Nominet UK Dispute Resolution Service

DRS 04895

Edexcel Limited v Mike Morgan

Decision of Independent Expert

1.	Parties

Complainant:		Edexcel Limited
Country:		GB

Respondent:		Mike Morgan
Country:	CA

2.	Domain Name

Edexel.org.uk (“the Domain Name”)

3.	Procedural Background

The complaint was entered into Nominet’s system on 17th July 2007.  Nominet validated the complaint and informed the Respondent by letter dated 20th July 2007, noting that the Dispute Resolution Service had been invoked and that the Respondent had until 13th August 2007 to submit a Response.

The initial ‘response’ from the Respondent was an email of 20th July 2007 stating “I have not had this name for a number of years. If you check with Enom.com the name is controlled by someone else. Possibly a Michael Gilmour.”  After Nominet and the Respondent confirmed that the Domain Name was indeed still registered in his name, the Respondent replied “OK well, I have no wish to fight this. Please have the name transferred to the complainant.” No further ‘response’ was filed.

After a period for mediation, on 21st August 2006 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy Version 2 (“the Policy”). The fee was duly paid on 3rd September 2007.

On 3rd September 2007 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case, Nominet duly appointed me as Expert with effect from 10th September 2007.

4.	Outstanding Formal/Procedural Issues

The email ‘response’ referred to above was not a formal Response within the terms of the Policy. Nevertheless, it is relevant that the Respondent has expressed a clear desire not to contest the Complaint and I will take this into account in my Decision.

5.	The Facts

The Complainant Edexcel Limited is a UK limited company which provides educational resources and qualifications to over 2 million students.

It is the proprietor of two UK trade mark registrations for EDEXCEL and the applicant for two further Community trade marks covering a wide range of goods and services, including education and training.

The Nominet WHOIS search with which I have been provided indicates that the Domain Name was registered in the name of the Respondent (curiously described as a ‘non-UK corporation’) on 25th April 2004.

The print-out of the site accessible under the URL http://www.edexel.org.uk with which I have been provided is a dynamically-generated list of links to other sites with an educational theme.

6.	The Parties’ Contentions

Complaint

In its Complaint the Complainant says that it is globally recognised as a provider of educational resources and qualifications, holding relevant registered trade mark rights relating to the word ‘EDEXCEL’ dating back to 1996. It has been trading in the UK on a substantial scale since prior to that date.

The Complainant contends that people, including its students and potential students, are liable to misspell the name EDEXCEL as EDEXEL and the like (and examples of this having happened in practice are annexed to the Complaint). It is therefore concerned about the Domain Name, which is a single letter removed from ‘EDEXCEL’.

The Complainant refers to the fact that the Respondent has used the Domain Name to obtain click-through revenue in relation to people looking for the Complainant’s courses and materials.

The Complainant does not explicitly refer to particular provisions of the Policy in support of its contention of Abusive Registration; but instead suggests that the activities of the Respondent amount to registered trade mark infringement, exploits people’s confusion and could lead to people on to fraudulent third party sites.

Support is provided in the form of an apparently unsolicited email from the Fraud Prevention Unit of the Metropolitan Police, investigating bogus educational establishments, drawing the Complainant’s attention to the Domain Name and associated website, noting that it’s “name is so similar to your own domain name that it is bound to cause confusion to students searching the internet.”

The Complainant requests transfer of the Domain Name to itself.

Response

As noted above, the Respondent’s response was “OK well, I have no wish to fight this. Please have the name transferred to the complainant.”

7.	Discussion and Findings:

General

Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

I must be satisfied that these matters are established, as the burden of proof rests with the Complainant. However I do bear in mind that the Respondent’s expressed position is that he does not wish to contest the Complaint and is content for the Domain Name to be transferred.

Complainant’s Rights

The Complainant must prove on the balance of probabilities that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.

The definition of ‘Rights’ in the Policy “includes, but is not limited to, rights enforceable under English law.” This clearly encompasses United Kingdom trade mark registrations and unregistered rights in the nature of the goodwill necessary to found a passing off action in England and Wales.

On the basis of the matters set out in the Complaint and I am satisfied that the Complainant now owns, and has since prior to the registration of the Domain Name in 2004 owned, Rights in the mark EDEXCEL.

I am further satisfied that the name EDEXCEL is closely similar to the Domain Name edexel.org.uk (ignoring, as I am required to do, the first and second level suffixes). As the Complaint evidences, ‘edexel’ is a common misspelling, perhaps the most common misspelling, of the term ‘edexcel’.

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 are set out under paragraph 3(a) of the Policy. The Complainant’s references to confusion and deception is perhaps best understood as a reference to sub-paragraph 3(a)(ii), which provides as follows:

 “3(a)(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”

A non-exhaustive list of countervailing factors are set out under paragraph 4(a) of the Policy. I do not regard any of the factors therein set out as being particularly pertinent to the facts of this dispute.

The Metropolitan Police email is not conclusive evidence of this kind of confusion, but it is a very strong step in the right direction. In combination with the close similarity of the two names, the other evidence of misspelling, the apparently genuine concerns surrounding fake educational establishments on the internet – and the Respondent’s express desire not to contest the Complaint – I am well satisfied that the Domain Name was registered or has been used in a manner which takes unfair advantage of and/or is unfairly detrimental to the Complainant's Rights.

Accordingly I conclude on the evidence before me that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.	Decision

Having concluded that the Domain Name is an Abusive Registration, the Expert determines that the Domain Name, edexel.org.uk, should be transferred to the Complainant.

September 22nd, 2007

Philip Roberts		Date