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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Bae Abermaw Hotel Ltd -v- Clarke [2003] DRS 1221 (12 November 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1221.html Cite as: [2003] DRS 1221 |
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Nominet UK Dispute Resolution Service
DRS NO. 01221
Decision of Independent Expert
Bae Abermaw Hotel Limited -v- John Clarke
1. Parties
Complainant: Bae Abermaw Hotel Ltd
Country: GB
Respondent: John Clarke
Country: GB
2. Domain Name
baeabermaw.co.uk
(referred to as “the Domain Name”)
3. Procedural Background
The Complaint was submitted to Nominet on 9 September 2003, and hard copies of the Complaint were received in full by Nominet on 11 September 2003. The Complaint was sent to the Respondent by post and e-mail on 16 September 2003, with a letter informing the Respondent that he had 15 working days, that is, until 8 October 2003, in which to respond to the Complaint.
No response to the Complaint was received by Nominet. On 10 October 2003, Nominet wrote to the Complainant and the Respondent confirming that no response had been filed within the deadline. The parties were informed that since no response had been received, mediation was not possible. On 23 October 2003, Nominet received from the Complainant the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
On 23 October 2003, Antony Gold, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept Nominet’s invitation to him to act as an Expert in this case.
4. Outstanding Formal/Procedural Issues
Non-submission of response
The Respondent failed to submit a response to Nominet within the time stipulated in paragraph 5 of the Nominet UK Dispute Resolution Service Procedure (“the Procedure”).
Paragraph 15 b of the Procedure states that where a party (in the absence of exceptional circumstances) does not comply with any time period laid down in the Policy or the Procedure, the Expert will decide the dispute based upon the Complaint.
Paragraph 15 c of the Procedure states, in summary, that if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or the Procedure, the Expert will draw such inferences from the party’s non-compliance as he or she considers appropriate. The Expert is not aware of any exceptional circumstances.
Contact Information
There are a number of points arising from the contact information provided by the Respondent. The Complainant asserts that the Respondent is a former employee of the Complainant, and that he registered the Domain Name during the course of his employment. The postal address provided by the Respondent at the time of registration is that of the Complainant - hence the hard copy of the Complaint destined for the Respondent was sent to the Complainant’s address.
Having considered the e-mails sent by Nominet to the Respondent attaching copies of the Complaint, the Expert is satisfied that electronic copies of all correspondence have been sent to the Respondent. The Expert has no reason to doubt that the Respondent has been properly notified of the Complaint in accordance with paragraph 2 of the Procedure, and was properly put on notice of both the time limit within which he should respond and his subsequent default.
5. The Facts
In the absence of a Response, the Expert accepts as accurate (save as indicated later in this decision) the Complainant’s account of the background giving rise to its Complaint.
The Complaint is not well prepared, but the material facts appear to be that the Respondent was a manager of the Bae Abermaw Hotel between 2000 and 2001. A Statutory Declaration made by the owner of the hotel during this period, a Simon Atkinson, dated 26th March 2003 and appended to the Complaint, states that in January 2001 he instructed the Respondent to acquire the Domain Name and that a web site was subsequently established.
Mr Atkinson states that “I instructed [the Respondent] that the Web Site Address and the Web Site should be registered in my name, as the owner of the hotel and business. For some reason he did not do this and registered both the Web Site Address and the Web Site in his own name. These were not my instructions to him”. Accordingly, the Complainant asserts that the Respondent was instructed to register the Domain Name in the name of Simon Atkinson. In the context of the overall language of the Statutory Declaration, it is to be assumed that Mr Atkinson’s use of the term “Web Site Address” is to be taken as referring to the Domain Name. According to the Complaint, the registration of the Domain Name took place in January 2001. However, the whois record indicates that the name was not registered until 20 July 2001.
It is said that the cost of registration of the hotel’s web site and the cost of the registration of the Domain Name were paid for by Simon Atkinson. However, the invoices confirming this have, it is said, been destroyed by the Respondent.
From the Statutory Declaration, it appears that a web site for the hotel was established at the Domain Name, at the request of Mr Atkinson.
The Respondent was apparently dismissed from Mr Atkinson’s employment at an unspecified date in 2001.
Bae Abermaw Hotel is now owned by the Complainant, Mr Atkinson having sold the hotel and the associated business (including goodwill, plant and equipment) to it in or about March 2003. Whilst the Domain Name was not transferred to the Complainant when the Bae Abermaw Hotel was acquired on 28 March 2003, it appears that a number of other domain names used by the Complainant to promote the hotel were transferred to the Complainant.
The Complainant says that it has been unable to locate the Respondent in order to request the transfer of the Domain Name. In any event, the Complainant considers that the circumstances of the Respondent’s departure from Mr Atkinson’s employment strongly suggest that he would not be prepared to assist.
The Complainant says that, as it is not registered as the proprietor of the Domain Name, it is unable to gain access to the site in order to ensure that information contained on the web site to which the Domain Name resolves is updated. Accordingly, it says, the site has not been updated for over a year. This, it says, causes confusion which has arisen as a result of customers and potential customers of the Complainant accessing out of date information (such as the pricing of room and conference bookings, and the specimen menu). The Complainant also says that its inability to post information on the web site to which the Domain Name resolves means that it cannot update the site with favourable reviews of the Hotel which have recently appeared in the press, to the detriment of the Complainant. It says that this confusion and embarrassment is unfairly detrimental to the Complainant’s good name and reputation and that, as result, the Complainant has lost business.
Whilst the Complainant states that a site relating to the hotel, albeit one containing inaccurate information, is still hosted at the web site address, the Complainant did not provide any evidence to support this assertion, such as printouts of the web pages. In fact, the site would appear to be detagged and inactive. In this respect, the Complaint is materially inaccurate. Further, it is unsatisfactory that the Complainant has provided no information at all about the other web site addresses which are evidently being used by it. Without this information, it is not possible accurately to judge the extent of damage or inconvenience being caused to the Complainant and the extent to which there is unfair detriment to its Rights, as defined by the Policy.
6. The Parties’ Contentions
Complainant
The Complainant makes no attempt to address in any coherent manner the conditions which it is necessary for it to satisfy in order for it to succeed with its Complaint. It is not the role of the Expert to attempt to divine what the Complainant might be able to contend based on the limited facts provided. The Complainant’s case would appear to be confined to the bald assertions that :-
(1) The Domain Name is identical or similar to a name or mark in which the Complainant has Rights;
(2) the Domain Name in the hands of the Respondent is an Abusive Registration because it is unfairly detrimental to the Complainant’s Rights. The sole instance of unfair detriment provided is the Complainant’s inability to update details relating to the hotel at the website which it contends, inaccurately, is hosted at the site of the Domain Name.
Respondent
The Respondent has not filed a response.
7. Discussion and Findings
In order to succeed, the Complainant must prove, 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 (paragraph 2(a)(i) of the Policy); and
· the Domain Name in the hands of the Respondent, constitutes an Abusive Registration (paragraph 2(a)(ii)).
Paragraph 2b of the Policy provides that “the Complainant is required to prove to the Expert that both elements are present on a balance of probabilities”.
Paragraph 3 b (v) of the Procedure, states that a Complainant must “describe in accordance with the Policy the grounds on which the complaint is made including in particular: what Rights the Complainant asserts in the name or mark; why the Domain Name should be considered an Abusive Registration in the hands of the Respondent; and discuss any applicable aspects of paragraph 3 of the Policy as well as other grounds which support the Complainant’s assertion”.
Paragraph 3 b (x) of the Procedure requires a Complaint to “attach any documentary or other evidence on which the Complainant relies including correspondence and any trade mark registration and/or evidence of use of or reputation in a name or mark, together with an index of the material provided”.
Paragraph 12b of the Procedure provides that “The Expert shall determine the admissibility, relevance, materiality and weight of the evidence”.
Paragraph 13 of the Procedure provides that; “In addition to the complaint…the Expert may [his emphasis] request further statements or documents from the Parties….”.
Paragraph 2a(i) - the Complainant’s Rights
The question of whether the Domain name is identical or similar to the words Bae Abermaw is not dealt with in the Complaint. However, the Expert accepts that the Domain Name is similar to, and arguably identical to, the words Bae Abermaw, it being usual to ignore to “.co.uk” suffix and the absence of a space between “Bae” and “Abermaw” (inevitable in the context of a domain name) being of negligible, if any, significance.
The meaning of Rights under the Policy includes rights enforceable under English law. Where a Complainant has relevant registered trade marks, it is usual for it to refer to them as evidence of its Rights in a particular name. Where a Complainant is relying on unregistered rights, it is necessary for it to show sufficient goodwill or other interest in the name to amount to a Right. One test of sufficiency might be, for example, that the Rights would enable the Complainant, in appropriate circumstances, to protect its name against an infringer through a claim for passing off. Accordingly, a Complainant relying on unregistered rights might typically provide evidence to substantiate its Rights in relation to matters such as the volume of sales of goods or services sold under the name, the amount of money it has spent on advertising and promoting the name and the length of time for which the relevant name has been used. No such information is provided in this case.
The only documentation with which the Expert has been provided by the Complainant, beyond the short Complaint itself, is the Statutory Declaration of Simon Atkinson dated 28 March 2003. It is unclear whether this Statutory Declaration was prepared in anticipation of these proceedings but neither the statutory declaration nor the Complaint does much to help the Complainant establish that it has Rights in the name Bae Abermaw. Save for an unsubstantiated statement confirming that “the Domain Name(s) [sic] in dispute are identical or similar to a name or mark in which I have Rights”, none of the Complainant’s submissions explain or set out the nature or extent of the Complainant’s Rights in the name Bae Abermaw.
In the absence of any information on the point, it is assumed that the Complainant does not have a registered trade mark. It is accepted that the Complainant acquired the goodwill associated with the hotel business, but the Expert has no information about how long the hotel has been trading under the name, or the value or nature of any goodwill in the trading name. All that is known is that the hotel was owned by Simon Atkinson between April 1999 and March 2003 and thereafter by the Complainant and that a limited company with a name incorporating the words Bae Abermaw has been incorporated, through which the Bae Abermaw Hotel is run.
It is not appropriate for the Expert to make assumptions on behalf of the Complainant in the absence of evidence. The Expert is required to decide the Complaint based on the parties’ submissions, the Policy and the Procedure (paragraph 16 a of the Procedure). Having regard, in particular, to the requirements of paragraph 3 b (v) and 3 b (x) of the Procedure (set out above), the Expert does not find that the Complainant has established, on a balance of probabilities, that it has Rights in the name.
Had it been possible that the Complainant’s case could have been rescued by the provision of information regarding the nature and extent of the Complainant’s Rights in the name, the Expert would have considered requesting further information from it pursuant to paragraph 13 of the Procedure. However, the inadequacies in the Complaint are not confined to this issue. Beyond setting out information about the background to the claim and making the assertion that the Domain Name in the hands of the Respondent is an Abusive Registration, the Complainant has not attempted to develop a case as to why the Expert should reach this finding (see below). Accordingly, the Complainant would also need to formulate its case in relation to paragraph 2a(ii) of the Policy if it were to have any prospect of success. In the view of the Expert, the provisions of the Policy and Procedure were not intended to allow a Complainant to develop its case piecemeal in this manner.
Paragraph 2a(ii) - Abusive Registration
Strictly, a determination that the Complainant has not established that it has Rights in a name similar or identical to the Domain Name is determinative of the Complaint. Nonetheless, for the sake of completeness, it is sensible to consider the limited submission made by the Complainant in relation to the issue of Abusive Registration.
As indicated above, the Complaint is defective under paragraph 3 b (v) of the Procedure as it does not adequately explain the grounds on which the Complainant considers the registration to be Abusive in the hands of the Respondent.
Abusive Registration is defined in paragraph 1 of the Procedure as:-
“a Domain Name which either
(i) was registered or otherwise acquired in a manner which, at the time 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 constitute evidence that the Domain Name is an Abusive Registration are set out at paragraph 3 of the Policy. Save for one point, dealt with below, which appears misdirected, the Complaint does not direct any of its contentions to the above factors. Whilst the list of factors referred to above is not exhaustive, and the definition of what constitutes an Abusive Registration is not restricted to the matters outlined at paragraph 3 of the Policy, it is nonetheless for the Complainant to seek to explain why the Domain Name in the hands of the Respondent should be regarded as an Abusive Registration.
The sole assertion made by the Complainant which requires consideration is that “[the] enquiries made under the pretext of incorrect information are unfairly detrimental to the reputation and good name of the hotel”. It is not considered that this contention enables the Expert to make a finding that the registration is Abusive because the only evidence available to the Expert suggests that the site is inactive and visitors to the site would not receive any information at all. The Complainant has not made any submissions which address themselves to the actual position of an inactive site. The Expert’s role is to consider the parties’ cases; it is not the function of the Expert to make the Complainant’s case for it.
8. Decision
The Expert does not find that the Complainant has been able, on the balance of probabilities, to satisfy the requirements of paragraph 2 of the Policy and, as a consequence, the Complainant’s request for transfer of the Domain Name is refused.
Antony Gold
Date: 12 November 2003