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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Aylesbury Vale District Council v Digital Assets Inc [2008] DRS 5877 (15 September 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5877.html Cite as: [2008] DRS 5877 |
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DISPUTE RESOLUTION SERVICE
DRS 05877
Decision of Independent Expert
Aylesbury Vale District Council
and
Digital Assets Inc
Complainant: Aylesbury Vale District Council
Country: GB
Respondent: Digital Assets Inc
Address: No address listed
Postcode:
Country:
aylesburyvaledistrictcouncil.co.uk ("the Domain Name")
The Complaint was lodged with Nominet on 16 July 2008 and therefore falls to be determined under Version 2 of the Nominet Dispute Resolution Service Policy ("the Policy"). Nominet validated the Complaint and on 17 July 2008 informed the Respondent that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days to submit a Response. The Respondent did not submit a Response. On 19 August 2008 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 7 of the Policy.
On 1 September 2008 Nominet appointed Andrew Clinton ("the Expert"). The Expert has confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as Expert in this case, and further confirmed that he knows of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence.
The Complainant is Aylesbury Vale District Council which was established in 1974 as the organisation responsible for administering the local government district of Aylesbury Vale, which includes the county town of Buckinghamshire (Aylesbury) and its rural hinterland (Vale). The Respondent is Digital Assets Inc which, according to Nominet's records, is a non-UK Corporation and no address is listed for the Respondent.
The Domain Name was registered by the Respondent on 21 April 2007. It is identical to the name of the Complainant. The Domain Name points to a web site that lists a number of services including refuse collection, planning permission and Council Tax. The web site contains links to a number of commercial organisations that offer some of the services that are listed on the web site. By way of example, the section headed "Planning Permission" on the web site contains a link to the web sites of a number of planning consultants and architects.
The Complainant objects to the use of the Domain Name on the basis that the web site purports to offer local government type services together with other commercial services which, it claims, presents a reputational risk to the Complainant.
Complainant
The Complaint, so far as is material, is as follows:-
Aylesbury Vale District Council was established in 1974 to amalgamate a number of smaller predecessor authorities. As an entity in the physical world we have an established provenance extending back over 30 years. The phrase "Aylesbury Vale" uniquely describes a geographical area comprising the county town of Buckinghamshire, UK (Aylesbury) and it's rural hinterland (Vale) the latter being a number of smaller market towns and about 100 villages. A number of organisations based in the locality include the phrase "Aylesbury Vale" or "Vale of Aylesbury" in their titles, but "District Council" or "DC" for short in this context more specifically identifies us as a local government organisation. The legitimacy of our established corporate domain aylesburyvaledc.gov.uk is undisputed. We also currently hold the rights to aylesburyvaledc.co.uk and other variants. If anything the expanded full spelling is more rather than less unique. As well as public administration we also offer a number of commercial services including hire of conference facilities and operating an entertainment venue, marketing of various leisure events /sporting activities, factory/warehouse landlord, commercial waste collection so we have basis for claiming ".co.uk" as well as ".gov.uk". The respondent is Digital Assets Inc who are declared to be a Non-UK Corporation at an unspecified address in the WHOIS citation. In our view they have no plausible basis for claiming the disputed identity as they have no obvious geographical connection with our area and are not contracted to deliver any services to our residents and taxpayers. We also understand informally from Nominet that the incumbent registrant is currently facing potential de-registration for failing to supply an acceptable address. Consequently we seek to assert our rights in the disputed domain name. The respondent's currently live website using the disputed domain identity purports to offer local government type services together with other commercial services and this presents a reputational risk to us by apparent association either through disseminating inappropriate or misleading information or by accepting payments that customers are lured into making believing we are the recipients of the money. We therefore deem this to be an Abusive Registration.
The Complainant seeks a transfer of the Domain Name.
Respondent
The Respondent has not submitted a Response to the Complaint.
Lack of a response
Under paragraph 15(b) of the Procedure if a party does not comply with any time period laid down in the Policy or the Procedure, the Expert will, in the absence of exceptional circumstances, proceed to a decision on the Complaint. Under paragraph 15(c) of the Procedure if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or Procedure (in this case by failing to file a Response) the Expert will draw such inferences as he considers appropriate.
The Expert is not aware of any exceptional circumstances that apply in this case. The Respondent is currently part of the "goneaway" process which means that its address details have been removed from Nominet's records. Nominet has no other contact details for the Respondent but, in accordance with paragraph 2(a)(ii)(A) of Procedure, Nominet served the Complaint in electronic form by sending it to [email protected].
General
Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities; firstly, 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.
Complainant's Rights
Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. The Complainant is Aylesbury Vale District Council which was established in 1974 and is the local government organisation responsible for administering the local government district of Aylesbury Vale. The Complainant also offers a number of commercial services. The Complainant holds the rights to the domain names aylesburyvaledc.gov.uk and aylesburyvaledc.co.uk.
The Complainant clearly has rights in the name Aylesbury Vale District Council which, for these purposes, is identical to the Domain Name. The Expert finds that the Complainant has Rights in respect of a mark that is identical to the Domain Name and the first limb of paragraph 2 of the Policy is therefore satisfied.
Abusive Registration
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 as follows:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
A. 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. 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) 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 Nominet; or
(v) The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
(A) has been using the domain name registration exclusively; and
(B) paid for the registration and/or renewal of the domain name registration.
It is clear from the wording of the Policy that the list of factors at paragraph 3 is non-exhaustive and that a Complainant can succeed in proving Abusive Registration without the need to prove any of those factors. However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.
Non-exhaustive factors – paragraph 4 of Policy
There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy.
Discussion and findings regarding Abusive Registration
Under paragraph 3(c) of the Policy there shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three or more DRS cases in a two year period prior to the date that the Complaint was filed. Paragraph 4(c) of the Policy states that if paragraph 3(c) applies then, in order to succeed, the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.
The Respondent has been found to have made an Abusive Registration in three DRS cases within two years of the filing of this Complaint. The details are set out in the table below.
| DRS No | Complainant | Respondent | Date of Expert's Decision | Domain Name | Outcome |
| 05274 | ACCOR | Digital Assets Inc | 4 February 2008 | ibishotdeals.co.uk | Transfer |
| 05311 | Joelson Wilson & Co | Digital Assets Inc | 7 February 2008 | joelsonwilson.co.uk | Transfer |
| 05421 | The Dr Marilyn Glenville Clinic LLP | Digital Assets Inc | 1 April 2008 | marilynglenville.co.uk | Transfer |
In each of the above decisions the Independent Expert found that the disputed domain name was, in the hands of the Respondent, an Abusive Registration. Strictly speaking the presumption of Abusive Registration does not arise in this case since the Complainant did not refer to the above decisions in its Complaint but they are a matter of record and the Expert is entitled to take into account the fact that on three separate occasions the Respondent has been found to have made an Abusive Registration.
The Respondent has not attempted to challenge the Complainant's contention that the Domain Name is an Abusive Registration and there is nothing in the evidence to show that the Domain Name is not an Abusive Registration. The Complainant points out that the Respondent has no obvious geographical connection to Aylesbury Vale and was not contracted to deliver any services to the residents and taxpayers of that local government district. The Domain Name points to a web site that offers services that are associated with local government administration (such as Council Tax and planning permission) together with other commercial services. The Complainant says that this represents a reputational risk of apparent association through disseminating inappropriate or misleading information or by accepting payments that customers are lured into making believing that the Complainant is the recipient of those payments.
In this case the Respondent decided to register a domain name that contains a combination of words that the public would clearly associate with the Complainant and no-one else. The Respondent has used that domain name to offer services that one would expect to see on the web site of a District Council as well as other services that compete with some of the commercial services offered by the Complainant. There is no obvious connection between the Respondent and the name Aylesbury Vale District Council and the Respondent has declined to put forward an explanation for registering that combination of words as a domain name. In the absence of an explanation, the Expert struggles to conceive of a motivation that was not in some way designed to take unfair advantage of or cause unfair detriment to the Complainant's rights in its own name. The Respondent has engaged in similar conduct by registering other domain names that incorporate marks in which third parties have established rights as is apparent from the decisions that are listed in the table above.
The Expert is satisfied, on the balance of probabilities, that the Domain Name is, in the hands of the Respondent, an Abusive Registration in that it was registered and has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.
The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name which is identical 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.
Andrew Clinton
15 September 2008
