Haymarket Publishing Services Ltd v Transautex GB [2004] DRS 01448 (5 February 2004)

Nominet UK Dispute Resolution Service

DRS 01448

Haymarket Publishing Services Ltd - v – Transautex GB

Decision of Independent Expert

1.	Parties:

Complainant:	Haymarket Publishing Services Ltd
Country:	GB

Respondent:	Transautex GB
Country:	GB

2.	Disputed Domain Name:

autocar.co.uk

3.	Procedural Background:

A complaint (“the Complaint") was received in full by Nominet on 3 December 2003.  Nominet forwarded the Complaint to the Respondent on 9 December 2003 and notified it that it had 15 working days (i.e. until 5 January 2004) to respond.  The Respondent failed to respond.  Mediation not therefore being possible Nominet notified the Complainant that the Complaint would be referred to an independent expert upon payment of the requisite fee.  The Complainant paid the fee on 15 January 2003 for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy").

On 16 January 2004 and in accordance with paragraph 9 of the Nominet Dispute Resolution Service Procedure ("the Procedure") I, Simon Chapman, ("the Expert") confirmed to Nominet that I was impartial and independent and knew of no reason why I should not accept an appointment to act as Expert in this matter.

I was subsequently appointed by Nominet on 3 February 2003 and my decision is due by no later than 5 February 2004.

4.	Outstanding Formal/Procedural Issues:

The Respondent has not submitted a Response to the Complaint.  From the papers that have been submitted by Nominet to me it is apparent that efforts have been made to bring the Complaint to the attention of the Respondent by post and e‑mail using the contact details held on Nominet’s Register.   It is apparent from the file of papers that the attempts by Nominet to bring the Complaint to the attention of the Respondent have failed, insofar as their e-mails have been bounced back with a delivery failure notification, and further a letter sent via the post has been returned with a message saying “addressee gone away – 11/12/03”.

When registering a UK domain name applicants agree to be bound by Nominet's Terms and Conditions.  Clause 2.3 of those terms and conditions provides that:‑

'You must inform us promptly of any change in your registered details, and those of your Agent if applicable.  It will be your responsibility to maintain and update any details you submit to us and to ensure that your details are up to date, and accurate.  In particular, it is your responsibility directly or by your Agent to ensure that we have your full and correct postal address.”

In addition paragraph 2(e) of the Procedure states that:‑

"Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i.		if sent by facsimile, on the date transmitted; or
ii.	if sent by first class post, on the second Day after posting; or
iii.	if sent via the Internet, on the date that the communication was transmitted; and
iv.	where communications are received by more than one method, at the earliest date received;
and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.”

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.  If the Respondent has not received notification of the Complaint, which seems likely, in the absence of further information to the contrary they only have themselves to blame.

I now move on to consider the consequences of the Respondent not submitting a response?

The Procedure envisages just such a situation and provides in Paragraph 15 that:‑

“c.	If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate."

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision.  For the avoidance of doubt I do not believe that failing to update its contact details is an exceptional circumstance.

I will draw such inferences from the Respondent's failure to respond as I think appropriate, but must bear in mind that the reason for there being no response is that the Respondent is most likely unaware of the Complaint, rather than it having nothing to say in Response for example.  

5.	The Facts:

The Complainant has submitted a substantial amount of evidence in support of its Complaint, which I can summarise as follows.

It is the largest private magazine publisher in the United Kingdom with substantial business abroad as well.  It acquired the AUTOCAR title in 1988, which has in fact been the name of a car magazine since 1895.  The AUTOCAR “brand” has been protected by numerous trade mark registrations around the world and by way of example there is a UK registration No 2191603 for the word AUTOCAR registered in Class 9 for “Electronic publications, including electronic publications supplied on-line from a database or from facilities provided on the Internet or other Networks (including web sites)”.

The UK edition of the AUTOCAR magazine has a weekly circulation of approximately 68,225 copies, with a readership of 329,000 per issue.  A sum in excess of £500,000 is spent each year promoting the AUTOCAR brand to readers.

The Complainant has a large number of domain name registrations which have been registered to protect its brand and to strengthen its presence on the Internet.

At the time that the Domain Name was registered (31 Jan 1997) the brand was well known in several parts of the world, especially the UK.

The Complainant believes that the Respondent is in the car business, because Internet searches using the word “transautex” disclose a reference to Transautex (UK) Ltd on  a further search engine which appears to indicate an association with motor cars.

The Complainant has made a number of attempts to contact the Respondent, including attending what it believed to be the Respondent’s address given to it via the Respondent’s agent, although it found that the Respondent did not in fact reside at that address.

Further enquiries reveal that the post office has no record of Transautex GB and that Companies House has no listing for a company under that name.

Finally, the URL corresponding to the Disputed Domain Name does not point, and to the Complainant’s knowledge, has never pointed to any website.

6.	The Parties Contentions:

Complainant

The Complainant submits that it has Rights in respect of a name or mark which is identical to the Disputed Domain Name.  

The Complainant asserts that registration of the Disputed Domain Name was Abusive because –

1.	The circumstances as described above may confuse people or businesses into believing that the Domain Name is registered to, operated or authorized by or otherwise connected with the Complainant (para 3(ii) of the Policy).

2.	The registration is a blocking registration because it prevents the Complainant from using their mark as a domain name in an important jurisdiction causing them severe harm (para 3(i) B of the Policy).

3.	The Respondent registered the Disputed Domain Name in order to disrupt the business of the Complainant, because it has been unable to use it for on-line trading (Para 3 a(i) C of the Policy).

4.	The use of incorrect contact details.

The Complainant's requested remedy is that the Disputed Domain Name be transferred.

Respondent

As stated above the Respondent has not served a Response.

7.	Discussion and Findings:

General

To succeed in this Complaint the Complainant must, in accordance with Paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that (1) 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 (2) the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

Burden

The absence of a response from the Respondent does not mean that the Respondent is deemed to have no answer to the Complaint, but rather the Complainant must still make out its case to the Expert on the balance of probabilities.  Where a Respondent does not avail himself/herself of the opportunity to respond to the Complaint it might be said that the Complainant's task is all the easier, but as I have previously indicated, notwithstanding the absence of a Response, it is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

Complainant's Rights

As indicated above, the Complainant has asserted that it has Rights in a name or mark which is identical to the Disputed Domain Name.

The first (.uk) and second (.co) levels of the Disputed Domain Name should be discounted for the purposes of comparison as being of a generic nature.  As such the mark in which the Complainant claims Rights (AUTOCAR) is identical to the Disputed Domain Name.

The Complainant has provided evidence which confirms that it is the proprietor of a large number of trade mark registrations for the mark AUTOCAR.  In addition it clearly has substantial goodwill in the mark and in the absence of any evidence to the contrary, I find that the Complainant has established that it has Rights in respect of a name or mark which is identical to the Disputed Domain Name.  

Abusive Registration

An Abusive Registration is defined in Paragraph 1 of the Policy 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 of an Abusive Registration are set out in Paragraph 3.  They are:‑

“i	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A.	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;
B.	as a blocking registration against a name or mark in which the Complainant has Rights; or
C.	primarily 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;
iii.	In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv.	It is independently verified that the Respondent has given false contact details to us.

The Complaint identifies four specific examples of what it believes to be abusive behaviour which I will deal with in turn.

Confusion (3(ii)) ‑ Evidence required under this head is that of actual confusion.  There is no evidence that people or businesses have been confused into believing that they are dealing in some manner or means with the Complainant and given that the Respondent has not directed the Disputed Domain Name to a website, it seems unlikely that any such confusion will arise.  Although I note the Complainant’s suggestion that the Respondent may be connected with the car trade, the evidence in this respect is exceedingly thin.  It is not at all clear that the business described on the search engine result is anything to do with the Respondent.  In that respect I noticed that Companies House records do refer to a Transautex International Ltd, who incidentally have their registered office in Wimbledon, London only a stones throw from the address recorded by Nominet as the contact address for the Respondent, although this may be mere coincidence.  In addition the search result to which the Complainant refers, is found not by utilising the Disputed Domain Name but the Respondent’s name.  The chain of causation therefore seems at best remote, and at worst broken.  I therefore find that this ground of complaint fails.

Blocking (Para 3a(i) B) – In my opinion and as above, the evidence does not go far enough in proving that the registration was to block the Complainant’s use of its mark or name. In light of the number of domain name registrations held by the Complainant that do incorporate their name or mark it would appear that blocking has not taken place.  I therefore find that this ground of complaint also fails.

Unfair Disruption (Para 3a(i) C) – There is a large body of evidence to support that contention that as at the date the Disputed Domain Name was registered, the Complainant’s mark was well known and operating as the title of a successful car magazine.  The Complainant asserts that the registration of the Disputed Domain Name in this context is indicative that the Respondent did intend to disrupt the Complainant’s business, not least because it deprived the Complainant of being able to use the domain name autocar.co.uk, which the Complainant believes to have significant value for it in the UK.  In my opinion given the length of use of the Complainant’s mark and the nature of the mark itself, which whilst being a combination of descriptive terms is not of itself a mark that would have an obviously descriptive meaning, registration of the Disputed Domain Name by the Respondent raises serious questions as to why that domain name was adopted by the Respondent.  In my opinion, in light of the evidence submitted and the absence of any adequate explanation by the Respondent of its conduct, the Complainant has succeeded in proving that on the balance of probabilities the registration of the Disputed Domain Name was made primarily for the purpose of unfairly disrupting the business of Complainant.  This ground of complaint therefore succeeds.

Contact Details – The Complainant intimates in its Complaint that a further ground for the registration being Abusive, is the incorrect contact details for the Respondent.  Whilst it is possible that the contact details are now incorrect, and as such a  breach of Nominet’s terms & conditions, it would seem that the address given was the correct contact details for the Respondent’s agent.  As such, I do not find the evidence is sufficient to support a finding that the Respondent has given false contact details.  This ground of complaint therefore fails.

8.	Decision:

For the reasons set out above, in my opinion the Complainant has proven on the balance of probabilities that (i) it has Rights in respect of a name or mark which is identical to the Disputed Domain Name; and (ii) the Disputed Domain Name in the hands of the Respondent is an Abusive Registration.  The Complaint therefore succeeds and I direct that the Disputed Domain Name be transferred to the Complainant forthwith.

Simon Chapman
5 February 2004