Cactus Beach Pty Ltd
-  v  -
Peter J Love

Nominet UK Dispute Resolution Service

DRS 02233

Decision of Independent Expert

1.  	Parties
	Complainant:		Cactus Beach Pty Ltd
Country:		Australia

Respondent:		Mr. Peter J Love
Country:		Australia

2.	Domain Name
<watchersweb.co.uk>
	(“the disputed Domain Name”) 

3.	Procedural Background:
The Complaint was lodged with Nominet UK (“Nominet”) in full on December 17, 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on December 22, 2004, giving him 15 working days within which to lodge a Response. It would seem that a Response was filed on January 11, 2005 but for some reason this was not picked up by Nominet, who issued a non-compliance notice on January 21, 2005. The error was discovered on February 7, 2005, the parties were informed, and the period for a Response extended by Nominet to February 7, 2005 by 13 working days owing to the delay in forwarding the Response. A Reply from the Complainant was received on February 10, 2005.

Nominet initiated its Informal Mediation procedure, but it would seem that an acceptable resolution through mediation was not achieved and the parties were informed of this on March 1, 2005. On March 7, 2005 the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet’s Dispute Resolution Service Policy (“the Policy”).

On March 15, 2005 the undersigned, Mr. David H Tatham (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an 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. He was subsequently selected by Nominet as the Expert for this case on March 15, 2005.

4.	Outstanding Formal/Procedural Issues (if any)
There are no outstanding formal or procedural issues but, while the Expert raises no issues in connection with Nominet’s unilateral decision to extend its own time limits for filing the Response and the Reply thereto, it is certainly regrettable that the Response to the Complaint from the Respondent was apparently ‘mislaid’ by Nominet, thus imposing a period of doubt on both parties, and putting the Complainant in particular to unnecessary additional costs.

5.	The Facts
The Complainant
The Complainant is the registered proprietor of a word trade mark WATCHERSWEB which is registered in Australia under No. 892930 as from October 23, 2001 for the following services:

Class 35. “On-line retail and advertising services.”

Class 41. “Publishing and entertainment services through the global computer network and other communication means including online services and website content.”

Class 42. “Computer and online services including production and provision of information,. Graphics and other content on global computer network web sites, electronic commerce services being the maintenance of websites, services for electronic storage and retrieval of data and documents, online chat and forum services, online content hosting and other online services.”

The Complainant also has an application for the trade mark WATCHERSWEB which is still pending in the USA for similar services in Classes 35, 41 and 42 and which was filed on February 19, 2002.

The Complainant has operated an adult web site since August 1998 at the domain <watchersweb.com> which won the 2004 "Best Australian Adult Website" award and site and which, the Complainant alleges, has a significant international reputation and following.  

The Respondent
The Respondent chose not to supply any facts or information about himself, but in response to the Complaint he sent a short e-mail which is reproduced below under “The Response”.

6.	The Parties’ Contentions

The Complainant’s Contentions
The Complainant contends that the disputed domain name is an Abusive Registration in the hands of the Respondent because: 
(a) In an email exchange with his Solicitors, the Respondent solicited an offer to purchase the domain name; 
(b) the domain name is parked by Sedo.co.uk, a company which specialises in parking domains and selling them at a profit;  
(c) the website currently located at the domain includes click-thru links to porn sites which are likely to produce click thru revenues for the Respondent but has no other content; and 
(d) The website currently located at the disputed domain name contains "watchersweb" in the meta tags and is likely to attract significant traffic due to users being confused between Cactus Beach and the domain name. 

Included as part of the Complaint were copies of an e-mail exchange between the Respondent and the Complainant’s legal adviser, Mr. Charles Sweeney of Hunt & Hunt in Brisbane, Australia. The first e-mail was from the Respondent; it was sent on December 6, 2004 and reads as follows:

Dear Mr. Sweeney After investigation I am advised your client operates a pornographic web-site with watchersweb.com. Watchersweb.com.au is available for registration, a person wishing to "pass off" in Australia would acquire that domain name. If you wish you can advise your client to attempt to acquire the domain name watchersweb.co.uk by using the Nominet DRS service. You can advise Nominet that your client has a trademark in Australia and consequently has the right to own watchersweb.co.uk which is registered in the UK. If your client desires to acquire the name watchersweb.co.uk legitimately, all actions by your client must be dropped. Submit a proposal at this e-mail address. Further threatening e-mails will be regarded as harassment. Yours Sincerely Peter Love

Mr. Sweeney’s reply, the date of which was not revealed, reads as follows:

Dear Mr Love, We refer to your email of 6 December and note with interest your solicitation of an offer to purchase the Domain Name. We also note that the Domain Name hosts a website (with the phrase "watchersweb" in the meta tags) which hosts click-thru links to other porn sites. This is in our client's view, a clear case of passing off and cyber squatting. For policy reasons, our client does not offer to buy domain names in circumstances such as the present ones. Accordingly we will seek instructions from our client in relation to commencing court proceedings in Australia and/or proceeding under Nominet's dispute resolution process and will produce this email exchange as evidence of the nature of the registration of the Domain Name. As a matter of record, we deny that our emails have been "threatening". We rely on the terms of our communications to establish this allegation is without basis. We reserve our client's rights in all respects. Yours faithfully, Charles Sweeney 

The Response
The only communication from the Respondent as part of the Complaint was an e-mail, reading as follows:

“Solicitors for Watchersweb first approached me with untrue claims and threats. They now choose to make public private emails which were exchanged in confidence. The integrity of this pornography producing company is greatly in question.

My offer to watchersweb was not an offer for them to purchase but merely opening the door for a possible co development. I immediately withdrew the offer after watchersweb claimed I wanted them to purchase the name. They of course did not include that email exchange but I can forward it if required.

Watchersweb .co.au is available to register to cover the Australian trademark for watchersweb.

An Australian trademark does not entitle the owners of watchersweb to claim every extension in the world. The implications are obvious.”

	The Reply
When the above Response was finally located by Nominet and forwarded to the Complainant, a Reply was received in which the Complainant made the following points:

•	He strenuously denied that he had approached the Respondent with untrue threats or claims;
•	The e-mail exchange was open and not marked “without prejudice”;
•	The Respondent’s attempt to impugn the Complainant’s integrity by categorizing his business as pornography producing is unfounded. The Complainant takes its corporate responsibilities extremely seriously; in any case as the Respondent’s website consists largely of links to pornographic sites, this statement is hypocritical;
•	The Respondent’s e-mail is clearly an offer to submit a proposal to purchase the domain name not to discuss a potential co-development;
•	The Complainant has a US trade mark application as well as its Australian trade mark registration;
•	Any implication that a trade mark will never be infringed by the registration of a domain name in a different jurisdiction is untrue because a domain name registered in one jurisdiction operates in all other jurisdictions. Whether or not there is any infringement depends on the facts not the location of the registration.

7.	Discussion and Findings
General
	According to paragraph 2 of the Policy, in order to succeed in a Complaint, the 	Complainant has to prove to the Expert that –

i   the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and
	ii  the disputed domain name, in the hands of the Respondent is an Abusive
 	Registration. 

	Complainant’s Rights
The Complainant has an Australian registration and a US pending application for the word WATCHERSWEB. This word is identical to the disputed Domain Name because it is customary in domain name disputes, when making a comparison for similarity, to disregard the suffix ‘.co.uk’ because it has no relevant significance and because it is generic. 

The Respondent claims that an Australian trade mark registration is insufficient to prevent a domain name registration in other countries, but the Policy does not distinguish where a Complainant has to have his rights. It is enough to have rights in a name which is identical or similar to a disputed domain name.

The Expert is therefore satisfied that the Complainant has established the first leg of paragraph 2 of the Policy.

	Abusive Registration
The Complainant considers that the disputed Domain Name is an Abusive Registration. 

An ‘abusive registration’ is defined in paragraph 1 of the Policy as being “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.” 

Paragraph 3 of the Policy sets out a number of factors that define what can be an Abusive Registration, and the following would appear to be relevant in this case:

3(a) A non-exhaustive list of factors which may be evidence of an Abusive Registration is as follows:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
  A.  for the purpose 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 by, or otherwise connected with the Complainant;

The only real evidence in this case is the exchange of e-mails between the parties. It would appear that the Respondent’s e-mail of December 6, 2004 was not the first in the exchange between the parties, but neither side has supplied the Expert with copies of what occurred either before or after these two e-mails.

The Complainant contends that the Respondent’s quoted e-mail was an attempt to sell the disputed domain name to him. The Respondent denies this and maintains that he was only trying to open up the possibility of some form of co-development between himself and the Complainant. This seems more than a little naïve. The Respondent’s e-mail contains the words “If your client desires to acquire the name watchersweb.co.uk legitimately, all actions by your client must be dropped.” To the Expert, this is a clear offer to sell the disputed domain name and not an offer to enter into some form of partnership. This alone it is evidence that the disputed domain name is an Abusive Registration under paragraph 3(a)(9i)A of the Policy, but the Complainant further alleges that the site at the disputed domain name is hosted by a company whose business is the selling of domain names. No proof of this statement has been produced, but on his own initiative the Expert has confirmed this by visiting <www.sedo.com> (although the disputed domain name is not listed as being for sale, possibly because it is ‘blocked’ as a result of this dispute).

The Complainant also contends that the website currently located at the disputed domain name contains "watchersweb" in the meta tags and is likely to attract significant traffic due to users being confused between the Complainant’s own website at <watchersweb.com> and the disputed domain name. The Expert has no means of knowing whether these meta tags are really in place, but the statement has the ring of truth and if true it would be in clear breach of Article 3(a)(i)(C) of the Policy because it could unfairly disrupt the Complainant’s business. It would also be in breach of Paragraph 3(a)(ii) of the Policy in that it could certainly be said that the practice was confusing people into believing that the disputed domain name was either operated by, or otherwise connected with the Complainant whose business has been well established for over 6 years and so presumably known to thousands of internet users the world over.
  
The Complainant further alleges that the website currently located at the domain includes click-thru links to porn sites which are likely to produce click thru revenues for the Respondent but has no other content. This would certainly seem probable, but it is not evidence of an Abusive Registration. In this connection the Expert notes that the Respondent describes the Complainant as a “pornography producing company” whose integrity he questions. However it is clear from the contents of the Respondent’s website that he too is in the same line of business so this is a question of the pot calling the kettle black and, as the |Complainant says, the statement is hypocritical.

The Respondent also questions the integrity of the Complainant for revealing the contents of what he describes as “private emails”, but there is nothing in either e-mail to indicate that they were sent on a “Without Prejudice” basis. 

From all of this, the Expert has concluded that on the balance of probabilities, the Complainant has proved his case that the disputed domain name is an Abusive Registration.

8.	Decision
The Expert finds that the Complainant has Rights in the name WATCHERSWEB which is identical to the disputed Domain Name.

The Expert further finds that the disputed Domain Name is an Abusive Registration in the hands of the Respondent. 

The Expert therefore directs that the disputed Domain Name <watchersweb.co.uk> be transferred to the Complainant.

David H Tatham
March 24, 2005