want to rent it, but there is no evidence that any such competitors exist or that they might want to rent or buy the Domain Name. If a Competitor were to acquire and use the Domain Name that might well be an Abusive Registration and/or passing off in respect of which the Complainant could take action either under the Procedure or under the laws relating to passing off.
As indicated above, the Complainant has stated the Domain name “is the generic and descriptive name under which people expect to find our company”. I don’t think the Complainant really intended to say that the Domain Name is generic and/or descriptive but it does appear to me (and I find accordingly) that the components of the Domain Name, “auto” and “page”, are generic and that in combination those components can be descriptive of a number of businesses.
Under the Policy, where the Domain Name is generic or descriptive and the Respondent is making fair use of it, that is not an Abusive Registration. The Policy goes on to state that if:

“i. the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts Rights, without any addition; and

ii. the Respondent is using or intends to use the Domain Name for the purposes of a tribute or criticism site without the Complainant's authorisation
then the burden will shift to the Respondent to show that the Domain Name is not an Abusive Registration.”
As the Respondent in this case has evinced no intention of using the Domain Name as a tribute or criticism site, the burden of proving that Abusive Registration remains with the Complainant.
I have looked at the Respondent’s web site as referred to by the Complainant and it appears to me that the Respondent’s primary business is that of an ISP which makes its money from its customers accessing the internet either by means of a modem, using 0808 or 0845 numbers or by using a broadband connection supplied by the Respondent. As an ancillary to this business, the Respondent provides a number of free e-mail and/or web addresses which a customer can choose from a list.
It seems from the evidence that the Respondent, before being informed of the Complainant's dispute in 1997, was already running this business and that the Domain Name was one of many which the Respondent used in connection with a genuine offering of his ISP services.
The Domain Names, which the Respondent offers on his web site, which can be used in combination with his ISP services, are, as far as I can tell, generic or descriptive and, therefore, I cannot find any basis for the Complainant’s suggestion the Respondent is engaged in a pattern of making Abusive Registrations.
The Complainant has produced some evidence that some customers or potential customers have mistakenly addressed e-mails to e-mail addresses which included the Domain Name and I have to consider whether this is as a result of the Respondent is using the Domain Name in a way which has confused these people into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. I believe that this provision is intended to deal with the situation where the Respondent uses the Domain Name in a way where the use of the Domain Name creates or adds to the confusion of the people. In this particular case, it is the fact that the Respondent rather than the Complainant owns the Domain Name which creates such confusion which might exist, not the use of the Respondent of the Domain Name.

The Complainant has failed to prove to me that, on a balance of probabilities, the Respondent, either registered or otherwise acquired the Domain Name 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 that the Respondent has used the Domain Name in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
In light of the foregoing finding, I direct that the Complaint in respect of the Domain Name AUTOPAGE.CO.UK be refused.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Autopage Ltd -v- Raymar (t/a Abel internet) [2003] DRS 745 (10 February 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/745.html Cite as: [2003] DRS 745