Yorkshire Deanery -v- Papete.com [2005] DRS 02725 (22 August 2005)

Nominet UK Dispute Resolution Service

Dispute no. 2725

The Yorkshire Deanery -v- Papete.com

Decision of Independent Expert

1	Parties

Complainant:		The Yorkshire Deanery
Country:			GB

Respondent:		Papete.com 
Country:			PA

2	Domain Name

<yorkshiredeanery.co.uk> (the “Domain Name”)

3	Procedural Background

3.1	The Complaint entered Nominet’s system on 10 June 2005. Hardcopies of the Complaint were received by Nominet on 13 June 2005. The Complaint was validated and sent to the Respondent on 16 June 2005. An email in response was received on 30 June 2005, within the deadline for response on 8 July 2005. The response was forwarded to the Complainant on 30 June 2005. The Complainant replied by email and hard copy on 6 July 2005. Mediation documents were generated on 19 July 2005. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me on 12 August 2005. On that date, I confirmed that I was not aware of any reason why I could not act as an Independent Expert in this case and I was appointed as such on 15 August 2005.

4	Outstanding Formal/Procedural Issues

4.1	The Respondent replied by email to the Complainant’s Complaint on 30 June 2005. However, this email did not comply with the formal requirements set out in paragraph 5 of the Procedure and in particular did not incorporate the statement required by sub-paragraph (v) of the Procedure. Further paragraph 15(c) of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."  I consider the consequences of the Respondent’s failure to comply with the formal requirements of paragraph 5 later in this decision.

5	The Facts

5.1	The exact legal status of the Complainant is not entirely clear but it is an organisation which operates under the name ‘The Yorkshire Deanery’ and which provides educational and human resources support to clinical and dental personnel in the Yorkshire region, either as part of or in association with the University of Leeds and/or the Hull York Medical School.
5.2	The exact nature of the Respondent is unclear. The registrant details provided by the Respondent discloses an address in Panama.
5.3	The Domain Name was registered 11 February 2005 in the name of the Respondent (by whom it continues to be held).
5.4	The Complainant maintains that it became aware of the Respondent’s use of the Domain Name as an address for a website (the “Website”) on 29 March 2005. In a subsequent email (the exact date of which is unclear) the Complainant contacted the Respondent asking how much the Respondent would require to transfer the Domain Name to the Complainant.
5.5 	In an email of 2 May 2005 the Respondent responded that “The domain was purchased for business use as opposed to resale. I may consider selling if I receive a reasonable offer”.
5.6	On 5 May 2005 the Complainant responded that it only intended to “cover” the Respondent’s initial outlay to Nominet and if no agreement could be reached, the Complainant would pursue a DRS complaint through Nominet.
5.7	The Respondent responded on 10 May 2005 as follows:
“We bought this domain name in good faith for business use not having your client in mind (but the generic combination of Yorkshire & Deanery). We bought the domain name in purpose [sic] to use, and not to sell it. Nevertheless, after reading your letter we are ready to consider giving up the domain name. But we are expecting at least to be compensated for the time and money (and time is money) we have invested with regard to the domain (including inter alia, research, developing, emails etc.)
550 pound will cover it”.
5.8 	At no point in this correspondence did the individual corresponding on behalf of the Respondent identify himself. All emails ended “papete.com” and were sent from the email address director@papete.com.

6	The Parties’ Contentions

Complainant
6.1	The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is identical or similar to a name or mark in which it has rights and the registration of the Domain Name in the name of the Respondent is an Abusive Registration.
6.2	The Complainant asserts that:
(i) 	it has been known and referred to as the Yorkshire Deanery with those it has had contact with since the early 1990’s; 
(ii) 	it provides educational support (and HR support) to clinical and dental personnel in the Yorkshire region;
(iii) 	it is an organisation endorsed by the NHS Executive; and 
(iv) 	its role is described in a recent independent report (a copy of which is provided). 
6.3	The Complainant then refers to the correspondence between the parties during May 2005, which resulted in the Respondent requesting £550 to transfer the Domain Name to the Complainant. 
6.4 	The Complainant also asserts that when the Website was initially investigated by the Complainant it included a prominent link on the home page stating “To make an offer for this domain name CLICK HERE”. According to the Complainant this link took users to a web based form to contact the Respondent.
6.5	Further, the Complainant alleges that the Website is being used by the Respondent in a way that has confused people into thinking the Complainant controls the Website. Specifically the Website displays images of clinicians and provides links to providers of clinical training. The Complainant alleges that the Website has already confused one person in this regard and produces a copy of an email from that person to this effect.
6.6	Finally, the Complainant refers to the registration by the Respondent of the domain names <surram.org.uk>, <public-health.org.uk>, <genomiclab.com> and <londondeanery.co.uk>. The Complainant alleges that these registrations show a “habit” of registrations by the Respondent in names in which the Respondent “has no apparent interest”.
6.7	In the circumstances, the Complainant asserts that the Domain Name in the hands of the Respondent is abusive because:
(a)	The Domain Name was primarily registered for the purpose of transferring it to the Complainant at a price greater than the Respondent’s costs;
(b)	The Respondent is using the Domain Name in a way which has confused people into thinking that the Domain Name is controlled by the Complainant; and
(c)	This is one of a series of registrations that the Respondent has made in names in which the Respondent has no apparent interest. 
Respondent
6.8	The Respondent’s “Response” takes the form of an email dated 27 June 2005.  It is convenient merely to reproduce the contents of that email in their entirety:
“We bought this domain name YORKSHIREDEANERY.CO.UK in good faith for business use and not having your client in mind (but the generic combination of Yorkshire & deanery).
The redirection to the domain park is temporary until the web site we are working on will be ready (which includes inter alia lists of universities and other education information). The term “Yorkshire Deanery” isn’t a trademark. So the fact that the complainant has a website on yorkshiredeanery.com can’t prevent us from using it for business purposes.”
Reply to Response
6.9	The Complainant’s Reply took the form of a letter dated 1 July 2005. Again it is convenient for me to reproduce the contents of this submission in their entirety:
	“The respondent states that they ‘did not have us in mind’ when buying the domain name. However, the ‘generic combination of Yorkshire and Deanery’ (as they put it) bears no relationship to Medical Education in itself except through association with us as an organisation. Yet the site in question uses images of clinicians and consists, almost exclusively, of links to Medical Education sites.
The respondent states that they bought the domain name for ‘business use’. However this term does not preclude the purchase of a domain name for the specific purpose of transferring the domain for profit at a later date. The fact that a prominent link was placed on the site’s home page stating: ‘To make an offer for this domain, CLICK HERE’ strongly suggests that this was the respondents intent.
The respondent states that ‘Yorkshire Deanery’ is not a trademark and I do not dispute this as we are a non-commercial organisation. I would suggest that few public organisations such as ours would have registered their name as a trademark. However, I would hope that this does not prejudice any decision made in this matter. I certainly feel we have demonstrated an historical precedence to the use of the name.”

7	Discussion and Findings

What needs to be proved

7.1	To succeed under the Nominet Dispute Resolution Service Policy (the “Policy”) the Complainant must prove on the balance of probabilities, first, that he has rights in respect of a “name or mark” that is identical or similar to the Domain Name (paragraphs 2(a)(i) of the Policy) and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent (paragraph 2(a)(ii) of the Policy).
7.2	Abusive Registration is defined in paragraph 1 of the Policy in the following terms:
Abusive Registration means 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:
Complainant’s Rights

7.3	The Complainant admits that it does not have a registered trade mark in the name “Yorkshire Deanery”. However, Rights, as defined by paragraph 1 of the Policy:  “includes, but is not limited to, rights enforceable under English law.” 
7.4	The Complainant asserts that “we are known and referred to by all with whom we interact as ‘The Yorkshire Deanery’ (since the early 1990’s)”. The Complaint provides evidence in this case in the form of its letter head which uses the name “Yorkshire Deanery”, course documentation that uses that name and an NHS executive report that refers to the Yorkshire Deanery (amongst other “Deaneries”). In the absence of evidence to the contrary from the Respondent, I have little hesitation in coming to the conclusion that by at least the date of the registration, the Complainant had significant reputation in the name “Yorkshire Deanery”. Such reputation has in my view provided it with goodwill sufficient to found an action under the common law of passing off.  I also bear in mind the comments of the appeal panel in Seiko UK Limited v Designer Time/Wanderweb (DRS 00248) that “The requirement to demonstrate 'rights' is not a particularly high threshold test”. 
7.5	Therefore, I have little difficulty in concluding that the Complainant has sufficient rights in the name Yorkshire Deanery for the purposes of the Policy.
7.6	Further, it is clear in this case once the .co.uk suffix is ignored (as to which see the decision of the Appeal Panel in Consorio Del Prosciutto Di Parma v Vital Domains Ltd (DRS 00359)) that the Complainant has rights in a name which is identical to the Domain Name.  
7.7	In the circumstances, the Complainant has shown that it has rights of a name or mark which is identical or similar to the Domain Name within the meaning of paragraph 2(a)(i) of the Policy.
Abusive Registration

7.8	The Respondent’s explanations for registration of the Domain Name is that it bought the Domain Name “in good faith for business use not having [the Respondent] in mind (but the generic combination of Yorkshire & deanery)”. The business in question is not described save that it involves a website which includes “lists of universities”.
7.9	I do not think that the Respondent’s explanation in this case is a plausible one. In particular, I do not accept the Respondent’s assertions that it did not have the Complainant in mind when it registered the Domain Name. The reason for this is as follows.
7.10	The New Shorter Oxford English dictionary defines deanery as follows:
		“1.	The position or office of a dean
2.	The group of parishes presided over by a rural dean. Formerly also, the jurisdiction of a dean.	
3.	The official residence of a dean.”

None of these uses of the word deanery are ones which one would automatically associate with a geographical area as large as Yorkshire. One cannot sensibly talk about the “Dean of Yorkshire.”  Also, a “group of parishes” in this context is not a large geographical area. Therefore, at first sight the words “deanery” and “Yorkshire” are not a natural combination.

7.11	However, it is clear from the material that the Complainant has filed with its Complaint, the word “deanery” in combination with words representing large geographical areas (such as, Yorkshire, Wessex, or North Western) has a well known association in the field of post graduate medical and dental training i.e. it indicates the organisation in that particular area that provides this type of training. Therefore, even if one accepts that the words “Yorkshire” and “Deanery” are separately “generic”, their combination nevertheless has a clear and specific association with the Complainant.  It is inherently implausible that the name was chosen by the Respondent without knowledge of the Complainant and the Complainant’s activities. 

7.12	Any doubt in this respect is dispelled when I consider the other undisputed evidence put forward by the Complainant.  This shows that the Respondent was familiar with health service and heath education provision in the United Kingdom.  In particular:

(a)	the website operated by the Complainant, included pictures of clinicians, links to providers of medical training; and
(b)	other domain name registrations registered by the Respondent (for example, <public-health.org.uk>, <genomiclab.com> and <londondeanery.co.uk>) are also Domain Names that carry with them associations with health and health education in the United Kingdom.
7.13	Lastly, and no means least, I am not prepared to give any weight in this case to an unsubstantiated statement in an email “Reply” that that fails to comply with the formal requirements under paragraph 5 of the Policy.  This is not a technical quibble.  One of the requirements of paragraph 5 is that the Response should conclude with the following statement signed by the Respondent or its authorised representative.

“The information contained in this response is to the best of the Respondent’s
knowledge true and complete and the matters stated in this response comply 
with the Procedure and applicable law”.

Respondents should not be surprised if Nominet experts are not prepared to accept as truthful those assertions that are not supported by this statement of truth.

7.14	In the circumstances, I find as a matter of fact that the Respondent was aware of the existence of the Complainant at the date that it registered the Domain Name.  Given this finding I turn to the question of whether in this case the registration was abusive under the Policy. 
	
7.15	Paragraph 3 of the Policy provides a non-exhaustive list of factors which may be evidence that a domain name is an abusive registration.  It would appear from the Complaint that the Complainant alleges that the following are of application in this case:
(a)	Paragraph 3(a)(i) A: circumstances indicating that the Respondent registered or acquired the Domain Name:
“[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)	Paragraph 3(a)(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”
(c)	Paragraph 3(a)(iii): 
“The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;”

7.16	I will deal first with the allegation under paragraph 3(a)(i) A of the Policy. It is clear to me that the Respondent registered the Domain Name in order to sell it.  It appears to be undisputed that the original wording on the Website stated “To make an offer for this domain name CLICK HERE”.  Although the offer on the Website was not made specifically or exclusively to the Complainant or a competitor of the Complainant as required under the Policy, it seems to me highly unlikely given the nature of the Domain Name that anyone other than the Complainant or one of its competitors would make an offer for the Domain Name.  
7.17	Further in its email to the Complainant dated 10 May 2005, the Respondent, in response to a threat by the Complainant that it would invoke the Nominet DRS procedure, offered to sell the Domain Name to the Complainant for £550.  This offer (pitched at an amount that is less than the costs of DRS proceedings)  absent any supporting documentary evidence to the contrary, is sufficiently high to be more than the Respondent’s out-of-pocket costs (see for example Hughes Electronics Corporation v Henry Chubs (DRS 1746) in this respect).  
7.18	In the circumstances, I conclude that the Complainant has sufficiently made out its allegations under paragraph 3(a)(i) A of the Policy.   
7.19	If I am incorrect in my findings in relation to paragraph 3(a)(i) A of the Policy, I believe that this case falls within Paragraph 3(a)(ii) of the Policy and that there are circumstances indicating that the Domain Name is being used by the Respondent in a way that has confused people into believing the Website is connected with the Complainant.  
7.20	The Complainant relies in this respect upon an email dated 29 March 2005.  This email, very helpfully for the Complainant, asserts that “the www.yorkshiredeanery.co.uk website, .. caused me no end of confusion” .   However, even absent this email evidence I would have reached the same conclusion under Paragraph 3(a)(ii).  Despite what might appear to be the case on first reading paragraph 3(a)(ii) does not require actual confusion.  What is actually required is “circumstances indicating” that the Domain Name is being used in a way which has caused such confusion.  In practice this means that in most cases a likelihood of confusion is likely to be sufficient (see for example the case of Dell Inc. v Ronnie Lamont/PC Warehouse (DRS 1805) in this respect).
7.21	The nature of the Domain name and the fact that the Website displays images of clinicians, provides links to providers of clinical training and generally presents itself as a website that is primarily linked with medical education in some way is in my view sufficient for these purposes. 
7.22	In the circumstances, I conclude that the Complainant has sufficiently made out allegations under paragraph 3(a)(ii) A of the Policy.   
7.23 	In light of these findings it is not necessary to go on to consider the Complainant’s contentions under 3(a)(iii) of the Policy.  The Complainant has successfully proved that the Domain Name in the hands of the Respondent, is an Abusive Registration within the meaning of paragraph 2(a)(ii) of the Policy.

8	Decision

8.1	I find that the Complainant has Rights in the name Yorkshire Deanery, which is identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
8.2	I therefore determine that the Domain Name should be transferred to the Complainant.
…………………….
Matthew Harris
22 August 2005