Nominet UK Dispute Resolution Service

DRS 3613

Black Market Merchandising Ltd v. Nicholas Andersson-Gylden

Decision of Independent Expert

1.	Parties

Complainant:	Black Market Merchandising Ltd	

Country:	GB

Respondent:	Nicholas Andersson-Gylden

Country:	GB

2.	Domain Name

nickyblackmarket.co.uk ("the Domain Name")

3.	Procedural Background

The Complaint was submitted to Nominet on 19 April 2006.  Hardcopies were received in full on 24 April 2006 and the Complaint was validated by Nominet and sent to the Respondent by post and by email both to postmaster@[the Domain Name] and to the administrative email address which Nominet held for the Respondent on the register database.  The Respondent was informed in this correspondence that he had 15 working days, that is, until 17 May 2006 to file a response to the Complaint.

The Respondent filed a Response electronically on 15 May 2006 and hard copies were received on 17 May 2006.  On 26 May 2006 a non-standard electronic Reply was received by email from the Complainant.  Hardcopies of the Reply were also received on the same day and mediation was initiated by Nominet.  Mediation was to take place between 2 and 16 June 2006.  On 9 June 2006 a non-standard submission was received from the Complainant.  On 15 June 2006 Nominet wrote to the parties noting that it had not been possible to resolve matters by mediation and advising that if the Complainant paid the appropriate fees by 29 June 2006 the case would be referred to an independent expert for a decision.  On 19 June 2006 the Complainant paid the fee for referral of the matter for an expert decision pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy").  On 23 June 2006 a non-standard submission was received from the Respondent.  On 26 June 2006, Andrew D S Lothian, 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 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 26 June 2006.  

4.	Outstanding Formal/Procedural Issues

Complainant's Reply raising new matters

The Respondent has objected to matters being raised in the Complainant's Reply that were not covered in the original Complaint.  The nature of this objection is that if these matters are allowed, the Respondent would be denied a right of reply.  Paragraph 6(a) of the Procedure provides that the Complainant 'may submit a reply to the Respondent's response.'  Given that this is clearly stated to be a reply, it cannot be intended as a vehicle for new submissions or evidence.  Nevertheless, given (1) the complicated factual background to this case, (2) the fact that the Complainant is not represented and may not have understood the clear demarcation intended between matters for the Complaint and Reply, and (3) the Expert's agreement to allow the Respondent's non-standard submission as noted below, the Expert has decided to allow the Reply in its entirety.

Non-standard submissions

Paragraph 13(b) of the Procedure states:- "Any communication with [Nominet] intended to be passed to the Expert which is not part of the standard process (e.g. other than a complaint, response, reply, submissions requested by the Expert, appeal notice or appeal notice response) is a 'non-standard submission'. Any non-standard submission must contain as a separate, first paragraph, a brief explanation of why there is an exceptional need for the non-standard submission. We will pass this explanation to the Expert, and the remainder will only be passed to the Expert at his or her sole discretion. If there is no explanation, we may not pass on the document or information."

As noted above in the Procedural Background, the Expert has received a non-standard submission from each party.  The Complainant's non-standard submission was received on 9 June 2006.  The first paragraph explanation states "With reference to my telephone conversation of June 6th 2006 I wish to submit evidence that has just come to light & I feel is crucial to my case and should be admitted."  Given (1) the Complainant's assertion that crucial new evidence had come to light; (2) the already complicated factual background to the case and (3) the fact that if such evidence was indeed new and crucial it might be inequitable to refuse to consider it, the Expert examined the Complainant's non-standard submission.  

The Complainant's non-standard submission principally relates to comments allegedly made by the Respondent on two web sites that are not associated with the Domain Name or with the Respondent's registration or use of it.  It also contains an assertion by the Complainant that the Respondent is inviting promoters to hire him based upon his association with the Complainant's brand.  Clearly this is new evidence, but it is not 'crucial' in the Expert's view as it has no bearing whatsoever on the registration or use of the Domain Name.  As noted below, the Expert had already decided to bring into consideration those new matters raised by the Complainant in the Reply on the basis that the Respondent was also allowed a right of reply by way of his own non-standard submission.  However, the Expert does not believe that it would be appropriate or fair to bring in yet more new matters particularly where these would require yet another right of reply on the part of the Respondent.

The second non-standard submission, from the Respondent, was received on 23 June 2006.  The first paragraph explanation states "There is exceptional need for the non-standard submission because the Complainant has submitted evidence in reply which would more properly have been adduced in the Complaint.  Unless the non-standard submission is admitted the Respondent would be denied the right to comment upon it."  The non-standard submission contains a detailed response to the Complainant's Reply.  The Expert has decided to admit those aspects of this non-standard submission that consist of a relevant response to issues raised in the Reply, so as to ensure that both parties have had the opportunity to respond directly to the contentions of the other.  The Expert has not admitted the section of the non-standard submission relating to a fax from Lucy Anderson-Gordon (stated to be item 6 in the annexes to the Reply) as this fax was not in the papers.  The Expert queried this with Nominet and was informed that neither party had lodged this fax with Nominet relative to the present DRS case and that it had possibly been sent directly between the parties.  Accordingly neither the fax nor any submissions relative thereto require to be considered.  

5.	The Facts

The factual background to this case has been rather difficult to decipher, mainly because the parties appear to be engaged in a bitter dispute over many different aspects of their original business or personal dealings and on many issues, both legal and factual, they adopt diametrically opposed positions.  While the parties have chosen to bring many of their past and present disputes to the attention of the Expert, very few of these issues appear to be directly relevant to the registration and use of the Domain Name or the underlying circumstances.

In preparing the chronology of events that follows, the Expert has been greatly assisted by the expert's chronology in Black Market Merchandising Limited -v- Shango Limited (DRS 3312), a case involving the Complainant and a respondent connected with the present Respondent.  However, it is important to note that each element in the chronology below has been checked against materials supplied by the parties in the present case and is based upon facts that both parties seem to agree, or from unopposed assertions of fact by one or the other.

1984: Rene Gelston, originally a highly successful hairdresser, started operating a regular impromptu Friday night music event at London's Wag Club under the name "Black Market". This event was successful and popular.  It continued until 1989. 

1987: Rene Gelston opened a record shop named "Blackmarket Records" or "Black Market Records" (both depictions of the name appear in the documents) in London's Soho.  At around the same time Rene Gelston also started a record label named Black Market which has since been highly successful in its own right in terms of worldwide hit records and awards.

30 May 1990: Black Market Group Limited was incorporated. It is controlled by Rene Gelston. 

11 June 1990: Black Market Group Limited registered UK trade mark no. 1432845 for the words BLACK MARKET in classes 9 (sound recordings and apparatus for recording sound or images) and 25 (clothing and leisurewear). 

06 December 1990: The Complainant was incorporated. The Complainant is also controlled by Rene Gelston. 

1990 / 1991: Rene Gelston / the Complainant sold the Black Market Records shop to Shango Limited, a company controlled by an individual named David Piccione and the Respondent. 

1991: The Respondent adopted a stage name in respect of his activities as a DJ.  The stage name was variously represented on promotional flyers as 'NIKKI BLACK MARKET', 'NIKKI BLACKMARKET', NICKY B.MARKET', 'NIKI BLACK MARKET', 'NICKY BLACK MARKET', 'NICKY BLACKMARKET', NICKY (BLK MKT), or NICKY BLK MKT. The Respondent continues to use this stage name to the present day, mainly in the 'NICKY BLACKMARKET' variant.  The Complainant asserts that Rene Gelston "help[ed] with [the Respondent's] early DJ career" and this is not disputed by the Respondent, although no further information is provided as to the nature of the help given.

18 January 1991: Rene Gelston entered into a licence agreement with David Piccione and the Respondent concerning use of the name "Blackmarket Records".

26 October 1994 / 4 November 1994: The 1991 licence was superseded by a new agreement between Black Market Group Limited and Rene Gelston on the one hand and Shango Limited, David Piccione and the Respondent on the other. The former granted an exclusive licence to the latter to use the name "Blackmarket Records" (and associated logos): (1) as the name of the shop; and (2) to sell merchandising items bearing that name and to advertise such merchandise and the products sold in the shop. The licence was for 10 years. When the term ended, all rights were to revert to the licensor and the licensee had to stop using the name "Blackmarket Records" except to sell off existing merchandise. Clause 9(i) in this licence stated that the Complainant and Rene Gelston "hereby agree that [the Respondent] may continue to use the name "Nicki Blackmarket" in connection with his activities as a DJ."

30 September 1998: Black Market Group Limited assigned UK trade mark no. 1432845 to the Complainant. 

02 February 2001: the Respondent registered UK trade mark no. 2260189 for the words NICKY BLACKMARKET in classes 9 (audio/video recordings, music provided by telecommunications networks, online delivery, cinematographic films and photographic transparencies), 25 (clothing, footwear and headgear) and 41 (education and entertainment, musical, dramatic, radio and television entertainment and disc jockey services/associated facilities management).

28 July 2002: the Respondent registered the Domain Name.

01 February 2005: The Respondent filed Community trade mark No. 004272721 for the words NICKY BLACKMARKET. There is an opposition pending by Rene Gelston on the basis of the likelihood of confusion, unfair advantage/detriment to distinctiveness or repute and mark filed without authorisation of proprietor.

10 October 2005: Solicitors acting for Rene Gelston and the Complainant issued a letter before action to the trade mark attorneys acting on behalf of the Respondent.  In that letter, the solicitors stated that the Respondent was engaged in what appeared to be infringing activity in relation to the use of the trade name "Nicki Black Market".  They went on to state that the Respondent was licensed for certain uses of this phrase pursuant to clause 9(i) of the licence agreement of 4 November 1994 and that this licence ended on 4 November 2004.  They added that the registration of a trade mark on 2 February 2001, the Community trade mark application and the Domain Name registration were breaches of contract and "flagrant trade mark infringement/passing off".

21 October 2005: Trade mark attorneys acting for the Respondent replied to Rene Gelston and the Complainant's solicitors.  They raised the question of the date of the licence agreement (there are two copies, one bearing the date 26 October and the other 4 November 1994).  They denied that there was any licence over the Respondent's use of the trade mark NICKY BLACKMARKET and argued that clause 9(i) of the licence was merely an acknowledgement of the Respondent's pre-existing rights to use the trade mark. They noted that the Respondent's trade mark does not 'nearly resemble' the Complainant's trade mark and made various arguments regarding the applicability of the Trade Marks Act 1938.  They denied that the Respondent had any liability to the Complainant in respect of his use of the trade mark NICKY BLACKMARKET.

16 January 2006: Rene Gelston wrote to the Respondent's trade mark attorneys.  He indicated that he was not instructing his solicitors for the time being although he had taken advice.  The remainder of the letter reinforces the Complainant's position on the 1994 licence but does not deal specifically with the issue of the Respondent's DJ name.  The letter refers to a further letter of 2 December 2005 from the Respondent's trade mark attorneys but this does not appear to be in the papers.

23 January 2006: The Complainant lodged the complaint with Nominet in DRS 3312 regarding the latter's registration and use of the domain name blackmarket.co.uk.  The expert in this case ruled that the respondent, a company controlled in part by the present Respondent, had made an abusive registration and ordered that the domain name be transferred to the Complainant.

25 April 2006: A page on the website of the Respondent that is associated with the Domain Name stated: "Important News / New Black Market shop online! / 2004-09-03 20:16:51 / Brand new bmsoho web store online (formerly Black Market Records) - updated to the max with full visual & audio clips for every track in the store..."  Another page with a biography of the Respondent stated "...Friends FM, run by Mad B. gave Nicky a good education and the momentum to start his own shop in London, the legendary Black Market Records..."

6.	The Parties' Contentions

The Expert has endeavoured to summarise the parties' contentions here rather than set them out verbatim although given the volume and variety this has been difficult.

Complainant

1.	The Complainant has extensive rights in the name or mark 'BLACK MARKET' dating back to 1984.  It has used the name widely and has spent many thousands of pounds advertising the record label and brand.  Extensive evidence is submitted of the history of the brand and its use by the Complainant and Rene Gelston over many years.

2.	Rene Gelston helped with the Respondent's early DJ career.  The Respondent asked Rene Gelston if he could use the BLACK MARKET name after his DJ name on a longer term basis. Rene Gelston agreed as long as this was added to the existing licence agreement and this was duly done. The Respondent was merely a licensee of the name 'BLACK MARKET'.  That licence has been terminated.  The Respondent is still clearly passing off after the licence term has expired.  

3.	The Complainant has opposed the Respondent's Community trade mark application; this opposition is still pending. 

4.	The Respondent registered the UK trade mark NICKY BLACKMARKET without the Complainant's knowledge.

5.	The Respondent is confusing the general public into thinking he is still part of the Complainant's company. The Respondent admits in an interview with Knowledge Magazine that he took his name from the store BLACK MARKET.

Respondent

1.	The Respondent is a well known disc jockey who has been using the stage name NICKY BLACKMARKET since as early as 1991.  He plays an average of three sets a week under this name.  He also uses the name for his Domain Name and the associated website; this promotes his disc jockey services and lists appearance dates together with samples of recordings for some of the Respondent’s performances and a message board.

2.	The Respondent has become known as NICKY BLACKMARKET.  Evidence supportive of this contention has been submitted covering searches from Internet search engines, two witness statements, a flyer from a set in Toronto in December 2005 and an extract of an interview with the Respondent.

3.	The Respondent has used the Domain Name in connection with a genuine and honest offering of services and has been commonly known by his stage name for 15 years. He has protected this by obtaining a UK trade mark registration and filing a Community Trade Mark application (the latter is under opposition but is being defended).  

4.	The scope of the Complainant's registered trade mark 1432845 BLACKMARKET does not extend sufficiently to prevent the Respondent's use of the stage name, NICKY BLACKMARKET.

5.	The Respondent's use of his stage name does not amount to an infringement of the Complainant's trade mark either under the Trade Marks Act 1938 or the Trade Marks Act 1994.

6.	The trade mark NICKY BLACKMARKET is used in relation to disc jockey services and is not similar to nor does it nearly resemble nor take unfair advantage of or cause detriment to Registration 1432845 BLACKMARKET nor any of the uses of the word BLACKMARKET made by the Complainant. Its use does not constitute passing off and does not damage any goodwill in the name BLACKMARKET used as a record label. The prefix NICKY is sufficient to enable the public to distinguish between the stage name NICKY BLACKMARKET and the trade mark BLACKMARKET. The stage name NICKY BLACKMARKET can mean only the services provided personally by the Respondent and nothing else.  The Respondent refers to the two witness statements as evidence that consumers can differentiate between the products and services of the parties.

7.	The Respondent's stage name was inspired by the record shop "BLACK MARKET RECORDS".  However, the origin of the name is not evidence that the acquisition or use of the Domain Name is abusive.  Confusion between the Respondent's personal services and records bearing the label BLACKMARKET is most unlikely and there has been none. There is no evidence of the use of BLACKMARKET as a record label predating the date of the Respondent's first use of his stage name.

8.	Use of the trade mark BLACK MARKET in relation to nightclubs in the UK was minimal after 1989 and the only such evidence is from the USA.  Neither night club entertainment services nor disc jockey services were specified in the Complainant's Trade Mark Application No. 1432845. Neither the use of the company name nor the club night called BLACKMARKET were sufficient to generate protectable goodwill in the UK.

9.	The Complainant omitted correspondence from the Respondent's trade mark attorneys denying the claim and giving details of the Respondent's position and likely defence. No substantive response has been received from the Complainant or its legal advisers to this correspondence.

10.	The Respondent denies that the Complainant gave him any verbal permission to use NICKY BLACKMARKET as his stage name "as long as this was added to the existing licence agreement".  The Complainant has no right to prevent the Respondent's use of the stage name and the 1994 licence did not relate to this use; it was a licence to operate the record shop.  Clause 9(i) is a clear acknowledgement on the part of the Complainant of the Respondent's pre-existing and unfettered right to use the trade mark NICKY BLACKMARKET which subsists outside the ambit of the licence. Otherwise, there would be no purpose in the words "continue to" in that paragraph.

11.	Before being aware of the Complainant's cause for complaint the Respondent: 

a.	used the Domain Name in connection with a genuine offering of services pursuant to paragraph 4(a)(i)(A) of the Policy; 	

b.	has been commonly known by the name NICKY BLACKMARKET and legitimately connected with the trade mark NICKY BLACKMARKET which is identical to the Domain Name pursuant to Clause 4(a)(i)(B) of the Policy; 

12.	In addition the Respondent's holding of the Domain Name is consistent with an express term of a written Agreement entered into by the parties pursuant to paragraph 4(a)(iii) of the Policy. 

Complainant's Reply to Response

1.	The Respondent is causing confusion by inviting visitors to his site to believe he is still linked to or that he originated the Black Market brand.

2.	Six weeks after the decision in DRS 3312 the Respondent was relying without rights on the name Black Market.  The Respondent cannot substantiate his assertion that his use of the name NikkiBlackMarket stands apart.

3.	The Respondent has never been allowed unfettered use of the trade mark NikkiBlackMarket.  The Respondent is being dishonest.

4.	The provisions in Clause 9(i) of the 1994 licence regarding the Respondent's use of the name were not outside the ambit of the agreement and no unfettered rights were acknowledged thereby.

5.	The Respondent showed a wilful disregard for the conditions under which he was to operate in terms of the licence including organising events under the name Black Market and using the associated logo without the right to do so.

6.	The Respondent has been found to be party to an abusive registration in DRS 3312 and the Domain Name should be viewed the same. The Respondent did not inform the Complainant or Rene Gelston that he was going to register the Domain Name.

7.	The Respondent has sought to negotiate a lump sum payment in return for his continued use of the name NikkiBlackMarket.  This is an admission of lack of unfettered use.

8.	Rene Gelston has constant dealings with UK based DJs and there is mounting confusion over the Respondent's stage name and its connection to the Complainant or Rene Gelston or the Black Market brand.

9.	Black Market as a record label commenced in 1988 as evidenced by a copy record label "The It / Featuring Harry Dennis."

Respondent's Reply to Complainant's Reply

1.	The Expert should exclude the evidence of the Respondent's use of the Domain Name as this should more properly have been in the Complaint.  

2.	If the Expert admits the evidence of use, the Respondent offers the following explanation: he is entitled to publicise his personal success in operating the record shop for many years.  He does not require to spell out the legal relationship between the parties to visitors to his website.

3.	If DRS 3312 was adduced to support an allegation that the Respondent was engaged in making a pattern of abusive registration of domain names, this should have been raised in the Complaint, not the Reply.  The respondent in DRS 3312 was Shango Ltd and not the Respondent.  The attempt to elide the separate respondents into one is deeply prejudicial to the Respondent.  The Respondent is not engaged in making a pattern of abusive registrations.  This point sheds no light on the question of whether the Respondent's Domain Name is abusive in the present case.

4.	The lump sum payment proposed by the Respondent was a 'without prejudice' offer that was in no way a tacit admission but was an attempt to negotiate a purely commercial resolution of the dispute.

7.	Discussion and Findings:

General

In terms of paragraph 2(b) of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each 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

Paragraph 1 of the Policy provides that Rights "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".  Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the name or term in which the Complainant has these is wholly descriptive of its business; (3) if not wholly descriptive, whether the name or mark is identical or similar to the Domain Name.

Complainant's Rights in the mark 'BLACK MARKET'

The requirement to demonstrate Rights under the Policy is not a particularly high threshold test.  Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark.  

The Complainant has cited a UK registered trade mark for the words 'BLACK MARKET', registered in classes 9 (sound recordings and apparatus for recording sound or images) and 25 (clothing and leisurewear).  The Expert finds that the Complainant has rights in the name or mark 'BLACK MARKET'.

The second question for the Expert is whether this name or mark is wholly descriptive of the Complainant's business.  The Complainant's business is the provision of sound recordings and clothing.  The name or mark 'BLACK MARKET' is not in any way descriptive of such services.

The remaining question therefore is whether the name or mark is identical or similar to the Domain Name.  The first (.uk) and second (.co) levels of the Domain Name can be disregarded as being wholly generic.  The Expert is then left with a comparison between the name or mark 'BLACK MARKET' and the third level part of the Domain Name 'nickyblackmarket'.  Clearly, on an objective comparison, the name or mark in which the Complainant has rights is not identical to the Domain Name but is it similar?

Previous disputes under the DRS such as, for example, Deutsche Telekom v ADO1 (DRS 456), Pickfords Limited v Black Cat (DRS 898), Nokia Corporation v Andrew Stone (DRS 68) and the decision of the Appeal Panel in EPSON Europe BV v Cybercorp Enterprises (DRS 3027) have dealt with complaints involving one or more trade marks registered to the complainant and the addition of a generic or non-distinctive component, usually descriptive of the complainant's business or products. In these cases the experts held that the domains in question were sufficiently similar to a name or mark in which the complainant had Rights in terms of the Policy.  

For example, in DRS 3027, the Appeal Panel noted that the complainant's mark was similar to the domain names because the mark was clearly the distinctive and dominant component of each of them, the remainder of each of the domain names being laudatory ('cheap') and/or purely descriptive ('ink').  In DRS 68, which concerned the third level domain 'nokiagsm', the expert stated that some combinations of three letters added to the mark NOKIA  would not render the composite word similar to NOKIA for the purpose of making a comparison under the Policy.  However, the three letters he was presented with corresponded to the well-known initials of the GSM mobile telephone standard and he consequently found similarity to be present.

In the present case, the Expert is presented with a slightly different situation.  The name 'black market' or 'blackmarket' is not especially distinctive or a dominant component within the Domain Name.  Likewise, the name 'nicky', while generic (being one of the available diminutives of the first name Nicholas) is also not distinctive or dominant, but neither is it laudatory or descriptive (whether of the Complainant's business or products or otherwise).  

A similar situation arose in the case of Quest International (FFFI) UK Ltd – v – Visiontribe Ltd (t/a JV Foods Group) (DRS 2655) where the expert was called upon to consider the similarity of the complainant's trade mark 'QUEST' with the third level element of the disputed domain name 'tastequest'.  The expert noted in the first place that the complainant did not have rights in the word 'Taste' as it had not been using this in a trade mark sense.  He then pointed out that TasteQuest was a neologism, or made up word, which simply comprised two words neither of which could be said to be more distinctive than the other.  Nevertheless, the expert considered that there were clearly similarities in that the entirety of the name QUEST was comprised in TASTEQUEST. He went on to note that under paragraph 2(a)(i) of the Policy the test is simply whether the relevant names are "similar" and not whether they are "confusingly similar".  The expert concluded that although he would not have found that Quest was confusingly similar to TasteQuest, he considered on balance that Quest was similar to TasteQuest and that, accordingly, the complainant did have Rights in a name which was similar to the domain name for the purposes of the Policy.

A different approach was taken by the expert in the case of Easygroup IP Licensing Ltd v The Carphone Warehouse Ltd (DRS 02599) in which the comparison for similarity was between the name or mark EasyMobile, in which the complainant claimed Rights, and the third level elements of two domain names easiermobile and ezeemobile.  While the expert decided that easiermobile was similar to EasyMobile because 'easier' is the comparative of 'easy', he found that ezeemobile was not similar to EasyMobile because he took the view that Internet triggers are essentially visual and that in his opinion ezeemobile and easymobile were not visually similar.  The complainant in that case had pointed to a similarity of phonetic spelling and 'sound' of the two terms and the expert found that this may be regarded as relevant to the issue of similarity, but that the visual comparison was the most important one.

In contrast to the above, in  800 Contac Limited and Phonenames Limited -v- IRIS Online Ltd (DRS 1404) the Appeal Panel adopted both a phonetic and visual test for similarity and did not appear to give any greater importance to either of these.

The Expert in the present case has reached the view that on balance 'nickyblackmarket' is similar to BLACK MARKET.  As with DRS 2655, nickyblackmarket is a neologism, on this occasion comprised of three words.  There is evident similarity in the fact that the entirety of the name BLACK MARKET is comprised in the Domain Name.  Likewise, while the Expert would not have found confusing similarity, there is a similarity of sorts that is not entirely dispelled by the addition of 'nicky' at the start of the Domain Name.  Furthermore, on an alternative measure, 11 of the 16 letters in the Domain Name are identical and in exactly the same order as they are found in the Complainant's mark.  This in itself gives rise to an element of visual similarity (albeit that as the name 'nicky' is the first element, the names are by no means phonetically identical).  None of this will be entirely surprising to the parties as the Respondent freely acknowledges that his stage name is based on the name of the record shop and so a degree of similarity, however small, must be accepted.  

It is worth adding that neither party made submissions directly on the question of paragraph 2(a)(i) of the Policy either for or against similarity, albeit that the Respondent did argue that the parties' respective trade marks were not similar or did not 'nearly resemble' one another.  Given that the Respondent's trade mark 'NICKY BLACKMARKET' will have undergone examination at the time it was applied for, including on the question of earlier trade marks, it is evident that the Patent Office examiner did not consider that there was similarity.  But that is similarity in terms of trade mark law (in which the similarity of the respective goods and services is also brought into consideration) and not in terms of the Policy.

Abusive Registration

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 constitute evidence of Abusive Registration is set out in paragraph 3 of the Policy.  

The Complainant's submissions do not directly address the terms of the Policy.  The Complainant is not legally represented and, perhaps for this reason, has produced a significant quantity of material and lengthy statements from which, at times, it has been difficult for the Expert to extract the submissions and evidence having a direct bearing on the question of Abusive Registration.  This was not made any easier by the Complaint being written entirely in upper case characters and missing some essential punctuation that required the Expert to retype it in order to make it more readable.

Nevertheless, the Expert believes that the totality of the Complainant's submissions on this topic can be boiled down to the following general points:- (1) the Respondent was only entitled to use the name 'NICKY BLACKMARKET' under the 1994 licence agreement and this right has now expired - his use of the name was not unfettered (as admitted by the Respondent in his offer of a lump sum payment); (2) the Respondent was not entitled either to register the UK trade mark or to apply for the Community mark and did so without the Complainant's knowledge; (3) the Respondent is causing confusion by making false representations through a variety of media including the website associated with the Domain Name regarding the Black Market brand and there is confusion among UK based DJs over the connection between the Respondent's stage name and the Complainant's brand; and (4) the Respondent (given his interest in Shango Limited) has already been party to an Abusive Registration in terms of DRS 3312.

Before dealing with these points in turn, it is worth saying something about the position on trade mark law. Much of the Response (and by implication the Complaint) relates to whether or not the Respondent's use of the Domain Name constitutes trade mark infringement, the different tests that apply in the legislation and, as the Respondent puts it, the 'penumbra of protection' relative to the Complainant's trade mark.  These are not relevant considerations in 
terms of the Policy.  The Appeal Panel in the case of Seiko UK Limited v. Designer Time/Wanderweb (DRS 00248) stated:-

The Panel considers that parties and Experts should not be overly concerned with whether or not an allegedly abusive registration also constitutes an infringement of registered trade mark. The question of trade mark infringement is, as both parties (and the Expert) agree, one for the courts to decide. The question of abusiveness is for the Expert to decide. The two jurisdictions co-exist alongside each other, and no doubt there will be considerable overlap. However there may well be factual scenarios in which an abusive registration under the Policy would not be an infringement of trade mark under the 1994 Act, and where an infringement of trade mark under the 1994 Act would not be an abusive registration under the Policy. The safest course for parties and Experts is simply to address the terms of the Policy.

Paragraph 10(c) of the Procedure states that Appeal decisions are of persuasive value to Experts.  The present Expert unreservedly endorses the position adopted by the Appeal Panel above.  In these circumstances, the Expert will only deal with the parties' submissions on trade mark infringement insofar as these raise an issue in terms of the Policy.

Expiry of the 1994 licence

The Complainant's position is that the Complainant was approached by the Respondent for permission to use the stage name NICKY BLACKMARKET and that the Complainant agreed, provided that this was inserted into the licence agreement.  The Complainant goes on to submit that the Respondent was only ever licensed to use the name NICKY BLACKMARKET in terms of Clause 9(i) of the 1994 licence agreement that followed upon this verbal agreement.  

The Respondent denies that there was ever such a verbal agreement or that the effect of Clause 9(i) is anything other than an acknowledgement of the Respondent's pre-existing and unfettered right to use the trade mark which subsists outside the ambit of the licence.  The Complainant counters in the Reply with a further denial of the Respondent's position.

The parties have presented the Expert with a clear difference of opinion over the interpretation, meaning and effect of Clause 9(i) of the 1994 licence.  The Expert takes the view that the proper forum for such questions is a court of competent jurisdiction, not a complaint under the Policy.  Unlike a court, the Expert does not have the benefit of a full investigation of the history of the licence coupled with in-person evidence which would allow him to test the parties' diametrically opposed positions, nor does the Expert have the benefit of the parties' detailed legal submissions on the question of interpretation. Likewise, it has already been noted that the parties' positions on their respective competing trade marks are matters that would be determined most appropriately by litigation.   

This is not to say that the Expert believes that every licence should be disregarded by an expert.  The Expert takes the view that it might have been appropriate to make a finding of Abusive Registration where (1) the relevant terms of the licence were wholly unambiguous and (2) the licence had been granted in circumstances that were not disputed by the parties.  In such a situation it might have been possible to say that the post-licence use of the domain name by the licensee took unfair advantage of, or was unfairly detrimental to the Rights of the Complainant.  This was the position in the earlier, related, dispute between the Complainant and the company controlled in part by the Respondent, namely DRS 3312.  

The respondent in DRS 3312  did not respond and consequently did not contest the Complainant's submissions regarding the meaning and effect of the licence.  Furthermore, it is clear that the expert in DRS 3312 was able to identify other facts and circumstances consistent with the respondent having considered that it did not have any right to continue using the applicable name after the termination of the licence.  In the present case, no similar facts and circumstances have been brought to the attention of the Expert and, on the contrary, the Respondent has conducted a vigorous defence of his position both in the recent correspondence between the parties and in submissions to the Expert.

In all of these circumstances, the Expert considers that the Complainant's evidence and submissions regarding the 1994 licence do not prove, on balance of probabilities, that the Domain Name is an Abusive Registration. For completeness, the Expert notes that the lump sum offer made by the Respondent to the Complainant was in the context of an extra-judicial settlement made on a without prejudice basis.  While the Expert is able to consider such materials in terms of the Policy, paragraph 6, the Expert agrees with the Respondent that this offer was not made in the context of any admission on the part of the Respondent regarding the 1994 licence.

Respondent's registration of the 2001 trade mark / application for Community trade mark

For the same reasons as those given in the preceding section, this is not a matter for the Expert under the Policy but is a matter on which the parties may be able to litigate or seek other remedies, if so advised.

Confusion

There are a number of different submissions made on the subject of confusion.  The Complainant states that the Respondent is making false representations, both on his website and in other media regarding his prior involvement with the Black Market brand.  The Complainant points to an interview in Knowledge Magazine dated August 2002 in which the Respondent admits that he took his name from the Complainant's record shop. In its Reply, the Complainant adds examples of the Respondent's use of the website associated with the Domain Name: (1) a brief news item dated 3 September 2004 [screenshot dated 25 April 2006] covering the launch of the new bmsoho web store, described as "New Black Market shop online!" (DRS 3312 also deals with similar subject matter) and (2) a page headed "Press Information" in which the Respondent is described as having started his own shop in London, "the legendary Blackmarket Records".

In his Response, the Respondent states that the origin of the Respondent's stage name is not evidence of an Abusive Registration in itself.  The Respondent also submits that there has been no confusion over the 15 years that he has been using his stage name.  He produces two witness statements from individuals who say that they are not confused and that they understand the difference between the Respondent's stage name and the Complainant's business.  One of the statements is taken from a promoter of dance music events and the other from a fan of dance music. The fan, in particular, notes "People are used to disc jockeys taking stage names...If I saw a flyer or poster with the name NICKY BLACKMARKET I would assume that NICKY BLACKMARKET was performing at the advertised club.  I would not believe that it was a disc jockey sent by the store, Black Market Records."  In Reply, the Complainant states that Rene Gelston has constant dealings with UK based DJs and that there is mounting confusion over the Respondent's stage name.

In the Respondent's non-standard submission the Respondent further explains that he is entitled to publicise his personal success in operating the record shop for many years.  He asserts that he does not require to spell out the legal relationship between the parties to visitors to his website.

The Expert does not believe that in this particular case the Respondent's statements in media other than the website associated with the Domain Name are relevant to the question of whether the Respondent is engaged in an abusive use thereof, albeit that they may well be symptomatic or indicative of the wider dispute between the parties.  Paragraph 3 of the Policy lists non-exhaustive factors that may be evidence of Abusive Registration.  One of these, paragraph 3 (a)(ii), calls for circumstances indicating that the Respondent is using the Domain Name [Expert's emphasis] 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 Complainant does not provide any evidence of people or businesses who have actually been confused by the Respondent's use of the Domain Name.  However, experts under the Policy have generally been prepared to consider that a likelihood of confusion may constitute an Abusive Registration given that paragraph 3 is expressed to be non-exhaustive.  

The first item to which the Complainant points as indicative of confusion is biographical material by the Respondent referring to his prior involvement with the Black Market record shop.  The Expert does not accept the Complainant's assertion that this account, however legally imprecise it might be, gives rise to any significant likelihood of confusion.  The second item provided by the Complainant is the announcement of the bmsoho web store.  The Expert agrees that this was somewhat misleading as it appeared under a heading of "New Black Market shop online!" and, given the date of the screenshot and the apparent date of publication of the item itself, it is possible that it has been displayed on the site for some considerable time.  However, by the time of the present decision, the headline had been amended to state simply "New shop online", no doubt because the Respondent had had notice of the Complainant's specific objection.  In terms of the Policy itself the page must be placed into context as a single item on a website which is, on the whole, promoting the Respondent's activities as a disc jockey, not the new or the original record shop (other than in a purely historic context within the biography) or any other area that impinges upon the Complainant's activities.  

The Expert has already noted that he does not find the mark in which the Complainant has Rights and the domain name confusingly similar.  In the Expert's view, the joinder of the word 'Nicky' is sufficient to distinguish the Domain Name from the Complainant's mark.  Such an absence of confusing similarity itself points away from the Domain Name being an Abusive Registration.  Taken as a whole, therefore, the Expert does not believe that the use of the Domain Name by the Respondent is likely to confuse people or businesses into believing that it is registered to, operated or authorised by or otherwise connected to the Complainant.  

The Complainant alleges 'mounting confusion' over the Respondent's stage name which has  been brought to Rene Gelston's notice from his constant dealings with UK based DJs.  If clear evidence of such confusion had been provided and if this was directly and demonstrably linked to the Respondent's use of the Domain Name (rather than any of the Respondent's other, no doubt varied promotional activities) then this might have put a different complexion on the matter.  That is not to say that the Expert would necessarily have accepted any such evidence as constituting an Abusive Registration; at present the Expert cannot see how the alleged confusion would be generated by the present use of the Domain Name.  In any event, on this subject the Complainant has confined itself to a mere assertion and this is insufficient for the Expert to reach any conclusion.  

Respondent's interest in Shango Limited / pattern of registrations

Paragraph 3(a)(iii) of the Policy provides a factor which may be evidence of Abusive Registration if:-

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

The Complainant states that the Respondent having been found a party to an Abusive Registration in DRS 3312, the present registration should be "viewed the same."  Neither the Expert, nor it would appear, the Respondent, are entirely clear as to whether the Complainant is seeking to raise DRS 3312 in the context of paragraph 3(a)(iii) of the Policy but the Expert will deal with it as such for completeness.  

The respondent in DRS 3312 is a different entity from the present Respondent (albeit clearly a connected party).  Nevertheless, even if the two respondents were treated as a single entity, the Expert does not consider that two domain names can constitute a pattern of registrations.  Furthermore, if this did constitute a pattern, it cannot be said that the Respondent has 'no apparent rights' in the Domain Name.  On the contrary, the Respondent has rights that are clearly apparent from his demonstration of 15 years' trading and his registration of a trade mark.  Finally, lest the Complainant's reference to DRS 3312 was intended more generally, the Expert believes that DRS 3312 was decided on its own facts which, while they form the same general background to those of the present case, are different in material respects such as the uses to which the respective domain names have been put and the difficulties with interpretation of the 1994 licence in the present case.

It follows that on its own submissions and evidence the Complainant has not proved, on balance of probabilities, that the Domain Name is an Abusive Registration.  Nevertheless, given the volume of submissions, it seems appropriate to the Expert to deal with the remaining aspects of the Respondent's case for completeness.

Factors under paragraph 4 of the Policy

Paragraph 4 contains a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration.  A number of the Respondent's submissions fall under this paragraph.

The Respondent submits that he has used the Domain Name in connection with a genuine and honest offering of services, pursuant to paragraph 4(a)(i)(A) of the Policy.  This paragraph requires that such use take place before the Respondent was aware of the Complainant's cause for complaint.  In the absence of any clear position on the 1994 licence, the Expert agrees that this is a factor that points to the Domain Name not being an Abusive Registration as the Domain Name has been used in connection with the Respondent's disc jockey services, and not for services relating to the Complainant's activities that might take unfair advantage of or be unfairly detrimental to the Complainant's Rights.  

The Respondent also submits that he has been commonly known by the name NICKY BLACKMARKET and legitimately connected with the mark NICKY BLACKMARKET which is identical to the Domain Name pursuant to Clause 4(a)(i)(B) of the Policy.  Again, the Policy requires that the Respondent should have become known by the name before becoming aware of the Complainant's cause for complaint.  The Respondent provided a large amount of information, much of it dated, showing his use of the name dating back to Christmas 1991.  The Respondent also provided witness statements that the Expert considers supportive of the Respondent's position, albeit that less regard must be given to these on the basis that the credibility and reliability of the witnesses cannot be fully assessed in a proceeding by written submissions.  Nevertheless, the Expert is left in no doubt that the Respondent has become commonly known by his stage name, a name which is identical to the Domain Name, through extensive use over many years.  On this basis, the Expert considers that again this is a factor indicative of the Domain Name not being an Abusive Registration.

These findings must be tempered by the fact that the Complainant clearly sees its cause for complaint as arising upon termination of the 1994 licence, given that the Complainant argues that all of the Respondent's rights derive from and are subject to those of the Complainant.  As noted above, the Expert cannot make a determination on this point.

Finally, the Respondent states that the holding of the Domain Name is consistent with an express term of a written agreement entered into by the parties, pursuant to paragraph 4(a)(iii) of the Policy.  This paragraph may be deployed by a respondent where evidence has been provided in terms of paragraph 3(a)(v), namely that the Domain Name was registered as a result of a relationship between the parties and the Complainant has been using the Domain Name exclusively and paid for its registration/renewal.  In the present case there is no evidence of who paid for the Domain Name's registration or renewal but it is clear that the Domain Name has not been in the exclusive (or, probably, any) use of the Complainant.  

8.	Decision

The Expert finds, on balance of probabilities, that the Complainant has proved that it has Rights in a name or mark similar to the Domain Name but has not proved that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  The Expert therefore directs that the Complaint be refused.

Andrew D S Lothian
7 July, 2006