Inside Communications v Jazz Publishing Ltd [2005] DRS 02620 (23 June 2005)

Nominet UK Dispute Resolution Service

DRS 2620

Inside Communications v Jazz Publishing Ltd

Decision of Independent Expert

1.	Parties: 

Complainant:	Inside Communications
Country:		UK

Respondent:	Jazz Publishing Limited
Country:		GB

2.	Domain Name:

Backstreetheroes.co.uk

3.	Procedural Background:

The Complaint was lodged with Nominet on 6 May 2005.  Nominet validated the Complaint and notified the Respondent of the Complaint on 6 May 2005 informing the Respondent that it had 15 days within which to lodge a Response. 

No response was received from the Respondent.

Accordingly the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

David Flint, the undersigned, (“the Expert”) confirmed to Nominet that he knew of 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.

4.	Outstanding Formal/Procedural Issues (if any):

None

5.	The Facts:

Complainant:

The Domain Name in issue is backstreetheroes.co.uk. 

6.	The Parties’ Contentions:

Complainant:

The substance of the Complaint is very short and reads as follows: -

Inside Communications Ltd are publishers of Back Street Heroes magazine and run a web site www.backstreetheroes.com. Jazz Publishing Ltd are publishers of 100% Biker Magazine and run a web site www.100-biker.co.uk The domain backstreetheroes.co.uk also resolves to the www.100-biker.co.uk site. There is clear and deliberate intent to cause confusion between the competitive products.

The Domain Name in dispute is identical or similar to a name or mark in which the Complainant has Rights.

The Complainant confirms that the Domain Name in the hands of the Respondent is an Abusive Registration.

Respondent:

No response was received from the Respondent.
7.	Discussion and Findings:

General

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

Complainant’s Rights

In this case the first limb of that task is straightforward. The Complainant is the proprietor of rights in the name backstreetheroes through extensive use of the name in its publication of the backstreetheroes biking magazine (which according to its website has been in circulation for 21 years) and through its website at backstreetheroes.com. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic. 

Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark, which is identical to the Domain Name.

Abusive Registration

This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? 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.”

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant ‘factors’ in paragraph 3 are to be found in subparagraphs i and ii, which read as follows:

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.”    

The Expert interprets “as” in sub-paragraph i. B as being synonymous with “for the purpose of”. Were it to be interpreted otherwise all domain name registrations would inevitably constitute “blocking registrations” for any later arrival wishing to use the name in question. 

The Domain Name according to the Complainant, and at the time the Complaint was made resolves to a site owned by a competitor of the Complainant which offers very similar goods and services to those of the Complainant. The Expert considers that such behaviour satisfies the test of paragraph 3.i.B

However, as at the date of preparing this Opinion, the Domain Name resolved to a holding page advising as follows: -

For Sale £100,000.00: www.backstreetheroes.co.uk
Interested parties in this domain name please eMail: info@jazzpublishing.co.uk	

The Expert considers that such behaviour satisfies the test of paragraph 3.i.A of the Policy.

Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s rights.

8.	Decision:

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, backstreetheroes.co.uk be transferred to the Complainant.

The Expert notes that the Complainant’s Complaint extended to only four lines of text and that no supporting documents were produced in support of those four lines. Were it not for the Respondent’s actions in putting a sale notice on its website, the Expert would have had greater difficulty in dealing with this case. Whilst not wishing to attract very substantial numbers of documents, Complainants should be aware that as Experts can only decide cases on the information and documents provided with minimal additional research by the Expert (such as visiting the website behind a domain name), they may prejudice their case if their evidence or supporting documentation is lacking.

(sgd) David Flint
 	23 June 2005
 David Flint 								Date