Nominet UK Dispute Resolution Service

DRS 05484

AOL LLC  –v–  Edoco Limited

Decision of the Independent Expert

1	Parties

	Complainant:	AOL LLC
				US

	Respondent:	Edoco Limited
	Registered	Carpenter Court
				UK

2	Domain name in dispute

	Aolmail.co.uk

3	Chronology of dispute

	25/02/08	Complaint received, complaint validated
	19/03/08	No response received
	03/04/08	Michael Silverleaf selected as expert
	10/04/08	Michael Silverleaf appointed as independent expert

3.1	I confirm that I have no connection with either of the parties.  I know of no reason why I cannot properly accept the invitation to act in this case and know of no matters which ought to be drawn the attention of the parties which might appear to call into question my independence and/or impartiality in this case.

4	The facts

4.1	The only material I have to determine the facts is contained in the Complaint and attachments, together with a copy of the Companies House entry for the Respondent.  The Respondent has not responded to communications from either the Complainant or Nominet.  Accordingly, I can treat the following facts as undisputed.

4.2	The Complainant, AOL LLC, is one of the world’s largest and longest established ISPs.  It is extremely well known and has long run an e-mail service under the name AOLmail.  It has many trade mark registrations including the name AOL in the UK, the Community and elsewhere.  It has operated in the UK for over 10 years and has advertised its services extensively here.  For the three years up to March 2004, the Complainant expended more than £100 million in advertising in the UK.  This is obviously a very substantial sum and must have generated extensive recognition of the AOL name amongst members of the UK public.  AOL is a famous mark amongst members of the public for internet services.

4.3	The Complainant has many domain name registrations including the name AOL.  Its services are available through aol domains in many jurisdictions including aol.com and aol.co.uk as well as country specific domains for many other European territories.

4.4	The Complainant’s e-mail service is branded as AOL mail.  It provides its customers with e-mail accounts having addresses in a form such as xxxx@aol.com.  Customers can access their e-mail anywhere in the world through the domain http://aolmail.aol.com.  AOL mail is used by over 2 million people in the UK and many more worldwide. 

4.5	The Respondent is a private limited company.  The disputed domain name appears to have been first registered on 24 May 2004 in the name of “Peter Smith”.  This was the result of a WHOIS query performed on 15 January 2008.  When the Complainant’s lawyers wrote to the registrant seeking transfer of the domain name, they received a response by e-mail from “info@rubberkeys.co.uk”, claiming to be Peter Smith and saying that the domain was registered in the name of the Respondent, with whom he claimed to have no connection.

4.6	A subsequent WHOIS query on 19 February 2008 gave the Respondent with its address as set out above, which corresponds to the address given in the Companies House entry for Edoco Limited.  The second WHOIS also gave the date of registration as 18 January 2008.  I do not understand how this can have happened but do not propose to consider the matter further as the current state of the Nominet register gives the Respondent as the registrant and accordingly the appropriate legal entity to deal with the present complaint.

4.7	A company by the name of Edoco Limited is listed as the Respondent to three successful complaints that it is the holder of an Abusive Registration.  Edoco Limited appears in Nominet’s “3 cases respondent table”.  According to the complaint case 04522 was decided on 1 May 2007, case 04824 on 13 September 2007 and case 05125 on 19 November 2007.  It follows that Edoco Limited has been the subject of three decisions that it is the holder of an Abusive Registration in the last two years.

4.8	According to the Companies House web enquiry system the Respondent is a dormant company having the registered address Carpenter Court, 1 Maple Road, Bramhall, Stockport, Cheshire SK7 2DH.  Mail to that name and address has, however, been returned unopened, either as “addressee unknown” or as “refused”.  The address corresponds to the information given by the Nominet WHOIS query carried out on 19 February 2008.  It would be tempting to conclude that the contact information given by the Respondent is false but I am not sure that one can safely do so.  The fact that mail has been rejected merely indicates that the occupier of the premises does not wish to accept mail addressed to the Respondent, not necessarily that he or she is unconnected with the Respondent.

4.9	The Respondent is also the holder of many other domain name registrations.  A number of these are very similar to well-known brands and websites.  For example, listed in the complaint are a range of names including Barclays-online, bbcradiotwo, hewlet-packard, gooogl, last-minute, louis-vuitton and nat-westbank.  I have also noted 24-7-electrical, bbcweathercentre, and bigbrother2006 in the reverse WHOIS list annexed to the complaint.

5	The legal framework

5.1	The relevant version of the DRS Policy to the present dispute is version 2 which relates to complaints lodged after 24 October 2004.  Clause 1 of that policy defines an 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”

5.2	Clause 1 of the DRS Policy also defines “Rights” for the purposes of this procedure as including but not limited to those enforceable under English law.  Under Clause 2 of the DRS Policy a complainant must show on the balance of probabilities
	(a)	that it has Rights in a name or mark identical or similar to the Domain Name; and
	(b)	that the Domain Name in the hands of the Respondent is an Abusive Registration.

5.3	Clause 3 of the DRS Policy identifies a non-exhaustive list of factors which may be evidence that the domain name is an Abusive Registration.  I have accordingly taken these into account in reaching my conclusions.

5.4	Clause 3(c) provides that there shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three or more DRS cases in the period of two years before the present complaint was filed.  The presumption may be rebutted.  Under Clause 4(c) of the Policy, if the presumption applies, the Respondent, to succeed, must rebut it by proving in the response that the registration is not an Abusive Registration.

5.5	The Dispute Resolution Service procedure is one in which the parties provide written evidence and submissions.  There are no oral proceedings and no testing of the evidence.  The expert accordingly has to evaluate the written material and give it such weight as is appropriate in order to reach a conclusion on the balance of probabilities.

5.6	According to the Appeal Panel decision in the Seiko case (DRS 00248) whether a registration is an abusive registration under the DRS Policy is independent of whether a Domain Registration is an infringement of trade mark and should be decided under the terms of the DRS Policy alone.  The same decision also makes clear, however, that the relevant principles of English law should be applied in determining whether the Complainant has Rights under the Policy and that the Policy is founded on the principle of intellectual property rights which should be taken into account.

6	The parties’ submissions, discussion and findings

6.1	As noted in section 3 of this decision I have only submissions from the Complainant.  I take the view that I must, therefore, take additional care to ensure that my findings are based only on facts and circumstances which can properly be shown to be established by those submissions.

6.2	There is no doubt in my view that AOL is an extremely well known brand in the UK.  I take the view that it is practically notorious as a large ISP.  AOL mail is also and extremely well-known e-mail service.  I do not believe that anyone having sufficient knowledge of the operation of the internet to register a domain name could be unaware of AOL or its e-mail service AOL mail.

6.3	Accordingly, it is clear that AOL has rights under English law in a name or mark identical or similar to the domain name and that the first limb of the test under Clause 2 of the DRS Policy is satisfied.  It remains to be considered whether the registration by the Respondent is an abusive registration as defined by Clause 1.

6.4	The facts set out in the complaint establish that a company called Edoco Limited has been the subject of three successful complaints of Abusive Registration in the period of two years before this complaint was filed.  There is no reason to think that this company is any other than the Respondent.  Accordingly, the presumption provided by Clause 3(c) of the DRS Policy applies.  The Respondent has not rebutted the presumption in the manner required by Clause 4(c).  It therefore seems to me that I am bound to conclude that the registration is an Abusive Registration and that the complaint succeeds.

6.5	In case there should be any question about the application of the presumption, I shall briefly consider whether there are any other grounds foir deciding that the registration is abusive.

6.6	The current state of the Nominet register indicates that the domain was registered in the name of the Respondent on 18 January 2008.  At that date the Respondent must have known of the Complainant’s rights and must have appreciated that any use of the domain name would infringe those rights.  Whatever the Respondent’s intentions in relation to the domain name (whether to use it to block the Complainant’s use of the domain, to sell it to someone seeking to use it to infringe the Complainant’s rights or simply to hold it for an undetermined future use) that alone seems to be to be sufficient to justify the conclusion that the registration was abusive.

6.7	I do not find it necessary to reach a conclusion whether the Respondent has given false contact details to Nominet or whether that has been independently verified.  For the reasons set out above, I am not satisfied on the information provided that this is the case and do not rely on this as a ground for concluding that the registration of the domain is abusive.

6.8	I therefore conclude that the registration of the Domain Name is abusive and that it should be transferred to the Complainant.

Michael Silverleaf
17 April 2008