Nominet UK Dispute Resolution Service
DRS  NO. 02917

PADDY POWER PLC/ PADDY POWER POKER  -V- MR. ALEX HOLT 

Decision of Independent Expert

1.	Parties

Complainant:  		Paddy Power Plc/ Paddy Power Poker	
Country: 		Ireland

Respondent:		Alex Holt
Country:		UK
			
2.	Domain Name

paddypowerpoker.co.uk
(referred to as “the Domain Name”)

3.	Procedural Background

The Complaint was submitted to Nominet on 26 August 2005, and hard copies of the Complaint were received in full by Nominet on 26 August 2005.  On 26 August 2005, the Complaint was validated by Nominet. On the same day, the Complaint was sent to the Respondent, by post, to the address in Sheffield provided in the whois information. The Respondent was informed that it had 15 working days, that is, until 20 September 2005, in which to respond to the Complaint. 

No response has been filed by the Respondent and so mediation was not possible. On  4 October 2005, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).

On 6 October 2005, Antony Gold, the undersigned, (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept Nominet’s invitation to him to act as an Expert in this case.  

4.	Outstanding Formal/Procedural Issues

4.1	The Respondent failed to submit a response to Nominet within the time stipulated in paragraph 5 of the Nominet UK Dispute Resolution Service Procedure (“the Procedure”).  Paragraph 15b of the Procedure states that where a party (in the absence of exceptional circumstances) does not comply with any time period laid down in the Policy or the Procedure, the Expert will decide the dispute based upon the Complaint.  Paragraph 15c of the Procedure states, in summary, that if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or the Procedure, the Expert will draw such inferences from the party’s non-compliance as he or she considers appropriate. The Expert is not aware of any exceptional circumstances.
4.2	The Complaint does not set out all the requisite information required by the Policy and Procedure. This issue is dealt with below in the section entitled “Discussion and Findings”. 
5.	The Facts

The totality of the non-formal part of the Complaint is as follows:

“I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

Paddypowerpoker.com
Paddypower.com
Paddypower.co.uk
Paddypowerplc.com
Paddypower.ie

I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration. 

The Complainant has rights in the Domain Name because:

“We are a registered public company in existence since 1988.  Paddy Power Poker is wholly managed brand of Paddy Power PLC. We also own the domain:
Paddypowerpoker.com
Paddypower.com
Paddypower.co.uk
Paddypowerplc.com
Paddypower.ie”

The following documents are appended to the Complaint;

(1) a blank sheet of notepaper of Paddy Power BCI  Ltd which is prominently headed “paddypowerpoker IT’S THE REAL DEAL!”

(2) what appears to be specimen betting document. The companies shown at the foot of the slip are Paddy Power Isle of Man Limited and Power Leisure Bookmaker Limited. There is a logo at the top containing the words “Dial a bet Paddy Power” followed by a telephone number.

(3) a blank sheet of notepaper of Paddy Power PLC. At the top of the notepaper are the words “Paddy Power BOOKMAKER”

From this Complaint and the appended documents, the Expert is able to find that the following facts can be established;

(i)	The Complainant was incorporated in 1988;
(ii)	It owns a brand called Paddy Power Poker;
(iii)	It also owns 5 domain names which incorporate the term “”Paddypower”. One of these domain names is Paddypowerpoker.com.
(iv)	Other, presumably related, companies, namely  Paddy Power BCI Limited, Paddy Power Isle of Man Limited and   Power Leisure Bookmaker Limited seem to be involved in betting and use the term Paddy Power. 
(v)	It is apparent from the copy of the home page of paddypowerpoker.co.uk provided by Nominet that it is being used at present to promote the services of a company called 123 reg-co-uk which seems to promote internet and domain name registration services. The site does not seem to make any use of the name Paddy Power.
6.	The Parties’ Contentions

Complainant

The totality of the Complainant’s case is set out at section 5 above. In summary, the Complainant asserts, on the basis of its ownership of other Paddypower-related domain names and its production of 3 exhibits, described above, that it has Rights in the Domain Name.  It asserts, without explaining the basis for the assertion, that the Domain Name in the hands of the Respondent, is an Abusive Registration.

Respondent

The Respondent has not filed a response.

7.	Discussion and Findings

Requirements which must be satisfied in order for the Complaint to succeed
In order to succeed, the Complainant must prove, on the balance of probabilities, that:-

•	it has Rights in respect of a name or mark which is identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy); and

•	the Domain Name in the hands of the Respondent, constitutes an Abusive Registration (paragraph 2(a)(ii)).

The standard of the Complaint

Before turning to the specific Complaint, it is material to point out that, whilst not forming part of the Policy and Procedure (both of which are readily accessible on the Nominet website), there is extensive  - and very helpful - guidance on the Nominet website as to the standard to which  Complaints should be prepared. This includes the following;
“The Complaint
This is the most crucial part of the complaint form:.... Remember that the Independent Expert will make his/her decision on your case based on what is written here (plus any exhibits and evidence attached) - you must not assume that he/she will do any research into your case and you do not have any opportunities to bring in new evidence later.
You may have the opportunity to file a 'Reply' to the Respondent's 'Response', but the Reply is for answering new points that the Respondent raised, not raising new things.
In our experience the two main reasons why complainants fail in the DRS is:
•	They have not read the DRS Policy or the DRS Procedure…..; or
•	They do not provide any evidence to back up what they say.
It is vital that you refer to evidence in your complaint and then providing it in indexed exhibits or schedules to your complaint (3 copies). Doing this will massively increase your chances of success. Stating "and this can be provided on request" or "see our website" will not be enough.”
On the issue of Abusive Registration, the website sets out the following advice;.
“We recommend that you enclose the following information in your complaint.
State the reasons why you consider the registration of the dispute domain names to be Abusive, in particular you should view paragraph 3 of the DRS Policy, for example:
a) Has the Respondent offered to sell the domain name(s) for more than the Respondent paid for it? If so, did the Respondent approach you with the offer to sell, or did you approach them?
b) Has the Domain Name been registered with the primary purpose of stopping you from using it?
c) Is the Respondent known to your business, for example, a competitor or an ex-employee? Or were they your distributor?
d) Has the Domain Name been used to confuse Internet users? If you are suggesting that users are confused by the registration of the domain name by the Respondent, how you say they are confused, why they are confused, what the effect of the confusion is, and preferably any proof that it has actually caused confusion (rather than just that it is 'likely' or 'obviously' going to do so).
e) Does the Respondent have a history of registering domain names which relate to trade marks in which they have no apparent rights, and if so, is this part of that trend? This does not necessarily have to be restricted to .uk domain names: generic endings such as .com and .org may be relevant too.
f) Has the Respondent given Nominet provably false information about his name and address, and is there independent proof of this? For these purposes, you, and anyone employed by you is probably not independent.
g) Did the domain name become registered to the Respondent as a result of previous dealings between you, and if so, have you been using and paying for it ever since?
h) Has the Respondent been through the DRS before? If so, has an Expert stated 3 or more times in the last two years that the Respondent has made an Abusive Registration?
Remember that what you write is all that the Expert will see, and subject to the 2,000 word limit, you should explain as fully and clearly as possible what the problem is.”
The Expert’s findings are made by reference to the Policy and Procedure. However, the guidance referred to above  is intended to assist Complainants  when preparing Complaints and it would be prudent for them to read it. 

Paragraph 2a(i) - the Complainant’s Rights

The meaning of Rights under the Policy includes Rights enforceable under English law. The Complainant’s obligation is to show that it has rights in a name which is identical or similar to PADDYPOWERPOKER (it being usual to disregard the co.uk suffix).

Complaints filed under the Policy are sometimes brief. This Complaint is spartan by any standards. Amongst the matters which the Expert is not told are the following;

(1) whether the Complainant owns any trade mark registrations for PADDYPOWERPOKER or any similar marks  and, if so, the goods and services for which the name is registered and used (where a Complainant has relevant registered trade marks, it is usual for it to refer to them as evidence of its Rights);

(2) if the Complainant does not have registered rights, but asserts  unregistered rights then (by way of example only);

(1) the length of time for which the Complainant has traded under the names PADDYPOWERPOKER;

(2) the value of business transacted by the Complainant under the name PADDYPOWERPOKER;

(3) the amount of time/money spent by the Complainant  in promoting the  name PADDYPOWERPOKER;

(4) the nature and extent of business transacted by the Complainant at the websites to which it has referred, particularly that at Paddypowerpoker.com

Not only is this information not provided, but the Complainant has not provided any copies of pages from the websites (or details of the number of hits to them) nor has it provided any substantive evidence which it establishes that it trades under the name PADDYPOWERPOKER. It has not provided  any marketing material relating to PADDYPOWERPOKER.  The only information provided about the Complainant’s interest in PADDYPOWERPOKER is a reference to a single domain name and the production of a single piece of notepaper of a company called Paddy Power BCI Limited 

In the absence of any  further information on these points, it is not possible to conclude, on a balance of probabilities, that the Complainant has Rights enforceable in English law in respect of a name which is identical or similar to PADDYPOWERPOKER.  

It is necessary to consider whether it is appropriate for the Expert to carry out research into the Complainant to ascertain its Rights (if any) in PADDY POWER POKER   and /or  whether the Expert should exercise his power under paragraph 13 of the Procedure to request further statements or documents from the Parties. 

Previous decisions under the DRS provide some helpful indications as to when it is appropriate to take further steps on behalf of a Complainant. Where the Complaint has been fully and properly prepared an Expert may be prepared to carry out online searches simply to verify certain information; Chivas Brothers Limited v David William Plenderleith (DRS 292). However, where the Complaint is considered to be defective it is not considered appropriate for an Expert to carry out further research; HIT Entertainment Plc v Tom Loosemore (DRS 1544).  In the present case the Expert would have to carry out online domain name and trade mark searches to assess the Complainant’s Rights. Further, to establish an accurate picture of the connection between the various Paddypower companies and websites, the Expert would also need to carry out full company searches as well as investigate the business affairs of the Complainant and the market in which it operates. Research of this nature would go beyond carrying out searches simply to verify certain information. In the recent case of MSF Ltd -v- Big Brother CCTV the position was expressed by the Expert in that case to be that the burden of proof rests on the Complainant to demonstrate that it has Rights in respect of a name or mark and, if the Complainant fails to provided adequate evidence to satisfy the burden of proof, the Complaint will be dismissed.
It is not the role of the Expert to provide assistance to the Complainant or, as would be necessary in this case to research and then compile the Complaint on behalf of the Complainant.  It is inappropriate in these circumstances to invite further evidence from the Complainant.
Accordingly, the Expert does not find that the Complainant has Rights in a name or mark which is identical or similar to the Domain Name.

Paragraph 2a(ii) - Abusive Registration

The above finding is determinative of the Complaint. Nonetheless, the Expert will deal briefly with the issue of Abusive Registration.

Article 3 c v of the Procedure provides that [The Complaint shall] “describe in accordance with the Policy the grounds on which the complaint is made including in particular; what Rights the Complainant asserts in the name or mark; why the Domain Name should be considered to be an Abusive Registration in the hands of the Respondent; and discuss any applicable aspects of paragraph 3 of the Policy, as well as any other grounds which support the Complainant’s assertion”.

The Complaint is defective under paragraph 3 b (v) of the Procedure as it does not explain (adequately or, in fact, at all) the grounds on which the Complainant considers the registration to be Abusive.  In this respect, the guidance on Nominet’s website referred to above, illustrates the type of information which a Complainant is expected to provide.

8.	Decision

The Expert finds, on the balance of probabilities, that the requirements of paragraph 2a(i) and 2a (ii) of the Policy have not been satisfied therefore the Domain Name should not be transferred to the Complainant. 

Antony Gold		
18th October 2005