Nominet UK Dispute Resolution Service

DRS :  03209

SD London t/a Shearer Darnell Recruitment –v- Robert Morrison

Decision of Independent Expert

1.	Parties

Complainant:		SD London t/a Shearer Darnell Recruitment
			GB

Respondent:		Robert Morrison
Country:		Malta

2.	Disputed Domain Name

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

3.	Procedural Background

On 9 December 2005 the Complaint was lodged with Nominet UK in accordance with the Dispute Resolution Service Policy (the “DRS Policy”) and hard copies of the Complaint were received in full on 12 December 2005.

On 12 December 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 5 January 2006) within which to file a response to the Complaint.

On 10 January 2006 as no Response had been received from the Respondent by Nominet UK the Complainant was advised accordingly.  

On 26 January 2006 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.

On 26 January 2006 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.

Having considered the Complaint and the evidence adduced, in the interest of fairness, the Expert sought further information and issued directions in the form of a Procedural Order for Directions No.1 made pursuant to paragraph 13a of  Further Statement of the Nominet UK Procedure for the conduct of proceedings under the Dispute Resolution Service DRS Procedure No. 2 September 2004. 

Said Directions No. 1 required that the Complainant to furnish the Expert with the following Further Statements within fourteen (14) days:

i.	An explanation as to, and full details of the legal standing of the Complainant i.e. is it a registered company, and if so, what is the address of its registered office, company number?
ii.	an explanation of the relationship between the following entities or enterprises: the Complainant and Mr.Oliver Karl Darnell;
iii.	an explanation as to how the Complainant claims to have use of the trademark since 1998 when it is clear that the trademark was in the ownership of a company now in liquidation at that time;
iv.	an explanation as to how the Complainant claims to have rights in the Shearer Darnell trademark when it is part of its case that said trademark was assigned to Mr Oliver Darnell as evidenced by the invoice dated 18 January 2005.

On 20 February 2005 the said Order for Directions No. 1 was served by Nominet UK by e-mail on the Complainant and the Respondent.

The Complainant failed to furnish said Further Statements within the period as directed.

4.	The Facts

The Claimant claims to be a recruitment and training service.

The Respondent has not filed any Response. 

The Domain Name in dispute was registered on 16 January 2005. The registration was last updated on 14 April 2005. The registrant is the contact, administrative contact and billing contact for the registration.

5.	The Parties’ Contentions

Complainant’s Submissions

The Complainant does not refer to any registered trade mark but claims to have carried on business using name Shearer Darnell Recruitment since 1998.

The Complainant claims to have rights in the Domain Name because: 

a.	it is the personal name of the Complainant, and has been since birth. In support of this assertion the Complainant has submitted a photocopy of passport of a page from the passport of Oliver Karl Darnell, a British Citizen.

b.	the Complainant claims to trade under the name ShearerDarnell and to have done so since 1998. In support of this claim, the Claimant has submitted copies of various letterheads, advertisements and stationary.

c.	the Claimant claims to have advertised using the name ShearerDarnell since 1998 and to have spent about £900,000 on such advertisements, examples of advertisements have been annexed as exhibits to the Complaint. 

d.	the Claimant claims to have been assigned rights to use the name ShearerDarnell by ShearerDarnell Recruitment Limited (In Liquidation) company number 3586823. In this regard the Complainant has furnished a copy of an invoice dated 18 January 2005.

The Claimant submits that particular attention be paid to exhibits that show a screen grab provided by the accounting department of the publishers of the Financial Advisor showing multiple advertisements placed during 1999 and also an example of one of these early advertisements. The Claimant claims that in subsequent years, the Claimant’s advertising activity using the Claimant’s ShearerDarnell trademark has increased significantly in spend and in scope to include a wide range of both on and offline advertising.

In support of its claims to have Rights in respect of a name or mark which is identical or similar to the Domain Name, the Complainant has submitted documentation that includes advertisements and other commercial materials including a number of references to a web site for a recruitment business at the gTLD domain address <shearerdarnell.com> and a contact e-mail address careers@sdrecuitment.com. 

These documents include:

•	a photocopy of a page from the passport of Mr Oliver Karl Darnell;
•	a photocopy of an advertisement in a publication FINANCIAL ADVISOR dated 1 April 1999;
•	advertisements in a publication SOLD OUT dated June 2005 and October 2005;
•	an advertisement in London Property News dated December 2005;
•	a screen print out from a database headed FINANCIAL ADVISOR and dated 15 December 2005;
•	two pages of print-outs from the <shearerdarnell.com> website dated 7 December 2005;
•	a page from the publication FINANCIAL ADVISER dated 24 November 2005;
•	an invoice from Shearer Darnell Recruitment Limited (In Liquidation) in respect of the purchase of Goodwill, including use of company name and chattel assets dated 18 January 2005;
•	an undated promotional materials pack presenting the services of ShearerDarnell (sic) recruitment;
•	an undated letterhead and compliment slip for Shearer Darnell recruitment – the letter head refers to a company number 5357692.

The Claimant claims that the Domain Name in the hands of the Respondent is abusive because it was: 

a.	Used by the Respondent in a way which already has confused people into thinking that it was controlled by me, specifically. While many of the links on the website established at the Respondent’s current web site at the <shearerdarnell.co.uk> address are generic, the majority of the most prominent links are related to recruitment and training within the sectors within which the Complainant operates.
 
b.	The registration in issue is one of a series of registrations that the Respondent has made, which because of their number, type and pattern prove that the Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well known names in which the Respondent has no apparent interest. 

c.	There are hundreds of thousands of web addresses on the Internet that are linked to pages that use a similar template to that used by the current registrant. In this regard the Complainant refers to the following url http://www.google.co.uk/search?hl=en&q=%22What+you+need%2C+when+you+need+it%22+Bookmark+this+page+%7C+Make+this+your+homepage&btnG=Google+Search&meta= See http://www.shearerdarnell.co.uk and asks this Expert to compare the results of the google search and see the numerous sites that use a template is almost exactly the same as that used by the Complainant.

Respondent’s Submissions

The Respondent has not filed any Response.

6.	Discussion and Findings:

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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

In its claim to have Rights in the name ShearerDarnell, the Complainant’s submissions are contradictory. In an attempt to clarify these contradictions, the Expert sought further information and issued Order for Directions No. 1. The Complainant has however failed to take the opportunity to clarify the contradictions. 

On the one hand the Complainant submits that the domain name is the personal name of the Complainant and to support this claim the Complainant has submitted a photocopy of the passport of Mr.Oliver Karl Darnell. On the other hand the name given by the Complainant is SD London t/a Shearer Darnell Recruitment.

There is no reference to SD London or indeed Mr.Oliver Karl Darnell in any of the advertisements, letterheads, promotional material or other documentation submitted. 

While the print outs from the web site at <shearerdarnell.com> has a banner that contains the letters and words “SD shearer darnell recruitment” in a stylised or device form, the word “London” does not appear on this banner.

The invoice from Shearer Darnell Recruitment Limited (In Liquidation) in respect of the purchase of its goodwill, including use of company name and chattel assets dated 18 January 2005 has been submitted as evidence that the Complainant has been assigned the goodwill of that company in liquidation. This invoice is however addressed to Mr Oliver Darnell and not to the Complainant SD London t/a Shearer Darnell Recruitment.

While it is clear from the documentation submitted that some person or entity clearly has Rights in the mark and name Shearer Darnell and there is no evidence that the Respondent is that person, on the evidence adduced the goodwill in the mark was assigned to Mr Oliver Darnell and not to any entity called SD London t/a Shearer Darnell Recruitment.

The Complainant has therefore failed to establish the first element in the test set out in paragraph 2(b) of the DRS Policy.

Abusive Registration

As the onus rests on the Complainant to prove both elements of the test set out in paragraph 2 of the DRS Policy and as the Complainant has failed to demonstrate that it has any Rights in the domain name it is not necessary to consider whether the registration in the hands of the Respondent is an Abusive Registration.

In conclusion, as the Complainant has failed to prove that it has Rights in respect of a name or mark which is identical or similar to the Domain Name, this application must fail.

7.    Decision

This Expert therefore directs that the application be refused.

         James Bridgeman                                                       Date:  7 March 2006