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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Sheet Music Direct Ltd v Morrison [2006] DRS 3408 (30 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3408.html Cite as: [2006] DRS 3408 |
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Complainant
Complainant: Sheet Music Direct Limited
Country: GB
Respondent
Respondent: Robert Morrison
Country: Malta
Sheetmusicdirect.co.uk (the 'Domain Name')
The complaint was received by Nominet in full on 6 February 2006. Nominet validated the complaint and informed the Respondent, by both letter and by email on the same date, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 1 March 2006, noting that informal mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ('the Policy'). The fee was duly paid on 10 March 2006.
Nominet invited the undersigned, Andrew Murray (the Expert), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as Expert with effect from 17 March 2006.
There are email delivery failure reports on file, generated in connection with Nominet's attempts to notify the Respondent of the complaint and, subsequently, of the fact that the case would be referred to an Expert if the appropriate fees were paid. Following the guidance of the Expert in Harry Corry Limited. v Robert Morrison (DRS 3028) I need to decide what to make of those delivery failure reports.
Following the guidance of that decision my starting point is that those registering domain names with Nominet agree to keep Nominet up to date with their contact details. The Dispute Resolution Service Procedure then says that Nominet will send a complaint using, at their discretion, any of a range of means including:
- email to the Respondent at the contact details shown as the registrant or other contacts in the domain name register database entry for the domain name in dispute
- email to postmaster@
In the event, Nominet sent the complaint by mail to the postal address held on file for the Respondent and sent copies of this correspondence to both [email protected] (an email address for the Respondent held on Nominet's records) and [email protected]. Both e-mail addresses recorded delivery failure.
Given that: (1) it is the Respondent's obligation to keep his contact details with Nominet up to date; and that, in any event, (2) the postal communication sent to the Respondent's postal address was not returned, I am satisfied that Nominet did what it could to notify the Respondent of the Complaint and of how that Complaint was being handled. I therefore propose to proceed on the basis that the Respondent has been properly notified of proceedings under the Dispute Resolution Service.
The Complainant is a wholly-owned subsidiary of Music Sales Limited a sheet music supplier incorporated on 12 June 1936. The Complainant was incorporated on 22 August 1997 with the intention of selling sheet music via digital download operating from a dedicated website at www.sheetmusicdirect.com, this domain name being registered by Music Sales Limited on 9 February 1997 expressly for this purpose.
The Complainant's website presently offers more than 16000 titles by more than 2800 artists (and rising) which may be searched by song title, artist/composer, album title, genre or even by lyric. Sales by the Complainant of sheet music in this form have grown rapidly in the last few years as more and more people have high speed internet connections in their homes. Turnover figures supplied by the Complainant show that sales via the sheetmusicdirect.com website have increased from £57,272 in 2001 to £237,152 in 2004.
The Domain Name at issue was registered on 20 July 2004. It resolves to a Sedo parking page headed 'sheetmusicdirect.co.uk' with the subtitle 'For Sheetmusicdirect try these sponsored results'. The page contains links to other businesses which appear to be suppliers of music scores and sheet music, concert tickets and music downloads.
Complainant:
The Complainant contends that:
1. The Complainant has Rights in the Domain Name because:
a) It is registered at Companies House under the name Sheet Music Direct Limited and has been since 22 August 1997.b) The domain name sheetmusicdirect.com was registered on 9 February 1997 in the name of The Music Sales Group Limited. The Music Sales Group Limited is the ultimate holding company of Sheet Music Direct Limited.c) It has passing off rights in the Domain Name by virtue of its reputation in the name arising through its marketing and sales via the sheetmusicdirect.com domain name. The Complainant having traded under the name Sheet Music Direct since its incorporation via the website www.sheetmusicdirect.com which is a dedicated vehicle for selling sheet music digitally by electronic download.
2. The Domain Name in the hands of the Respondent is automatically abusive because the Registrant has had three or more DRS cases against him in the last two years in which Experts have found Abusive Registration. Indeed, abusive cases in which the Respondent has been involved are shown as the top four cases in the 'Cases Of Respondent Table' on the Nominet website (case numbers DRS 03035; DRS 03028; DRS 03021; and DRS 02775).
3. Given the abusive history of the Respondent, the Domain Name was deliberately registered to unfairly disrupt their business, which, as will be appreciated from the explanation above, is entirely dependent upon the customer using the correct domain name.
Respondent:
The Respondent made no Response to, and raised no challenge to, any of the facts and statements submitted by the Complainant.
General
The Complainant has to establish under paragraph 2(a)(i) of the Policy 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 under paragraph 2(a)(ii) of the Policy that the Domain Name, in the hands of the Respondent, is an Abusive Registration, again as defined in paragraph 1 of the Policy. The Complainant has the burden to prove on the balance of probabilities both that it has such Rights and also that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
7.1 Rights in the Domain Name
The Complainant relies upon the goodwill they have established in the trading name 'Sheet Music Direct'. The definition of 'Rights' for the purposes of the UDRP Procedure and Policy is contained in paragraph 1 of both the DRS Policy Version 2, 'the Policy'. and the DRS Procedure Version 2, 'the Procedure' and is 'Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business'.
The Complainant has been trading since its formation in 1997 under the name Sheet Music Direct Limited and has clearly spent a considerable amount promoting its brand through the sheetmusicdirect.com website. The Complainant has provided considerable evidence of the extensive promotion it has undertaken of its brand and its success within industry circles. It has clearly built up goodwill in the name Sheet Music Direct Limited and in sheetmusicdirect.com and therefore Rights in the name 'Sheet Music Direct'.
Ignoring the 'co' and 'uk' suffixes (as generic features of the domain name registry itself) I therefore conclude that the Complainant has Rights in a name that is identical to the Domain Name.
7.2 Abusive Registration
To be an Abusive Registration the Domain Name must be one which either '...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 has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights' (paragraph 1 of the Policy)
In this claim the Complainant relies upon paragraph 3(c) of the Policy which states:
'There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).'
In support of this contention the Complainant refers the Expert to Search Press Limited v Robert Morrison (DRS 3035) [Decided 6 December 2005]; Harry Corry Limited v Robert Morrison (DRS 3028) [Decided 26 November 2005]; Lintran v Robert Morrison (DRS 3021) [Decided 6 December 2005]; and Guilbert UK Holdings Limited v Robert Morrison (DRS 2775) [Decided 5 September 2005].
Having examined these four decisions, the Expert is satisfied that each did relate to the Respondent in this dispute. As a result the Expert finds that the Claimant has established a rebuttable presumption under paragraph 3(c) of the Policy that the registration of the Domain Name in the hands of the Respondent is Abusive.
This being the case the Respondent is required under paragraph 4(c) of the Policy to rebut this presumption. The Respondent having failed to enter a response cannot achieve this and therefore the Expert finds that the Complainant has Rights in the Domain Name in terms of paragraph 1 of the Policy and Procedure and that the Complainant has proven their claim under paragraph 3(c) of the Policy. Further I find that the Respondent has failed to satisfactorily rebut the claim that the registration in the hands of the Respondent is an Abusive Registration under paragraph 4(c).
Decision:
For the reasons set out above, namely that the Complainant has Rights in respect of a name or mark which is similar or 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 sheetmusicdirect.co.uk be transferred to the Complainant.
Andrew D. Murray 30 March 2006
