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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> QSoft Consulting Ltd v Balata.com TLD [2007] DRS 4994 (23 October 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4994.html Cite as: [2007] DRS 4994 |
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Complainant: QSoft Consulting Limited
GB
Respondent: Balata.com TLD
IL
gaydor.co.uk ("the Domain Name").
3.1. A hard copy of the Complaint was received in full by Nominet on 29 August 2007. Nominet validated the Complaint and notified the Respondent of the Complaint.
3.2. No response was received from the Respondent and therefore informal mediation was not possible.
3.3. On 4 October 2007 the Complainant paid the fee to obtain the expert decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service ("the Procedure").
3.4. On 15 October 2007, Nick Phillips, the undersigned ("the Expert"), was selected as the Expert. Nick Phillips confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4.1. The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.
4.2. Paragraph 15(b) of the Procedure provides, inter alia, that "if, in the absence of exceptional circumstances, a party does not comply with any time periods laid down in the policy of this procedure, the Expert will proceed to a decision on the Complaint".
4.3. Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. Consequently, there do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a decision on the Complaint notwithstanding the absence of a Response.
5.1. The Complainant is QSoft Consulting Limited.
5.2. The Respondent is Balata.com TLD.
5.3. The Respondent registered the Domain Name on 24 September 2004.
5.4. The Complainant is the proprietor of several trade mark registrations consisting of or including the word GAYDAR including the following:
- CTM registration number 002127264 for GAYDAR in Classes 35, 38 and 42 registered with effect from 13th March 2001;
- CTM registration number 003804168 for GAYDAR in Classes 38 and 41 registered with effect from 29th April 2004;
5.5 The Complainant owns the following domain name registrations containing the word GAYDAR;
(a) gaydar.co.uk registered on 15 May 1999;
(b) gaydarradio.com registered on 15 August 2000;
(c) gaydarshop.com registered on 20 December 2000;
(d) gaydargirls.com registered on 12 July 2001;
(e) my-gaydar.com registered on 19 September 2001;
(f) gaydardate.com registered on 21 September 2002;
(g) gaydarguys.com registered on 31 March 2003;
(h) gaydartravel.com registered on 13 February 2004;
(i) gaydarradio.co.uk registered on 9 June 2004;
(j) gaydar.com.au registered on 26 October 2005.
5.5. The Complainant has used the trading name GAYDAR since 1999, which is approximately five years before the date on which the Respondent registered the Domain Name.
5.6. The webpage located at the Domain Name contains an alert screen warning that the site contains sexually explicit material and gives the browser a choice whether or not to enter. On entering the site there are a number of links to other sites targeting the gay and lesbian community, offering sex toys and other sexual paraphernalia, casual sex and pornography.
5.7. The Complainant contacted the Respondent on 27 April 2007 requesting the voluntary transfer of the Domain Name and offering to pay the Respondent's official fees and out of pocket expenses relating to the disputed Domain Name. No response was ever received from the Respondent.
The parties' contentions can be summarised as follows:
Complainant
6.1. The Complainant has Rights in the Domain Name because it is identical or similar to a name or mark in which the Complainant has rights.
(a) The Domain Name incorporates the mark GAYDAR with a typographical error, or is a confusingly similar mark;
(b) The Complainant has both registered rights and unregistered rights in the mark GAYDAR and has used the trading name GAYDAR since 1999, approximately five years before the Domain Name was registered;
(c) The Registered Trade Marks were registered by the Complainant before the Domain Name. The core and majority of the Complainant's Domain Names (including gaydar.co.uk and gardarradio.com) were also registered before the Domain Name;
(d) The Complainant owns a number of trade mark registrations and domain names consisting of and including the word GAYDAR;
(e) The public associates the GAYDAR "family" of marks with the Complainant and the Complainant's GAYDAR brand has received extensive press coverage, press releases and advertisements. The Complainant has spent and generated significant revenue in relation to the development and marketing of the GAYDAR marks;
(f) The Complainant has recently been successful in an Arbitration Court Decision in Poland in respect of the domains gaydar.pl and gaydarradio.pl.
6.2. The Domain Name in the hands of the Respondent is an Abusive Registration;
(a) The Respondent has been found to have made Abusive Registrations in at least six Dispute Resolution Services cases at Nominet and has been found to have made bad faith registrations in at least two WIPO Arbitration and Mediation Centre Complaints. There is therefore a rebuttable presumption under paragraph 3(c) of the Policy that there is an Abusive Registration in the present case;
(b) The Respondent is a serial cybersquatter and typosquatter and has registered a large number of domain names which incorporate third party marks. Added to the fact that the Respondent has been found to be a typosquatter in at least four previous decisions the Respondent has engaged in a pattern of registrations which correspond to well known names or trade marks in which the Respondent has no apparent rights and the registration by the Respondent of gaydar.co.uk is part of that pattern;
(c) Given the reputation of the Complainant's Rights it is inconceivable that the Respondent was not aware of the Complainant when it acquired the Domain Name. Given the Respondent's history and past activity it is inconceivable that this registration was not a bad faith registration and it is not possible to conceive of any plausible action or contemplated good faith use;
(d) The Disputed Domain Name incorporates a typo of the Complainant's GAYDAR trade mark which is phonetically and conceptually identical and otherwise visually identical. Furthermore, the Complainant's GAYDAR mark is the dominant, distinctive and sole element of the Disputed Domain Name. As a result the risk of confusion is high. This is particularly the case given the Complainant's substantial reputation in the GAYDAR marks;
(e) Further, or in the alternative, the Disputed Domain Name is confusingly similar to the Complainant's GAYDAR trade marks which will result in third parties wrongly associating the Disputed Domain Name with the Complainant and the Complainant's business. The likelihood of confusion is exacerbated given that the Respondent is using the Disputed Domain Name to link to websites which relate to identical and/or similar goods and services to which the Complainant is well known;
(f) The Complainant has not consented to the Respondent's use of the GAYDAR trade marks and the Respondent has no legitimate interest in respect of the Domain Name. In particular the Respondent;
- is not related in any way to the Complainant;
- has not made any use of, or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services;
- is not (as an individual, business or other organisation) commonly known by the Disputed Domain Name.
(g) The Domain Name funnels customer traffic away from the Complainant's website. The Complainant is not aware of any genuine offer of services from the Domain Name;
(h) Any use of the Domain Name which incorporates the GAYDAR trade mark or mark similar thereto will cause confusion in the minds of the public, leading them to mistakenly believe that the Respondent's business and websites are legitimately connected or associated with the Complainant when that is not the case. The Complainant has not consented to the Respondent's use of the Domain Name;
(i) The Complainant also specifically cites paragraphs 3(i)(A), (B) and (C) and Paragraph 3(ii), (iii) and (v)(B)(c) of the Policy;
(j) The Complainant also relies on the following factors;
- the Complainant's GAYDAR trade marks have a strong reputation and are widely known both within and outside of the online dating service industry and the gay and lesbian community;
- it is inconceivable that the Respondent did not have actually knowledge of the Complainant's rights to their trade marks;
- there is no evidence whatsoever of any actual or contemplated good faith use by the Respondent of the Domain Name
Respondent
The Respondent has not provided a Response so there are no submissions to consider.
GENERAL
7.1. Under paragraph 2 of the Dispute Resolution Service Policy ("the Policy") the Complainant is required to show, on the balance of probabilities, that;
(1) it 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.
Complainant's Rights
7.2. The first question I must answer therefore is whether the Complainant has proved in the balance of probabilities that it owns Rights in a name or mark that is identical or similar to the Domain Name.
7.3. The Policy defines rights as including but not limited to " rights enforceable under English laws." This has always been treated in decisions under Nominet DRS as a test with a low threshold to overcome and I think that that must be the correct approach.
7.4. The Complainant has provided evidence of its use of the name GAYDAR covering online gay and lesbian dating, and also owns a number of registered trade marks consisting of or incorporating the name GAYDAR. The Complainant has also registered and uses a number of domain names incorporating the name GAYDAR.
7.5. In the circumstances I have no difficulty in finding that the Complainant has rights in the name GAYDAR.
7.6. I must now decide whether the name in which the Complainant has rights i.e. GAYDAR, is identical or similar to the Domain Name, while ignoring the first and second level suffixes as I must do i.e. GAYDOR.
7.7. I have no doubt at all that the two names are similar. Clearly, the words used by the Complainant and Respondent respectively are very similar, with only one typographical difference between the two which does not change the overall character of the Domain Name. Indeed the Domain Name is likely to be viewed as a common misspelling of the name in which the Complainant has rights.
Abusive Registration
7.8. Having concluded that the Complainant has rights in a name which is identical or similar to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration. Abusive registration is defined in the Policy as;
" a domain name which either;
(a) was registered or otherwise acquired in the 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
(b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
7.9. This definition allows me to consider whether the Domain Name constitutes an Abusive Registration at any time and not, for example, just the time of the registration/acquisition.
7.10. Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may evidence that a domain name is an Abusive Registration. It is worthwhile setting out paragraph 3 of the Policy in full:
"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."
7.11. The Complainant relies, amongst other things, on paragraph 3(c) of the Policy. The first issue here is that it is Balata.com LLC that has been found to have made an Abusive Registration in at least three DRS cases in the last two years whereas the Respondent here is Balata.com TLD. I do not think that there can by any real doubt that Balata.com LLC and Balata.com TLD are one and the same and on the balance of probabilities I have concluded that they are.
7.12. The Respondent has therefore been found to have made an Abusive Registration in at least three Dispute Resolution Service cases in the last two (2) years. Therefore, there is a rebuttable presumption that there has been an Abusive Registration.
7.13. By not filing a response to the Nominet proceedings, the Respondent has failed to rebut the presumption of an Abusive Registration that has arisen due to paragraph 3(c) of the Policy.
7.14. Having reached this conclusion I will not go on and consider the other contentions put forward on behalf of the Complainant and I therefore conclude that the Respondent's use of the Domain Name constitutes and Abusive Registration.
8.1. I find that the Complainant has proved, on the balance of probabilities, that it has rights in a name or mark which is identical or similar to the Domain Name and that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore direct that the Domain Name be transferred to the Complainant.
.
NICK PHILLIPS
23rd October 2007