Nominet UK Dispute Resolution Service

DRS Number 4931

Decision of Independent Expert

1.	Parties

Complainant:		Attix5 UK Limited
Country:		GB	

Respondent:		ASG Training Limited
Country:		GB

2.	Domain Names

<attix5.co.uk> and <attix5.org.uk> (the “Domain Names”)

3.	Procedural Background

The complaint of the Complainant was entered in the Nominet system on 27 July 2007.  Hard copies were received on 28 August 2007 and Nominet validated the complaint on that same day.  Nominet transmitted a copy of the complaint to the Respondent.  No response was received from Respondent by the due date of 21 September 2007.  Nominet wrote to both parties indicating that no response had been received.  On 10 October 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (the “Policy”).

The undersigned (the “Expert”) has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.  The undersigned, Christopher Gibson, was appointed as Expert in this case on 12 September 2007.  

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”).  Paragraph 15b of the Procedure provides, inter alia, that “[i]f 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.”

There is no evidence before the Expert to indicate the presence of exceptional circumstances.  Nominet has attempted to communicate the complaint to the Respondent by email and post.  The efforts made by Nominet are in accordance with the Procedure and accordingly, the Expert will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.

Paragraph 15c of the Procedure provides that “i]f, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure . . ., the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.”  I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.

5.	The Facts

The Complainant has been registered at Companies House under the name Attix5 UK Limited since 24 July 2001.  The Complainant uses the www.attix5.com website for its business, which has been registered within the Attix5 Group since October 2000.
  
From the WHOIS records, the Domain Names <attix5.co.uk> and <attix5.org.uk> were registered for the Respondent, ASG Training Ltd, on 7 June 2005.  The URLs for the Domain Names, www.attix5.co.uk and www.attix5.org.uk, resolve to the same website with content referring to “ASG Solutions” and the heading “Leaders in Secure Data Management.”

6.	The Parties’ Contentions

Complainant

The Complainant states that the Domain Name in dispute is identical or similar to a name or mark in which it has Rights and that the Domain Name in the hands of the Respondent is an Abusive Registration.  

Rights: The Complainant contends that it has Rights in the name Attix5, which it has been trading under in the UK since 2001 and during which time it has established a reputation as a supplier of data management solutions with an international client list including companies such as PwC, Accenture, Standard Chartered, HSBC, MFI, Pfizer and Burberry.  The Complainant has provided evidence that it has been registered at Companies House under the name Attix5 UK Limited since 24 July 2001, and abbreviated accounts for the period 24 July 2001 to 31 December 2002.  The Complainant has also provided copies of pages from the www.attix5.com website, which list its existing customers, relevant product information showing that Complainant offers data management software products under the name Attix5, and UK-specific pages of the website.

Abusive Registration: The Complainant raises three arguments in support of its contention that the Domain Names in the hands of the Respondent are Abusive Registrations.  First, the Complainant contends that the Domain Names were registered as blocking registrations against a name in which the Complainant has Rights, which prevents the Complainant from registering the Domain Names to promote the sale of its products and services into the UK.  Second, the Domain Names were registered for the purpose of unfairly disrupting the business of the Complainant, in that UK-based Internet users looking for Attix5’s UK website are likely to go to enter the URL www.attix5.co.uk in their web browser, which would direct potential customers to the Respondent’s website.  Third, the Complainant asserts that the Domain Names are used by the Respondent in such a way as to confuse people or businesses into believing that the Domain Names are operated or authorised by, or connected with, the Complainant.  In particular, the Complainant has provided a copy of the homepage for the Respondent’s website at www.attix5.co.uk, which refers to the Respondent as “Leaders in Secure Data Management.”   Complainant argues that this language is intended to divert potential customers from the Complainant’s website, which promotes the Complainant’s data management solutions.  The Complainant has also submitted a letter dated 20 May 2007 sent to Attix5 UK Limited from Martin Wright, the Managing Director of Techgate plc, a distributor of Attix5 products in the UK. The letter expresses Techgate’s concern over the confusion that customers and potential customers have experienced regarding the Respondent’s <attix5.co.uk> Domain Name

Respondent

The Respondent has not responded, and therefore has raised no challenge to any of the facts and statements submitted by the Complainant.

7.	Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present:

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

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

Complainant’s Rights

The Complainant has established that it has Rights in its Attix5 name through use of the name in the United Kingdom since 2001, when the name was first registered with Companies House.  The substantive part of both Domain Names contains the word “Attix5,” which is identical to the Complainant’s name.  This is not a common name, but rather a distinctive one given the combination of “ATTIX” with the numeral “5.”  The Domain Names are therefore similar or identical to a name in which the Complainant has Rights.

Abusive Registration
As to whether the Domain Names registrations are abusive in the hands of the Respondent, paragraph 1 of the DRS 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.”
The Expert should take into account all relevant facts and circumstances in determining whether the Domain Name is an Abusive Registration.  

Where there is no response to a complaint that a domain name is an abusive registration, the approach to be taken by experts is now well established. It is for the Complainant to make out a prima facie case. Such a case demands an answer. In the absence of an answer, the complaint will ordinarily succeed. The question therefore becomes whether the Complainant has established a prima facie case.

The Policy contains a non-exhaustive list of factors that may be evidence that a domain name is an abusive registration. The factors that may be relevant here were listed by the Complainant in its complaint: 

(i)  circumstances indicating that the Respondent registered the domain name primarily

-     as a blocking registration against a name…in which the Complainant has rights; or
-	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.

These cover the essential elements of the Complainant’s claims.  First, as a matter of fact, the registration of a domain name will prevent other registrations of the same name.  In that sense, all registrations are “blocking” registrations.  But this factor on the Policy’s non-exhaustive list requires some judgment about the motive behind the registration.  See Verizon Trademark Services LLC v Paul Martin (DRS 04940).  Invariably, in cases of dispute where there is no response, there is little or no direct evidence of a Respondent’s motive at the time of registration. In the present case, we have evidence of the current use of the Domain Names, from which it may be possible to infer the motivation behind the Respondent’s registrations.  Similarly, the current use of the Domain Names, referring to services of the Respondent that appear to compete with the Complainant’s services, provides some evidence concerning whether the Respondent’s registrations of the Domain Names were primarily intended to unfairly disrupt the Complainant’s business.  The Complainant has provided some evidence, by way of a letter from a distributor of its products, that there is confusion caused by the use of the Domain Names.  It seems clear that – in these circumstances where it appears the Respondent is offering competing services – there is a high probability that some disruption has occurred and that Internet users may be confused into thinking that the Domain Names are connected with the Complainant.   

Moreover, Registrants of domain names that are identical to names in which others have rights have to take special care. As the appeal panel noted in GuideStar UK v Wilmington Business Information Limited (DRS 02193):

Registering as a domain name, the name of another (without any adornment), knowing it to be the name of that other and intending that it should be recognised as the name of that other and without the permission of that other is a high risk activity insofar as the DRS Policy is concerned. Ordinarily, it would be tantamount to impersonating the person whose name it is.

Rarely will it be the case that deliberate impersonation of this kind will be acceptable under the DRS Policy.

The Complainant here has only to make out a prima facie case that the Domain Names are abusive registrations.  It seems clear to me that in taking a name identical to the highly distinctive name in which the Complainant has rights and using that name in an attempt to divert Internet traffic to the Respondent’s site which appears to offer competing services, the Respondent’s use of the Domain Names takes unfair advantage of the Complainant’s rights. That in turn makes it seem probable that the registrations of the Domain Names were, in the first place, unfair.  At the very least, the Complainant has made out an arguable case that these were abusive registrations.  In the absence of an answer to that case, the complaint succeeds.  I conclude that where a Respondent registers  Domain Names:- 

1. which are identical to a name in respect of which the Complainant has Rights; and 

2. where the Domain Names are specifically referable to the Complainant and would not be well-suited for any purpose except in connection with the Complainant’s business; and

3. where there is no obvious justification for the Respondent having adopted that name for the Domain Names; and 

4. where the Respondent has failed to come forward with any explanation for having selected the Domain Names, 

it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain Names for a purpose and secondly that that purpose was abusive. In this case the Expert draws these inferences.

Accordingly, the Expert finds on the balance of probabilities that the Domain Names, in the hands of the Respondent, are Abusive Registrations.

8.	Decision

The Expert finds that the Complainant has Rights in respect of a name which is similar or identical to the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations.  The Expert therefore directs that the Domain Names, <attix5.co.uk> and <attix5.org.uk>, be TRANSFERRED to the Complainant. 

Christopher Gibson

28 October 2007