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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Pleasureland Ltd v Dotcombiz.au [2005] DRS 02206 (05 February 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02206.html Cite as: [2005] DRS 2206, [2005] DRS 02206 |
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Decision of Independent Expert
| Complainant: | Pleasureland Limited |
| Country: | GB |
| Respondent: | Dotcombiz-au | Country: | Australia |
a) Pleasureland.co.uk
The Complaint was lodged with Nominet on 26 November 2004. Nominet validated the Complaint and notified the Respondent of the relevant Complaint on 6 December 2004 and informed the Respondent that it had 15 days within which to lodge a Response.
On 22 December 2004 a non-standard response was received from the Respondent. On 22 December 2004 this response was sent to the Complainant.
No reply was received and on 17 January 2005 mediation documents were generated. No mediation having been possible, on 28 January 2005 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.
None
Complainant:
The Domain Name in issue is pleasureland.co.uk.
The Complainant is an amusement/theme park in Southport, UK. The enterprise has been widely known by the name "Pleasureland" since the 1930's. The company "Pleasureland Limited" has been officially registered since 1896, the registered name was changed to "Pleasureland Limited" in February 1994 having previously been "Hotchkiss Patents and Investments Ltd". Pleasureland is a well-known attraction in the UK, and has such built up considerable goodwill from its reputation. This complaint arises after an earlier complaint was withdrawn in favour of direct correspondence with the Respondent. It was agreed that while the domain name is substantially similar to our trading name, the Respondent's registration of the domain did not constitute an abusive registration under the DRS. We have since acquired further evidence that would point to the abusive nature of the registration, hence the submission of a new complaint.
The Respondent
The Respondent does not provide a response which lends itself to easy repetition; However, the gist of it seems to be that it registered the name to use as a "kids game portal" and not in response to the business activities of the Complainant. The remainder to the response is basically along the lines of advising the Complainant that what the Respondent had done and was intending to do was none of the Complainant's business. Further information can be gleaned from the e-mail exchange which took place in September 2004.
Complainant:
The substance of the Complaint is as follows: -
The Respondent has asked for a sum of £15,000 for the disputed domain name. This is far in excess of any out of pocket or other expenses that could be realistically incurred. The Respondent has stated that his business is internet based so should be fully aware of that this is an unrealistic, indeed ludicrous amount.
The Respondent claims that the domain has great value to him as an ideal name for a games portal, however we see no intrinsic link between those intentions and the name "Pleasureland".
The Respondent claims that a replacement domain would come at considerable cost, yet there are unregistered domain names currently available that are far more suited to his purpose eg www.totalgamingzone.co.uk
Pleasureland has an extremely high profile on the internet, a Google.com search for "pleasureland" results in our www.pleasureland.uk.com site coming top, with 7 of the other 10 results also referring to Pleasureland Theme Park. Whilst we concede that it is possible that the Respondent may have been unaware of our existence as he has stated, there remains a realistic possibility that he could have known of our companies existence prior to his registering of the domain.
The Respondent is based in Australia, however his registration and intent to use a ".co.uk" domain name could mislead users into thinking his site was connected to us. It is logical to assume that the website www.pleasureland.co.uk is connected to a UK-based company of that name, of which we are the only one. By means of contrast, we have no interest in www.pleasureland.com.au as we would not wish to confuse visitors to our site into thinking we were based in Australia. As we understand it the ".co.uk" suffix exists to identify the web sites of UK based companies and individuals, the use of them by non UK based companies is both confusing and potentially misleading. However it should be noted that we do not in any way object to the ownership of ".co.uk" domain names by non-UK based individuals or companies (eg for legitimate re-sale), only their actual use and the subsequent confusion that can arise.
The Respondent claims to have waited 2 years for a name that has no connection with himself, his company or his business interests. We would argue that 2 years is an unrealistic amount of time to keep a money-making venture on hold when more suitable names will have been available in the interim. As we understand it there is no monetary value to "intentions" – as matters stand the Respondent has no history of trading under a similar name, and has not demonstrated any future plans that would be realistically disrupted by his losing the domain. We see no way in which the Respondent would be disadvantaged by the loss of the domain over and above the initial costs of registration. The statement regarding waiting 2 years for the perfect name has no bearing as regards the value of the domain.
The Respondent has stated his intentions to use the site as a games portal, however the current page simply states "Under Construction" at the top, whilst the majority of the page consists of an unlabelled search engine and a link to mydomain.com. At no point is the intention to open a gaming portal mentioned, after 2 years of planning the site one would expect to see perhaps some form of advert for the coming site, it would also not be unreasonable to expect the site to be "ready to go".
The current page could lead customers to believe that Pleasureland's website is not currently operational. This could in turn deprive customers of valuable information and ultimately cost the company.
The current site also opens an external advertising pop-up. Our own website currently has a pop up window that advertises our own special offers, however we do not make use of external adverts as our website is a source of information for our customers and not a source of income for ourselves. The use of such advertising pop-ups on the current page of disputed domain is potentially damaging to our reputation as our customers could feel they have been tricked into visiting the site if they mis-type the url In closing, whilst we were more than happy to negotiate with the Respondent his subsequent actions have led us to believe that he purchased the domain with the sole intent not only to sell it, but to sell it at an inflated price. The internet is a global medium, and as such we do not feel that the Respondent's location in Australia is itself sufficient reason for him not to have known of our company. We would like to see the domain transferred to us as it is the closest match to our trading name and also the url our customers would expect us to have. In asking for such an inflated amount we do not feel the Respondent has behaved in a reasonable manner, naturally we would be willing to reimburse the Respondent for his costs in initially purchasing the domain.
The Complainant confirms that the Domain Name in the hands of the Respondent is an Abusive Registration.
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
In this case the first limb of that task is straightforward. The Complainant is the proprietor of rights in the name Pleasureland through extensive use. The Domain name comprises the said names combined with the suffix <.co.uk>. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic.
Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark, which is identical to each 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. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion in the Complaint that the Respondent has given to Nominet false contact details, the only potentially 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. 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."
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 information provided by the Complainant is largely inconclusive and largely irrelevant to the issues set out in the DRS Policy. The Expert is also concerned by the apparent chain of events.
1. The Complainant uses the domain pleasureland.uk.com (a name which it registered in December 1998);
2. No attempt seems to have been made to obtain the Domain Name;
3. On 28 July 2004, the Respondent registered the Domain Name;
4. In August 2004 a complaint was made to Nominet under the DRS Policy;
5. On the Complainant's admission, that complaint was withdrawn on the basis that "while the domain name is substantially similar to our trading name, the Respondent's registration of the domain did not constitute an abusive registration under the DRS";
6. Immediately thereafter, the Complainant e-mailed the Respondent asking if it would sell the name and what it would charge;
7. The Respondent indicated that it would be prepared to negotiate a selling price and asked the Complainant to make its best offer;
8. The Complainant evaded this request saying that it was inexperienced in the domain sale market and asked the Respondent what figure it had in mind;
9. On 28 October 2004, the Respondent indicated that it thought £15,000 a fair price;
10. No further dialogue is evident;
11. On 24 November this Complaint was made relying on the £15,000 figure as evidence of satisfaction of paragraph 3 a I A of the Policy.
Although the Expert does not have access to the earlier (withdrawn) complaint, these facts seem to suggest that the Complainant, seeing its early complaint was going badly, withdrew that complaint, procured a selling price for the Domain Name from the Respondent and started again.
Given that the Complainant accepted in August/September that the registration of the Domain Name was not abusive, the Expert does not consider that negotiations to purchase such a name could of themselves give rise to such a finding.
Accordingly, the Expert finds that the Domain Name is not an Abusive Registration within the definition of that term in paragraph 1 of the Policy.
Pursuant to Paragraph 16 of the DRS Procedure, if the Expert concludes that the dispute is not within the scope of paragraph 2 of the Policy, he or she shall state that this is the case. If, after considering the submissions, the Expert finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, the Expert shall state this finding in the Decision.
In light of the foregoing findings, the Expert: -
a) dismisses the Complaint;
b) finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking.
05 February 2005
David Flint Date
