Nominet UK Dispute Resolution Service

DRS 05622

Listers Group Limited v R Morrison

Decision of Independent Expert

1.	Parties

Complainant:	Listers Group Limited	
Country:	UK

Respondent:	R Morrison	
Country:	Malta

2.	Domain Name

listersvolkswagen.co.uk (“the domain name”)

3.	Procedural Background

Nominet received the complaint dated 9 April 2008 on 11 April. It checked that the complaint complied with its UK Dispute Resolution Service Policy (“the Policy”) and the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”). Nominet notified the Respondent of the complaint on 14 April and informed him that he had 15 working days within which to lodge a response. No response was received. Informal mediation not being possible, Nominet notified the parties that an Expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 16 May. 

On 19 May I, Mark de Brunner, agreed to serve as an Expert under Nominet’s Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.

4.	Outstanding Formal/Procedural Issues

There are no outstanding formal or procedural issues.

5.	The Facts

I have attempted to visit web pages at both the domain name at issue and the domain names registered by the Complainant. From those attempted visits, the complaint and the administrative information supplied routinely by Nominet, I accept the following as facts.

The Complainant is a private limited company, selling motor vehicles. It was incorporated in 1978. Previously known as Listers of Coventry (Motors) Limited, it changed to its current name on 18 October 2006. The division of the company selling Volkswagen vehicles has traded as Listers Volkswagen since 1979. The Complainant has registered the domain names listersvolkswagen.com and listersvolkswagen.net.

The WHOIS database says that the Respondent is ‘a non-trading individual who has opted to have their (sic) address omitted from the WHOIS service’. (I have established the Respondent’s address from other administrative information supplied routinely by Nominet.)

The domain name was registered on 13 May 2006. The Complainant says that it resolves to a ‘parking’ page at sedo.com, where it is offered for sale, but at the time of writing the domain name did not resolve to anything. Of the Complainant’s two domain names:

-	listersvolkswagen.com led to a ‘cannot display the web page’ message

-	listersvolkswagen.net led to a web page that said ‘This is not currently a public Listers Group website…You will find all publicly available Listers Group web pages from our main group website, which you can visit at www.listersgroup.co.uk’

6.	The Parties’ Contentions

Complainant

The Complainant says that it has rights in the domain name because Listers Volkswagen has been its Volkswagen division’s trading name since 1979.

It argues that the domain name is an abusive registration because the Respondent:

(i)	registered the domain name primarily for the purposes of selling or otherwise transferring the domain name to the Complainant or to one of its competitors for a price more than his costs

(ii)	is engaged in a pattern of registrations where the Respondent is the registrant of the domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights (and, by implication, that the domain name is part of that pattern)

(i)	may be the same individual found to have made abusive registrations in 13 Dispute Resolution Service (DRS) cases in the last two years. Assuming he is that same individual, under paragraph 3 c of the Policy there is a presumption of abusive registration

Respondent

There has been no response.

7.	Discussion and Findings

‘No response’ cases

Where there is no response to a complaint, the approach to be taken by experts is now well-established. If the Complainant makes out a prima facie case, that case demands an answer. In the absence of an answer, the complaint will ordinarily succeed. The question therefore becomes whether the Complainant has made out a prima facie case.

General

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that

(i)	he 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.

Complainant’s Rights

The complaint is brief and contains no supporting documentation. In fact it appears to have been truncated slightly either in drafting or in transmission: paragraph 1 (b) reads ‘Listers Volkswagen is the’ and then moves into a second paragraph about the absence of any relationship between the Respondent and the Complainant. Nonetheless the Complainant’s unchallenged evidence is that it has been trading as ‘Listers Volkswagen’ for nearly thirty years. I infer that it has built up goodwill in its name and that it has therefore established at least unregistered rights in it. Given that the threshold to establish rights is a low one, the Complainant has done just enough to satisfy the first of the two tests.

The Complainant has rights in ‘Listers Volkswagen’. Ignoring the .co.uk suffix as simply a generic feature of the Nominet registry, the domain name is listersvolkswagen. I conclude that the Complainant has rights in respect of a name which is identical to the domain name.

Abusive Registration

The DRS rules define an 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.

The Complainant draws my attention to paragraph 3 c of the Policy. Paragraph 3 c says that there is a presumption of abusive registration if the Complainant proves that the Respondent has been found to have made an abusive registration in three or more DRS cases in the two years before the complaint was filed. Paragraph 4 c says that, if that presumption applies, the Respondent ‘must’ rebut it by proving in the response that the registration of the domain name is not an abusive registration.

The Complainant does not make the point but, as the Respondent has not made any response, it cannot prove anything ‘in the response’. It follows that, if paragraph 3 c applies, the presumption cannot be rebutted in the way the Policy requires and the presumption of abusive registration will remain undisturbed.

The Complainant includes a list of what it says are abusive registrations that the Respondent may have been found to have made in the preceding two years. It has not shown the dates of the decisions, but I have checked them against the Nominet table from which this list is drawn (the table of cases in which the Respondent is or may be a party found to have made an abusive registration in three or more DRS cases). They go back further than two years.

As the Complainant acknowledges, there also remains the question whether the R Morrison in these cases is the same R Morrison who is the Respondent in the present dispute. The decisions to which the Complainant refers help with that. The following table shows the dates the decision were made and the address or addresses for the Respondent included in them.

Dispute Resolution Service Reference	Domain Name	Address	Date of Decision	
02775	guilbertonline.co.uk	106 St Joseph Street 
Paola PLA06, Malta 	5 Sept 2005	
03021	lintran.co.uk	106 St Joseph Street 
Paola PLA06, Malta 	6 Dec 2005	
03028	harrycorry.co.uk	106 St Joseph Street 
Paola PLA06, Malta 	26 Nov 2005	
03035	searchpress.co.uk	106 St Joseph Street 
Paola PLA06, Malta 	6 Dec 2005	
03408	sheetmusicdirect.co.uk	106 St Joseph Street 
Paola PLA06, Malta 	20 March 2006	
03578	michealpage.co.uk	PO Box 520, Wallan, Victoria 3756
Australia	13 June 2006	
03676	rbsint.co.uk
privalige.co.uk	PO Box 520, Wallan, Victoria 3756
Australia	30 June 2006	
03702	samsungcameras.co.uk	PO Box 520, Wallan, Victoria 3756
Australia
Billing address:
Flat 2 Glenn Flats, Spiru Spiteri Street, Tarxien PLA11, Malta	30 June 2006	
03719	privelage.co.uk	38 Golfwood Close,
Dingley Villate, 3172, Australia	21 July 2006	
03809	priveledge.co.uk	38 Golfwood Close,
Dingley Villate, 3172, Australia	17 Aug 2006	
03836	aerarann.co.uk, aeraran.co.uk	PO Box 520, Wallan, Victoria,
3756, Australia	27 Sept 2006	
04230	bellamagazine.co.uk
	‘Details withheld from public record as respondent claims to be a private individual. Country: Malta’	17 Jan 2007	
04601	nikestore.co.uk	106 St Joseph Street 
Paola PLA06, Malta 	4 June 2007	

The Complaint was filed on 9 April 2008. From the table I conclude that eight of the decisions (from DRS 03578 - michealpage.co.uk - onwards) were made in the preceding two years.

Experts have considered a number of times whether the respondents are all the same
R Morrison. The decision in DRS 03702 (samsungcameras.co.uk) is critical because:

-	a Maltese billing address noted by the Expert in that case establishes a connection between a post office box for an R Morrison in Australia and the R Morrison in Malta

-	a shared email contact address links R Morrison to the two Maltese physical addresses.

It is clear from this that the R Morrison in Malta is the same R Morrison with a post office box in Australia. That leaves just the one other Australian address, in DRS 03719 and 03809 (38 Golfwood Close, Dingley Villate). Given that the name is the same and that we have already seen R Morrison connected with 2 Maltese and one Australian addresses, it seems to me highly likely that the R Morrison at 38 Golfwood Close is the same person. The Expert in DRS 04230 (bellamagazine.co.uk) is satisfied that all the R Morrisons on the list up to that point are the same and the Expert in DRS 04601 (nikestore.co.uk) takes a similar view. I too am satisfied that the R Morrisons on the list are all the same person.

Given that the present Respondent is shown as having the St Joseph Street address in Malta, it follows that he has been found to have made an abusive registration in three or more DRS cases in the two years before the complaint was filed. I conclude that paragraph 3 c applies, that there is a presumption of abusive registration and that, because there has been no response, the presumption cannot be rebutted in the way the Policy requires. The presumption of abusive registration must stand.

Strictly I need not consider the Complainant’s other arguments, but for completeness

(i)	there is no direct evidence of the Respondent’s motive in registering the domain name. That fact that a domain name is parked and offered for sale tells us nothing on its own – it could simply mean that the registrant is seeking to make a legitimate profit from a domain name for which he has no other present use. In any event I agree with the Expert in DRS 04230 who said that the Respondent’s pattern of abusive registrations is likely to reflect a calculation about the overall financial return from a broad strategy of registering a large number of domain names that might generate pay-per-click income, rather than a more narrowly considered view about the use to which any one domain name might be put. But this does not help the Respondent.

(ii)	arguably not all the domain names forming the pattern of abusive registrations correspond to names or trade marks that are well known. Some clearly do (michealpage.co.uk, samsungcameras.co.uk and nikestore.co.uk, for example). Again, though, I assume the basic approach was founded on a broader strategy of registering large numbers of domain names that might generate pay-per-click income – whether or not the names to which they correspond would be regarded as well known. Again, too, this does not help the Respondent.

My conclusion is that the domain name was registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights. At the very least, the Complainant has made out a prima facie case that demands an answer. In the absence of one, the complaint succeeds.

8.	Decision

I find that the Complainant has rights in respect of a name or mark which is identical to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.

In the light of that, I direct that that the domain name be transferred to the Complainant.

Mark de Brunner

6 June 2008