3P Learning Limited
-v-
Matheltics Limited

Nominet UK Dispute Resolution Service

DRS 04882

3P Learning Limited and Mathletics Limited

Decision of Independent Expert

1.	PARTIES:

	Complainant:			3P Learning Limited
	GB
					
	Respondent:			Mathletics Limited
	AUSTRALIA

2.	DOMAIN NAME:

mathletics.co.uk (“the Domain Name”).

3.	PROCEDURAL BACKGROUND:

3.1.	A hard copy of the Complaint was received in full by Nominet on 12 July 2007. Nominet validated the Complaint and notified the Respondent of the Complaint.

3.2.	No Response was received from the Respondent and therefore informal mediation was not possible. 

3.3.	On 9 August 2007 the Complainant paid the fee to obtain the expert decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service (“the Procedure”).

3.4.	On 10 August 2007, Nick Phillips, the undersigned (“the Expert”), was selected as the Expert. Nick Phillips confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4.	OUTSTANDING FORMAL/PROCEDURAL ISSUES

4.1	The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

4.2	Paragraph 15(b) of the Procedure provides, inter alia, that “if, in the absence of exceptional circumstances, a party does not comply with any time periods laid down in the policy of this procedure, the Expert will proceed to a decision on the Complaint”. 

4.3	Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent’s attention.  Consequently, there do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a decision on the Complaint notwithstanding the absence of a Response.
5.	THE FACTS 

5.1	The Complainant is 3P Learning Limited.

5.2	The Respondent is Matheltics Limited. 

5.3	The Domain Name has been registered since 9th May 2004.

5.4	The Complainant is an English company and was incorporated on 30 August 2006.  Shortly after incorporation it became Mathletics Limited and subsequently on 13 November 2006 it changed its name to 3P Learning Limited.

5.5	The main part of the Complainant’s business is carried on under the name MATHLETICS.  This involves the operation of an interactive website which students, teachers and parents are able to log on to and students are then able to use to answer maths related questions and to compete with pupils form other schools and in other countries, either individually or by school or class group.

5.6	The Complainant owns a number of domain name registrations including the following which consist of or incorporate the name, “Mathletics”;

ashesmathletics.co.uk
ashesmathletics.com.au
livemathletics.co.uk
mathletics.com
mathletics.org
mathletics.us
mathleticsashes.co.uk
mathletics.com.au
mathleticsuk.com
mathleticsusa.com

5.7	The Complainant’s website is very popular and regularly achieves a substantial number of hits.  Its total hits for the period April 2007 to June 2007 by month were as follows:

Period	Hits	
April 2007	465,939	
May 2007	1,182,576	
June 2007	1,214,663	

These hits are received from a wide range of countries throughout the world with a significant number being received from users in the United Kingdom.

5.8	In November 2006 the Complainant approached the Respondent’s agents, a web hosting company called Catalyst2 Services Limited.  Catalyst2 Services Limited informed the Complainant that the Respondent had purchased the Domain Name from them but then had not paid for the renewal and that Catalyst2 Services Limited had paid the renewal fees for the Domain Name.

5.9	An email from Paul Redpath of Catalyst2 Services Limited to Shane Hill (one of the directors of the Complainant) dated 7 November 2006 sets out the position as follows;

“The [Doman Name] is not in our company name, we are a web host and a customer purchased the domain name from us, they then did not pay for the renewal but we did on their behalf.  Unfortunately that does not make the domain name ours, and while we could easily point it to your website there is nothing to stop them reappearing and demanding it back without a name change, however getting Nominet to change the company name is like pulling teeth.

The company itself does not seem to exist properly, but getting Nominet to recognise this is a bit more difficult.  Hope this makes things more clear.”

5.10	Subsequently the Complainant paid Catalyst2 Services Limited the sum of £500 plus VAT in relation to the Domain Name and Catalyst2 Services Limited subsequently transferred the hosting of the Domain Name to the Complainant’s web hosts who are a company called Planet Domain and who look after the other domain names owned by the Complainant.

5.11	The Domain Name remains in the name of the Respondent but it is linked to the Complainant’s website and the named Registrar is PlanetDomain Pty Limited t/a Planet Domain.

6.	THE PARTIES’ CONTENTIONS

The parties' contentions were as follows:

Complainant

“We (3P Learning Limited) confirm that the Domain Name in dispute (www.mathletics.co.uk) is identical or similar to a name in which we have Rights. 

We are currently listed on the Nominet WHOIS register as the registrant of www.mathletics.co.uk, having purchased the registration from Catalyst2 Services Limited (via their representative Paul Redpath) on 14 November 2006 for GB£587.50 Exhibit 1 – Invoice. Exhibit 2 – Nominet WHOIS information. 

There is a question mark as to the legal standing of the transfer, since Catalyst2 Services was not the registrant at the date of transfer, and Nominet is unable to identify the company which was purportedly the registrant at that date. At the date of transfer, the Nominet WHOIS Register indicated this to be “MATHLETICS LIMITED” (the Purported Registrant), whereas this was our company name at that time. 

We confirm that the domain name (www.mathletics.co.uk) in the hands of the Purported Registrant, prior to and at the date of transfer, was an Abusive Registration. 

1. We have rights in the Domain Name because: 

a. At the date of transfer, our company name was Mathletics Limited. It was incorporated on 30 August 2006 (company number 05919214) and on 18 September 2006 the name was changed to Mathletics Limited. This reflected the major product and brand of the company – Mathletics. Exhibit 3 – Companies House Webcheck Details. 

b. Whilst our company name changed to 3P Learning Limited on 13 November 2006, the major product developed and sold by the company continues to be the Mathletics interactive website. Exhibit 4 – screenshot from website www.mathletics.co.uk . Exhibit 5 – Mathletics brochure. Exhibit 6 – brochure of the Mathletics Ashes event held at www.mathletics.co.uk in December 2006. 

c. We are almost entirely reliant upon the domain, since being an interactive website, it is the only means of students, teachers and parents logging into and using the product. Exhibit 7 – screen shots of visitor numbers and hits. Exhibit 8 - screenshots of the number of registered users. 

d. We are also the registered owner of domains in other countries using the Mathletics brand. This includes www.mathletics.com , www.mathletics.com.au . Exhibit 9 – Domain Registrations. 

2. General background and history 

In the months prior to 14 November 2006, we had sought to become the registrant of www.mathletics.co.uk . The named contact for the Purported Registrant on Nominet’s WHOIS register was Paul Redpath. He was an employee of Catalyst2 Services Limited - an internet service provider. He endeavoured to contact the Purported Registrant. Companies House did not have any record of the existence of the company, nor was Paul Redpath able to find any contact information. On 7 November 2006, he wrote in an email to our General Manager (Shane Hill): “… we are a web host and a customer purchased the domain from us, they then didn’t pay for the renewal but we did on their behalf.” He also wrote: “The company itself doesnt seem to exist properly…”. Exhibit 10 – Emails from Paul Redpath to Shane Hill. We believe the Domain Name was transferred by Paul Redpath on behalf of Catalyst2 Services on 14 November in good faith. 

3. The registration of www.mathletics.co.uk in the hands of the Respondent is abusive because:

 a. It was registered with incorrect name and address details, which is independently proved by the ISP acting on the Purported Registrant’s behalf. Exhibit 10. and/or 

b. There is no evidence that the Purported Registrant exists. and/or 

c. Catalyst2 Services renewed the registration without authority from the Purported Registrant. and/or 

d. The registration by the Purported Registrant had the effect of stopping us validly registering the domain name in dispute despite our Rights to the name.”

Respondent

The Respondent has not provided a Response so there are no submissions to consider.
 
7.	DISCUSSIONS AND FINDINGS

General

7.1	Under paragraph 2 of the Dispute Resolution Service Policy (“the Policy”) the Complainant is required to show, on the balance of probabilities, that;

(1) 	it has rights in respect of a name or mark which is identical or similar to the Domain Name; and 
(2)	the Domain Name in the hands of the Respondent is an Abusive Registration.
	
Complainant’s Rights

7.2	The first question I must answer is therefore whether the Complainant has proved on the balance of probabilities that it owns Rights in a name or mark that is identical or similar to the Domain Name.

7.3	The Policy defines rights as including but not limited to “…rights enforceable under English laws.”  This has always been treated in decisions under Nominet DRS as a test with a low threshold to overcome and I think that that must be the correct approach.  

7.4	The Complainant has provided evidence of its use of the name MATHLETICS on its website which attracts a significant amount of hits from around the world, including from users in the United Kingdom.  The Complainant has also registered and used a number of Domain Names which include the word, “mathletics”.  Indeed, and somewhat unusually, the Domain Name also points to the Complainant’s website and has clearly been used by the Complainant fairly successfully to run its business.

7.5	In the circumstances I have no difficulty in finding that the Complainant has Rights in the name MATHLETICS.

7.6	I must now decide whether the name in which the Complainant has rights i.e. MATHLETICS, is identical or similar to the Domain Name, mathletics.co.uk while ignoring the first and second level suffixes as I must do.  Clearly the words used by the Complainant and Respondent respectively are identical. 

Abusive Registration

7.7	Having concluded that the Complainant has Rights in a name which is identical or similar to the Domain Name, I must consider whether the Domain Name constitutes an Abusive Registration.  Abusive Registration is defined in the Policy as 

“… a domain name which either 
(a) was registered or otherwise acquired in the 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 
(b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”  

7.8	This definition allows me to consider whether the Domain Name constitutes an Abusive Registration at any time and not, for example, just the time of registration/acquisition.

7.9	Paragraph 3 of the Policy provides a non-exhaustive list of the factors which may evidence that a domain name is an Abusive Registration.  It is worthwhile setting out paragraph 3 of the Policy in full:

“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.”

7.10	The Complainant submits that the Domain Name is an Abusive Registration for the following reasons;

(a)	it was registered with incorrect name and address details, which is independently proved by the ISP acting on the [Respondent’s] behalf; and/or

(b)	There is no evidence that the [Respondent] exists; and/or

(c)	Catalyst2 Services Limited renewed the registration without authority from the [Respondent]; and/or

(d)	The registration by the [Respondent] had the effect of stopping [the Complainant] validly registering the [Domain Name] despite [the Complainant’s] Rights to the name.

7.11	This Complaint, in my experience, is based on an unusual set of facts.  The Complainant was incorporated in August 2006 and there is no evidence that trade started prior to that date.  Prior to the Complainant being incorporated the Domain Name was registered.  It seems that the Domain Name was originally registered by Catalyst2 Services Limited on 9 May 2004.  There is no evidence as to why Catalyst2 Services Limited chose to register the Domain Name but as this initial registration pre-dated the Complainant’s use of the name MATHLETICS it may simply have been that Catalyst2 Services Limited thought that this was a good name which someone else may in the future be interested in.
  
7.12	Subsequently the Domain Name was transferred  to the Respondent.  It is not clear exactly when the Respondent purchased the Domain Name from Catalyst2 Services Limited or why they wanted it (although I would speculate that the name of the Respondent, “Matheltics” is probably commonly misspelled as Mathletics).  The Domain Name would have fallen to be renewed, two years after its registration i.e  in May 2006 and when the Respondent failed to pay its renewal fee Catalyst2 Services Limited renewed the Domain Name on the Respondent’s behalf.

7.13	Subsequently, effective control of the Domain Name has been transferred by Catalyst2 Services Limited to the Complainant and the Complainant’s usual Registrar has now been substituted instead of Catalyst2 Services Limited as Registrar for the Domain Name.  The Complainant is therefore using the Domain Name in the sense that it is pointed towards the Complainant’s website, although its ownership remains with the Respondent.

7.14	It is therefore fairly clear from this course of events that both the Registration of the Domain Name and its subsequent acquisition by the Respondent pre-dated the Complainant and therefore cannot have been made with knowledge of the Complainant.  Indeed, the Respondent appears to have done nothing at all with the Domain Name and all use of the Domain Name has in fact been made by the Complainant.

7.15	In the recent decision of the Appeal Panel in Verbatim Limited v Michael Toath DRS 04331 the Panel considered what part the issues of knowledge and intent had to play in relation to the non exhaustive list of factors listed under paragraph 3 of the Policy.  In that case the Panel said the following;

“…some knowledge of the Complainant and/or its brand/rights is a prerequisite 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-serve 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.”

7.16	As I have set out above, the registration of and the subsequent acquisition of the Domain Name by the Respondent occurred some time prior to the incorporation of the Claimant and therefore some time prior to the date on which the Complainant would have acquired any Rights in the name MATHLETICS.  I therefore fail to see how it can be said that the Respondent had any knowledge whatsoever of the Complainant at the time at which it acquired the Domain Name.  Further, the Respondent has done nothing with the Domain Name after acquiring it which suggests that it has subsequently acquired any knowledge of the Complainant or which could otherwise lead to a finding of an Abusive Registration. 

7.17	It follows that the Complainant cannot bring itself within paragraphs 3(a)(i), (ii), (iii), (v), (b) or (c) and that the only non exhaustive factor open to it under paragraph 3 is paragraph 3(b).

False contact details

7.18	The contact details given by the Respondent in relation to the Domain Name are as follows;

PO Box 250
Glebe
New South Wales
2037
AU

The Complainant says that these contact details must be false because when the agent used by the Respondent, Catalyst2 Services Limited, was approached by the Complainant it said, “…the [Respondent] does not seem to exist properly…”.  I take that to mean that Catalyst2 Services Limited could not trace the Respondent, although it is not clear what steps Catalyst2 Services Limited took to try to find the Respondent.

7.19	Paragraph 3(a)(iv) is a relatively unusual factor for a Complainant to invoke.  I have therefore had a relatively quick trawl through previous Decisions to see what other Experts have said about this factor and the test which the Complainant must satisfy to make out Abusive Registration under paragraph 3(a)(iv).

7.20	In one of the earlier DRS cases  Blissworld and Blissworld LLC v Blissworld DRS 00444 the Expert said the following;

“this leaves the question of whether Nominet should cancel the registration because of false or out-of-date contact details.  The term “false” implies and intention to mislead, and there is no evidence of such and intention.  All we know about the address is that it is inadequate.  It is possible that the address is also out-of-date but here we have no evidence in either direction.”

7.21	In the DRS case of Luxair v Ahmed Zahur DRS 01176 the Expert said;

“[Paragraph 3(a)(iv) of the Policy]… requires a finding that the details provide are false, an independent confirmation that such is the case.  In the present complaint there is no evidence to suggest that the Respondent’s contact details are false, notwithstanding the return of Nominet’s email notification of the Complaint, and it is also unclear why the Respondent took steps to send its initial letter of demand rather than use the contact details on the Whois search facility on Nominet’s website.

In any event, the notification of Complaint sent in the post by Nominet does not appear to have been returned and the Complainant has provided no independent evidence that the Respondent’s contact details are false.”

7.22	In the more recent case of Axa UK Plc v Norris (DRS 04712) the Expert said the following;

“with regard to paragraph 3(a)(iv) the Complainants allege that the Respondent has provided false contact details to Nominet.  The Complainant has put forward as evidence the fact that the letter which they sent to the Respondents’ Nominet address details were returned by the Maltese postal service and marked, “gone away”.  Whilst this is evidence of the the Respondent no longer residing at the address currently recorded by him with Nominet, it does not necessarily follow that the Respondent was not residing at that address at the time when he registered the Domain Name in 2004.  for example, it could be the case that the Respondent has recently moved but has not yet notified Nominet of a change of address.  For the Complainants to prove that paragraph 3(a)(iv) applies, they would in my view have need to put forward evidence that the address recorded by the Respondents is not even a real address or that he did not reside at that address at the time when the Domain Name was registered by him.”

7.23	In the present case an email sent by Nominet to the Respondent postmaster@mathletics.co.uk has been returned undelivered.  However, the letter sent to the Respondent’s postal address has not been returned  and all that is offered by the Complainant as, “independent” evidence that the Respondent has given false contact details is an email from the Respondent’s agent which simply says that the Respondent, “…does not seem to exist properly”.

7.24	Taking into account all of this, I have reached the view that there is simply not enough evidence for me to conclude that, on the balance of probabilities, the Respondent has given false contact details to Nominet and indeed this has certainly not been independently verified.  As the Expert in the Axa v Norris case said, I would have expected to see evidence that the address recorded by the Respondent is not a real address or that the Respondent did not have any connection with that address at the time that the address was given to Nominet. No evidence about the Respondent’s address has been offered and it may simply be that the Respondent has moved on or even that it is ignoring the Complaint.  

Abusive Registration generally

7.25	The list of factors set out in paragraph 3 of the Policy is only a non exhaustive list of the factors which may evidence that a domain name is an Abusive Registration.  However, considering the situation in the round,  going back to the definition of Abusive Registration and considering whether or not the Respondent’s acquisition or use of the Domain Name took unfair advantage of or was unfairly detrimental to the Complainant’s Rights, I am not persuaded that this is an Abusive Registration.  I say this because of the fact is that the Domain Name was registered and transferred to the Respondent long before the Complainant started to trade.  I therefore have the greatest of difficulty in seeing how the Respondent’s conduct can amount to an Abusive Registration given that it presumably had no knowledge whatsoever of the Complainant when it acquired the Domain Name.

7.26	Indeed the Complainant’s situation appears to be very well summed up by Catalyst2 Services Limited in its email of 7 November 2006 when it said, “… while we could easily point [the Domain Name] to your website there is nothing to stop [the Respondent] reappearing and demanding it back without a name change…”.  In other words, the Complainant has chosen to use a Domain Name which it did not own and which is owned by a different company, albeit one with a very similar name to the Complainant’s main brand.  The Complainant has chosen to do so at its own risk and, in these circumstances, I cannot make a finding of Abusive Registration.

Practical Considerations

7.27	One of the points made by the Complainant is that it is almost entirely reliant on the domain name for its business which is run through an interactive website.  While, for the reasons set above I do not think that this is a proper case for a transfer because of an Abusive Registration I would make the following comments which may assist the Complainant.  

7.28	Firstly, the Domain Name falls to be renewed in May 2008.  It seems unlikely that the Respondent will takes steps to renew this Domain Name and it should therefore be possible at this stage for the Complainant to acquire it.

7.29	Further, Nominet’s Terms and Conditions of Domain Name Registration impose a number of obligations on a registrant in relation to its contact details.  These include the following;

4.	You have various responsibilities set out generally in this contract.  You must also:
4.1	give and keep us notified of your correct name, postal address and any phone, fax or email information and those of your contacts (if you appoint any, see condition 5.2).  This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register;

7	By entering into this contract you promise that:
7.2	any identity and contact information you (either yourself of through your agent) send us must be correct;
7.3	you will send us the information needed under condition 7.2 as soon as possible, through your agent if possible, and you will keep them up to date;

16	We may cancel or put the domain name into a special status by notifying you if:
16.1	we receive independent proof that you have provided significantly inaccurate, not correct, unreliable or false contact details (including names), failed to keep your contact details up to date, or failed to give us those details at all.

It may well therefore be worth the Complainant’s while approaching Nominet directly and asking Nominet to exercise its discretion under paragraph 16 of these terms and conditions which looks to me to be rather easier to satisfy than paragraph 3aiv of the Policy as it goes further than dealing with just “false” contact details. I would however stress that this is a discretion for Nominet to exercise and it is not something that I can give a decision on here.

8.	DECISION

8.1	I find that the Complaint has proved, on the balance of probabilities, that it has rights in a name or mark which is identical or similar to the Domain Name but that it has not proved, on the balance of probabilities, that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore direct that no action be taken in relation to the Domain Name.

……………………………..
NICK PHILLIPS
23rd August 2007