£ist$ v Ells [2004] DRS 1952 (21 October 2004)

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The Complaint was lodged with Nominet on August 12, 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on August 18, 2004 and informed the Respondent that he had 15 working days within which to lodge a Response. The Respondent provided a non standard electronic response on August 19, 2003 which was communicated to the Complainant the same day. Complainant’s Reply was received on August 24, 2004 and communicated to the Respondent the same day.

Mediation not succeeding, on October 5, 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”).

Dawn Osborne, the undersigned, (“the Expert”) confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.

The Defendant registered the Domain Name on 8 March, 2004 and has indicated that he wishes to market the domain to list brokers it is currently being used to sell generic domain names.

1. The Domain Name is identical or similar to a name in which the Complainant has rights.
2. The Domain Name in the hands of the Respondent is an abusive registration.
3. The domain is currently not utilised by the registrant. When the Complainant contacted the Respondent with regard to the Complaint he offered to sell it to the Complainant for around £6000. The Respondent also told the Complainant "I plan to market the domain to list brokers.". This is the industry in which the Complainant is engaged. The name has been acquired for the purposes of selling on to a competitor of the Complainant.
4. The Complainant Lists Ltd was incorporated on the 14th October 2003, company registration 4931712. This pre-dates the Respondent’s registration of the domain name - 08th March 2004. The Complainant was registered with the Direct Marketing Association as "Lists" on the 1st March 2004. This pre-dated the Respondent’s registration of the Domain Name. This is the main trade body for the Direct Marketing Industry, including list brokers. The Complainant has also requested to register "£IST$" as a trade mark in the UK, the registration is currently pending in the UK. Companies who market lists to the public and other businesses are called list brokers. We are List Brokers. No other list brokers in the UK have the same or even similar name. “Lists” identifies the company specifically and so lists.co.uk would be the Complainant’s assumed web site address were anyone to try to find the Complainant on the Internet. Due to the above, the Complainant considers it unfair for the lists.co.uk domain name to be used by any other company and any such use would cause confusion within the Direct Marketing & List Broking Industry.

Respondent:

2. The Domain Name lists.co.uk was purchased as it was publicly available to register. It is a single word generic name. The Respondent is making no attempt to pass off or infringe on the rights of the Complainant in any way now or in the future.

3. The Domain Name was purchased with a view to marketing it to any individual or business which handles “lists”. Lists are not specific to any industry.

4. The Domain Name would be extremely valuable and useful for anybody who wants to make lists ofanything available to the public. The domain would be marketed to such an individual or business with the technical reference to the fact that the Domain could be prefixed with a unique host such as http://top100.lists.co.uk, http://music.lists.co.uk; http://price.lists.co.uk; http://mailing.lists.co.uk etc.

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).

The Complainant must prove it has enforceable legal rights in a name or mark which is identical or similar to the Domain Name. The definition of “Rights” in the Policy is not confined to intellectual property rights and could conceivably extend to other enforceable legal rights.

The Complainant does not appear to have any registered trade marks for “Lists”. It is possible that the Complainant has built up some goodwill in the LISTS or £ist$ name for its services, but there is no evidence of use sufficient to give such rights in the Complaint. It is certainly possible that “lists” is purely descriptive in the context of the Complainant’s services. It is unsatisfactory that the Panel is left to guess at the position and it has not been adequately addressed in the Complaint. There is, however the question of the company name of the Complainant Lists Limited. It is clear that the company has rights in this company name and it is similar to the domain name.

Accordingly, the Expert finds that the Complainant has demonstrated that has rights in respect of a name or mark, which is similar to the Domain Name.

This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” 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 that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant ‘factors’ in paragraph 3 are to be found in subparagraph i and ii, which read 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.”

There is no evidence of confusion. Fyrther, in the view of the Expert the Complainant has not proven that the offer to sell the domain name to the Complainant by the Respondent is abusive. There is no evidence that the Complainant has been specifically targeted by the Respondent. At first sight the Domain Name looks generic and could be used in a purely descriptive way. It is not abusive to sell generic domain names.

It is indeed a pity that the parties were not able to resolve this matter at mediation and they should perhaps be urged to renew their negotiations to resolve this matter.

Accordingly, the Expert is unable to determine that the registration is an Abusive Registration within the definition of that term in paragraph 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 but that it has not been proven that the Domain Name, in the hands of the Respondent, is at present an Abusive Registration, the Expert directs that the Domain Name remain in the hands of the Respondent.

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