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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> MRO Software UK Ltd -v- Commerce Internet Ltd [2002] DRS 475 (9 October 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/475.html Cite as: [2002] DRS 475 |
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Nominet UK Dispute Resolution Service
DRS 00475
MRO Software UK Ltd v Commerce Internet Ltd
Decision of Independent Expert
Parties:| Complainant: | MRO Software UK Ltd |
| Country: | GB |
| Respondent: | Commerce Internet Ltd |
| Country: | GB |
Domain Name:
MRO.co.uk ("the Domain Name")
The Complaint was lodged with Nominet on 3 July 2002. Nominet validated the Complaint and notified the Respondent of the Complaint on 8 July 2002 and informed the Respondent that it had 15 days within which to lodge a Response. Because of special circumstances Nominet on 31 July 2002 extended the date for lodging a Response to 9 August 2002. The Respondent lodged a non-standard Response on 9 August 2002 (The Respondent completed the Reply form on the Nominet website rather than the Response form). The Response was forwarded to the Complainant on 12 August 2002 and Nominet advised the Complainant it had 5 working days within which to lodge a Reply. The Complainant lodged a non-standard Reply by sending an e-mail on 20 August 2002. The Informal Mediation stage of the Dispute Resolution service started on 23 August 2002 and finished on 9 September 2002. Informal Mediation was not successful and the Complainant was informed accordingly on 10 September 2002 and invited to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly paid on 17 September 2002. On 19 September 2002, Nominet invited me to provide a decision on this case and on 20 September 2002 I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question. Nominet duly appointed me as Expert.
On 20 September 2002 I requested further statement from the parties in answer to the following questions:The Respondent completed its response on the Nominet web site using the electronic form intended for the Complainant's reply. This means that the electronic form generated by the Nominet web site, for example, referred in places to the Complainant where it was clearly intended to refer to the Respondent. It is very clear where this happened and this was corrected on the hardcopy Response. I have decided to ignore any minor defects in the electronic version of the Response.
The limited matters I can find as facts in this decision are the following:
In summary the Complainant made the following submissions:
In summary the Respondent made the following submissions:
In summary the Complainant makes the following submissions:
In Response to the Request for Further Statements, the Complainant made the following submissions:
In Response to the Request for Further Statements, the Respondent made the following submissions:
The Complainant has to establish under paragraph 2 of the Policy that it has Rights as defined in paragraph 1 of the Policy in respect of a name or mark identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in paragraph 1 of the Policy. Rights, as defined, "includes but is not limited to rights enforceable under English Law". The Complainant has the burden to prove on the balance of probabilities both that it has the Rights and also that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's RightsWhile Paragraph 2 (a) of the Policy requires a Respondent to submit to the DRS if the Complainant asserts to Nominet that it has Rights, Paragraph 2 (b) of the Policy requires the Complainant to prove to me that it has Rights "on a balance of probabilities". The burden on proving this is therefore clearly on the Complainant. Obviously where ownership of a relevant UK or Community registered trade mark asserted, it is easy for an expert to conclude that there is a right enforceable under English Law however, where an unregistered right is or a right not enforceable under English Law is asserted, the Complainant must not only assert that right but produce evidence to prove it. The burden on proving this is clearly on the Complainant.
In this case the Complainant has asserted the following "rights":
Rather belatedly, following my request for further statements, the Complainant has confirmed that the domain name and trade marks "MRO.COM" do not in fact belong to it but to its parent company MRO Software Inc (previously known as MRO.COM, Inc). In addition, purportedly in response to my request for further statements the Complainant has also asserted that ""MRO" is also an unregistered trade mark well recognised within the Complainant's industry of maintenance, repair and operation".
The questions that I feel need to be answered to determine whether the Complainant has Rights are:
Does the ownership by the Complainant's parent company in the "domain name "MRO.COM" and the trade mark "MRO.COM", give the Complainant any Rights.
In my view, they do not. The Complainant has not sought to give any explanation of how Rights might arise in these circumstances and absent any such evidence, I find that the Complainant has not discharged the onus of proving that it has Rights under this head.
Has the Complainant's established a Rights in the name "MRO"?
The Complainant has asserted that prior to the deactivation the Domain Name and its subsequent registration by the Respondent, the Complainant offered services through a website using the Domain Name. These same services were also offered through WWW.MRO.COM. This is the only evidence of use by the Complainant of the Domain Name prior to it being deactivated. There is no evidence of any promotion of the domain name MRO.CO.UK or that significant numbers of people, or indeed any people, associated the Domain Name with the Complainant. There is also no evidence of the numbers of people who accessed WWW.MRO.COM but it seems apparent that web site WWW.MRO.COM was drawn to customers' attention but any reputation in WWW.MRO.COM vests in the parent company.
As indicated above, the Complainant has suggested in its further statement that it is well known as "MRO" but it has adduced no evidence to support this statement. In any event, as this evidence was not filed in the Complaint or the Reply and was not in response to any issue I had raised in my request for a further statement, I determine that this evidence is not admissible. In view of the fact that there is no evidence to support this statement by the Complainant, had I admitted this assertion, it would not have affected my decision. However, parties should not use a request for a further statement by an expert as an opportunity to file fresh evidence unrelated to the request.
To succeed in establishing that it has a Right based on passing off, the Complainant must prove that it had a reputation, and therefore goodwill, in the marketplace by demonstrating that it uses a name which the relevant market recognise relates to the Complainant's goods and/or services to the extent that, if someone else were to use that name, they would be confused as to the origin of those goods and/or services.
The Complainant has asserted that it adopted the name MRO Software UK Limited for just under two years. No evidence has been adduced as to its trading style but, even assuming that it does trade as MRO Software UK Limited I cannot make assumptions about how well it is known under that name and I certainly am not able to form a view as to whether it has any reputation or goodwill in the name MRO. Reputation is not something which I can infer. The existence of the Rights relied on have to be proved by the Complainant.
By failing to prove its reputation and goodwill (which requires evidence such as details of its advertising and PR spend promoting the name together with press clippings showing that it is referred to as MRO), the Complainant has failed to prove on a balance of probabilities that the relevant market associated the "MRO" name with services provided by the Complainant.
In summary, therefore, in respect of the rights claimed by the Complainant, I find that:
For the reasons given above, I find that the Complainant has not proven, on a balance of probabilities, that it has Rights in respect of a name or mark, which is identical or similar to the Domain Name.
Abusive RegistrationAs the Complainant has not proven that it has Rights in respect of a name or mark, which is identical to the Domain Name, it is unnecessary to decide whether the Domain Name in the hands of the Respondent is an Abusive Registration.
Reverse Domain Name HijackingThe Respondent has suggested that the Complainant is attempting to reverse hijack the Domain Name. According to Paragraph 16(d) of the Procedure:
"If the Expert concludes that the dispute is not within the scope of paragraph 2 of the Policy, he or she shall state that this is the case. If, after considering the submissions, the Expert finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, the Expert shall state this finding in the Decision. If the Complainant is found on three separate occasions within a 2 year period to have brought a complaint in bad faith, Nominet will not accept any further complaints from that Complainant for a period of 2 years."
The term "Reverse Domain Name Hijacking" is defined in paragraph 1 of the Procedure as: "using the Policy in bad faith in an attempt to deprive a registered Domain Name holder of a Domain Name".
I find that the dispute is not within paragraph 2 of the Policy but, as this was a domain name apparently previously owned by the Complainant, that this complaint was not brought in bad faith. It was, however, badly framed.
In light of the foregoing finding, namely that the Complainant has not proven on a balance of probabilities that it has Rights in respect of a name or marks which is identical to the Domain Name, I direct that the Complaint in respect of the Domain Name MRO.CO.UK be refused.
Niel Ackermann
Date: 9 October 2002
