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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Planet Dance v Edoco Ltd [2007] DRS 4924 (13 September 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4924.html Cite as: [2007] DRS 4924

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Nominet UK Dispute Resolution Service DRS 04924 PLANET DANCE v. EDOCO LIMITED Decision of Independent Expert
1. Parties:

Complainant: PLANET DANCE

Country: GB

Respondent: EDOCO LIMITED

Country: GB

2. Domain Name:

planetdance.co.uk ("the Domain Name")

3. Procedural Background:

The Complaint was received by Nominet electronically and in hardcopy on 25 July, 2007. Nominet validated the complaint and informed the Respondent, (at the registrant's recorded address) on 26 July, 2007, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 17 August, 2007) to submit a Response. The mailed copy of the letter was returned by The Royal Mail as undelivered and marked "RETURN TO SENDER - NOT AT THIS ADDRESS" on 14 August, 2007. An email copy sent to one of the Respondent's recorded email addresses was also returned undelivered. An email copy to a second address ([email protected]) appears to have been delivered. No substantive Response or other reply of any sort was received by the specified deadline. Nominet informed the Complainant accordingly on 20 August, 2007, 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 received by Nominet on 22 August, 2007.

Nominet invited the undersigned, Keith Gymer ("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 as of 28 August, 2007.

4. Outstanding Formal/Procedural Issues (if any):

None.

5. The Facts:

The Complainant, Planet Dance, is an unincorporated business, established in 2005 under the proprietorship of J.M. Buckle. It is in business as a provider of designer dance wear. It has an online store accessible at www.planetedance.com (domain name registered in December 2004) and www.planetdancedirect.co.uk (domain name registered in July 2005). The proprietor has UK Trademark Registrations 2436541A for "PLANETDANCE" and "PLANET DANCE" (as a series of two marks) and 2436541B for "PlanetDance" (with a device element) dating from October 2006.

From the WHOIS records, the Domain Name planetdance.co.uk was first registered on 14 October, 2006 for the Respondent, EDOCO LTD, identified as a UK Limited Company (No. 05498389).

6. The Parties' Contentions:

Complainant:

The Complainant has asserted that:

1. The Complainant has Rights in respect of a names or marks which are identical or similar to each of the Domain Names (Policy Paragraph 2a(i)); and

2. Each of the Domain Names, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).

The Complainant made supporting submissions (edited) as follows:

(1) The Complainant has rights in the Domain Name because:

(a) it trades under the name PlanetDance and has done so since July 2005.

(b) it has advertised using the name PlanetDance since September 2005 and spent considerable sums on advertising. [Some evidence of Google advertising spend was attached to the Complaint.]

(c) it has the following registered UK trade marks

(i) PLANETDANCE, registration number 2436541A

(ii)PlanetDance, logo registration number 2436541B

(d) it has built up a substantial reputation within the UK as a supplier of dancewear products under the trading name of PlanetDance

(2) There is no relationship between the parties and the Complainant has never had any dealings with the Respondent.

(3) The Domain Name in the hands of the Respondent is abusive because;

(a) it is used by the Respondent in a way which already has confused people into thinking that it was controlled by the Complainant. The Complainant's other domain names are planetdance.com and planetdancedirect.co.uk. The www.planetdance.co.uk website currently offers dancewear products by the Complainant's direct competitors [The Complaint included example printouts from www.planetdance.co.uk.]

(b) the Respondent has established no legitimate business under the Domain Name and their use of the Domain Name causes detriment to the Complainant by diverting business from its own legitimate website.

(c) it is one of a series of registrations that the Respondent has made, which because of their number, type and pattern prove that the Respondent is in the habit of making registrations of domain names which correspond to the trade marks or other well known names in which the Respondent has no apparent interest:

(i) the Respondent is the same Respondent as in DRS 4522 - PJ Hayman & Company Limited v EDOCO Limited.

(ii) the Respondent is the same Respondent as in DRS 4325 - Royal Bank of Scotland v Easy Domain Connect Limited Company.

The Complainant requests the remedy of transfer of the Domain Name.

Respondent:

The Respondent made no Response to, and raised no challenge to, any of the facts and claims asserted by the Complainant.

7. Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is 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.

Complainant's Rights

The Complainant in this case has asserted that it has rights in the name PLANETDANCE, and that this name is identical or similar to the Domain Name planetdance.co.uk.

The Complainant has provided sufficient, unchallenged evidence of its use of, and trade mark and domain name registrations for, its PLANETDANCE name.

The Expert is satisfied that the Complainant has rights in the name PLANETDANCE. The distinctive element of the Domain Name, "planetdance.co.uk", is identical to the Complainant's name. Consequently, the Expert concludes that the Complainant does have Rights in respect of a name or mark, which is identical to the Domain Name.

Abusive Registration

The Complainant also has to show that the Domain Name is 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 are set out in Paragraph 3a of the Policy. Potentially applicable in the present case in particular are the examples in Paragraph 3a(ii), (iii) and (iv):

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 The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent  is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv It is independently verified that the Respondent has given false contact details to us [Nominet];

However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

At the time of the present Complaint, as noted by the Complainant, the Respondent has been named as the losing Respondent in at least one previous DRS case – DRS 04522 – where the domain name at issue was held to be an Abusive Registration.

The Complainant has also asserted that the Respondent is the same party as in a second case, DRS 04325. The Respondent in that case was named as Easy Domain Connect Ltd. This is a different registered company (No. 05940857) from the Respondent in the present case, EDOCO LTD. There is some evidence to suggest that the two are run in similar fashion and share a principal director. However, they are distinct legal entities and, as explained by the Expert in Decision DRS 04522, the available evidence is not sufficient to hold that they should be treated as one or that they have necessarily engaged in a pattern of registration of well-known names in which they have no rights.

There is evidence – returned post and bounced emails, which suggests that the contact details on the Nominet register for domain names held in the name of EDOCO LTD are no longer correct. However, the Expert doubts that this limited evidence is presently sufficient to justify applying Paragraph 3a(iv) of the Policy. If the contact details for EDOCO LTD were to remain uncorrected in future, that position might change.

In this case, the evidence does demonstrate that the Domain Name has been used to misdirect those potentially seeking the Complainant's website to websites with links, which, if clicked through, would in all probability simply generate "click-through" income for the Respondent, with no reference to the Complainant or its business and indeed to divert potential customers to direct competitors of the Complainant.

The Respondent has offered no explanation for its adoption and use of the Domain Name. As is typical in these situations, the inference follows that Respondent has simply misappropriated the Complainant's property – their goodwill in the PLANETDANCE name, with the undisguised intention of unfairly profiting from use of the Domain Name, without regard for the rights of the Complainant or for the consequential disruption and damage to the Complainant's business.

In the Expert's view, the evidence, unchallenged by the Respondent, is sufficient to substantiate the Complainant's assertion that the Domain Name is an Abusive Registration for the purposes of the Policy.

The Expert therefore concludes that the Domain Name is an Abusive Registration, because the evidence shows to the Expert's satisfaction that the Domain Name was originally registered or otherwise acquired, and has been used by the Respondent, in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

8. Decision:

Having concluded 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, the Expert orders that the Domain Name, planetdance.co.uk, should be transferred to the Complainant.

Keith Gymer Date September 13, 2007