Nominet UK Dispute Resolution Service
DRS Number 04570
H Bauer Publishing -V-Tagnames Limited

Decision of Independent Expert

1.	Parties
Complainant:	H Bauer Publishing
Country:	GB

Respondent:	Tagnames Limited
Country:	GB

2.	Disputed Domain Name
The domain name in dispute is: bella.co.uk (“the Domain Name”)
3.	Procedural Background
The Complaint was submitted to Nominet on 22 March 2007, and hard copies of the Complaint were received in full by Nominet on 23 March 2007.  On 23 March 2007, the Complaint was validated by Nominet. The Respondent filed a Response on 13 April 2007 and on 25 April 2007 the Complainant filed a Reply.
On 6 June 2007, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy (“the Policy”).
On 7 June 2007, Antony Gold, the undersigned, confirmed to Nominet that he knew of no reason why he could not properly accept Nominet’s invitation to him to act as an expert in this case and was duly appointed as Expert to determine the dispute.
4.	Outstanding Formal/Procedural Issues
There are no outstanding formal or procedural issues.
5.	The Facts
The Complainant is the owner of a trade mark registration for BELLA in respect of class 16, magazines, effective from 5 October 1990 and maintained ever since (UK Registration No. 1319106).  The Complainant is also the publisher of Bella, a woman’s weekly magazine, launched in 1987.  Bella has a circulation of 316,281 and a weekly readership of 1,166,000.  In April 2005, Bella was given a new look which included a new logo and front cover.  The promotion of this new look involved the placing of advertisements for Bella in newspapers and at the point of sale at retail outlets.
The Respondent registered the Domain Name on 28 April 2003. The Domain Name is not currently in use nor is there any evidence to suggest that the Domain Name has ever been used.
6.	The Parties’ Contentions
Complainant
The Complainant’s assertions are as follows;
First, the domain name in question is identical to the Complainant’s trade mark because the Complainant is the proprietor of the trade mark BELLA which is used in the UK. The Complainant says that its magazine, Bella, has been published weekly since 1987 and has become an established household name with a degree of trust associated with it. Moreover, the Complainant says that it has spent in excess of £15m on advertising and promoting Bella over the course of the magazine’s lifetime.  This has included advertisements in the Daily Mail, Media Week and Campaign, press articles in the trade press and a direct mailing to 50,000 recipients.
Second, the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in section 1 of the Policy) because the Respondent is effectively cyber-squatting as the Domain Name is not in use. The Claimant says also that the Respondent is in the habit of making registrations of trade marks of other well known names in which it has no interest. The Complainant refers to DRS 2796 as evidence of this.  DRS 2796 concerned a claim brought against the Respondent by a Gary Pope in respect of the domain name bankstaff.co.uk. In that case, the webpage located at the domain name forwarded to a web page owned by a third party Sedo who operated a “parking service” for otherwise unused domain names.
The Complainant requests that the Domain Name be transferred to the Complainant.
Respondent
The Respondent’s accepts that the Complainant has rights in BELLA, deriving from its registered trade mark.  However, the Respondent denies that its registration of the Domain Name is an abusive registration because, it says, the fact that the Domain Name is not in use at a particular point in time is not sufficient evidence to show that the registration is abusive. 
The Respondent also disputes the Complainant’s allegation that it is in the habit of making registrations for other well known names in which the Respondent has no interest.  The Respondent says that it does not appear in Nominet’s 3 Cases Respondent Table, which is a table of cases which lists Respondents who have been found to have made Abusive Registrations in 3 or more Dispute Resolution Service cases.  The Respondent further states that DRS 2796 (bankstaff.co.uk) is not sufficient to show that the Respondent is in the habit of making registrations of trade marks or other well known names in which it has no interest as the complainant in that case failed to prove rights in the domain name or that the  registration of the domain name was abusive.
The Respondent contends that it registered the Domain Name because the word “BELLA” is a generic term in Italian, and is widely used and understood in English, to mean “beautiful”, and that the Domain Name was registered in order to develop a site at the address of the Domain Name, when time permitted.
The Respondent also contends that Complainant’s trade mark BELLA is not as well known as the Complainant asserts. It maintains that it had not heard of the Complainant or its trade mark when it registered the Domain Name in April 2003. It says that there is no evidence which would disprove its denial of any prior knowledge of the Complainant.
The Respondent also asserts that the Complainant has not established any significant reputation in the term BELLA as at the date of registration of the Domain Name.  In particular it says that all of the advertising examples produced by the Complainant relate to the relaunch of Bella magazine in April 2005 - two years after the Domain Name was registered. It points out that the circulation data relates to the latter half of 2006 and the readership data applies to 2005/2006. The Respondent says that there is no information or supporting evidence as to turnover, marketing spend, circulation or readership on or before the date of registration of the Domain Name and the Complainant’s current circulation of 316,000 is not of any particular significance in its own sector, let alone an indication that it has become an established household name
The Respondent claims that the Complainant has been guilty of reverse domain name hijacking, defined under paragraph 1 of the DRS Procedure, and is “using the Policy in bad faith in an attempt to deprive a registered Domain Name holder of a Domain Name”.
Complainant’s Reply
The Complainant, in the reply to the Respondent’s Response, makes the following additional assertions:
First, that the Respondent is using the Domain Name as “a blocking registration against a name or mark in which the Complainant has rights” and has failed to show that the Domain Name has been used for any legitimate non-commercial or fair use. 
Second, the Complainant accepts that the Respondent does not appear in Nominet’s 3 Cases Respondent Table but asserts that the fact that a previous case has been brought against the Respondent is sufficient evidence to show that the Respondent is in the habit of registering domain names “in which his interests come into question”.
Third, the Complainant does not deny that BELLA is a generic name but claims that the Respondent is not making fair use of the name, as is required by 4a (ii) of the DRS policy;
Fourth, the Complainant is sceptical of the Respondent’s claim that it had not heard of Bella at the time of registration of the Domain Name, due to the sales of the magazine in 2003 being over 20,701,148. The Complainant says that Bella is 24th in the top 100 of the 3,400 consumer magazines in the UK, in terms of the number of copies sold at the news stand and 51st in terms of Average Net Circulation and Bella is therefore of particular significance in the market place. 
Lastly, the Complainant rejects the Respondent’s claim that the Complainant is guilty of reverse domain name hijacking on the basis that the Complainant has a proven interest in the domain name and a genuine use for it.
7.	Discussion and Findings
7.1	General
To succeed in this Complaint, the Complainant has to prove to the Expert, pursuant to s2 of the Policy, on a balance of probabilities that:
7.1.1	it has Rights in respect of a name or mark identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy); and
7.1.2	the Domain Name, in the hands of the Respondent, is an Abusive Registration (paragraph 2(a)(ii) of the Policy).
7.2	Complainant’s Rights
The domain suffix “.co.uk” is discounted for the purposes of establishing whether the Complainant has Rights in a name or mark which is identical or similar to the Domain Name.
Rights are defined in s1 of the Policy as including, but not limited to, rights enforceable under English law.
The Complainant relies on its UK trade mark as evidence of Rights. Although,  as the Respondent asserts, BELLA is a generic term, meaning “beautiful” in Italian, and a Complainant may not rely on rights in a name or term that is wholly descriptive of the Complainant’s business, the Complainant’s rights are established by virtue of its trade mark registration. Moreover, the term BELLA is not wholly descriptive of the Complainant’s business.  The word itself is descriptive (in Italian) but its use in this context is not.
The Expert finds that the Complainant satisfies the first limb of the test, set out in 2 of the Policy, namely that it has rights in the name BELLA, which is identical to the Domain Name.
7.3	Abusive Registration
In order to demonstrate an Abusive Registration, the Complainant must show that the Domain Name 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, that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights (paragraph 1(i) and (ii) of the Policy).
Paragraph 3 sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration.  These include the Respondent acquiring the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant or registering the Domain Name as a blocking registration or for the purpose of unfairly disrupting the business of the Complainant.  This non-exhaustive list also includes using the Domain Name in a way which has confused people into believing that the Domain Name is associated with the Complainant or showing that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names 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.
The Complainant’s assertion that the Respondent has not used the Domain Name is not, in itself,  evidence that establishes an Abusive Registration.  Nor does the decision to which the Complainant has referred, namely DRS 2796 (bankstaff.co.uk), provide any evidence that the Respondent has engaged in a pattern of registrations in relation to which the Respondent has no apparent rights, not least because the complainant in that case was unsuccessful in showing that the Respondent’s registration was abusive.    
The relevant point at which to assess whether or not the Domain Name is a blocking registration is at the time the Domain Name was registered or otherwise acquired.  The Complainant asserts that the Respondent must have been aware of the Complainant’s magazine Bella and the Domain Name was thus registered primarily as a blocking registration, which can amount to an Abusive Registration - see above.  
There is, however, (perhaps unsurprisingly) no evidence of the Respondent’s awareness of the Complainant’s mark and products and the only evidence of its purpose in registering the Domain Name comes from the Respondent.  If the Respondent did not have knowledge of the Complainant’s magazine Bella when it registered the Domain Name, it is difficult to see how it registered the Domain Name for the purpose of a blocking registration against a name in which the Complainant had rights.  On the basis that BELLA is a generic term and in the absence of any evidence from the Complainant which contradicts the Respondent’s assertions, there is a clear limit as to the assumptions the Expert is able to make as to the Respondent’s knowledge of the Complainant’s magazine Bella.  Faced with a bald denial of knowledge by a Respondent - and in the absence of any other evidence - establishing knowledge of the Complainant’s brand by the Respondent at the time of registration can be a tall order in these circumstances. However, the burden of proof in establishing the elements of a successful Complaint lies with the Complainant and whilst the Complainant is understandably sceptical about the Respondent’s denial of knowledge, this does not amount to evidence and certainly not evidence on a balance of probabilities, that the registration was Abusive.
When might a registration of a domain name be regarded as a blocking registration and abusive? The test devised in DRS 00292 (chivasbrothers.co.uk) can be used as guidance.  In Chivasbrothers it was said that that where a respondent registers a domain name:
1. 	which is identical to a name in respect of which the complainant has rights; 
2.	where that name is exclusively referable to the complainant;
3. 	where there is no obvious justification for the respondent having adopted that name for the domain name; and
4.	where the respondent has come forward with no explanation for having selected the domain name
it will ordinarily be reasonable for an expert to infer first that the respondent registered the domain name for a purpose and second, that that purpose was abusive.
In the present case, as has been discussed, the domain name is not exclusively referable to the Complainant; bella means beautiful in Italian and many other UK businesses use BELLA as part of their brand.  The Respondent has provided an explanation (which, whilst thin, is not incredible) for its registration of the domain name.  Moreover, as bella is the type of non-English word which might occasionally be used in an English-speaking country, (particularly as it is a laudatory term) it is plausible that the Respondent registered the Domain name with a legitimate use in mind. 
The Complainant further asserts that the Respondent’s registration of the Domain Name is abusive because the Respondent is not making fair use of the Domain Name, as required by paragraph 4a(ii) of the Policy. The Respondent asserts that there was an intention to use the Domain Name at a later stage. Although it is worth noting that four years have passed since the initial registration and the name is still not being used, a failure to use the domain name is not of itself abusive.  
Reverse Domain Name Hijacking
The Respondent asserts that the Complainant is guilty of reverse domain name hijacking, defined under paragraph 1 of the DRS Procedure, and is “using the Policy in bad faith in an attempt to deprive a registered Domain Name holder of a Domain Name” on the basis that the Complainant cannot honestly have believed in the legitimacy of its complaint due to the following:
1.	one of the two planks of the Complainant’s case was lack of use of the Domain Name which the Policy expressly rejects as a basis for abusive registration; and
2.	the other plank of the Complainant’s case was DRS 2796 (bankstaff.co.uk) to which the Respondent was a party, but the Complainant misrepresented the case as being a decision against the Respondent.
These arguments fall a long way short of establishing that there has been any Reverse Domain Name Hijacking on the part of the Complainant.  The Complainant has legitimately sought to protect its rights in Bella.  The Respondent’s case in this respect is rejected.
Conclusion
The Expert finds on the balance of probabilities that the Complainant has Rights in respect of a name or mark identical or similar to the Domain Name but that the Complainant has failed to show, on the balance of probabilities, that the Domain Name, in the hands of the Respondent is an Abusive Registration.
8.	Decision
Having found that the registration is not Abusive, the Expert directs that no action should be taken on this Complaint.
No order.

Signed___________________			Date___________________
		Antony Gold