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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Baby Pages Ltd v Declare [2007] DRS 5036 (31 October 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/5036.html Cite as: [2007] DRS 5036 |
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Complainant: Baby Pages Ltd
Country: GB
Respondent: Declare
Country: GB
babypages.co.uk ("the Domain Name")
The Complaint was lodged with Nominet on 6 September 2007. Nominet validated the Complaint and informed the Respondent on 10 September 2007 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days to submit a Response. No Response was 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 DRS Policy Version 2 ("the Policy").
On 17 October 2007 Nominet appointed Andrew Clinton ("the Expert"). The Expert has confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as Expert in this case, and further confirmed that he knows 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.
Service of the Complaint
The register database entry for the Domain Name records the registrant as Declare of 20 New Oxford Street, London, WC1A 1EH, Fax No. 0171 831 0080 and the e-mail address is [email protected]. There is a field on the database entry for the organisation type and that has been recorded as "unknown". Nominet sent the Complaint to the Respondent on 10 September 2007 by letter, by fax and by e-mail to [email protected] as well as to [email protected].
The e-mail to [email protected] was returned with the message "unrouteable address". The e-mail to [email protected] was returned as undeliverable. The letter was returned by the Royal Mail marked "addressee has gone away" and the fax does not appear to have been successfully transmitted.
Paragraph 2 of the DRS Procedure Version 2 ("the Procedure") sets out the method of service of the Complaint on the Respondent. Nominet has a discretion to use a number of means of service that include:-
? sending the complaint by first class post, fax or e-mail to the Respondent at the contact details shown as the registrant or other contacts in the Domain Name register database entry for the Domain Name in dispute;
? sending the complaint in electronic form (including attachments to the extent available in that form) by e-mail to postmaster@.
Paragraph 2e of the Procedure states as follows:-
"Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i. if sent by facsimile, on the date transmitted; or
ii. if sent by first class post, on the second Day after posting; or
iii. if sent via the Internet, on the date that the communication was transmitted;
iv. and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly".
The Respondent by registering the Domain Name entered into a contract of registration with Nominet which is subject to Nominet's terms and conditions. Condition 4.1 imposes an obligation on the registrant to keep Nominet notified of the registrant's correct name, postal address and any phone, fax or e-mail information. Condition 7.2 states that by entering into the contract of registration the registrant promises that any identity and contact information provided is correct.
The Expert is satisfied that Nominet has complied with the requirements for effective service as set out in the Procedure and that the Complaint was deemed to have been served on 10 September 2007. As noted above it is for the Respondent to provide correct contact details and to comply with the obligation to notify Nominet of any changes to those contact details so it is not open to a Respondent to claim that he did not receive the Complaint if it was properly served in accordance with the Procedure.
Failure to file a Response
The Respondent has not submitted a Response to the Complaint.
Under paragraph 15b of the Procedure if, 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.
Under paragraph 15c of the Procedure if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or Procedure (in this case by failing to file a Response) the Expert will draw such inferences as he considers appropriate.
The Complainant was incorporated as Baby Pages Limited on 12 June 1995 and has traded under that name from a web-site at www.baby-pages.co.uk since August 2005. The Complainant sells nursery and baby goods and the anticipated sales this year will be about £1,000,000. The Complainant says that the Internet is the sole outlet for this business.
The Complaint also refers to a retail shop which has been selling baby and nursery goods for 18 years under the trading name Mums Delight Limited.
The Respondent registered the Domain Name on 29 July 1999 but has never used it. The Complainant says that it has found no evidence that the Domain Name has ever been used for the purposes of e-mail or a web-site and that the DNS settings have been "no name servers listed" for the last 2 years. The Complainant has attempted to contact the Respondent to request a transfer of the Domain Name but all communications have been ignored.
Complainant
The Complaint, so far as is material, is as follows:-
1. The Complainant has rights in the Domain Name because: a) The Domain name is similar to a name in which the company has rights, i.e. the company name is Baby Pages Ltd, the disputed domain name is babypages.co.uk b) The company is registered at Companies House under the name Baby Pages Limited and has been since 12/06/1995. See appendix A c) It is registered with HMRC for VAT purposes, see appendix B d) It trades under that name via the website www.baby-pages.co.uk and has done since August 2005. See appendix C e) The company has an ongoing advertising campaign with Google Adwords and currently spends a daily budget of £120 (Appendix D and D1 - D7) in directing traffic to the existing business website hosted at baby-pages.co.uk f) The business advertises its name on other related websites including the shops website (www.mumsdelight.co.uk) Appendix E g) The domain name is the same as the business name other than the intersecting space and the TLD .co.uk h) The business Baby Pages Ltd is a successful business with significantly increasing sales. The anticipated sales for the current financial year is £1m. The world wide web is the sole outlet for this business. 2. The business also has a physical shop at the same address training under the name Mums Delight Ltd. This shop has been selling baby and nursery goods to the public for 18 years. The business's current main domain name is baby-pages.co.uk this was registered in 2005 as the unhypenated name was not available. We have attempted to contact the current registrant of babypages.co.uk by phone, letter (Appendix F) and email but our communication has been ignored. 3. The domain name is an abusive registration because: a) It was registered on 29 July 1999 which is after the company Baby Pages Ltd was registered as a business (12 June 1995). b) I have found no evidence that the domain name has ever pointed to a website or been used for email purposes, the dns settings have for at least the last two years been: "No name servers listed". Appendix G c) The domain name has been registered for speculative purposes, to prevent the business from registering it at a market price. d) The domain name is acting as a blocking device to the business as customers who have heard of the business name are unable to find the website when using the reasonable search term babypages. e) The registrant is an incomplete name i.e. "Declare" f) At the time when the registration of the domain name took place, the registrant took unfair advantage of or was unfairly detrimental to the Complainant's Rights
Remedies Requested
The Complainant seeks a transfer of the Domain Name.
Respondent
The Respondent did not file a Response.
General
Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities; firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Under paragraph 16d of the Procedure if the Expert concludes that the dispute is not within the scope of paragraph 2 of the Policy he or she shall state that this is the case.
Complainant's Rights
Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. This is usually demonstrated by reference to a trademark registration or active trading using the mark in question. The rights test is "not a particularly high threshold test" (according to the Appeal Panel in DRS 00248 sieko-shop.co.uk).
The evidence shows that the Complainant was incorporated as Baby Pages Limited on 12 June 1995 and it has, since August 2005, operated an on-line "shop" from the website at www.baby-pages.co.uk. The Complainant advertises its on-line "shop" on other related websites.
The Complainant clearly has a genuine interest in the mark Baby Pages as it is the Complainant's own name and it has used the name/brand www.baby-pages.co.uk since August 2005. The mark Baby Pages and the Domain Name are the same save that the Domain Name does not include a space between the words "Baby" and "Pages". However, it is not possible to register a space between characters as part of a domain name.
The Expert finds, on the balance of probabilities, that the Complainant has Rights in respect of a mark that is similar to the Domain Name and therefore the first limb of paragraph 2 of the Policy is satisfied.
Abusive Registration
Abusive Registration is defined in paragraph 1 of the Policy to mean 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.
Non-exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy 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 Nominet; 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.
Under paragraph 3b of the Policy failure to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.
It is clear from the wording of the Policy that the list of factors at paragraph 3 is non-exhaustive and that a Complainant can succeed in proving Abusive Registration without the need to prove any of those factors. However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.
Non-exhaustive factors – paragraph 4 of Policy
There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy.
Discussion and findings regarding Abusive Registration
The definition of Abusive Registration covers both the time of registration and later use. In terms of use of the Domain Name there is no evidence, in this case, that the Respondent has used the Domain Name for the purposes of e-mail or a web-site since it was registered in 1999. The print-out supplied by Nominet says "server not found" and the register database entry says that the Domain Name is suspended. The WHOIS search says "no registrar listed" and "renewal required". The Complainant says that it has found no evidence that the Domain Name has been used. Under paragraph 3b of the Policy failure to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration. Accordingly, the Complaint will not succeed solely on the basis that Respondent has failed to use the Domain Name. It is therefore necessary to move on to consider whether there is evidence of Abusive Registration at the time of registration.
The question is whether the Complaint establishes that the Domain Name was registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. The Complainant says that the registration is a blocking device and was registered for speculative purposes to prevent the Complainant from registering it. The Complainant points out that the Domain Name was registered on 29 July 1999 which was more than 4 years after the date of its incorporation as Baby Pages Limited. Registration of a domain name by definition prevents any other person from registering that domain name but if the Respondent's intention was to prevent the Complainant from registering the Domain Name it follows that the Respondent must have had some knowledge of the Complainant and/or its brand/rights at the time of registration.
The Appeal Panel in DRS 04331 verbatim.co.uk said that some knowledge of the Complainant and/or its brand/rights is a pre-requisite for a successful complaint under all heads of the DRS Policy other than paragraph 3(a)(iv) (giving false contact details). The DNS is a first-come-first-served system and the Appeal Panel struggled to conceive of any circumstances under which a domain name registrant, wholly unaware of the Complainant and its Rights, can be said to be taking unfair advantage of or causing unfair detriment to the Complainant's Rights. Accordingly, in this case for the Complaint to succeed the Complainant must satisfy the Expert that the Respondent was aware of the existence of the Complainant and its brand/rights at the date of registration of the Domain Name.
There is very little of any real assistance to the Expert when it comes to the question of what the Respondent's true intentions were when the Domain Name was registered. There is no direct evidence that the Respondent knew of the Complainant and had an "unfair" motive at the time of registration. As the Appeal Panel pointed out in DRS 4479 champagne.co.uk, in relation to famous or well-known marks it is often possible to infer that the registration took place with the mark in mind. In relation to registrations that do not involve the use of well-known marks it is more difficult to draw that inference.
Although the Complainant incorporated as Baby Pages Limited on 12 June 1995 there is no evidence of use of the mark Baby Pages by the Complainant prior to registration of the Domain Name. The Complainant has produced a copy of a VAT registration certificate but that was issued on 15 September 2005. The Complainant says that it started trading from the website at www.baby-pages.co.uk in August 2005 and that the on-line presence is the sole outlet for this business. The invoices for AdWords from Google, supplied by the Complainant, are all dated in August 2007.
The Complaint says the business has a shop but that trades under the name Mum's Delight. The print-out from the web-site at www.mums-delight.co.uk says that Mum's Delight is probably the most established baby goods store in Norfolk with over 27 years of experience. The web-site refers to an on-line shop at www.baby-pages.co.uk and there is a link that says "Buy online at baby-pages.co.uk". The evidence is that the long-established shop business trades as Mum's Delight and it is only the on-line business, which did not start until August 2005, that trades as www.baby-pages.co.uk.
It is open to the Expert, in the absence of a Response, to infer that the Respondent was aware of the Complainant and its brand/rights at the time of registration. The Complainant has however not satisfied the Expert that it had acquired a sufficient reputation and goodwill in the mark Baby Pages at that time to justify such an inference. It is no doubt inconvenient to the Complainant that the Respondent registered the Domain Name but Nominet operates on a first-come-first-served basis and the Complainant must prove that the Domain Name took unfair advantage of or was unfairly detrimental to the Complainant's Rights. Without the requisite knowledge of the Complainant's brand/rights the Respondent cannot be said to have acted unfairly in relation to the Complainant's Rights for the purposes of the Policy.
Paragraph 3(a)(iv) of the Policy says that if it is independently verified that the Respondent has given false contact details to Nominet that may be evidence of Abusive Registration. There is no independent proof that the Respondent provided false contact details to Nominet. It may be that the Respondent is in breach of its obligation to notify Nominet of changes to those contact details and that is a matter that Nominet has power to deal with under its terms and conditions.
The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name which is similar to the Domain Name but is not satisfied, on the balance of probabilities, that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore concludes that the dispute is not within the scope of paragraph 2 of the Policy and directs that no action should be taken on the Complaint.
Andrew Clinton
31 October 2007