Charterhouse Communications Group Ltd v OTM Integrator [2004] DRS 1729 (5 July 2004)

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A complaint (“the Complaint") was received in full by Nominet on 30 April 2004. Nominet forwarded the Complaint to the Respondent on 6 May 2004 and notified it that it had 15 working days (i.e. until 28 May 2004) to respond. The Respondent failed to respond. Mediation not therefore being possible Nominet notified the parties on 3 June 2004 that the Complaint would be referred to an independent expert upon payment of the requisite fee. The Complainant paid the fee on 14 June 2004 for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy").

On 16 June 2004 and in accordance with paragraph 9 of the Nominet Dispute Resolution Service Procedure ("the Procedure") I, Simon Chapman, ("the Expert") confirmed to Nominet that I was impartial and independent and knew of no reason why I should not accept an appointment to act as Expert in this matter.

I was subsequently appointed by Nominet on 17 June 2004 and my decision is due by no later than 5 July 2004.

The Respondent has not submitted a Response to the Complaint. From the papers that have been submitted by Nominet to me it is apparent that efforts have been made to send the Complaint to the Respondent by post and e?mail to the contact details held on Nominet’s Register. I have noticed that the letter sent to the Respondent has been returned by the Royal Mail, with a notice saying that the “addressee has gone away”. A further attempt (on 6 May) has been made to serve the Respondent at an alternative address, which I assume has been provided to Nominet by the Complainant as the Complainant and Respondent appear to have been in prior correspondence. Neither this further letter, the original e-mail, or a further fax appear to have been returned. I think that it is therefore reasonable to conclude, that the Respondent has been served with the Complaint.

When registering a UK domain name applicants agree to be bound by Nominet's Terms and Conditions. Clause 2.3 of those terms and conditions provides that:?

'You must inform us promptly of any change in your registered details, and those of your Agent if applicable. It will be your responsibility to maintain and update any details you submit to us and to ensure that your details are up to date, and accurate. In particular, it is your responsibility directly or by your Agent to ensure that we have your full and correct postal address.”

"Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i. if sent by facsimile, on the date transmitted; or
ii. if sent by first class post, on the second Day after posting; or
iii. if sent via the Internet, on the date that the communication was transmitted; and
iv. where communications are received by more than one method, at the earliest date received;
and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.”

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.

I now move on to consider the consequences of the Respondent not submitting a response.

The Procedure envisages just such a situation and provides in Paragraph 15 that:?

“c. If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate."

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision.

I will draw such inferences from the Respondent's failure to respond as I think appropriate, but must bare in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say, or that the Complaint has not in fact come to his attention.

The Complainant asserts that is has the publishing rights to “What Mortgage” magazine and has done since 1982. It refers to an “ISN” number – namely 0263 8525.2.

From a cursory search of the Internet, it is apparent that the Complainant also operates a website at www.what-mortgage-mag.co.uk. This domain name was registered to the Complainant in January 2004. The magazine and website, not surprisingly, offer advice on the subject of mortgages.

The Disputed Domain name was registered by the Respondent on 21 April 1997. It is presently inactive, save that it points to a Netbenefit page, an agency that registers domain names, with the text “The domain name whatmortgage.co.uk has been registered by Netbenefit for one of our clients.”

The Complainant submits that it has rights in the Disputed Domain Name because it has publishing rights in the name “What Mortgage”.

The Complainant asserts that registration of the Disputed Domain Name was Abusive because the registration was unfairly detrimental to its rights. It also refers to an agreement by which the Respondent agreed to transfer the Disputed Domain Name to the Complainant, which the Respondent reneged on.

The Claimant's requested remedy is that the Disputed Domain Name be transferred.

To succeed in this Complaint the Complainant must, in accordance with Paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that (1) 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 (2) the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

The absence of a response from the Respondent does not mean that the Respondent is deemed to have no answer to the Complaint, but rather the Complainant must still make out its case to the Expert on the balance of probabilities. Where a Respondent does not avail himself/herself of the opportunity to respond to the Complaint it might be said that the Complainant's task is all the easier, but as I have previously indicated, notwithstanding the absence of a Response, it is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

As indicated above, the Complainant has asserted that it has Rights in the name “What Mortgage”. It is necessary that the Rights subsist in a name or mark that is identical or similar to the Disputed Domain Name, which is whatmortgage.co.uk.

The Respondent has asserted that it has had the publishing rights to “What Mortgage” magazine since 1982. This seems unlikely as the Claimant was only incorporated in 1990. It may have been the case that the Claimant’s business in another manifestation owned the publishing rights, but I have no evidence of that before me. However, I think that I can assume that the Complainant has used the name “What Mortgage”, since 1990. It is unclear to me what “publishing rights” might be in the present circumstances, because the Complainant does not give any details of rights being granted by a third party to them, or ownership of any trade marks. However the threshold for “Rights” under the Policy is not high, and I believe that the extensive use of the name as a title to their magazine (and more recently on their website), and perhaps more importantly the goodwill and association that the Complainant has generated by use of that name, does afford the Complainant rights, at least for the purposes of the Policy.

The definition of “Rights” within the Policy excludes the protection of names or terms which are wholly descriptive of the Complainant’s business. In my view this exception does not apply in the present case. The restriction is very narrow in its application because of the inclusion of the word “wholly”. Whilst in my view the Disputed Domain Name is in part descriptive, it does not of itself fully describe the business of the Complainant, which is publishing, albeit of a magazine relating to the mortgage industry.

The first (.uk) and second (.co) levels of the Disputed Domain Name should be discounted for the purposes of comparison as being of a generic nature. For the reasons set out above, I find that the Complainant has established that it has Rights in respect of a name or mark which is identical to the Disputed Domain Name.

An Abusive Registration is defined in Paragraph 1 of the Policy 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 be evidence of an Abusive Registration are set out in Paragraph 3. They are:?

“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.

The Complaint does not address any of these specific grounds, but maintains that the registration was of itself unfairly detrimental to the Complainants Rights, and implies that the act of reneging on the agreement to transfer the Disputed Domain Name was Abusive.

Dealing with the latter ground of complaint first, I have not been given any details of the agreement reached between the parties and do not believe that reneging on the agreement is of itself a ground for declaring that the registration is Abusive.

With regard to the first ground for complaint, the factors contained in Paragraph 3 of the Policy, are expressly non?exhaustive and it is necessary to remember the general definition of what an Abusive Registration is (see above).

The Respondent has chosen not to file a Reply and in the absence of a credible explanation for its selection and use of the Disputed Domain Name, I must consider whether the registration of a domain name that is the same as the name that has been extensively used by the Complainant, and in respect of which goodwill and recognition have been developed, is Abusive. In my opinion it is. For some considerable time before the Respondent registered the Disputed Domain Name, a name identical to it had been used by the Complainant. The Complainant has in effect been denied the opportunity to reflect its magazine name in an identical domain name. In the absence of any credible explanation from the Respondent, I am of the view that the selection of a domain name identical to the name that the Complainant has invested time and money in, is not a coincidence and was intended either to block the Complainants use, or profit from the goodwill developed by the Complainant in the name, either by selling it to the Complainant or to a third party.

For the reasons set out above, in my opinion the Complainant has proven on the balance of probabilities that (i) it has Rights in respect of a name or mark which is identical to the Domain Name; and (ii) the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds and I direct that the Domain Name be transferred to the Complainant forthwith.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Charterhouse Communications Group Ltd v OTM Integrator [2004] DRS 1729 (5 July 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1729.html Cite as: [2004] DRS 1729

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