Nominet UK Dispute Resolution Service

DRS 02215

ATOC Limited -v- Lee Bird

Decision of Independent Expert

a.	Parties

Complainant:		ATOC Limited
Country:		GB

Respondent:		Lee Bird
Country:		GB

b.	Domain Name

traintracker.co.uk (“the Domain Name”)

c.	Procedural Background

The Complaint was lodged with Nominet on 29th November 2004.  Nominet notified the Respondent of the validated Complaint on 2nd December 2004.  The Respondent filed a Response to the Complaint on 21st December 2004 within the required time period of 15 days and Nominet so informed the Complainant on 21st December 2004.  The Complainant filed a Reply to the Response on 4th January 2005, which was forwarded by Nominet to the Respondent on the same date.  Nominet informed the parties on 17th January 2005 that informal mediation had failed to achieve a resolution to the dispute.  The Complainant paid Nominet the appropriate fee for a decision of an Expert, pursuant to §7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”), before the stated deadline of 31st January 2005.

Steve Ormand, the undersigned, (“the Expert”) confirmed to Nominet on 28th January 2005, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

d.	Procedural Issues

There are no outstanding procedural issues.

e.	The Facts

Complainant

The Complainant provides, on behalf of Train Operating Companies in the UK, various services to members of the public enquiring about train times.  The Complainant claims to have developed a system, called "Traintracker", which forms an additional part of this service, but offers no evidence in support of this.

The Complainant has submitted copy emails to show that it instructed its agent to proceed with UK applications “for a series of marks in the 4 Train Tracker names …” but offers no evidence that the application proceeded.

The Complainant has submitted a copy invoice from its web hosting service provider showing that the provider invoiced the Complainant for registration fees for the domain names traintracker.info, traintracker.org, traintracker.org.uk, traintracker.biz and the Domain Name on 20th October 2004.  The service provider failed to obtain the registration of the Domain Name.  The other domain names display the message “website is currently under construction” when accessed.

The Complainant claims that it made the name "Traintracker" known to the public at 0600 on 2nd November 2004 by way of a message played to callers to the National Rail Enquiries telephone line.  The Complainant states that the message advised callers on how to access the new "Traintracker" system as an alternative to remaining on hold.  The Complainant offers no evidence to substantiate these claims.

Respondent

The Respondent is an individual who states his main business as a printer.  The Respondent has registered a number of domain names, which are unconnected to his business as a printer, and which are offered for sale through an organisation that lists a number of domain names for sale at its website at www.sedo.com.

The Respondent applied for registration of the Domain Name on 2nd November 2004.  The Domain Name is advertised for sale at www.sedo.com.

f.	The Parties’ Contentions

Complainant

The Complainant’s assertions in its submissions are:

1.	That the Domain Name is identical or similar to a name or mark, "Traintracker", in which the Complainant has rights because:

a.	The Complainant had taken all reasonable steps to protect its rights in the name "Traintracker".  The name was confidential and known only to those employees and agents of the Complainant necessary for its development until the name was released to the public for the first time on 2 November 2004.  
b.	On 22 October 2004 the Complainant’s agents lodged an application to register “Traintracker” as a Trademark.  
c.	On or about 20 October 2004 the Complainant paid its agent in full for the registration of the Domain Name.  The Complainant’s agent failed to obtain the Domain Name due to their negligence and/or in breach of their agreement with the Complainant.
d.	The Complainant was unaware of their agent’s failure to obtain the Domain Name when the "Traintracker" system was made available for use by the public.
e.	The Respondent was, until registering the Domain Name, unknown to the Complainant.
f.	In it's reply to the Respondent's Response, the Complainant states that significant steps were taken to establish rights in the Domain Name and to secure its registration prior to the Respondent's registration, including:
i.	In excess of £20,000 committed to the development of the name “Traintracker”.
ii.	In excess of £500,000 on the delivery of the system.
iii.	Specific expenditure includes £15,000 on a consultant’s time to shortlist names and facilitate a final decision, £3,500 on recordings of "Traintracker" prompts, £3,500 on "Traintracker" copy, £700 on an article in NewsRail Express, a further £350 in preparation and time and costs in preparing and submitting the trademark application.
iv.	The fact that the Complainant’s other websites are “under construction” reinforces the Complainant’s rights in the Domain Name as it demonstrates an intention that each of these other websites would link through to the primary site at the Domain Name.
v.	The Domain Name was apparently registered by the Complainant’s agent 2 weeks prior to the Respondent’s registration.

2.	That the Respondent’s registration and use of the Domain Name constitute an Abusive Registration (as defined by §1 of the Policy) because:

a.	It was primarily registered for the purpose of selling, renting or otherwise transferring it to the Complainant or to a competitor of the Complainant for/at a price greater than his costs in that he has placed the Domain Name in the hands of an agent  for the purpose of selling the Domain Name for an undisclosed sum (copies of the screen showing the Domain Name for sale are submitted).
b.	In the reply to the Response, the Complainant states that an entity that has rights in a name, or a competitor of that entity, would have the most demand for the Domain name and be likely to offer the “best price”.  Therefore, the Respondent admits that the Complainant or its competitors are the target purchasers of the Domain name.

Respondent

The Respondent assertions in his Response are:

1.	That the Complainant does not have rights in the Domain Name because:

a.	It is not clear from the definition of Rights in the Policy and the Dispute Resolution Procedure (the “Procedure") whether the Complainant must establish that it has Rights at the date on which the Domain Name was registered or at the date of the Complaint.  In any case the relevant date it is immaterial because the Complainant has not established its Rights at any time.
b.	The Complainant admits the name "Traintracker" was only made available to the public on 2nd November 2004, i.e. the same day on which the Respondent applied for the Domain Name.  Therefore at the time the Respondent applied for the Domain Name it is highly unlikely that the Complainant had acquired Rights in it.
c.	Apart from the telephone announcement which the Respondent has never heard (and there is no evidence that it was ever made) the Complainant appears to have made no preparations to trade under the name "Traintracker" and no evidence of advertising or other marketing has been included by the Complainant.
d.	The other "Traintracker" domain names which are held by the Complainant are not linked through to active websites (copy webpage printouts submitted).
e.	The Complainant has a UK trade mark application for "Traintracker" that was filed on 4th November 2004, two days after the Respondent applied for the Domain Name.  The application is at an extremely early stage and has not, as far as the Respondent can tell, passed through the examination stage, let alone the opposition stage of the registration procedure and the existence of this extremely early registration by itself cannot be enough to give the Complainant Rights.
f.	The word "Traintracker" is entirely descriptive of what the Complainant intends to do with it, i.e. a service to enable members of the public to track train times.  It is therefore not a name in which the Complainant can have rights, because of the definition of Rights in both the Policy and the Procedure.

2.	That the Respondent’s registration and use of the Domain Name is not an Abusive Registration because:

a.	The Respondent does not deny that he registered the Domain Name for the sole purpose of selling it on at a profit.  This by itself, however, is not enough for the Domain Name to be declared an Abusive Registration and, if this were the case, then an entire industry known as "domain name warehousing" would be wiped out completely. 
b.	The Respondent registered the Domain Name in the evening of 2nd November 2004, together with a number of other domain names.  The Respondent submits printouts showing the domain names he registered at this time which were:· onebedroom.co.uk; 1bedroom.co.uk; english4fun.co.uk; maths4fun.co.uk; jazzsongs.co.uk; classicsongs.co.uk.  The Respondent, had also registered cattimes.co.uk and dogtimes.co.uk on 31/10/04, which was his first foray into the domain name warehousing market.  The Respondent's intention when registering all of these domain names was to put them for sale on sedo.com and to sell them to the highest bidder.
c.	The Respondent has never had any intention of taking advantage of any Rights which any other third party may have and was simply trying to register domain names which may be of interest to third parties.
d.	The Respondent chose the Domain Name without knowing that it had, earlier that day been announced as a possible future name by the Complainant, and he has never used the Complainant's telephone service.
e.	The Respondent was trying to choose names which he thought would be popular and in demand by prospective purchasers and which would therefore raise a good price.  The idea of registering the Domain Name came about because the domain names timetablesonline.co.uk and traininfoonline.co.uk were already (and still are) available on Sedo and this gave the Respondent the idea for registering a train related domain name.
f.	The Respondent certainly did not register the Domain Name with the intention of selling it to the Complainant, or to one of the Complainant's competitors, but generally to anyone who went on the Sedo website and was interested in acquiring the Domain Name.
g.	The first that the Respondent knew about the Complainant was when the Complainant wrote to the Respondent on 1st December 2004.  (copy letter submitted).  It was not clear to the Respondent at the time why the Complainant did not simply buy the Domain Name from the Sedo website, where it was available.  Since taking legal advice, it does seem likely that the purpose of this letter from the Complainant was simply to try and force the Complainant into asking for a sum of money for the Domain Name, which the Complainant could then use as evidence of an Abusive Registration.  For that reason, the Respondent has not responded to this correspondence.
h.	The alleged negligence of the Complainant's agent in failing to secure the Domain Name is not relevant to this Complaint.  It seems that instead of involving the Respondent in this dispute the real dispute should be between the Complainant and its agent.
i.	The Respondent is guilty only of innocently trying to make a profit through trading in domain names which he genuinely believed to be not owned by any other business.

g.	Discussion and Findings

General

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both limbs of the test that:

1.	it has Rights (as defined in §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 §1 of the Policy).

Complainant’s Rights

The wholly generic domain suffix “.co.uk” is discounted for the purposes of establishing whether the Complainant has Rights in a name or mark which is identical or similar the Domain Name.

The Complainant offers no evidence that a trademark application has been submitted for the name "Traintracker".  Indeed, it is left to the Respondent to confirm that an application has been lodged.  The Respondent states that the application was submitted after the Respondent had registered the Domain Name but presents no evidence to support this.  The Expert has independently established that the application was lodged after the registration of the Domain Name.

The Complainant has failed to present any evidence that it had established goodwill in the name “Traintracker” at the time of the Respondent’s registration of the Domain Name or that it has established goodwill in the name since that date.  Indeed, the Complainant admits that the name was confidential (and presumably, therefore, unknown to the public) prior to the launch on 2nd November.  

The Complainant’s instruction to its agent to register the Domain Name is not in itself evidence of rights in the name.  At that time, it was an instruction to register a domain name for a new system whose name arguably is a generic and descriptive term of an aspect of the Complainant's business.  Under the definition of Rights in the Policy, the Complainant cannot rely on rights in a name which is wholly descriptive the Complainant’s business.

The definition of Rights in the Policy includes, but is not limited to, rights enforceable under English law.  The Complainant has failed to demonstrate any rights in the name "Traintracker".

The Expert finds therefore that the Complainant has failed the first limb of the test to establish on the balance of probabilities that it has Rights in the name or mark identical or similar to the Domain Name.

Abusive Registration

Since the Complaint has failed the first limb of the test, the Complaint fails.  There is, strictly, no purpose in considering the submissions relating to Abusive Registration.  However, there are points raised in the submissions that require consideration.

The Complainant relies on an assertion that the Respondent’s offer to sell the Domain Name is evidence of an Abusive Registration by the bare fact that it is offered for sale.  No evidence is presented to show that the Respondent is offering the Domain Name for sale to the Complainant or a competitor of the Complainant for valuable consideration in excess of his documented out of pocket expenses (§3a i A of the Policy).  Had the Complainant demonstrated rights in the name then it would be possible for an expert to infer an Abusive Registration in the Respondent's actions.  However, at the time of registration the Domain Name appeared generic and could be used in a purely descriptive manner.  It is not abusive to sell generic domain names.

Clearly then, in the circumstances of this case, the question raised by the Respondent, whether the Complainant has to demonstrate rights at the date of registration of the Domain Name or at the date of the Complaint, the relevant date must be the date of registration of the Domain Name.  However, that is not to say that the relevant date must always be the date of registration.  

Consider the situation if the Complainant had not raised the Complaint at this time but instead went on to establish the "Traintracker" system and to acquire rights in the name.  At some point in the future, finding that the Respondent is still offering the Domain Name for sale, the Complainant then submitted a complaint.  If the relevant date was the date of the complaint then the Complainant would have established Rights in the name and the Respondent would arguably have a difficult task defending a claim of Abusive Registration under §4 of the Policy.  A decision to transfer the Domain Name would be unjust in these circumstances.  If by the time of the complaint, however, the Respondent had undertaken other activities of an abusive nature, seriously disrupting the Complainant's business for example, an expert may well conclude that a just decision would be to transfer the Domain Name.  To do so would require the Complainant to have Rights in the name, which he does not have at the date of registration.

The Respondent also raised a suggestion that the Complainant's action in writing to the Respondent was to provoke him into asking for a sum of money which could then be used as evidence of an Abusive Registration.  It is not clear why the Respondent raises this point.  In the Expert's view the letter is an offer of a nominal sum for the Domain Name.  If the Respondent replied and asked for a sum of money, which in the circumstances evidenced Abusive Registration, it would have been made in a perfectly normal commercial situation of offer and counter offer and would be valid evidence for the Complainant to submit.

h.	Decision

The Complainant has failed to establish rights in respect of a name or mark which is similar to the Domain Name, traintracker.co.uk.  Consequently, the Expert directs that the Complainant’s request for the transfer of the Domain Name be refused.

Signed:							Date: 	16th February 2005	
		Steve Ormand