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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Q Soft Consulting Ltd v Smith [2008] DRS 5515 (7 May 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5515.html Cite as: [2008] DRS 5515 |
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Complainant
Respondent
| Complainant: | Q Soft Consulting Limited |
| Country: | United Kingdom |
| Respondent: | Mr Tim Smith |
| Country: | United Kingdom |
wgaydar.co.uk and gaydar-nation.co.uk (the "Domain Names")
3.1 The Complaint entered Nominet's system on 6 March 2008. Hard copies of the Complaint were received by Nominet on 7 March 2008.
3.2 The Complaint was validated on 11 March 2008 and sent to the Respondent by post and by email on the same day to three email addresses: [email protected], [email protected] and [email protected]. The last email address was that held by Nominet on its register and provided for contact purposes by the Registrant in respect of both Domain Names.
3.3 On the same day an "undeliverable" message was received from the email address [email protected]. On 14 March 2008 a similar message was received from the email address [email protected]. No such message was received in respect of the email address [email protected]. Since that was the email address provided to Nominet by the Registrant at the time of registration of the Domain Names, I am prepared to assume that the Respondent received that email.
3.4 No Response was received by Nominet within the prescribed time limit.
3.5 On 7 April 2008 Nominet therefore again wrote to the Respondent informing him that because he chose not to respond to the Complaint, Nominet could not offer mediation and that, provided that the Complainant paid the requisite fee, the Complaint would proceed straight to a decision by the next available expert on Nominet's panel. The Complainant was notified of the procedural position in similar terms on the same date.
3.6 Nominet's letter to the Respondent was on the same day also sent by email to the same email addresses as previously. On 10 April 2008 an undeliverable message was received in respect of the email address [email protected] only.
3.7 On 15 April 2008 the Complainant paid the requisite fee to Nominet and a conflict check was sent to me on that date.
3.8 On 18 April I confirmed that I was not aware of any reason why I could not act as an independent expert in this case.
4.1 As is well established under the DRS, a Respondent's failure to file a Response does not mean that a Complaint cannot proceed for expert determination by an independent expert, provided that the Complainant pays the requisite fee, as in this case it has.
4.2 This case will therefore be decided on the basis of the Complainant's submissions made in its Complaint dated 5 March 2008, any evidence included with the Complaint, and the facts.
4.3 I would observe in passing that I have not found it easy fully to understand the Complainant's case. It is always in the interests of a Complainant filing a Complaint under the DRS to set out the facts and its arguments (a) clearly, (b) as fully as the word limit allows, and (c) supported by the relevant documentary evidence. This does not mean that the person drafting the Complaint needs to be legally trained (indeed, legalese is probably best avoided). It should be achievable by any person of ordinary intelligence with a reasonable grasp of the fundamentals of English grammar and syntax, who reads and follows the DRS Procedure and Policy and takes advantage of the helpful guidance to be found on Nominet's website.
4.4 The only evidence submitted by the Complainant in this case is a single-sided colour photocopy of Community Trade Mark number 38886256 for the word GAYDAR registered on 11 October 2005. The photocopy does not disclose the name of the registered proprietor of that mark.
4.5 At least three-quarters of the Complaint consists of extracts from a decision in a different case under the DRS. Paragraphs 5.1 to 5.3, paragraph 6.3 sub-paragraphs (c) to (e), and paragraphs 7.3 to 7.7 of the decision in DRS 5037 (to which the Complainant - but not the Respondent - was also a party) have simply been copied and pasted into the Complaint. Given that DRS 5037 was decided on different facts against a different Respondent (who had filed a Response), the status and relevance to this case of the decision of the independent expert in that case is not clear.
4.6 While it is always open to a party to the DRS to cite other DRS, or indeed UDRP, decisions in support of a particular submission, a Complainant cannot assume that an independent expert will take at face value the relevance of an opinion expressed or finding of fact made in a previous DRS decision. The facts may be different. Crucially, in this case, I do not know what evidence was before the independent expert in DRS 5037, nor have I seen the Complaint, Response or Reply in that case, and I cannot therefore necessarily proceed on the basis that the conclusions reached by him in that case will necessarily and automatically be directly relevant to this case.
4.7 I have therefore proceeded on the basis that insofar as the text copy and pasted into the Complaint from the decision in DRS 5037 consists of statements of fact, it is the Complainant's intention to assert the truth of those facts.
4.8 Where the copy and pasted text represents the opinion of the independent expert in that case, I give it no more weight than I would if that case had been cited in support of any particular argument which the Complainant was seeking to advance. What it seems to me I cannot do, is to adopt wholesale the conclusions of the independent expert in that case without the benefit of having seen the pleadings in that case or any of the evidence that was adduced in support.
5.1 The Domain Names were both registered on 26 October 2007 in the name of Mr Tim Smith of 7 St Mary's Street, Cardiff.
5.2 On the basis of the Whois result, the Respondent is a non-trading individual who has opted to have his address omitted from the publicly accessible part of the database.
5.3 The domain name gaydar-nation.co.uk is currently being used on a Sedo pay-per-click domain parking site with links to websites under the following headlines: "Meet gay men for sex now", "Watch gay movies online", "Top porn movies online", "Want an affair or NSA sex", "Sex and submission.com", "UK gay chat" and "Chat with sexy women". The Respondent will therefore be receiving payment for each internet user who clicks through from the site at www.gaydar-nation.co.uk to one of those links.
5.4 The domain name wgaydar.co.uk is also being used on a Sedo pay-per-click domain parking site, but in a slightly different format in that the links displayed are simply by category, such as "Finance", "Games" and "Electronics", each of which has a number of sub-categories, for example, in the case of "Finance": "Debt", "Credit card", "Insurance", "Investment" and "Tax". One of the categories is "Dating", which has the following sub-categories: "Mobile dating", "Singles", "Gay dating", "Chat" and "Speed dating".
Complainant
6.1 Proceeding on the basis mentioned in paragraph 4.7 above, the Complainant contends that it owns and operates a gay and lesbian dating website at www.gaydar.co.uk and owns and operates a radio station named GaydarRadio, with a website at www.gaydarradio.com, which in 2003 acquired a DAB radio licence.
6.2 The Complainant asserts that it has been in business since 1999 and that advertising and marketing spend has grown from £4,453 in 1999 to over £700,000 in 2006. It also asserts that in 2003 it achieved a turnover of just under £3 million. However, no evidence is provided of any of this.
6.3 The Complainant also asserts that according to "Hitwise" (no explanation is provided of what this is), www.gaydar.co.uk has become the UK's largest gay and lesbian dating website with 52% of the market. Again, no evidence is provided of this.
6.4 The Complainant asserts that it owns a number of registered trade marks that comprise or incorporate the GAYDAR name, including:
6.4.1 CTM 2127264 for the word GAYDAR in classes 35, 38 and 42;
6.4.2 Australian mark number 911830 for the word GAYDAR in classes, 35, 38 and 42;
6.4.3 CTM 3804168 for the word GAYDAR in classes 38 and 41; and
6.4.4 Australian mark number 1006985 for the word GAYDAR in class 41.
6.5 However, no evidence whatsoever (such as copy trade mark certificates) is provided to support those assertions. As mentioned in paragraph 4.4 above, the only evidence submitted by the Complainant in this regard is a copy of the first page of a certificate for the word GAYDAR registered on 11 October 2005 as CTM 38886256, but that copy does not disclose the name of the registered proprietor of that mark.
6.6 The Complainant then makes various assertions about the conduct of the Respondent in DRS 5037. No suggestion is made by the Complainant that there is any connection between the Respondent in that case and the Respondent in this case. Those assertions therefore seem to me entirely irrelevant.
6.7 The Complainant's case appears to be that:
6.7.1 each of the Domain Names is similar to the GAYDAR mark on the basis that GAYDAR-NATION can only sensibly be read as a combination of the words "Gaydar" and "Nation" and that WGAYDAR can only be sensibly read as a combination of the letter "W" and the word "Gaydar" and that therefore the Complainant has rights in the GAYDAR mark which is identical or similar to both the Domain Names;
6.7.2 the Domain Names, in the hands of the Respondent, are Abusive Registrations because the Respondent is engaged in a pattern of registrations, the number, type and pattern of which prove that the Respondent is in the habit of registering domain names which correspond to trade marks or other well known names in which he has no "apparent interest" and that "nothing appears on those domains".
Response
6.8 The Respondent has not responded to the Complaint.
General
7.1 To succeed under the Policy, the Complainant must prove on the balance of probabilities, first, that it has rights in respect of a name or mark that is identical or similar to the Domain Names (paragraph 2(a)(i) of the Policy), and secondly, that the Domain Names are Abusive Registrations in the hands of the Respondent (paragraph 2(a)(ii) of the Policy).
7.2 Abusive Registration is defined in paragraph 1 of the Policy in the following terms:
"Abusive Registration means 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."
Complainant's Rights
7.3 As mentioned above, the Complainant has provided evidence only of a CTM number 38886256 for the word GAYDAR registered on 11 October 2005. The evidence submitted with the Complaint, a photocopy of the first page only of a registration certificate, does not identify the registered proprietor of that mark as being the Complainant or anybody else. Arguably, therefore, the Complainant has failed to discharge the evidential burden of proving that it owns a registered trade mark in GAYDAR. I have, however, checked the IPO and OHIM websites which disclose a CTM owned by a company with the same name as the Complainant, but at a different address from that given in the Complaint. On the balance of probabilities, I am just about prepared to accept that that trade mark is owned by the Complainant.
7.4 No evidence whatsoever has been adduced in support of the Complainant's assertions that it owns a number of other registered trade marks, which I have therefore disregarded.
7.5 Conversely, while the Complainant has, impliedly at least, asserted the existence of facts (albeit, again wholly unsupported by any evidence) which would, on the face of them, perhaps constitute evidence of common law rights in the GAYDAR name, no such submission has been made in the Complaint. I have not therefore considered the question of unregistered rights.
7.6 Plainly, neither of the Domain Names is identical to the GAYDAR mark. So far as the domain name gaydar-nation.co.uk is concerned, I accept that there is an analogy with the domain names in issue in DRS 5037 (gaydarlinks.co.uk and gaydarshop.co.uk), though that argument is not as strong in this case. While both "Gaydar links" and "Gaydar shop" convey a meaning, at least in an internet context, "Gaydar nation" has no immediately obvious meaning. Nonetheless, I am prepared on balance to accept that the principal distinctive element in the domain name gaydar-nation.co.uk is the word "Gaydar" and that the word "nation" is generic or descriptive.
7.7 As regards the domain name wgaydar.co.uk, in and of itself, the letter W is devoid of meaning. However, again the principal distinctive element is the word "Gaydar". The use of a single, probably random, letter of the alphabet in combination with a mark in which the Complainant has Rights (as defined in the policy) is typical of the practice known as typosquatting. I am therefore prepared to accept that the GAYDAR mark is similar also to that domain name.
7.8 On the basis of its ownership of the CTM in the word GAYDAR, referred to at paragraph 7.3 above, the Complainant therefore makes out its case under paragraph 2(a)(i) of the Policy in respect of the Domain Names.
Abusive registration
7.9 The Complainant relies exclusively on paragraph 3(a)(iii) of the Policy which provides as follows:
"A non-exhaustive list of factors which may be evidenced that the Domain Name is an Abusive Registration is as follows:
…
(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"
7.10 The Complainant asserts that the Domain Names are "one of a series of registrations that the Respondent has made, which because of their number, type and pattern prove that the Respondent is in the habit of making registrations of domain names which correspond to trademarks or other well known names in which the Respondent has no apparent interest e.g. gaydar-nation.co.uk and wgaydar.co.uk were both registered on 26 October 2007 but nothing appears on those domains when you enter them into google".
7.11 That assertion may be correct or it may not be. I have no means of knowing because the Complainant has provided no evidence whatsoever to support that assertion.
7.12 Paragraph 3 (b) of the Policy provides that:
"Failure on the Respondent's part 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."
7.13 Accordingly, even if correct (which it is not) the fact that "nothing appears on those domains when you enter them into google" would not constitute evidence of Abusive Registration.
7.14 The Complainant advances no other argument or evidence in support of its contention that the Domain Names are Abusive Registrations.
7.15 However, as mentioned in paragraphs 5.3 and 5.4 above, it is plain on the facts (albeit not argued by the Complainant) that the Domain Names are being used to generate revenue for the Respondent by pointing to Sedo pay-per-click web pages.
7.16 The Complainant says that it has since 1999 offered gay and lesbian dating services under the GAYDAR name. Since 2005 it has owned a registered trade mark in GAYDAR. Both Domain Names were registered more than two years after the GAYDAR trade mark was registered. It is therefore likely that internet users are visiting those web pages as a result of seeking information about the services provided by the Complainant under the GAYDAR name and mark.
7.17 Further, most of the links, in the case of the gaydar-nation.co.uk domain name, are gay and/or sex related (see paragraph 5.3 above). In the case of the wgaydar.co.uk domain name, one of the categories of links is "Dating", and one of its sub-categories is "Gay dating" (see paragraph 5.4 above).
7.18 Accordingly, it seems to me more likely than not that the Respondent is using the Domain Names in a manner which takes unfair advantage of the Complainant's Rights in the GAYDAR mark (paragraph 1 (ii) of the Policy) in order to obtain a financial benefit.
7.19 This point has not been raised by the Complainant, and therefore it might be thought that the Complainant has failed to comply with paragraph 2 (b) of the Policy ("The Complainant is required to prove to the Expert that both elements [Rights and Abusive Registration] are present on the balance of probabilities", emphasis added). However, in order to try to avoid a manifestly unjust outcome, the independent experts are nonetheless required by Nominet to take into account in reaching their decisions not only the parties' contentions but also the surrounding facts. In this case, those facts include the use which the Respondent is currently making of the Domain Names (see paragraphs 5.3 and 5.4 above).
7.20 In those circumstances, and a little reluctantly given the Complainant's failure even to argue this point let alone to seek to prove it, I find that on the balance of probabilities paragraph 2 (a) (ii) of the Policy is, on the facts of the case, satisfied.
8.1 Accordingly, I find that the Complainant has Rights in a name or mark which is identical or similar to the Domain Names and that, on the balance of probabilities, the Domain Names in the hands of the Respondent, are each an Abusive Registration under paragraph 2(a) of the Policy.
8.2 I therefore determine that the Domain Names be transferred to the Complainant.
Signed: ………………………………………… David Engel
Dated: 7 May 2008
