Spicer Hallfield Ltd v Paul Schoeller Uk [2005] DRS 02791 (30 August 2005)
Nominet UK Dispute Resolution Service
DRS 02791
SPICER HALLFIELD LIMITED

- and -

PAUL SCHOELLER UK

RE:	SPICER-HALLFIELD.CO.UK

Decision of Independent Expert

Parties: 

Complainant:	Spicer Hallfield Limited	
		
Of:	GB
	
Represented by:	Mr. James Cumming	

Respondent:	Paul Schoeller UK	
		
Of:	GB	
		
Disputed Domain Name:	spicer-hallfield.co.uk	

Abbreviations used in this decision:

Abbreviation	Definition	
DRS	Nominet UK's Dispute Resolution Service	
DRS Policy	Nominet UK's Dispute Resolution Service Policy as applicable after 25/10/04	
DRS Procedures	Nominet UK's Dispute Resolution Service Procedures as applicable after 25/10/04	
The Expert	Kirsten Houghton	

Procedural Background:
1.	The Complaint was lodged with Nominet on 8th July 2005 and hard copies were received on 11th July 2005.   
2.	Nominet validated the Complaint on 13th July 2005. 
3.	On 13th July 2005, Nominet sent the complaint to 
(a)	The Respondent’s address  by post for the attention of Mr. Ralf Stahlmann, the contact name provided in Nominet’s database; 
(b)	By e-mail to the Respondent’s email address listed in Nominet’s database and
(c)	By e-mail to postmaster at the Domain Name.
4.	Mr. Stahlmann emailed Nominet on 29th July 2005 in the following terms:
Sorry I could not reply any earlier to you email.
However I had passed on your email to the person on who’s (sic) behalf I had registered the domain, the same day I received your email.
I am back in the UK from my holiday on Monday and I will deal with the matter in the days thereafter.
I have no particulars available to me without looking up the details of the on and off attempts from this company over the past 6 years back at my office
PS.  Something in your message causes Norto to consider your email as Spam and to remove it from the normal Inbox without asking.

5.	The file also contains an undated note:
“Respondent called and was angry that the deadline had passed.  Wanted [Nominet} to roll back the dispute so he could respond – he has been on holiday.
[Nominet] said not because he sent an email to say he had the complaint and would deal with it on his return.
R said we should have guessed that he needed an extension.
[Nominet] explained 13b and how to make a [non-standard submission]

6.	The Respondent has not filed a non-standard submission, and I have not received any request for an extension.  In the circumstances, I shall proceed to deal with the Complaint on the basis of the material available to me.  
7.	Because no response was received, mediation was not attempted.  
8.	On about 11th August 2005, the Complainant paid the fee in order to obtain a decision of an independent expert. 
9.	On 11th August 2005, I confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew 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.    
Outstanding Formal/Procedural Issues (if any):
10.	None.
The Facts:
(1)	The Parties – the Complainant
11.	The Complainant is a limited company incorporated on 29th December 2000.  It has been known as:
(a)	Alnery no. 2111 Limited (at incorporation)
(b)	St. Regis Properties Limited (from 6th February 2001) and
(c)	Decorprint Limited (between 11th April 2001 and 17th October 2002).
12.	Mr. Cumming does not appear to be a director of the Complainant.
13.	The Complainant has not provided me with any details concerning the nature or extent of its business.
(2)	The Parties - the Respondent
14.	The Respondent is called Paul Schoeller UK.  I do not know whether this entity is a limited company or a partnership or a sole trader.  
15.	The Complainant asserts that:
“The registrant is the UK Subsidiary of a German Company which used to distribute the Complainant’s products in Germany”

but I have not been provided with any contemporaneous evidence to support this assertion.
(3)	The Complainant’s rights

16.	The Complaint states:
1. 	The Complainant has rights in the Domain Name because: 

1(a) 	It is registered at Companies House under the name Spicer Hallfield Ltd and has been since 29 12 2000. See printouts from the companies house (sic) website marked a 

1(b)	It has the following registered Community trade mark Trade Mark No. 000635102 Spicer Hallfield Assigned 23/09/1997 See printout from OAMI website marked b

17.	The copy of the Community Trade Mark (“CTM”) registration provided shows that the trademark was registered on 6th May 1999, before the incorporation of the Complainant company.  The printout shows that a total change of ownership of the CTM has occurred, and appears to list the Complainant as the owner because the business addresses correspond, but the date of the transfer is not recorded.
18.	The CTM covers classes 16 and 20 and is in respect of a logo which is a text graphic saying “Spicer Hallfield”.
19.	In the light of the above, I am prepared to accept that the Complainant now has rights in a name which is similar or identical to the Domain Name.  However, it is clear to me that the Complainant did not even exist, let alone have any rights in the Domain Name when it was registered by the Respondent in August 1999.  I am unable to make any finding as to when it acquired those rights.
(4)	The Complaint
20.	This Complaint was issued after 25th October 2004, and, accordingly, the amended DRS Policy and Procedures apply to it.  The amended DRS Policy and Procedures has introduced some new factors which may be considered as evidence of abusive registration, and states:
 3.	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 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.       	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;

iv.   	It is independently verified that the Respondent has given false contact details to us; or

v.     	The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A.         	has been using the domain name registration exclusively; and

B.  	paid for the registration and/or renewal of the domain name registration.

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.

c.        	There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

21.	The Complaint does not refer to the DRS Policy or Procedures expressly at all.  It is an exceedingly brief submission (the most limited I have seen to date), and states:
2. 	The registrant is the UK subsiduary (sic) of a German company which used to distribute the Compainants (sic) products in Germany. The UK subsiduary (sic) has never had rights to sell or distribute (sic) the Complainants (sic) products in either the UK or any other territory. 

3. 	The Domain Name in the hands of the Respondent is abusive because it was: 
(a) 	primarily registered to unfairly disrupt my business because it was previously directed to a competitor website. www.verka.co.uk 

(b) 	used by the Respondent in a way which already has confused people into thinking that it was controlled by me. The site at the domain name spicerhallfield.co.uk (sic) now displays a message which could confuse people into thinking that our website has closed or is currently unavailable. We have received telephone calls from a number of people who have indicated that they were under the impression that our website was down. See attached printout from the site www.spicerhallfield.co.uk (sic) dated 08 07 2005 marked c.

22.	Apart from these few words, no evidence to support these assertions has been produced by the Complainant save for the screen print set out below:

23.	This screen does not incorporate the registered logo.
(5)	Abusive Registration?
24.	Clearly, as the Complainant did not exist at the date of registration of the Domain Name, none of the “primary purpose of registration or acquisition” circumstances apply to this Complaint.
25.	Further, bearing in mind the lack of supporting evidence, in particular any contemporary evidence to support the assertion that the Domain Name pointed to a competitor website during any period in which the Complainant had relevant rights or any evidence of the nature and extent of the Complainant’s and the Respondent’s businesses, I am not prepared to find that the Registrant has used the Domain Name abusively by seeking to pass itself off as the Respondent.  
26.	The only other allegation relates to the webpage printed above.  It is alleged that the Complainant has received calls from third parties who were apparently under the impression that the Complainant’s own website was not functioning.  This may be so, although no contemporary evidence (e.g. telephone notes or dates and times of the calls) has been presented to me.   The question is, if I assume that this allegation is correct, whether the use of the Domain Name to display the message above is abusive?  Again, bearing in mind the complete lack of evidence about the Complainant’s and Respondent’s businesses, or any motive which the Respondent might have, I am not prepared to find that it is.  
27.	However, the criteria set out in Paragraph 3 of the DRS Policy are not exhaustive, and it is often suggested that, in circumstances where someone other than the registered holder registers a domain name which is identical to a registered trademark, the registrant’s conduct normally requires explanation in order to displace the conclusion that the registration is abusive, particularly where the trademark is well known.  
28.	This proposition has recently been the subject of some debate in the DRS, notably in the Appeal in DRS 02201 vikingdirect.co.uk.  In that case, the majority of the Panel stated:
	…the second arm of Paragraph 2(a) … places an effective burden on the Complainant. It is for the Complainant to prove on the balance of probabilities that the Domain Name, in the hands of the Respondent, is an Abusive Registration, that is that the Respondent is taking unfair advantage of, or is unfairly detrimental to the Complainant’s rights. Were this Panel to accept the Appellant’s contention that: “registration of the trade mark or name of an established business as a domain name by a customer of that business must raise at least a prima facie case of abusive registration”, it appears that the second leg of this test would be substantially weakened. Simply by establishing a right in a name or mark in accordance with paragraph 2(a)(i), and a by providing evidence of a previous commercial relationship the burden of proof would switch to the Respondent. This Panel does not believe that simple knowledge of the Complainant and its names or marks is sufficient to attribute that the Respondent that they registered or have used a domain name in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights. The Panel therefore rejects this contention. …

	The majority Panellists note the argument made in the dissenting Opinion that there are some aspects of the Respondent's case that are less than wholly convincing; however, the majority Panellists consider that it is not for the Respondent to make a convincing justification of her use of the Domain Name, but rather for the Appellant to satisfy the tests in the Policy. It is not for the Panellists to impute or infer intent or make a convincing justification of her use of the domain, but rather for the Appellant to satisfy the tests in the Policy. It is not for the Panellists to impute or infer some adverse motives for selection of a name…

29.	Mr. Willoughby, the dissenting panellist, stated as follows:
	In this case the Complainant asserts that a registrant who registers as a domain name a name or mark belonging to someone else (and without adornment i.e. the identical name) and without any obvious justification for having done so has a case to answer.  I tend to agree, but for safety’s sake I would add that it has to be the sort of name, which at time of registration the respondent knew or is likely to have known was a name or mark of the complainant...	

	In my view, a person who registers (or accepts as a gift) a domain name which, to the registrant’s knowledge constitutes the name or trade mark of another (and without adornment) has to be ready with a reasonable explanation. The less distinctive the name or trade mark in question, the easier it will be for the registrant to provide a satisfactory explanation. Indeed, in some cases, the circumstances may be such that no explanation is called for. On the other hand, the less likely the explanation, the greater the support that will be required. 

30.	It is plain that Mr. Willoughby disagreed strongly with the original Expert’s (and the majority Panellists’) assessment of the evidence in the case, however, I do not think he goes so far as to suggest that the owner of a registered trademark (even a well-known one) does not have to put forward a prima facie case, or even to suggest that such a person does not have to satisfy the balance of probabilities, which is the evidential hurdle imposed on the complainant by Paragraph 2(b) of the DRS Policy.  The difference between the Panellists appears to me to have been, in reality, one of what weight to attach to particular evidence, and the views taken as to likelihood or otherwise of the explanation offered by the Respondent.   
31.	This case is a difficult one, not least because, even in its short complaint, the Complainant itself suggests a possible explanation for the registration of the Domain Name by the Respondent (apparently, at some time in the past, a company in the same group had been an approved distributor of the Complainant’s goods).  
32.	I have the ability, if I so wish, to draw adverse inferences against the Respondent for its failure to submit a response (provided by Paragraph 15(c) of the DRS Procedures).  However, bearing in mind the paucity of information provided by the Complainant, and the fact that Nominet refused to provide the Respondent with an extension of time for the submission of a Response, I am not prepared to do so simply on the basis of absence of response.  
33.	In my view, the only real and substantive allegation which the Complainant makes is that it is now the owner of a registered trademark which is, effectively, identical to the Domain Name.  As the Panel pointed out in DRS 00248 seiko-shop.co.uk, there are many situations in which a third party might wish to register and use a domain name which is already a registered trademark, and not all of those registrations will be abusive in accordance with the DRS Policy. 
34.	The Complainant has not provided any evidence of what the Respondent was actually doing with the Domain Name during any period in which it had relevant rights, apart from the notice displayed above, which I do not consider to be abusive.  In the circumstances, I have no material available to me from which I could seek to determine whether or not, for example, there was a BMW v. Deenik type of illegitimate use which could be categorised as abusive.  Bearing in mind that the Domain Name is not a household name, I do not consider that the Complainant has made out a case to answer.  
(6)	Decision
35.	I find that, whilst the Complainant has rights in the Domain Name, it has not proved, on the balance of probability, that the registration is abusive in the hands of the Respondent.  Accordingly, no action should be taken on this Complaint. 
KIRSTEN HOUGHTON FCIArb.
30th August 2005