Nominet UK Dispute Resolution Service

DRS Number 4044

Sputnikworld.co.uk

v

Martin Degville

Decision of Independent Expert

1.	Parties

Complainants:	Sputnikworld Limited	
Country:	United Kingdom	

Respondent	Martin Degville	
Country:	United Kingdom	

2.	Domain Name

siguesiguesputnik.co.uk   -  registered on 21 June 2006.

3.	Procedural Background

The Complaint was lodged with Nominet on 25 September 2006.  Nominet validated the Complaint and notified the Respondent of the relevant Complaint on 28 September 2006 and informed the Respondent that he had 15 days within which to lodge a Response. 

No response was received from the Respondent.

No mediation having been possible, on 2 November 2006 the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

David Flint, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as 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.	Outstanding Formal/Procedural Issues (if any)

The Complainant is Sputnikworld Ltd a company whose directors are the members of a rock group entitled Sigue Sigue Sputnik. Although this fact is not stated in the body of the complaint, it is apparent from the supporting papers lodged with the complaint

5.	The Facts

The rock group Sigue Sigue Sputnik  have been working together for over 20 years and have maintained a global profile. They have an official site spunikworld.com. This site was established ten years ago and is known throughout the world as the official “Sigue Sigue Sputnik” web site. It is also the Google No. 1 entry. All of the groups business is carried out via the site. It has been brought to their attention over the past few weeks that Mr Martin Degville, an ex-member of the band is now also calling himself "Sigue Sigue Sputnik", passing off the name they use. Mr Degville left the group in August 2003. 

6.	The Parties’ Contentions

Complainant

The Complainant’s Lawyer informed the Complainant the name “Sigue Sigue Sputnik” belongs to the current band members. Mr Degville has recently purchased the domain name siguesiguesputnik.co.uk . He is now advertising his shows as "Sigue Sigue Sputnik" shows on this website causing great confusion among the public. We have written to him asking him to desist and we are currently undertaking legal proceedings against him. Mr Degville has also posted vitriolic and abusive statements on this site by that are defamatory both towards the group and members of the band personally. The site is also being used to provoke ill-will towards the existing group’s reputation with a long standing fan base. Finally it is also being used to sell pirate merchandise which breaches copyright.

The Complainant would like to see a change of domain name to one that doesn't include "sigue sigue sputnik" in any way.

Respondent

No response was received from the Respondent

7.	Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant’s Rights

The Complainant is the representative of the parties who trade under the name “Sigue Sigue Sputnik” and has done so since 1998 – albeit that the individual members of the Group may have traded under that name for a longer period. In those circumstances the Expert is satisfied that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” as:-

“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.”

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. 

The Respondent was, according to the Complainant, a member of the Group until August 2003, although the Companies House printout for the Complainant shows that the Respondent did not in fact cease to be a director of the Complainant until August 2006

In the case immediately before this Expert relevant ‘factors’ in paragraph 3 are to be found in subparagraphs i and ii, which read 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;”    

The Expert interprets “as” in sub-paragraph i. B as being synonymous with “for the purpose of”. Were it to be interpreted otherwise all domain name registrations would inevitably constitute “blocking registrations” for any later arrival wishing to use the name in question. 

The Respondent was, by the statement of the Complainant, a member of the group Sigue Sigue Sputnik for at least the period 1998 – 2003 and it entitled to describe himself as a former member of the Group in any publicity material which he issues. There is clear authority to the fact that so describing oneself does not constitute trademark infringement.

The Expert has considered whether the circumstances of this case are such as would fall within paragraph 4.a.i.B of the Policy – “been commonly known by the name or legitimately connected with a mark which is identical or similar to the domain name.” However, after reflection the Expert does not consider that the Respondent’s previous membership of the group is sufficient to permit him to register the exact name of the group and use it in the manner in which he is doing.

Whatever the Respondent’s previous history, this does not, in terms of the DRS Policy, entitle the Respondent to register a name which has the purpose of unfairly disrupting the business of the Complainant. All the material on the website at the domain name could still exist at a domain which had a different name (subject to such other legal remedies as the Complainants may have in relation to the matters mentioned in their complaint).

Additionally, the Expert notes that the Respondent has advised Nominet falsely that he is a non-trading individual who has therefore opted to have his address omitted from the WHOIS service. This is clearly not the case and constitutes a breach of his registration agreement.

Despite the obvious concerns that the Complainant has for the material which the Respondent has placed on the site using the Domain Name, these are matters which are not directly within the scope of the Policy and have not impacted materially on this Decision.

The Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s rights.

The remedy which the Complainant has requested is not one which it is competent for the Expert to grant under the Policy. The Expert has therefore made his Decision on the basis of the outcome which it appears that the Complainant wishes to obtain.

8.	Decision

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name siguesiguesputnik.co.uk  be transferred to the Complainant.

David Flint

08 November 2006