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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Gary Pope v TagNames Ltd [2005] DRS 2796 (16 September 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2796.html Cite as: [2005] DRS 2796

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Nominet UK Dispute Resolution Service

DRS 02796

Gary Pope v TagNames Limited

Decision of Independent Expert

1. Parties

Complainant: Gary Pope

England

Respondent: TagNames Limited

England

2. Domain Name

bankstaff.co.uk

("the domain name")

3. Procedural Background

The complaint is dated 11 July. Nominet received hard copy on 25 July and checked that it complied with the 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 that he had 15 working days within which to lodge a response. No response was received. Nominet then advised the parties that the case would be referred to an independent expert for a decision if the Complainant paid the appropriate fee. The fee was received on 26 August.

On 3 September 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

From the complaint and the administrative information provided by Nominet I accept the following as facts.

The Respondent is represented by its director and secretary, Andy Hugh.

The domain name was registered by the Respondent on 11 July 2004. At the time of the dispute it was connected to a web page run by a third party, Sedo. It remains connected to that page. Sedo describes itself as 'the leading marketplace for buying and selling domain names and websites'. It offers a 'parking' service for otherwise unused domain names, which are then left to attract internet traffic in the hope of encouraging visitors to click on links to other sites.

The Sedo parking page to which the domain name is connected does not say the domain name is for sale. It simply contains a series of links to other web pages, most of which appear to be websites offering dating services. There is no information about whether the links are chosen by the Respondent or by Sedo.

The Complainant works in recruitment, finding staff for major UK banks.

The Complainant approached the Respondent and offered to buy the domain name for use in his business. The initial asking price was £500. The Complainant offered £250, at which point the asking price increased to £750. At that stage the Complainant sought to have the domain name transferred to him under Nominet's dispute resolution procedure.

6. The Parties' Contentions

Complainant

The Complainant asserts that the domain name is identical or similar to a name or mark in which he has rights. He claims that the Respondent is holding the domain name purely to sell on at the highest price and that for that reason it is an abusive registration.

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

The Complainant offers no evidence that he has rights in a name or mark which is identical or similar to the domain name. He says he would like to use the domain name as part of his business. I accept that. But that desire is not evidence of rights in an identical or similar name.

Does the Complainant's work in bank staff recruitment of itself establish any rights in a name identical or similar to 'bankstaff'? I do not see how it can. 'Bank' and 'staff' are part of a possible description of the kind of business the Complainant runs. But there are many other possible descriptions that use neither of those words. The fact that 'bank' and 'staff' could form part of a generic description of the Complainant's business does not of itself give the Complainant rights in a name identical or similar to the domain name.

The threshold to establish rights is a low one. Failure to clear it is, nonetheless, a fatal stumbling block. But there is nothing here that even tends to support – let alone justify – the Complainant's assertion of his rights.

I do not accept that the Complainant has rights in a name that is identical or similar to the domain name.

Abusive Registration

Strictly, I need not consider whether the registration is abusive in the Respondent's hands because the Complainant has not got over the first – low – hurdle in establishing the necessary rights. For completeness I will nevertheless look at the nature of the registration as well, though the question of rights arises there too.

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.

Domain names are offered first-come, first-served. The Respondent got in here before the Complainant. The Complainant claims that the Respondent's only motive in registering the domain name was to sell it at the highest price, and that that fact renders the registration abusive.

Little direct evidence of motive is available. We know the Respondent has been trying to secure the best price for the sale of the name. That in itself does not mean the sole motive behind registration was to sell at the highest price, though the indirect evidence does tend to confirm the impression formed by the Complainant that the Respondent registered the domain name to try and generate as much profit from it as possible.

But the Complainant implies that this financial motive of itself renders the registration abusive. It does not. Perhaps the Complainant is misled by the non-exhaustive list of factors in the Policy that might be evidence of an abusive registration. The list includes

circumstances indicating that the Respondent registered the domain name primarily…for the purposes of selling, renting or otherwise transferring the domain name to 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

Here, though, there is no evidence that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant. The Respondent may well have registered with a view to selling on to someone at a profit. But having a general desire to make money from a domain name by selling it does not of itself take unfair advantage of anyone's rights and therefore does not of itself mean the domain name is an abusive registration. As the appeal panel observed in Hanna-Barbera Productions, Inc -v- Graeme Hay:

the fact that a demand for money may be in excess of the out of pocket expenses of the registrant cannot of itself constitute abusive use of the Domain Name. Were it to do so, domain name dealing, of itself a perfectly legitimate activity, would be outlawed at a stroke – not something that the architects of the Nominet DRS could conceivably have contemplated. All depends upon the domain name in issue. Ordinarily, the price put upon a domain name by a registrant is simply evidence of what the registrant regards as being its market value. Many generic names command high prices.

Similar arguments apply to the actual use to which the domain name has been put. The name has been connected to a parking page. There is no evidence of the nature of the Respondent's relationship with Sedo except for the webpage at the domain name itself. I infer that the Respondent, having no immediate use for the domain name, parked it with Sedo to attract either traffic (being paid on the basis of clicks through to the linked web pages) or a buyer for the domain name itself. The links on the parking page are to many different kinds of site. It is not clear whether the keywords generating the links are supplied by the dealer or by the Respondent. Either way, the Respondent is clearly making money, or attempting to make money, by allowing the domain name to be used to attract traffic. There are obviously situations in which that kind of use might involve taking unfair advantage of someone else's rights. But whether rights exist and whether unfair advantage is being taken in any particular case will of course depend upon the facts. There is nothing here to justify the conclusion that the Complainant has rights in the first place.

The underlying question is whether the domain name was registered or has been used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's rights. It is not possible to take unfair advantage of rights that do not exist. The Complainant has not established he has any relevant rights. It follows that, from his perspective, the registration cannot be abusive.

I conclude that the domain name is not an abusive registration.

8. Decision

I find that Complainant has

(i) not proved that he has rights in respect of a name or mark which is identical or similar to the domain name; and

(ii) not proved that the domain name, in the hands of the Respondent, is an abusive registration.

In the light of that, I direct that no action be taken.

Mark de Brunner

16 September 2005