Insight Seminars v Insight Seminars [2004] DRS 1692 (23 June 2004)

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The Complaint was lodged with Nominet on 19 April 2004. Nominet validated the Complaint and informed the Respondent on 22 April 2004 that the Dispute Resolution Service (“DRS”) had been invoked and that the Respondent had 15 working days (until 17 May 2004) to submit a Response.

No response was received. The Complainant was informed accordingly and, on 2 June 2004, the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 6 of the Nominet DRS Policy (“the Policy”).

On 7 June 2004 Nominet appointed Andrew Clinton (“the Expert”). On 8 June 2004 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.

Clause 15b of the Procedure for the conduct of proceedings under the DRS ("the Procedure") provides that, in the absence of exceptional circumstances, if a Party does not comply with any time period laid down in the Policy or the Procedure, the Expert will proceed to a Decision on the Complaint.

The Expert is of the view that there are no exceptional circumstances and, as the Respondent has failed to submit a Response within the specified time limit, the Expert can proceed to a Decision.

Clause 15c of the Procedure states that, in the absence of exceptional circumstances, if a Party does not comply with any provision in the Policy or the Procedure the Expert will draw such inferences from the Party’s non compliance as he or she considers appropriate.

The Domain Name was registered on 27 July 2001. The Registrant is Insight Seminars and the Administrative Contact is Menis Yousry (“Mr Yousry”) of 5 Birchwood Avenue, London, N10 3BE.

“Insight Seminars, a California corporation which has licensee’s worldwide has trademark rights to the name Insight Seminars. Insight Seminars have been offered in the United Kingdom for a period of 25 years. Menis Yousry registered the domain name insight-seminars.co.uk with our permission, acting as a licensee of Insight Seminars on 27-July-2001. Mr Yousry signed a license agreement which spelled out these rights. Please see the attached license agreement, specifically Paragraph 3 and Exhibit B.

(i) Rights in a name or mark. Insight Seminars is a trade mark (unregistered in the United Kingdom), and Mr Yousry has signed a license agreement that spells out that trade mark. Insight Seminars has used this trade mark world wide for a period of 25 years. We provide personal growth and development training world wide using this trade mark. Mr Yousry has abused the registration of this trade mark.

(ii) Abusive Registration ii. Mr Yousry has used the Insight Seminars domain name to forward requests for our seminars to his new company -- The Essence Foundation. The domain name being used has confused people. People looking for Insight Seminars were then told that The Essence Foundation was the new Insight Seminar and were not given our contact information.

Evidence of Abusive Registration: In August of 2000 Menis Yousry re-signed a Licensing Agreement to continue as our licensee in the United Kingdom. His company at that time was named Rosepark Ventures Limited. Insight Seminars was at that time a wholly owned subsidiary of the University of Santa Monica. On 27 July 2001, with our permission, he obtained the domain name insight-seminars.co.uk. On 27 December 2001 Mr Yousry changed the name of his organization from Rosepark Ventures Limited to Insight Seminars Ltd. Again, he did this with our permission and the understanding that Insight Seminars was a trademark of our company.

In May of 2003 at a City Director meeting, which Mr Yousry attended, we announced that Insight Seminars would emerge as a separate legal entity, a California corporation, and that all current license agreements under the University of Santa Monica would end on 31 August, 2003. All participant were asked and all agreed that the terms and conditions of the current license agreement would transfer to Insight Seminars and that operations would continue with each licensee under the law of estoppel (sic).

In August of 2003 Mr Yousry stopped paying license fees to Insight Seminars. Though he stopped paying license fees, he continued to offer Insight Seminars and continued to use trademarked and copyrighted materials to do so. Sometime in August or September, Mr Yousry folded Insight Seminars, Ltd into a separate non-profit called The Essence Foundation. During the months of September through November we tried repeatedly to have Mr Yousry honour the terms and agreements of his license. Finally on November 21, 2003 we had our attorney send Mr Yousry a cease and desist letter.

In December of 2003, Mr Yousry changed the name of the seminars in the United Kingdom from Insight Seminars to Essence and continued operating. Mr Yousry kept the Insight Seminars web site active for a period, using enquiries to that site as a source of registrations for his renamed seminars. Sometime in December of 2003 Mr Yousry completed the new Essence Foundation web site and started forwarding requests to the old Insight Seminars to the Essence Foundation web site. This action severely disrupted our business in the United Kingdom and we started receiving complaints from previous seminar graduates that they could no longer find a way to contact us. During this time period, when people called the office to determine when the next Insight Seminar was to be held, his staff told them the next date of the Essence Seminar and further told them that it was in fact the Insight Seminar, just that the name had been changed.

In December of 2003 we were in discussion with our legal counsel and his corresponding firm in London to determine the proper legal approach to collect payment of back license fees, return of copyrighted and trademarked material, including the company name and domain name as well as other materials. In January of 2004, a gentleman named Tim Hedger came forward representing Mr Yousry with the objective of finding an amicable solution to the disputes. Mr Hedger was able to gain payment, return some copyrighted manuals and turn off the forwarding of to the Essence Foundation web site. He was not able to cause Mr Yousry to return the domain to us or to have the Insight Seminars, Ltd registration returned to us. Mr Hedger determined that he no longer wanted to associate with Mr Yousry and has terminated that association.”

Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities: first, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and, secondly that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

The Complainant says it has trademark rights (unregistered in the UK) in the name Insight Seminars. The Complainant has produced a number of agreements. It places particular reliance on an agreement described as the Insight License Agreement Dated August 2000 (the “Licence Agreement”) between Insight Seminars Worldwide and a company called Insight Seminars Ltd. Mr Yousry is described as the Managing Director of Insight Seminars Limited. The Licence Agreement records that the Complainant owns rights in certain trademarks, service marks and trade names as listed in Exhibit B. The list of marks contained in Exhibit B includes the name Insight Seminars. Insight Seminars Limited was granted rights to use the trade names in the United Kingdom by clause 3 of the Licence Agreement. There was a previous agreement in similar terms governing the use of the name Insight Seminars entered into the previous year.

The Complainant says that Insight Seminars have been offered in the UK and worldwide for the period of 25 years. The Respondent has not sought to challenge the Complainant’s assertion that it has rights in the name Insight Seminars; indeed, one of the main purposes of the Licence Agreement was to allow the use of that name under licence in the UK. The Expert finds, on the balance of probabilities, that the Complainant does have rights in a mark (“Insight Seminars") that, save for the addition of a hyphen, is identical to the Domain Name (“Insight-Seminars”).

Abusive Registration is defined in paragraph 1 of the Policy to mean 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.

Non-exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy 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.

The Complainant cannot succeed on the basis that the registration or acquisition of the Domain Name took unfair advantage of or was unfairly detrimental to the Complainant's rights (as per paragraph 1(i) of the Policy) as the Complainant's case is that Mr Yousry registered the Domain Name with its perrmission, acting as a licensee of Insight Seminars on 27 July 2001.

The Complainant’s greviance instead relates to the use of the Domain Name after it says the Respondent ceased to have the rights to use the name Insight Seminars. The Complainant says that the Respondent stopped paying licence fees in August 2003. The Complainant has produced a copy of a letter dated 21 November 2003 from its US Attorneys to the Respondent which refers to a notice of termination served pursuant to the Licence Agreement. The letter complains about the unauthorised use of licensed materials which it claims is a breach of the Licence Agreement and amounts to an infringement of the Complainant's intellectual property rights. There is no record of a reply to that letter in the papers before the Expert.

The Complainant also says that the Respondent has used the Domain Name to forward requests for the Complainant's seminars to his new company the Essence Foundation. The Complainant has produced an e-mail from a graduate from an Insight Seminar dated 8 February 2004 in the form of an enquiry about attending a further Insight Seminar, called Insight II, in London and asking when the next Insight II seminar was going to take place. The reply from the Essence Foundation says the next Advance (formerly Insight II) seminar will be on 25-28 March 2004 at the Hampstead Britannia Hotel in London. The e-mail is from enquiry@essence-foundation.com and contains a reference to a website at www.essence-foundation.com.

The e-mail enquiry was sent to london@insight-seminars.org.uk which is not the Domain Name (as it contains is a different suffix) but it does support the Complainant’s case that there was a deliberate attempt to confuse people who were interested in attending on or enquiring about Insight Seminars. There was no attempt to explain that the Essence Foundation course was not connected with the Complainant. The impression is given that the Insight II Seminar has simply been renamed Advance.

The Complainant has also produced a number of e-mails from Tim Hedger ("Mr Hedger") who, according to the Complainant, represented Mr Yousry with the objective of finding an amicable solution to the disputes between the Complainant and the Respondent. It appears from those e-mails that the Complainant received payment of outstanding licence fees and the return of some licensed material.

The e-mail from the graduate dated 8 February 2004 and the reply from the Essence Foundation (referred to above) were sent to Mr Hedger with the observation that Essence was apparently advertising the Advance seminar as formerly known as Insight II. Mr Hedger accepts that enquiries about Insight have not been handled in a satisfactory way and says that steps were being taken to ensure that there was a distinction between Insight Seminars and the Essence Foundation. In addition Mr Hedger says the intention was “to explicitly ensure that if people choose to request information about or sign up for an Essence seminar they are clearly told it is an Essence seminar and not an Insight one (and that these are two different things).” The response on behalf of the Complainant is that as long as the Essence Foundation continues to promote itself under an Insight Seminars web domain the efforts being made to distinguish the two organisations fall short of the mark. There was no attempt at the time to resist the accusation that the Insight Seminars website was being used to further the interests of the Essence Foundation.

The Complainant also raises an unchallenged assertion in the Complaint that for a period the Domain Name re-directed to the Essence Foundation website but this appears to stop after Mr Hedger became involved. Accordingly, whilst some steps were taken to distinguish the two organisations, it is clear from the exchange of e-mails that the Respondent was not prepared to transfer the Domain Name to the Complainant.

The Expert is satisfied, on the balance of probabilities, that after termination of the Respondent's rights to use the name Insight Seminars the Respondent used the Domain Name in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights. The Expert therefore finds that the use of the Domain Name amounts to an Abusive Registration.

There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4a of the Policy. The Respondent has not filed a Response and there is no evidence to suggest that any of the factors in paragraph 4 are made out.

The Expert finds that on the balance of probabilities the Complainant has rights in a name which is identical or similar to the Domain Name and that the Domain Name is, in the hands of the Respondent, an Abusive Registration. The Expert directs that the Domain Name be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Insight Seminars v Insight Seminars [2004] DRS 1692 (23 June 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1692.html Cite as: [2004] DRS 1692

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