Stanworth Development Ltd v DC Tech Ltd (t/a Another.com) [2005] DRS 02524 (29 July 2005)

Stanworth Development Limited v DC Tech Ltd t/a Another.com

Nominet UK Dispute Resolution Service

DRS 02524

Stanworth Development Limited -v- D C Tech Ltd t/a Another.com 

Decision of Independent Expert

1	Parties:

Complainant:	Stanworth Development Limited
Address:	Burleigh Manor
Country:	IM

Respondent:	D C Tech Ltd t/a Another.com 
Country:	GB

2	Domain Name:

  	The domain names in dispute are aceshigh.co.uk and showdown.co.uk (“the Domain Names”).

3	Procedural Background:

3.1	The Complaint was received in full (including annexes) by Nominet on 12 April 2005. Nominet validated the Complaint and sent a copy to the Respondent on 15 April 2005, informing the Respondent that it had until 10 May 2005 to lodge a Response.  

3.2	A Response was received on 10 May 2005 and forwarded to the Complainant on the same day with an invitation to the Complainant to lodge any Reply by 19 May 2005.  A Reply was received on 19 May 2005 and forwarded to the Respondent the following day.

3.3	The dispute proceeded to Informal Mediation, which started on 25 May 2005 and ended on 9 June 2005 without an agreement having been reached.  On 11 July 2005 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the Nominet UK Dispute Resolution Service (“DRS”) Policy (“the Policy”).

3.4	On 18 July 2005 Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet duly appointed me as Expert. 

4	Additional Formal/Procedural Issues:

4.1	On 15 July 2005, Nominet received from the Respondent a non-standard submission supplementing its earlier Response. Pursuant to paragraph 13(b) of the DRS Procedure (“the Procedure”), the Respondent gave an explanation of why there was an exceptional need for the non-standard submission. In summary, this was that the legal department at Nominet had “advised” that the Respondent did not have to respond to the Complainant, but could let the process “work through”; and that the Respondent had assumed that it would be able to make further submissions direct to the Expert and that the Expert would him/herself conduct investigations into the Respondent’s business via the internet. 

4.2	Whilst all Respondents are in essentially the same position with regard to their ability to check out the DRS Procedure, and should be aware from its detail that their case should be made out in the Response, it is not entirely surprising where a Respondent does not have legal representation that misunderstandings arise; and the need for a non-standard submission from the Respondent does seem to have arisen from a genuine misunderstanding in this case. Further, the Complainant was given the opportunity to respond, if it wished, to the Respondent’s additional points (by 20 July 2005), though it did not do so.

4.3	In the exercise of my discretion under paragraph 13(b) of the Procedure, I therefore agreed to review the Respondent’s non-standard submission. Having seen it, I do take it into account in issuing my decision. The outcome of my decision would have been the same without it, but it has assisted in adding some detail to the case.

4.4	Another matter that I should deal with here relates to the evidence submitted by the Complainant in relation to its trade mark registrations. The Complaint contains a general assertion that the Complainant has secured certain rights via “registered or pending trade marks”, and then annexes a detailed schedule of marks in the Evidence Bundle. It then adds that “the Complainant can, upon request, provide any further documentation or evidence that may be required in support of its registered and/or pending trade mark rights”. 

4.5	At first glance, the Complainant had done all that it needed to do: it had prepared a schedule of trade marks, with their numbers and filing dates, and attached a number of filing and registration documents. However, on closer review, I realised that, despite the reference to “registrations”, there only appeared to be evidence of one actual registration as opposed to applications. I did not wish to waste further time by reverting to the Complainant, since by this time it had already been given the opportunity to respond to the non-standard submission from the other side. However, in the light of the rest of the Complainant’s evidence, I was surprised that it had only one registered trade mark.

4.6	To satisfy myself that I would not be proceeding on a false basis, I looked up some of the listed trade marks on the UK Trade Mark Registry and Community Trade Mark Office websites, and discovered that some were registered. I had neither the time nor the inclination to do the same for all of the marks, and I have decided that I do not need to find out any more than I have already done. However, it should be clear from this exercise that it is incumbent on a Complainant who wishes to rely on the existence of registered trade mark rights that he presents evidence of their registration and not just of their filing. Many people file trade mark applications in respect of descriptive or generic trade marks which will never achieve registration. That does not prove any “right” in respect of the trade marks.

5	The Facts:

5.1	The Complainant is a company called Stanworth Development Limited. Although based in the Isle of Man, its business (so far as it is relevant to this Complaint) is conducted on the internet, through a licensee named DemmySportsbet Limited (“Licensee”). This business comprises various online casino and gaming services, conducted through gaming sites that are located at www.aceshigh.com and www.showdown.com, which are said to have been launched in September 2001 (“the Gaming Sites”). 

5.2	The Respondent is named in both the Complaint and the Response as DC Tech t/a Another.com. The registrant of the Domain Names is in fact shown in Nominet’s WHOIS printouts as DC Tech Ltd. However, nothing turns on this, and there is no dispute about the fact that this company trades under the name of ‘Another.com’. According to the company search printout supplied in the Expert’s file from Nominet, DC Tech Ltd (company no. 4063204) was incorporated on 31 August 2000. Prior to its incorporation, a different, but apparently related, company (no. 3661600) was called DC Tech Ltd. This company, which was incorporated on 4 November 1998, is now called Another.com Ltd.

5.3	The Respondent’s business (so far as it is relevant to this Complaint) is that of operating an e-mail service whereby subscribers are able to use e-mail addresses based on a range of descriptive or generic words or phrases, which themselves have each been registered by the Respondent as part of a domain name.

5.4	The Respondent appears to have registered aceshigh.co.uk on 7 October 1998, and showdown.co.uk on 3 November 1998. Whilst the Complainant has asserted that the Respondent must have acquired the Domain Names at a later date, it does not suggest a particular alternative date or support this assertion with evidence, and the WHOIS printouts give no hint of an earlier registrant. I therefore proceed on the basis that these dates are correct.

5.5	The aceshigh.co.uk domain name resolves to a web page at http://sedoparking.com/aceshigh.co.uk. This advertises the ability to have yourmail@aceshigh.co.uk, for which the visitor is directed to a link to http://another.com. There is an advertisement for ‘Another.com’, listing its services as: professional e-mail services; professional websites; and web hosting solutions. The page also lists various sponsored links to websites. At the time of writing this decision, these links all have some connection with flying; a different selection appeared at the time that the Complaint was made, when some of the links had some connection with flight simulation software and the like. 

5.6	The showdown.co.uk domain name resolves to a web page at http://sedoparking.com/showdown.co.uk, in similar format to that described above. Again, it directs the visitor to http://another.com if he/she wishes to have yourmail@showdown.co.uk, and it advertises the services of Another.com, as well as listing a number of links to other websites. According to the printouts in the Evidence Bundle attached to the Complaint, these related primarily to the making of money by various means; at the time of writing this decision, most of the links relate to wrestling.

6	The Parties’ Contentions:

Complainant

6.1	The Complainant claims to have rights in respect of various trade marks which are identical or similar to the Domain Names, based on the following:

6.1.1	The Gaming Sites have, since their launch in September 2001, become two of the most highly recognised online gaming brands currently available. They collectively receive about 200,000 visitors and facilitate over 12,500 software downloads each month, and many thousands of registered players regularly make use of them. Over US$35,000 per month is spent on advertising, marketing and other promotional activities in relation to the Gaming Sites.

6.1.2	The Complainant has secured trade mark rights in relation to the www.aceshigh.com and www.showdown.com Gaming Sites by registering and filing relevant trade mark applications in Australia, the USA, Canada and the EU (as Community Trade Marks). A detailed schedule of marks and attached copies of filing receipts and registration documentation are included in the Evidence Bundle, and are analysed under the ‘Discussion and Findings’ section below.

6.1.3	The Complainant also has a collection of domain name registrations, incorporating the words ACESHIGH or SHOWDOWN. These include the two domain names used for the Gaming Sites, and a range of others including aceshighonlinecasino.com, aceshi.com, aceshigh.info, showdowncasino.com, showdowncasino.tv, showdowncasino.biz, and many other variants.

6.1.4	The Complainant and its Licensee police and enforce its trade mark rights, by identifying unauthorised use of ACESHIGH and SHOWDOWN in domain names and negotiating or instituting legal measures to get them back.

6.2	The Complainant claims that the Domain Names are Abusive Registrations (as defined in the Policy) and asks for them to be transferred to the Complainant, for the following reasons:

6.2.1	The Complainant contends that the Respondent has not at any time since registering or acquiring the Domain Names used them in connection with the genuine (bona fide) offering of goods or services, but that they have merely been ‘parked’ using a domain parking facility made available by Sedo at sedo.co.uk.

6.2.2	Combining the fact that the domain names are identical or virtually identical to the Complainant’s trade marks, and are specifically referable to the Complainant and are distinctive, with the lack of obvious justification for the Respondent having adopted the Domain Names, the Complainant invites the inference that the Respondent registered the Domain Names for a purpose and that that purpose must have been abusive.

6.2.3	The Complainant points out that the sponsored links on the relevant pages of the Sedo website have no apparent relevance or connection to either of the Domain Names.

6.2.4	Having investigated the Sedo website, the Complainant concludes that the parking of the Domain Names on this website is a veiled attempt to sell them for the highest offer. Screenshots in the Evidence Bundle show the statements “aceshigh.co.uk is for sale” and “showdown.co.uk is for sale” on the ‘Buy Domains’ section of the Sedo website. From this and from the statement on the Sedo website which states (in relation to domain names for sale on the website generally), “you are probably going to need a four-figure offer just to get the seller’s attention”, the Complainant concludes that the Respondent’s motivation in offering the Domain Name for sale is to cover more than out-of-pocket costs. 

6.2.5	The Complainant also concludes from its investigations that the likely purchasers of the Domain Names are extremely limited, and will in all likelihood only be the Complainant or one of its competitors.

6.2.6	The Complainant asserts that there is no evidence that the Respondent has been commonly known by the Domain Names, or that it has acquired any trade mark rights in and to them, and therefore that the Respondent has no legitimate claim or rights to the disputed domain names.

6.2.7	The Complainant alleges that the parking of the Domain Names is diverting traffic which should otherwise go to the Gaming Sites and thereby denying the Complainant the benefit of itself being able to employ the Domain Names for the furtherance of its Gaming Sites and to attract trade without undue interference.

6.2.8	Finally, the Complainant contends that the Respondent’s continued registration and use of the Domain Names confuses people into believing that the Respondent’s actions have been authorised by, or are connected to, the Gaming Sites. Prospective clients would assume that they could access the Gaming Sites via the Domain Names. In particular, the Complainant relies on the fact that the Domain Names (by which the Complainant presumably means the webpage identified via the Domain Names) receive about 190 visitors per month, and asserts that such visits are due to the Complainant’s reputation and goodwill in its trade marks and are therefore an indication of actual confusion.

6.3	The Complainant concludes from the above that the Respondent’s securing of the Domain Names, each incorporating a trade mark of the Complainant, was not coincidental but was calculated to take unfair advantage of the Complainant’s rights. Based on the facts and arguments that it puts forward, the Complainant contends that the Respondent must have acquired the Domain Names later than the dates that are apparent from the WHOIS searches.

6.4	The Complainant states that all attempts to contact the Respondent have been unsuccessful, and adds that it is possible that the contact information associated with the Domain Names may be inaccurate, false or misleading, which would itself be an indication of an Abusive Registration.

6.5	The Reply submitted by the Complainant following the Respondent’s Response (summarised below) reiterates some of the points above and highlights inadequacies in the Respondent’s submissions, but does not add any new facts or matters, so I do not set out any further summary, though I do take the points made into account.

Respondent

6.6	The Respondent makes the following points in its main Response:

6.6.1	The Respondent operates an e-mail service which is based on offering its subscribers generic words/phrase based e-mail addresses, and has done so since its inception. The service continues to be developed. The Respondent contends that the e-mail address service based on generic words or phases has been the primary use of the Domain Names since they were registered. It contends that the terms “aceshigh” and “showdown” are generic terms.

6.6.2	In order to take advantage of income available from Google adwords the Respondent asserts that it utilises services by sedo.co.uk. Sedo has created pages for the Respondent which invite people to take an e-mail address with Another.com, which indicate the services offered by Another.com, and which also carry adwords. 

6.6.3	The Respondent states that anyone can submit an offer for a domain within Sedo and that it regularly receives offers for domains far in excess of their standalone value, but that it generally turns these down, because the domains are necessary for the e-mail service offered by the Respondent. However, they might be accepted it the offers were sufficiently high. The Respondent gives the analogy of someone being offered £5 million for a house which is not for sale, but which is worth only a few hundred thousand pounds. At that point, it might consider selling; but the Respondent does not anticipate receiving that type of offer.

6.6.4	In support of its assertion that the business is being further developed, the Respondent has produced a printout from its next phase release.  These demonstrate the use of adwords to reflect the association of the relevant domains. For instance, the aceshigh.co.uk printout shows sites of relevance to people interested in reaching the flying audience, while the showdown.co.uk printout shows sites for people primarily interested in online “fun” (not gambling) games. The Respondent claims to generate some £25k income from this activity.

6.6.5	The Respondent states that it is a small business by the Complainant’s standards, but that it employs six staff, and provides an e-mail service to some 8000 people. Its sales for April 2005 were some £30k.

6.6.6	The Respondent contends that the Domain Names were registered before the Complainant existed, and points out that it would have to be closed down if someone can “just walk in and help themselves to our domains because they have chosen to build a business around a generic term or word”.

6.6.7	The Respondent states that it has not been unfairly detrimental to the Complainant’s rights because it does not have any rights in the names ACESHIGH or SHOWDOWN in the UK. In fact, it alleges (without giving details) that the ACESHIGH trade mark is registered in the UK by another UK concern, as it is elsewhere, and that the Complainant is therefore itself trying to secure registration of a trade mark that belongs to a rival. It adds that it is ridiculous to suggest that 150 visits to aceshigh.co.uk comes from the Complainant’s marketing efforts, and contends that other domain names owned by them attract more traffic without being marketed.

6.6.8	The Respondent states that it has made no attempt to use the Domain Names for marketing gambling services and has no plans to do so, and asserts that it has been making fair use of the domains for “six years plus”.

6.7	In relation to the Complainant’s assertion that its attempts to contact the Respondent had been unsuccessful, the Respondent says that the Complainant’s server must have failed or someone in their office must have made a mistake and thought they had sent an e-mail when they had not, since it does not believe that the Complainant sent anything to it. The Respondent suggests that this point should be ignored unless the Complainant can prove that the Respondent did not respond to e-mails. 

6.8	From the Respondent’s subsequent non-standard submission, I can summarise the following additional points that it makes:

6.8.1	The Respondent has been in business since November 1998 and now owns over 10,000 domain names that are offered as e-mail addresses for paying customers, using terms and conditions that are standard trading terms for the industry. A copy of these terms and conditions is provided.

6.8.2	There are many other companies who operate the same type of business as the Respondent’s. 

6.8.3	Inputting the words “aceshigh” or “showdown” into an internet search engine brings up an array of sites, some of which relate to gaming and some of which do not. These are not exclusive to the Complainant.

6.8.4	By reference to a printout from the Sedo website, the Respondent shows that the number of views of the web pages for the Domain Names fall below that for other names. The printout seems to relate to the month of July, up until the date of the printout (which is undated), and shows 62 clicks for aceshigh.co.uk and 13 clicks for showdown.co.uk.

6.8.5	To follow up on its claim that third parties own the ACESHIGH trade mark in the UK, the Respondent has produced a UK Trade Mark Registry printout showing that the mark ACES HIGH is registered by the National Lottery Commission for goods and services including tickets, game cards, games and lottery services (reg. no. 2027142); and that SHOWDOWN is registered by Bayer Agriculture Limited in respect of insecticides, fungicides and the like.

6.8.6	The Respondent also claims that there are active trading companies incorporated under relevant names, including: Showdown Limited (co. no. 5084790), Aces High Limited (co. no. 1462251), Aces High Aviation Limited (co. no. 3971636), Aces High Entertainment Ltd (co.no. 5410234) and others.

6.8.7	Finally, the Respondent argues that Sedo is a member of Nominet and is therefore assumed to be adhering to its regulations in advertising the possible purchase of the Domain Names on its website.

7	Discussion and Findings:

General

7.1	Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
(i)	it 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 (as defined in paragraph 1 of the Policy).

Complainant's Rights

7.2	Under paragraph 1 of the Policy (“Definitions”), “Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”. Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off and similar rights.

7.3	As I explained in section 4, I have had to make some checks to determine the status of the Complainant’s trade marks. The upshot of this is that I can be confident that the Complainant has at least the following registrations, all in relation to entertainment services comprising casino-style gaming services or the like:

Trade mark	Country/Territory	Registration no.	Filing date	
ACES HIGH ONLINE CASINO Logo, in colour	European Union	3174455	16/4/03	
SHOW DOWN ONLINE CASINO	Australia	987647	4/2/04	
SHOWDOWN ONLINE CASINO	European Union	3132032	14/4/03	
SHOW DOWN CASINO Logo, in colour	European Union	2276406	27/7/01	

7.4	I have also gleaned that the following trade marks have been accepted by the relevant trade mark office as being registrable, since they have gone forward to publication and/or payment of the registration fee, though they may in some cases still be subject to opposition by third parties:
 
Trade mark	Country/Territory	Registration no.	Filing date	
ACES HIGH 	European Union	3952751	27/7/04	
ACES HIGH ONLINE CASINO	European Union	3645272	3/2/04	
SHOWDOWN ONLINE CASINO logo	European Union	3937075	16/7/04	

7.5	Since the ACES HIGH CTM (no. 3952751) is only an application, I cannot rely on that alone to conclude that the Complainant has Rights in a mark which is identical to the domain name aceshigh.co.uk. However, I do conclude that the registered trade marks are sufficient to demonstrate Rights in names similar to both Domain Names, since in my view the words ACES HIGH and SHOWDOWN are the dominant features of the marks in the first table above.

7.6	Further, the Complainant has satisfied me that its use of the names ACESHIGH and SHOWDOWN in relation to the business conducted through the Gaming Sites is sufficient to have given rise to a reputation and goodwill such that it has acquired Rights in names identical to each of the Domain Names (ignoring both the .com and .co.uk suffixes, which it is appropriate to do).

7.7	Although the names ACESHIGH and SHOWDOWN are both somewhat descriptive, I do not believe that either of them can be said to be wholly descriptive of the Complainant’s business. They therefore do not fall within the exception in the definition of “Rights”.

7.8	It is worth mentioning at this point that I do not believe that the Complainant is the only entity which has Rights in the names ACESHIGH and SHOWDOWN. Others clearly conduct business by reference to these names, and indeed the Respondent has provided examples of two companies which have registered UK trade mark rights in relation to the names, albeit in relation to different goods and services from those dealt in by the Complainant. They too may have relevant Rights.

Abusive Registration

7.6	Paragraph 1 of the Policy defines an “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.”

7.7	I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.

7.1	Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are brought into play by the Complainant are as follows:

 	“3(a)(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) 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)…

(iv)  It is independently verified that the Respondent has given false contact details to us [i.e. Nominet]”.

7.8	Having reviewed both sides’ submissions and supporting documents, I do not find support for any of these contentions. The closest the Complainant gets is in relation to the first contention that the Respondent has registered the Domain Names in order to sell them, given the ability of visitors to the Sedo website to make offers to purchase any of the domains names hosted there. However, it is clear that the possibility of third parties acquiring the Domain Names is incidental to the Respondent’s main business of offering an e-mail service based on domain names comprising descriptive or generic names. Further, this business has been conducted in respect of the Domain Names (among thousands of others) for more than 6 years, and in any event since before the Complainant acquired any Rights in the names ACESHIGH or SHOWDOWN.

7.9	The very fact that the Respondent has held onto the Domain Names and included it in its e-mail service for all this time is adverse to the allegation that its primary purpose was to sell it. Although the Complainant would like to establish that the Respondent in fact only acquired the Domain Name much more recently, I can find no evidence to support that theory.

7.10	The evidence goes nowhere near supporting the suggestion that the Domain Names were primarily registered as blocking registrations or so as to unfairly disrupt the Complainant’s business. Further, the fact that the webpages reached via the Domain Names do receive some visits does not, without more, support the existence of confusion. The low click rate compared to other domain names hosted on the Sedo website certainly does not indicate any particular interest from internet users.

7.11	As far as the Respondent’s contact details are concerned, it appears from the file as though Nominet used the details in the WHOIS database to contact the Respondent. I therefore do not rely on the Complainant’s assertion that it was unable to make contact, and reject the assertion that false contact details had been given.

7.12	In reaching my decision, I also need to bear in mind the guidance given in paragraph 4 of the Policy, as to how the Respondent may demonstrate that the Domain Name is not an Abusive Registration, of which the following may be relevant in this case:

“4(a)(i)(A) Before being aware of the Complainant’s cause for complaint…, the Respondent has used or made demonstrable preparations to use the Domain Name…in connection with a genuine offering of goods or services;

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

7.13	The first of these factors clearly applies to the Respondent in this case. Not only had it made preparations to use the Domain Names in relation to its e-mail service, but it had been making that genuine offering of services even before the Complainant started its own business.

7.14	As far as the second point is concerned, the terms ACESHIGH and SHOWDOWN are to some extent descriptive, which is presumably why they were among the terms chosen by the Respondent for its e-mail service. This is not inconsistent with the notion that the Complainant may have established distinctiveness of these terms in relation to the gaming services that it offers. However, any such distinctiveness alone is insufficient to avoid the conclusion in this case that the Respondent is making fair use of the Domain Names.

8	Decision:

I find that the Complainant has Rights in respect of names which are identical to each of the Domain Names, and in respect of other names which are similar to each of the Domain Names. However, I also find that the Domain Names are not Abusive Registrations in the hands of the Respondent. Therefore the Complaint fails and the request for the Domain Names to be transferred is refused.

Anna Carboni

Date: 29 July 2005