Pipex Internet v Molotov [2007] DRS 4992 (05 November 2007)

Nominet UK Dispute Resolution Service
DRS Number 04992
B E T W E E N:

PIPEX INTERNET LTD

Complainant

- and -

ANDREW MOLOTOV

Respondent

Decision of Independent Expert

1. Parties

Complainant: Pipex Internet Ltd.

Country: GB

Respondent: Andrew Molotov

Country: RU

2. Domain Name
bulldogbroadband.co.uk

3. Procedural Background
3.1.1 The Complaint, which is a complaint of Abusive Registration under the

Dispute Resolution Procedure (“the DR Procedure”), of Nominet UK
(“Nominet”), and is dated 28 August 2007, was posted by Nominet to the
Respondent under cover of a letter dated 31 August 2007. The covering
letter included the following paragraph:-
“You do not have to respond to the complaint, but any decision made
about your domain name will apply to you even if you do not

respond. If you want to respond (and we would encourage you to do
so) we must receive the response on or before 24 September 2007”.

3.1.2 The Respondent did not respond by 24 September 2007 or at all. In a letter
dated 25 September 2007 Nominet wrote again to the Respondent,
referring to the complaint and to the failure of the Respondent to submit a
response within the deadline, and communicating that as a consequence the
dispute would not go to mediation, but would be referred to an independent
expert for a formal decision if the Complainant paid the appropriate fees on
or before 9 October 2007 - a condition which was fulfilled.

3.1.3 By letter dated 26 October 2007 I was appointed with effect on 1
November 2007 to provide a Decision under Nominet UK’s Dispute
Resolution Policy (“the Policy”). I am required to give by Decision by 15
November 2007.

3.1.4 I have been provided with the following materials:-
• Dispute History

• Complaint

• Standard correspondence between Nominet and the parties

• Companies House entries.

• Register entry for bulldogbroadband.co.uk.

• Nominet WHOIS query result for bulldogbroadband.co.uk.

• Printout of website at www.bulldogbroadband.co.uk.

• Copy of Nominet UK’s Policy and Procedure.

4. Outstanding Formal Procedural Issues
4.1 There are no outstanding formal or procedural issues.

5. The Facts
5.1 The domain name was registered by the Respondent on 13 August 2006.

6. The Parties’ Contentions

Complainant
6.1 The Complaint of Abusive Registration is as follows:-

The Complaint

I confirm that Domain Name(s) in dispute are identical or similar to a name
or mark in which I have Rights.

I confirm that Domain Name(s) in the hands of the Respondent is an
Abusive Registration.

1. The Complaint

1.1 1 confirm that the Domain Name in dispute is identical to or, in the
alternative, is confusingly similar to a name or mark in which the
Complainant has rights.

1.2 1 confirm that the Domain Name in thr hands of the Respondent is an
Abusive Registration.

2. The Complainant

2.1 The Complainant is part of Pipex Communications plc (“Pipex”), a
company that is listed on the London Stock Exchange. Pipex acquired from
Cable and Wireless in September 2006 the business operating under the
name, ‘Bulldog’ (“Bulldog Communications”).

2.2 Bulldog Communications was founded in 2000 and has, since that date,
been instrumental in revolutionising internet services. For example,
Bulldog Communications was the first company in the UK to offer a
bundled broadband and phone service. Today, Bulldog Communications is
part of one of the UK’s leading providers of integrated telecommunications
and internet solutions including broadband, voice, domain name
registrations and hosting services. The “Bulldog” brand is therefore well
known.

2.3 Bulldog Communications has a broadband and voice customer base of
approximately 110,000 in the UK. 90% of this customer base subscribe to
its broadband service. In 2005/06, Bulldog Communications had a turnover
of £33 million and in 2006/07 it expects its turnover to reach £43 million.

2.4 I attach printed webpages from the Complainant’s website at
www.bulldogbroadband.com (see Annex 1)

3.1 The Complainant has UK trade mark registrations incorporating or
consisting of the word BULLDOG,

3.1.1 UK trade mark registration no. 2373223A, registered in respect of
classes 9, 35, 37, 38 and 42 dated 10 June 2005 for “BULLDOG”;

3.1.2 UK trade mark registration no. 23

73223B, registered in respect of class 41 dated 7 October 2005 for
“BULLDOG”;

3.1.3 UK trade mark application no. 2387271, in respect of classes 9, 16,
35, 36, 37, 38, 41 and 42 dated 17 March 2007 for “BULLDOG”; and

3.1.4 UK trade mark registration no. 2373214 in respect of classes 9, 35,
38 and 42 dated 1 July 2005 for BULLDOG BROADBAND; together,
“the Trade Marks” (see Annex 2 for copies of the Trade Marks).
3.2 The Complainant has built up goodwill in the “Bulldog” and “Bulldog
Broadband” name in the UK since Bulldog Communications was launch in
2000. This goodwill is protected in the UK through the law of passing off

4. Domain Name

4.1 The Complainant also registered numerous domain names worldwide
containing the BULLDOG mark, which are accessible around the world. A
schedule of these domain names is attached at Annex 3.

5. The Respondent

5.1 The Respondent’s website is at www.bulldogbroadband.co.uk (“the
Website”). Relevant extracts of the Website are at Annex 4

5.2 The Website provides various links to the websites of third party
providers of broadband services, which the user can click on to find more
information about these services. These providers are in direct competition
to the Complainant. Examples include websites operated by Talk Talk, Sky
and price comparison sites for broadband services (which direct users to
other broadband service providers). This clearly demonstrates that the
Respondent is aware of the Complainant and the services/products offered
by it

5.3 It is common practice on the Internet that those persons providing third
party links on their website are paid by that third party for each click
through. Indeed, the company with which the Domain Name is parked,
Sedo (see the notice at the bottom of the home page of the Website),
expressly states on its website (see Annex 5) that “the idle domain is used
to display relevant advertisements - every time a consumer clicks on one of
the advertisements you earn money”. Therefore, it is highly likely that the
Respondent is making money from the use of the Domain name.

5.4 The Respondent registered the Domain Name on 13 August 2006 (a
Whois search is attached at Annex 6).

5.5 The Respondent is using the Complainant’s registered trade mark
BULLDOG and BULLDOG BROADBAND as a trade mark on its website
(for example, the Website has a heading “Bulldogbroadband.co.uk”)

5.6 Other than the use made of the Domain Name through parking it with
Sedo, the Respondent has not used the Domain Name in connection with
any goods or services since it was registered on 13 August 2006

5.7 The Complainant’s investigations on the Internet have not revealed that
the Respondent operates any business under the name “Bulldog
Broadband” or that he is known as “Bulldog Broadband”.

6. Communications between the Respondent and the Complainant

6.1 The Complainant has attempted to contact the Respondent at the
address given in the Whois search, however he has not responded to this
communication. At Annex 7 is a copy of an email sent to the Respondent
by the Complainant’s agent offering to buy the Domain Name for £150
(which the Complainant considers would cover the Respondent’s out of
pocket expenses)

6.2 The Complainant has also written to Sedo (the domain name parking
company identified at the bottom of the webpage at the url for the Domain
Name). We note from Annex 8 that Sedo acts as a broker between the
buyer and seller of the Domain Name to facilitate its purchase. A copy of
the emails and attachments exchanged between the Complainant’s agent
and Sedo are enclosed in Annex 9. I note that Sedo assessed the value of
the Domain Name at £16,000 and refused to put an offer to the Respondent
for £200 as it considered the offer was too low. Sedo said that the
Complainant’s agent maximum offer price for the Domain Name should be
at least 75% of their appraised value (i.e. £12,000)

7.1 In the circumstances, it is clear that the Domain Name in the hands of
the Respondent is abusive because:

7.1.1 it has been used for the purpose of unfairly disrupting the business of
the Complainant. The Respondent is using the Domain Name in order to
divert business from the Complainant to competitor websites and either he
or Sedo are likely to be profiting from users clicking on the links appearing
on the Website. The Respondent is also blocking the Complainant from
securing a key domain name for its services in the UK as this is a Domain
Name that the Complainant has previously used;

7.1.2 by using the Domain Name, the Respondent is misleading the public
into believing that the services offered on or through the Website originate
from or are endorsed by the Complainant especially considering that the
Respondent is using the marks, BULLDOG and BULLDOG
BROADBAND as a trade mark. For instance, the heading on the home
page of the Website is “Bulldogbroadband.co.uk” which would be
understood by the users to be a reference to the Complainant;

7.1.3 it is likely to have been registered for the purpose of making money
by attracting customers looking for the Complainant and referring those
customers to other competitors (who are likely to pay Sedo or the
Respondent a fee for each click through). In such circumstances, the
Respondent or Sedo is clearly taking unfair advantage of the Trade Marks

7.1.4 the use of the Domain Name is undoubtedly detrimental to the
Complainant’s business

7.1.5 it can be inferred from the value placed on the Domain Name by
Sedo that the Domain Name was primarily registered for the purpose of
selling it to the Complainant for valuable consideration in excess of the
Respondent’s out of pocket expenses directly associated with acquiring or
using the Domain Name;

7.2 The Respondent clearly has no legitimate reason for registering and
using the Domain Name.

6.2 The Complainant requests the transfer of the Domain Name.

Respondent
6.3 As stated above, the Respondent has did not submitted any Response.

7. Discussion and Findings:

General

7.1 Under paragraph 2a of the Policy the Respondent is required to submit to

proceedings if a Complainant asserts to Nominet in accordance with the

DR Procedure that

“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.”

7.2 Under paragraph 2b of the Policy a Complainant is required to prove both
these elements on the balance of probabilities.

7.3 Paragraph 1 of the Policy defines “Rights” as including but not being
“limited to, rights enforceable under English law”. This definition is
subject to a qualification which is not material.

Complainant’s Rights

7.4 The Complaint (which is signed , includes a statement of truth, and to
which there is no challenge) and the documentation provided with it, in
my opinion shows that the Complainant has “rights” enforceable under
English law in the name utilised for its website viz
www.broadbandbulldog.com – see paragraph 2.4.1 of the Complaint – and
as registered proprietor, in the mark BULLDOG BROADBAND .

7.5 The date upon which the Complainant registered the present name of its
website is not clear. The BULLDOG BROADBAND mark was registered
on 3 June 2005.

7.6 Under the Policy the mere assertion that a Complainant has “rights” is
sufficient for there to be jurisdiction. For this purpose the date when such
alleged rights are acquired is in fact immaterial. I am satisfied that the
conditions of paragraph 2 a I of the Policy are fulfilled.

7.7 I do not consider that the name or the mark in which the Complainant has
rights are identical to the Domain Name. Nevertheless I consider and find
as a fact that the name and mark in which the Complainant has rights are
similar to the Domain Name.

Abusive Registration

7.8 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.”

7.9 The Policy provides:

“3 Evidence of Abusive Registration

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;
B as a blocking registration against a name or mark in

which the Complainant has Rights; or
C 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;
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;
iv It is independently verified that the Respondent has given

false contact details to us; or
v The domain name was registered as a result of a relationship

between the Complainant and the Respondent, and the

Complainant:

A has been using the domain name registration
exclusively; and

B paid for the registration and/or renewal of the domain
name registration.
b Failure on the Respondent's part to use the Domain Name for the
purposes of e-mail or a website is not in itself evidence that the
Domain Name is an Abusive Registration.
c There shall be a presumption of Abusive Registration if the
Complainant proves that Respondent has been found to have made an
Abusive Registration in three (3) or more Dispute Resolution Service
cases in the two (2) years before the Complaint was filed. This
presumption can be rebutted (see paragraph 4 (c)).

4. How the Respondent may demonstrate in its response that the
Domain Name is not an Abusive Registration

a A non-exhaustive list of factors which may be evidence that the
Domain Name is not an Abusive Registration is as follows:
i Before being aware of the Complainant's cause for complaint

(not necessarily the 'complaint' under the DRS), the
Respondent has

A used or made demonstrable preparations to use the
Domain Name or a Domain Name which is similar to
the Domain Name in connection with a genuine
offering of goods or services;
B been commonly known by the name or legitimately
connected with a mark which is identical or similar to
the Domain Name; or
C made legitimate non-commercial or fair use of the
Domain Name; or
ii The Domain Name is generic or descriptive and the

Respondent is making fair use of it.
iii In relation to paragraph 3(a)(v); that the Registrant’s holding
of the Domain Name is consistent with an express term of a
written agreement entered into by the Parties; or
iv In relation to paragraphs 3(a)(iii) and/or 3(c); that the
Domain Name is not part of a wider pattern or series of
registrations because the Domain Name is of a significantly
different type or character to the other domain names
registered by the Respondent.
b Fair use may include sites operated solely in tribute to or criticism of

a person or business.
c If paragraph 3(c) applies to succeed the Respondent must rebut the
presumption by proving in the Response that the registration of the
Domain Name is not an Abusive Registration.

7.10 There is no challenge to the facts asserted in paragraphs 5 and 6 of the
Complaint. There is no reason to doubt the accuracy of those assertions, and
they are supported by the documentation referred to. Accordingly I accept
them as being factually correct.

7.11 As can be seen, the Complainant contends that:-
7.11.1 The Domain Name has been used for the purpose of unfairly

disrupting the business of the Complainant. The Respondent is using
the Domain Name in order to divert business from the Complainant
to competitor websites and either he or Sedo are likely to be profiting
from users clicking on the links appearing n the Website;

7.11.2 The Respondent is also blocking the Complainant from securing a
key domain name for its services in the UK as this is a Domain Name
that the Complainant has previously used;

7.11.3 By using the Domain name the Respondent is misleading the public
into believing that the services offered on or through the Website
originate from or are endorsed by the Complainant especially
considering that the Respondent is using the marks, BULLDOG and
BULLDOG BROADBAND as a trademark. For instance, the
heading on the home page of the Website is
“Bulldogbroadband.co.uk” which would be understood by the users
to be a reference to the Complainant.

7.11.4 It is likely to have been registered for the purpose of making money
by attracting customers looking for the Complainant and referring
those customers to other competitors (who are likely to pay Sedo or
the Respondent a fee for each click through). In such circumstances,
the Respondent or Sedo is clearly taking unfair advantage of the
Trade Marks;

7.11.5 The use of the Domain Name is undoubtedly detrimental to the
Complainant’s business as the Respondent is seeking to divert
business from the Complainant;

7.11.6 It can be inferred from the value placed on the Domain Name by
Sedo that the Domain Name was primarily registered for the purpose
of selling it to the Complainant for valuable consideration in excess

of the Respondent’s out of pocket expenses directly associated with
acquiring or using the Domain Name;
7.11.7 The Respondent clearly has no legitimate reason for registering and
using the Domain Name.

7.12 On the basis of the unchallenged evidence before me, I accept these
contentions. I consider that this evidence establishes that the Respondent
registered the Domain Name primarily:-
7.12.1 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;

7.12.2 as a blocking registration against a name or mark in which the
Complainant has Rights; and

7.12.3 for the purpose of unfairly disrupting the business of the
Complainant;

within the terms of paragraph 3 ai A,B,and C of the Policy and hence are
evidence that the Domain name is an Abusive Registration .

7.13 Further, although the Complainant has not adduced any evidence that people
or businesses have actually been confused into believing that the Domain
name is registered to be operated or authorised by or otherwise connected
with the Complainant I consider that such confusion is likely to have resulted
or is likely to result in the future. The list in paragraph 3 of the Policy is
non-exhaustive, and I consider that a Registration may be Abusive where
such confusion is intended or likely.

7.14 I draw the inference that the Respondent was aware of the Complainant’s
names and marks before embarking on the business now operated from its
web-site and before registering the Domain Name. Indeed, I have no doubt
that the Domain Name was chosen and registered because of its similarity to
the name and marks used in connection with the Complainant’s business.
Hence, it would not be open to the Respondent to rely upon paragraph 4a: A

of the Policy – the only one of the non-exhaustive list of factors which may
be evidence that the Domain Name is not an Abusive Registration which
might conceivably have fitted the facts.

7.15 Accordingly I am satisfied and find as a fact that the Domain Name

7.15.1 was registered 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; and

7.15.2 has been used in a manner which took unfair advantage of and was
unfairly detrimental to the Complainant’s Rights.

Accordingly it is an Abusive Registration.

8. Decision

8.1 For the reasons give above, I find that the Domain Name in the hands of the
Respondent, is an Abusive Registration.

8.2 The Complainant has requested the transfer of the Domain Name. On the
basis of the material before me I consider that that is an appropriate remedy
and accordingly that the Domain Name should now be transferred to the
Complainant as it requests.

Signed…………………………

David Blunt QC

5 November 2007

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Pipex Internet v Molotov [2007] DRS 4992 (05 November 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4992.html Cite as: [2007] DRS 4992



	Nominet UK Dispute Resolution Service DRS Number 04992 B E T W E E N: PIPEX INTERNET LTD Complainant - and - ANDREW MOLOTOV Respondent

	Decision of Independent Expert

	1. Parties Complainant: Pipex Internet Ltd. Country: GB Respondent: Andrew Molotov Country: RU 2. Domain Name bulldogbroadband.co.uk 3. Procedural Background 3.1.1 The Complaint, which is a complaint of Abusive Registration under the Dispute Resolution Procedure (“the DR Procedure”), of Nominet UK (“Nominet”), and is dated 28 August 2007, was posted by Nominet to the Respondent under cover of a letter dated 31 August 2007. The covering letter included the following paragraph:- “You do not have to respond to the complaint, but any decision made about your domain name will apply to you even if you do not

	1



	Complainant 6.1 The Complaint of Abusive Registration is as follows:-

	The Complaint I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

	I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

	1. The Complaint 1.1 1 confirm that the Domain Name in dispute is identical to or, in the alternative, is confusingly similar to a name or mark in which the Complainant has rights. 1.2 1 confirm that the Domain Name in thr hands of the Respondent is an Abusive Registration. 2. The Complainant 2.1 The Complainant is part of Pipex Communications plc (“Pipex”), a company that is listed on the London Stock Exchange. Pipex acquired from Cable and Wireless in September 2006 the business operating under the name, ‘Bulldog’ (“Bulldog Communications”). 2.2 Bulldog Communications was founded in 2000 and has, since that date, been instrumental in revolutionising internet services. For example, Bulldog Communications was the first company in the UK to offer a bundled broadband and phone service. Today, Bulldog Communications is part of one of the UK’s leading providers of integrated telecommunications and internet solutions including broadband, voice, domain name registrations and hosting services. The “Bulldog” brand is therefore well known. 2.3 Bulldog Communications has a broadband and voice customer base of approximately 110,000 in the UK. 90% of this customer base subscribe to its broadband service. In 2005/06, Bulldog Communications had a turnover of £33 million and in 2006/07 it expects its turnover to reach £43 million. 2.4 I attach printed webpages from the Complainant’s website at www.bulldogbroadband.com (see Annex 1) 3.1 The Complainant has UK trade mark registrations incorporating or consisting of the word BULLDOG, 3.1.1 UK trade mark registration no. 2373223A, registered in respect of classes 9, 35, 37, 38 and 42 dated 10 June 2005 for “BULLDOG”; 3.1.2 UK trade mark registration no. 23

	3



	7.6 Under the Policy the mere assertion that a Complainant has “rights” is sufficient for there to be jurisdiction. For this purpose the date when such alleged rights are acquired is in fact immaterial. I am satisfied that the conditions of paragraph 2 a I of the Policy are fulfilled.

	7.7 I do not consider that the name or the mark in which the Complainant has rights are identical to the Domain Name. Nevertheless I consider and find as a fact that the name and mark in which the Complainant has rights are similar to the Domain Name.

	Abusive Registration 7.8 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.” 7.9 The Policy provides: “*3 Evidence of Abusive Registration* 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; B as a blocking registration against a name or mark in which the Complainant has Rights; or C 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; 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)

	7