Nominet UK Dispute Resolution Service

DRS 04331 

Verbatim Ltd -v- Michael Toth

Decision of Appeal Panel

Dated: 31 July 2007

1.	Parties:

Complainant and
Appellant:	Verbatim Ltd
Country:	GB 

Respondent: 	Michael Toth
Country:	GB

2.	Domain Name in dispute:

verbatim.co.uk (the “Domain Name”) 

3.	Procedural Background:

27/12/2006 	Complaint hardcopies received in full and validated
28/12/2006	Complaint forwarded to Respondent
24/01/2007	Electronic Response received (without annexes) and entered into system
22/02/2007 	Response hardcopies with annexes received following extensions of time
23/02/2007 	Response forwarded to Complainant 
02/03/2007 	Electronic Reply and hardcopies received and entered into system
07/03/2007	Commencement of mediation phase 
21/03/2007 	End of mediation phase (no mediated settlement)
03/04/2007 	Fees for Expert Decision received from Complainant 
25/04/2007 	Ms Victoria McEvedy appointed as Expert 
27/04/2007	Respondent filed a non-standard submission
03/05/2007	Complainant filed a non-standard submission
15/05/2007	Decision issued and forwarded to parties – Complaint dismissed
29/05/2007	Appeal documents and deposit received from Complainant
01/06/2007	Appeal notice sent to Respondent 
19/06/2007	Appeal response received from Respondent and copy sent to Complainant
19/06/2007	Mr Tony Willoughby (Chairman), Mr Philip Roberts and Ms Anna Carboni selected as Experts for the appeal panel

3.1.	Each of Mr Tony Willoughby, Mr Philip Roberts and Ms Anna Carboni (the undersigned, the “Panel”) has confirmed the following to the Nominet Dispute Resolution Service: 

“I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of such a nature as to call into question my independence in the eyes of one or both of the parties.”
3.2.	The Panel for this Appeal was appointed as from 25th June 2007 to provide its decision by no later than 6th August 2007.  

3.3.	This case is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service – Version 2, September 2004 (the “Procedure”) and the Dispute Resolution Service Policy – Version 2, September 2004 (the “Policy”).  Both of these documents are available for inspection on the Nominet UK website (http://www.nominet.org.uk/disputes/drs).

4.	The Nature of this Appeal:

4.1.	Paragraph 10a of the Policy provides that: “the appeal panel will consider appeals on the basis of a full review of the matter and may review procedural matters”. It is now well-established that this means that we must consider the facts from scratch and apply the Policy and Procedure to these in order to reach our own conclusion (i.e. a re-determination on the merits), which may differ from that of the original Expert even if her approach was a reasonable one. 

4.2.	We therefore adopt the same approach that we would have done had we been considering the case at first instance, but with the benefit of having read the first decision and the further arguments presented by both Parties in the Appeal Notice and the Appeal Response.

5.	Formal and Procedural Issues:

5.1.	For the sake of simplicity, the Parties are referred to in this decision as Complainant and Respondent. The Complainant, having failed at first instance, is the Appellant. The Respondent is also the Respondent in the appeal. 

5.2.	There was a great deal of correspondence between the parties and Nominet concerning compliance with deadlines in the early phase of the first instance proceedings. In the Appeal Notice, the Complainant pursues its particular objection to the Response having been filed well outside the original time limit laid down by the Procedure, asserting that the Expert’s decision to admit the Response was wrong. Having reviewed all of the correspondence on the file, it appears that the delay in filing resulted from an unfortunate mix of breakdowns in human communication, technical problems and illness. While parties should aim to comply with all of the deadlines laid down by the Procedure, there is some flexibility and discretion to grant extensions of time in exceptional cases under paragraph 12 of the Procedure. The Response was filed within the period of an extension of time granted by Nominet itself. In all the circumstances the Panel agrees with the Expert’s decision not to interfere with Nominet’s exercise of discretion, and to treat the Response as having been duly filed. To ignore the Response altogether would be a disproportionate and unsatisfactory alternative.

6.	The Facts:

6.1.	The Complainant was incorporated in England in 1982. It adopted the name Verbatim Limited in 1983. It is a member of a group of companies headed by Mitsubishi Kagaku Media Company Limited of Japan (“Mitsubishi”).

6.2.	The Complainant is engaged in the distribution and sale in the United Kingdom of VERBATIM branded data storage media such as CDs, DVDs, data storage media accessories and printer consumables.

6.3.	Mitsubishi is the proprietor of a number of trade mark registrations for the word VERBATIM in plain word form and in stylised text, the earliest being UK registration number 1074095 VERBATIM (word) dated 7 February, 1977 in class 9 for “Discs and magnetic tapes, all for recording sound or data, and cassettes and cartridges for use with such tapes. The later registrations differ mainly in the breadth of the specifications of goods and services, keeping pace with technological developments in the field.

6.4.	The Respondent is the proprietor of thousands of domain names, most of them being of a descriptive/generic nature, but several of them featuring well-known names/trade marks of third parties.

6.5.	The Respondent registered the Domain Name on 12 March, 2002. On that same day the Respondent registered at least 26 other domain names in the ‘.uk’ domain including ‘lotusesprit.co.uk’, ‘astonmartins.co.uk’ and ‘rangerovers.co.uk’. The others include names such as ‘month.co.uk’, ‘trailerpark.co.uk’, ‘seasideholidays.co.uk’ and ‘freshcoffee.co.uk’. Of significance to the Respondent’s case is that one of the others is ‘translations.co.uk’.

6.6.	The Respondent has been the subject of two previous complaints under the DRS Policy, namely: DRS 1740 (‘universityoflondon.co.uk’). and DRS 3316 (‘bounce.co.uk’). In both cases the Respondent’s domain names were held to be Abusive Registrations. However, in the latter case, which went to Appeal, there were acknowledged by Nominet to have been procedural irregularities at its end, as a result of which neither the Expert at first instance nor the Appeal Panel took into account the Respondent’s submissions in response. Nominet has added a cautionary notice to the decisions in that case warning those wishing to rely on the decisions that their value may be limited.

6.7.	On 3 August, 2006 the Complainant’s lawyers wrote to the Respondent drawing his attention to its trade mark rights and seeking inter alia transfer of the Domain Name to the Complainant. At that time the Domain Name was connected to a service which redirected visitors to www.verbatim.co.uk to other sites such as www.theaa.com and www.sky.com, offering services such as car insurance and satellite television services.

6.8.	By 14 September, 2006 the Domain Name was connected (as it still is) to a site entitled Verbatim Translation and offering translation services.

7.	The Parties’ Contentions:

The Complaint
7.1.	The Complainant contends that it has a substantial reputation and goodwill in the United Kingdom in the brand VERBATIM through sales of VERBATIM-branded data storage media (including CD-R, CD-RW, DVD-R, USB devices, data storage media accessories and printer consumables) during over 30 years of business. Further, its ultimate parent, Mitsubishi, has granted it a licence to use the trade mark VERBATIM in the United Kingdom and that it therefore has Rights in a name which is identical to the Domain Name.

7.2.	The Complainant contends that the Domain Name is an Abusive Registration on two bases, namely:

(1)	The Respondent registered the Domain Name knowing that VERBATIM was the trade mark of the Complainant and with a view to taking unfair advantage of the Complainant’s well-known brand. The Complainant refers to what it sees as a pattern of abusive behaviour on the part of the Respondent drawing attention to the many domain names in the Respondent’s portfolio, which feature the well-known names and trade marks of others. The Complainant dismisses the linking of the Domain Name to a site offering translation services as a disingenuous attempt to circumvent the provisions of the DRS Policy. The Complainant points out that these links were only introduced after receipt of the letter of demand from the Complainant’s lawyers.

(2)	In using the Domain Name to connect to sites providing the Respondent with affiliate or click through referral income, the Respondent has been taking unfair commercial advantage of the Complainant’s trade mark and has been using the Domain Name in a manner which has caused confusion to Internet users, on the basis that visitors to the site connected to the Domain Name will have been expecting to reach a site devoted to the business and/or goods and services of the Complainant.

7.3.	The Complainant contends that the Domain Name is an Abusive Registration pursuant to paragraphs 3(a)(i)C, 3(a)(ii) and 3(a)(iii) of the DRS Policy.

The Response
7.4.	The Respondent denies the Complainant’s allegations.

7.5.	The Respondent contends that he registered the Domain Name with its ordinary English/Latin meaning in mind and with a view to using it along with others in connection with “a cluster of language/interpreter/translation related resources”. The others were ‘translation.co.uk’ registered in October 2001 and ‘translations.co.uk’ registered on the same day as the Domain Name. The following month he registered ‘interpreter.co.uk’. 

7.6.	The Respondent asserts that when he registered the Domain Name he was not aware of the existence of the Complainant or its VERBATIM trade mark rights. Accordingly, any claim based on mala fides intent at time of registration (i.e. the claim under paragraph 3(a)(i)C of the DRS Policy that he registered the Domain Name for the purpose of unfairly disrupting the business of the Complainant) must fail. He says that the first that he ever heard of the Complainant and its rights was on receipt of the Complainant’s lawyers’ letter in August 2006.

7.7.	The Respondent claims that it often takes some time before he can develop his ideas and in the meantime he connects his domain names to “pay per click” sites, a practice which is acknowledged to be unobjectionable in itself.

7.8.	The Respondent admits the Complainant’s claim to common law trade mark rights, but denies that the Complainant has any registered rights, because the trade mark registrations are in the name of the Complainant’s ultimate parent and there is no evidence of any licence to the Complainant.

7.9.	The Respondent denies that the Complainant’s trade mark is well-known and denies that the Complainant has established a reputation under and by reference to the name.

7.10.	The Respondent contends that paragraph 3(a)(ii) of the DRS Policy is inapplicable because it relates to actual confusion and there is no evidence of actual confusion. The Respondent adds that he is engaged in a very different area of business and there is no chance that anyone would assume that he or his business at www.verbatim.co.uk is in any way associated with the Complainant.

7.11.	The Respondent contends that the claim under paragraph 3(a)(iii) of the DRS Policy is misconceived. He points to the fact that he is the owner of over 2,500 domain names and the Complainant is basing the claim to a “pattern” on a mere 10 domain names, about which no complaint has been made by the trade mark owners and which are not part of this DRS proceeding. He adds that in any event that paragraph of the DRS Policy calls for the Complainant’s trade mark to be well-known, which it is not. 

7.12.	The Respondent exhibits a statement from the proprietor of the translation service, Ms Judith Dunn, testifying to the fact that she and the Respondent were, prior to the date of the Complainant’s lawyers’ letter, discussing the setting up of a translation service. 

7.13.	The Respondent contends that his use of the Domain Name, a generic name, to connect to a “pay per click” website constitutes fair use within the meaning of paragraph 4(a)(i)C of the DRS Policy.

7.14.	Given the Appeal Panel’s decision (below), it is unnecessary for the Panel to set out in extenso here the further submissions of the Respondent. To the extent that they are of any relevance, reference will be made to them under Discussion and Findings below. The Panel has not found the Respondent’s references to the other proceedings involving the VERBATIM name/trade mark to be of any assistance.

The Reply
7.15.	The Reply starts by contending that the Response was lodged out of time and should not be considered. That issue is dealt with above.

7.16.	The Complainant contends that the Respondent’s admission to the existence of the Complainant’s common law rights is enough for the purposes of the first limb of the DRS Policy, but goes on to assert that the claim in the Complaint as to its authority to use the trade mark and enforce the rights and supported by the signed statement of truth is sufficient to bring in the registered rights. The Complainant disputes that the Trade Marks Act test for a well-known mark is the appropriate test under the DRS Policy.

7.17.	The Complainant argues that the Respondent’s admission of common law rights is at odds with his denial of all prior knowledge of the Complainant’s trade mark. 

7.18.	The Complainant disputes the authenticity of the evidence filed in relation to the Verbatim Translation service.

7.19.	As to the Respondent’s response to the “pattern” allegation, the Complainant points out that the names mentioned in the Complaint were merely a selection and names more. The Complainant criticises the Respondent for ignoring these other names when they were in the list exhibited to the Complaint and in circumstances when the Respondent must have known that they fell into the same objectionable category. The additional names include ‘manchesterunited.co.uk’, ‘ericsson.org.uk’, ‘suzukis.co.uk’.

The Appeal Notice
7.20.	The Appeal Notice asserts that there were three fundamental errors in the Expert’s decision at first instance: 

(a)	she failed to take proper account of the Complainant’s evidence of goodwill and reputation and the scope of its Rights in relation to registered trade marks, and thus incorrectly assessed the strength of the Rights;

(b)	she focused only on the circumstances surrounding registration of the Domain Name and failed to go on to consider use of the Domain Name; and

(c)	she wrongly read extra requirements into the test under paragraph 3(a)(iii) of the Policy (pattern of registrations).

7.21.	The Complainant also makes the following points in the Appeal Notice: 

(a)	it should not have been said that the word ‘verbatim’ is generic;

(b)	confusion is not a necessary element of an Abusive Registration; and

(c)	neither the Response nor Ms Dunn’s statement in support shows ‘demonstrable preparations’ to use the Domain Name.

7.22.	Finally, the Appeal Notice contends that the Expert’s decision to admit the Response was wrong, for reasons set out in a letter from the Complainant’s solicitors to Nominet dated 22 February 2007.  
	
The Appeal Response
7.23.	The Appeal Response responds to each of the points in the Appeal Notice in turn. In particular, the Respondent: 

(a)	challenges the contention that the Complainant’s VERBATIM trade mark is very well-known and relies on authorities to the effect that it is insufficient in DRS proceedings to rely on a presumption that the respondent must have known about a trade mark;

(b)	reasserts that he did not know about the Complainant when he registered the Domain Name and states that, although he was made aware of the Complainant by its initial approach in 2002, his use of the Domain Name thereafter was unrelated to the Complainant’s Rights; and

(c)	clarifies the position with regard to his discussions with Ms Dunn, stating that they discussed using the Domain Name and other language domains on a number of occasions over the years.

8.	Discussion and Findings

General
8.1.	To succeed in this Complaint/Appeal the Complainant has to prove to the Panel pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy). 

Complainant’s Rights

8.2.	The Respondent has admitted that the Complainant has common law rights in respect of the name VERBATIM, so the first limb of the Complaint succeeds. Had it been necessary for the Panel to make a finding in respect of the registered rights, the Panel would have had little difficulty in coming to the commonsense conclusion that the Complainant can only have adopted and continued to trade under its corporate name with the licence of the trade mark owner, its ultimate parent company. 

8.3.	The Panel finds that the Complainant has Rights in a name or mark which is identical to the Domain Name. 

Abusive Registration

8.4.	This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the 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.”

8.5.	Paragraph 3 of the Policy contains a non-exhaustive list of what may constitute an Abusive Registration for these purposes. The Complainant relies on the following listed factors: 

	“3(a)(i)(C) Circumstances indicating that the Respondent has registered or otherwise acquired the name primarily for the purpose of unfairly disruption the business of the Complainant”;

	“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”; and
	
	“3(a)(iii) The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern”.
 
8.6.	Paragraph 4 of the Policy contains a non-exhaustive list of what a Respondent may show to demonstrate rights or legitimate interests in respect of the Domain Name. Those that are brought into play by the Respondent are as follows: 

	“4(a)(i) Before being aware of the Complainant’s cause for complaint (not necessarily the ‘complaint’ under the DRS), the Respondent has

(A) used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

(C) made legitimate non-commercial or fair use of the Domain Name; or

(ii) The Domain Name is generic or descriptive and the Respondent is making fair use of it;

(iv)  ... that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.”
 
Knowledge/Ignorance of the Complainant’s Rights
8.7.	The Complainant asserts that the Respondent was at all material times aware of the Complainant’s brand. The Respondent denies all knowledge of the Complainant and its brand prior to receipt of the Complainant’s lawyers’ letter in August 2006. The Complainant responds by disputing the Respondent’s denial and contending that in any event “knowledge [of the Complainant’s brand] is not a pre-requisite”.

8.8.	The Panel starts by addressing this last contention, namely that knowledge of the Complainant’s brand is not a pre-requisite for a successful complaint. The Complainant arrives at this by reciting the definition of Abusive Registration in paragraph 1 of the DRS Policy as set out above and pointing out that the definition makes no reference to “knowledge”. The Complainant contends that all that the Panel has to do is to assess whether objectively the use that the Respondent is making of the Domain Name takes unfair advantage of or is unfairly detrimental to the Complainant’s rights.

8.9.	Previous Appeal Panels have considered the issues of ‘knowledge’ and ‘intent’. In the Mercer appeal (DRS 4635) at paragraph 8.15 the Panel had this to say:

“Interestingly, paragraph 3(a)(ii) of the Policy, which deals with … confusing use of a domain name, does not expressly call for abusive intent on the part of the Respondent, but, plainly, such knowledge/intent has to be present. For a domain name to qualify as an Abusive Registration, there has to be an element of abusive behaviour on the part of the Respondent.”
8.10.	In the Playboyracing appeal (DRS 4149) at paragraph 8.17 the Panel said this:

“While the Panel is prepared to accept that the Respondent did not intend to trade off the Complainant’s goodwill in any way, his intention is not a determinative issue …. The test is more objective than that, and can be summarised as follows: in the light of the strength of the Complainant’s Rights and the similarity of the Domain Name to the name in respect of which those Rights exist, has the registration and/or use of the Domain Name by the Respondent taken unfair advantage of or been unfairly detrimental to those Rights?”
8.11.	When cited out of context there is a danger that these two statements may be regarded as conflicting. In fact, each addresses a different point and is reconcilable with the other, once one appreciates an important difference in the underlying facts of each case in relation to knowledge/intent: in Mercer, as in this case, the Respondent denied any prior knowledge of the Complainant, so the focus was on whether there was any scope for finding an Abusive Registration in the absence of knowledge; in Playboyracing, on the other hand, there was no such denial and indeed the Respondent’s references to “Playboy”, “Playgirl” and “Playmate” in an early response to a cease and desist letter from the Complainant made it clear that he knew of the PLAYBOY brand, so the question was whether – in the light of that knowledge (and the undisputed fame of the PLAYBOY brand) – it was possible for the Respondent to avoid a finding of Abusive Registration by asserting that he did not positively intend to trade off the Complainant’s goodwill. 

8.12.	The Policy states that the factors set out in paragraph 3 “may be evidence that the Domain Name is an Abusive Registration” (emphasis added). Therefore it is clear that no single factor, without any additional ingredients, will necessarily establish abuse. Some factors in the list are more likely to lead to a conclusion of abuse than others, since the factors themselves include an abusive element. Others may be insufficient on their own. For example, factor 3(a)(ii) (use that causes confusion with the Complainant) will generally be insufficient where there is nothing else in the evidence to indicate abuse: other questions must be asked, such as how well-known the Complainant’s relevant Rights are, whether the Respondent was aware of them, and whether the Respondent intended confusion to arise. The Expert’s role is then to consider the materiality and weight of all the evidence in determining whether it is sufficient to establish that the Domain Name is an Abusive Registration.   
    
8.13.	In this Panel’s view the following should be the approach to the issues of knowledge and intent in relation to the factors listed under paragraph 3 of the Policy: 

(1)	First, some knowledge of the Complainant and/or its brand/rights is a pre-requisite for a successful complaint under all heads of the DRS Policy other than paragraph 3(a)(iv) (giving false contact details). The DNS is a first-come-first-served system. The Panel cannot at present conceive of any circumstances under which a domain name registrant, wholly unaware of the Complainant and its Rights, can be said to be taking unfair advantage of or causing unfair detriment to the Complainant’s Rights.

(2)	Secondly, ‘knowledge’ and ‘intention’ are pre-requisites for a successful complaint under all heads of paragraph 3(a)(i) of the Policy. The wording of that paragraph expressly calls for the relevant intent, which cannot exist without the relevant knowledge. 

(3)	Thirdly, ‘intention’ is not a necessary ingredient for a complaint under paragraph 3(a)(ii) of the DRS Policy. The test is more objective than that. However, some knowledge of the Complainant or its name/brand is a pre-requisite. 

(4)	Fourthly, while some knowledge of the Complainant or its name/brand is a pre-requisite for a successful complaint under the DRS Policy (save for a complaint under paragraph 3(a)(iv)), knowledge is not of itself conclusive in favour of the Complainant. The Expert/Appeal Panel will still need to be satisfied that the registration/use takes unfair advantage of or is causing unfair detriment to the Complainant’s Rights.

(5)	Fifthly, when a Respondent denies all knowledge of the Complainant and/or its Rights at the relevant time, that denial is not necessarily the end of the matter. The credibility of that denial will be scrutinised carefully in order to discern whether, on the balance of probabilities, the relevant degree of knowledge or awareness was present. 

8.14.	Accordingly, in the view of this Panel, for this complaint to succeed, the Complainant must satisfy the Panel, as an opener, that the Respondent was aware of the existence of the Complainant or its brand at the date of registration of the Domain Name or at commencement of an objectionable use of the Domain Name.

8.15.	The Respondent is adamant that the first that he ever heard of the Complainant and its Rights was when he received the Complainant’s lawyers’ letter over 4 years after having registered the Domain Name. If that denial is accepted by the Panel, the Panel is only concerned with the use of the Domain Name following receipt of that letter.

8.16.	The Complainant asks the Panel to disbelieve this denial. The Complainant advances the following contentions: 

(a)	That the Complainant and its trade mark are so well known that the Respondent must have heard of them. Indeed, in admitting the Complainant’s Rights the Respondent is admitting the relevant reputation.

The Panel believes that the Respondent was right to admit the Complainant’s common law rights. The evidence filed by the Complainant demonstrates a substantial business conducted over many years under the VERBATIM name. In its field it is a well-known name. However, the Complainant has failed to satisfy the Panel that the name is so well-known that the Respondent must have known of it prior to the Complainant’s lawyers’ letter in August 2006.

(b)	That the Complainant has a track record of registering domain names featuring the names/trade marks of others.

The Panel agrees that the Respondent’s portfolio of domain names contains more than a few domain names featuring the names/trade marks of others. However, those domain names are only a very small proportion of the overall portfolio and in large part they are names, which are very recognisable as being the names/ trade marks of others. The Domain Name is an ordinary dictionary word as well as being the Complainant’s trade mark. ‘bounce.co.uk’ is another one falling into the same category, but the Panel accepts the Respondent’s contention that the cautionary notice posted on that decision by Nominet means that the Panel cannot safely rely upon that domain name in this context.
The Panel is of the view that when the Respondent says that he registered the Domain Name with its ordinary English/Latin meaning in  mind, he is more likely than not to be telling the truth. At any rate the Complainant has failed to persuade the Panel otherwise. The Panel notes that on the same day that the Respondent registered the Domain Name he also registered the domain name, ‘translation.co.uk’.
 
(c)	That the timing and style of the Verbatim Translation website to which the Domain Name was connected following receipt of the Complainant’s lawyers’ letter is indicative of a disingenuous self-serving scheme to defeat the complaint. The evidence put in is incomplete and unpersuasive.

To a degree the Panel can see the force of this contention. The Panel believes it to be highly unlikely that the timing of the connection of the Domain Name to this new site was unconnected to receipt of the letter from the Complainant’s lawyers.
However, there is insufficient evidence before the Panel for the Panel to conclude that the Respondent and the proprietor of the Verbatim Translation business conspired to concoct a complete sham. Indeed, the Respondent has produced in evidence correspondence dating back to 2002 and 2003 suggesting that the Respondent had in mind setting up a translation business by reference to the Domain Name and other related names. Moreover, the proprietor of the translation business, Ms Dunn, has made a statement supporting the Respondent’s story.

8.17.	In the circumstances, the Complainant has failed to satisfy the Panel that the Respondent was aware of the Complainant or its name/brand prior to receipt of the Complainant’s lawyers’ letter. Accordingly, to the extent that the Complaint relates to events prior to receipt of that letter, the Complaint fails. Without the requisite knowledge, the Respondent cannot be said to have acted unfairly in relation to the Complainant’s Rights for the purposes of the DRS Policy.

8.18.	That leaves the use made of the Domain Name following receipt of the lawyers’ letter i.e. the connection currently in place to the Verbatim Translation website. While the timing of this connection may have been hastened by the letter, the Panel is unable to dismiss out of hand the Respondent’s account that this was a business venture which had been in the planning stage for some months/years.

8.19.	The Panel accepts that it is possible that some Internet users may visit the site in question expecting to reach the Complainant, but in all the circumstances (e.g. the probability that the Domain Name was registered without the Complainant in mind, the probability that all along the Respondent had in mind that the Domain Name would be used in connection with a business for which the Domain Name is a fair description) the Panel is not satisfied that the current use of the Domain Name can be said to be taking unfair advantage of or causing unfair detriment to the Complainant’s Rights.

8.20.	In the result the Complaint is dismissed.

Reverse Domain Name Hijacking
8.21.	“Reverse Domain Name Hijacking” means using the Policy in bad faith in an attempt to deprive a registered domain name holder of a domain name (see “Definitions” at paragraph 1 of the Procedure). 

8.22.	It is clear that the Complainant has at times been very frustrated with the progress of the Complaint, which was subject to more delays than is usual under the Procedure. It is also clear that the Complainant disbelieved some of the Respondent’s evidence, and put forward its own contrary version of events. It argued the case quite aggressively. However, in the Panel’s view, none of this was underhand or done in bad faith. The Complainant has established that it has Rights in a name identical to the Domain Name and, although the Panel has found against it, the case on Abusive Registration was plainly arguable. 

8.23.	The Panel therefore refuses the Respondent’s invitation to make a finding of attempted Reverse Domain Name Hijacking against the Complainant.

9.	Decision

9.1.	For the reasons set out above, the Panel finds that the Complainant has Rights in respect of a name and mark (VERBATIM) which is identical to the Domain Name, but agrees with the Expert at first instance that the Complainant has not established that the Domain Name in the hands of the Respondent is an Abusive Registration. 

9.2.	Accordingly, the Appeal fails and the Panel directs that no action should be taken in relation to the Domain Name. 

9.3.	The Panel declines to make a finding of Reverse Domain Name Hijacking against the Complainant.

Tony Willoughby (Chairman)
	Philip Roberts					       		Anna Carboni