NOMINET UK DISPUTE RESOLUTION SERVICE
DRS02269
DECISION OF INDEPENDENT EXPERT
Chapel Studios Limited v Andrew Hill T/A Name Grab

1.	Parties
Complainant	:
Chapel Studios Limited 
Address	:
Country	:
GB

Respondent	:
Andrew Hill T/A Name Grab
Address	:
Country	:
GB

2.	Domain Name
chapelstudios.co.uk

3.	Procedural Background
3.1	The Complaint was lodged with Nominet on 21 December 2004.  Nominet validated the Complaint and notified the Respondent of the Complaint on 23 December 2004.  The Respondent was advised that he had until 19 January 2005 to respond to the Complaint.   No Response was received from the Respondent, therefore Nominet did not initiate its mediation procedure.
3.2	On 21 January 2005 Nominet informed the Complainant that it had until 4 February 2005 to pay the appropriate fee, following which Nominet would refer the case to an independent expert for a decision.  The Complainant duly paid the fee on 31 January 2005.  On 2 February 2005 Bob Elliott, the undersigned (“the Expert”) confirmed to Nominet that there was no reason why he could not properly accept the invitation to act as expert in this case and further confirmed 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.  Nominet duly appointed the Expert with effect from 7 February 2005.  

4.	Outstanding Formal/Procedural Issues
4.1	The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5.a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”).  Paragraph 15.b of the Procedure provides inter alia, that “if in the absence of exceptional circumstances, a Party does not comply with any time period set down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint”.  
4.2	Paragraph 15.c of the Procedure provides that “if, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure, ..… the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate”.  
4.3	There is no evidence before the Expert to indicate the presence of exceptional circumstances.  The Expert will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.  

5.	The Facts
5.1	The Complainant is the successor in business to a business which appears from the Complaint and material attached to the Complaint to have commenced in 1996 under the name “Chapel Studios Productions.”  That trading name was shortened to “Chapel Studios” by 1998.  The company itself was set up in January 2002, and took over the business which was previously unincorporated.
5.2	Having started with the production of marketing and advertising material, including websites, CDs and videos, the Complainant now trades as an advertising agency, offering a full range of design, production and marketing services to clients.  It is an ISP, maintaining a network of servers, offering clients hosting, email and domain provisions.  It has been a Nominet Member and Tag Holder since July 2000.  Although it describes itself as “still only a relatively small agency” it represents a number of well-known clients.  These apparently include the Methodist Church of Great Britain, the Government of the Island of Sark in the Channel Islands, and various leading independent sector schools.  It has a base in Oxfordshire, an office in London, and a representative office in Guernsey.  
5.3	The Complainant has a registered UK trade mark “Chapel Studios” registered with effect from 17 September 2002.  It uses the domain name chapel-studios.co.uk, which it acquired in July 1997, when the Domain Name (Chapelstudios.co.uk) was apparently unavailable, at that time held by Chapel Recording Studios, yet apparently unused.  
5.4	The Complainant says that it checked the Nominet WHOIS database on a daily basis, for some months in 2004, having become aware that the Domain Name had been detagged.  However, the Domain Name was registered by the Respondent on 21 September 2004, apparently using the “DropCatcher” service operated by CHC Internet.  
5.5	The Respondent runs a website at www.namegrab.co.uk.  On that site it says that it “is in the business of helping you find the domain you want.  On our names page you can surf our current list of names for sale.  If the domain you are looking for is not on our list we can use our extensive network of contacts to find just the right name for your Internet business”.  On the page at Name Grab’s website headed “Featured Names” there are a number of domain names which are described as for sale, which the Expert would describe as a mixture of apparently generic names (such as helicopters.co.uk, oil.org.uk and carauctioneers.co.uk), and others which are clearly not generic (such as tictak.co.uk, kennethbaker.co.uk and salco.co.uk).  The “Target Price” listed against those names does not contain any actual prices – the wording used is either “Make Offer”, “Under Development”, “Sold”, or “Not For Sale”.  There are similar pages in respect of “Business names”, “Financial names”, “Technology names”, “Smart names”, and “Misc names”.  Although the website says that there are two ways of purchasing any domain name listed (Fixed Price Sale and Negotiated Sale), in practice, a Fixed Price Sale is not possible as no prices are listed.  Overall the majority of the names listed appear to be generic in character.  
5.6	On 26 November 2004, the Complainant, using notepaper which included its “CHAPEL STUDIOS” trade mark in a prominent position, its corporate name (Chapel Studios Limited) and its internet contact details through chapel-studios.co.uk, wrote to Name Grab indicating that they understood that Name Grab had recently registered the detagged Domain Name, and wondering “whether you might be willing to sell the domain to us?  Either way, I would be grateful if you could contact us at the above address to discuss this further.”
5.7	The response, by email from Name Grab dated 5 December 2004 was as follows:-
“Thank you for your enquiry regarding the domain name chapelstudios.co.uk.  Before entering into any discussions regarding a potential sale we need to state our position regarding intellectual property issues.  We are unable to sell or offer to sell any domain to any company, or any entity that represents a company, that would claim or assert trade mark or intellectual property rights over the domain or has registered or applied for a registration of a trade mark that is identical or similar to the domain.  We do not cybersquat or knowingly infringe on other parties’ intellectual property rights as we only acquire prime generic domain names.  To reiterate this point; if you or your company would claim or assert any rights whatsoever in this domain name, we would be unable to sell this domain name to you.  If you could kindly confirm that you and your company do not fall into this category then we would be happy to enter into discussions regarding this domain name.  Best regards, Smartnet”.
5.8	The Complainant responded on 7 December 2004, explaining its background, and that it had been looking to register the Domain Name for some time.  It also said it had not previously been aware of the service run by CHC Internet (through its “detagged.co.uk” website) which is apparently a reference to the DropCatcher service.  The Complainant asked Name Grab whether, following what it described as CHC Internet’s policy, the name would be transferred to the holder of the Intellectual Property rights at a cost of no more than the costs of acquiring the domain.  
5.9	In response, Andrew Hill replied on 18 December 2004 as follows:
“Thank you for your email regarding my domain name Chapelstudios.co.uk.  I do sympathise with your position but unfortunately I have agreed to sell this domain name to another party for £695 plus VAT.  Although I might have been able to persuade the other party to stand aside I would clearly be unable to offer to sell you the domain at this price as you have not confirmed to me that you are not seeking to assert intellectual property rights.  Consequently I am unable to sell this domain to you as I am specifically precluded from selling, or offering to sell any domain to anyone who would assert intellectual property rights over a domain.  I am sorry that I was unable to help on this occasion”.

6.	The Parties’ Contentions
The Complainant
6.1	The Complainant provides extensive evidence to verify its assertion that it has rights in a name which is identical to the Domain Name, including stationery, examples of its work, and a Certificate of Registration of its trade mark “Chapel Studios”.  
6.2	The Complainant argues that the Domain Name in the hands of the Respondent is abusive on two grounds:
(a)	Because it was registered 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; and
(b)	The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern.  
6.3	In doing so the Complainant seeks to rely upon two of the non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration set out respectively at paragraph 3.a.i.A and 3.a.iii of the Dispute Resolution Service Policy (“the Policy”).  
6.4	In relation to the first of these factors, the Complainant relies upon the correspondence set out at paragraphs 5.6 to 5.9 above.  The Complainant believes that the correspondence demonstrates the motivation behind the registration of the domain by the Respondent.  It believes that it shows that Mr Hill did not register the Domain Name for any purpose other than to sell it and to do so at a price far exceeding his expenses in acquiring it.  Furthermore the Complainant refutes the suggestion that “Chapel Studios is generic” or descriptive, as asserted by the Respondent in its email of 5 December 2004, in which the Respondent claims only to acquire “prime generic domain names”.  The Complainant believes that “Chapel Studios” is simply a trading name. 
6.5	As regards the second factor, the Complainant identifies various names which are offered for sale on the Name Grab website, which appear to incorporate well known trade marks.  There are three such domain names incorporating the trade mark “Tic Tak” (which is owned by Ferrero SpA), one including the trade mark “Salco” which is owned by Salco Group Plc, another including the trade mark “Sports Line” which is owned by Sportsline.com Inc, two domains which include the names of well known people (Kennethbaker.co.uk and Keithharris.co.uk), and three domains which contain various versions of the Tower of London, which are similar to a trade mark held by Flitcham Limited, a company which apparently handles some of H M the Queen’s private interests.  
6.6	The Complainant asserts that all of these domain names are owned by Name Grab or an apparently associated sister company Name Magic.  The exception is the domain name Tictak.co.uk which is owned by “Chris Holland and Ronnie Davies trading as DropCatcher”.  The DropCatcher/detagged website is run by CHC Internet, and Name Grab is listed as a Premier Member of that site on its online forums, to which it is a frequent poster.  CHC Internet was the Respondent in a previous Nominet Decision DRS01840 in respect of Promax.co.uk, in which the expert appointed concluded that the registration of that domain name was an Abusive Registration.  
6.7	The Complainant asserts that, because Name Grab is selling a domain name which remains registered in the name of CHC Internet, there must be some form of business relationship between Name Grab and CHC Internet (but does not expand on that assertion). 
6.8	The Complainant has not been able to find any link or rights between the well known names or trade marks referred to and the Respondent.  It concludes by saying that the Domain Name itself falls into this same category.  
6.9	The Complainant seeks the transfer to itself of the Domain Name. 

The Respondent
6.10	The Respondent has not filed any Response.  

7.	Discussion and Findings

General
7.1	For the Complainant to succeed according to paragraph 2 of the Policy, the Complainant must prove to the Expert on the balance of probabilities both of the two elements set out in paragraph 2.a of the Policy, namely that:-
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.

Complainant’s Rights
7.2	The definition of Rights under the Policy “includes, but is not limited to, rights enforceable under English Law.  However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”.
7.3	The Complaint sets out very clearly the extent of the Complainant’s trade mark rights, helpfully annexing relevant material, and the Expert has no difficulty in finding that the Complainant has established that it has Rights in a name or mark which is identical to the Domain Name.  

Abusive Registration
7.4	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”.
7.5	As referred to above, the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration in paragraph 3.a of the Policy.  The two factors specifically relied upon by the Complainant have already been identified above (at paragraph 6.2), namely those in paragraphs 3.a.i.A and 3.a.iii of the Policy.  
7.6	As regards the Complainant’s assertion as to the motives of the Respondent in registering the Domain Name for the purposes of selling it, the Expert notes that there is no evidence provided by the Complainant that the Respondent was specifically aware of the Complainant and its business, at the time of registration.  However, the Expert agrees with the Complainant that “Chapel Studios” is not a generic term.  It is one which a company in the position of the Respondent would generally have expected (if it did not specifically investigate the position in advance) to be a name likely already to be used by a business, or businesses, as a trading name.  Although the Domain Name might also have had some attraction to another business which had not previously traded using that name, the Expert does not believe that the Respondent can have had any genuine belief that the Chapel Studios trading name was not already used by a third party.  
7.7	The Expert is reinforced in this belief by the Respondent’s behaviour, both as to its response to the Complainant’s approach, and as to other domain names which appear for sale on its website.  As to the former, when the Complainant contacted the Respondent, on notepaper which left no doubt as to the Complainant’s use of the Chapel Studios name and mark, the Respondent’s reply was to seek to require the Complainant to renounce any trade mark rights.  Clearly, if the Complainant had done so, it would have made it substantially more difficult for it to address the situation through legal routes (such as relying upon its Trade Mark Registration through Court proceedings) if it could not negotiate an acceptable purchase price.  Similarly, the Complainant has identified various domain names which also appear on the Name Grab website, where the Complainant seems to be justified in asserting that the Respondent has chosen to acquire domain names which contain well known trade marks or names with which the Respondent has no obvious connection.  The Respondent has chosen not to reply to the Complaint.  In the circumstances, the Expert is unable to accept the Respondent’s assertion in its email to the Complainant of 5 December 2004 that “we do not cybersquat or knowingly infringe on other parties’ intellectual property rights as we only acquire prime generic domain names.”  The names identified by the Complainant (see paragraph 6.5 above), and the Domain Name itself, do not appear to the Expert to be “prime generic domain names”.
7.8	The figure of £695 plus VAT quoted by the Respondent (albeit in the context of a supposed sale to a third party) indicates the level of return which the Respondent expected.  The Respondent has chosen not to detail what were its own out-of-pocket expenses of acquiring the Domain Name.  It seems reasonable to the Expert to conclude that the Respondent anticipated making a substantial profit on the resale of the Domain Name.
7.9	Therefore, it seems to the Expert that the Respondent must have registered the Domain Name, with the primary intention of selling the Domain Name to the Complainant itself, or to a competitor of the Complainant, or to others with rights in the Chapel Studios name (or their competitors) for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring and using the Domain Name.  It may, in fact, have been the case that the Respondent specifically had the Complainant in mind (bearing in mind the Complainant’s existing domain name and its registered trade mark, both of which can be found on searches of public databases).  However, the Respondent has chosen not to respond to the Complaint, therefore this must remain a matter for conjecture.
7.10	On the balance of probabilities, therefore, the Expert concludes that the Complainant has established that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  
7.11	As regards the second ground advanced by the Complainant, the Expert accepts for the reasons set out above, and not contradicted by the Respondent, that the Respondent appears to have been engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights.  However, paragraph 3.a.iii of the Policy also requires the Complainant to establish that the Domain Name is part of that “pattern” which on the face of it would appear to involve the Complainant having to prove that the Domain Name, to be involved in that pattern, also corresponds to a “well known name or trade mark” in which the Respondent has no apparent rights.  On the Complainant’s own admission it is “still only a relatively small agency”, and it is not obvious from the material submitted by the Complainant that the name or mark “Chapel Studios” is “well known”.  Therefore, the Expert is doubtful whether the Complainant has sufficiently shown that the precise wording of paragraph 3.a.iii of the Policy has been established.  Nevertheless, in the light of the Expert’s finding in respect of paragraph 3.a.i.A (paragraphs 7.9 and 7.10 above), that does not particularly matter.  In any event, the Expert would regard the pattern of registrations (including the Domain Name itself) as being supportive of an overall conclusion that the current Domain Name, in the hands of the Respondent, is an Abusive Registration (bearing in mind that the factors set out in paragraph 3 of the Policy are expressed to be non-exhaustive).

8.	Decision
8.1	The Expert finds that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name.  Further, the Expert finds that the Domain Name is an Abusive Registration in the hands of the Respondent, and orders the Domain Name to be transferred to the Complainant.  

Bob Elliott

Dated: 7 February 2005