Caudwell Group (20:20) Logistics -v- Morgan Web Services [2004] DRS 1392 (10 January 2004)

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The Complaint was lodged with Nominet on 10th November 2003. Nominet notified the Respondent of the validated Complaint on 13th November 2003. The Respondent failed to respond within the required time period of 15 days and Nominet so informed the Complainant on 9th December 2003. Mediation not being possible in these circumstances, the Complainant paid Nominet the appropriate fee for a decision of an Expert, pursuant to §6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"), before the stated deadline of 23rd December 2003.

Steve Ormand, the undersigned, ("the Expert") confirmed to Nominet on 19th December 2003, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and 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.

There is no evidence before the Expert to indicate the presence of exceptional circumstances that prevented the Respondent from submitting a response to Nominet within the required time period; accordingly, the Expert will now proceed to a Decision on the Complaint in accordance with §15b of the Procedure.

The Complainant has submitted copy documents to show successful registration of the trade mark "caudwell" by Caudwell Communications Ltd in April 1994 and renewal in the name of Caudwell Holdings in January 2000.

The Complainant's letterhead indicates that the Caudwell Group is a trading name of Caudwell Holdings Limited.

1. The Domain Name is identical or similar to a name or mark in which the Complainant has Rights as evidenced by:

(i) The registration of the domain "caudwell.com" held by Caudwell Communication and Technology.

(ii) The registration of the UK trademark for the words/name "caudwell" since 1993.

(iii) The Domain Name registration being held previously by Caudwell Communications Ltd, a company that ceased trading and hence the Complainant was not informed when the registration expired.

2. The Domain Name in the hands of the Respondent is an Abusive Registration because:

(i) The Respondent appears to be blatantly "cybersquatting" and has registered the Domain Name primarily for the purpose of re-selling the Domain Name as evidenced by a screenshot of the site as of Wednesday 5th November 2003.

(ii) The Respondent has also registered "cauldwell.co.uk" on 22/09/03, a common misspelling of the Complainant's company name.

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both legs of the test that:

1. it has rights (as defined in §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 §1 of the Policy).

The Complainant's use of caudwell.com and previous registration of the Domain Name are insufficient to demonstrate rights in the name. In any case, the Complainant presents no evidence to establish the nature of the relationship between Caudwell Holdings Ltd, Caudwell Communications and Technology (the registrant of caudwell.com), and Caudwell Communications Ltd (the previous registrant of the Domain Name).

The Complainant is now the proprietor of registered trademark rights in the name or mark "caudwell" previously held by Caudwell Communications Ltd. The Domain Name comprises the name or mark <caudwell> and the suffix <.co.uk>. The domain suffix is discounted as it is of no relevant significance and wholly generic.

The Expert finds therefore that the Complainant has rights in respect of a name or mark that is identical to the Domain Name.

The Complainant asserts that the Respondent is cybersquatting and has registered the Domain Name in order to sell it, as evidenced by the Domain Name resolving to the Respondent's website where it is advertised for sale.

A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is given in §3 of the Policy. The first part of §3a.i.A is satisfied in that the Respondent has registered the Domain Name primarily for the purposes of selling it. However, there is no evidence to suggest that the Respondent's intention is to sell the Domain Name to the Complainant or 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, as required by the latter part of §3a.i.A.

The Respondent's website has been amended since the Complaint was submitted. The Domain Name is now advertised for sale at £5.90 + VAT. The Respondent's motives in making this change must be questioned. Is this an attempt to undermine the Complainant's case or evidence of the Respondent's true intentions? If it is the latter then why not submit a response to the Complaint?

The 4 step test developed in DRS 00658 (Chivas Brothers Ltd v David William Plenderleith) states that where a respondent registers a domain name:

1. which is identical to a name in respect of which the complainant has rights; and

3. where there is no obvious justification for the respondent having adopted that name for the domain name; and

4. where the respondent has come forward with no explanation for having selected the domain name,

it will ordinarily be reasonable for an expert to infer first that the respondent registered the domain name for a purpose and secondly that that purpose was abusive.

The requirements of steps 1 and 4 are clearly satisfied. Step 3 is also satisfied since the Respondent has not adopted the name for a justifiable purpose but has registered the Domain Name in order to sell it.

Considering step 2, the name may be exclusively referable to the Complainant in the field in which the Complainant operates but in the Expert's opinion the name is not generally well known outside of that field.

Determination of whether a name can be considered "exclusively referable" depends on the perception of the name by a "population" and where the boundaries of the population are drawn. In the Expert's opinion, the fact that the name can be exclusively referred to the Complainant in a particular field means that some internet users could be confused by another party's use of the Domain Name and therefore it should be possible for step 2 to be satisfied.

In this case the Expert considers that step 2 is satisfied and therefore the 4 step test is satisfied.

Accordingly, the Expert finds that on the balance of probabilities the Respondent registered the Domain Name for the purpose contained in §3(a)(i)A of the Policy or for some other abusive purpose and it is therefore an Abusive Registration within the definition of that term in §1 of the Policy.

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, caudwell.co.uk, be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Caudwell Group (20:20) Logistics -v- Morgan Web Services [2004] DRS 1392 (10 January 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1392.html Cite as: [2004] DRS 1392