EMI Records Ltd -v- Russell [2004] DRS 1582 (26 April 2004)

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The Complaint was lodged with Nominet in full on 20 February 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on 25 February 2004 and informed the Respondent that it had to lodge a Response by 18 March 2004. No Response was filed. On 2 April 2004 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”).

On 26 April 2004, Cerryg Jones, 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.

The Complainant is EMI Records Limited, the well known record company. The Complainant is the proprietor of numerous trade mark registrations for the word mark “ABBEY ROAD” in class 9 (records) in Japan no 4619040, filed on 28 May 2001; UK trade mark, no 1388119, filed on 15 June 1989 in class 40 (record pressing, production of records, and related activities) and no. 1278280 1 October 1986 in class 41 (recording studio services); and a Community Trade Mark no 001406735 filed on 1 December 1999 in a wide variety of classes including classes 9, 40 and 41. The Complainant is also the registrant of number of domain names that incorporate the mark ABBEY ROAD.

The Respondent registered the disputed domain name, abbeyroadstudious.co.uk, on 25 October 1999. The domain name in dispute resolves to a website run by UK.2 net which sets out various contact details for the Respondent and offers the domain name for sale by auction with an offer price of £5,000.

The Complainant says that the Respondent has registered the domain name without any intention of using it for legitimate purposes but solely to profit from its sale.

It is alleged that the Respondent’s address, which according to the whois search is on Abbey Road, does not confer legitimacy upon the registration because it is clear that the domain refers to Abbey Road studios, not her alleged address (because the word “studios” is superfluous).

In the Complainant’s submission, the Respondent’s motive is to take advantage of the fame and reputation of the ABBEY ROAD mark. It is further alleged that the reputation of the ABBEY ROAD name means that the domain name is likely to be associated with the Complainant. It is alleged that the Respondent is not likely to have registered a domain that simply reflected her street address, nor would such a domain name be auctioned for £5,000.

Paragraph 2 of the Policy requires that for the Complainant to succeed it has to prove to the Expert on the balance of probabilities, that it has rights 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).

The Complainant has rights in the name “ABBEY ROAD” by virtue of its trade mark registrations in the UK and elsewhere. The Expert finds that the Complainant has rights in respect of a name or mark that is similar to the domain name.

The Complainant also has to show that the domain name is an abusive registration. Paragraph 1 of the Policy defines this 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 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration.
The substance of the Complaint is that first, the Respondent’s motive was simply to obtain an illegitimate profit, as evidenced by the offer for sale by auction, by taking advantage of the fame and reputation of the ABBEY ROAD trade mark; and secondly, that those coming into contact with the domain would assume that it was associated with the Complainant.
The non-exhaustive list of factors under the Policy that are potentially relevant in the light of the Complainant’s submissions are contained in subparagraphs 3 a i, A and (arguably) C and (arguably) 3 ii that is:
3 a 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; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
3 a 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.
The Respondent has not filed a Response. This makes the Complainant’s task of establishing an abusive registration easier because the Complainant need only establish a prima facie case, though it is still necessary to establish such abusive conduct on a balance of probabilities.

It seems clear that the Respondent’s primary purpose in registering the disputed domain name is to sell it, and that the offer for sale exceeds the Respondent’s likely direct costs of acquisition or registration. However, the offer for sale is not specifically directed to the Complainant or a competitor of the Complainant. Furthermore, domain names are tradeable assets and, an offer for sale by auction, is not necessarily evidence of an abusive registration. There is no direct evidence that the Respondent has sought to unfairly disrupt the Complainant’s business, nor is there any direct evidence that anyone in fact believes that the domain name is connected to the Complainant.
However, as I have already mentioned, the factors listed in the Policy are non-exhaustive examples of what may constitute an abusive registration. The issue to be determined is whether the facts and matters raised by this Complaint, in the absence of any Response, establish on a balance of probabilities that the domain name was registered or has been used in a way which has taken unfair advantage of or was unfairly detrimental to the Complainant’s trade mark rights in the ABBEY ROAD name.
In my view, the Complaint does establish the required unfair advantage or detriment because of the following reasons:
1 First, the Respondent’s address does not per se legitimise the registration. The inclusion of “studios” within the disputed domain name strongly suggests that the Respondent did not register the domain name to reflect her alleged address but simply to profit from the reputation of the ABBEY ROAD name. Furthermore, the papers provided to me show that the Royal Mail could not deliver the hard copies of the correspondence and Complaint sent to the Respondent by Nominet because the Respondent is unknown at that address. I am not convinced therefore that the Respondent’s address given on the whois search results is genuine in any event.
2 Secondly, although it is possible to foresee various domain names incorporating the ABBEY ROAD name that might serve as legitimate descriptors rather than abusive registrations (fan-of-abbeyroad studios.co.uk for example), the Respondent’s registration does not fall within this type of category; there is a complete absence of any element within the domain name that may serve to differentiate it from the ABBEY ROAD trade mark. In these circumstances, the registration amounts to pure impersonation.
3 Although the offer for sale is to the public at large, it operates as a threat hanging over the head of the Complainant. It is plainly abusive for a domain name to be auctioned to the public at large where the value reflects the fame and reputation of a mark that belongs to another. In my view such an offer for sale takes unfair advantage of the Complainant’s trade mark rights in the ABBEY ROAD name.

In my view, the disputed domain name has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's rights. Accordingly, I find that the domain name is an abusive registration.

In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration, I direct that the domain name be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> EMI Records Ltd -v- Russell [2004] DRS 1582 (26 April 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1582.html Cite as: [2004] DRS 1582