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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Andrew Mitchell & Co Ltd -v- Treasury Solicitor (BV) [2003] DRS 854 (30 March 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/854.html Cite as: [2003] DRS 854 |
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Nominet UK Dispute Resolution Service
DRS 00854
Andrew Mitchell & Co Ltd. -v- The Treasury Solicitor (BV)
Decision of Independent Expert
1. Parties:
Complainant: Andrew Mitchell & Co. Limited
Country: GB
Respondent: The Treasury Solicitor(BV)
Country: GB
2. Disputed Domain Names:
andrew-mitchell. co.uk and mitco.co.uk ("the Domain Names")
3. Procedural Background:
The Complaint was lodged with Nominet UK (“Nominet”) on 10 February 2003 and entered in to the system on 11 February 2003. Nominet received the hard copy on 12 February 2003. The complaint was unsigned and a signed submission was requested and was received on 19 February 2003 the deemed date the complaint was lodged. Nominet validated the complaint and notified the Respondent of the complaint on 19 February 2003 and informed the Respondent that he had 15 days within which to lodge a response. The due date for a response was 13 March 2003. By this time it was apparent that the actual respondent, namely Citypages Ltd as a company had been dissolved and The Treasury Solicitor (BV) had control of its assets. Hence the respondent appears now as the respondent. The procedure specifies 15 days and is silent as to whether these are straight consecutive days or working days. In the event, a response was received within the prescribed time limit from The Treasury Solicitor stating that it did not want to be involved in this matter. Mediation not being possible in these circumstances, Nominet so informed the Complainant and on 13 March 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 14 March 2003, the undersigned, Mr Alistair Abbott, ("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 and/or impartiality. He was subsequently selected by Nominet as the Expert for this case.
4. Outstanding Formal/Procedural Issues (if any):
The complainant is Andrew Mitchell & Co. Ltd. in respect of both Domain names in dispute. The complaint has been correctly lodged and complies with the requirements of The Procedure for Conduct of Proceedings under Nominet's Dispute Resolution Service. The appropriate declarations have been made and the document is signed
A Whois query reveals that the Domain Names andrew-mitchell.co.uk and mitco.co.uk were registered by Citypages Ltd. on 25 November 1998.
There was a response from The Treasury Solicitor (BV) within the prescribed time limit stating that they do not hold any papers on behalf of Citypages Limited (dissolved) and was therefore unable to make any form of response. In all the circumstances the expert concludes that the actual respondent and the respondents representative has not filed a response and the appropriate inference will be drawn in the later conclusions.
The Expert is satisfied that The Complainant has complied with all the required policies and procedures and the Respondent has been given every opportunity to lodge a response.
5. The Facts:
Mitco is part of the Andrew Mitchell & Co. Ltd. Group and is a leading supplier and fabricator of industrial textiles. Evidence to support this is available on the web site www.mitco.co.uk.
The Complainant has not produced evidence that Andrew Mitchell & Co. Ltd. is a registered trademark and the domain Name in dispute does not in its self describe the nature of the business conducted by Andrew Mitchell & Co. Ltd. UK Ltd. It is however the Domain Name is similar in all respects to the company name.
The complainant states that it instructed Citypages Limited to register the two Domain names in dispute in the name of Andrew Mitchell & Co. Ltd but that Citypages Limited registered both names in its own name and indeed we see them named as registrant in the whois query produced in evidence. The complainant states this as a fact and produces an invoice for web site development as evidence, which in itself does not confirm or support the contention. The question has to arise, would the complainant have invested a not inconsiderable amount of money to develop a web site it did not own? Equally is this the action of an organisation, which believed it was investing in its owned web site? Neither the actual respondent or the respondent deny this and the appropriate weight will be applied.
The andrew-mitchell.co.uk web site has remained dormant and has not been developed the mitco .co.uk site has been developed and is presumably the subject of the invoice produced in evidence. Clearly Andrew Mitchell Co. Ltd. and Mitco are established businesses well known and respected within their industry.
There is no suggestion here that the registration of this Domain Name forms part of a series of registrations by the respondent.
6. The Parties' Contentions:
Complainant:
The substance of the Complaint is The Respondents registration of the Domain Name is an abusive registration, having been registered in circumstances indicating that the respondent intended to at the time of registration to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the complainant.
The complainant further states that the Domain Name is identical or similar to a name or mark in which they have rights.
RESPONDENT
The Respondent has failed to respond to the Complaint other than a letter stating that it would not be responding to the complaint. The evidence produced by the Complainant is therefore unchallenged.
7. Discussion and Findings:
General
The Complainant claims a right to the Domain Name as being identical or similar to a name in which they have rights and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
There is no evidence that the Complainant owns the registered trademark Andrew Mitchell & Co. Ltd. but there is unchallenged evidence that Andrew Mitchell & Co. Ltd. are well known and recognised within their own industry and throughout the UK. The Domain Name does not specifically describe the business of Andrew Mitchell & Co. Ltd. UK Limited
The name of the Complainant company in which the directors have rights and the disputed Domain Name are so similar to convince the Expert that the complainant can justifiably bring this claim for Abusive Registration.
Abusive Registration
Is the Domain Name, in the hands of the Respondent, an Abusive Registration?
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.
"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;
There is no evidence to suggest this was the intention at the time of the original registration to attempt to sell the names back to the client but the question arises as to why they registered them in their own name having been instructed to register the names in the name of Andrew Mitchell & Co. Ltd. Evidence of this is not apparent but is not disputed by 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?
The Whois enquiry reveals that the respondent was the registrant of the Domain Name at the relevant time.
Although failure to develop a website in itself is not evidence of an Abusive Registration leaving a website dormant when viewed with the other factors indicated above would suggest that this is a factor that can be taken in to account when assessing the overall picture. This relates to the andrew-mitchell.co.uk site. The mitco.co.uk site has already been discussed in this context.
The evidence is clear that the Domain Name andrew-mitchell.co.uk in dispute is similar or identical to the complainant’s name and that Mitco is a significant part of The Andrew Mitchell Group and is therefore the name mitco.co.uk is similar or identical to a trading name.
Accepting the unchallenged evidence that the site mitco. co.uk site has been used to sell equipment allowing potential and actual customers to believe it was the mitco site part of the Andrew Mitchell Group. This would clearly show that paragraph 3 a ii has been contravened and that this is an abusive registration in the hands of the respondent.
There is clearly a case to answer as an abusive registration and the Respondent is now required to show;
4 i A They have used or has made preparation to use the Domain Name in the offering of goods or services.
The Respondent has not used or developed either site.
4 i B Been commonly known by the name or is legitimately connected with a mark which is identical or similar to the domain name.
There is no evidence of any connection in the name or description of the Respondents business with the Domain Names whereas the Complainant has the name Andrew Mitchell & Co. Ltd. commonly known.
4 i C Made legitimate non-commercial use of the Domain Name or (ii) The Domain Name‘s generic or descriptive and the Respondent is making use of it.
The Respondent has failed to show that he is making legitimate fair use of the Domain Name and therefore fails also on this point.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration.
8. Decision:
In light of the foregoing findings, that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Names
, andrew -mitchell.co.uk and mitco.co.uk be transferred to the Complainant.
ALISTAIR ABBOTT
30 MARCH 2003