2sms.com Ltd v Global Publications Ltd [2004] DRS 02052 (15 November 2004)

     Nominet UK Dispute Resolution Service

DRS  NO. 2052

2sms.com Limited -v- Global Publications Limited

Decision of Independent Expert

1.	Parties
Complainant:  		2sms.com Limited	
Address:		Trent House
			University Way
			Cranfield Tech Park
			Cranfield
			Bedfordshire
Postcode:		MK43 0AN
Country: 		GB

Respondent:		Global Publications Limited
Address:		Mara House
			5 Mara Place
			Campbell Park
			Milton Keynes
Postcode:		MK9 3FS
Country:		GB

2.	Domain Name
2sms.co.uk  (referred to as “the Domain Name”)
3.	Procedural Background
The Complaint was submitted to Nominet on 27 September 2004, and hard copies of the Complaint were received in full by Nominet on 30 September 2004.  On 5 October 2004 the Complaint was validated by Nominet. On the same day the Complaint was sent to the Respondent. The Respondent was informed that it had 15 working days, that is until 27 October 2004, in which to respond to the Complaint. 
No response was filed by the Respondent and so mediation was not possible.  On 8 November 2004, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).
On 11 November 2004, Antony Gold, the undersigned, (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept Nominet’s invitation to him to act as an Expert in this case.

4.	Outstanding Formal/Procedural Issues
No response
The Respondent failed to submit a response to Nominet within the time stipulated in paragraph 5 of the Nominet UK Dispute Resolution Service Procedure (“the Procedure”).  Paragraph 15 b of the Procedure states that where a party (in the absence of exceptional circumstances) does not comply with any time period laid down in the Policy or the Procedure, the Expert will decide the dispute based upon the Complaint.  Paragraph 15 c of the Procedure states, in summary, that if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or the Procedure, the Expert will draw such inferences from the party’s non-compliance as he or she considers appropriate. The Expert is not aware of any exceptional circumstances.
Deficiencies in the Complaint
The Complainant asserts that it has Rights in the name 2SMS and that the registration of the Domain Name by the Respondent is an Abusive Registration.  However, the Complainant has submitted only limited evidence to support its assertions.  In particular, the Complainant has not provided sufficient information for the Expert to determine that it has Rights in the name, 2SMS.
 “Rights” are defined both in the Policy and the Procedure as including, but not limited to, rights enforceable under English law. The sole evidence of the Complainant’s Rights set out in the Complaint is the assertion that “2sms.com Limited provide corporate text messaging on our website at www.2sms.com which is similar to the domain name in dispute” coupled with a printout of the ‘home’ and ‘products’ pages from a website at 2sms.com and a page from that site which provides comments from users of “2sms”.   
A complainant is expected to provide evidence in support its claim to have Rights in the name. Evidence of such rights would, for example, include information as to  the length of time the complainant has used the name. It may also include details of the volume of sales of services sold under the name, the amount of money spent advertising and promoting the name and samples of press releases, advertisements or articles in which the name appears or is used. 
No such information has been provided by the Complainant. In this case, the Expert has considered whether to request further statements or documents from the Complainant in order to give it the opportunity to bolster its case.   However, for the reasons set out below, the deficiencies in the Complaint are so substantial that the Expert has decided that it is inappropriate to do so.
A very significant amount of guidance is provided by Nominet on its website to prospective Complainants as to the nature of evidence which should be submitted to support a Complaint. In particular, it is stated that the Complaint;
 “ is the most crucial part of the complaint form: you have (up to) 2,000 words to state your case in the box provided. You are allowed to attach Exhibits in addition to that. Remember that the Independent Expert will make his/her decision on your case based on what is written here (plus any exhibits and evidence attached) - you must not assume that he/she will do any research into your case and you do not have any opportunities to bring in new evidence later.
You may have the opportunity to file a 'Reply' to the Respondent's 'Response', but the Reply is for answering new points that the Respondent raised, not raising new things.
In our experience the two main reasons why complainants fail in the DRS is:
They have not read the DRS Policy or the DRS Procedure or this help (if the case was filed before 25 October 2004 the Old Policy  and Old Procedure apply); or They do not provide any evidence to back up what they say.
It is vital that you refer to evidence in your complaint and then providing it in indexed exhibits or schedules to your complaint (3 copies). Doing this will massively increase your chances of success. Stating "and this can be provided on request" or "see our website" will not be enough.
In order to make a successful complaint you must prove BOTH of the following points on the balance of probabilities (which means that you must convince the Independent Expert that it is more likely that your case is correct than it is likely that the Respondent’s case is correct.):  a) That you have Rights in a name or mark that is identical or similar to the domain name(s);AND b) That the domain name(s), in the hands of the Respondent, is an Abusive Registration.
We recommend that you enclose the following information in your complaint.
Rights in a name or mark
1	 A description of the Rights you are asserting……
2)	If you are a business you should state:

a) 	How long you have been using the name or mark (evidence should be supplied).

b) 	What goods or services you provide under the name or mark (evidence should be supplied).

c)	 ……..
4) 	You should be clear about whether the rights existed before or after the date of registration of the domain name, and if they existed afterwards, explain why they are relevant.
5) 	If you are claiming rights in an acronym (e.g. Automaton Example Ltd claiming rights in AEL.co.uk) you should provide specific evidence of why that acronym is associated with you, and not merely a generic jumble of letters.
In the Example Complaint Form we have set out a series of number points which should help you structure your complaint. Whether you find these useful or not, please make sure that: (a)You explain the situation in detail; and (b) Provide evidence (as exhibits) to back up what you say…”
The emphasis given to certain  of the above phrases by the use of  bold font is Nominet’s, not the Expert’s.
These guidance notes do not form any formal part of the Policy and Procedure. However, the above extracts have been set out to show the lengths to which Nominet have gone in order to ensure that prospective Complainants are given every assistance to know how Complaints ought to be prepared.  This is not a point about form but about substance; the Expert needs a minimum amount of information about the nature of the Rights claimed by the Complainant in order to determine whether a finding can be made in its favour. This is the position even in cases where the Respondent has not filed a Response.
Previous decisions under the DRS provide some guidance as to how experts should deal with inadequately prepared Complaints. Both Chivas Brothers Limited v David William Plenderleith (DRS 292) and HIT Entertainment Plc v Tom Loosemore (DRS 1544) considered the circumstances in which it may be appropriate for the Expert to request further statements or information from the parties.   In the Chivas decision, the Expert considered whether the Complaint should be dismissed out of hand on the basis that, on the face of the Complaint, the Complainant did not possess the rights claimed by it, or whether the Expert should conduct an online check at the Trade Marks Registry to verify whether there had been assignments of the trade marks.  The check would only take a few minutes.  The Expert was not prepared to adopt the third option which was to incur further time going back to the Complainant, inviting it to improve its position.   The Expert commented that experts will be “getting tough” in relation to defective complaints.  However, acknowledged that, in all other respects, the Complaint was a full and properly prepared document and, on that basis, he undertook an on-line search to ascertain the missing information.
In the HIT Entertainment decision, the Expert distinguished the complaint from Chivas as the Complaint in HIT was not, in the Expert’s view, a properly prepared document.  In HIT, the Expert noted that “…some of the trade marks cited appear to have no relevance whatsoever to the name under dispute, others are cited but no copy certificates are produced, the nature of the Complainant’s activities is not specified…”.  
In the current case, the Complaint is also not properly prepared.  The Expert agrees with the view of the experts in the Chivas and HIT Entertainment decisions and has concluded  that it is not appropriate to invite the Complainant to improve its position by way of using Paragraph 13 of the Procedure to obtain further information from it.   In the view of the Expert, the Complainant is expected to prove its case on the balance of probabilities and must put forward the best case which it can in the Complaint, as more fully explained on Nominet’s website.  It is not the Expert’s role to undertake this exercise for the Complainant.  In these circumstances, the Expert has not conducted any further searches to assess or verify the Rights of the Complainant in the name and the Expert will not invite the Complainant to improve its position by seeking further information from it.  Accordingly, the Expert will consider the merits of the Complaint on the basis of the information provided by the Complainant.
5.	The Facts
In the absence of a Response, the Expert accepts as accurate the Complainant’s account of the background giving rise to its Complaint.  The material facts appear to be that:

i.	The Complainant operates a website at www.2sms.com.   
ii.	The Complainant provides corporate text messaging services.
iii.	The Domain Name was previously registered by the Complainant and, in error, the Domain Name was not renewed.
iv.	The Domain Name now resolves to the website, www.a1ringtones.com, which is operated by the Respondent.
v.	The Complainant does not provide ringtones and logos for mobile phones.
vi.	The Complainant has received complaints on a freephone number which is provided on its website at 2sms.com that ringtones and logos which have been purchased via the website to which the Domain Name resolves have not been supplied, although payment has been made by the customers.  
vii.	The Complainant states that it believes that the Respondent has registered the Domain Name “ … to benefit from the customer base and service levels associated through the Complainants’ own www.2sms.com website.  The Complainant believes that its customers will be confused by the similar name in similar industry space, and will lose business as a result …”. 
6.	The Parties’ Contentions
Complainant

The Complainant’s case is that the Domain Name (i) is identical or similar to a name or mark in which the Complainant has Rights, (ii) in the hands of the Respondent is an Abusive Registration as the Respondent has used it 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. 

Respondent

The Respondent has not filed a response.

7.	Discussion and Findings
Requirements which must be satisfied in order for the Complaint to succeed
In order to succeed, the Complainant must prove, on the balance of probabilities, that:-
•	it has Rights in respect of a name or mark which is identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy); and
•	the Domain Name in the hands of the Respondent, constitutes an Abusive Registration (paragraph 2(a)(ii)).
Paragraph 2a(i) - the Complainant’s Rights
The Complainant asserts that the Domain Name is identical or similar to a name or mark in which it has Rights.  The Expert accepts that the Domain Name is identical or similar to, the words 2SMS, it being usual to ignore to “.co.uk” suffix (inevitable in the context of a domain name) as being of negligible, if any, significance.
The meaning of Rights under the Policy includes rights enforceable under English law. Where a Complainant has relevant registered trade marks, it is usual for it to refer to them as evidence of its Rights in a particular name.  The only documentation with which the Expert has been provided by the Complainant, beyond the short Complaint itself, are two pages from a website at 2sms.com and one page from the 2sms.com website which contains comments on the 2sms service,  evidently provided by customers of the Complainant. 
These documents do not establish that, on a balance of probabilities, the Complainant has Rights in a name which is identical or similar to the Domain Name.  No information is provided about the length of time that the Complainant has used the name 2sms or the extent and nature of the use made by it. More importantly, there is no evidence which informs the expert as to whether the 2sms product to which the customers have referred is supplied solely by the Complainant or whether it is a generic name which relates to a service available from a number of suppliers. 
It is inappropriate for the Expert to make assumptions about the nature and extent of the Complainant’s Rights. It is for the Complainant to make its case, not for the Expert to do so. The Expert is required to decide the Complaint based on the parties’ submissions, the Policy and the Procedure (paragraph 16 a of the Procedure).  Having regard, in particular, to the requirements of paragraph  3 b (v) and 3 b (x) of the Procedure (set out above), the Expert does not find that the Complainant has established that, on a balance of probabilities, it has Rights in the name 2sms. 
Paragraph 2a(ii) - Abusive Registration
Strictly, a determination that the Complainant has not established that it has Rights in a name similar or identical to the Domain Name is determinative of the Complaint.  Nonetheless, for the sake of completeness, it is sensible to consider the limited submission made by the Complainant in relation to the issue of Abusive Registration.
Abusive Registration is defined in paragraph 1 of the Procedure as:-

“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.”
A non-exhaustive list of factors which may constitute evidence that the Domain Name is an Abusive Registration are set out at paragraph 3 of the Policy.  Whilst the list of factors referred to above is not exhaustive, and the definition of what constitutes an Abusive Registration is not restricted to the matters outlined at paragraph 3 of the Policy, it is nonetheless for the Complainant to seek to explain why the Domain Name in the hands of the Respondent should be regarded as an Abusive Registration.
Whilst it is not clear from the Complaint, it appears that the Complainant is asserting that the registration of the Domain Name is an Abusive Registration pursuant to paragraph 3a.ii of the Policy, namely that the Respondent has used it 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 Domain Name resolves to a site, a1ringtones.com.  In the Complaint, it is stated that “The domain name www.2sms.co.uk resolves to www.alringtomes.com. It is the Complainants’… belief that customers of a1ringtomes.com then visit the Complainants’ [sic] website of www.2sms.com.. The Complainant has received telephone contact via the Complainant’s freephone number supplied on our www.2sms.com website.  These calls have been complaints that ringtones and logos purchased via the www.2sms.co.uk website have not been supplied although payment has been made …”.  The assertion is made that “The Complainant believes that the registration of www.2sms.co.uk to provide mobile phone products by the Respondent has been made to benefit from the customer base and service levels associated through the Complainants’ own www.2sms.com website”. 

The Complainant has not provided any details of the length of time is has used the name. It is also unclear why customers of a1ringtomes.com should then visit the Complainant’s website at www.2sms.com. No information is given about whether the Complainant has sought to approach the Respondent in relation to its conduct and, if so, with what result. In the light of the Expert’s finding in relation to Rights, it is not necessary for the Expert to make a formal finding in relation to the issue of whether the Respondent’s registration of the Domain Name is abusive. However, for the reasons given above, there is real doubt as to whether the Complainant would have surmounted this hurdle.  

8.	Decision
The Expert does not find that the Complainant has been able, on the balance of probabilities, to satisfy the requirements of paragraph 2 of the Policy and, as a consequence, the Complainant’s request for transfer of the Domain Name is refused. 
Antony Gold		
……………………………………….		Date	………………………………