NOMINET UK DISPUTE RESOLUTION SERVICE

DRS03293

DECISION OF INDEPENDENT EXPERT

Raymarine Plc v Suchknecht

1.	Parties
Complainant	:	Raymarine Plc
Country		:	GB

Respondent	:	Suchknecht
Country		:	Austria
				
2.	Domain Name
raymarine.co.uk

3.	Procedural Background
3.1	The Complaint was lodged with Nominet on 13 January 2006, when the hard copies of the Complaint and attached documents were received by Nominet.  Nominet validated the Complaint on 18 January 2006, and notified the Respondent of the Complaint.  No response was received from the Respondent.  The Complainant paid the appropriate fee for Nominet to refer the case to an independent expert for a Decision on 16 February 2006.
3.2	On 20 February 2006 Bob Elliott, the undersigned (“the Expert”) confirmed to Nominet that there was no reason why he could not properly accept the invitation to act as 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.  Nominet duly appointed the Expert with effect from 23 February 2006.

4.	Outstanding Formal/Procedural Issues
4.1	The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5.a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”).  Paragraph 15.b of the Procedure provides inter alia, that “if in the absence of exceptional circumstances, a Party does not comply with any time period set down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint”.  
4.2	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”.  
4.3	The Expert notes that the paperwork provided by Nominet contains Delivery Failure Reports in respect of emails sent by Nominet to two of the email addresses used by Nominet.  One was as a result of mis-spelling of the Respondent’s name in its email address.  The error in this respect appears to have been Nominet’s rather than the contact details provided.  The other Delivery Failure Report relates to an email sent to the “postmaster@raymarine.co.uk” address.  However, Nominet appears to have sent the documents both by post and by fax to Suchknecht at the address given in its contact details for the Domain Name, and to have corrected the previous mistake in spelling in subsequent emails to the Respondent.  The Expert is therefore satisfied that the existence of the dispute and the Complaint itself would have come to the attention of the Respondent.  The Expert will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.  

5.	The Facts
5.1	The Complaint is very short.  The Complainant is said to be the registered holder of many raymarine domain names, including raymarine.com.  The company name Raymarine Plc has apparently been used since 2001.  The Complainant is also said to be the holder of registered trade marks for Raymarine worldwide (although the trade mark certificates attached to the Complaint in fact show that the Raymarine trade mark is registered in the UK and the European Union with limited further country designations under the Madrid Agreement and Protocol, all in the name of Raymarine Holdings Limited).
5.2	The Complainant says that it was also the previous owner of the Domain Name and that  “the renewal was sent to a member of staff who no longer works for the company and was inadvertently overlooked”. 
5.3	Nothing is provided by way of a description of the Complainant’s business.  Nothing is said about the Respondent.  No evidence is provided of the Respondent’s use of the Domain Name.    There is no evidence that the Complainant has tried to make contact with the Respondent.  The printout provided by Nominet to the Expert as of 18 January 2006 shows that the page at the Domain Name cannot be displayed, which is the message that the Expert has also received, as at the date of this Decision.  
5.4	The Expert is left with no information regarding the Complainant other than its corporate name and trade mark holdings, and no information whatsoever in relation to the Respondent, or the use of the Domain Name.  

6.	The Parties’ Contentions
The Complainant
6.1	The Complainant states “we feel that use of this trademark by Suchknecht is a blatant infringement of our intellectual property rights and misleading to any consumer and would request that they are contacted and asked to cease using this Domain Name”.  
6.2	The Complainant seeks the transfer to itself of the Domain Name. 

The Respondent
6.3	The Respondent has not replied.

7.	Discussions and Findings
General
7.1	For the Complainant to succeed according to paragraph 2 of the Dispute Resolution Service Policy  (“the Policy”), the Complainant must prove to the Expert on the balance of probabilities both of the two elements set out in paragraph 2.a of the Policy, namely 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
7.2	The definition of Rights under the Policy “includes, but is not limited to, rights enforceable under English Law”.  
7.3	The Complainant has provided a Certificate of Incorporation on Change of Name under which it apparently changed its name from Raymarine Limited to Raymarine Plc on 26 November 2004.  The Complainant has not, however, explained the relationship between itself and the company shown as proprietor of the trade marks involved (Raymarine Holdings Limited).  Nor has the Complainant provided evidence of it being the registered holder of “many raymarine Domain Names including raymarine.com”.  Although the way in which the Complaint has been presented is hardly ideal in this respect, the Expert is conscious that the hurdle which the Complainant must overcome to show that it has Rights under the Policy is not necessarily a high one.  In addition, the Respondent has not responded in this case.  In the circumstances, the Expert is prepared to accept, on balance, that there is a sufficient connection between Raymarine Plc and the registered holder of the trade marks Raymarine Holdings Limited, for the Complainant to have demonstrated that it has Rights in the name “Raymarine”, which is a name or mark which is identical to the Domain Name.

Abusive Registration
7.4	Although the Policy sets out in paragraph 3.a a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration, the Complainant has not specifically referred to any of those.  As recited above, the Complainant’s assertion is that the “use of [the Raymarine] trade mark by Suchknecht is a blatant infringement of our intellectual property rights and misleading to any consumer”.
7.5	The Expert’s role is to apply the Policy, and to decide whether the Domain Name, in the hands of the Respondent, is an Abusive Registration.  It is not the Expert’s role under the Policy to decide whether any use of a trade mark “is a blatant infringement of… intellectual property rights”.  If the Complainant wishes to address that question then there are avenues available elsewhere than under the Policy.  
7.6	The Complainant’s allegation in its Complaint is therefore essentially reduced to one that the “use” by the Respondent of the Raymarine trade mark is “misleading to any consumer”.  However, the Complainant has provided no evidence of “use”.  Such evidence as there is (which has been provided by Nominet, and through the Expert’s own checking) would suggest that the Domain Name is not actively being used.  There is no evidence of any consumer being misled, nor is there any argument put forward to support that contention other than bare assertion.  If, as appears to be the case, there is and has been no active use of the Domain Name by the Respondent, it is difficult to conceive how any consumer could be misled.  
7.7	Putting such arguments in the context of the Policy, the nearest of the non-exhaustive list of factors set out in paragraph 3.a of the Policy to the Complainant’s contention is that in 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”).  Without evidence of the Respondent’s active use of the Domain Name, even in a minimal fashion, the Expert does not see how the existence of such circumstances has been made out by the Complainant.
7.8	The Expert is conscious that both in decisions under Nominet’s DRS, and under ICANN’s Uniform Dispute Resolution Policy (UDRP), Experts in previous cases have been prepared to find Abusive Registration (or its equivalent) when the Domain Names in question have not been actively used by the Respondent.  In the case of the UDRP there is a series of decisions which refers back to case number D2000-003 Telstra Corporation Limited v Nuclear Marshmallows (telstra.org).  In the case of the Nominet DRS there is a decision of the Appeal Panel, of which this Expert was a member, DRS00583 Thomas Cook UK Limited v Whitley Bay Uncovered club1830uncovered.co.uk and club18-30uncovered.co.uk.  However, in the Expert’s view, the common factor in such cases has been that the Complainant has been able to refer to other factors beyond the mere registration of Domain Name in question, to demonstrate that it is likely on the balance of probabilities, that the registration is abusive.   The Respondent in DRS00583 tried to suggest that it would use the Domain Names for legitimate uses, but given the extent and renown of the Complainant’s trade mark demonstrated in that case (which was supported by substantial evidence), the Appeal Panel concluded that it was stretching credulity beyond breaking point to suggest that the Respondent did not know of the trade mark in question when it sought registration of the Domain Names.  Similarly, in the telstra.org UDRP case itself, the Panelist relied upon the strong reputation and wide renown of the Complainant’s trade mark (supported by evidence of substantial use), and other factors including the Respondent’s active steps to conceal its true identity, and provision of false contact details.
7.9	No such extraneous factors have been demonstrated by the Complainant in this case.  As the Expert has already observed, there is nothing provided by the Complainant in respect of the Respondent, its activities or its use of the Domain Name.  As far as the Expert is aware, the Respondent is an entity operating from Austria, which operates a German language internet search engine.  There is nothing before the Expert which enables him to form a view on the Respondent’s motives in registering the Domain Name.  The Complainant does not address whether the Complainant itself previously used the Domain Name in any active way.  It may well have been the case that the Complainant has lost the Domain Name through inadvertence, but that, in the Expert’s view, is not enough on its own to show that the Domain Name, in the hands of a Respondent, is an Abusive Registration.
7.10	The onus is clearly on the Complainant to make out its case on the balance of probabilities, and the Expert considers that the Complainant has failed to do so.  

8.	Decision
8.1	The Expert finds that the Complainant has established that it has Rights in respect of name or mark which is identical to the Domain Name, but that the Complainant has not established that the Domain Name in the hands of the Respondent is an Abusive Registration.  In the circumstances, the Expert orders that no action is taken.

Bob Elliott

Dated: 3 March 2006