Guanghwa Company Ltd -v- Proton [2004] DRS 1575 (7 May 2004)

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3.1 A hardcopy of the Complaint was received in full by Nominet on 1st March 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on 4th March 2004.

3.2 No Response was received by the Respondent and therefore informal mediation was not possible. On 15th April 2004 the Complainant paid the fee to obtain the Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy").

3.3 On 15th April 2004, Nick Phillips, the undersigned ("the Expert"), 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.

4.1 The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the procedure for the conduct of proceedings under the Dispute Resolution Service ("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 provisions in the Policy or Procedure, the Expert will draw such inferences from the Parties non-compliance as he or she considers appropriate".

4.3 Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. 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.

5.2 In the Complaint the Complainant asserts that Guanghwa Company Limited has been a registered company in the UK for over 30 years and has operated a website from the Domain Name for at least 3 years. The Complainant also asserts that the name Guanghwa is "extremely unique" being of Chinese origin and is "practically" the only business with this name in the UK.

5.3 The Complainant asserts that it previously owned the Domain Name but did not renew it in time and the Respondent was able to take advantage of this by registering the Domain Name for itself. The Domain Name does not appear to have been used by the Respondent to point to a website and is currently pointed at a holding page which indicates that a site is, “under construction”.

5.4 The Complainant asserts that the effect of the Respondent registering the Domain Name will be to damage the reputation of the Complainant as it will have no control over what its old web address is used for and further that people emailing the old business address will unknowingly be sending emails to an anonymous person based in Russia.

6.1 In its Complaint, the Complainant makes the following submissions:
6.1.1 The name "Guanghwa" is an unusual name in the UK and the Complainant has Rights in it by virtue of its use of this name as a Company name in the UK for over 30 years and because it has maintained a website under this name for at least 3 years;
6.1.2 The Domain Name is identical or similar to a name or a mark in which the Complainant has Rights;
6.1.3 The Respondents registration of the Domain Name could potentially damage the Complainants reputation as a business because the Complainant has no control over what the Domain Name, which used to point to its website, is used for;
6.1.4 People emailing the Domain Name will unknowingly be sending emails which are intended for the Complainant and which could include personal or financial information to an anonymous person in Russia.
6.1.5 The Complainant seeks a transfer of the Domain Name to it.

Under clause 2 of the DRS Policy ("the Policy") the Complainant is required to show, on the balance of probabilities that:

7.1 It has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

7.2 The Domain Name, in the hands of the Respondent, is an Abusive Registration.

7.3 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.

7.4 The Policy defines Rights as including but not being limited to "… rights enforceable under English law". This has always been treated in decisions under Nominet's DRS as a test with a low threshold to overcome and I think that must be the correct approach. There may be a question here as to which name or mark I am being asked to decide if the Complainant has Rights in. Is it for example just "Guanghwa" or is it the Complainant’s full name “Guanghwa Company Limited”. I do not think it matters much as the words "Company" and "Limited" are in common usage and are purely descriptive. They do not therefore add much or anything in a trade mark or “Rights” sense to the use of the word or mark “Guanghwa” and therefore my decision is likely to be the same in either case i.e. if I decide the Complainant has Rights in “Guanghwa Company Limited” then it will also have Rights in “Guanghwa”. I will therefore proceed to determine whether the Complainant has Rights in the name or mark “Guanghwa”.

7.5 The Complainant has provided no evidence of its use of the name "Guanghwa". It does, however, assert in its Complaint that Guanghwa Company Limited has been a registered company in the UK for over 30 years and that it has operated the website www.guanghwa.co.uk for at least 3 years. These assertions are unfortunately not supported by evidence. However, a company search against Guanghwa Company Limited does show that the Complainant was registered as a UK company over 20 years ago on 9th March 1982.

7.6 I have also carried out a simple "Google" search against the name “Guanghwa” in the UK. A number of the results returned appear to refer to the Complainant’s business which sells oriental art and books. This demonstrates, on at least a superficial level, that the Complainant has used the word or mark “Guanghwa” in trade and also that it is not a commonplace word in the UK.

7.7 Accordingly, I am satisfied that the Complainant by virtue of its long-standing company registration and also because it has clearly been trading under the name “Guanghwa” in the UK, has rights in the name “Guanghwa”.

7.8 Next, I must satisfy myself that the name in which I have found that the Complainant has Rights is identical or similar to the Domain Name ignoring the first and second level suffixes. Having held the name in which the Complainant has Rights is the name "Guanghwa" this is clearly identical to the Domain Name. However and for completeness, if the name in which the Complainant has Rights is not for some reason the name “Guanghwa” by itself but the full Company name, “Guanghwa Company Limited” then the name in which the Complainant has Rights is, at the least, similar to the Domain Name. It is enough that I am satisfied that the Complainant’s name and the Domain Name are either similar or identical. Nothing therefore turns on whether the name in which the Complainant has Rights is “Guanghwa” or “Guanghwa Company Limited”.

7.9 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. An Abusive Registration is defined in the Policy 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 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.

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

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:

A primarily 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 Respondents 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 primarily 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. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or

iv. It is independently verified that the Respondent has given false contact details to us.

b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web site is not in itself evidence that the Domain Name is an Abusive Registration.

7.11 In its Complaint the Complainant has made two assertions which are directed at proving its allegation that the Respondent has made an Abusive Registration. These can be summarised as follows from the Complaint:

i. It could potentially damage the reputation of the Complainant as a business as the Complainant has no control over what was its old web address is replaced with; and
ii. People emailing the Complainant's old business address will unknowingly be sending an email to an anonymous person in Russia that could include personal or financial information.

7.12 It is worth repeating that it is for the Complainant to establish on the balance of probabilities that the Domain Name in the hands of the Respondent is an Abusive Registration.

7.13 I accept that the Claimant's two assertions, if substantiated by evidence, could well lead to a finding that the Respondent's registration and/or use of the Domain Name is an Abusive Registration. However, the Complainant has provided no evidence to support either of these assertions and indeed has provided no supporting documents or evidence with its Complaint of any form. It is true that the Respondent has failed to respond to this Complaint. This cannot, however, be taken as any admission on the Respondent's part and it is for the Complainant to prove all aspects of its case on the balance of probabilities. Additionally, paragraph 3(b) of the Policy specifically precludes me from taking the Respondent's failure to use the Domain Name for the purposes of email or website as evidence that the Domain Name is an Abusive Registration.

7.14 Nominet's guidance to completing the on-line Complaints Form (which the Complainant has used in this case) refers to the Complainant being required to provide the "fullest evidence possible". The Complainant is also directed to highlight any of the non-exhaustive list of factors which may be evidence of Abusive Registration, which are set out in paragraph 3 of the Policy. The Complainant has clearly failed in both respects.

7.15 Notwithstanding this and given the assertions which the Complainant has made in its Complaint it seems to me that the most likely of the non-exhaustive list of factors are those at (i)B and C and at (ii) of paragraph 3 of the Policy. I will therefore deal briefly with these factors specifically below. I will not deal specifically with the other factors because, for example, there is no allegation that the Respondent has acquired or registered the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant.

The Policy does not define what a "Blocking Registration" is. I am, however, aware of two previous DRS decisions which discuss this issue. These are the cases of Thomas Cook (UK) Ltd –v- Whitley Bay Uncovered - DRS00583 and the earlier case of Peoplesoft UK Ltd –v- K L Kane - DRS00120. In the earlier of these decisions, the Peoplesoft decision, the Expert defined a "Blocking Registration" as:

"A Blocking Registration is a registration that is unwarranted at the time of registration. It is a domain registration that is:
a. Designed to prevent a legitimate owner of rights in a name from registering and using the associated domain name; and
b. Carried out in circumstances when (sic) Respondent is unable to demonstrate a prima facie right in the name or valid reason to make the registration."

In the subsequent Thomas Cook case the Expert disagreed with this definition on the basis that it could be taking to be implying that the second limb of it was shifting the burden of proof away from the Complainant and onto the Respondent. Instead, the Expert in Thomas Cook replaced this definition with his own and said the following:

"It seems to be that there are two critical features of a "Blocking Registration". The first is that it must be against the name or mark in which the Complainant has rights. The second one is one of motivation. Where a registration is alleged to be a "Blocking Registration", a Complainant, if it is to succeed, must prove on the balance of probabilities that a Respondent's principal objective in registering or retaining of the disputed domain name was to prevent the Complainant from doing so. The absence of any use of the site by the Respondent for a legitimate business or other purpose of its own may assist in establishing the motivation, but the absence of any such use does not necessarily rule out a legitimate interest."

It seems to me that whatever definition I adopt in this case I have the greatest of difficulties in finding that this is a “Blocking Registration”. Even if I adopt the test in People Soft at its most liberal with the reversal of the burden of proof in the second limb of this test, I cannot see how the Complainant has overcome the first limb. It has failed to provide any evidence at all and has not proved that the Respondent's registration was "designed to prevent a legitimate owner of rights in a name from registering and using the associated domain name". Similarly, if I use the test in the Thomas Cook case, the Complainant has clearly failed to show that the "Respondent's principal objective in registering or retaining the disputed domain name was to prevent the Complainant from doing so".

The Complainant's contention is, of course, that it is losing trade because customers will go to the website www.guanghwa.co.uk thinking that it is the Complainant's website and when they do not find details of the Complainant's business they will go elsewhere. There is no evidence that this is actually happening or indeed of the internet presence maintained by the Complainant either now or previously under the Domain Name. For this reason I do intend to deal any further with this point.

Another of the non-exhaustive list of factors which can be evidence that the Domain Name is an Abusive Registration is that there are 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. As with the possibility that this is a blocking registration and/or that it was a registration made primarily for the purpose of unfairly disrupting the business of the Complainant which I have discussed above, this may very well be the case. Unfortunately, what the Complainant says in its Complaint never goes beyond the level of bare assertion and there is absolutely no evidence to support this. I therefore cannot find that the Complainant has established that this factor is present.

7.16 I should say that I have some sympathy for the Complainant. It has apparently been maintaining its website at the Domain Name for a number of years and then when it failed to renew the registration on time someone else got in and registered the Domain Name in its place although it must be said, has totally failed to produce any evidence of any of these facts. The Complainant has however not helped itself by not presenting any information either about its own use of either the Domain Name, the names “Guanghwa” or “Guanghwa Company Limited” or in relation to its allegation that the Respondent has made an Abusive Registration.

7.17 In relation to my finding that the Complainant has Rights in a name or mark similar to the Domain Name I have been prepared to look at a company search against the Complainant’s name and to carry out a simple internet search against the Complainant’s name to give me a feel for how long the Complainant has been around and to verify that it has been trading. However as I have said the test for whether parties has Rights in a given name or mark has a low threshold and I am more than satisfied on the basis of some very straightforward enquiries that the Complainant has met this standard.

7.18 By contrast the test for whether a Respondent has made an Abusive Registration cannot be satisfied by the kind of straightforward enquiry which I have described above. I could for example decide that because the Complainant has Rights in a word or mark which it says is, in its own words, “…extremely unique as it is Chinese in origin and [the Complainant’s] is practically the only business with this name in the UK” then the only possible reason why the Respondent has registered this domain name was to take unfair advantage or to be unfairly detrimental to the Complainant’s rights i.e. that it is a "blocking registration" or has been registered primarily for the purpose of unfairly disrupting the business of the Complainant. I have however seen no evidence that the Complainant’s name is unique, of the affect of the registration on the Complainant’s business or indeed of anything else from the Complainant and without any such evidence I simply do not see that I can make that finding.

7.19 The kind of evidence which I would expect to have seen to support the Complainant's contentions need not have been extensive or expensive to obtain. It could for example have included the following;

· Evidence that the Complainant previously operated a site under the Domain Name Guanghwa.co.uk and examples of that site;
· Evidence that the Complainant's customers are likely to send emails to the Domain Name and to attempt to access a site to which the Domain Name is pointed. I do not think this evidence need have been complicated, but could for example have taken the form of letters from a few customers of the Complainant who were confused or who could say that they were likely to be confused in this way;
· Details of any approach which the Complainant has made to the Respondent and particularly any demands for payment which the Respondent has made to transfer the Domain Name to the Complainant.
· Evidence which demonstrates that the name "Guanghwa" is unique in the UK (or at least is virtually unique) and therefore that no other person could possibly have wanted to use this name or mark perhaps by producing extracts from business directories and the like.

7.20 Therefore, and although I find that the Complainant has proved, on the balance of probabilities, that it has Rights in a name which is either identical or similar to the Domain Name, it has not proved that the Domain Name is in the hands of the Respondent an Abusive Registration. Indeed, the Complainant has advanced no evidence in order to demonstrate Abusive Registration as is required under the Policy. I must therefore reject the Complaint.

In the circumstances I find that although the Complainant has Rights in a name or mark which is similar or identical to the Domain Name, the Complainant has not made out its case that the Domain Name is an Abusive Registration in the hands of the Respondent and I therefore decide that the Complaint should be rejected.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Guanghwa Company Ltd -v- Proton [2004] DRS 1575 (7 May 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1575.html Cite as: [2004] DRS 1575

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