Nominet UK Dispute Resolution Service

DRS Number 04130

Decision of Independent Expert

1.	Parties

Complainant:		Giganews Inc. (the “Complainant”)
Country:		US

Respondent:		Solo (the “Respondent”)
Country:		DE

2.	Domain Name

< giganews.co.uk> (the “Domain Name”)

3.	Procedural Background

The complaint of the Complainant was entered in the Nominet system on 17 October 2006.  Nominet validated the complaint on 18 October 2006 and dispatched a copy of the complaint to the Respondent.  No response was received from Respondent by the due date of 10 November 2006.  On 13 November 2006 Nominet wrote to both parties indicating that no response had been received.  The Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (the “Policy”), and on 28 November 2006 Nominet selected Christopher Gibson to act as Expert in the case.  

The undersigned (the “Expert”) has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know 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.  The undersigned was appointed as Expert in this case on 30 November 2006.

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”).  Paragraph 15b of the Procedure provides, inter alia, that “[i]f, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or the Procedure, the Expert will proceed to a Decision on the complaint.”

There is no evidence before the Expert to indicate the presence of exceptional circumstances.  Nominet has attempted to communicate the complaint to the Respondent by email and post.  The efforts made by Nominet are in accordance with the Procedure and accordingly, the Expert will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.

Paragraph 15c of the Procedure provides that “i]f, 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.”  I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.

5.	The Facts

The Complainant, Giganews Inc., was founded in 1998 and is based in Austin, Texas in the United States. The Complainant is a very large Usenet and newsgroup service provider offering services to approximately 10 million broadband subscribers in 180 countries including the United Kingdom, Germany and the Netherlands. The Complainant serves individuals, Internet and telecommunications providers.  The Complainant has a website located at <www.giganews.com>.  The Complainant has supplied documentary evidence to establish that it holds registered trademarks for the GIGANEWS mark, registered with the Office for Harmonization in the Internal Market (“OHIM”) since 31 March 2004.

From the WHOIS records, the Domain Name <giganews.co.uk> was registered on 20 June 2006 for the Registrant, “Solo”, located at Linden, Germany.  The Registrant’s agent is identified as Solo Entertainment Ltd.  At the time of the Complaint, the URL <www.giganews.co.uk> did not resolve to a website.

6.	The Parties’ Contentions

Complainant

The substance of the Complainant’s contentions are stated in its Complaint.  The Complainant contends that it has rights in respect of a name which is identical to the Domain Name, and that the Domain Name in the hands of the Respondent is an Abusive Registration.  Complainant’s contentions are summarized as follows:

(i)	GIGANEWS is a trademark owned by the Complainant, which has obtained extensive goodwill and reputation in various countries throughout the world including in North America, the United Kingdom and Europe.

(ii)	The distinctive element of the Domain Name (“giganews”) is identical to the Complainant's trademark GIGANEWS.  Because the first- (.uk) and second-levels (.co) of the Domain Name can be disregarded as generic, this leaves a comparison between the trademark GIGANEWS and the third-level of the Domain Name, giganews.  They are identical.

(iii)	Complainant has submitted documentary evidence to show that it is one of the world’s largest Usenet and newsgroup service providers, dealing with 70 million news articles on a daily basis; accounting for more than 20% of the world’s daily Usenet newsgroup posting volume; and archiving over 450 million articles.  The <giganews.com> website has almost 45,000 page views per day in the United Kingdom, 130,000 page views per day in the United States and 8,175 page views per day in Germany.  The Complainant also provides services to a number of English companies including British Telecom, Pipex Communications, Kingston Technology Company and Brightview Internet Services.

(iv)	In June 2006, the Complainant noticed that the Domain Name had been registered, since May 2005, by a “D. Lynch” from Glasgow in the United Kingdom.  The Domain Name at that time was linked to a website which offered sponsored links to Usenet newsgroups.  On 8 June 2006 the Complainant's attorney sent Mr. Lynch a cease and desist letter on behalf of the Complainant. Mr. Lynch did not respond to the letter, but shortly thereafter the Domain Name was transferred to the Registrant.  On 20 June 2006 the Domain Name was registered in Respondent’s name.  On 10 July 2006, the Complainant’s attorney sent a cease and desist letter to the Respondent. The Respondent did not respond, but approximately two weeks later the website linked to the Domain Name was taken off-line.

(v)	In view of the worldwide reputation and goodwill of Complainant's GIGANEWS trademark, it is highly unlikely that the Respondent, at the moment of the acquisition of the Domain Name, was unaware of the GIGANEWS mark.  It is clear that the Domain Name was acquired for financial gain only, with the website <giganews.co.uk> being used to attract Internet traffic and thereby generate profit.  Only when the Respondent received a cease and desist letter was the website linked to the Domain Name taken off-line.

(vi)	The registration is a blocking registration designed to prevent the Complainant, as the legitimate owner of rights in the GIGANEWS name, from registering and using it in an associated domain name.  It would have been obvious to the Respondent that Complainant would wish to register its trademark GIGANEWS as a domain name, since Complainant had widely used the GIGANEWS mark for Internet services in the United Kingdom.

(vii)	The Respondent has no rights or legitimate interests in respect of the Domain Name. It has not been licensed or otherwise authorised to use the GIGANEWS trademark.  There is no valid reason why the Respondent would choose the Domain Name, other than to take advantage of the reputation and goodwill established in the GIGANEWS mark.  

(viii)	There is no evidence that the Respondent intends to use the Domain Name for any fair purpose, other than a parking website linking to Complainant's competitors, in order to generate income from such links. This conclusion is furthermore based on the fact that the Respondent did not respond to the summons of the Complainant, other than taking the website off-line.

(ix)	The conclusion that the Domain Name was acquired for financial gain is also supported by the fact that the owner of the Respondent holds a great number of domain names, most of which are linked to parking sites like the one that was linked to <giganews.co.uk> before the Respondent received the cease and desist letter.  It appears that the sole shareholder and director of the Respondent’s agent and owner, Solo Entertainment Ltd., is a Mr. Fuehrer.  Complainant provides evidence that Mr. Fuehrer has many domain name registrations in the United States, India and Germany. Most of these domain names are not used to offer products or services, but are linked to parking sites.  

(x)	Mr. Fueher has also been found to register a confusingly similar name without any legitimate interest before. On 16 September 2006 a Panellist of the Czech Arbitration Court for .eu domain names ordered the domain name <airis.eu> registered by Mr. Fuehrer to be transferred to Infinity System SL, the owner of trademarks containing the distinct element AIRIS. The Panellist ordered that the domain name <airis.eu> was confusingly similar to the trademarks and that Mr Fuehrer had no rights or legitimate interest in the domain name.

(xi)	By acquiring and using the Domain Name without a legitimate reason and for the sole purpose of financial gain, the Respondent has taken unfair advantage of, and acted in a manner which has been unfairly detrimental to, the Complainant's rights. The registration of Respondent is therefore abusive.

Respondent

The Respondent has not responded, and therefore has raised no challenge to any of the facts and statements submitted by the Complainant.

7.	Discussion and Findings:

General

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:

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

The Complainant has established that it has rights in its distinctive mark GIGANEWS.  These rights arise from the trademark registrations noted above, as well as from the widespread use of the GIGANEWS mark in commerce in the United Kingdom and elsewhere.  In these circumstances, and without any challenge by the Respondent, the Complainant’s submissions are sufficient to establish a basic claim to rights in its name.  

The Domain Name is found to be similar or identical to a name in which the Complainant has Rights.  The Complainant has established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration
As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS Policy defines “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 DRS Policy, in paragraph 3(a), includes a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration.  One element which the Complainant cites as relevant is as follows:

“i.	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

B.    as a blocking registration against a name or mark in which the Complainant has rights;”

The Complainant notes that the grounds listed in Article 3(a) of the Policy are not intended to be exhaustive, and asserts the following additional ground:  by acquiring and using the Domain Name without a legitimate reason and for the sole purpose of financial gain, the Respondent has taken unfair advantage of, and acted in a manner which has been unfairly detrimental to, the Complainant's rights.

This dispute relates to the trademark, GIGAGNEWS, as to which the Expert agrees the Complainant has established goodwill and reputation through its use on the Internet and in relation to users in the United Kingdom and elsewhere.  By the time of the Respondent’s registration of the Domain Name in June 2006, the Complainant’s mark had established significant goodwill and reputation on the Internet through its use in relation to one of the world’s largest Usenet and newsgroup service providers.  The Expert has seen no evidence to indicate that the Respondent would have any rights in, or legitimate connection with, the Domain Name to justify its registration in June 2006 (shortly after the Complainant had sent its first cease and desist letter to the original registrant) or use since that time.  Instead, the Expert observes that the Domain Name was connected to a parking website linking to Complainant's competitors.  It was only after a cease and desist letter was sent to the Respondent that this web site was taken down, but still with no response from the Respondent.  The Complainant has sought to contact the Respondent, but there has been no reply.  Instead, the Respondent has elected not to come forward with any explanation for its registration of the Domain Name.  However, “the consequence of not doing so is that I am not inclined to accept the suggestion that the registration was legitimate because firstly there is no substance or explanation behind that assertion, and secondly because the assertion is not backed up by a declaration that the information is true (as contained in a formal response – see paragraph 5(iv) of the procedure).”  Netezza v. Airpaid Ltd., at p.6 (DRS 02475).

The Expert is of the view that the Complainant trades under a distinctive mark, GIGANEWS, which has established goodwill and reputation, particularly on the Internet.  This fact, when combined with (i) the lack of the Domain Name’s use for any valid purpose since the time of registration, (ii) the linking of the Domain Name to a parking site, and (iii) the lack of any justification whatsoever for the Respondent having adopted the distinctive name <giganews> for the Domain Name, is sufficient to establish a prima facie case that, on the balance of the probabilities, the registration of the Domain Name is abusive.  See Netezza v. Airpaid Ltd. (DRS 02475); Harry Corry Ltd. Robert Morrison (DRS 03028); Chivas Brothers Ltd. V. David William Plenderleith (DRS 00658).  Under these circumstances, the Expert finds that the burden of proof has shifted to the Respondent to show that its registration of the Domain Name is not abusive.  In the absence of any answer to that case, the Complainant prevails.

8.	Decision

The Expert finds that the Complainant has Rights in respect of a name or mark which is similar or identical to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration.  The Expert therefore directs that the disputed Domain Name <giganews.co.uk> be transferred to the Complainant. 

Christopher Gibson

18 December 2006