BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!
 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Robinson v Meyer [2008] DRS 6222 (25 November 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/6222.html Cite as: [2008] DRS 6222 |
||
[New search] [Printable RTF version] [Help]
| Complainant: | David Robinson |
| Country: | United Kingdom |
| Respondent: | Daniel Meyer |
| Country: | Germany |
My-life.co.uk (the "Domain Name").
3.1 The Complaint was filed on 28 August 2008. The Complaint was validated on 29 August 2008 and a copy was sent to the Respondent on the same date.
3.2 The Response was filed on 22 September 2008, after an extension of time had been agreed by Nominet. The Response was validated and a copy sent to the Complainant's Representative on the same date.
3.3 The Reply was filed on 25 September 2008 and was forwarded to the Respondent on the same date.
3.4 The dispute then entered the mediation phase, which was unsuccessful. On 27 October 2008 the parties were notified that the dispute would be decided by an Independent Expert (the "Expert") if the Complainant paid the requisite fees by no later than 10 November 2008.
3.5 Those fees were presumably received by Nominet, because on 31 October 2008 a conflict check was sent to the Expert. The Expert was appointed on 4 November 2008 and has confirmed to Nominet that he is independent of the parties and knows of no facts or circumstances that might call into question his independence in the eyes of the parties.
3.6 In this case the Complainant has exercised his right to file a Reply to the Response as he is entitled to do pursuant to paragraph 6(a) of the DRS Procedure (the "Procedure"). However, pursuant to paragraph 6(b) of the Procedure, a Reply
"must be restricted solely to matters which are newly raised in the Respondent's response and were not raised in the Complainant's complaint as originally submitted".
3.7 To the extent that the Reply seeks to raise any new matters, I have therefore disregarded them.
3.8 Further, the Respondent has filed four non-standard submissions to meet some of the points raised in the Reply. The Respondent's explanation for filing each of those non-standard submissions is that "the Respondent has not gained any information during mediation until now and therefore not used informations which he could gained during mediation". The intended meaning of that statement is not entirely clear, but it does not appear to meet the "exceptional need" threshold in paragraph 13 of the Procedure. Nonetheless, they were considered. In the event, they added nothing material and the Expert took no account of them.
4.1 The Complainant is former CEO of a life insurance business called Bright Grey, a division of the Royal London Mutual Insurance Society Limited. Since parting company with Bright Grey, over the last 18 months he has been working on the development of a new life insurance business to be called My Life.
4.2 The Respondent is in the business of acquiring generic domain names for the development of websites.
4.3 On 9 August 2007 the Complainant filed an application for a UK registered trade mark for MYLIFE, MY-LIFE and MY LIFE. That trade mark was registered on 13 June 2008 in Classes 9, 16, 36 and 44 in respect of computer software programs relating to the provision of financial and insurance services; printed matters relating to financial and health insurance, health care and health education; financial, investment and insurance services, and related advisory and consultancy services; and health advisory services, including provision of health checks and health assessment services, provision of health information services, health advice following assessment of medical information, collection of medical information for insurance purposes, and related advisory and consultancy services.
4.4 In the meantime, on 26 October 2007 the Domain Name was registered by the Respondent, according to the Complainant by using drop-catching software, i.e. an automated system to register domain names on the expiry of their registration period, typically within seconds of their registration being cancelled by the relevant registry.
4.5 On 17 July 2008 the Glasgow office of Pinsent Masons, a firm of solicitors acting for the Complainant, wrote to the Respondent threatening proceedings against him for trade mark infringement unless he transferred the Domain Name to the Complainant.
4.6 On 31 July 2008 the Respondent replied by email rejecting the claim of trade mark infringement, declining to transfer the Domain Name and asking the Complainant to confirm that he would not take any legal action against the Respondent.
4.7 On 11 August 2008 the Complainant's solicitors wrote a without prejudice letter to the Respondent offering £500 for transfer of the Domain Name.
4.8 On 14 August 2008 the Respondent replied briefly. In that email he did not refer to the offer to buy the Domain Name. However, he did threaten legal proceedings against the Complainant pursuant to section 21 Trade Marks Act 1994 for groundless threats of infringement proceedings.
4.9 On the same day, the Complainant's solicitors replied with a further without prejudice offer, this time to pay £1,000 for transfer of the Domain Name to the Complainant.
4.10 On 15 August 2008 the Respondent replied by email to that without prejudice letter. Again he did not refer to the offer to buy the Domain Name. He repeated his request for confirmation that the Complainant would withdraw his threat of infringement proceedings.
Complaint
5.1 The Complainant says that he is the founder and leader of a consortium "creating an innovative new UK life insurance business" to be called My Life. He says that this business concept was conceived in 2007 and is now in its "final stages of development", with a view to being launched next year. He says that he has spent over £500,000 "on development of this business concept and brand" and that such expenditure will continue and increase up to the launch date.
5.2 It is said that the proposed business will "sell protection type life insurance in the UK" including directly to the public, and that it will be internet based "with its website at the core of its product offering and critical to the success of the business". Further, the Complainant asserts that "insurance type products will be complemented by services and information aimed at encouraging and assisting a healthy lifestyle for its members". Persons described as "individual members" will be able to obtain quotations and apply for insurance online, as well as using the website "as a key communication tool" for "keeping track of their policies, health and general well being".
5.3 However, the Complainant has adduced no evidence whatsoever of any of this. For example, there is no evidence of any budgets or expenditure, of business plans, of marketing literature or of website designs.
5.4 The Complainant relies on his registration of UK trade mark number 2463637 for MYLIFE, MY-LIFE and MY LIFE. He asserts that a copy of the trade mark registration certificate is attached to the Complaint. However, no such certificate was provided to the Expert.
5.5 The DRS Policy (the "Policy") requires a Complainant to prove that both elements set out at paragraph 2(a) are satisfied on the balance of probabilities. It is therefore incumbent upon a Complainant to adduce enough evidence to make good his case. The burden of proof is on him. Helpful guidance can be found on Nominet's website. Further, where, as here, a Complainant is represented by a reputable law firm, there is really no excuse for failure to adduce the relevant evidence.
5.6 The Complainant refers to his correspondence with the Respondent, though again the correspondence annexed to the Complaint is incomplete. The Complainant asserts that the Respondent "refused to enter into sensible discussions with the Complainant until the Complainant waives his rights to protect and enforce his trade mark".
5.7 The Complainant asserts that the Domain Name is, in the hands of the Respondent, an abusive registration pursuant to paragraphs 3(a)(i)(A) (registration for purpose of sale to Complainant or competitor) and (B) (blocking registration), 3(a)(ii) (confusion) and 3(a)(iii) (pattern of registration of infringing domain names) of the Policy. It is not clear, however, which of the Complainant's submissions relates to which of those paragraphs of the Policy, which is unhelpful.
5.8 Firstly, the Complainant asserts that the Respondent's use of drop-catching software has blocked the Complainant from "securing this domain name". However, the Complainant does not explain why that would constitute evidence of abusive registration.
5.9 Secondly the Complainant says that the Domain Name is being used "as a parking page for sponsored links".
5.10 Thirdly, the Complainant relies on the fact that the Respondent is a registrant of "about 306 other domains" and of 28 further domain names under the name "Daniel Meyer - www.dna.in", though only four such domain names are identified. The Complainant asserts that it is "likely" that such domain names are also being used as "parking page with sponsored links which generate income for the Respondent", i.e. pay-per-click web pages.
5.11 Fourthly, the Complainant complains of the fact that the content on the website incorporating the Domain Name in its URL "relates to comedy websites" and that there is no legitimate connection between the goods and services advertised at that website and the Domain Name.
5.12 Fifthly, the Complainant says that the Respondent is engaged in a pattern of registrations which constitutes evidence of abusive registration, i.e. presumably as per paragraph 3(a)(iii) of the Policy.
5.13 Sixthly, the Complainant says that the Respondent has refused two "generous offers" for the domain name.
5.14 Seventhly, the Complainant characterises the Respondent's request that the Complainant withdraw his threat of infringement proceedings as a request for "a waiver of any rights that the Complainant has in his trade marks" and asserts that therefore this indicates that the Respondent is threatening to use the Domain Name in a manner which may confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant, i.e. presumably as per paragraph 3(a)(ii) of the Policy.
5.15 Eighthly, the Complainant says that he is unable effectively to market his products to potential customers because "any general searches on the internet" direct traffic to the Respondent's website and that therefore "it is reasonably anticipated" that such use of the Domain Name "will unfairly disrupt the Complainant's business".
5.16 Finally, the Complainant denies that any of the factors set out in paragraph 4 of the Policy are present and that accordingly the Domain Name is, in the hands of the Respondent, an abusive registration.
Response
5.17 The Respondent says that he runs a business acquiring generic domain names for the development of websites. Until the websites in question have been developed, he says that he uses the domain names on domain parking sites or as holding pages. He says that the Domain Name is part of that business of "generic domains" and is parked until the website is launched.
5.18 He says that none of his domain names corresponds with company names or well known trade names and that they do not infringe trade marks or any other rights. He explains that the four domain names identified by the Complainant, handyflat.com, optikshop.de, nano.in and dna.in, are generic descriptions, in German, for cheap mobile phone rates, opticians, nanotechnology and deoxyribonucleic acid respectively. For that reason he says that he is not in breach of paragraph 3(a)(iii) of the Policy (pattern of registration of infringing domain names).
5.19 He says that owning many generic domain names is not of itself evidence of abusive registration.
5.20 The Respondent says that he has registered the Domain Name with a view to launching a "free blog service" enabling users to "write, share pictures, pod casts and videos in their blog about interesting and funny things that are happening in their lives" even if they do not know how to design web pages or write internet software. The Respondent says that he proposes to give users the ability to use a sub domain, for example forename.my-life.co.uk. He proposes to generate income through Google Adsense advertisements on the blog sites.
5.21 The Respondent denies that there can be any exclusive trade mark rights in MY LIFE because it is devoid of any distinctive character and incapable of distinguishing the goods and services of one business from those of another. The Respondent cites numerous examples of domain names which incorporate MY LIFE. He also relies on registered trade marks in the United Kingdom incorporating the term MY LIFE which are not owned by the Complainant.
5.22 Further, the Respondent questions the validity of the registered trade mark owned by the Complainant.
5.23 The Respondent asserts that, pursuant to paragraph 4(a)(ii) of the Policy, the Domain Name is generic or descriptive and he is making fair use of it.
5.24 The Respondent denies that he is using the Domain Name in a way which causes any damage to the business or trade marks of the Complainant and relies on the decision in Loewe S.A. v David Blackburn DRS 5386 (loewe.co.uk) as authority for the proposition that linking a domain name to a PPC website with no links related to the Complainant's business is not, in and of itself, evidence of abusive registration.
5.25 The Respondent makes the point that the Complainant has no common law rights in the phrase "my life" because his business is not up and running and therefore has no reputation.
5.26 The Respondent says that he does not use the Domain Name in connection with goods or services in any of the classes in which the Complainant owns the relevant trade mark. He also asserts that visitors to his website have never searched for services associated with the Complainant.
5.27 The Respondent says that the Complainant and his proposed business and his trade mark were "completely unknown" to him until he received the letter from the Complainant's solicitors of 17 July 2008. Accordingly, he says that there is no evidence of the circumstances set out at paragraph 3(a)(i) of the Policy.
5.28 The Respondent says that he is not taking unfair advantage of the Complainant's mark or business and in any event that the Complainant has adduced no evidence of damage. He asserts that registration of a generic domain name, such as the Domain Name, for use with advertisements is not itself abusive and is in fact a genuine offering of goods or services and therefore falls within paragraph 4(a)(i)(A) of the Policy.
5.29 The Respondent says that he is not using the Domain Name as a blocking registration (paragraph 3(a)(i)(B)) because registration of generic domain names such as the Domain Name is on a first come, first served basis.
5.30 The Respondent says that the Complainant is guilty of attempting reverse domain name hijacking because he does not have any genuine evidence of a number of his assertions. In addition, the Respondent complains that the Complainant has not provided all the correspondence between the parties, having omitted the Complainant's letter of 14 August 2008 and the Respondent's email in reply of 15 August 2008, that he set an unreasonable 24 hour deadline, that he did not contact the Respondent before instructing solicitors "indicating that he does not really want to act in a sensible manner", and he has not addressed the legal points put to him by the Respondent. Complaint is also made by the Respondent of the fact and manner of the Complainant's approaches to the owner of the domain name mylife.co.uk. The Respondent says that on the same day as the letter was sent to him, the Complainant sent a nearly identical letter to the owner of the domain name mylife.co.uk, including a complaint of trade mark infringement. He says that the letter in question threatened proceedings against the registrant of that domain name for trade mark infringement if the domain name was not transferred to the Complainant, but that in the event the Complainant is only asking the registrant of that domain name to agree to limit his use of the domain name to "personal websites and/or blogs", and that in the event he did not file a Complaint under the DRS or bring legal proceedings against the registrant of that domain name. The Respondent cites the fact that the correct domain name was not always used when writing to the respective registrants, which "indicates that the lawyers had not reviewed the cases on its own carefully and are maybe generally domain hijacking".
5.31 Finally the Respondent cites some 45 websites as supporting his case, primarily being other websites the URL of which incorporates the mark MY LIFE or MY-LIFE.
5.32 The Response is accompanied by a complete set of the inter party correspondence; an invoice in German for what the Respondent says is text for a website to be operated at www.handyflat.com comparing mobile phone prices and/or tariffs; what appears to be preparatory materials for a proposed blogging website at URL www.my-life.co.uk; and a screenshot from the UK IPO website showing that there are a number of registered marks incorporating the terms "my life", "my-life" and "mylife", though the proprietor of those marks is not identified. The Respondent has also put in evidence what appears to be a screenshot from a Citibank website concerning a life insurance product known as "My Life". However, that exhibit is somewhat misleading. In fact, it constitutes only part of a page on the Citibank website which relates to its United Arab Emirates business. It would have been helpful if the Response had made that clear.
Reply
5.33 In his Reply, the Complainant provides some limited further information about his consortium to develop the My Life business. He then makes detailed submissions about his trade mark rights which, for the reasons set out in paragraphs 6.4 to 6.6 below, are not strictly relevant.
5.34 The Complainant denies the Respondent's assertion that the latter has used the Domain Name in connection with a genuine offering of goods and services. The Complainant asserts that by parking the domain name and posting sponsored links on the associated website generating income he is taking unfair advantage of the Complainant's trade mark. The Complainant says that he has been prevented from accessing the Respondent's website at URL www.my-life.co.uk.
5.35 The Complainant denies that he has been using the DRS in bad faith and reiterates that he has rights in the domain name and clear grounds for alleging trade mark infringement in the UK. The Complainant explains in some detail why he believes that to be the case. He expressly denies having acted in bad faith.
5.36 The Complainant responds to the Respondent's alleged reliance on the Complainant's correspondence with the third party registrant of mylife.co.uk, and submits that as the Respondent is not a party to those communications, it is not appropriate for him to speculate on it. The Complainant categorically denies all allegations made in this regard. He does not deny that he approached the owner of the domain name mylife.co.uk but, following correspondence, it transpired that this domain name was only being used for trading in the USA using the separate and distinct domain name itsmylife.com, which he says is a wholly distinct brand and business from "My Life".
General
6.1 To succeed under the Policy, the Complainant must prove on the balance of probabilities, first, that he has Rights (as defined in the Policy) in respect of a name or mark that is identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy), and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent (paragraph 2(a)(ii) of the Policy).
6.2 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
6.3 Notwithstanding the Complainant's failure to provide evidence of ownership of a registered trade mark, having made my own enquiries on the UK IPO website, I am satisfied that the Complainant owns a UK registered mark inter alia in MY-LIFE in classes 9, 16, 36 and 44 in respect of computer software programs relating to the provision of financial and insurance services; printed matters relating to financial and health insurance, health care and health education; financial, investment and insurance services, and related advisory and consultancy services; and health advisory services, including provision of health checks and health assessment services, provision of health information services, health advice following assessment of medical information, collection of medical information for insurance purposes, and related advisory and consultancy services. That trade mark was registered on 13 June 2008.
6.4 Under the Policy, the Complainant must satisfy the Expert, on the balance of probabilities, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name. Rights are defined as "rights enforceable by the Complainant, whether under English law or otherwise, and may include rights in descriptive terms which have acquired a secondary meaning".
6.5 The threshold under paragraph 2(a)(i) of the Policy is not a high one. The fact that a Complainant may have Rights in a domain name under the DRS is not the same as having a legal claim for trade mark infringement against the Respondent. The test is different. Detailed submissions on matters of trade mark law are not generally relevant to determination of whether paragraph 2(a)(i) is satisfied.
6.6 The Complainant's statutory rights in the MY-LIFE mark are plainly enforceable under English law. Whether or not they are enforceable against the Respondent does not need to be decided. Nor is the Expert required to second-guess the Complainant's prospects of success were he to bring legal proceedings for trade mark infringement against the Respondent or indeed whether the Respondent would succeed in an unwarranted threats action.
6.7 The Complainant's case on his common law rights in the MY LIFE and/or MY-LIFE names is weak. However, since he has a registered trade mark, that does not matter in this case.
6.8 The Domain Name is self-evidently similar or identical to the Complainant's registered trade mark.
6.9 Accordingly, the Complainant has satisfied paragraph 2(a)(i) of the Policy by proving, on the balance of probabilities, that he has rights in respect of a name or mark that is identical or similar to the Domain Name.
Registration of Domain Name primarily for sale (paragraph 3(a)(i)(A))
6.10 Under paragraph 3(a)(i)(A) of the Policy, Abusive Registration may be made out if the circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name primarily 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.
6.11 The Respondent is correct to draw attention to the decision of the Appeal Panel in Verbatim Ltd v Michael Toth DRS 4331 (verbatim.co.uk) and similar cases under the DRS. It is in any event axiomatic that a registrant can only have registered or otherwise acquired a domain name primarily for the purpose of selling it to the Complainant, or a competitor of the Complainant, if at that time he was aware of the Complainant's existence.
6.12 The Complainant has been unable to provide any evidence that the Respondent was aware of the existence of his proposed business when the Respondent registered the Domain Name, from which the requisite intent might be inferred. Indeed, it is difficult to see how he could have had such knowledge, and therefore the requisite intent, given that, even now, the Complainant's proposed business is still in development.
6.13 Further, the Complainant has not been able to produce any evidence that the Domain Name was ever offered for sale to him or to a competitor. Indeed, the only evidence points in precisely the opposite direction. The Complainant made two offers to buy the Domain Name, first for £500 and then for £1,000, which even on the Complainant's case were generous offers, both of which were ignored by the Respondent.
6.14 Accordingly, the Complainant has failed to prove that the Respondent acquired the Domain Name primarily for the purposes set out in paragraph 3(a)(i)(A) of the Policy.
Registration of Domain Name primarily as a blocking registration (paragraph 3(a)(i)(B))
6.15 Under paragraph 3(a)(i)(B) of the Policy, Abusive Registration may be made out if the circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights.
6.16 As discussed, the Complainant has failed to prove the necessary element of knowledge and intent. It therefore follows that there can be no liability under paragraph 3(a)(i)(B).
6.17 The fact that the Respondent may have secured the Domain Name before the Complainant, thereby blocking the Complainant from registering the Domain Name, as the Complainant submits, cannot of itself fall foul of the Policy where knowledge and intent are not present.
Registration of Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 3(a)(i)(C))
6.18 Under paragraph 3(a)(i)(C) of the Policy, Abusive Registration may be made out if the circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
6.19 While the Complainant has not expressly relied on this provision of the Policy, some of his submissions appear to indicate (though it is not clear) that he wishes to do so. For example, the Complainant says that he is unable effectively to market his products to potential customers because internet searches will direct traffic to the Respondent's web pages and that therefore the Respondent's use of the Domain Name "will unfairly disrupt the Complainant's business because it is identical to the Complainant's trade marks" (see paragraph 5.15 above).
6.20 However, as with the categories of abusive registration set out in paragraphs 3(a)(i)(A) and (B) discussed above, the Complainant must prove the requisite knowledge and intent. It therefore follows that, given the absence of that element (see paragraphs 6.11 and 6.12 above), the fact that the Domain Name is identical to the Complainant's registered trade mark is not of itself sufficient to amount to evidence of abusive registration under paragraph 3(a)(i)(C).
Confusion (paragraph 3(a)(ii)
6.21 Under paragraph 3(a)(ii) of the Policy, Abusive Registration may be made out if the circumstances indicate that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
6.22 The Complainant relies in this regard on the Respondent's request that the Complainant withdraw his threat of infringement proceedings (see paragraph 5.14 above). Whether or not the correspondence from the Complainant's solicitors falls foul of section 21 Trade Marks Act 1994 and whether or not the Respondent was justified in demanding the withdrawal of those threats, it does not constitute evidence that the Respondent is threatening to use the Domain Name in a way which is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. If anything, it is evidence that the contrary is the case. The Respondent makes it clear in his correspondence with the Complainant's solicitors that it is precisely because his proposed use of the Domain Name is wholly unconnected with the classes of goods and services protected by the Complainant's UK trade mark, that the threats of infringement proceedings are unwarranted.
6.23 Moreover, the Respondent has made submissions, apparently supported by evidence (see paragraph 5.26 above) which demonstrate that there is no such confusion, by reference to search terms used by visitors to his website which are unrelated to the goods and services which the Complainant proposes to provide.
6.24 Accordingly, the Complainant has failed to prove on the balance of probabilities that the circumstances envisaged in paragraph 3(a)(ii) of the Policy are present.
Pattern of bad faith registrations of which the Domain Name is part (paragraph 3(a)(iii))
6.25 Under paragraph 3(a)(iii) of the Policy, Abusive Registration may be made out if 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.
6.26 This is therefore a two limb test. First, the Complainant must prove, on the balance of probabilities, that the Respondent has registered a number of domain names corresponding to well known names or marks in which the Respondent has no apparent rights. Secondly, the Complainant must prove that the Domain Name is part of that pattern.
6.27 The Complainant submits that the Respondent is the registrant of approximately 334 domain names. However, he identifies only four of them, namely handyflat.com, optikshop.de, nano.in and dna.in. None of those domain names appears to correspond to "well known names or trade marks". The Respondent asserts that he owns only "generic domain names, which do not correspond to certain company names and well known trade names and which do not infringe trade marks or other rights".
6.28 The Complainant has not pleaded any such domain names, let alone provided any evidence to demonstrate their ownership by the Respondent. Accordingly, he has failed to prove that the Respondent falls foul of paragraph 3(a)(iii).
Sale of traffic
6.29 In his Reply, the Complainant submits that the Respondent's use of the domain name on a parking site with sponsored links amounts to taking unfair advantage of his trade mark.
6.30 Paragraph 4(e) of the Policy provides as follows:
"Sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) is not of itself objectionable under the Policy. However the Expert will take into account:
(i) the nature of the Domain Name;
(ii) the nature of the advertising links on any parking page associated with the Domain Name;
(iii) that the use of the domain name is ultimately the Respondent's responsibility"
6.31 The following considerations are relevant. First, the Domain Name is of a generic nature. Secondly, the links on the parking page associated with the Domain Name are, even on the Complainant's case, related to comedy. Sponsored links include those to the Comedy Central website, a comedy club locator, a website named Comedy Contact, a website named Watch Comedy Videos, and so forth. That is wholly unrelated to the Complainant's proposed business of life insurance. Thirdly, the Complainant's business is in any event not yet up and running.
6.32 For these reasons, the Complainant has failed to establish that such sale of traffic constitutes evidence of abusive registration.
Reverse domain name hijacking
6.33 The Respondent submits that the Complaint has been used in bad faith (see paragraph 5.30 above). Under paragraph 16(d) of the Procedure, it is open to the Expert to find that a Complaint has been brought in bad faith.
6.34 However, none of the many and detailed submissions made by the Respondent in this regard establishes, on the balance of probabilities, that the Complainant has used the DRS in bad faith.
7.1 Accordingly, I find that the Complainant has Rights in a name or mark which is identical or similar to the Domain Name but that, on the balance of probabilities, the Domain Name in the hands of the Respondent is not an Abusive Registration, and therefore paragraph 2(a)(ii) of the Policy has not been satisfied.
7.2 I therefore determine that no action be taken in respect of the Domain Name.
David Engel
Signed ………………………………………… Dated 25 November 2008
