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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Godden v Cartronics [2006] DRS 3260 (15 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3260.html Cite as: [2006] DRS 3260 |
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Nominet UK Dispute Resolution Service
DRS No.03260
MR. MARK GODDEN -V- CARTRONICS
Decision of Independent Expert
Complainant: Mr Mark Godden
Country: GB
Respondent: Cartronics
Country: GB
cartronics.co.uk (referred to as the "Domain Name").
The Complaint was submitted to Nominet on 3 January 2006 and hard copies of the Complaint were received in full by Nominet on 4 January 2006.
On 5 January 2006, the Complaint was validated by Nominet and on the same day, the Complaint was sent to the Respondent by post and by e-mail, using the contact details provided in the Respondent's whois information. The Respondent was informed that he had 15 working days, that is until 30 January 2006, in which to respond to the Complaint.
Presumably in error, the contact details provided in the whois details for the Respondent were those of "Netbenefit". Accordingly, on 23 January 2006, the Respondent contacted Nominet by telephone and confirmed that the correct Respondent was Paul Gray t/a Cartronics.
A faxed copy of the Response was received by Nominet on 29 January 2006. On 30 January 2006, a copy of the Response was sent to the Complainant.
On 2 March 2006, the Complainant paid Nominet the required fee for Expert determination pursuant to Nominet's Dispute Resolution Service Policy (the "Policy"). On 3 March 2006, Antony Gold, the undersigned (the "Expert") was appointed to provide a decision in this case.
Complainant:-
The Complainant's submissions are:-
(i) It has registered several UK trade marks corresponding to the word CARTRONICS.
This is evidenced by various copy trade mark registration certificates which were appended to the Complaint, demonstrating that the Complainant had registered CARTONICS and CARTRONICS.CO.UK as word marks in the UK.
(ii) The Complainant has tried to contact the Respondent, but it has only been possible for the Complainant to contact Netbenefit, which refused to supply contact details for the Respondent.
(iii) The Complainant is being disadvantaged as a result of the Domain Name cartronics.co.uk not being within its control.
Respondent:
The Respondent's submissions are:-
(i) The Respondent purchased the Domain Name some time ago as the name matched its company name.
(ii) The Respondent's "Cartronics" company was set up in June 1993.
(iii) The Domain Name was purchased with the intention of setting up a website under that name, although the Respondent has not yet had the opportunity to do so.
(iv) Domain Names are purchased on a "first come, first served" basis, and accordingly, the Complainant is not entitled to prevent the Respondent from using the Domain Name.
Both the Complaint and the Response are notable for being unhelpfully short and vague with little, if any, effort having made by either party to address the applicable provisions of the Policy.
The Complaint
The Complainant's assertion of Rights in a name which is identical or confusingly similar to the Domain Name is substantiated by the certificates of registration for the Complainant's UK trade marks for CARTRONICS and CARTRONICS.CO.UK.
However, the Complaint does not explain why the Domain Name, in the hands of the Respondent, is an Abusive Registration. No information is supplied as to why the Complainant is disadvantaged by the Respondent's registration and use of the Domain Name and no instances are given of damage which has, or might, be sustained by the Complainant.
More significantly, no assertions are made as to why the Respondent's conduct is Abusive. The Complaint merely refers to the difficulties experienced by the Complainant in trying to contact the Respondent, and in particular, the apparent refusal by Netbenefit to provide the Respondent's contact details. It is not apparent whether (and if so, why) the Complainant considers registration of the Domain Name to be Abusive in the light of these difficulties.
Similarly, no information as to the use, if any, of the Domain Name by the Respondent is provided. Other than the Complainant's assertion that the Domain Name "in the hands of the Respondent is an Abusive Registration" the Complaint is silent on this key issue.
The Response
The Respondent claims that he purchased the Domain Name because it matched the name of his company, which he started in June 1993. The Response describes the Respondent type as "business" and the Respondent's name as "Cartronics". However, the Respondent's details do not accord with the limited company address details provided by Nominet (referred to at paragraph 3 above) nor do the directors' details provided by Nominet include the Respondent.
Accordingly, no information has been provided by the Respondent in relation to the nature of its business, or its ownership of goodwill (if any) in the name CARTRONICS. This type of information, with accompanying evidence in support, would be required to demonstrate that (for example) the Respondent is commonly known by the name CARTRONICS. Further details of the Respondent's activities under the CARTRONICS name would be required to demonstrate that the Domain Name was not an Abusive Registration.
The Respondent also explains that he has not yet been in a position to use the Domain Name, but purchased it with the intention of doing so. However, no supporting evidence of this assertion has been provided, such as (for example) the type of preparations made by the Respondent or the specific use he intended for the website to which the Domain Name resolves.
In the normal course, the Expert would not carry out any further searches and would confine his decision to matters raised in the written submissions of the parties. There are many good reasons for this practice. Among them are the fact that carrying out (and relying on) further research means that the Expert will be having regard to matters on which the parties have not had the opportunity to make submissions.
In the present case, however, both the Complaint and the Response are defective. What is the proper course to follow? It is undesirable to make a decision based solely on the documents submitted. It is equally unattractive to ask both parties to provide additional information; that is likely to lead to at least one (and possibly more) rounds of additional evidence and submissions which is not in accordance with the way in which the Policy and Procedure intended the Dispute Resolution Service to function. With this in mind, the Expert has considered whether there is any limited enquiry which can be made which will assist in determining this dispute.
The question of conducting further enquiries in order to bolster Complaints/Responses has been considered in many earlier decisions. In Chivas Brothers Limited -v- David William Plenderleith (DRS 292) the Expert was prepared to carry out additional searches to clarify a particular issue. The main reason for doing so was that the Complaint was otherwise fully and properly prepared. The Expert also noted that the searches would take no more than a few minutes to undertake.
Conversely, the Expert in HIT Entertainment -v- Tom Loosemore (DRS 1544) was not prepared to carry out searches that might improve the Complainant's position because the Complaint itself was defective. This issue was considered again in 2sms.com Limited -v- Global Publications Limited (DRS 2052). In that case, the reasoning in HIT Entertainment was followed and the Expert declined to improve or verify the Complainant's case by carrying out further searches.
I have concluded that it has been appropriate to conduct a single limited search which, for reasons set out in section 8 below, has assisted in determining this dispute. Although, unlike in the Chivas Brothers case, the Complaint has not been properly prepared, similar deficiencies are evident in the Response. Moreover, the search which can be conducted enables a correct decision to be made.
The following material facts are accepted as accurate by the Expert:-
The Domain Name was registered on 14 February 2000.
On 2 April 2003, a UK company called Cartronics Limited was incorporated. The directors of Cartronics Limited are Denise Bliss and Paul Edwards. Their address, and that of the company, is 36 Inkerman Drive, Hazlemere, High Wycombe, Buckinghamshire. These details have been provided by Nominet but there is nothing to suggest that Cartronics Limited is connected with either the Complainant or the Respondent.
On 4 February 2005, the Complainant's UK trade mark for the word CARTRONICS was registered. On 14 June 2005, the Complainant's UK trade mark for the word CARTRONICS.CO.UK was registered.
The website to which the Domain Name resolves is a white page which displays the words "Temporarily Unavailable". The Domain Name has never been used by the Respondent.
In order to succeed, the Complainant must prove, on the balance of probabilities, that:-
(i) it has Rights in respect of a name or mark which is identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy);
(ii) the Domain Name in the hands of the Respondent constitutes an Abusive Registration (paragraph 2(a)(ii) of the Policy).
The Complainant's Rights
The Complainant has provided details of two UK registered trade marks for CARTRONICS and CARTRONICS.CO.UK respectively. For the purposes of paragraph 2(a)(i) of the Policy, I am satisfied that the Complainant has Rights in the name CARTRONICS.
The Expert accepts that the Domain Name is identical to the word CARTRONICS, it being usual to ignore the ".co.uk" suffix.
Abusive Registration
As indicated above, the Complaint does not explain the grounds of the Policy which are relevant to the Complaint and on which the Complainant is seeking to rely. No details have been provided as to why the Complainant considers the registration of the Domain Name to be Abusive.
Abusive Registration is defined in paragraph 1 of 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 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.
A non-exhaustive list of factors which may constitute evidence that the Domain Name is an Abusive Registration are set out at paragraph 3 of the Policy. Although the definition of what constitutes an Abusive Registrations is not restricted to these matters, it is for the Complainant to explain why the Domain Name, in the hands of the Respondent, is an Abusive Registration.
The definition of Abusive Registration
The Domain Name was registered on 14 February 2000. No information has been provided by the Complainant about the length of time for which it has traded as CARTRONICS.
For the reasons set out in section 6 of this decision, the Expert considered whether the deficiencies in the Complaint and Response could be addressed by obtaining a small amount of additional information. The alternative to this course would have been to have dismissed the Complaint on the grounds that the Complainant had failed to establish on a balance of probabilities that the Respondent's registration was Abusive. The Expert decided that if it was unable to find any indication through an internet search that the Respondent had a connection with a business called CARTRONICS then this would lead him to conclude that there was no basis for the Respondent's registration of the domain name and that the registration was accordingly Abusive.
With this in mind, the Expert conducted a Google search using the search terms CARTRONICS and MAIDENHEAD (the town in which the Respondent is based). This revealed a number of entries for online local directories (near.co.uk, townpages.com) which contained entries for a garage by the name of CARTRONICS at the Respondent's address.
There is no indication from the information revealed by the search of the length of time for which the Respondent has traded as CARTRONICS. However, the consequence of the information revealed is to provide some support for the Respondent's assertion that it has a business called Cartronics and registered the Domain Name for use in its business.
Accordingly, the position is as follows;
(1) the Complainant has provided neither proper submissions nor any evidence to support a finding of Abusive registration; and
(2) the search undertaken by the Expert might have bolstered the Complainant's case. As matters have turned out, it has supported the Respondent's assertions.
(3) On the basis of the information available, there is accordingly no evidence that the registration of the Domain Name is Abusive. Amongst other matters there is no evidence that;
(i) the Respondent has acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights (paragraph 3(a)(i)(B) of the Policy).
(ii) the Respondent has acquired the Domain Name primarily for the purpose of unfairly disrupting the Complainant's business (paragraph 3(a)(i)(C) of the Policy).
(4) The information revealed about the Respondent's use of CARTRONICS is such that the Complainant has failed to establish on a balance of probabilities that the Respondent's registration is Abusive.
The Expert does not find that the Complainant has been able, on the balance of probabilities, to satisfy the requirements of paragraph 2 of the Policy, and as a consequence, the Complaint does not succeed and the Complainant's request for transfer of the Domain Name is refused.
Antony Gold
