Nominet UK Dispute Resolution Service

DRS Number 04868

B E T W E E N:

KICKZ AG
Complainant

- and -

SPENCER HARRIS
Respondent

Decision of Independent Expert

1.	Parties

	Complainant:	Kickz AG
	Country:		DE

	Respondent:		Spencer Harris
	Country:		GB

2.	Domain Name

	kickz.co.uk

3.	Procedural Background
3.1.1	The Complaint, which is a complaint of Abusive Registration under the Dispute Resolution Procedure (“the DRS”), of Nominet UK (“Nominet”), and is dated 10 July 2007, was posted by Nominet to the Respondent under cover of a letter dated 20 July 2007.  The covering letter included the following paragraph:-
		“You do not have to respond to the complaint, but any decision made about your domain name will apply to you even if you do not respond.  If you want to respond (and we would encourage you to do so) we must receive the response on or before 13 August 2007”.

3.1.2	The Respondent did not respond by 13 August 2007 or at all.  In a letter dated 14 August 2007 Nominet wrote again to the Respondent, referring to the complaint and to the failure of the Respondent to submit a response within the deadline, and communicating that as a consequence the dispute would not go to mediation, but would be referred to an independent expert for a formal decision if the Complainant paid the appropriate fees on or before 29 August 2007 - a condition which was fulfilled.

3.1.3	I have been provided with the following materials:-
•	Dispute History
•	Complaint
•	Standard correspondence between Nominet and the parties
•	Nominet WHOIS query result for kickz.co.uk.
•	Printout of website at www.kickz.co.uk.
•	Copy of Nominet UK’s Policy and Procedures.

4.	Outstanding Formal Procedural Issues
4.1	There are no outstanding formal or procedural issues.

5.	The Facts
5.1	The domain name was registered by the Respondent on 22 January 2000.

6.	The Parties’ Contentions
	Complainant
6.1	The Complaint of Abusive Registration is as follows:-
		
	The Complaint

	I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

	I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.
	1. 	The Complainant has rights in the Domain Name “www.kickz.co.uk” because:     
		a. 	It is registered at German Companies House (Handelsregister) under the name “Kickz” AG (AG = Aktiengesellschaft = Public Limited Company) and has been since 22 November 2000 [see enclosed printouts of German Federal Gazette (Bundesanzeiger) and copies of the German Companies House (Handelsregister)]. The Company existed in the form of a German Ltd. Company (GmbH) before since 1993 [see enclosed printouts for evidence].
		b. 	It trades under the name “Kickz” and has done so since 1993. [evidence in the form of marketing and advertising materials & letterhead enclosed; Please see also website: “www.kickz.com” for further details and evidence];
		c. 	It has advertised using the name “Kickz” since 1993 [see enclosed printouts and advertising materials and the website “www.kickz.com”] 
		d. 	It provides goods, in special sporting goods as shoes, shirts, shorts etc. under the name “Kickz” as evidenced by the enclosed materials.
		e. 	It has the registered Community trade mark “Kickz” EM 001256262 and the registered German trade mark “Kickz” DE 2046888 [printouts from the Patent Office/OHIM enclosed]
		f. 	It is holder of other major websites in Europe such as “www.kickz.com”, "www.kickz.fr", “www.kickz.at”, and “www.kickz.de”, 
	
	2.	The Domain Name in the hands of the Respondent is abusive because it was: 
		a. 	primarily registered to stop the complainant registering it despite its rights in the name "kickz" and the respective above trademarks and websites.
		b. 	primarily registered for the purposes of selling, renting or otherwise transferring it to the complainant or its competitors. As can be seen from the enclosed printouts the Respondent has first registered the domain kickz.co.uk on 22 January 2000 and has not used the website ever since. There is no content with respect to this domain. The Respondent seems to have registered the domain although he has no interest in actually using the domain. He has not been using it from the very beginning. At the time of the registration of the domain the German trademark was already published in favour of the complainant. As far as we are aware no legal proceedings have been issued or terminated in connection with the Domain Name.
	
6.2	The Complainant requests the transfer of the Domain Name.

	Respondent
6.3	As stated above the Respondent has not submitted any Response.
  	
7.	Discussion and Findings:
	General
7.1	Under paragraph 2a of the Policy the Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that
		“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.”

7.2	Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

7.3	Paragraph 1 of the Policy defines “Rights” as including but not being “limited to, rights enforceable under English law”.  This definition is subject to a qualification which is not material.

7.4	Under the Policy the mere assertion that a Complainant has “rights” is sufficient for there to be jurisdiction.  For this purpose the date when such alleged rights are acquired is immaterial. Accordingly, I am satisfied that the conditions of paragraph 2 a I of the Policy are fulfilled. 

	Complainant’s Rights
7.5	The Complainant (which is signed and includes a statement of truth and to which there is no challenge) and the documentation provided with it, in my opinion shows that the Complainant has “rights” enforceable in law 
	7.5.1 	in its registered name “KICKZ AG”;
	7.5.2	in the form of goodwill, in the name KICKZ, which would be protected under English law;
	7.5.3	in the trade mark “KICKZ” registered under Community and German law’
	7.5.4	in its capacity as holder of the websites referred to in paragraph 1(f) of the Complaint and incorporating the name “kickz”.

7.6	Further, I consider and find as a fact that the names in which the Complainant has rights are similar to the Domain Name.   

	Abusive Registration
7.7	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.”
		 
7.8	The Policy provides:
	“3	 Evidence of Abusive Registration 
	a 	A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows: 
	i	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily: 
	A 	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 costs directly associated with acquiring or using the Domain Name;
	B 	as a blocking registration against a name or mark in which the Complainant has Rights; or
	C 	for the purpose of unfairly disrupting the business of the Complainant; 
	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; 
	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; 
	iv 	It is independently verified that the Respondent has given false contact details to us; or
	v 	The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant: 	
		A 	has been using the domain name registration exclusively; and
		B 	paid for the registration and/or renewal of the domain name registration.
	b	Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.
	c 	There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

	4.	How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration 

	a 	A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows: 
		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;
			B 	been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name; or
			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.
		iii 	In relation to paragraph 3(a)(v); that the Registrant’s holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or
		iv 	In relation to paragraphs 3(a)(iii) and/or 3(c); 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.
	b 	Fair use may include sites operated solely in tribute to or criticism of a person or business. 
	c 	If paragraph 3(c) applies to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.

7.9	There is no challenge to the facts asserted in the Complaint.  There is no reason to doubt the accuracy of those assertions, and accordingly I accept them as being factually correct.

7.10	It is clear that the Complainant had rights in the name KICKZ before the date when the Domain Name was registered by the Respondent.

7.11	The Complainant alleges, and I accept as a fact, that the Respondent has never made any use of the website.  Failure to use a Domain Name is not itself evidence of an Abusive Registration - see paragraph 3b of the Policy.  Nevertheless, there is no evidence before me to suggest that the Domain Name was chosen by the Respondent for any reason other than the fact that, effectively, it was the name used in the Complainant’s business.  Accordingly, I consider it to be more probable than not that the Respondent registered the Domain Name with a view to selling it to the Complainant at a profit or as a blocking registration.  Therefore, I consider that the case falls within paragraphs 3aiA and/or 3aiB of the Policy, and I am satisfied on the balance of probabilities and find as a fact that the Domain Name was an Abusive Registration within the terms of paragraph 1i of the Policy.

8.	Decision
8.1	For the reasons give above, I find that the Domain Name was registered in a manner which, at the time when the registration took place, was unfairly detrimental to the Complainant’s Rights and, in the hands of the Respondent, is an Abusive Registration.

8.2	The Complainant has requested the transfer of the Domain Name.  On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Name should now be transferred to the Complainant as it requests.

							Signed…………………………
David Blunt QC
28 August 2007