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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Whitstable Windsurfing v Domrus [2004] DRS 1747 (1 July 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1747.html Cite as: [2004] DRS 1747 |
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Nominet UK Dispute Resolution Service
DRS 01747
Whitstable Windsurfing v Domrus
Decision of Independent Expert
1. Parties
Complainant: Whitstable Windsurfing
Country: GB
Respondent: Domrus
Country: Russia
2. Domain Name
whitstablewindsurfing.co.uk
(“the domain name”)
3. Procedural Background
Nominet received hard copy of the complaint on 11 May 2004 and checked that it complied with the Nominet UK Dispute Resolution Service Policy (“the Policy”) and the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”). Nominet notified the Respondent of the Complaint on 14 May, explaining that the Respondent had 15 working days within which to lodge a response. There was no response. Informal mediation therefore not being possible, Nominet notified the parties that an Expert would be appointed to decide on the complaint if it received the appropriate fee from the Complainant. The fee was received on 14 June.
On 19 June 2004 I, Mark de Brunner, agreed to serve as an Expert under Nominet’s Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.
4. Outstanding Formal/Procedural Issues
There are no outstanding formal or procedural issues.
5. The Facts
There is very little information in support of the complaint. On the basis of that information, together with the routine administrative data supplied by Nominet, I accept the following as facts.
The Complainant has been selling windsurfing and kitesurfing equipment in the UK since 1982. It runs a website at whitstablewindsurfing.com.
The domain name at issue was registered by the Respondent on 17 March 2004.
The domain name leads to a web page with the message: ‘Dear Visitor, We are currently working on our Site. Please come back soon.’
6. The Parties’ Contentions
Complainant
The Complainant’s case is that it has rights in a name identical to the domain name and that the registration is abusive in the hands of the Respondent because
(i) the web page visitors are taken to is intended to poach its customers and custom
(ii) there is only one ‘Whitstable’ in the world
(iii) there is only one ‘Whitstable Windsurfing’ in the world
Respondent
There has been no response.
7. Discussion and Findings
General
To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
(i) he or she 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.
Complainant’s Rights
There is little information in the file, but the threshold for establishing rights within the terms of the Policy is a low one. Given that the Complainant has been trading as ‘Whitstable Windsurfing’ for over 20 years, I infer that the business has established some rights in its trading name.
I accept that the Complainant has rights in a name identical to the domain name.
Abusive Registration
The Dispute Resolution Service rules define an 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.
Deciding whether a registration is abusive is invariably more involved than deciding whether a Complainant has the relevant rights. Here there is not much to go on: there is little from the Complainant, and nothing at all from the Respondent. The approach to be taken by experts in ‘no response’ cases like this is now well established. The fundamental principle was set out clearly in the very first decision made under the terms of the current Policy and Procedure (Eli Lilly and Company v David Clayton – DRS 0001):
Where…the Respondent has a case to answer (i.e. the Complainant has made out a prima facie case) and there is no answer, the Complaint must ordinarily succeed.
So the question is whether the Respondent does indeed have a case to answer – that is, whether the Complainant has established a prima facie case. In assessing that, I can start by taking the Complainant’s arguments in turn, before looking more widely at the evidence before me.
The Complainant says that (i) the web page visitors are taken to is intended to poach customers and custom. The difficulty here is that there is simply no evidence put forward in support of that claim. It is possible to speculate about the Respondent’s motives in registering the domain name and putting up the web page, but there is nothing before me that would help towards a conclusion based on anything more definite than speculation.
The Complainant goes on to argue that (ii) there is only one ‘Whitstable’ in the world. The implication is presumably that only someone with a connection with Whitstable as a place could legitimately register the domain name. But that has not been established. While it may be true that there is only one place called ‘Whitstable’ in the world, it seems unlikely that there is only one ‘Whitstable’. Who is to say that ‘Whitstable’ must always refer to the place, rather than, say, a surname? In any event, none of that tells us anything about whether or not the Respondent does indeed have some connection with ‘Whitstable’. In my view it does not establish even a prima facie case for the Respondent to answer.
Finally, the Complainant says that (iii) there is only one ‘Whitstable Windsurfing’ in the world. That is an assertion which strikes me as, in practice, rather difficult to prove. Significantly, the Complainant has not made the attempt. Even if true, the argument depends on the implication that the Respondent can have no legitimate interest in the name Whitstable Windsurfing – and, again, in my judgement not even a prima facie case has been made for that.
None of this really gets the Complainant very far. I can now look more widely at the evidence before me.
The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. These factors are
(i) circumstances indicating that the Respondent registered 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 expenses directly associated with acquiring or using the domain name
(b) as a blocking registration against a name…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) where, 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
(iv) where it is independently verified that the Respondent has given false contact details to Nominet.
The factors in the first group are all to do with the Respondent’s motives in registering the domain name. Unfortunately, there is simply no evidence before me of those motives. In particular, there is nothing to indicate that the registration was primarily for the purposes of transferring the domain name for valuable consideration. Nor is there evidence that the registration was intended to block a registration by anyone else. The Complainant evidently believes that the Respondent has registered the domain name for the purpose of unfairly disrupting the business of the Complainant – by poaching custom and customers. That conclusion is not inconsistent with the few facts before me, but it is hardly ineluctable.
The domain name has not so far been put to any use that would confuse anyone. Nor is there any evidence of the Respondent’s having engaged in a pattern of making abusive registrations or given Nominet false contact details.
The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. These are where
(i) before being informed of the Complainant’s dispute, the Respondent has
(a) used the domain name in connection with a genuine offering of goods or services
(b) been commonly known by the name…which is identical or similar to the domain name
(c) made legitimate non-commercial or fair use of the domain name
or where
(ii) the domain name is generic or descriptive and the Respondent is making fair use of it.
There is no evidence that the domain name has been used other than as described in the complaint, nor about what the Respondent might commonly be known as. It is not possible to conclude with any certainty that the use made of the domain name is non-commercial – legitimate or otherwise. Whether its use is ‘fair’ does not get us very far, because it is really only another way of asking whether the registration is abusive.
The underlying question is whether the domain name was registered or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights. Taking a view about that involves looking at both the use to which the domain name is put and the purpose of the registration (that is, the Respondent’s motives in registering the domain name). The domain name takes visitors to a holding page. But the message on that page does not afford conclusive – or even weakly suggestive – evidence of the domain name’s use. That leaves the question of the Respondent’s motive in registering the domain name. It is possible to conceive of all kinds of motive that would amount to the Respondent’s taking unfair advantage of or being unfairly detrimental to the Complainant’s rights. But nothing in the facts before me leads towards (or away from) any of that. It is all simply inconclusive.
I found it helpful to compare the facts and reasoning here with the decision in which the approach taken by experts to ‘no response’ complaints was first set out (Eli Lilly and Company v David Clayton – DRS 0001, mentioned above). It is clear from that decision that there was no use of the domain name and only indirect evidence of the motive behind the registration. That decision turned, essentially, on two points: the distinctive and made-up nature of the name at issue (‘xigris’); and the fact that the Respondent had worked for the Complainant and in the course of that work had found out that ‘xigris’ was one of the Complainant’s brands. The expert found that, given the ‘many obvious and potentially damaging uses to which the domain name could be put’ the circumstances surrounding the registration gave the Complainant ‘no comfort’. There was a case to answer, that the Respondent was taking unfair advantage of the Complainant’s rights. Here, on the other hand, there is nothing before me that adds anything like that kind of background colour - allowing me to take a view about the Respondent’s motives and what that might imply about the character of the registration.
What seems to have happened here is that the Complainant, having run a business for over 20 years, has noticed the registration of the domain name (and the web page to which the URL resolves). The Complainant can see no reason why anyone else should be using a domain name identical to a name in which it has rights, feels aggrieved and seeks the transfer of the domain name. But domain names are registered on a ‘first-come, first-served’ basis. The Respondent here got in first. The question remains whether the registration, in the Respondent’s hands, is abusive. The Complainant here has only to make out a case for the Respondent to answer. Doing that, however, requires more than speculation and assertion, unsupported by any evidence (however indirect), about the Respondent’s motives. In my judgement, the Complainant has not established a case for the Respondent to answer - either in its explicit contentions, or implicitly in the facts put before me.
It follows that the Complainant has not established that the domain name, in the hands of the Respondent, is an abusive registration.
8. Decision
I find that the Complainant has rights in respect of a name or mark which is identical to the domain name. However, I do not find that the domain name - in the hands of the Respondent - is an abusive registration.
I therefore direct that the registration be left undisturbed.
Mark de Brunner
Date: 1 July 2004