Nominet UK Dispute Resolution Service
DRS 02925
Pearl and Dean

- and -

dcD (aka maggie davis)

RE:	pearlanddean.CO.UK

Decision of Independent Expert

Parties: 

Complainant:	Pearl and Dean	

Represented by:	Mr. Tom Pryce	

Respondent:	DCD aka Maggie Davis	

		
Disputed Domain Name:	pearlanddean.co.uk	

Abbreviations used in this decision:

Abbreviation	Definition	
DRS	Nominet UK's Dispute Resolution Service	
DRS Policy	Nominet UK's Dispute Resolution Service Policy as applicable after 25/10/04	
DRS Procedures	Nominet UK's Dispute Resolution Service Procedures as applicable after 25/10/04	
The Expert	Kirsten Houghton	

Procedural Background:
1.	The Complaint was lodged with Nominet on 1st September 2005 and hard copies were received on 20th September 2005.   Nominet validated the Complaint on the same day. 
2.	On 20th September 2005, Nominet sent the complaint to 
(a)	The Respondent’s address  by post
(b)	By e-mail to the Respondent’s email address listed in Nominet’s database and
(c)	By e-mail to postmaster at the Domain Name.
3.	No response was received; accordingly, mediation was not attempted.  
4.	On about 28th October 2005, the Complainant paid the fee in order to obtain a decision of an independent expert.  It appears that there was some sort of administrative error, since the papers refer to an extension of time for submission of the fee of 1 day, but it is not clear from the papers provided what the error was.
5.	On 28th October 2005, I confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.    
Outstanding Formal/Procedural Issues (if any):
6.	None.
The Facts:
(1)	The Parties – the Complainant
7.	I am told only that:
“Pearl and Dean is a recognised UK Cinema advertising brand, trading in the UK for over 50 years.”

8.	I have of course heard the name “Pearl & Dean” and seen their advertising in the cinema many times.  However, I have not been provided with any information at all concerning the owner of the name “Pearl & Dean” – I do not know whether it is a sole trader, a partnership, or a trading name for a company or group of companies, and I have not been assisted by the provision of any information or explanation by the Complainant such as, for example, a company search or an explanation of ownership.
(2)	The Parties - the Respondent
9.	The Respondent is listed in the whois records as “DCD”, and indicates that the individual behind the name has opted to have their address omitted from the database.  In fact, the registrant is called Maggie Davis and appears to be based in Kent.
10.	I have not been told anything about Ms. Davis or her interest in the Domain Name.
(3)	The Complainant’s rights

11.	In the shortest complaint I have yet seen, the Complainant states::
I confirm that the domain name in dispute is identical to the name which Peal (sic) and Dean have rights to. Pearl and Dean is a recognised UK Cinema advertising brand, trading in the UK for over 50 years.

12.	I have not been provided with any information about registered trademarks or any formal recognition of rights. 
13.	However, I am prepared to assume, owing to the easy recognition of the name “Pearl & Dean” that whoever owns the mark has sufficient goodwill in it to sustain an action in passing off, which is sufficient to overcome the hurdle presented by the policy.
(4)	The Complaint
14.	This Complaint was issued after 25th October 2004, and, accordingly, the amended DRS Policy and Procedures apply to it.  The amended DRS Policy and Procedures has introduced some new factors which may be considered as evidence of abusive registration, and states:
 3.	Evidence of Abusive Registration

a.         	A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i.           	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A.	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.      	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;

iii.       	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;

iv.   	It is independently verified that the Respondent has given false contact details to us; or

v.     	The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A.         	has been using the domain name registration exclusively; and

B.  	paid for the registration and/or renewal of the domain name registration.

b.       	Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.

c.        	There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

15.	The Complaint does not refer to the DRS Policy or Procedures expressly at all.  It is an exceedingly brief submission (the most limited I have seen to date), and states (in its entirety):
I confirm that the domain name in dispute is identical to the name which Peal and Dean have rights to. Pearl and Dean is a recognised UK Cinema advertising brand, trading in the UK for over 50 years. Not owning the domain for the UK undermines the brand within the UK. When using WWW.Pearlanddean.co.uk in a (sic) Internet browser users are redirected to another site called the Mile High Club which misrepresents the Pearl and Dean brand.

16.	Apart from these few words, no evidence to support these assertions has been produced by the Complainant.  I have been provided with a copy of the homepage to which the URL resolves by Nominet.  It contains the title “TheMileHighClub” and a list of names of recognisable domain names relating to air travel.
17.	I have also been told by the Whois query provided by Nominet that the Domain Name was registered on 30th August 2001.
(5)	Abusive Registration?
18.	The only allegation relates to the webpage referred to above, the substance of which is “undermining the brand” and “misrepresentation of the brand.”  
19.	The criteria set out in Paragraph 3 of the DRS Policy are not exhaustive, and it is often suggested that, in circumstances where someone other than the registered holder registers a domain name which is identical to a registered trademark, the registrant’s conduct normally requires explanation in order to displace the conclusion that the registration is abusive, particularly where the trademark is well known.  
20.	This proposition has recently been the subject of some debate in the DRS, notably in the Appeal in DRS 02201 vikingdirect.co.uk.  In that case, the majority of the Panel stated:
	…the second arm of Paragraph 2(a) … places an effective burden on the Complainant. It is for the Complainant to prove on the balance of probabilities that the Domain Name, in the hands of the Respondent, is an Abusive Registration, that is that the Respondent is taking unfair advantage of, or is unfairly detrimental to the Complainant’s rights. Were this Panel to accept the Appellant’s contention that: “registration of the trade mark or name of an established business as a domain name by a customer of that business must raise at least a prima facie case of abusive registration”, it appears that the second leg of this test would be substantially weakened. Simply by establishing a right in a name or mark in accordance with paragraph 2(a)(i), and a by providing evidence of a previous commercial relationship the burden of proof would switch to the Respondent. This Panel does not believe that simple knowledge of the Complainant and its names or marks is sufficient to attribute that the Respondent that they registered or have used a domain name in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights. The Panel therefore rejects this contention. …

	The majority Panellists note the argument made in the dissenting Opinion that there are some aspects of the Respondent's case that are less than wholly convincing; however, the majority Panellists consider that it is not for the Respondent to make a convincing justification of her use of the Domain Name, but rather for the Appellant to satisfy the tests in the Policy. It is not for the Panellists to impute or infer intent or make a convincing justification of her use of the domain, but rather for the Appellant to satisfy the tests in the Policy. It is not for the Panellists to impute or infer some adverse motives for selection of a name…

21.	Mr. Willoughby, the dissenting panellist, stated as follows:
	In this case the Complainant asserts that a registrant who registers as a domain name a name or mark belonging to someone else (and without adornment i.e. the identical name) and without any obvious justification for having done so has a case to answer.  I tend to agree, but for safety’s sake I would add that it has to be the sort of name, which at time of registration the respondent knew or is likely to have known was a name or mark of the complainant...	

	In my view, a person who registers (or accepts as a gift) a domain name which, to the registrant’s knowledge constitutes the name or trade mark of another (and without adornment) has to be ready with a reasonable explanation. The less distinctive the name or trade mark in question, the easier it will be for the registrant to provide a satisfactory explanation. Indeed, in some cases, the circumstances may be such that no explanation is called for. On the other hand, the less likely the explanation, the greater the support that will be required. 

22.	It is plain that Mr. Willoughby disagreed strongly with the original Expert’s (and the majority Panellists’) assessment of the evidence in the case, however, I do not think he goes so far as to suggest that the owner of a registered trademark (even a well-known one) does not have to put forward a prima facie case, or even to suggest that such a person does not have to satisfy the balance of probabilities, which is the evidential hurdle imposed on the complainant by Paragraph 2(b) of the DRS Policy.  The difference between the Panellists appears to me to have been, in reality, one of what weight to attach to particular evidence, and the views taken as to likelihood or otherwise of the explanation offered by the Respondent.   
23.	In this case, the Complainant has not provided any evidence of its actual identity, nor any supporting evidence for the existence of its rights and no evidence of any “formal” registered rights, to the extent that they may exist.  It has not provided any argument by reference to the DRS Policy, nor has it provided any evidence about the Respondent or her possible motives.  It did not even itself provide the copy of the webpage referred to.  
24.	To what extent am I permitted or required to make good the deficiencies in the Complainant’s case?  This question has been considered in a number of DRS decisions including:
(a)	DRS 00292 – chivasbrothers.co.uk
(b)	DRS 1544 - barney.co.uk
(c)	DRS 1812 – dnabioscience.co.uk
(d)	DRS 02052 - 2sms.co.uk  
(e)	DRS 02554 – biobead.co.uk and another
(f)	DRS 2735 - Equazen UK Ltd v Morrison. 
25.	In chivasbrothers.co.uk, the Expert (Mr. Tony Willoughby) said:
As a matter of course, when sending the papers to the Expert, Nominet includes in the papers a printout from the Companies Registry website containing short form details of any party which is a UK registered company.  The printout relating to the Complainant discloses that the Complainant was incorporated 12 days after registration of the Domain Name under the name of Yearweb Limited and only acquired its present name by way of a name change about 9 months after registration of the Domain Name.  

The Complaint includes a variety of claims to the effect that the Complainant possesses rights going back over a century, but includes no reference to there having been any Assignment.

The Expert was faced with this dilemma: should the Complaint be dismissed out of hand on the basis that on the face of the Complaint the Complainant could not possess the rights claimed for it in the Complaint, or should the Expert conduct an online check at the Trade Marks Registry to verify whether or not there had been an Assignment, a check which need take no more than a couple of minutes of the Expert’s time?  The Expert was not prepared to adopt the third option which was to waste further time going back to the Complainant, inviting the Complainant to improve its position, an option open to the Expert by virtue of paragraph 13 of the Procedure.

The Expert was conscious that he had recently “gone public” on Nominet’s behalf to the effect that experts will be getting tough over defective Complaints; equally, he was conscious that in all probability the Complainant possessed the rights claimed for it in the Complainant. 

In the end, the Expert decided to verify the existence of the Assignment.  The principal determining factor for the Expert was that the Complaint was in all other respects a full and properly prepared document.

26.	In barney.co.uk, the Expert (Mr. Andrew Lothian) said:
As will be detailed in the Discussion and Findings Section below, although the Complainant claims rights in UK registered trade marks which are identical or similar to the Domain Name and indeed cites these by number, the evidence produced does not show the Complainant as the proprietor of the marks.  Furthermore, there is no indication as to how the Complainant might derive any rights from the listed proprietor.  It is possible that the Complainant might have obtained such rights via Assignment or licence.  In Chivas Brothers Limited v David William Plenderleith (DRS 00292) the expert was presented with a similar problem - the dilemma was whether the complaint should be dismissed out of hand on the basis that on its face the complainant could not possess the rights claimed for it in the complaint, or whether the expert should conduct an online check at the Trade Marks Registry to verify whether or not there had been an Assignment.  The expert in that case was not prepared to adopt an option which would have wasted further time by going back to the complainant, inviting the complainant to improve its position, by virtue of paragraph 13 of the Procedure.   The expert was conscious that in all probability the complainant possessed the rights claimed for it in the complaint and decided to verify the existence of the Assignment, noting that the principal determining factor for him was that the complaint was in all other respects a full and properly prepared document.

The Expert in the present case shares the view of the expert in Chivas that it is not appropriate to invite the Complainant to improve its position by way of paragraph 13 of the Procedure; the Complainant is expected to prove its case on balance of probabilities and must therefore put forward the very best case that it can in the complaint.  In other respects, however, this case is different from Chivas.  The complaint here is not a properly prepared document.  Some of the trade marks cited appear to have no relevance whatsoever to the name under dispute, others are cited but no copy certificates are produced, the nature of the Complainant's activities is not specified (other than that it seems to have some involvement with 'the barney TV program, [sic] merchandising, fan club and other barney children activities'), the complaint rambles in places and furthermore contains unclear submissions such as 'Due to the owner, registrant not contactable and the domain name pointing to a sailing website properly the domain creating extra web traffic…'.  In these circumstances the Expert will not conduct any further search to assess or verify the rights of the Complainant in the name.  

27.	In  dnabioscience, the Expert (Mr. Anthony Gold) said:
The Expert agrees with the view of the experts in the Chivas and HIT Entertainment decisions and has concluded that it is not appropriate to invite the Complainant to improve its position by way of using Paragraph 13 of the Procedure to obtain further information from it.   In this case, the Expert could conduct further searches to try to assess or verify the Rights of the Complainant in the name, for example, by reviewing the Complainant’s website at dnabioscience.com in order to see the use made by the Complainant (if any) of the name DNA BIOSCIENCE and to obtain further information about the Complainant and the Respondent.  However, the inadequacies in the Complaint are not confined to the issue of whether the Complainant has Rights in the Domain Name.    Beyond setting out information about the background to the claim and making the assertion that the Domain Name in the hands of the Respondent is an Abusive Registration, the Complainant has not attempted to develop a coherent case as to why the Expert should reach this finding (see below). Accordingly, the Complainant would also need to formulate its case in relation to paragraph 2a(ii) of the Policy if it were to have any prospect of success. In the view of the Expert, the Complainant is expected to prove its case on the balance of probabilities and must put forward the best case which it can in the complaint.   It is not the Expert’s role to undertake this exercise for the Complainant.

In these circumstances, the Expert has not conducted any further searches to assess or verify the Rights of the Complainant in the name (save other than to obtain information about the Complainant’s trade mark, online, at the Trade Marks Registry for the reasons set out below) and the Expert will consider the merits of the Complaint on the basis of the information provided by the Complainant.

28.	In 2sms.co.uk, biobead.co.uk and equazen.co.uk,  Mr. Gold (who appears to have had more than his fair share of these cases) expressed similar sentiments.
29.	A further discussion occurs in DRS 01179 globetpoker.co.uk (Mr. Lothian):
A final procedural issue is presented for the Expert in assessing the Complainant's Rights.  While the Complainant provides the date of registration of its trade mark, no copy certificate is produced and it is not clear in which register the mark was filed.  Is the Expert entitled to check publicly available trade mark registers to verify the Complainant's submission?  This question has been considered in a good number of previous cases under the DRS. 

In Televes UK Ltd v Adam Barrington (DRS 00074) and Commerzbank AG v Castellomedia Limited (DRS 00106), the Experts took the view that they could have regard to readily available public records in reaching their decisions when such material appeared likely to be relevant.

In TNT v Sibley (DRS 421), the Expert considered that the Complaint should be determined on the evidence submitted by the parties in accordance with paragraph 16(a) of the Procedure and not on the basis of any evidence that the Expert has to unearth himself, even where the Complainant had not obtained professional assistance. 

In Chivas Brothers Limited -v- David William Plenderleith (DRS 00658) the Expert had to consider whether or not there had been an Assignment of particular trade mark rights.  This could be easily determined from an online check at the UK Registry.  The question was fundamental to the decision on the complainant's rights in that case.  The Expert was conscious that in all probability the complainant possessed the rights claimed for it in the complaint.  The Expert therefore decided to check the register, having noted that the principal determining factor was that in all other respects the complaint was a full and properly prepared document.

Most recently, in Watermark Group PLC v Watermark Recruitment Bureau, (DRS 00657) the Expert verified that a particular limited company did not exist - taking the view that consulting a publicly available statutory register was permissible. The Expert went on to state that he had not relied upon any further independent enquiries in reaching his decision.

In the present case, it would be stretching matters too far to claim that the complaint is a full and properly prepared document.  However, taken with the reply it provides all of the elements required, absent the actual evidence of registration of the trade mark.  The Expert once again took the view that a small amount of latitude could be given on the basis that (1) the parties are not represented legally and (2) there was in fact quite a lot of detail provided about the trade mark by the Complainant - the Expert was supplied with an approximate date of filing, the mark description itself and a strong likelihood that this would be found in the UK register.  As in the Chivas case above, the Expert was very conscious that the Complainant probably possessed the rights contended for but had omitted to provide evidence of these.  On this basis, the Expert decided to check the UK register.  As described in Chivas, this is "a check which need take no more than a couple of minutes of the Expert's time".

The Expert found UK trade mark number 2068509 for the word mark GLOBET registered to the Complainant with a date of filing of April 11, 1996.  No other independent enquiries were made by the Expert in reaching the decision which follows.

30.	A number of experts have also followed Mr. Willoughby’s “4 stage test” set out in chivasbrothers.co.uk:
Where a Respondent registers a Domain Name:-

1. which is identical to a name in respect of which the Complainant has rights; and

2. where that name is exclusively referable to the Complainant; and

3. where there is no obvious justification for the Respondent having adopted that name for the Domain Name; and

4. where the Respondent has come forward with no explanation for having selected the Domain Name,

it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain Name for a purpose and secondly that that purpose was abusive.  In this case the Expert draws those inferences.

31.	As far as I have been able to ascertain, in each of the cases where this test has been applied, the Complainant has been an identified company, individual or partnership, with an identifiable business or trademark, established by reference to the evidence provided by the Complainant.
32.	I also have the ability, if I so wish, to draw adverse inferences against the Respondent for its failure to submit a response (provided by Paragraph 15(c) of the DRS Procedures).  
33.	I am acutely conscious that “Pearl & Dean” is a well known “brand”.  However, the Nominet procedure is not an inquisitorial one, and it expressly places the burden of proof on the Complainant, however easy that burden may be to shift in the case of a properly proved, well-known trademark (as to which there is disagreement).  It is my view that this complaint is so defective in:
(a)	Its failure to identify the owner of the “brand”
(b)	Its failure to provide any evidence of weight to support the existence of the “brand” or any registered rights in the name and
(c)	Its failure to provide any evidence of substance to make or support any allegation of abusive registration
that I should not attempt to rectify the deficiencies in the complaint by carrying out independent searches, or by asking inquisitorial questions under Paragraph 13(a) of the DRS Procedures and I have not done so.  
34.	At the very least, before considering whether or not to embark on such an exercise, I would expect a complainant to provide some evidence identify itself as a legal person, be it an individual, partnership (whether or not either is trading under a business name), company, charity or other legally recognised body (so that, for example, if Nominet is ordered to transfer a domain name, it has a real, identifiable entity to transfer it to), and to provide evidence of a registered trademark or the accumulation of goodwill or other rights in a name so that, for example, it might be possible to consider the application of the chivasbrothers.co.uk 4 stage test.  
35.	It is disappointing to have to reach this conclusion because the complainant has not followed the guidance or even really attempted to establish its case.   The fee paid to Nominet for an expert determination is not insignificant, and to be driven to reach such a conclusion because of lack of evidence of something so basic as the identity of the complainant leaves this expert with a sense of futility and waste of money.
(6)	Decision
36.	I find that the Complainant has not proved on the balance of probabilities that it has rights in the Domain Name.  Accordingly, no action should be taken on this Complaint. 

KIRSTEN HOUGHTON FCIArb.		9th November 2005	

Nominet UK Dispute Resolution Service
DRS 02925
Pearl and Dean

- and -

dcD (aka maggie davis)

RE:	pearlanddean.CO.UK

Decision of Independent Expert

KIRSTEN HOUGHTON FCIArb.
Quadrant Chambers
10 Fleet Street
London EC4Y 1AU