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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Web Host Directory Ltd v Squillace [2006] DRS 3876 (25 September 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3876.html Cite as: [2006] DRS 3876 |
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Nominet UK Dispute Resolution Service
DRS 03876
Web Host Directory Ltd v Mr Massimiliano Squillace
Decision of Independent Expert
Complainant: Web Host Directory Ltd
Country: GB
Respondent: Mr Massimiliano Squillace
Country: IT
webhostdir.co.uk ("the Domain Name")
The Complaint was lodged with Nominet on 31 July 2006. Nominet validated the Complaint and informed the Respondent on 1 August 2006 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days (until 23 August 2006) to submit a Response. The Respondent did not file a Response. On 4 September 2006 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 7 of the Nominet DRS Policy Version 2 ("the Policy").
On 11 September 2006 Nominet appointed Andrew Clinton ("the Expert"). The Expert confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as Expert in this case, and further confirmed that he knows 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.
The Respondent has not submitted a Response to the Complaint.
Under paragraph 15b of the DRS Procedure Version 2 ("the Procedure") if, in the absence of exceptional circumstances, a party does not comply with any time period laid down in the Policy or the Procedure, the Expert will proceed to a decision on the Complaint.
Under paragraph 15c of the Procedure if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or Procedure (in this case by declining to file a Response) the Expert will draw such inferences as he considers appropriate.
The Domain Name was registered in the name of the Respondent on 13 April 2004.
Complainant
The Complaint, so far as is material, is as follows:-
This dispute is based on the corporate name Webhostdir which is identical or confusingly similar to the trading name Web Host Directory. Founded in Dorset in 1997, Web Host Directory (Webhostdir) is the leading international media resource for identifying and procuring web-hosting services. The company's online directory lists over 5000 vetted and verified web-hosting providers, and generates revenues through the sale of classified, CPM and performance-based advertising. Web Host Directory was incorporated as a UK Limited Company on 29th December 1998. Please see the attached exhibits (1) and (2). Web Host Directory registered the domain webhostdir.com on September 8th 1997. Web Host Directory is known as Webhostdir to both its customers and competitors in the web hosting industry. Evidence of the presence of Webhostdir.com is attached in exhibit (3) as displayed from Alexa.com's Wayback Machine website. The Respondent has registered the domain name webhostdir.co.uk on 13th April 2004. This domain is directed to an advertising network (advertising.3000.net) showing a selection of adverts including web hosting adverts. Circumstances indicate that the respondent is using the reputation of Webhostdir to falsely attract more traffic to their pages in order to gain revenue from the adverts they are displaying. This action clearly is to interfere with Webhostdir's traffic to benefit their own business. As revenue for Webhostdir is generated by advertising sales we contend that this is an abusive registration. Webhostdir asserts that the Registrant has no legitimate interest in the domain name as the Registrant has only used the domain in an effort to confuse customers and potential customers of Webhostdir by redirecting them away from the correct website.
Remedies Requested
Transfer
Respondent
The Respondent did not file a Response.
General
Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities; firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. The Complainant does not rely upon a trade mark but says that it is known as Webhostdir to both its customers and competitors in the web hosting industry. The Complainant says that it is the leading international media resource for identifying and procuring web-hosting services. It also says that its on-line directory lists over 5,000 vetted and verified web-hosting providers and that it generates revenue through the sale of classified, CPM and performance-based advertising.
The documents supplied by the Complainant show that it is a limited company that was incorporated on 29 December 1998 under the name Inspiring Technologies Limited and it changed its name to Web Host Directory Limited on 18 June 2001. There is evidence supplied with the Complaint, in the form of a print-out from Alexa.com's Wayback Machine website, that demonstrates that the domain name webhostdir.com, which is registered to the Complainant, was in use from November 1998.
The threshold for establishing rights is not particularly high and the Respondent has not challenged the Complainant's assertion that it has rights in the name "webhostdir". The Expert is satisfied, on the balance of probabilities, that the Complainant has Rights in respect of a name "webhostdir" which is identical to the Domain Name (disregarding the .co.uk suffix).
Abusive Registration
Abusive Registration is defined in paragraph 1 of the Policy to mean 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.
Non-exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy 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 Nominet; 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.
Under paragraph 3b of the Policy failure 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.
It is clear from the wording of the Policy that the list of factors at paragraph 3 is non-exhaustive and that a Complainant can succeed in proving Abusive Registration without the need to prove any of those factors. However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.
Non-exhaustive factors – paragraph 4 of Policy
There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy.
Discussion and findings regarding Abusive Registration
The Complainant has not specifically identified which of the factors set out in paragraph 3 of the Policy it relies upon. The Complainant says that the Domain Name directs to an advertising network (advertising.3000.net) showing a selection of adverts including web hosting adverts. The print-out supplied by Nominet, which is dated 1 August 2006, shows that the Domain Name directs to advertising.3000.net and there is an advert on that print-out entitled "Find Out How You Can Work From Home" and a link to a website at www.acesearch.co.uk.
The Complainant claims that circumstances indicate that the Respondent is using the reputation of Webhostdir to falsely attract more traffic to their pages in order to gain revenue from the adverts they are displaying. The Complainant also says that the Registrant has only used the Domain Name to confuse customers and potential customers of Webhostdir by redirecting them away from the correct website.
On the information before the Expert there is no basis to suggest that the factors set out in paragraphs 3aiA, 3aiB, 3aiii, 3aiv or 3av of the Policy have any application to this Complaint. The Complainant refers to confusion, which could be a reference to paragraph 3aii of the Policy, but the Complainant has not produced any evidence of actual confusion.
The Respondent has chosen to register the word "webhostdir" as the Domain Name which is identical to the word that the Complainant has been using for its own website (at www.webhostdir.com) for nearly 6 years.
The Expert has to decide the Complaint on the basis of the parties' submissions, the Policy and the Procedure. The Respondent did not file a Response and the Expert can therefore draw such inferences as he considers appropriate.
The Expert takes into account the following factors that are present in this case:-
• The Domain Name is identical to the name "webhostdir" in which the Complainant has rights;
• The word "webhostdir" is a made up word that does not appear in The New Oxford English Dictionary;
• The word "webhostdir" is distinctive of the Complainant's services;
• On the print-out supplied by Nominet the Domain Name directs to a website that contains an advert and a link to another website; and
• The Respondent has failed to give an explanation as to the choice of the Domain Name.
In the absence of a Response it is difficult to think of a reason why the Respondent would register and use the Domain Name if it were not with the object of trading on the back of the Complainant's reputation and thereby taking unfair advantage of the Complainant's Rights. The Expert finds that the second part of the definition of Abusive Registration is made out in that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert directs that the Domain Name be transferred to the Complainant.
Andrew Clinton
25 September 2006
