Tele 2 UK Communications Ltd  v Dickinson [2004] DRS 01450 (26 January 2004)

DRS 01450
NOMINET-UK DISPUTE RESOLUTION SERVICE

B E T W E E N :

TELE 2 UK COMMUNICATIONS LIMITED
Complainant

- and -

ANDREW DICKINSON
Respondent

_________________________________________________

DECISION OF INDEPENDENT EXPERT
_________________________________________________

Appointment
1.	I was appointed, by a letter dated the 22nd January 2004 to decide, under the DRS Procedure, a complaint of Abusive Registration.  I am required to give my decision by the 12 February 2004.

Terminology
2.	In this Decision:
•	“Nominet”		means Nominet-UK
•	“the DRS Procedure”	means Nominet’s current dispute resolution procedure
•	“the Policy”	means Nominet’s current dispute resolution policy
•	“the Domain Name”	means the domain name “tele-2.co.uk”

Materials
3.	I have been provided with the following materials:
(1)	Dispute History
(2)	Complaint
(3)	Standard correspondence between Nominet UK and the parties
(4)	Register entry for tele-2.co.uk
(5)	Nominet WHOIS query result for tele-2.co.uk
(6)	Printout of website at www.tele-2.co.uk
(7)	Copy of Nominet UK’s Policy and Procedure.

The Complaint
4.	The Complainant asserts that the Domain Name in the hands of the Respondent is an “Abusive Registration”.

5.	The terms of the Complaint dated the 31st December 2003 so far as material, are as follows:
“We, Tele2 UK Communications Limited, are the users of the domain: tele2uk.com.  Our parent company, Tele 2 Europe S.A. is the registered proprietor of the International Trade Mark: TEL2, registration number: (M)714368, registration date: 23 March 1999.  We hereby assert the rights of the Tele2 group in and over the TELE2 trade mark (the “Rights”).  Tele2 Group companies provide telephony services under this trade mark, and similar trade marks, throughout Europe.  Since 22 October, 2003, Tele2 UK Communications Limited has been a provider of such telephony services within the UK.  We are filing this complaint with reference to the domain name: tele-2.co.uk, in reference to which an application for registration in the name of the Respondent is currently being processed by Nominet.  We assert that at the time the application for registration was made, namely 9 November, 2003, the application was made in a manner which both took unfair advantage of, and was unfairly detrimental to, our Rights.  In particular, we assert that the application for registration was made as a direct response to the UK launch of our services, less than a fortnight prior thereto.  Furthermore, we assert that the Respondent, through its use of the tele-2.co.uk domain, has taken, and is continuing to take, unfair advantage of our Rights, and in a manner which is unfairly detrimental thereto.  We assert that the domain name is being used in an abusive fashion as it is being used to confuse people seeking to visit the tele2uk.com website, through which telephony services within the UK are provided.  Visitors to the tele-2.co.uk website are invited to click a link to be taken to a website providing telephony service within the UK.  The link does not lead to the tele2uk.com website, as we assert it ought, but instead to telecomplus.co.uk, an independent retailer, with which the Tele2 Group has no connection, of UK telephony services, among other goods and services, which are in direct competition with the services provided by Tele2 UK Communications Limited.”

Response
6.	No Response has been provided by or on behalf of the Respondent.  The Complaint not being challenged, therefore, I am entitled to, and will, assume that the facts asserted in it are true.  Indeed there is no reason to doubt the veracity of those asserted facts.

Jurisdiction
7.	Under paragraph 2a of the Policy a Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that
“i.	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii.	The Domain Name, in the hands of the Respondent, is an Abusive Registration”.

8.	Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

Rights
9.	Paragraph 1 of the Policy defines “Rights” as including “rights enforceable under English law”.  This definition is subject to a qualification which is not material.

10.	There is no evidence before me that the Complainant has any rights in the trademark TELE2.  The owner of the mark is said to be the Complainant’s parent company, Tele2 Europe SA.  There is no evidence of any assignment of, or of any licence or contractual arrangement conferring rights in, the mark to the Complainant.

11.	Accordingly, the Complainant has not proved to my satisfaction that it has any rights in the mark.  It may have authority to “assert the rights of Tele2 group”, but such an authority is prima facie evidence of agency.  An agent with the right to enforce the rights of its principal does not, in my opinion, itself have “Rights in respect of a name or mark” within the terms of paragraph 2a of the Policy.  It is the Principal that has such rights.

12.	However, in English law a company registered under the Companies Act 1985 does have rights in respect of its registered name.  Section 26(1) of that Act prohibits the registration of a company in a name which is the same as a name already appearing in the index of names kept by the Registrar of Companies.  A name registered in contravention of that prohibition may be compulsorily changed within 12 months of the date of registration - see Section 28(2) of that Act.  The company which first registered the name is entitled to invoke this jurisdiction.

13.	Further, the Complainant asserts that it is the user of the domain tele2uk.com.  There being no Response, this is unchallenged.  Being “the user” of a domain is prima facie evidence of rights in that domain, even though the Complainant does not in terms state that it is the registrant.

14.	The Complainant’s full name is “Tele2UK Communications Ltd”.  The Domain Name does not include the words “Communications” or the word “Ltd”, and therefore it is not identical to the Complainant’s name or to the domain tele2uk.com. Nevertheless it is “similar” to both and I so find.

Abusive Registration
15.	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 f or was unfairly detrimental to the Complainant’s Rights”.

16.	The Policy provides:
“3.2	Evidence of Abusive Registration

	a.	A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

	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.

b.	Failure on the Respondent’s part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.

4.	How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

a.	A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

	i.	Before being informed of the Complainant’s dispute, the Respondent has:
		A	used or made demonstrable preparations to use the Domain Name or a Domain name which is similar to the Domain Name in connection with a genuine offering of goods or services;

		B	been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;

		C	made legitimate non-commercial or fair use of the Domain Name; or

	ii.	The Domain Name is generic or descriptive and the Respondent is making fair use of it.

b.	Fair use may include sites operated solely in tribute to or criticism of a person or business, provided that if:

	i.	the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts Rights, without any addition; and

	ii.	the Respondent is using or intends to use the Domain Name for the purposes of a tribute or criticism site without the Complainant’s authorisation,

	then the burden will shift to the Respondent to show that the Domain Name is not an Abusive Registration”.

17.	Some of the factors referred to in paragraph 3.2a of the Policy are plainly not made out.  Thus, there is no material which would establish the factors in (iii) or (iv).

18.	Similarly, there is no material which would establish the factors referred to in paragraph 4aiC, aii, or b of the Policy.

19.	The Complainant itself provides evidence that the Domain name is being used “in connection with (… the) offering of goods or services” by some person or persons or company trading from the telecomplus.co.uk site.  The Respondent has had the opportunity of showing that the apparent offering of goods and services at telecomplus.co.uk is “genuine”, within the terms of paragraph 4a i A of the Policy, and that this was something which pre-dated the launch of the Complainant’s business in this country.  The Respondent has failed to advance any such case, or indeed, any case at all. 

20.	Further, even if the business apparently being run through the telecomplus.co.uk site (“the telecomplus business”) is one which is genuinely offering goods or services, and even if it has been doing so from a date which pre-dates the launch of the Complainant’s business in this country, there is no evidence that the telecomplus business made any use of the Domain Name or anything similar prior to the registration of that name by the Respondent.

21.	By reason of the proximity of the dates when the Complainant launched its business in this country and the Respondent registered the Domain Name, and the absence of any assertion by the Respondent that the telecomplus business had made any use of the Domain name prior to the launch in this country of the Complainant’s business or of any explanation as to why the Respondent registered the Domain name when he did, I conclude, on the balance of probabilities, that the Respondent registered the Domain Name  
(1)	primarily for the purpose of unfairly disrupting the Complainant’s business [paragraph 3.2 a I A of the Policy]; and
(2)	in the contemplation that, amongst other things, people or businesses would be confused into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
 
22.	No evidence has been provided to show that the Respondent’s use of the Domain Name has actually “confused people or businesses into believing that that name was registered to, operated, or authorised by, or otherwise connected with the Complainant”.[paragraph 3.2 a ii of the Policy]  However, the risk of such confusion is plain and indeed, my conclusion, as expressed in paragraph 21 above, is that that confusion was intended.  In my judgment such a risk is sufficient to establish an Abusive Registration - the factors set out in paragraph 3 of the Policy are not exhaustive.

23.	In the light of the conclusions expressed in paragraphs 21 and 22 above I am satisfied that at the time when the registration took place it was unfairly detrimental to the Complainant’s Rights and that accordingly the complaint of an Abusive Registration is made out.

24.	In the circumstances it is not necessary to consider whether it should also be inferred that the registration was a blocking one.

Remedy
25.	 The Complainant’s position is somewhat ambivalent:-
“We hereby request that you, Nominet, therefore refuse the application for registration made by the Respondent if it has not already been approved, or cancel the registration if it has been so approved, and thereafter transfer the registration of the tele-2.co.uk domain to us. …

Remedies Requested
Cancelled”.

26.	I am empowered to decide whether a registration should be cancelled, suspended, transferred or otherwise amended.  In the present case I consider that either cancellation or transfer would be appropriate.  The Complainant should, within 10 days of receipt of this Decision, inform Nominet.uk of which option it prefers.  If the  Complainant fails to do this within the time which I have specified the registration should be cancelled.

Decision
27.	For the reasons given above, I find that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

28.	The Registration should be cancelled or transferred to the Complainant as explained in paragraph 26 above.

Signed ……………………..
David Blunt QC
26 January 2004