Nominet UK Dispute Resolution Service

DRS :  02376

Equanet Limited –v- Craig Welch

Decision of Independent Expert

1.	Parties

Complainant:		Equanet Limited
Country:		GB

Respondent:		Craig Welch
Country:		GB

2.	Disputed Domain Name

The domain name in dispute is < equanet.co.uk >.

3.	Procedural Background

On 11 February 2005 the Complaint was lodged with Nominet UK accordance with the Dispute Resolution Service Policy (hereinafter the “DRS Policy”) and hard copies of the Complaint were received in full on the same date.

On 16 February 2005 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the DRS Procedure”) had been invoked and allowed the Respondent 15 working days (i.e. until 10 March 2005) within which to respond to the Complaint.

On 14 March 2005 no Response had been received from the Respondent by Nominet UK and the Complainant was advised accordingly.  

On 24 March 2005 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.

On 24 March 2005 James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure 

4.	The Facts

The Complainant is a registered company incorporated in the United Kingdom on 20 February 1989. It was originally named Central Computer Supplies Limited but on 16 March 1989 it changed its name to Equanet Limited soon after incorporation.

The Complainant is the owner of the eponymous UK registered service mark EQUANET registered as of 17 February 2000 under No 222808 in respect of the following services in Class 35: “ Advertising; marketing and promotion services; business information services; all provided from a computer database or the Internet; product information services provided from a computer database or other type of communication network including the Internet; provision of commercial information, provision of data and statistical information, and dissemination and retrieval services; on-line data processing services; compilation, storage, analysis and retrieval of information and data; compilation of advertisements; compilation of advertisements for use as web pages on the Internet.”

The Complainant also trades under the name 'EQUANET.com' 

No Response has been filed. According to the Complaint and the company searches received by this Expert in the file, the Respondent is a director of Caer Computer Distribution Limited, a UK registered company incorporated on 15 February 2001. 

Said domain name < equanet.co.uk >  that is the subject of this dispute was registered by the Respondent on 6 February 2004.

5.	The Parties’ Contentions

Complainants’s Submissions

The Complainant submits that the said domain name < equanet.co.uk > is identical to or similar to a mark in which the Complainant has rights and that said domain name in the hands of the Respondent is an Abusive Registration.

In support of these submissions, the Complainant states that it is a reseller and distributor of computer hardware based in Surbiton, Surrey with an annual turnover in excess of £75 million. It is regrettable that the Complainant has chosen not to furnish any evidence to support this assertion.

The Complainant claims to have traded under the name EQUANET for 15 years solely in the UK marketplace. The Complainant is the owner of the above referenced registration for the EQUANET service mark. The Complainant further claims to trade under the similar name EQUANET.com.

According to the Complaint, the Respondent is the principal of said Caer Computer Distribution Limited. The Complainant alleges that said Caer Computer Distribution Limited is also a reseller and distributor of computer hardware. It is based 10 miles from the Complainant and trades under the name of CCD Ltd. It has registered the Internet domain name <ccd.co.uk> and maintains a web site at that address. 

The Complainant claims to have been alerted to the Respondent’s use of the <equanet.co.uk> address in the month of July 2004 when certain customers of the Complainant, typed said <equanet.co.uk> address into their browsers and were redirected to a web site established by said Caer Computer Distribution Limited at said <ccd.co.uk> address. 

According to the Complaint said Caer Computer Distribution Limited was at that time advertising under the brand name “EQUANET” on the web site maintained at its said <ccd.co.uk> address. 

The Complainant further alleges that the Respondent published what it describes as “a misleading copyright notice to the effect that the copyright on its web site belonged to  “equanet.co.uk”.

In support of this assertion the Complainant has submitted a document that purports to be a print out of the page from the site maintained at the Internet address http://www.ccd.uk.com/equanet.htm that contains the following words: “Equanet”, “coming soon”, “new web solutions”, “for free support email us to info@equan” (sic) and “copyright © 2003-2004 Equanet.co.uk”.

The Complaint states that these activities have ceased, but the re-direct to a web site maintained by Caer Computer Distribution Limited remains. 

The Complainant submits that the Respondent clearly has no connection with the Complainant and has no rights to use the Complainant’s name or the domain name that is the subject of this reference as a web address. The Complainant submits that the domain name has been registered purely to re-direct Complainant customers to the Respondent’s site in an attempt to gain financially.

Respondent’s Submissions

No Response has been filed, however, on the 12 April 2005 this Expert received an unsolicited letter sent directly by the Respondent in his capacity as managing director of Caer Computer Distribution Limited.

This Expert considered said letter only so as to ascertain if there was any reason as to why the time should be extended to deliver a Response or to exercise his discretion to request further statements or documents from the Parties pursuant to Paragraph 13.a of the DRS Procedure. This is addressed further below.

6.	Discussion and Findings:

 Preliminary Matters re procedure and admissibility of evidence and submissions

Prior to considering the substantive issues in this case, it necessary to address the admissibility of certain documents that have been supplied in the file and the said letter received by the Expert directly from the Respondent. It is also necessary to consider whether further information should be sought from the Parties or it would be appropriate to direct that the time for the Respondent to deliver a Response be extended in accordance with the DRS Procedure. 

Paragraphs 10, 12 and 13 of the DRS Procedure are relevant.

Paragraph10 of the DRS Procedure deals with communications between the Parties and the Expert and provides as follows: “A Party and the Expert must not communicate directly. All communications between a Party and the Expert must be made through [Nominet UK]”.

Paragraph 12 of the DRS Procedure deals with the General Powers of Nominet UK and the Expert inter alia as follows:

“ a	[Nominet UK], or the Expert if appointed, may in exceptional cases extend any period of time in proceedings under the Dispute Resolution Service.

b.	The Expert shall determine the admissibility, relevance, materiality and weight of evidence.”

Paragraph 13 of the DRS Procedure states:

“a	In addition to the complaint, the response and if applicable the reply and any appeal, the Expert may request further statements of documents from the Parties. The Expert will not be obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or this Procedure or which he or she has not requested.

B	Any communication with [Nominet UK] intended to be passed to the Expert which is not part of the standard process(e.g. other than a complaint, response, reply, submissions requested by the Expert, appeal notice or appeal notice response) is a “non standard submission”. Any non-standard submission must contain as a separate, first paragraph, a brief explanation of why there is an exceptional need for the non-standard submission. [Nominet UK] will pass this explanation to the Expert, and the remainder will only be passed to the Expert at his or her sole discretion. If there is no explanation, [Nominet UK] may not pass on the documentation or information.”

The file supplied to the Expert in this reference included documentation described as “non-standard correspondence between Nominet UK and the parties”. Said correspondence consisted of three documents:

-	an e-mail dated 21 March 2005 from Nominet UK to the Complainant stating inter alia that the Respondent had been advised that he was not permitted to file a response as the deadline had passed;

-	a letter from the Complainant dated 18 March 2005 to Nominet UK enclosing a copy of an e-mail purportedly sent by the Respondent to the Complainant on 11 March 2005.

This correspondence disclosed no exceptional need for a non-standard submission. Nor did it disclose any reason as to why the time for filing a Response should be extended in accordance with the powers conferred on the Expert by said Paragraph 12.a.and neither did it disclose any reason for the Expert to seek further statements in accordance with Paragraph 13 of the DRS Procedure.

In accordance with the discretion granted by Paragraph 13.a of the DRS Procedure this Expert declines to consider any of the other matters mentioned in this exchange of correspondence as they were not submitted by the Parties in accordance with the DRS Policy or the DRS Procedure.

Despite the clear rule in Paragraph 10 of the DRS Procedure that a party and an expert must not communicate directly, and that all communications between a party and an expert must be made through Nominet UK, on the 12 April 2005 this Expert received an unsolicited letter sent directly by the Respondent. 

In general it would be inappropriate to consider anything contained in such a letter and this Expert was inclined to decline so to do.  However in the present case as no Response had been delivered, this Expert has considered the content of the letter merely to ascertain if the letter disclosed any exceptional need for a non-standard submission or any reason as to why the time for filing a Response should be extended in accordance with the powers conferred on the Expert by said Paragraph 12.a.or any reason for the Expert to seek further statements in accordance with Paragraph 13.

No such need or reason was indicated and so in accordance with the discretion granted by Paragraph 13.a of the DRS Procedure this Expert declines to consider any of the other matters mentioned in this unsolicited letter as it was not submitted by the Respondent in accordance with the DRS Policy or the DRS Procedure.

Substantive Matters

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. 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.

Complainant’s Rights

The Complainant has established that it is the registered owner of and has rights in United Kingdom registered service mark EQUANET registered  as 17 February 2000 under No 222808 in respect of services in Class 35.

As the domain name in dispute is identical to the Complainant’s said registered trademark, it follows that the Complainant has therefore established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration

As to whether the domain name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS 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.”

The Complainant was incorporated on 20 February 1989 and almost immediately on 16 March 1989 changed its name to Equanet Limited. It claims to have a substantial turnover and reputation and to have used the service mark EQUANET continuously for a period of approximately 15 years since 1989.

While the Complainant has asserted such use and reputation, it has not provided any evidence whatsoever of the nature of its use or the extent of its business or any goodwill. It has relied upon a mere unsubstantiated assertion. In the absence of any such evidence it would be inappropriate for this Expert to give much weight to its claims to such goodwill.

The Complainant registered its eponymous UK registered service mark EQUANET on 17 February 2000. 

It is notable that the service mark was registered under No 222808 in respect of the following services in Class 35: “ Advertising; marketing and promotion services; business information services; all provided from a computer database or the Internet; product information services provided from a compuer database or othe type of communication network including the Internet; provision of commercial information, provision of data and statistical information, and dissemination and retrieval services; on-line data processing services; compilation, storage, analysis and retrieval of information and data; compilation of advertisements; compilation of advertisements for use as web pages on the Internet.”

It is surprising that this registration relates to advertising and data services while the Complainant claims to have a substantial business as a reseller and distributor of computer hardware. In this regard it is noteworthy that it is an important element of the Complainant’s case that the Respondent is also a reseller and distributor of computer hardware and thereby a competitor of the Complainant. This is all the more surprising given that the service mark was registered quite recently on as of 17 February 2000.

On the other hand there is no evidence that the Registrant has any goodwill in any business himself. 

The Respondent is the managing director of Caer Computer Distribution Limited. That company was not incorporated until 15 February 2001 approximately 11 years after the claimed first use and registration of the EQUANET trademark by the Complainant. 

Furthermore the domain name <equanet.co.uk > in issue in this reference was not registered by the Respondent until 6 February 2004.

There is no evidence that the Respondent or his company ever had any entitlement to use the word EQUANET, as a trading name, a company name, a trademark or a service mark. Neither is there any evidence that the Respondent or his company has ever used the Complainant’s trade mark EQUANET except in the posting on said web site as set out in the Complaint and described above.

The geographical proximity of the Respondent and the Complainant, indicates that the Respondent was probably aware of the Complainant and the Complainant’s reputation and goodwill when the domain name was registered. 

The Complainant has submitted that Internet users who have sought to access a web site at <equanet.co.uk > in the belief that they would access a web site maintained by the Complainant have been re-directed to a web site maintained by said Caer Computer Distribution Limited. There is some lack of clarity in the Complaint as to whether the re-direction was to a web site at the <ccd.co.uk>  or the <ccd.uk.com> address. 

In the circumstances, on the  balance of probabilities, this Expert must conclude that at the time that the Respondent registered said <equanet.co.uk > domain name:

i.	the Respondent had no rights whatsoever to the use of the EQUANET trademark or business name;
ii.	that he was probably aware of the Complainant’s business and 
iii.	he intended to use the domain address so that Internet users expecting to find a web site established by the Complainant would be re-directed to the site of Caer Computer Distribution Limited.

It follows that the registration took unfair advantage of and was unfairly detrimental to the Complainant’s rights in its registered trademark. 

Furthermore it would appear on the balance of probabilities that by re-directing Internet users to the web site of said Caer Computer Distribution Limited, said domain name has been used in a manner which took unfair advantage of and was unfairly detrimental to the Complainant’s rights. In this regard the confusion caused by the posting  of the words: “Equanet”, “coming soon”, “new web solutions”, “for free support email us to info@equan” (sic) and  “copyright © 2003-2004 Equanet.co.uk” on the page maintained at the http://www.ccd.uk.com/equanet.htm Internet address indicates such unfair use.

This Expert therefore finds that the Complainant has established that the registration of said <equanet.co.uk > domain name is an Abusive Registration in the hands of the Respondent.

The Complainant has therefore satisfied both elements of the test set out in the DRS Policy and is entitled to succeed in its application.

7.    Decision

This Expert therefore directs that the domain name < equanet.co.uk > shall be transferred to the Complainant.

______________________                                                 ______________________
         James Bridgeman                                                       Date:  18 April 2005