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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Carnival PLC v Freshfields Consulting Ltd [2006] DRS 4432 (7 August 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4432.html Cite as: [2006] DRS 4432 |
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Complainant: Carnival PLC
Country: GB
Respondent: Freshfields Consulting Limited
Country: GB
oceanvillage.co.uk ("the Domain Name")
The Complaint is dated 11 May 2006 and was received in full by Nominet on 16 May 2006. Nominet validated the Complaint and notified the Respondent of the Complaint by letter dated 17 May 2006, informing the Respondent that it had until 9 June 2006 to respond to the Complaint. That deadline was subsequently extended by Nominet to 16 June 2006. The Respondent responded on 16 June 2006 and the Complainant lodged its Reply on 28 June 2006.
The mediation process failed to resolve the dispute. The Complainant duly paid the appropriate fee for a decision of an Expert pursuant to paragraph 8 of the Nominet UK Dispute Resolution Service Procedure ("the Procedure").
On 7 August 2006, Tony Willoughby, 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 further confirmed 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. On the same day Nominet wrote to the Expert (copies to the parties) informing the Expert that the final decision must be sent to Nominet no later than 25 August 2006.
On 10 August 2006, pursuant to paragraph 13 of the DRS Procedure, the Expert issued a request for a further statement from the Respondent:
The Complainant in its Complaint alleges that the transfer of the Domain Name from the previous registrant ("NL") to the Respondent was a sham designed to defeat a complaint under the DRS Policy directed to NL.
In support of that allegation the Complainant makes reference to various matters. In particular the Complainant asserts that the Respondent does not exist, there being no record of the Respondent at the UK Companies Registry and the Southampton address on the Whois being merely a cover address. Moreover the Complainant asserts that the transfer, which took place only a few days after the Complainant's representatives had sent NL a letter setting out the Complainant's case in detail, cannot have been a coincidence.
The Respondent responds to these allegations by denying any connection with NL (other than as purchaser), denying any knowledge of the Complainant prior to the filing of the Complaint in this administrative proceeding, by demonstrating that the Respondent is a British Virgin Islands registered company with a mailing address within the UK (the Respondent received the Complaint from Nominet via that address) and by reproducing its email exchanges with NL purporting to show that the negotiations were arms length negotiations.
In the Reply the Complainant maintains its allegation that the transfer from NL to the Respondent was a sham and accuses the Respondent of forgery. It points out that the sign offs in NL's emails to the Complainant read "Best Regards, Network Logical Inc." whereas the sign offs in NL's emails to the Respondent read "Regards, Network Logical, Inc.". It also produces an analysis of the negotiations that the parties had with NL showing that NL apparently sold two domain names (the Domain Name and
These are serious allegations. Clearly, the Respondent should be given an opportunity of responding to them. If the Respondent is indeed, as it claims to be, wholly independent of NL, there may not be much that the Respondent can say regarding NL's preference for the lower offer from the Respondent (although evidence to show that the purchase price was actually paid might assist), but the allegation regarding the authenticity of the email exchanges between NL and the Respondent ought to be easy to deal with. The Complainant believes that the Respondent could demonstrate its purported independence from NL by disclosing the identities of the directors of the Respondent both at the time of acquisition of the Domain Name and to-day.
The Expert notes that neither party makes any reference (other than in one of the Complainant's exhibits) to the fact that the Respondent is also the owner of the domain name,
The Expert directs that the Respondent be given an opportunity to file a further submission in response to the matters mentioned in the Response and in this Request. Any further submission should be filed by close of business on Friday, 18th August. The Complainant may, if it wishes to do so, respond to such submission provided that it does so by close of business on Wednesday, 23rd August. The date for the decision in this case is put back to Wednesday, 30th August.
Tony Willoughby
Thursday, 10th August
On 18 August 2006 the Respondent responded to that order. Arguably, the response was out of time in that it arrived late in the evening, but since "close of business" admits of a variety of interpretations and nobody was prejudiced by the lateness of the response, the Expert accepted it. The Complainant elected not to file any further submission in reply
The Complainant is a well-known company operating internationally in the luxury cruise market. It is the proprietor of various UK and CTM registrations of marks featuring the name OCEAN VILLAGE, the earliest of which date back to April 2002. It uses OCEAN VILLAGE as one of its brands.
The Domain Name was first registered on 31 March 2003. As at July 2005 the Domain Name was registered in the name of Network Logical Inc. of the British Virgin Islands ("NL").
Between late July 2005 and early March 2006 the Complainant was in correspondence with NL seeking transfer of the Domain Name. Initially, the Complainant was prepared to pay for the Domain Name, but when it learnt on 1 March 2006 that NL was the proprietor of over 700 domain names, many of which featured in one shape or form the well-known names of others (e.g.
On 14 March 2006 the Domain Name was transferred by NL to the Respondent. At the same time the Respondent acquired from NL the domain name,
The Respondent is a British Virgin Islands company with an accommodation address in Southampton.
Ocean Village and West Quay are both development areas in the Solent region of Southampton.
The Complaint:
The Complainant points to its trade mark registrations of or including OCEAN VILLAGE. It contends that it has rights in respect of a name or mark, which is identical or similar to the Domain Name.
The Complainant further asserts that the Domain Name in the hands of the Respondent is an abusive registration within the meaning of paragraphs 2(a)(ii) and 3(a)(i)A and 3(a)(iii) of the DRS Policy. It contends that NL's registration of the Domain Name was plainly abusive given that entity's predilection for registering domain names featuring the famous names of others and NL's demand made of the Complainant for a large sum of money for the Domain Name.
The Complainant further asserts that the Domain Name is (or was in May 2006 following transfer of the Domain Name to the Respondent) parked on a namescout.com parking page offering links to a variety of sites offering inter alia cruising holidays, including in large part sites of the Complainant's direct competitors. Thus, the Domain Name is (or was) being used abusively by the Respondent.
The Complainant further contends that the Respondent has provided false contact details for the Nominet Whois database, there being no trace of the Respondent at the Companies' Registry and the Southampton address being merely a cover address. Accordingly, the Domain Name is an abusive registration within the meaning of paragraph 3(a)(iv) of the DRS Policy.
Last and by no means least the Complainant contends that the transfer of the Domain Name to the Respondent was a sham, the Respondent being an alter ego or very close associate of NL, the previous registrant. The principal matters which the Complainant cites in support of this allegation are set out in the Expert's request quoted in full at section 4 above. The Complainant also expresses a strong suspicion that a David Thornton, the original registrant of the Domain Name and the person who acted as NL's agent, is involved with the Respondent.
The Response:
The Respondent admits that the Complainant has rights in respect of OCEAN VILLAGE, but points out that they are not exclusive rights as Ocean Village is the name of an area in Southampton.
The Respondent denies that it has any connection with NL and produces copies of its email communications with NL to demonstrate that fact. It denies that David Thornton has anything to do with the Respondent.
The Respondent denies that the Whois information is false. It produces evidence to show that it exists as a British Virgin Islands company and claims that the Southampton address is a genuine accommodation address through which it receives its correspondence and through which it received the Complaint in these proceedings.
The Respondent asserts that it acquired the Domain Name and the domain name,
The Respondent denies all knowledge of the Complainant prior to receipt of the Complaint. The Respondent also denies that it has ever used the Domain Name since acquisition of it and produces evidence purporting to show that the namescout.com web pages exhibited to the Complaint were not generated by the Respondent.
The Reply:
The Complainant maintains that the transfer of the Domain Name to the Respondent was a sham. It asserts that the email negotiations exhibited to the Response were dreamt up simply for the purpose of dealing with the Complainant's allegations. The Complainant's main basis for this allegation is set out in the Expert's request quoted at section 4 above. The Complainant also asserts that the business plan produced by the Respondent is not a genuine document and contends that electronic analysis may identify when it was created.
The Respondent's Response to the Expert's Request:
The Respondent denies that the emails with NL are forgeries. It says that it cannot now prove this by producing the originals with their headers because they have been archived as separate files and the archiving process strips them of most of the header data. It contends that the Complainant's analysis of the emails is flawed. It argues that the people at NL corresponding with the Complainant and the Respondent may have been different and with different email settings. It adds that if it had gone to the trouble of forging these communications, it would have made a proper job of it and not left anomalies of this kind.
The Respondent declines to produce details of its directors because it cannot do so without showing those details to the Complainant. The Respondent is concerned that the Complainant is on a fishing expedition and does not want to expose its directors to the tender mercies of the Complainant's investigators.
The Respondent asserts that its acquisition of
As to the anomaly regarding the prices demanded by NL for the Domain Name (NL sold the Domain Name to the Respondent for less than the sum offered by the Complainant) the Respondent surmises that by the time of the transfer the relationship between NL and the Complainant had soured to such an extent that NL might have preferred to sell to the Respondent.
The Complainant's Further Submission
As indicated above, the Complainant declined to reply to the above response from the Respondent.
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
There is no dispute between the parties that the Complainant has rights (albeit non-exclusive rights) in respect of the name OCEAN VILLAGE.
The Expert finds that the Complainant has rights in respect of a name or mark identical or similar to the Domain Name.
Abusive Registration
This leaves the second limb. 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 be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. The Complainant contends that the following passages from paragraph 3a are applicable, namely:
i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name (A) primarily 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;
………. and
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; and
iv It has been independently verified that the Respondent has given false contact details to [Nominet];
For the purposes of this decision the Expert is prepared to accept that a complaint against NL, the previous registrant of the Domain Name would have succeeded under the first two of the above heads. The Expert is also prepared to accept that it was the Complainant's solicitors' letter of 10 March 2006, which prompted NL to divest itself of the Domain Name as soon as possible. A letter of that kind to a known cybersquatter was likely to provoke cyberflight. Moreover, the Expert is not at all surprised that on receipt of that letter divesting itself of the Domain Name to the Respondent (albeit at a lower price) might have been a much better option for NL. With the information that the Complainant then had on NL, there must have been a concern that the Complainant would not have completed the transaction.
Accordingly, whether or not this Complaint succeeds turns to a large extent on whether or not the Expert is satisfied that the transfer of the Domain Name to the Respondent was a sham.
Before dealing with that aspect, it is nonetheless necessary to dispose of a loose end. The Complainant contended in the Complaint that in May this year the Respondent was using the Domain Name in an abusive manner by parking it on a directory web page featuring links to sites advertising services of the Complainant's competitors. In the Response the Respondent went to some lengths to explain why the web pages exhibited to the Complaint could not have been generated by the Respondent. The Complainant did not deal with the matter in the Reply, so the Expert concludes that the Complainant does not dispute the Respondent's explanation. Even if the Complainant had not intended to allow the point to pass unanswered, the Expert would have required from the Complainant some cogent evidence to overcome the Respondent's explanation.
Was the transfer a sham? The Expert can understand why the Complainant makes the allegation. Clearly the transfer was made by the previous registrant to defeat a complaint against the previous registrant, but was the Respondent an active participant in the scheme to defeat the complaint? There is nothing which directly connects the Respondent to NL, but both are British Virgin Islands entities and there are the matters raised by the Complainant in the Reply, namely the anomaly over the price accepted by NL, which was lower than the price offered by the Complainant, the differences in the lay out and content of the emails sent by NL to the parties and the scant business plan put forward by the Respondent to substantiate the use that the Respondent says that it intended to make of the Domain Name. The Respondent's response to the Expert's request for further information produced nothing positive to support the Respondent's position and, of concern to the Expert, failed to produce evidence of the fact that the purchase price had been paid, something which the Expert had suggested in his request. Moreover, for reasons of confidentiality the Respondent refused to disclose the names of its directors.
However, on the other side, it is a fact that Ocean Village is a development area in Southampton and the Respondent has an address in Southampton (albeit an accommodation address) and has acquired other Southampton-related domain names, namely
While the Expert has some misgivings in the matter, it is for the Complainant to prove its case and not for the Respondent disprove the Complaint. The Expert's misgivings are not so strong as to warrant inferences being drawn adverse to the Respondent.
The Complainant has failed to satisfy the Expert that the Domain Name in the hands of the Respondent is an Abusive Registration
The Complaint is dismissed.
Tony Willoughby Date
