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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> 24/7 Real Media V. Stealth Communications Ltd [2005] DRS 02170 (17 January 2004) URL: http://www.bailii.org/uk/cases/DRS/2005/02170.html Cite as: [2005] DRS 2170, [2005] DRS 02170

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24/7 Real Media V. Stealth Communications Ltd [2005] DRS 02170 (17 January 2004)

Nominet UK Dispute Resolution Service

DRS 02170

24/7 REAL MEDIA V. STEALTH COMMUNICATIONS LTD

Decision of Independent Expert

Parties:

Complainant: 24/7 Real Media

Address: 435-437 Edgware Road

London

Postcode: W2 1TH

Country: GB

Respondent: Stealth Communications Ltd

Address: Whistlers

Can Hatch

Kingswood Surrey

Postcode: KT20 6DS

Country: GB

Domain Name

1. 247search.co.uk ("the Domain Name").

Procedural Background

2. Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively).
3. Nominet first received the Complaint on 8 November 2004. The original, together with annexed evidence, followed on 11 November 2004. Nominet validated the Complaint and sent it to the Respondent on 17 November 2004, advising the Respondent it had 15 working days, until 9 December 2004, to submit a Response. The Respondent failed to submit a Response, either by 9 December 2004, or at all.
4. On 14 December 2004, in accordance with paragraph 5(d) of the Procedure, Nominet notified both parties that an independent expert would be appointed, provided the Complainant paid the applicable fees within the specified period, and on 23 December 2004, the fees were paid.
5. After confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I, Victoria McEvedy, was appointed as an independent expert in this dispute on 4 January 2005.

Outstanding Formal/Procedural Issues

Service

6. I need to say something briefly about service. The DRS derives its jurisdiction from the terms and conditions of the contract of registration between the Respondent and Nominet ("the Contract"), clause 7 of which incorporates the Policy and Procedure by reference. The Contract requires a registrant's details to be entered in the Register (clause 1.3), and the registrant promises to promptly advise Nominet of any changes, in particular; to ensure that Nominet has its full correct postal address (clauses 2.3 and 5.2), and its "telephone and fax number and email address" (clause 6). Certain details are also posted on the public WHOIS database. Failure to provide correct details, or to keep them up-to-date, may be grounds for cancellation or suspension of a domain name (clause 8.7.3). Nominet has provided me with a copy of the Respondent's Register entry and WHOIS details.
7. The relevance of this, is that paragraph 2(a) of the Procedure provides a Respondent will be served with a Complaint, at Nominet's discretion, by any of: first class post, fax or email to the contact details in the Register; by email to postmaster@ ; or to any email addresses shown on any active web pages the domain name resolves to. Other communications are also by fax, first class post or email (2(b)).
8. Nominet served the Complaint on the Respondent on 17 November 2004, by:

a. first class post to Whistlers, Can Hatch, Kingswood, Surrey, KT20 6DS, ("the Whistlers Address") being the address on the Register;

b. by fax to 0207 987 0517, the fax number on the Register; and

c. by email to [email protected], the email on the Register; and

d. by email to [email protected].

9. The file of correspondence provided to me includes a fax confirmation sheet dated the 17^th , which shows the code 634. Nominet advise me that this indicates an invalid number. The file also includes a delivery failure report received by Nominet in reply to its email to [email protected]. The notification of 14 December 2004, was sent, both by first class post, and by email, to the two email addresses above, and a similar delivery failure report was received by Nominet in relation to the postmaster email address.
10. I have no way of knowing whether the Respondent actually received the hard copy Complaint sent by first class post. I note however that the Company Search Report on the Respondent, included in Nominet's file, shows the Respondent's registered address as 24-28 Forest Centre, Borden, Hampshire GU35 0TN and not the Whistlers Address (although the Whistlers Address is shown as the address of a director).
11. The Contract renders the Respondent responsible for any failure to notify Nominet of changes to its details, and the Complaint is deemed by the Procedure to have been served on the date of the email (2(e)(iii)) and on the second Day after posting (2(e)(ii)). Therefore, at the earliest, the Respondent was deemed served by 17 November and, at the latest, by 19 November 2004.

Default

12. The Respondent has failed to submit a Response. However, in cases of default, the Procedure does not provide for an automatic decision in favour of the Complainant, rather paragraph 15(b) provides that the expert will proceed to a Decision on the Complaint, and I do so below. Although paragraph 15(c) allows an expert to draw inferences from a party's default, as appropriate, I have not drawn any such inferences in this case.

The Facts

13. The Domain Name was registered in the name of the Respondent on 13 May 2000, as recorded in the Register and WHOIS reports. Entering the Domain Name in a browser gives the familiar "page cannot be displayed" error message, indicating that the Domain Name is not currently in use. Nominet provided me with a printed page showing this as at 17 November 2004, and I got the same result. There is no evidence indicating the Respondent ever used the Domain Name.
14. The Complainant provides Search Engine marketing services to the publishing and advertising sector. Although the legal relationships are not clear, it appears the Complainant is related to, or part of, a US Group, which includes 24/7 Real Media, Inc., and 24/7 Search, Inc. ("the "US Companies"). The Complainant says that since 2003, the Group has traded under the name 24/7 Search, including in France, Germany, Spain and the UK.

The Parties' Contentions

Complainant

15. The Complainant says that the Domain Name is identical or similar to a name or mark in which it has Rights and, in the hands of the Respondent, it is an Abusive Registration. As I understand it, the Complainant claims Rights arising from the registration of a company name in the US (24/7 Search, Inc.), and from use of 24/7 Search as a trading name, both by the US Companies and by the Group in Europe, including the UK.
16. More particularly, (I have retained the Complainant's language here as far as possible):

a. As to the registration; 24/7 Search, Inc., is a subsidiary of 24/7 Real Media, Inc., the Complainant's parent company.

b. As to the use as a trade name; the Complainant relies on the following:

i. 24/7 Real Media, Inc., trades under the name 24/7 Search and has done so since 2003 (I assume this means in the US);

ii. In the UK, as well as in Europe (France, Germany, Spain), 24/7 Real Media launched its services in mid 2003 evidenced by:

1. The booths and brochures exhibited at Search Engine Strategies, London (June 3-4 2003 at the Millenium Gloucester Hotel and Conference Center) and Search Engine Strategies, London (June 2-3 2004 at Novotel London West Hotel and Convention Center);

2. Letterhead and marketing materials such as brochures used since May 2003 in UK.

3. An advertisement in an IAB booklet on June 2004.

The Complainant has submitted 3 annexes in support of these contentions "…Letterheads - 24/7 Search one sheeter ..used to send by email to clients and prospects - Example of advertising in IAB Booklet, June 2004 - 24/7 search brochure distributed during SES London (2003 and 2004 events)."

Respondent

17. As already noted, no Response has been submitted.

Discussion and Findings

General

18. Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy, paragraph 2(a) of which, requires the Complainant to prove 2 elements:

"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."

The Complainant bears the onus of proof and must prove both elements on the balance of probabilities. As noted in paragraph 12 above, the fact that no Response has been submitted does not relieve the Complainant of the need to prove its case.

Complainant's Rights

19. Rights are defined by the Policy as including but not limited to rights enforceable under English law. This is not a high threshold; see decision of the Appeal Panel in Seiko v. Designer Time DRS00248. It includes rights to registered and unregistered trade marks, as well as other rights.

Registered Marks and Corporate Names

20. I can quickly deal with the first of the Complainant's contentions, at paragraph 16a above, as the fact that its related company, 24/7 Search Inc., may (the Complainant did not submit a certificate of incorporation or any evidence of the relationship), use the Domain Name as, or in, its company name, does not assist it.
21. In English law, the incorporation of a company under a particular name, does no more than block others from registering the same name with the Registrar of Companies; it does not, of itself, prevent others from using that name in business, see Active Web Solutions v. Peter Shaw DRS 00228. I have no evidence that US law differs in this respect and will treat the US company name, as I would an English one. I also note that the Complainant has not seen fit to inform me of its own registered company name, and although this would not, for the reasons just given, create Rights, it is always pertinent.
22. While registered trade marks confer exclusive rights and the ability to prevent use by others without consent, the Complainant has not submitted any evidence that it, or any other member of the Group, has registered a trade mark.

Common Law or Unregistered Marks

23. The Complainant also relies on its use of 24/7 Search as a trade name in Europe, including the UK, and the US, as detailed in paragraph 16b above.

UK Use

24. Actual use of a name in trade creates rights protected by the common law cause of action for passing off, as to which see Warnick (Erven) Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd [1980] RPC 31 HL. In order to succeed in a passing-off claim, a Complainant must prove the classical trinity of goodwill, misrepresentation and damage, Reckitt & Colman Products Limited v. Borden Inc [1990] 1 All ER 873. The thing protected in passing-off therefore is the business or goodwill of a claimant, described in IRC v. Muller & Co.'s Margarine Ltd [1901] AC 217, 223 HL as "the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force that brings in custom." A name or mark that can be protected in passing-off is often called an unregistered or common law trade mark.
25. The Complainant says that its use of 24/7 search in the UK commenced in mid 2003 and it has submitted various evidence of that use, including its letterhead which employs a logo comprised of a box divided in two horizontally, the top box of which is orange coloured and contains "24.7." The bottom box contains the word "search" in capitals. The bottom of the page has one line of text, which reads "24/7 search," followed by the Complainant's UK address, telephone and fax numbers. The Complainant says it has been using this letterhead since May 2003. There is also a copy of the IAB booklet advertisement of June 2004, which also displays the logo. It lists European and other Group entities and gives the following email addresses; France, [email protected], Germany, [email protected] and Spain, [email protected]. Compare the Complainant's statement "we would like to use 247search.co.uk in UK (sic) as 24/7 Real Media already does in France (www.247search.fr), in Germany (www.247search.de)… " The final annexure is the Search Engine Strategies brochure, used in June 2003 and 2004, which again employs the logo and uses the name at the top and bottom of the page, saying "24/7 search has been operational in Europe since 2002. Utilising the experiences gained from the US, where 24/7 Search has been operation (sic) since 1996 (under the brand name of WSR).."
26. The Complainant has not submitted any evidence that it has customers in the UK, although it may well do. I think the correct characterisation of the evidence that it has submitted, is probably promotional use in preparation for trading. Goodwill sufficient for a common law mark may however arise from very slight trading activities and in certain circumstances from advertising prior to commencement of trading, see Allen v. Brown Watson [1965] RPC 191, BBC v. Talbot [1981] FSR 228 and My Kinda Bones v. Dr. Pepper's Stove Co., [1984] FSR 289. The Complainant has, just, made out its case that it has rights at common law.

Use Outside the UK

27. As noted above, Rights includes but is not limited to rights enforceable under English law. This includes rights to trade marks registered elsewhere, as well as rights similar to common law marks, including rights protected in civil law jurisdictions by the law of unfair competition, which should be given equivalent recognition and treatment under the Policy.
28. However in this case, I have already found that the Complainant has Rights arising from its UK use and there is no need to bolster that in any way. Further, on the Complainant's own case, the US Companies did not commence trading under the name until, at the earliest, 2003, and the European entities in mid 2003, so that use is unlikely to have added anything significant (even if the Complainant had submitted evidence of it).

Identical or Similar

29. Paragraph 2(a)(i) of the Policy requires that the name or mark in which the Complainant has Rights "is identical or similar to the Domain Name." In determining this, suffixes are to be ignored, see the decision of the Appeal Panel in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359. I will therefore ignore ".co.uk." As characters such as hyphens are of no legal significance, Hanna-Barbera Productions, Inc –v- Graeme Hay, DRS 00389, I also disregard the backslash, /, between 24 and 7. No account is taken of differences in case, that is, capitalised or uncapitalised use. In all, this renders the Complainant's trade name, 247 search, identical to the Domain Name.
30. I am satisfied that the Complainant has Rights in a name or mark identical to the Domain Name.

Abusive Registration

31. The second element the Complainant must prove under paragraph 2(a) of the Policy, is that the Domain Name is an Abusive Registration, defined in paragraph 1, as follows:

"Abusive Registration means 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"

32. Paragraph 3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration. The listed factors are that the Respondent registered or acquired the Domain Name "primarily" to: sell it above cost to the Complainant (3aiA); block the Complainant's registration of it (3aiB); unfairly disrupt the business of the Complainant (3aiC); or as part of a pattern of abusive registrations (3aiii). Other factors relate to the use following registration, for example, circumstances indicating the use has confused (3aii).

Abusive –at Registration

33. In this case, although the Domain Name is identical to the Complainant's trade name and the Respondent, not having submitted a Response, is silent as to its reasons for selecting the name; viewed objectively it is highly improbable that the Respondent was aware of the Complainant at the time of registration, as the Complainant was not trading under or using that name in 2000. Even the US Companies were not using it until, at the earliest, 2003. There is no realistic possibility that the Respondent registered the Domain Name with any abusive purpose or intent.

Abusive – Use

34. There can also be no question of the Respondent using the Domain Name in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights, given the lack of any evidence of use.

False Details

35. Finally, under paragraph 3aiv of the Policy, a domain name may be an Abusive Registration if it is independently verified that the Respondent has given false contact details to Nominet. There is no suggestion here that the Respondent did so initially, and I don't propose to penalise it for failing to update the Register by invoking this factor; which to my mind, is directed at egregious cases where a registrant flagrantly and deliberately deceives Nominet in order to hide its identity or otherwise cover its tracks. I note that other experts have taken the same view, see the decision of Claire Milne in BlissWorld v BlissWorld, DRS 444.

Summary

36. The Complainant bears the burden of proof on Abusive Registration, yet it has failed to submit any evidence of it or even to barely assert a case on it. After dealing with Rights, it has merely asked for a transfer of the Domain Name because it wants the use of it, saying: "As part of our European strategy, we would like to use 247search.co.uk in UK … Could you please help me in transferring this domain name to the 24/7 Real Media UK office?."
37. This will not suffice. The DRS is concerned only with Abusive Registrations. It is not a vehicle to acquire domain names owned by others, nor a means of avoiding or limiting the price payable for a domain name in the hands of another. The Complainant must contact the Respondent and make an offer for the Domain Name if it wants it. If the Respondent is dormant and no longer trading, and I have no evidence either way as to this, the Domain Name remains an asset of the company that can be sold to benefit creditors or shareholders. Alternatively, the Complainant can wait until May 2006 when the Domain Name is due for renewal. If it is not renewed, the registration will lapse and the Complainant can register the name itself. I do not however find that there has been any bad faith on the part of the Complainant.

Decision

38. Taking all the circumstances of this dispute into account, I direct that no action be taken in relation to the Domain Name.

Victoria McEvedy

17 January 2005