Akamai Technologies Inc -v- Goldstein [2003] DRS 1378 (24 December 2003)

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3.1 The complaint was entered on to the Nominet system on 10 November 2003. Nominet validated the complaint on 13 November 2003 and on the same day despatched a copy of the complaint to the Respondent by post and e-mail to the addresses recorded in the register entry for the Domain Name. The Respondent was informed that he had 15 days within which to lodge a Response. The Respondent failed to respond and was informed by a letter dated 9 December 2003 and an email of the same date that if the Complainant paid the requisite fees by 23 December 2003 the matter would be referred to an Expert for a decision under the Dispute Resolution Service. On 11 December 2003 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (the "Policy"). No response of any kind has been received from the Respondent.

3.2 I, Stephen Bennett, the undersigned, (the "Expert") have confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and have further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.

4.1 The Respondent has not submitted any response to Nominet in compliance with paragraph 5a of the procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure").

4.2 Paragraph 15b 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."

4.3 There is no evidence before the Expert to indicate the presence of exceptional circumstances. Nominet has attempted to communicate the complaint to the Respondent by e-mail and post. The efforts made by Nominet are in accordance with the Procedure and accordingly, I will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.

4.4 Paragraph 15c of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure ..., 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 in this case and so will draw inferences as appropriate.

5.1 The Domain Name, akamai.co.uk, was registered on 1 December 1999 with the registrant being named as "Alex Goldstein".

5.2 The current registration status is recorded as "renewal required" in Nominet's records and the same records show that the Domain Name is also currently "detagged" indicating that no registrar is currently responsible for it.

6.1 The Complainant contends that it has rights in the name "Akamai". The basis for the claim to rights in this name is a community trade mark registration ("CTM") for the word AKAMAI and the Complainant's use of the name to promote its business as a provider of "...the World's largest on demand distributed computing platform providing content delivery and e-business management services to its customers" (as stated in the complaint). The Complainant relies upon claimed use of the AKAMAI name since 1998.

6.2 In relation to the issue of Abusive Registration, the Complainant puts forward a case that the Domain Name is a blocking registration. The Complainant states that it has registered country code domain names such as akamai.fr and akamai.de (in addition to akamai.com) in all countries where subsidiaries have been established. The Complainant has a UK subsidiary (Akamai Technologies Limited) which was established in January 2000. The Complainant states that its UK subsidiary has a turnover of several million pounds and has an urgent business need for the Domain Name to establish a local website.

7.1 Other than a copy of the details of the Complainant's CTM, the complaint refers to no documentary evidence to support any of the Complainant's submissions. The complaint is, however, the subject of a declaration signed on behalf of the Complainant stating that the information in the complaint is true to the best of the Complainant's knowledge. Accordingly, I will treat the complaint itself as the Complainant's evidence. That does not mean that the submissions made in the complaint are to be treated as proof, merely that those statements can be weighed to assess the Complainant's case.

7.2 The Complainant relies on its CTM and its use of the AKAMAI name as its trading name to establish its rights in that name. The CTM application was filed on 4 May 1999, the application was published on 15 November 1999 and the registration date is 8 June 2000. The Complainant also relies on use of the AKAMAI name beginning in 1998. The dates for the CTM application and publication of the application are sufficient to establish Rights prior to the date of registration of the Domain Name.

7.3 The Complainant also relies on earlier use of the AKAMAI name beginning in 1998. Whilst there is no documentary support for this in the complaint, it is permissible to rely upon the complaint, verified by a statement of truth, as evidence on the point. That evidence is not disputed and I have no reason to doubt it. Use of a trading name is also sufficient to establish Rights in a name. On the basis of the use of the AKAMAI name as described in the complaint and on the basis of the CTM, I find that the Complainant had Rights in the name AKAMAI as at the date of registration of the Domain Name and as at the date of the complaint.

7.4 For the purposes of assessing whether the name in which the Complainant has Rights and the Domain Name are similar or identical, it is well established that the ".co.uk" suffix can be ignored. Accordingly, the Domain Name is identical to the name in which the Complainant has Rights.

7.5 I find that the Complainant has Rights in the AKAMAI name and that the Domain Name is identical to that name.

7.6 To be an Abusive Registration the Domain Name must be one which "...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...".

7.7 Section 3 of the Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These are as follows:

(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 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.

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

7.8 The Complainant relies upon the Domain Name being registered as a blocking registration to establish Abusive Registration.

7.9 The term "blocking registration" is not defined in the Policy nor have the appeal decisions under the Policy given a definitive meaning. The effect of the Respondent holding the Domain Name is that the Complainant cannot obtain that Domain Name or operate a website using the Domain Name in the address. There may be other variant domain names incorporating the word AKAMAI together with some other, descriptive, term which the Complainant could use as a ".co.uk" domain name. These would however be of lesser value and would not fit with the way the Complainant operates (as described in the complaint) by using simply the name AKAMAI with country code suffixes. To that extent, the Domain Name in the hands of the Respondent is having a blocking effect. In my opinion, the Policy requires something more than this for the Domain Name to be a "blocking registration". According to the Policy, at paragraph 3(a)(i)(b), the Respondent must have registered the Domain name "as a blocking registration". This suggests a purpose and therefore some degree of knowledge or intent when registration took place.

7.10 Are there then any circumstances indicating that the Respondent has registered the Domain Name "as a blocking registration"? The only circumstances which appear from the complaint are the timing of the registration (use of the name by the Complainant in 1998 followed by registration of the Domain Name in 1999) and the fact that the name AKAMAI is such an apparently unusual word. It is seemingly either a made-up word or one borrowed from a language other than English. Either way, to my knowledge, it is a particularly uncommon and unusual word in the English language. Given the addresses for both parties are in the USA, it seems reasonable to consider the word in the context of the English language. There is therefore apparently something of a coincidence that the Complainant should have started trading under the name AKAMAI in 1998 and the Respondent should have registered the Domain Name incorporating the identical, apparently made-up, name in December 1999.

7.11 Is this coincidence sufficient to establish Abusive Registration? On its own, I believe it is not sufficient. However, in accordance with paragraph 15(c) of the Procedure I am entitled to draw such inferences as I consider appropriate from the Respondent's failure to respond. The complaint containing the allegations of Abusive Registration has been forwarded to the Respondent by Nominet by post and by e-mail. The e-mail copies were reported as undeliverable, according to the Nominet file. The Respondent's postal address appears to be complete and there is nothing in the material supplied by Nominet to suggest the complaint was not received by the Respondent by post. In these circumstances, I believe it is appropriate to take the non-response into account.

7.12 The inference I draw from the failure to respond coupled with the unusual nature of the name and the timing of registration is that the Domain Name was registered as a blocking registration and is therefore an Abusive Registration in the hands of the Respondent. Had there been a response it may have been that the Respondent would have put forward a contrary position, perhaps putting forward grounds under paragraph 4 of the Policy to demonstrate a legitimate reason for registration. That, however, is not the case and I find that the Domain Name, on the balance of probabilities, is an Abusive Registration in the hands of the Respondent.

8.1 The Complainant has Rights in the name AKAMAI. The Domain Name is identical to the name in which the Complainant has Rights. The Domain Name in the hands of the Respondent is an Abusive Registration.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Akamai Technologies Inc -v- Goldstein [2003] DRS 1378 (24 December 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1378.html Cite as: [2003] DRS 1378