Grey Matter Ltd -v- Grey Matter Advanced Marketing Ltd [2003] DRS 864 (4 April 2003)

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The Complaint was originally lodged with Nominet on 3 January 2003. Nominet validated the Complaint, and notified the Respondent of the Complaint. However, Nominet became aware through a Companies House search that the Respondent is in liquidation, and as a result the Complaint was re-validated on 17 February 2003. The liquidator of the Respondent was informed by post and e-mail on 17 February 2003 that he had 15 working days in which to respond to the Complaint. The Respondent failed to respond. Mediation was therefore not possible. Nominet so informed the Complainant and Respondent on 13 March 2003. On 18 March 2003 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

On 19 March 2003 Bob Elliott, the undersigned (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as 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 or impartiality.

The Respondent has not submitted a response to Nominet in time (or at all) in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”).

Paragraph 15b of the Procedure provides, inter alia, that “If, in the absence of exceptional circumstances, a Party does not comply with any time period set down in the Policy or the Procedure, the Expert shall proceed to a Decision on the Complaint”.

Paragraph 15c of the Procedure provides that “If, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or Procedure, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate”.

There is no evidence before the Expert to indicate the presence of exceptional circumstances. The Expert will therefore proceed to a Decision on the Complaint notwithstanding the absence of a Response.

The Complainant is Grey Matter Ltd. In its Complaint, the Complainant says that it is a software reseller which was formed 20 years ago, and has now become a significant player in the IT arena. It says that it was first registered as a company on 12 October 1982. It registered the domain name greymatter.co.uk in 1995, and 2 further domain names, greymatter.com and grey-matter.com in 1999. The device mark “Grey Matter” and the word mark “Grey Matter” were registered with the UK Trademark Registry under numbers 2289478 and 2289479, on 8 December 2002. The Complainant does not provide any evidence to support these assertions.

The Complainant further says that it is a leading supplier of technical software, with a turnover of over £12 million, and a staff of 60 plus. It claims to have built an enviable reputation with its customer and prospect base of over 60,000 contacts, as well as with its 500 software suppliers including leading brand names such as Microsoft, Adobe and Computer Associates.

The Complainant says that its web-site catalogue is extensive, it has many registered users, and 20% of its business is currently conducted via the web. It says that it produces an electronic newsletter which is distributed weekly to over 7,000 subscribers. It also claims other promotional activities, such as a quarterly magazine, seminars and events, direct mail activity, advertising, PR and distribution of its “Corporate Pack”. It says that it was voted a regional winner in the UKOnLine for Business E-Commerce Awards 2002. None of this material is supported by evidence.

As regards the Respondent and the Domain Name, the Complainant says that the Domain Name is “now owned by Robert Hughes”, and that it is being used by Grey Matter Development and Hosting Limited. The Complainant says that “this company” (presumably Grey Matter Development and Hosting Limited) “occupies a similar market space as ourselves and is causing confusion in the market place with several of their e-mails being addressed to us and customers calling us in error”. This is the entirety of the material which has been provided to the Expert by the Complainant in respect of the Domain Name, and the Respondent. The registry entry provided to the Expert by Nominet indicates that “Robert Hughes” is the billing contact, and that the Domain Name was registered in December 1999. A WHOIS query result shows that Grey Matter Development and Hosting Limited is the Registrant’s Agent. A search of records maintained by Companies House confirms that that company is not in liquidation. A print out of the home page of the web-site at the Domain Name dated 7 January 2003 provided by Nominet appears to show a current web-site, which was confirmed by the Expert’s own inspection of the web-site on 20 March 2003.

As indicated above, the Complainant refers to “confusion in the market place”, as a result of several of “their (presumably those of the Respondent or Grey Matter Development and Hosting Limited) e-mails being addressed to us and customers calling us in error. Based upon that confusion the Complainant’s contention, in its entirety, is as follows:-

“In view of the fact that Grey Matter Ltd has been a registered company for over 20 years and we have the trade mark for the words “Grey Matter”, we believe that we are the rightful owners of the domain name greymatterltd, and that it is extremely important for Grey Matter Development and Hosting to cease using this URL in order to avoid further confusion in the IT market place and potential damage to our brand”

The Complainant must prove its case to the Expert on the balance of probabilities (2.b, Policy). It must prove 2 elements: firstly that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; secondly that the Domain Name, in the hands of the Respondent is an Abusive Registration. Both “Rights” and “Abusive Registration” are defined in paragraph 1 of the Policy.

“Rights” as defined in the Policy “includes, but is not limited to, rights enforceable under English law”. The Complainant has referred in its complaint to both its registered company name (which is identical to the Domain Name), and to a trade mark “Grey Matter”, which is identical to the Domain Name, save for the addition of “Ltd”. Although both contentions are unsupported by evidence, neither has been contested by the Respondent. In the circumstances, the Expert finds that the Complainant has Rights in a name or mark, which is identical to the Domain Name.

The Policy (paragraph 3) contains a non-exhaustive list of factors which may be evidence of an Abusive Registration. Although the Complaint is not specifically addressed to any of those factors, to the Expert, it would appear that only one of those non-exhaustive list of factors is likely to be in issue namely “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”, paragraph 3.a ii of the Policy.

As noted above, the Domain Name is identical to the Complainant’s name. The Complainant contends that the company Grey Matter Development and Hosting Limited (not the Respondent, but instead apparently the Respondent’s Agent) “occupies a similar market space” to the Claimant. The Complaint also refers to confusion in the market place, but its only examples of that are said to be several e-mails being addressed to the Complainant, and customers (presumably of the Respondent) calling the Complainant in error.

3.a ii of the Policy is one of a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. Abusive Registration, according to paragraph 1 of the Policy “means a Domain Name which either 1) 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 2) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights”.

The onus is on the Complainant to establish its case on the balance of probabilities as regards the question of Abusive Registration. However, although uncontradicted, the Complainant’s contentions are unsupported by evidence. The Complainant has provided nothing to the Expert which would suggest what the Respondent’s motives are, or were, in respect of the Domain Name. There is nothing which is addressed to the “unfairness” of the Respondent’s acquisition or use. The web-site at the Domain Name appears, at least at face value, to be a genuine offering, and the Complainant does not apparently seek to criticise the web-site. This raises many questions as to the Respondent’s activities, such as the link between the Respondent and the company specifically referred to in the Complaint, Grey Matter Development and Hosting Limited; the nature of the e-mails and telephone calls apparently received by the Complainant; and the timescales involved (the Domain Name was first registered in 1999), to mention but a few. None of these questions is, in the Expert’s opinion, answered by the Complaint. The Expert is not prepared to indulge in speculation to try to answer some of these questions. Although the Respondent has not responded to the Complaint, it is the Complainant’s task to make out a coherent case under the Policy, which it has not done. Under the circumstances, the Expert finds that the Complainant has not made out its case as to Abusive Registration on the balance of probabilities.

The Expert is therefore unable to find that the Domain Name is an Abusive Registration.

The Expert finds that the Complaint has Rights in the name Grey Matter Ltd, and that the name in which the Complainant has Rights is identical to the Domain Name. However, the Expert does not find that the Domain Name is an Abusive Registration in the hands of the Respondent.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Grey Matter Ltd -v- Grey Matter Advanced Marketing Ltd [2003] DRS 864 (4 April 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/864.html Cite as: [2003] DRS 864