Nominet UK Dispute Resolution Service

DRS 04333

Ediciones Del Prado, S.A. v Stuart Oates

Decision of Independent Expert

1.	Parties

Complainant:		Ediciones Del Prado, S.A.
			Spain

Respondent:		Stuart Oates
Email:			stuartoates@blueyonder.co.uk

2.	Domain Name

delprado.co.uk

3.	Procedural Background

On 21 December 2006 the Complaint was lodged with Nominet in accordance with the Dispute Resolution Policy.  Hard copies of the Complaint were received in full on 27 December 2006.

On 28 December 2006 Complaint documents were generated for service upon the Respondent.  No Response was received by the due date of 23 January 2007.  On 23 January 2007 No Response to Complaint documents were generated and served upon the Respondent.  

No Response having been received on 12 February 207 Clive Thorne was selected as the Expert.  He has confirmed his independence and willingness to act.  There are no interlocutory or interim matters outstanding.

In the absence of a Response or any other communication from the Respondent the Expert proceeds to determine the dispute on the basis of the Complaint filed by the Complainant.

Although no Response was filed by the Respondent he did send to Nominet an email on 28 December 2006 addressed to Nicholas Martin stating as follows:-

“Hello Nicholas, 

I am quite concerned about the attachments you have sent me?  I not infringing on any copyrights.  The site is advertising the film makeing (sic) abilitys of a member of my family.

The web address has been incoperated into their CV and advertising material and I think it would be very unfair if the site is taken from me for no apparent reason.

I had offered to sale the site some time ago but it’s now being put to good use.  Also please note that Del Prado contacted me first some years demanding that I sale the site to them for £300.00!  That’s why I contacted the first when the domain was for sale.  Could you please explain to me in more detail what happens next.

Regards,
Stuart Oates”

4.	Facts

The factual background is summarised in the Complaint.  The domain name the subject of the dispute was registered by the Respondent on 10 July 2002.  

The Complainant is a Spanish company whose name is translated as Del Prado Publishers which was founded in Madrid in 1988 and from the outset has published collectible part-works.  Since 1988 it has grown steadily to become one of the world’s three largest companies in the sub-sector of mass distribution of products through newsagents or similar.  After expanding throughout Latin America and being the first to penetrate the Brazilian market the company has grown into Europe and the rest of the world.  In Spain Ediciones De Prado has published a number of products that have been distributed through bookshops and other conventional channels which have apparently been praised for their sophistication and good quality.  The Complainant’s work focuses on its collectible part-works.  The company’s collections which are finely crafted, well presented and which present highly original material have treated a huge range of subjects for a very varied audience from general topics to more specialist ones.  Arts and crafts are a specialism.

The Complainant draws attention to particular part work publications including “The Dolls House”, “Building the Bounty” and “Building the Middle Ages”.  Collecting miniatures has also become popular thanks to its publications such as “Aircraft of the Aces”, “Car Collection”, “Men at War in the 20th Century”, Porcelain Trinket Boxes”, “Fire Engines” and “Bicycles”.  Art, nature, the world of children and historical topics are some of the subject areas in which Ediciones Del Prado has a proven track record.  

The Complainant points out that in the UK some collections have been especially successful.  Some of these are annexed to the Complaint including “Cavalry of the Napoleonic Wars” (Annex 1), “Dolls House” (Annex 2), “Building the Cutty Sark” (Annex 3), “Relive Waterloo” (Annex 4), “Medieval Warriors” (Annex 5), “Men at War in the 20th Century” (Annex 6) and “Fire Engines of the World” (Annex 7).  The Expert has looked at these annexures which bear the trademark Del Prado Publishers and the Complainant’s domain name www.delprado.com.  

The Complainant has apparently grown spectacularly in recent years and is now consistently Spain’s leading publishing company in terms of exports.  At Annex 8 to the Complaint is a copy of the certificate of registration from the Spanish Mercantile Register attesting to the registration of Ediciones Del Prado SA as a limited company.   

The Complainant is the owner of a large number of registered UK and European Community trademarks.  The Del Prado trademark has been registered in many countries.  At Annex 9 is a copy of a printout of the registration of the European Community Trademark “Del Prado” (No. 000579615 in Classes 9, 16 and 41).  At Annex 10 is a copy of a printout from the UK Patent Office of UK Trademark “Del Prado Publishers”, in (No. 2144790 in Class 16) for inter alia paper goods and printed matter.

Other trademarks are listed in Annex 11 including Spanish, Italian, Brazilian, French, German, Benelux and US trademarks.  At Annex 12 are set out prints from the website “delprado.com” showing for example a model Spitfire fighter, a collection of fire engines and an account of who the Complainants are.

The history of the dispute is that the Complainant found out some time ago that the domain name in dispute “delprado.co.uk” was registered by a third party.  The domain name owner informed the Complainant that he was receiving emails from consumers of Del Prado products who thought that the old website belonged to Del Prado Publishers.  As a result of these communications the domain name owner offered the domain name for sale.  The Complainant did not accept that offer.  

On 11 February 2006 the Respondent Stuart Oates contacted the Complainant’s representative by email indicating as follows:-

“Sometime ago you contacted me with regard to my domain name www.delprado.co.uk.  I am contacting you now to advise that I have had an offer for the domain of £2,500.00.  I am not at liberty to disclose who the offer is from but I can tell you that they also publish part-work magazines.  Due to your interest in my domain some time ago I have decided to offer the domain to you or your clients for the same rate-----”

In response the Complainants offered £300 which was rejected by the Respondent.  He replied again in the following terms:-

“Apologies for the delay in my response.  Unfortunately the agreement I entered into with a third party for the sale of the domain www.delprado.co.uk has failed to be finalised.  This now means the domain is still available if your clients wish to purchase it.  Offers are to be in the region of £2,500.-----”

The Complainant’s representatives responded finally on 30 October 2006 indicating that the price sought was “abusive” and giving the Respondent one last opportunity to transfer the domain name.  Copies of the relevant emails are annexed at Annex 14 to the Complaint.

5.	Discussion and Findings

Under paragraph 2(a) of the DRS Policy a Complainant has the burden of proof of showing that:

1.	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

2.	The Domain Name, in the hands of the Respondent, is an Abusive Registration.

The Expert proceeds to deal with each of them in turn.

(i)	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name  

	For the reasons set out above the Expert is satisfied that the Complainant has registered trade mark rights in respect of the mark “Del Prado”.  The Community Trademark Registration No. 579615, is sufficient evidence of this.

	The Complainant submits that the mark is identical or similar to the domain name in dispute.  The Expert accepts this submission.  Apart from the suffix “.co.uk” the domain name “delprado” is identical to the mark “Del Prado” in which the Complainant has rights.  It finds for the Complainant in this element.

(ii)	The Domain Name, in the hands of the Respondent is an Abusive Registration

	At paragraph 3(a) of the DRS Policy is set out a non-exhaustive list of factors which may be evidence that the domain is an abusive registration.

In particular the Complainant submits that the domain name in the hands of the Respondent is abusive because under Section 3(a)(i)A of the Policy the domain name is an abusive registration.

Section 3(a)(i)A states:-

“3 (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….”

The Complainant relies upon the evidence of the emails which are exhibited at Annex 14 to support this submission.  In particular the Complainant relies upon the email from the Respondent of 15 October 2006 which states that “the domain name is still available if your clients wish to purchase it” and that “offers are to be in the region of £2,500-00”.  This offer was rejected by the Complainants in its representative’s later email of 1st November 2006 in which it pointed out that “the price is abusive”.

The Respondent also submits that the Domain Name was primarily registered to unfairly disrupt the Complainant’s business “because it is offering the domain name in question to other people although he is perfectly aware of the previous exclusive rights of Del Prado Publishers”.

The Expert, particularly in cases in which there is no Response, has to be satisfied that the Complainant has proved its case.  In reliance upon Clause 3(a)(i)A of the Policy the Complainant has to prove that the registration or acquisition of the domain name was for excess consideration.  

In this case evidence as to the circumstances in which the domain name was first acquired or registered by the Respondent is lacking.  Nevertheless the Complainant points out that the Respondent has not shown any other legitimate reason to register and use the domain name other than to offer it for sale at a price of £2,500.  There is no evidence of bona fide use of the domain name in dispute by the Respondent.  

In these circumstances the Expert takes the view that he is entitled to infer that in the absence of evidence of bona fide use or registration of the domain name in dispute by the Respondent and in the absence of a Response (bearing in mind that the Respondent acknowledged service of the Complaint in his email of 28 December 2006) that the domain name was registered or otherwise acquired by the Respondent primarily for the purposes of selling the domain name to 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.  

In reaching this view the Expert also takes into account the fact that, despite an initial complaint by the Complainant, the Respondent was also attempting to sell the Domain Name for the price of £2,500-00 to an undisclosed third party but who (according to Respondent’s email of 11 February 2006) “also published part-work magazines” i.e. a competitor to the Complainant.

It follows that the Complainant has succeeded in showing that the domain name in the hands of the Respondent is an abusive registration and therefore finds for the Complainant.

6.	Decision

The Complainant has requested that the disputed Domain Name should be transferred to the Complainant, Ediciones Del Prado S.A..  Accordingly, the Expert orders that the Domain Name “delprado.co.uk” be transferred to the Complainant Ediciones Del Prado S.A..

Clive Duncan Thorne
Expert

23 February 2007