Nominet UK Dispute Resolution Service

DRS 03424

Trinity Mirror Plc and Western Mail and Echo Limited
v Richard Barrington Crook

Decision of Independent Expert

1.	Parties

Complainant 1:		Trinity Mirror Plc
Country:		UK

Complainant 2:		Western Mail and Echo Limited
Country:		UK

Respondent:		Richard Barrington Crook
Country:		UK

2.	Domain Name

walesonsunday.co.uk (“the domain name”)

3.	Procedural Background

Nominet received the complaint on 13 February 2006. On the same day it sent a copy to the Respondent and informed him that he had 15 working days within which to reply. The Respondent did not reply within that period so Nominet wrote to both parties explaining that the dispute would be referred to an independent expert for a decision if the appropriate fee was received by 23 March. Nominet received the fee on 16 March. 

On 22 March I, Mark de Brunner, agreed to serve as an expert under Nominet’s Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.

4.	Outstanding Formal/Procedural Issues

There are two complainants, with a single representative. Nominet’s Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”) allows for more than one person to make a complaint jointly. Paragraph 3 b says that, where this occurs, the joint complainants must

(i)	all sign the hard copy of the complaint (or have it signed on their behalf)

(ii)	specify one of the complainants, or a single representative, who will be the ‘lead complainant’

(iii)	specify which complainant the complainants wish to become the sole registrant of each domain name which [is] the subject of the complaint if the complainants are successful (this does not bind the expert).

Here, the complaint is properly signed by the Complainants’ representative, who is evidently the ‘lead Complainant’. But the complaint does not specify which complainant the Complainants wish to become the sole registrant if the complaint succeeds. I need to consider whether that matters.

This section of the Procedure is evidently intended to help complainants avoid the risk that, if the complaint is successful, the expert will unwittingly decide on a remedy that the complainants do not want. The worst that could happen is that a successful complaint would lead to the transfer of the domain name to one complainant rather than another. As one complainant owns the other in this case, that would seem to me to present no practical difficulty here. I therefore propose to proceed on the basis that if a transfer of the domain name is appropriate it can be to either of the complainants.

5.	The Facts

I accept the following as facts.

The first Complainant is the owner of a registered trademark for ‘Wales on Sunday’. A copy of the results of a UK Patent Office search is appended to the complaint. The trademark application was filed on 14 April 1999 and the Patent Office record shows the application as ‘proceeding because of distinctiveness acquired through use’. The Complainant’s trademark registration is dated 1 December 2000. 

The second Complainant is a wholly owned subsidiary of the first. It publishes a newspaper, ‘Wales on Sunday’, that has appeared weekly since March 1989. Circulation was 60,564 copies for the period July to December 2000 and 53,374 copies for the period January to June 2005.

The domain name was registered on 15 June 2000. It resolves to a webpage at uk2.net, which offers domain name hosting and related services. In the past the domain name has taken traffic to an auction page at uk2.net, where bids are invited for a selection of domain names registered by the Respondent. As well as the domain name at issue, that selection has included:

avononline.net
cardiffonline.net
walesonline.com
wales2day.co.uk
walesonmonday.co.uk
walesontuesday.co.uk 
walesonwednesday.co.uk
walesonthursday.co.uk
walesonfriday.co.uk
walesonsaturday.co.uk
The domain name here has also been offered for sale on a webpage reached through another domain name controlled by the Respondent – mediawales.co.uk.

On 16 August 2005 the Marketing Director of the second Complainant wrote to the Respondent drawing his attention to the trademark registration, noting he was offering the domain name for sale at mediawales.co.uk and arguing that the use of the domain name was likely to mislead the public into thinking that the Respondent might be associated with the second Complainant. She invited him to transfer the domain name to the Complainant for payment of his out-of-pocket expenses.

The Respondent replied on 2 September 2005, denying any intention to mislead and asserting that the domain name was not in use (except to link to a webpage put up by the domain host). He said that the domain name was not being offered for sale (the website that appeared to show otherwise being inaccurate) but that he would be prepared to sell it for £15,000 (plus transfer costs) or to rent it to the Complainant for five years at £4,000 a year. The Respondent also said that the domain name receives ‘numerous emails from various sources’ and suggested that, if it did not want to buy, the Complainant should ‘publicise the fact that www.walesonsunday.co.uk is not associated with [the Complainant’s] publication’. 

Through their representatives, the Complainants declined the offer and requested details of the emails being directed to the domain name. That brought to an end the correspondence preceding the formal complaint.

6.	The Parties’ Contentions

Complainant

The Complainants say that they have rights in ‘Wales on Sunday’, a name identical to the domain name. The first Complainant’s rights are reflected in its trademark registration. The second Complainant’s rights are based on the use it has made of ‘Wales on Sunday’ in publishing its weekly newspaper (the first Complainant licenses its use of the trademark).

The Complainants refer to the Respondent’s implication that, because he registered the domain name before the first Complainant registered its trademark, the Respondent’s registration pre-dates the Complainant’s rights. They say that, on the contrary, the Complainants formally had rights from the date their trademark application was filed and that the application was allowed on the basis that the trademark had at that stage acquired distinctiveness through use. Therefore, they claim, the Complainants’ rights predate the Respondent’s registration of the domain name.

The Complainants say this is an abusive registration because the appearance of the domain name on an auction webpage means that the Respondent must have registered the domain name to sell it at a profit. They claim that the subsequent offer to sell the domain name for £15,000 only confirms the motive at registration.

The Complainants say that because the Respondent lives in Newport, South Wales, he must have known of their rights in ‘Wales on Sunday’ and the domain name registration can only have been intended to take unfair advantage of them.

Respondent

The documentation supporting the complaint includes letters exchanged between the parties before proceedings under the DRS, but there has been no response to the complaint itself.

7.	Discussion and Findings

General

To succeed in this complaint the Complainants must prove, on the balance of probabilities, that

-	they have rights in respect of a name or mark which is identical or similar to the domain name; and that

-	the domain name, in the hands of the Respondent, is an abusive registration.

The Dispute Resolution Service Procedure expects a response to a complaint (and allows for the possibility of a reply to that response). Here there has been no response. The Procedure says that, in the absence of exceptional circumstances

-	if a party does not comply with any time period laid down in the DRS Policy or Procedure, the expert will proceed to a decision on the complaint; and that

-	if a party does not comply with any provision in the Policy or Procedure, the expert will draw such inferences as he considers appropriate.

I am not aware of any exceptional circumstances here. Within the DRS, the approach to be adopted where there is no response is well established: if the Complainant can make out a prima facie case, that case demands an answer. In the absence of an answer, the complaint will ordinarily succeed. The question therefore becomes whether the Complainant has made out a prima facie case.

Complainants’ Rights

The first Complainant has registered rights in the form of a trademark for ‘Wales on Sunday’. The second Complainant has been publishing a newspaper called ‘Wales on Sunday’ that has appeared weekly since March 1989. From the circulation of around 53,000 copies it had established during the first half of 2005, I infer that the second Complainant has built up goodwill in the ‘Wales on Sunday’ name and that it therefore has unregistered rights in that name alongside the first Complainant’s registered rights.

In correspondence before the formal complaint, the parties each make points about the timing of the domain name registration in relation to the time at which the Complainants had rights in ‘Wales on Sunday’. None of these points is relevant to the question whether the Complainants have the rights necessary to prove the first of the two elements the Policy requires to be present in order to establish that a registration is abusive. The answer to that question turns not on whether the Complainants had relevant rights when the domain name was registered, but on whether they had those rights when making their complaint.

In making their complaint, the Complainants can show both registered and unregistered rights in the name ‘Wales on Sunday’. Ignoring the suffixes that are a generic feature of the Nominet registry, the domain name is ‘walesonsunday’. Spaces and capitals cannot be accurately reproduced in a domain name and so, by convention, are ignored. I conclude that the Complainants have rights in respect of a name which is identical to the domain name.

Abusive Registration

The Dispute Resolution Service rules define an abusive registration as 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.

The Complainants do not argue that the domain name has been used. The argument for abusive registration is based on the inclusion of the domain name in an auction webpage and the subsequent offer by the Respondent to sell the domain name for £15,000. This reflects the first of the non-exhaustive list of factors in the Policy that may be evidence that the domain name is an abusive registration:
circumstances indicating that the Respondent registered 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 expenses directly associated with acquiring or using the domain name
Taken on its own as conclusive evidence of an abusive registration, this section of the Policy could be read as rendering domain name dealing illegitimate. But that would be to wrench this misleadingly from its context – as the appeal panel in Hanna-Barbera Productions, Inc v Graeme Hay – recognised:

The fact that a demand for money may be in excess of the out of pocket expenses of the registrant cannot of itself constitute abusive use of the Domain Name. Were it to do so, domain name dealing, of itself a perfectly legitimate activity, would be outlawed at a stroke – not something that the architects of the Nominet DRS could conceivably have contemplated. All depends upon the domain name in issue. Ordinarily, the price put upon a domain name by a registrant is simply evidence of what the registrant regards as being its market value. Many generic names command high prices.

Finding that a domain name may have a value to someone else (a value that exceeds the cost of acquiring the domain name) does not of itself mean that the registration was primarily to make a profit. Even if it was, seeking to realise a profit may be perfectly legitimate. It seems to me that the offer to sell the domain name for £15,000, or to rent it out for £4,000 a year, could reasonably reflect no more than the Respondent’s attempt to unlock value that the domain name had to the Complainants. Neither the presence of that value nor the attempt to unlock it are of themselves evidence that the registration took unfair advantage of or was unfairly detrimental to the Complainants’ rights.

None of the other factors in the non-exhaustive list (that may be evidence of an abusive registration) seem to apply here:

(i)	there is little direct evidence of the Respondent’s motives in registering the domain name: there is no hard evidence that this was a ‘blocking’ registration (as a matter of fact the registration of the domain name by the Respondent does stop the Complainants registering it, but I read the Policy here as implying an intention to block); nor is there evidence that the registration was primarily for the purpose of unfairly disrupting the business of the Complainant

(ii)	the domain name has not been used (except to invite offers to buy it) so it cannot be said that the Respondent’s operation of the domain name has confused people or businesses into believing that the domain name is somehow connected with the Complainant

(iii)	the domain name does seem to be part of a pattern of registrations, but generally those registrations do not appear to correspond to well known names or trade marks in which the Respondent has no apparent rights: instead, this looks to be part of an attempt to register generic or descriptive names (like ‘walesonline.com’ and ‘wales2day.co.uk’) in the hope that someone will want to buy them

(iv)	there is no question of the Respondent’s having given false contact details to Nominet; and 

(v)	the domain name was not registered as a result of a relationship between the Complainant and the Respondent

The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. Again, though, most of these appear not to be relevant. Before being informed of the Complainant’s cause for complaint, the Respondent

(i)	did not use the domain name in connection with a genuine offering of goods or services

(ii)	was not commonly known by the name…which is identical to the domain name

(iii)	did not make any use of the domain name
The only factor potentially relevant is where the domain name is generic or descriptive and the Respondent is making fair use of it. It is arguable that the domain name here is at least ‘descriptive’. But there has not been any use and, even if there had been, whether the Respondent is making fair use of the domain name rather begs the question because it is really just another way of asking whether there has been unfair advantage or unfair detriment.
Of course both lists are non-exhaustive and in any event only contain factors that may be evidence that the domain name is (or is not) an abusive registration. Neither list helps much here. We are left with first principles. That means returning to the underlying question of whether the Complainants have established an arguable case that the domain name was registered (or has been used) in a manner which took unfair advantage of or was unfairly detrimental to the Complainants’ rights.

On the one hand, the Respondent did not seek out the Complainants: they came to him. He did not use the domain name – he simply offered it for sale (if not on the auction webpage, at least subsequently). Though there has been no use of the domain name, it could be described as ‘descriptive’, like the other domain names on the list of his registrations.

On the other hand, the Complainants had well-established rights in ‘Wales on Sunday’ when the domain name was registered. The Respondent was living in Wales and must surely have been aware of the Complainants’ newspaper and therefore of the existence of those rights. He has no apparent rights in the name itself - merely an overarching interest in names that might be attractive to domain name buyers.

Whether or not he was aware of the Complainants’ rights (and motives in a case like this are always difficult to pin down) the registration certainly clashes with them. The question is whether that clash reflects unfair advantage or unfair detriment. I note that the domain name has attracted email. The Respondent suggests to the Complainants that, if they do not wish to buy or rent the domain name, they should publicise in their newspaper the fact that walesonsunday.co.uk is not connected with them. I take that to mean that at least some of the email being received is intended for the Complainants. This leaves the Complainants with their reputation and associated goodwill exposed to a degree of risk. That is surely unfairly detrimental to the Complainants’ rights.

Domain names are offered first come, first served. It can be perfectly legitimate for someone to register domain names in the hope of making a profit out of them. But if doing so takes unfair advantage of or is unfairly detrimental to a complainant’s rights, that will be an abusive registration. It is entirely possible that the Respondent’s other registrations are unexceptionable, but the domain name here is precisely the same as the trademark in which the Complainants have rights. In my view, that - together with the Respondent’s absence of any apparent rights in the name and the implication that emails intended for the Complainants are going astray - makes it even more important that the Respondent should take the opportunity afforded by the DRS Procedure to challenge the Complainants’ arguments. In the absence of a response I agree with the Complainants that, in choosing to register walesonsunday.co.uk, the Respondent ran across the Complainants’ rights in a way that was unfairly detrimental to those rights.

The Complainants here have only to establish a prima facie case that the domain name was registered in a manner which, at the time when the registration took place, took unfair advantage of or was unfairly detrimental to the Complainant’s rights. They have established such a case. In the absence of an answer the complaint succeeds.

8.	Decision

I find that 

-	the Complainants have rights in respect of a mark which is identical to the domain name; and

-	the domain name, in the hands of the Respondent, is an abusive registration.

In the light of that, I direct that the domain name be transferred to the second Complainant.

Mark de Brunner

4 April 2006