Nominet UK Dispute Resolution Service

DRS 03738

The Oxfordshire Press Ltd -v- A T Cunningham

Decision of Independent Expert

a.	Parties

Complainant:	The Oxfordshire Press Limited
Country:	GB

Respondent:	Mr A T Cunningham
Country:	GB

b.	Domain Name

simplyprizes.co.uk (the “Domain Name”)

c.	Procedural Background

Nominet received the Complaint in full on 8 June 2006 and notified the Respondent of the validated Complaint by letter (and e-mail) dated 9 June 2006.  The Respondent provided a non-standard Response to the Complaint which was received by Nominet on 12 June 2006.  The Complainant provided a non-standard Reply on 21 June 2006.  Informal mediation failed to achieve an outcome to the dispute and so the Complainant paid Nominet the appropriate fee on 28 July 2006 for a decision of an Expert, pursuant to §7 of the Nominet UK Dispute Resolution Service Policy (the “Policy”).  

Steve Ormand, the undersigned, (the “Expert”) confirmed to Nominet on 28 July 2006, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties that might appear to call into question his independence and/or impartiality.

d.	Procedural Issues

The Respondent states in the Response that the Complainant invoked the DRS Procedure at the start of 2005.  Under §10e of the Policy, a complaint will not be reconsidered if it reached the decision stage on a previous occasion and the expert must reject it without a consideration of its merits, unless it contains a material difference that justifies a re-hearing (§10f and g of the Policy).  Accordingly, the Expert requested Nominet to confirm whether the complaint had been previously considered and had reached the decision stage.  Nominet confirmed that it had not reached the decision stage.

In considering the Complaint and the Response, the Expert was faced with the not uncommon situation in DRS disputes that bare assertions are made without supporting evidence or with incomplete evidence.  Rather than dismiss the Complaint, the Expert determined to invoke §13a of the Nominet UK Dispute Resolution Procedure (the “Procedure”) and requested the Complainant, via Nominet, to provide evidence that:

1.	Fleet Street Publications Ltd had published and advertised the magazine "Simply Prizes" in the period from sometime in 2001 through to 31 January 2005, in particular in the period prior to 31 May 2003; and

2.	in January 2005 the Complainant acquired rights to publish, advertise and control the magazine and the name Simply Prizes.

The Expert also invited the Respondent to explain and/or provide evidence to support statements made in his Response where he indicates:

1.	there was a purpose in his acquisition of the Domain Name in that he "wanted to use it"; and

2.	he has made some preparations to use the Domain Name but has "not as yet been able to get the project off the ground, although some substantial work/research has been done on the project."

The Complainant provided the additional evidence requested and did so by the required deadline but the Respondent failed to respond.  The Respondent was also given the opportunity to comment on the Complainant’s additional evidence but again failed to respond by the required deadline.  There being no evidence of exceptional circumstances for the Respondent’s failure to respond, the Expert proceeded to a decision in accordance with §15b and c of the Procedure.

e.	The Facts

Complainant

Fleet Street Publications Ltd established the “Simply Prizes” magazine (the “Magazine”) in 2001 and operated a subscription only service backed by advertising campaigns during the period up to the sale of the Magazine to the Complainant.  

The Complainant was incorporated in the UK on 22 December 2004 and acquired the goodwill in the business and the rights to market, publish and distribute the Magazine from Fleet Street Publications Ltd on 31 January 2005.  The Complainant publishes a number of related publications in the same and other sectors of the market.

Respondent

The Respondent registered the Domain Name on 31 May 2003.  

f.	The Parties’ Contentions

The Complaint

In summary, the Complainant’s assertions are:

1.	That the Domain Name is identical to the name “Simply Prizes” in which the Complainant has Rights (as defined in §1 of the Policy) because the Complainant:

a.	Owns and operates the Magazine which it acquired from the previous owner on 31 January 2005.  The previous owner first published the magazine in 2001.
b.	Has 17,000 subscribers to the Magazine and gross income from sales exceeds £1 million.
c.	Has since 2005, and its predecessor Fleet Street Publications Ltd since 2001, advertised the Magazine by the name “Simply Prizes” by direct mail and spends in excess of £300,000 per annum on generating subscribers.
d.	Has traded using the name Simply Prizes since 31 January 2005 when it acquired the Magazine from Fleet Street Publications Ltd which had traded using the name since 2001.

2.	That the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in §1 of the Policy) because:

a.	There is no suggestion that the Respondent has any legitimate purpose in connection with the Domain Name.  The Domain Name links to a place holder page for EasySpace indicating it has been registered on behalf of a customer.
b.	To the best of the Complainant’s knowledge the Respondent has never used the Domain Name for any purpose connected with the Domain Name.  Thus, the Domain Name must have been registered for one of the following reasons:
i.	For the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor;
ii.	To stop the Complainant registering it despite its rights in the name; or
iii.	To unfairly disrupt the business of the Complainant because any person entering the Domain Name will be directed to a site indicating that the site has been registered but providing no details of the registrant.
c.	The circumstances in this case fall within the following test set out in Chivas Brothers Ltd v David William Plenderleith (DRS 00658):
i.	The Respondent has registered a Domain Name identical to a name in respect of which the Complainant has rights; 
ii.	The name is exclusively referable to the Complainant;
iii.	There is no obvious justification for the Respondent having adopted the Domain Name;
a Google search on the name Simply Prizes is enclosed as evidence of the second leg of the test.

The Response

The Respondent asserts that:

a.	The Complainant invoked the DRS Procedure at the start of 2005.
b.	If the Complainant wanted the Domain Name at the time the Respondent bought it then the Complainant should have acted more urgently and now “seems to be badgering via Nominet to gain this Domain Name”.  The Complainant had not the mind or the acumen to acquire the Domain Name and it seems the Respondent would be punished for the Complainant’s slackness.
c.	He bought the Domain Name and “wanted to use it” but was prevented by illness and consequent “backlog of issues” from doing so.
d.	He has been unable to get the project off the ground although “substantial work/research has been done on the project”.
e.	If he had a publication called Simply Prizes and the Complainant held the Domain Name the Complainant would no doubt argue that the Respondent should make “a realistic market offer/rent” if the Respondent wanted the Domain Name.
f.	The Complainant should approach the Respondent directly and not try to gain the Domain Name in an underhand way.

Reply to the Response

The Complainant asserts that:

a.	The suggestion that the Complainant should make a “realistic market offer/rent” for the Domain Name is further evidence that the Respondent’s registration is abusive.  
b.	The Respondent appears to want to make a profit from selling the Domain Name to the Complainant rather than seeking to recover the original sum of money he paid for the Domain Name.
c.	The Domain Name is not in use and no evidence that it is required for a project in which “substantial work/research has been done” has been provided.  
d.	The Respondent’s suggestion that the Complainant should make an offer for the Domain Name is at odds with the Respondent’s desire to use the Domain Name for a project.

g.	Discussion and Findings

General

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both limbs of the test that:

1.	it has Rights in respect of a name or mark 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

The wholly generic domain suffix “.co.uk” is discounted for the purposes of establishing whether the Complainant has Rights in a name or mark which is identical or similar to the Domain Name.

Rights is defined in §1 of the Policy as including, but not limited to, rights enforceable under English law, but a Complainant may not rely on rights in a name or term that is wholly descriptive of the Complainant’s business.

The Complainant relies on the rights established by Fleet Street Publications Ltd in publishing and advertising the Magazine from 2001 through to the Complainant’s acquisition of the Magazine and those rights in January 2005.

Examination of the documents provided by the Complainant, in response to the Expert’s questions raised under §13a of the Policy, indicates that:

a.	Fleet Street Publications published and advertised the Magazine prior to the Respondent’s registration of the Domain Name;
b.	The Complainant purchased certain assets and acquired the goodwill in the business and the rights to market, publish and distribute the Magazine and several other publications with effect from 31 January 2005.

In the Expert’s opinion the name is not wholly descriptive of the Complainant's business.  The name is the title of the Magazine, which is one of a number of titles published by the Complainant in the same and other sectors of the market.  

The Complainant has, for the purposes of the first limb of the test pursuant to §2 of the Policy, established rights in a name, “Simply Prizes”, that is identical to the Domain Name.

Abusive Registration

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in §3 of the Policy.  The Complainant refers in the Complaint to the factors set out below.

§3a i A of the Policy

It may be evidence of Abusive Registration if the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose 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.

The Complainant does not present any evidence of such purpose except to assert that statements in the Response indicate such intent and the Respondent has not used the Domain Name.  The former is insufficient to establish Abusive Registration per se and the latter is not in itself evidence of Abusive Registration (§3b of the Policy).

Under §4a i A of the Policy the Respondent may show evidence that the Domain Name is not an Abusive registration if before becoming aware of the Complainant’s cause of complaint he used or made demonstrable preparations to use the Domain Name in connection with a genuine offering of goods or services or, under §4a i C, made legitimate commercial or non-commercial use of the Domain Name.

The Respondent says that he “wanted to use” the Domain Name but was prevented from doing so by illness and he has expended “substantial work/research” on the project.  No evidence to support such claims or any explanation of the Respondent’s purpose in acquiring the Domain Name was provided.  Despite being given a further opportunity by the Expert to provide an explanation and/or evidence under §13a of the Procedure, the Respondent did not respond.  

§3a i B of the Policy

It may also be evidence of Abusive Registration if the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name in which the Complainant has Rights.

The Complainant presents no evidence of such purpose.  

§3a i C of the Policy

It may also be evidence of Abusive Registration if the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.

The Complainant presents no evidence of such purpose.  

Chivas Brothers v David Plenderleith (DRS 00658)

The Complainant quotes the first 3 legs of the test developed in DRS 00658 and asserts that it supports a finding of Abusive Registration in this Complaint.  The test states that where a respondent registers a domain name:

1.	which is identical to a name in respect of which the complainant has rights; and
2.	where that name is exclusively referable to the complainant; and
3.	where there is no obvious justification for the respondent having adopted that name for the domain name; and
4.	where the respondent has come forward with no explanation for having selected the domain name

it will ordinarily be reasonable for an expert to infer first that the respondent registered the domain name for a purpose and secondly that that purpose was abusive.

The Complainant has shown Rights in the name.

Is the name exclusively referable to the Complainant?  The Complainant offers a record of subscriptions and a Google listing of a search on the name as evidence.  In DRS 00658 the dispute concerned the name “Chivas Brothers”.  The expert said:

“It is a distinctive name and at any rate in the context of alcoholic beverages a very famous name.  It is inconceivable that the [r]espondent can have registered that name without having the [c]omplainant firmly in mind.”

The name “Simply Prizes” may be exclusive in the market in which the Complainant operates, but outside of that market it is a phrase consisting of everyday words.  It is possible that the Respondent did not have the Complainant firmly in mind when registering or acquiring the Domain Name.  If the Respondent’s purpose at the time of registering the Domain Name was abusive, he must at least have been aware of the Complainant’s Rights at that time.  

Is there an obvious justification for the Respondent to have adopted the name for the Domain Name?  It is possible, although he has offered no explanation in the Response or when provided with a further opportunity to do so by the Expert.

The Complainant was not able to consider the 4th limb of the test at the time of the Complaint.  The Respondent has not come forward with any explanation for selecting the Domain Name.

In light of the above, the Expert concludes that the test is not satisfied.

Conclusion

The Complainant has a difficult, if not impossible, task to show evidence of Abusive Registration when the Domain Name is not in use and the Respondent provides neither explanation of his purpose in acquiring the Domain Name nor any evidence of preparations for use.  The test in DRS 00658 does not assist in this case.

The Respondent was given a further opportunity to provide evidence and/or an explanation of his purpose in acquiring the Domain Name and his preparations to use it.  The Respondent did not provide any response.  The Expert is entitled under §15c of the Procedure to draw inferences from the Respondent’s failure to respond.  Is it reasonable for the Expert to infer that such failure to respond indicates that the Respondent’s purpose in registering or acquiring the Domain Name was abusive?  Certainly, one would expect a respondent with a legitimate purpose, and who had made preparations to use the domain name for that purpose, to provide such evidence.  Similarly, one would expect a respondent who had acquired a domain name without any knowledge of a complainant’s Rights, and who had made plans or preparations for its use before becoming aware of a complainant’s cause for complaint, to provide such explanation and/or evidence.  If he was not aware of the Complainant’s Rights at the time of registration, the Respondent certainly became aware that the Complainant might have such Rights early in 2005 when the DRS procedure was first invoked.  The Respondent says that he was very ill at the time and is still recovering, which has prevented his use of the Domain Name.  It is not clear whether his “substantial work/research” on the project occurred before 2005 or since his illness.  Perhaps one would have expected, given the use of the DRS for a second time, that the Respondent would have provided evidence of his purpose and preparations for use.  However, the Complainant has not proved Abusive Registration and, despite the above arguments, the Expert considers it to be too great a leap to infer that, because he has not provided any explanation of his purpose in answer to the Expert’s request, the Respondent was aware of the name “Simply Prizes” and the Complainant’s Rights at the time of registration.

h.	Decision

In light of the foregoing findings, namely that the Complainant has Rights in respect of a name which is identical to the Domain Name but that the Domain Name, in the hands of the Respondent, is not an Abusive Registration, the Expert directs that no action be taken.

		Date: 	16 August 2006	
	Signed:		Steve Ormand