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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Salvation Army [2003] DRS 1340 (15 December 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1340.html Cite as: [2003] DRS 1340 |
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1. Parties:
Complainant: The Salvation Army
Country: GB
2. Domain Name:
salvationarmy.co.uk (“the Domain Name”)
3. Procedural Background:
The Complaint is dated 22 October 2003 and was received by Nominet on 24 October 2003. Nominet validated the Complaint and notified the Respondent of the Complaint by letter dated 29 October 2003, informing the Respondent that he had until 19 November 2003 to respond to the Complaint. The Respondent failed to respond. Mediation not being possible in those circumstances, Nominet so informed the Complainant on 24 November 2003.
The Complainant duly paid the appropriate fee for a decision of an Expert pursuant to paragraph 8 of the Nominet UK Dispute Resolution Service Procedure (“the Procedure”).
On 2 December 2003, Tony Willoughby, 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 and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any):
The Respondent has failed to submit a Response to Nominet in time in accordance with paragraph 5(a) of the Procedure.
Paragraph 15(b) of the Procedure provides inter alia that “if in the absence of exceptional circumstances, a party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a decision on the Complaint.”
In many cases, as in this one, the principal disadvantage attached to failing to respond will be the loss of an opportunity for the Respondent to demonstrate, pursuant to paragraph 4 of the Policy, circumstances tending to show that the Domain Name is not an abusive registration. Where, as here, the Respondent has a case to answer (ie the Complainant has made out a prima facie case) and there is no answer, the Complaint must ordinarily succeed.
5. The Facts:
The Salvation Army (“the Complainant”) is such a well known institution in the United Kingdom that it needs no introduction. It is registered as a charity in the United Kingdom.
On 23 September 1999 the Respondent registered the domain name salvationarmy.co.uk (“the Domain Name”). The Domain Name does not appear to connect to an active internet facility.
The Complainant claims to have attempted to contact the Respondent, but without success. Nominet UK has attempted to contact the Respondent on several occasions but, again, without obtaining any response.
6. The Parties’ Contentions:
Complainant:
The Complaint is sparse in the extreme. The substance of it is reproduced in full in the next section.
The Complaint identifies the Complainant, points out that the Domain Name is identical to the Complainant’s name and asserts that the Complainant has rights in its name. It asserts that the Domain Name in the hands of the Respondent is an abusive registration and seeks transfer of the Domain Name. The basis for the abuse allegation appears to be that the Domain Name is the Complainant’s name and is effectively identical to the Complainant’s name and was used without the permission of the Complainant.
Respondent:
The Respondent has not responded
7. Discussion and Findings:
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, 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, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
On the face of it, this ought to be a very straightforward case. The Complainant is a household name in this country and elsewhere. The Domain Name is the Complainant’s name and cannot sensibly refer to anybody else other than the Complainant. The Domain Name was registered in September 1999 without the Complainant’s consent and appears never to have been used. The Respondent has not responded to any communications sent to him by either the Complainant or Nominet UK.
With that set of facts it ought not to be too difficult for the Expert to conclude that the Complainant has rights in respect of a name which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an abusive registration on the basis that:-
(a) the Expert is entitled to assume that the Respondent registered the Domain Name for a purpose and the Expert can think of no legitimate purpose;
(b) it is difficult to see how any use could be made of the Domain Name which does not infringe the Complainant’s rights, unless it be for a non-commercial tribute/criticism site;
(c) if it were to be used for a tribute/criticism site, the onus would be on the Respondent under paragraph 4(b) of the Policy to show that the Domain Name is not an abusive registration and the Respondent has provided nothing.
However, the Expert has not found this case to be quite that simple. This is because the Complaint is, as indicated above, sparse in the extreme. The substance of it reads precisely as follows:-
“The Complaint
I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.
I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.
I, Christian Cundall is an official representative of The Salvation Army UK Territory, part of my job remit is the protection of The Salvation Army’s name on the internet. The Salvation Army is an international Christian church working in 109 countries worldwide. As a registered charity (reg no 214779), The Salvation Army demonstrates its Christian principles through social welfare provision and is one of the largest, most diverse providers of social welfare in the world. The Salvation Army has been in existence since 1864. We have tried via telephone to contact the current registrant but have not received a reply, we have no business with this registrant and have never contacted them with reference to domain registration. The domain salvationarmy.co.uk is made by joining the words “Salvation Army” and the same as The Salvation Army’s main domain “salvationarmy.org.uk” hence the complaint.”
No effort has been made to make out a case. The Complainant clearly takes the view that those bare facts speak for themselves and are sufficient.
In coming to the conclusion that he has, the Expert has had to remind himself that the Policy is intended for all comers, not just parties who have gone to the trouble and expense of employing lawyers. Moreover, where a registrant takes somebody else’s name, a famous and highly distinctive name at that, without permission, and uses it as a domain name without adornment, then an explanation is called for. If no explanation is forthcoming, the Complaint should ordinarily succeed. In this case the Expert is in no doubt that the just result is that the Complaint should succeed.
The minimalist approach that the Complainant has adopted is a high risk strategy but on this occasion it has paid off. The Expert finds that the Complainant has common law rights in its name (no other institution could operate under that name without there being a real risk of deception/confusion) and the Expert finds that the registration is in the hands of the Respondent an Abusive Registration. The registration was clearly made for a purpose and in the particular circumstances of this case, there being no obviously legitimate purpose and the Respondent not having come forward with any explanation, the Expert is of the view on the balance of probabilities that (a) the purpose behind the registration was abusive and (b) probably with a view to selling the Domain Name to the Complainant for an excessive sum.
8. Decision:
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, salvationarmy.co.uk, be transferred to the Complainant.
_________________
Tony Willoughby Date
