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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Markel Corporation -v- RedLeg Interactive Media [2002] DRS 1423 (15 February 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1423.html Cite as: [2002] DRS 1423

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Nominet UK Dispute Resolution Service

DRS 01423

Markel Corporation -v- Redleg Interactive Media

Decision of Independent Expert

1. Parties:

Complainant:

Markel Corporation

Country:

GB

Respondent:

Redleg Interactive Media

Country:

GB

2. Domain Name:

markel.co.uk ("the Domain")

3. Procedural Background:

A brief chronology is as follows:

24 November 2003:

Complaint lodged with Nominet electronically

24 November 2003:

Hardcopy complaint received by Nominet

27 November 2003:

Nominet forwarded complaint to Respondent

4 December 2003:

Hardcopy response received

4 December 2003:

Nominet forwarded response to Complainant

15 December 2003:

Reply lodged with Nominet electronically

16 December 2003:

Hardcopy reply received

28 January 2004:

Fee received from Complainant

On 3 February 2004 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that 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:

According to information supplied by Nominet, the response was not filed in electronic, as well as hard copy, form as required by paragraph 5c of Nominet's DRS Procedure ("the Procedure"). However, there has been no prejudice to the Complainant and in any case the Complainant has not objected. I will therefore disregard this minor irregularity. 

5. The Facts:

The undisputed facts are as follows.

The Complainant is a US corporation that was established in the 1920s by Sam Markel. It underwrites insurance and reinsurance business under the brand name "Markel". The Complainant is widely known as "Markel" and is referred to in the trade, press releases, and generally, by that name. The Markel family remain involved: Anthony Markel is President and Chief Operating Officer and Steven Markel is Vice Chairman. The Complainant was floated on the New York Stock Exchange in 1986 and has grown from a handful of employees and a market value of $8 million to 1,600 employees and a market value of almost $2 billion in 2001.

Markel International Limited ("MIL"), the Complainant's UK subsidiary, underwrites a diverse portfolio of property, casualty, marine and aviation insurance and reinsurance business on a worldwide basis. MIL is the holding company for four wholly-owned principal operating entities in the UK, all of which operate in the UK using the "Markel" name: Markel International Insurance Company Limited, Markel Capital Limited (a corporate capital provider at Lloyds) and Markel Syndicate Management. The latter manages the composite Markel Syndicate 3000 which had a capacity of over $430 million in 2003.

The Complainant has a figurative Community Trade Mark no 001514025 registered 17 February 2000 in classes 9, 35 and 36 including insurances services. The mark consists of a logo plus the word MARKEL. The Complainant has a similar US trade mark registered 6 January 1992.

The Complainant established its own website at markelcorp.com in May 1995. The Complainant and / or its subsidiaries have also registered the following domain names: markelintl.com, markelinsurance.com, markelcorporation.com, markelsocialservice.com, markelsouthwest.com, markelmedical.com, markelmarine.com.

The Respondent is in fact a trading name used by Martin Gelder. According to the website at www.redleg.co.uk the Respondent provides services which include interactive media consultancy, design and production.

The Respondent registered the Domain on 29 December 1999.

In October 2001 the Complainant first became aware of the Domain and corresponding website which diverted to a webpage at www.redleg.co.uk/markel ("the Website"). A printout of the Website provided by the Complainant shows a simple graphic and no text. 

On 31 October 2001, Barlow Lyde & Gilbert solicitors ("BLG") sent a cease and desist letter on behalf of MIL to the Respondent seeking transfer or withdrawal of the Domain.

The Respondent replied on 25 November 2001 regarding "my client's website at www.markel.co.uk". He said that "his client" was not interested in withdrawing or transferring the Domain.

On 25 February 2003, BLG wrote again to the Respondent seeking transfer of the Domain for £250.

Thereafter the Website changed to read as follows (according to a 25 April 2003 printout):

"Welcome to markel's Home Page! Excuse the mess... this site is UNDER CONSTRUCTION!  What you will find here...Gaming Stuff!"

There followed what look like references and links to some computer games and then this:

"About the Creator... I'm a programmer, writer, musician and DJ. Don't get me wrong, because I don't do any of these particularly well. I do enjoy them all, though. My passion is creative work and it's what I do best. I created "markel" over twenty years ago. Since then he has been responsible for many roleplaying games as a Games Master and many more as a Player. Alongside this he writes a lot, tries his hand at anything from music to movie making, and generally tries to make the world a more interesting place. If you like what you see, let everyone know. If you don't - let him know! This site created and maintained by Mark Ludford. email me here: markel.

  "(tm) All trade marks and rights of the respective authors/creators respected. Sometimes I find stuff and forget where I got it from so, if it's yours, LET ME KNOW and I will sort it out. I'm also trying to run some games here, and this is the perfect medium for information dissemination... or something like that. Bottom line is that the copyrighted stuff I put up here is to make it easier for my fellow players. If you steal it and someone has a go at you, don't blame me! This site is mostly for personal and fan use (got the idea yet?). Some of it is actually mine, too, so please don't try to rip a poor man off! Thanks."

On 20 May 2003 BLG emailed Mark Ludford via the email address on the Website ([email protected]) seeking transfer of the Domain for £250. That email bounced back.

BLG chased the Respondent on 21 May 2003.

On 28 May 2003 the Respondent replied that in December 2002 ownership of "the site" had been transferred to a Mr M Ludford with an address in Hillingdon.

Nominet stated in an email of 5 June 2003 that it has not received or issued any transfer paperwork concerning the Domain.

BLG wrote to the Respondent on 9 June 2003 saying that enquiries with Nominet revealed that the Respondent remained the registrant of the Domain. On the same date BLG also wrote to Mr Ludford at the Hillingdon address in similar terms to the email of 20 May 2003.

In a letter (wrongly) dated 28 May 2003, the Respondent responded by reiterating that it was no longer the registrant and suggested that the matter be taken up with Mr Ludford.

On 10 July 2003 BLG informed the Respondent that further enquiries with Nominet showed that that the Respondent was still the registrant.

On 18 July 2003 the Respondent wrote to Nominet asking for confirmation that its transfer documents had not been received and asking about the correct transfer procedure. On 25 July 2003, he advised BLG about the enquiry.

On 18 August 2003 the Respondent wrote to Nominet confirming that he wished to transfer the Domain to Mr Ludford but that he did not have the original transfer certificate as this has been returned to Nominet in December 2002.

6. The Parties' Contentions:

Complaint:

1. The Complainant has rights in the 'Markel' mark. The Complainant has tremendous reputation and substantial goodwill in the name "Markel", both in the UK and throughout the world. The Complainant's insurer financial ratings demonstrate the excellent regard in which it and its subsidiaries are held. The Complainant has invested heavily in creating a strong presence in the marketplace and in the development of goodwill.

2. The Complainant has registered trademarks in relation to the Markel name.

3. The Complainant's intellectual property rights are infringed by the use of the Markel name within the Domain.

4. Complainant is unaware of any evidence that the Respondent has rights in the Markel mark. To the Complainant's knowledge the Respondent has not been commonly known by, nor legitimately connected with, the name Markel. The Complainant knows no reason why the Respondent has used the Markel mark nor why it will not transfer the Domain.

5. In correspondence the Respondent has referred to other registered domain names using the Markel mark as justification for its own use of the mark. The registration of those domain names gives no legitimacy to the Respondent's use of the name Markel. Most, if not all, such sites relate to businesses/individuals whose name incorporates 'Markel' giving them practical reason to utilise domain names incorporating the name (if not legally justifiable).

6. The Respondent claims it is not responsible for the website yet the Domain's website is sub-hosted by another website of the Respondent. The Respondent therefore appears to be connected with the website.

7. The Domain has been used in a manner which takes unfair advantage of the Complainant's rights. Circumstances indicate that the Respondent is using the domain name in a way which has confused people or businesses into believing that the Domain is registered to, operated or authorised by or otherwise connected with the Complainant. The likelihood of confusion in the use of a name identical to the Complainant's mark is self-evident. As a matter of common sense the Domain is confusingly similar to the Complainant's trademarks.

8. Domain names including a distinctive element give rise to a greater level of expectation than purely generic domain names. The subject domain name is not generic or descriptive, consisting solely of the word "Markel" which is well known as the mark of the Complainant. Interactive Prods (326 F.3d 687) 6th Circuit 2003, said that the use of another's trademark in one's domain name usually violates trademark law. Panavision International 141 F.3D 1316 (9th circ 1998) held that use of trademarks in domain names creates a high likelihood of consumer confusion. Should the average internet user enter the Domain into a browser they will have a legitimate expectation that the website will have some connection with the Complainant. When presented with the Domain website they cannot fail to be confused.

9. In determining confusion it is the name which is to be considered rather than the content of the website.

10. The Respondent has access to the clearest evidence of confusion i.e. e-mails and traffic mistakenly directed to the Domain's website. The Complainant has however been informed that when internet users have attempted to access its website yet been unsure of the actual address of the Complainant's website(s) some users have, quite naturally, guessed the website address of the Complainant to be "markel.co.uk", and have been surprised to find that the result is the Respondent's website rather than one operated by the Complainant.

11. Confusion has been, and will continue, to be caused by the use of the Domain and people are likely to associate the Domain and website with the Complainant.

12. Victoria's Cyber Secret (l61 F Supp 2d 1339) 2001 USD found that "the taking of an identical copy of another's famous and distinctive trademark for use as a domain name creates a presumption of confusion amongst internet users as a matter of law."

13. Confusion arises here before the Respondent's website has even been accessed having regard to the very substantial goodwill and reputation in the Complainant's name and also to the decision in the "passing-off" case of One in a Million Limited (1999 1 WLR 904). The Court of Appeal's reasoning that relevant confusion was caused before gaining access to the registrant's website should be applied here. Aldous J held (page 924) that a whois search showing One in a Million Limited as the registrant of marks&spencer.co.uk was a false representation constituting passing off as a substantial number of persons would conclude that One in a Million Limited must be connected with or associated with Marks & Spencer plc.

14. In the UDRP decision of Leonard Cheshire Foundation v. Drake it was decided that it was the confusingly similar nature of the domain name to the trade mark of the Complainant which was relevant, and that confusion had occurred regardless of the fact that once visitors actually arrived at the contested site its true nature became apparent to most.

15. As the website in its current format displays the word "Markel" clearly on the homepage it is probable that anyone accessing the site will, at least initially, believe the site to be connected with the Complainant. Whilst the site states that it is created and maintained by Mark Ludford, either the Respondent, Mark Ludford or a subsequent registrant may at any time change the content in any way it pleases, including the removal of this information.

16. Before being informed of the Complainant's dispute the Respondent has not used the domain name in connection with a genuine offering of goods/services The Respondent was first informed of the Complainant's dispute in October 2001. The extremely basic nature of the Respondent's website prior to the changes which occurred following BLG's letter of 25 February 2003 shows that the Respondent had not used the domain name in connection with a genuine offering of goods/services prior to being informed of the Complainant's dispute.

17. The Complainant is unaware of any reason why the Respondent should wish to use the Markel name and takes the refusal of the Respondent to accept the Complainant's offers to purchase the domain name as evidence of bad faith.

18. The use of the Domain by the Respondent constitutes an actionable trademark infringement and also passing-off, damaging the Complainant's reputation. The Complainant is concerned about the paragraph on the website which starts "all trademarks and rights of the respective authors/creators are respected. Sometimes I find stuff and forget where I get it from so if it is yours, let me know I will sort it out...". This shows that the Respondent and/or Mr Ludford anticipate that the content of the website infringes the intellectual property rights of others, a wholly unsatisfactory situation - the Complainant does not wish to be associated with any such infringement.

19. Further, the e-mail address given for Mr Ludford on the website does not function and Mr Ludford has not responded to the Complainant's letter regarding the infringement of its intellectual property rights. The Complainant therefore has no reason to believe that the Respondent/Mr Ludford will respond to infringement concerns raised by others. To allow the Respondent's use of the Domain to continue damages the Complainant and its reputation and will cause irritation and disappointment to internet users expecting to obtain information about/do business with the Complainant.

Response:

1. The Domain was registered by Gelder with a view to transferring it to Mr Ludford at a later date. This was initially done by transferring the registration certificates to Nominet in December 2002. It became clear that the transfer had not taken place, so in August 2003 a transfer application was resubmitted. It had always been Mr Gelder's intention to transfer ownership to Mr Ludford.

2. Mark Ludford is a British citizen living and working in the UK. He is a programmer, writer, musician and DJ. He has been commonly known both for social and for business purposes as Markel for over 25 years  . The name is a derivation of his forename and first letter of his surname and is used to the almost total exclusion of this given name. As a result many of Mr Ludford's business and social contacts are not aware of his surname. [The Respondent exhibits a business card with the name "markel" and some articles by "Markel" (who is not identified) dating from 1990]

3. Neither Mr Gelder nor Mr Ludford were aware of the Complainant when they registered the Domain in December 1999. Mr Gelder's first contact with the Complainant was in October 2001.

4. The Domain was not acquired with the intention of transferring it to the Complainant or any of its competitors or of blocking its use by the Complainant or of affecting its business in any way. It has not been used in any way which may confuse anyone that it is operated by the Complainant.

5. Martin Gelder has registered over 30 domains for himself and numerous clients. None were abusive registrations.

6. The Domain initially led to a holding page which provided contact information but has since developed into a fully operational site holding over 50 files in a hierarchical structure.

7. The response was prepared jointly by Mr Gelder and Mr Ludford.

Reply:

1. It is irrelevant that Mr Mark Ludford claims to have been associated with the name Markel for the last 25 years. RedLeg Interactive Media and not Mr Ludford is the registrant of the Domain. The Respondent has no claim to the use of the Markel mark.

2. It is also irrelevant that that neither Mr Gelder nor Mr Ludford were aware of the existence of the Markel Corporation when the domain was registered in December 1999 and that Mr Gelder has registered over 30 domain names for himself and numerous clients during the last six years of operating under the name RedLeg Interactive Media and that none of these have been abusive registrations.

3. As demonstrated in the Complaint, the Respondent's statement that the domain name 'has not been used in any way which may confuse anyone that it is operated by Markel Corporation' is incorrect.

4. Regarding the Respondent's contention that registration certifications were returned to Nominet in December 2002 and that in August 2003 a transfer application was re-submitted, the Whois search still show the Respondent as the registrant.

7. Discussion and Findings:

General

To succeed, the Complainant has to prove in accordance with paragraph 2 of Nominet's DRS Policy ("the Policy) on the balance of probabilities, first, 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 and, second, that the Domain, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

The Complainant has produced evidence of two registered trade marks: a Community Trade Mark ("CTM") registered 17 February 2000 and a US trade mark registered 6 January 2002.

The CTM is not identical to the Domain as it is a device and word mark. However, the word element is most prominent and so the trade mark is in my view similar to the Domain.

I do not take the US trade mark into account as the Policy is concerned with UK domain names.

The fact that the CTM was registered after the Complainant acquired the Domain on 29 December 1999 is irrelevant as DRS cases have established that rights need only be established as of the date of the complaint.

As to common law rights, the Complainant does not provide any evidence in support of the assertion that it (as opposed to group companies) has goodwill in the UK. Nor is there evidence of the group companies' UK activities either as to extent (eg in terms of turnover or marketing spend) or length (other than a press release indicating that one group company - Markel (UK) Limited - has had offices in Leeds for 12 years).

However, while the Complainant could have done more, for the following reasons I am prepared to conclude that the Complainant has common law rights and that no distinction should be drawn for these purposes between the Complainant and its group:

1. the hurdle of establishing rights is a low one;

2. it is apparent that the Complainant's group does undertake significant trading activity in the UK; and

3. the Respondent has not taken issue on any of these points.

By virtue of its registered trade mark and its common law rights, the Complainant has established rights in a name which is identical or similar to the Domain. 

Abusive Registration

Is the Domain an abusive registration in the hands of the Respondent? Paragraph 1 of the Policy defines "abusive registration" 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."

The Complainant does not rely on the first limb of the definition of abusive registration. It is therefore unnecessary for me to consider the Respondent's explanations of the purpose for which it Respondent registered the Domain.

The Complainant bases its complaint on the second limb - ie concerning use of the Domain - and in particular paragraph 3aii of the Policy (one of the non-exhaustive factors which may be evidence that the Domain is an abusive registration):

" 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"

The Complainant does no more than assert that it has been informed that internet users, unsure of the location of the Complainant's website, have wrongly guessed the address to be the Domain and been surprised to find the Respondent's site. This does not satisfy me the use "has confused" people or businesses as the claim is based only on anecdote and there is no supporting evidence such as statements from internet users. (This leaves aside the question of whether the circumstances suggested by the Complainant could in fact amount to confusion and, if so, whether such confusion has been caused by the Respondent's use of the Domain).

That is not the end of the matter as the paragraph 3a factors are non-exhaustive.

The Complainant invokes likelihood of confusion and makes very lengthy and detailed submissions based amongst other things on passing off, American trade mark law and the UDRP. I am, however, only concerned with abusive registration.

Even if there is a likelihood of confusion (which is far from certain), the Complainant does not suggest let alone provide evidence that the Respondent intended to create such likelihood ie as opposed to it arising simply because the Domain and trade mark happen to be similar but where the Respondent is using the Domain genuinely. In my view the latter would not be an abusive registration, the definition of which calls for unfair advantage or detriment.

I do not conclude from the mere fact the Domain includes the Complainant's trade mark that the Respondent set out to cause confusion. In its reply, the Complainant has not put in issue the association of Mr Ludford with the name Markel or that Mr Gelder registered the Domain on behalf of, or with a view to transfer to, Mr Ludford (although the Complainant does maintain, presumably as a matter of trade mark law, that the Respondent "has no claim to use of the Markel mark").

It is clear that the word Markel is not exclusively associated with the Complainant. Indeed the Complainant accepts that there are various other businesses and individuals whose name incorporates Markel and which are using domains including that name (although it does not accept their legal justification for doing so).  Also I note that the domain markel.com is not owned by the Complainant but by a company offering Markel as a shared surname-based email or website address.

It is of course possible that the Respondent acquired the Domain genuinely but later set out to create a likelihood of confusion with the Complainant. However, there is nothing whatever on the Website, nor is there any other evidence, which indicates that the Respondent (or Mr Ludford) did in fact do so. The most that can be said is that it appears that to some extent the Website text is designed to support Mr Ludford's connection with the name Markel.

The Complainant expresses concern about future content of the Website. However, I cannot reach any conclusion now based on what might be on a website in the future. The Complainant may (subject to the applicable criteria) be able to bring fresh DRS proceedings in future if the use becomes abusive.

I do not place any weight on the the failure of Mr Ludford to respond to the Complainant's communications (as Mr Ludford is not the Respondent and the Respondent has appeared in these proceedings). Nor do I consider it relevant that the the Respondent has refused to accept the Complainant's offers to purchase the Domain. 

I conclude that the Complainant has not proved that on the balance of probabilities the Domain is an abusive registration.

8. Decision:

No action should be taken in respect of the Domain.

______________________                                       

Adam Taylor                                                                 

Date

11