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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Martin Yale International GMBH v 4 Consultancy [2007] DRS 4635 (14 June 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4635.html Cite as: [2007] DRS 4635 |
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Complainant: Martin Yale International GmbH
Country: United Kingdom
Respondent: 4 Consultancy
Country: United Kingdom
martinyale.co.uk ("the Domain Name")
Nominet received the Complaint on 20 April, 2007. Noting that the substance of the complaint was only a few lines in length, Nominet issued to the Complainant what is known as "the Chairman's letter". It is a letter sent out by Nominet, in the name of Tony Willoughby, the undersigned expert ("the Expert"), to all Complainants/Respondents whose Complaints/Responses are so brief that it is feared there may have been a misunderstanding as to the basis upon which experts come to their decisions. The letters vary slightly depending upon whether or not the addressee is a Complainant or a Respondent, but the objective is to give to the party concerned an opportunity of reconsidering its position having regard to the terms of the DRS policy. In sending these letters out, Nominet do not consider the merits of the document in question, simply the length. The chairman's letter sent to the complainant in this case read as follows:
"Warning in relation to short or unsupported complaints
Dear Sir/Madam
I am the chairman of the panel of Independent Experts who decide cases under the DRS. One of the challenges that faces Experts is deciding cases where we have been provided very little information to go on and/or no evidence to back up what is alleged. Surprisingly, many cases fall into this category.
I have not read your submission, and nor has Nominet. However, I have asked Nominet to send this letter to any Complainant who has sent in a complaint the substance of which is under 15 lines long; and/or has no evidence attached to it. That does not mean that these complaints will fail. It simply means that it is less likely to contain the detail or evidence required to enable toe Expert to give full weight to the case you are seeking to make.
Remember that in the DRS Nominet does not check your complaint or decide how to deal with it. The way that this system works is that, if your duty (as the Complainant) to prove your case on the "balance of probabilities". This means that, if your case does come before one of the Experts, you have to prove to them that it is more likely than not that:
- you have Rights in respect of a name or mark which is identical or similar to the Domain Name; and
- the Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Expert will only see your written submissions. You do not have the chance to talk to the Expert, and he/she is not required to research the case. Anything you want the Expert to consider should be provided in the Complaint. The Reply stage is only for responding to any new material which the Respondent mentions in the Response.
I would encourage you to look at your Complaint to see if it sets out the required information, adequately supported by documentary evidence. If you feel that it does not please contact Nominet to discuss your options. Remember that they must stay neutral, so cannot tell you what to put in your Complaint, but they can help explain the process to you.
Yours faithfully
Tony Willoughby
Chairman of the DRS Expert Panel
cc. Respondent, DRS File"
No response was received to that letter.
Nominet validated the Complaint on 20 April and sent the Complaint the same day to the Respondent by mail and email to the postal and email addresses provided to Nominet by the Respondent for Nominet's WHOIS database. The emails all appear to have bounced back, but the postal copy appears to have got through because it was not returned.
At all events, the Expert is satisfied that Nominet has complied with its obligations under paragraph 2 of the procedure, and the Complaint is deemed to have been received by the Respondent.
No response was received, so mediation was not possible.
On 29 May 2007, the appropriate fee was paid to Nominet by the Complainant. On 31 May 2007, on the Expert having indicated to Nominet that there was no reason why he should not handle the case, the case was referred to him for a decision.
None.
5. Factual Background
The Complainant, Martin Yale International GmbH, is registered at Companies House as a branch registration. The country of origin is Germany. The company was registered as having a UK branch on 23 October 2006.
Martin Yale International Limited is a company incorporated in the UK. It adopted its current name on 8 June 2004.
MARTIN YALE is registered as a trade mark in the United States under Serial Number 76152046 and Registration Number 2593927, but no date is provided, nor is the name of the registrant, nor is the specification of goods.
MARTIN YALE INDUSTRIES, INC. is registered in the United States as a trade mark under Serial Number 6151836 and Registration Number 2781076. Similarly, no other information in relation to the registration has been provided.
Nothing is known of the Respondent, save that the Respondent's address is in Avon, United Kingdom.
The Domain Name currently links to the home page of easily.co.uk "the UK's top domain name and website company".
The Complainant
The Complaint is so brief that it can readily be reproduced verbatim:
"I confirm that the Domain Name in dispute is identical or similar to the name or mark in which I have rights.
I confirm that the Domain Name in the hands of the Respondent is an abusive registration.
Our registered company name is Martin Yale International and we have been registered at Companies House under this name since June 2004. We are trading under the name Martin Yale in the United Kingdom and our US HQ has registered Martin Yale as a trade mark (Reg. No. 2593927 at the United States Patent and Trade Mark Office). We have contacted [the Respondent] and offered them £200, but they have refused and asked for £3,000, which we find totally unacceptable. This is the reason why we go to Nominet to file a Complaint"
The Respondent
The Respondent has not responded.
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
The relevant part of the Complaint (comprising approximately three fifths of the Complaint) reads as follows:-
"Our registered company name is Martin Yale International and we have been registered at Companies House under this name since June 2004. We are trading under the name Martin Yale in the UK and our US HQ has registered Martin Yale as a trade Mark (Reg. No. 2593927 at the United States Patent and Trade Mark Office)".
This passage, combined with the heading of the Complaint, identifies three separate entities, namely:
(a) a German company (the named Complainant) which has been registered as having a UK branch since October 2006;
(b) a US company ("our US HQ") which is the registered proprietor of the trade mark MARTIN YALE in the United States; and
(c) a UK company (Martin Yale International Limited) which has been registered at Companies House under that name since June 2004.
There is nothing in the papers before the Expert to indicate what these companies do, how long they have been doing it or how (if at all) they are linked.
Indeed, strictly, the Expert is making an assumption in favour of the US company because the details of the US trade mark registration accompanying the
Complaint do not identify the proprietor nor, incidentally, do they identify the goods or services for which the trade marks are registered, nor the dates of registration.
Nonetheless, for present purposes, the Expert is prepared to accept that they are connected companies and that the Complaint has rights directly or indirectly in the trade mark MARTIN YALE.
Accordingly, the Expert finds that the Complainant has rights in a name or mark, which is identical 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."
Paragraph 3 of the Policy contains a non-exhaustive list of what may constitute an Abusive Registration for these purposes. Paragraph 4 of the Policy contains a non-exhaustive list of what a Respondent may show to demonstrate rights or legitimate interests in respect of the Domain Name.
The section of the Complaint relevant to the issue of Abusive Registration is as follows:
"We have contacted [the Respondent] and offered them £200, but they have refused and asked for £3,000, which we find totally unacceptable. This is the reason why we go to Nominet to file a Complaint".
That suggests that there has been some correspondence between the parties, but none of it is exhibited to the Complaint.
The trade mark MARTIN YALE was unfamiliar to the Expert until the papers in this dispute were put before him. He is now better informed to this extent, namely that MARTIN YALE is a trade mark registered in the United States and, as indicated, the Expert is prepared to assume that the US trade mark registrant is a company associated with the Complainant. However, the Expert has nothing before him to indicate in relation to what goods/services the trade mark is used, nor does the Expert have any idea of the extent of use of that trade mark in the UK. The Expert has not even been provided with the dates of the trade mark registrations.
MARTIN YALE may be a household name in the field in which the Complainant operates, but it is not a household name in the sense that, for example, COCA-COLA is a household name. The Expert has no idea of the extent to which (if at all) MARTIN YALE is a trade mark in use in the United Kingdom.
True, it appears to be part of the Complainant's corporate name, the Complainant being a German company registered as having a branch in the United Kingdom and it also appears to be the trading name of a company incorporated in the United Kingdom. However, that is not enough. For the Domain Name to constitute an Abusive Registration, at the very least, the Complainant has to satisfy the Expert that the Complainant's name or mark is likely to have been known to the Respondent at the relevant time, whether it be date of registration of the Domain Name or date of commencement of the use complained of.
There is nothing before the Expert to assist in this regard. Is the name such that nobody could conceivably have registered it as a domain name without having the Complainant in mind? The Expert simply does not know.
The Complainant is outraged at the price (£3,000) that the Respondent is asking for the Domain Name, but it may be that that price is a very reasonable price for a domain name registrant to seek from a would-be purchaser having that very name. This is simply evidence that at the time of the Complainant's approach, the Respondent saw that level of value in the name. It does not necessarily mean that the Respondent registered the Domain Name with any abusive intent.
It is open to the Expert to make a finding of Abusive Registration on the basis that MARTIN YALE is the Complainant's trade mark, that trade mark is identical to the Domain Name, the Respondent has asked for a substantial (but arguably not extortionate) sum of money for the Domain Name, the Respondent has not responded to the Complaint and, in not responding, inferentially has no answer to the Complainant's allegations.
Had the Expert been familiar with the Complainant's name or mark, the Expert MIGHT have been prepared to draw the necessary inferences. However, the Expert knows nothing of the Complainant or its business conducted under the trade mark.
Moreover, it is to be observed, as pointed out in section 2 above, that Nominet, on seeing that the substance of the Complaint extended to only a few lines, sent out what is known as "the Chairman's letter". The circumstances under which such letters are sent out are explained in section 3 above and indeed the letter is quoted in full.
The final two paragraphs of that letter bear repeating, namely:
"The Expert will only see your written submissions. You do not have the chance to talk to the Expert, and he/she is not required to research the case. Anything you want the Expert to consider should be provided in the Complaint. The Reply stage is only for responding to any new material which the Respondent mentions in the Response.
I would encourage you to look at your Complaint to see if it sets out the required information, adequately supported by documentary evidence. If you feel that it does not please contact Nominet to discuss your options. Remember that they must stay neutral, so cannot tell you what to put in your Complaint, but they can help explain the process to you."
Had the Complainant contacted Nominet in response to the final paragraph, the Complainant might have been given the opportunity of withdrawing the Complaint before the Respondent responded, and thus be given the opportunity of refilling the Complaint in proper form. However, the Complainant did not contact Nominet in response to that letter.
It may be that the MARTIN YALE trade mark is well known in a field which is unfamiliar to the Expert. If that were to be the case, it is a great pity that the Complainant did not put in a more substantial Complaint. The Expert suspects that a simple web search would reveal the relevant information. However, it is only in very exceptional circumstances that it could ever be appropriate for an Expert to conduct his or her own investigations. It immediately opens the Expert up to allegations of partiality or lack of even-handedness. The Expert contemplated putting out a request to the Complainant for a further statement pursuant to paragraph 13 of the DRS procedure, but again that would simply give the Complainant a further opportunity of improving its case to the prejudice of the Respondent and the Complainant has already been given one opportunity to do so by way of the Chairman's letter.
Given all the circumstances of this case, the Expert does not believe it right to draw the inferences which the Complainant is asking him to draw. The Complainant has failed to satisfy the Expert that the Domain Name is an Abusive Registration within the meaning of paragraph 1 of the DRS policy.
The Complaint is dismissed.
____________________
Tony Willoughby 14 June, 2007