mTrack Services Ltd v Newman [2004] DRS 02021 (09 November 2004)

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Cite as: [2004] DRS 2021, [2004] DRS 02021

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    mTrack Services Ltd v Newman [2004] DRS 02021 (09 November 2004)

    DRS 02021

    NOMINET-UK DISPUTE RESOLUTION SERVICE

    B E T W E E N :

    mTRACK SERVICES LIMITED

    Complainant

    - and -
    L.P. NEWMAN

    Respondent

    ___________________________________________________
    DECISION OF INDEPENDENT EXPERT
    ___________________________________________________

    Appointment

  1. I was appointed, by a letter dated the 26th October 2004 to decide, under the DRS Procedure, a complaint of Abusive Registration. I am required to give my decision by the 11th November 2004.

    2. Terminology

  2. In this Decision

    3. Materials

  3. I have been provided with the following materials:

    4. (1) Dispute History
    (2) Complaint
    (3) Companies House print outs
    (4) Standard correspondence between Nominet UK and the parties
    (5) Non standard correspondence between Nominet UK and the parties
    (6) Register entry for kidsok.co.uk
    (7) Nominet WHOIS query result for kidsok.co.uk
    (8) Printout of website at www.kidsok.co.uk
    (9) Copy of Nominet UK's Policy and Procedure

    The Complaint

  4. The Complainant asserts that the Domain Name in the hands of the Respondent is an "Abusive Registration".

  5. The terms of the Complaint, which is dated 9 September 2004 and is signed on behalf of the Complainant by a Mr Stent, so far as material, are as follows:

    6. "mTrack Services Limited offers a service in the UK known as "KidsOK". We have a Trade Mark in that name. We also own, through common shareholder/directors, the company KidsOK Limited. We are unable to contact the current registrant, and have been informed by Eclipse Networking Limited, the registrant's agent, that they are also unable to contact the registrant. We are seeking to have this domain name transferred to ourselves. We currently use the domain name www.kidsok.net and believe that there may be confusion amongst our customers who will automatically go to kidsok.co.uk and not find us there."
  6. Mr Stent's assertion as to the ownership of a Trade Mark in "KidsOK" is substantiated by the production of a copy of the relevant registration certificate, which shows that the registration was effective on 13 January 2004. The incorporation of KidsOK Limited is also substantiated by a copy of the Certificate of Incorporation, which is dated 16 January 2004, but this is immaterial since a Complainant cannot rely upon rights other than its own.

    7. Response

  7. No Response has been provided by or on behalf of the Respondent. The complaint not being challenged, therefore, I am entitled to, and will, assume that the facts asserted in the complaint are true. Indeed, there is no reason to doubt the veracity of those asserted facts.

    8. Jurisdiction

  8. Under paragraph 2a of the Policy a Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that:

    9. "i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
    ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration".
  9. Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

    10. Rights

  10. Paragraph 1 of the Policy defines "Rights" as including "rights enforceable under English law". This definition is subject to a qualification which is not material.

  11. The Complainant plainly has rights enforceable under English law in respect of its registered trade mark, namely "KidsOK".

  12. The Domain Name includes "co.uk" and therefore it is not identical to the Complainant's trade mark. Nevertheless it is "similar" to it and I so find.

    13. Abusive Registration

  13. Paragraph 1 of the Policy defines "Abusive Registration" as:

    14. "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 unfairly detrimental to the Complainant's Rights."
  14. The Policy provides:

    15. "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 e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration."
    [Emphasis added]
  15. On 31 October I wrote to Nominet in the following terms:-

    16. "The material before me suggests that the Respondent first registered the Domain Name in January 2000. There is no evidence before me that the Complainant
    (1) had rights in "KidsOK"; or
    (2) used the name "KidsOK"
    prior to 2004. Thus it could be argued that the registration of the Domain Name in January 2000 could not have taken unfair advantage of or been unfairly detrimental to the Complainant's Rights because the Complainant had no relevant rights at the date of the registration - see Paragraph 1(i) of the DRS Policy.
    Again, the Complainant has not provided any evidence of the Respondent making any specific use of the site to which the Domain Name is registered. Hence it could be argued that the Domain Name cannot be said to have "been used in a manner which took unfair advantage or was unfairly detrimental to the Complainant's Rights"
    Thus there is an argument for saying that this could not be an Abusive Registration.
    The purpose of this letter is to enable the Complainant and the Respondent to comment on the above arguments and, indeed, to submit any further evidence which they may wish to submit e.g. to provide further information as to when the name KidsOK was first used, and in what manner, or as to whether or not the Respondent is making or has made any specific use of the site in question, and, if so, what use."
  16. I set out a timetable for any response from the parties. My letter was forwarded to the parties by Nominet.

  17. Mr Stent responded, in a letter dated 1 November 2004, as follows:-

    18. "I agree that the respondent first registered the name KidsOK.co.uk in the year 2000 and we had no rights until 2004. The respondent also has not utilised the site and therefore cannot be said to have used it in any manner detrimental to ourselves.
    The point of this process, however, is that we do now have a company called KidOK Limited and have a Trade Mark in the name KidsOK and we would like to use the domain name KidsOK.co.uk.
    We have tried to approach the respondent to negotiate a release of the name without success, our letters were returned 'Gone Away' and we have spoken to the agent who registered the name for them. Their agent is also unable to reach the respondent, and in fact has renewed their registration without being able to contact them AND without being paid to do so. They have told me that they intend at some point in the future, to release the domain name but they cannot tell me when they will do so.
    They suggested that if I wanted to move this along quicker, then I should approach you and go through this process in order to reach a conclusion more quickly.
    This is why I have taken the action that I have done."

  18. As can be seen, therefore, the evidence before me indicates unequivocally that the Domain Name was registered to the Respondent on 27 January 2000 i.e. before the date of registration of the Complainant's trade mark. Thus there is no evidence before me that at the time when the registration took place the Complainant had any rights in "KidsOK" or was even using that name for any purpose. Hence, it cannot be said that "at the time when the registration or acquisition took place" that it "took unfair advantage of or was unfairly detrimental to the Complainant's Rights". Nor is there any evidence that the Domain Name has in fact been used by the Respondent at all, let alone in a manner which has taken "unfair advantage of" or been "Unfairly detrimental to the Complainant's Rights."

  19. It appears that all attempts to contact the Respondent have failed. It may well be that the Respondent in fact has no present or continuing need to make use of the Domain Name. Nevertheless, the evidence at present available simply does not establish an "Abusive Registration" within the definition in the Policy.

    20. Decision

  20. For the reasons given above, I find that the Domain Name, in the hands of the Respondent, is not an Abusive Registration.

  21. The Complainant has requested the transfer of the Domain Name. On the basis of the material before me it is not within my power to direct that such transfer should be made.

  22. This is a conclusion which I arrive at with regret - since on the information at present available it does seem to me that the Respondent has no continuing interest in the Domain Name, and the Complainant does now have a legitimate interest in it.

    23. Signed: ……………………

    David Blunt QC

    9 November 2004

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URL: http://www.bailii.org/uk/cases/DRS/2004/02021.html