Nominet UK Dispute Resolution Service

DRS Number 04230

H Bauer Publishing -v- R Morrison

Decision of Independent Expert

1.	Parties

Complainant Type:	Business
Country:		GB

Respondent:		R Morrison
Address:	Details withheld from public record as respondent claims to be a private individual
Country:		Malta

2.	Domain Name

bellamagazine.co.uk (‘the Domain Name’)

3.	Procedural Background

The Complaint was lodged electronically with Nominet on 20 November 2006. Hard copies were received on 21 November 2006. 

The Respondent was duly notified of the Complaint by post and email, using the contact details in Nominet’s registration records as well as the email address ‘postmaster@bellamagazine.co.uk’, which returned ‘an undeliverable’ message. Nominet received no response to its correspondence. 

Accordingly, on 14 December 2006, the Complainant was invited to pay the fee for an expert decision. The fee was received on 27 December 2006. On 3 January 2007 Claire Milne was appointed to act as expert in the case, having confirmed that she knew of no reason why she could not properly do so; and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality. 

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent appears to be in the domain name business and I doubt whether his address deserves the privacy protection that Nominet accords to private individuals. However I have followed the Complaint itself in withholding his full address from this Decision.

5.	The Facts

Evidence supplied with the complaint shows that:

•	Since 1987 H Bauer Publishing has published Bella, a weekly women’s magazine.

•	In 2006 Bella had an audited circulation of over 300,000 and a readership of over four times that number. 

•	Since 1987 H Bauer has held the trademark ‘Bella’ in respect of class 16, periodical publications and magazines (excepting those relating to locations in Italy).

•	In recent years the publisher has made considerable investments in promoting Bella magazine, for example advertising it in the Daily Mail, giving the magazine a new look, and a direct mailing campaign to 50,000 individuals.

The Respondent registered the Domain Name on 12 April 2006, supplying a contact address in Malta. At the date of the complaint the name led to a holding page operated by Sedo Parking and containing a variety of commercial links, including six for holiday accommodation.

Nominet informs me that the respondent’s name ‘R Morrison’ has appeared in at least three decisions where there was a finding of abusive registration. A printout supplied with the complaint and my own inspection of the list of such cases on Nominet’s website confirm that in fact, the name appears in 11 decisions finding abusive registration within the last year and a half.

6.	The Parties’ Contentions

There has been no response. The Complainant’s contentions follow.

1.	The Complainant has Rights in respect of the name Bella. This claim is supported by evidence of the 1987 trademark registration, of Bella magazine’s circulation and readership, and of promotional activity (as already detailed above).

2.	The registration is automatically abusive because of the registrant’s record of adverse findings in DRS cases.

3.	The registration is also abusive because its primary purpose was to transfer the name either to the Complainant or to one of the Complainant’s competitors for a price greater than the registrant’s costs.
 
7.	Discussion and Findings:

The Nominet Dispute Resolution Service Policy (‘the Policy’) paragraph 2 requires that for a complaint to succeed the Complainant must demonstrate, on the balance of probabilities, that both:

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 provided satisfactory evidence of its Rights in the name Bella. It has not commented on the second element of the domain name, ‘magazine’. As this element describes the Complainant’s product, I find that for the purpose of this application of the Policy, the name Bella is similar to the domain name bellamagazine.co.uk and the Complaint passes the first test.

Abusive Registration

Paragraph 3(c) of the Policy provides that there shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three or more DRS cases in the two years before the Complaint was filed. This presumption can be rebutted, but in the absence of a response (as in this case) the finding of Abusive Registration is a foregone conclusion.

The only possible issue is whether the registrant in this case and in the ‘R Morrison’ cases on Nominet’s multiple case list are the same person. I have no doubts on this score, as the individual in question has the first name Robert and an address in Malta. These details (and the registration email address) are shared by the registrant in five of the cases on Nominet’s list. Although the cases differ in some details, they have much in common (in particular, a lack of formal response), and I agree with the analysis by the expert in DRS 03702, that everything points to the registrants in these cases being the same individual.

In the circumstances, I do not need to address the Complainant’s second contention in support of Abusive Registration. Given the volume of the registrant’s domain name activity and the growing likelihood of his losing the names he registers, I assume that his registrations have involved a calculation of probable financial gain over a large number of registrations, more than a considered prime motive for each individual registration. I note that the names that he has lost in the listed Nominet cases were all registered more than two years ago (where registration dates are given).

8.	Decision

The Complaint shows that the Complainant has Rights in a name similar to the domain name and that the registration was abusive. The Complaint therefore succeeds and the domain name should be transferred to the Complainant as requested.

Claire Milne
17 January 2007