Luxair -v- Zahur [2003] DRS 1176 (23 October 2003)

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Complainant: Luxair Societe Luxembourgeoise de Navigation Aerienne S.A. (“Luxair”)

A complaint (“the Complaint") was received in full by Nominet on 20 August 2003. Nominet forwarded the Complaint to the Respondent on 26 August 2003 and notified him that he had 15 working days (i.e. until 17 September 2003) to respond. The Respondent failed to respond. Mediation not therefore being possible Nominet notified the Complainant that the Complaint would be referred to an independent expert upon payment of the requisite fee. The Complainant paid the fee on 6 October 2003 for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy").

On 10 October 2003 and in accordance with paragraph 9 of the Nominet Dispute Resolution Service Procedure ("the Procedure") I, Simon Chapman, ("the Expert") confirmed to Nominet that I was impartial and independent and knew of no reason why I should not accept an appointment to act as Expert in this matter.

I was subsequently appointed by Nominet on 13 October 2003 and my decision is due by no later than 27 October 2003.

The Respondent has not submitted a Response to the Complaint. From the papers that have been submitted by Nominet to me it is apparent that efforts have been made to send the Complaint to the Respondent by post and e-mail to the contact details held on Nominet’s Register. Although it would seem that e-mail contact with the Respondent failed, insofar as the e-mail was returned with a “mailbox unavailable” notice, as far as I can tell from the file of papers, there is no reason to believe that the letter sent from Nominet by post failed to bring the Complaint to the attention of the Respondent.

When registering a UK domain name, applicants agree to be bound by Nominet's Terms and Conditions. Clause 2.3 of those terms and conditions provides that:?

'You must inform us promptly of any change in your registered details, and those of your Agent if applicable. It will be your responsibility to maintain and update any details you submit to us and to ensure that your details are up to date, and accurate. In particular, it is your responsibility directly or by your Agent to ensure that we have your full and correct postal address.”

"Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i. if sent by facsimile, on the date transmitted; or
ii. if sent by first class post, on the second Day after posting; or
iii. if sent via the Internet, on the date that the communication was transmitted; and
iv. where communications are received by more than one method, at the earliest date received;
and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.”

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.

I now move on to consider the consequences of the Respondent not submitting a response.

The Procedure envisages just such a situation and provides in Paragraph 15 that:?

“c. If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate."

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision.

I will draw such inferences from the Respondent's failure to respond as I think appropriate, but must bare in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say, or that the Complaint has not in fact come to their attention.

The Complainant is the operator of an airline business and is the proprietor of the Community Trade Mark “LUXAIR” No 1348986 registered as of 18 October 1999 in classes 37, 39, and 42.

From the whois query result, it would appear that the Disputed Domain Name was registered by the Respondent on 18 February 2000. It is presently detagged, and as such is not being actively used by the Respondent.

On 14 July it would seem that the Complainant wrote to Nominet requesting contact details for the Respondent and also asking that Nominet forward a letter on to the Respondent, which asserted the Complainant’s rights and requested that the Disputed Domain Name be transferred. It is unclear from the papers that I have whether Nominet ever did so.

The Complainant submits that the Disputed Domain Name is identical to its trade mark.

The Complainant asserts that use of the Disputed Domain Name is a breach of the Complainant’s rights and an Abusive Registration because the Respondent has either given false contact details or has registered the Disputed Domain Name as a blocking registration, evidenced by the Respondent’s failure to respond to attempts made by the Complainant to contact him.

To succeed in this Complaint the Complainant must, in accordance with Paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that (1) 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 (2) the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

The absence of a response from the Respondent does not mean that the Respondent is deemed to have no answer to the Complaint, but rather the Complainant must still make out its case to the Expert on the balance of probabilities. Where a Respondent does not avail himself/herself of the opportunity to respond to the Complaint it might be said that the Complainant's task is all the easier, but as I have previously indicated, notwithstanding the absence of a Response, it is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

As indicated above, the Complainant has asserted that it has Rights in a name or mark which is identical to the Disputed Domain Name.

The Complainant’s registered trade mark is clearly identical to the Disputed Domain Name insofar as the Disputed Domain Name is for the word LUXAIR.

For the reasons set out above, I find that the Complainant has established that it has Rights in respect of a name or mark which is identical to the Disputed Domain Name.

An 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 be evidence of an Abusive Registration are set out in Paragraph 3. They are:?

“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 Respondent's 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.

The Complaint only goes as far as asserting that use of the Complainant’s mark is a breach of the Complainant’s rights, that the Respondent has given false contact details and that this or his failure to respond to the Complainant’s correspondence is indicative of a blocking registration.

The DRS is not fundamentally a determination of “rights” per se in the sense of determining whether the rights afforded by a registered trade mark are infringed, but is an assessment in the context of the terms and conditions applying to domain names registered in the UK as to whether their registration or use is contrary to those terms and conditions. As such a bald statement on its own that the Complainant’s rights are breached, is not a ground for finding that the Disputed Domain Name is an Abusive Registration.

The list set out above indicates that the existence of false contact details might be grounds for holding that a domain name is an Abusive Registration, but this requires a finding that the details provided are false, and independent confirmation that such is the case. In the present complaint there is no evidence to suggest that the Respondent’s contact details are false, notwithstanding the return of Nominet’s e-mail notification of the Complaint, and it is also unclear why the Respondent took steps to get Nominet to send its initial letter of demand rather than use the contact details on the whois search facility on Nominet’s website.

In any event the notification of Complaint sent in the post by Nominet does not appear to have been returned and the Complainant has provided no independent evidence that the Respondent’s contact details are false.

I do not follow the logic of the Complaint which asserts that the use of false contact details by the Respondent and/or his refusal to respond to the Complainant is evidence that the registration is a “blocking registration”. Whether or not the registration is being used to prevent the Complainant’s access to the internet or UK users of the internet does not seem to me to have anything to do with whether the Respondent can or wants to be contacted by the Complainant.

Insofar as the Complainant’s allegation of blocking might be said to stand on its own regardless of the reference to the Respondent’s failure to communicate with the Complainant, no evidence has been provided by the Complainant that confirms either the intent of the Respondent to block the Complainant from access to the internet or UK users, or that the effect of the registration is exactly that.

The factors contained in Paragraph 3 of the Policy, are expressly non-exhaustive and it is necessary to remember the general definition of what an Abusive Registration is (see above). What is obvious in this dispute is that the Respondent has chosen to register a domain name that is particularly distinctive in that it is a made up word, and from what I can gather from a cursory internet search, is exclusively associated with the Complainant. The Complainant asserts that it has rights, and naturally given the adoption of a name that is identical to the mark in which those rights exist, it is entitled to put the proposition that the intention of the Respondent when registering the Disputed Domain Name was likely to be an intention which took unfair advantage of or was unfairly detrimental to those rights.

In such circumstances it is my belief that the Complainant has raised a prima facie case that the Disputed Domain Name is an Abusive Registration, and that in those circumstances it falls to the Respondent to explain their conduct.

The Respondent has chosen not to file a Reply and in the absence of a credible explanation for its selection and use of the Disputed Domain Name, I am of the view that the Complainant has discharged its burden of proving that the Disputed Domain Name in the hands of the Respondent is an Abusive Registration.

For the reasons set out above, in my opinion the Complainant has proven on the balance of probabilities that (i) it has Rights in respect of a name or mark which is identical to the Domain Name; and (ii) the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds and I direct that the Domain Name be transferred to the Complainant forthwith.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Luxair -v- Zahur [2003] DRS 1176 (23 October 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1176.html Cite as: [2003] DRS 1176

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