Nominet UK Dispute Resolution Service

DRS No. 5561

New Dream Network, LLC v. Craig Wright

Decision of Independent Expert

1	Parties

Complainant:	New Dream Network, LLC
Country:	US

Respondent:	Craig Wright
Country:	GB

2	Domain Name

<dream-host.co.uk> (the “Domain Name”)

3	Procedural Background

The Complaint entered Nominet’s system on 20 March 2008.  Hard copies of the Complaint were received by Nominet on 26 March 2008.  The Complaint was validated and sent to the Respondent on 26 March 2008.  No response was received within the deadline for response of 21 April 2008 and therefore no response was forwarded to the Complainant.  Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me.  I confirmed that I was not aware of any reason why I could not act as an Independent Expert in this case and I was appointed as such on 19 May 2008.

4	Outstanding Formal/Procedural Issues (if any)

4.1	There are no outstanding formal or procedural issues.
 
5	The Facts

5.1	The Complainant is New Dream Network, LLC, a limited liability company based in the United States of America.  The Complainant operates the ‘DREAMHOST’ web hosting service, and has done so in the United Kingdom since at least 1998.

5.2	The Complainant provides web hosting services under the name ‘DREAMHOST’ at the website operating from the domain name <dreamhost.com>, which it registered in 1997.   It has provided services under the DREAMHOST name in the United Kingdom since at least 1998. 

5.3	The Complainant is the owner of United States trademark, Reg. No. 2,664,983 in the word DREAMHOST (registered on 24 December 2002).  On 26 March 2007 it also filed an application for a Community trade mark (“CTM”) in the word DREAMHOST and this proceeded to registration with Reg. No. 005785671 on 31 January 2008. 

5.4	The Respondent appears to be an individual based in Cardiff, Wales.

5.5	The Domain Name was registered on 6 April 2005 in the name of the Respondent (by whom it continues to be held). 

5.6	The Domain Name has been used for a website offering web-hosting services and the supply of IT equipment under the “Dream-Host Limited” name.    Dream-Host Limited is a UK company incorporated in June 2006 with registered company no. 05862090.    Its registered office is at 7 Station Terrace, Mountain Ash, CF45 3SS. 

6	The Parties’ Contentions

Complainant

6.1	The Complainant seeks transfer of the registration of the Domain Name to itself, on the grounds that it is identical or similar to a name or mark in which the Complainant has Rights and that the registration of the Domain Name in the name of the Respondent is an Abusive Registration.

6.2	The Complainant asserts that it “has rights in the Domain Name” because it operates the “highly successful” ‘DREAMHOST’ web hosting service, and has done so in the United Kingdom since at least 1998.  The Complainant states that it has built the ‘DREAMHOST’ service into a recognised leading web hosting service and has acquired valuable goodwill in that name.

6.3 	The Complainant maintains that the ‘DREAMHOST’ brand is well known in the industry as one of the largest web hosting companies in the world.  Evidence is attached to show that Webhosting.info, an Internet market research company, rates ‘DREAMHOST’ as the 14th largest web hosting company in the world and the 11th largest in the United States.

6.4	The Complainant provides evidence to suggest that the Respondent claims to have been providing hosting solutions since 2002.  The Complainant maintains that by 2002, it had been trading in the United Kingdom for four years and had turned over more than US$40,000 in business with UK customers.

6.5	The Complainant provides further evidence that shows that by the time the Domain Name was actually registered (alleged by the Complainant only to have been in April 2005), it had been operating in the United Kingdom for 7 years and had turned over more than US$200,000 in business with UK customers.

6.6	The Complainant believes that registration and use of the Domain Name by the Respondent is abusive because the Domain Name and the name ‘Dream-Host’ being used by the Respondent are confusingly similar to the Complainant’s registered DREAMHOST trade marks.  The names are alleged to be virtually identical.

6.7	The Complainant asserts that at the time the Respondent registered the Domain Name, a search “using due diligence” would have found the Complainant’s ‘DREAMHOST’ mark in use, especially since the Complainant was already an established leader online.  The Complainant argues that one can assume from this that the Respondent knew of or should have known of the ‘DREAMHOST’ brand.

6.8	The Complainant maintains that the fact that the Respondent knowingly registered a domain name so similar to the Complainant’s mark is evidence of bad faith.  The Registration and more generally the adoption of the “Dream-host” name for the Respondent’s similar business is said to demonstrate that “the Respondent hoped to unfairly usurp the goodwill” of the Complainant’s mark.

6.9	The Complainant claims that there has been confusion on the website at <webhostingtalk.com>, a forum for web hosting professionals, regarding the association of the Respondent’s web hosting service with the ‘DREAMHOST’ mark.  This confusion occurred during a discussion among web hosting professionals who were bidding to purchase the Respondent’s customers.  The Complainant states that bids of up to £100 were received.

6.10	The Complainant also notes that the user who mistook the Respondent’s site as a “DREAMHOST” operated site, complained about the poor quality of the Respondent’s web site’s service.   It also alleges that the Respondent’s website is rife with misspellings, grammatical and punctuation errors and broken links.  All of this is said to “indicate a lack of quality control, professionalism, and attention to the most basic details, which reflects poorly” on the Complainant’s DREAMHOST brand. 

Respondent

6.11	The Respondent served no Response in these proceedings.

7	Discussion and Findings:

General 

7.1	To succeed under the Nominet Dispute Resolution Service Policy (the "Policy"), the Complainant must prove on the balance of probabilities, first, that it has Rights in respect of a "name or mark" that is identical or similar to the Domain Name (paragraphs 2(a)(i) of the Policy) and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent (paragraph 2(a)(ii) of the Policy). The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (clause 2b of the Policy). 

7.2	Abusive Registration is defined in paragraph 1 of the Policy in the following terms:

“Abusive Registration means 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.”

7.3	The failure by the Respondent to file submissions in response does not entitle the Complainant to the equivalent of a default judgment on these issues. The Complainant still has to make out its case on the balance of probabilities under the Policy to obtain the decision it wants. However, in the absence of any exceptional circumstances I am entitled to draw such inferences from the Respondent’s non-compliance with the Policy or Procedure as I consider appropriate (paragraph 15c of the Procedure).

Complainant’s Rights

7.4	The Domain Name is identical to the Complainant’s registered CTM and US trade marks save for the inclusion of a hyphen and the “.co.uk” ccTLD.

7.5	In the circumstances, I have little hesitation in concluding that the Complainant has rights recognised for the purposes of the Policy in the name “DREAMHOST” and that this is a name that is identical or similar to the Domain Name.  Accordingly, the Complainant has satisfied the requirements of paragraphs 2(a)(i) of the Policy.
 
		Abusive Registration

7.6	Paragraph 3 of the Policy provides a non-exhaustive list of factors that may be evidence that a domain name registration is an Abusive Registration. The Complainant does not expressly refer to any of those factors in the Complaint but in substance appears to be making reference to paragraph 3(a)(ii) of the Policy. This refers to: 

"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".

7.7	The Respondent has not put in a Response or otherwise attempted to explain how he is using the Domain Name.  However, it appears from the nature of the website operating from the Domain Name that the Respondent is operating a genuine web hosting service. 

7.8	The offering of otherwise legitimate services does not prevent a registration from being abusive if the domain name was registered in order to take advantage of a third party’s goodwill in a name.  Where the registrant has prior to registration offered goods and services under that name then an expert may need to be a little more careful.  For example, it is possible to conceive of circumstances where even though a business name was adopted because someone else was using it, by the time the domain name was registered some time later, the relevant name had become as a matter of fact more commonly associated in the public mind with the registrant.  In such a case it may be difficult to show that the registration of the domain name was really with the intention of taking advantage of the first user of the name.  However, this is a question of fact.   Mere prior use of the name by the registrant in relation to a genuine business does not ipso facto prevent the registration from being abusive.

7.9	In this case, and in the absence of any evidence or argument from the Respondent to the contrary, I am satisfied that the Complainant is correct when it claims that the Respondent was aware of the Complainant’s ‘DREAMHOST’ brand when it registered the Domain Name and that the Respondent did so with the intention of taking advantage of the Complainant’s reputation in that brand.  In particular:

(a)	It is unclear exactly when the Respondent adopted the “Dream-Host” name in the United Kingdom.   There is some evidence to suggest that the relevant business may have started as early as 2002, but it may be that the name was only adopted with the registration of the Domain Name in 2005.   However, even if the name was first adopted in 2002, it is clear that the Complainant had at least conducted some business activity in the United Kingdom at that time. 

(b)	The Domain Name has been used in connection with the provision of services that are the same as the Complainant (i.e. web hosting).  They are services that are, of course, provided over the internet.  It is highly improbable that any person engaged in the provision of these services would have not been aware of the Complainant’s business even as early as 2002.  

(c)	By 2005, the reputation of the Complainant was even more firmly established in the United Kingdom.   The evidence does not suggest that the Respondent’s business has at any time been of the scale of the Complainant’s.  Accordingly, the only credible explanation for the registration by the Respondent of the Domain Name at that date was to take advantage of the Complainant’s reputation in the “DREAMHOST” name so as to attract internet users to a business with which the Respondent was associated.  

7.10	This is sufficient to decide the case in the Complainant’s favour under paragraph 3(a)(ii) of the Policy.  However, I also note that the Complainant has managed to bring forward some evidence to suggest that various persons have been confused by reason of the Respondent’s use of the “Dream-Host” name. 

7.11	I therefore find that the Complainant has made out its case of Abusive Registration pursuant to paragraph 2(a)(ii) of the Policy.

8	Decision

8.1	I find that the Complainant has Rights in the ‘DREAMHOST’ mark, which is identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  I therefore determine that the Domain Name should be transferred to the Complainant.

Matthew Harris

…………………
29 May 2008