University of London -v- Toth [2004] DRS 1740 (23 August 2004)

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The complaint was lodged with Nominet on 6 May 2004. Nominet validated the complaint and notified the Respondent on 13 May 2004 by (1) email to the Administrative Contact email address and to postmaster@universityoflondon.co.uk; and (2) letter to the Respondent's postal address, all in accordance with the details held for the Domain Name in Nominet's database. The letter to the Respondent advised him that he had 15 working days to respond to the Complaint, that is, until 7 June 2004. On 9 June 2004 Nominet amended the response due date by two working days (to 9 June 2004) - the reason noted in Nominet's dispute chronology is 'waiting for processing'. A Response was received from the Respondent by email dated 8 June 2004. Nominet acknowledged receipt of the Response and intimated a copy to the Complainant on 9 June 2004, giving until 16 June 2004 for the Complainant to file a Reply if it so wished. A Reply was received from the Complainant on 14 June 2004. Nominet initiated mediation procedure on 17 June 2004 and subsequently indicated by letter to the Complainant and the Respondent on 27 July 2004 that mediation had been unsuccessful and that provided the Complainant paid the appropriate fees by 10 August 2004, Nominet would refer the case to an independent expert for a decision. The Complainant duly paid the fees on 28 July 2004 for a decision of an expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

On 5 August 2004, Andrew Lothian, the undersigned, ("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. Nominet duly appointed the Expert with effect from 9 August 2004.

The Response was received electronically by email and was not followed up by a duly signed hard copy. Consequently, the Response does not comply with paragraph 5(c) of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure"). The Expert takes the view that where the Respondent has not received the benefit of legal advice, it would be inequitable to apply the hard copy rule so as to disqualify the Response completely. Accordingly, the Expert will take the Response into account. However, not being in hard copy, the Response does not contain a duly signed declaration required by paragraph 5(c)(v) of the Procedure. This declaration relates to the truthfulness of the Response and its compliance with the Procedure. Paragraph 15(c) of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate." The Expert considers that an inference can be drawn which would tend to reduce the weight to be given to the contents of the Response, and it will therefore be viewed accordingly.

2. The Domain Name pointed to a web site at http://www.unitedkingdom.co.uk when the complaint was presented.

1. The Domain Name is identical or similar to a name or mark in which the Complainant has Rights.

3. The Complainant was founded in 1836. It is one of the foremost universities in the UK, and enjoys an international reputation. The Complainant has an established reputation in the name 'University of London'. It has rights in several UK and foreign trade marks in the name 'UNIVERSITY OF LONDON' including UK Trade Mark Registration no. 1374569 covering classes 18, 24, 25 and 41.

4. Until the end of the year 2003 the Complainant held the registration of the Domain Name but through oversight the renewal invoice was overlooked. When the error was discovered and the Complainant attempted to pay the invoice, it was informed that the domain name had been registered by the Respondent.

5. The Complainant wrote to the Respondent on 11 March 2004 asking him to surrender the domain name so that the Complainant could renew its registration, and to give written confirmation that he had done so within 14 days. The only reaction from the Respondent has been to leave a voicemail message asking the Complainant to contact a telephone number which was unobtainable on several attempts.

6. The Respondent could not use the disputed domain name without laying himself open to claims for passing off and trade mark infringement.

7. Despite the fact that the domain name can be of no practical use to him, the Respondent made no serious response to the letter from the University asking him to surrender his registration.

8. There is serious public concern about the misuse of university names and related fraudulent activities, such as the sale of bogus higher education courses and the sale of bogus degrees and forged degree certificates over the Internet. The risk of such abuse is increased if the intellectual property rights associated with legitimate higher education institutions fall into the hands of others.

9. The Complainant understands from oral reports that the Respondent is a 'warehouser' of other domain names.

10. Until it recovers the right to register the disputed domain name, the University will be frustrated in any attempts to pursue its legitimate business interests through the use of that name.

1. The Respondent registered the Domain Name on Nominet's first come first served basis. It was free and the fact that the Complainant forgot to renew it should have no bearing on this outcome.

2. The Domain Name was not registered in bad faith and was not registered with the intention to sell. The Respondent has received two offers to purchase the Domain Name prior to the Complainant getting in touch and has rejected these. The Respondent cannot disclose the identity of the prospective purchasers because he is prohibited from doing so under the Data Protection Act.

3. The name was registered with the intention to construct an informative website for students, friends of students and people living or visiting the university. It will feature things like places to eat, clubs, places of interest, maps, directions to places, travel, doctors, clinics, shops, theatres, and private accommodation. It will in no way try to pass off as the Complainant and is to be a purely informational site. Students will also be able to submit their own articles and features.

4. A link to the Complainant's official site will be provided on the front page of www.universityoflondon.co.uk to avoid any possible confusion. The Complainant has its own domain name under the .ac.uk domain extension which is designated for academic use. The Respondent will not be using the Complainant's trade marked design for the website unless he is given permission to do so. Any requests for official university information or courses will be passed immediately to the official website.

5. The Respondent does not understand the term 'warehouser' and is baffled as to the Complainant's source for the comment. The Respondent registers good URLs to develop into websites and will be getting round to all of the URLs in due course. As this is a large job, in the interim all undeveloped sites are forwarded to www.unitedkingdom.co.uk. The Respondent does not resell domain names.

6. The Respondent offers the following websites as examples of his developments:- www.usedcars.co.uk, www.shades.co.uk, www.toprates.co.uk, www.carwarehouse.co.uk, www.rebel.co.uk, www.advise.co.uk, www.rebelringtones.co.uk and www.rebelmobiles.co.uk .

7. The Complainant has failed to provide evidence that the Domain Name is an abusive registration.

1. The Respondent's comments and reference to actual offers to purchase the Domain Name show that there is a market for it. It is by no means certain that the Respondent will not decide to sell the Domain Name if, as indicated, there is no immediate prospect of it being used for the purposes proposed by the Respondent.

2. The Complainant rejects the Respondent's statement that it will not attempt to pass off as the Complainant. The use of a domain name incorporating the Complainant's name would in itself constitute passing off and trade mark infringement. The Complainant would not wish to have any link to such a site as this could imply endorsement by the Complainant.

3. The Respondent's examples of other sites developed by him appear to be generic names not associated with specific companies or institutions with established reputations. These examples do not support the Respondent's argument as they are thus in a different category from the Domain Name.

In terms of paragraph 2(b) of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, namely that:

(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.

Does the Complainant have Rights in respect of a name or mark which is identical or similar to the Domain Name? The Complainant submits that it is one of the foremost universities in the UK, enjoying an international reputation and having been founded in 1836. It cites a number of registered trade marks including UK registered mark no. 1374569 for the words 'UNIVERSITY OF LONDON' in classes 18, 24, 25 and 41.

The definition of Rights under the Policy "includes but is not limited to, rights enforceable under English law" but excludes rights in a name or term which is wholly descriptive of the Complainant's business. Under English Law rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark. The Complainant has provided evidence for their rights in the mark 'UNIVERSITY OF LONDON' by virtue of the registered trade mark narrated above. The Respondent does not seek to contradict that evidence. The remaining question is whether this mark is identical or similar to the Domain Name. The first (.uk) and second (.co) levels of the Domain Name can be disregarded as being wholly generic. This leaves a comparison between 'UNIVERSITYOFLONDON' and 'UNIVERSITY OF LONDON'. Character or 'white' spaces cannot be used in domain names. Taking this into consideration, the Expert is satisfied on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name.

Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" as:-

The Complainant has no obligation to, and does not, rely specifically on any of the elements contained in the non-exhaustive list of factors set out in paragraph 3 of the Policy which may be evidence that the Domain Name is an Abusive Registration. It is necessary therefore to consider whether in other respects the Complainant's submissions point to the Domain Name being an Abusive Registration in the hands of the Respondent.

The Complainant's submissions focus initially on the fact that the Domain Name was registered by the Respondent after the Complainant had inadvertently failed to renew it. The Respondent answers that the name was registered on Nominet's first come first served basis and that the fact that the Complainant forgot to renew it is not relevant.

Can the failure to renew a domain name make the subsequent registration of that name by a third party an Abusive Registration? If so, such a registration would have to be made "in a manner which...took advantage of or was unfairly detrimental to the Complainant's Rights." The Expert considers that the subsequent registration of a formerly registered domain name, in itself, is not intrinsically abusive.

The Complainant's next submission points to the Respondent's failure to make an adequate reply to the Complainant's letter asking the Respondent to surrender the Domain Name. The Respondent does not deal with this in his Response. It is not entirely clear whether the Respondent genuinely attempted to respond to this correspondence by leaving the telephone number but in any event the Expert considers that this matter is not a factor indicating Abusive Registration.

The Complainant then argues that the Respondent could not use the Domain Name without laying himself open to claims for passing off and trade mark infringement and that the Domain Name can be of no practical use to the Respondent. This submission, if true, might indicate Abusive Registration but only in part. A registration which gives rise to such claims may be taking unfair advantage of or be unfairly detrimental to the Complainant's Rights but the Complainant does not indicate how it does so here in very direct terms.

What can be gleaned from the Complainant's submissions on this point is the following. The Domain Name repeats the Complainant's name without addition or qualification and it can be presumed that the name UNIVERSITY OF LONDON is well known as the Complainant asserts that it is one of the foremost universities in the UK and enjoys an international reputation. This is not challenged by the Respondent. In these circumstances the Expert considers that it is probable on the Complainant's submissions that the Domain Name takes advantage of the Complainant's Rights. It is most likely that the Respondent had the Complainant in the forefront of his mind at the time of registration and that the Respondent understood that he was not registering a generic or descriptive term as a domain name. This fact is itself reinforced by the Respondent's submission that his intention was to construct "an informative website for students, friends of students and people living or visiting the university". In other words, his registration was very directly bound up with the name and business of the Complainant. Whether the advantage taken is unfair will be considered later.

The Complainant then argues that there is serious public concern about the misuse of university names and related fraudulent activities and that the risk of such abuse is increased if the intellectual property rights associated with legitimate higher education institutions fall into the hands of others. This submission relates to the use of the Domain Name and in particular to the potential risk of certain severe forms of abuse in the future. While there is nothing in the evidence to suggest that the Respondent either registered the Domain Name with the intent to use it for the abusive activities described by the Complainant or that he has ever used it in this way (nor does the Complainant directly suggest this) the Expert believes that the Complainant does have a legitimate concern, as a well-known academic institution and as the proprietor of a registered trade mark, regarding the possible misuse of its name in a domain name. This must be so whether or not such concerns are shared by the public. What, then, is the Respondent's present use of the Domain Name?

It is clear from the screenshot supplied by Nominet that the Domain Name is presently directing traffic to the Respondent's web site at www.unitedkingdom.co.uk, a site with a variety of commercial offerings including mobile phones, ringtones and budget flights together with affiliate scheme-based links. This, in the Expert's view, is an irresponsible and misleading use of the Domain Name given that the Domain Name represents the name of the Complainant's academic institution without any form of qualification. There is no logic or justification for the Domain Name being used in this way and there is good reason to believe that it may have caused confusion to any web users who stumble upon it expecting to find the Complainant's site, particularly those from outside the United Kingdom who might be less familiar with the 'ac.uk' second level domain conventionally used by British academic institutions for their official domain name, as mentioned in the Respondent's submissions. It is not absolutely certain but seems likely that the Respondent is generating or is attempting to generate revenue from the affiliate scheme-based links on the site to which the Domain Name points and this strengthens the argument as to unfair advantage.

The Complainant goes on to make a general and unsubstantiated assertion that the Respondent is a 'warehouser' of other domain names. It is not clear how in particular this might be relevant and the Respondent seeks to answer the point by stating that he registers 'good URLs to develop into websites'. The Complainant does not submit, for example, that the Respondent has made any pattern of abusive registrations and the Expert does not consider this submission to be material.

Finally, the Complainant indicates that it is frustrated in any attempts to pursue its legitimate business interests through the use of the Domain Name. This is undoubtedly correct. However, it does not point to Abusive Registration without more information, for example, information regarding the Complainant's past and intended business use of the Domain Name together with evidence of actual disruption to the Complainant's business.

Taking the Complainant's submissions as a whole, however, together with the evidence of the present use of the Domain Name, the Expert considers that the Complainant has made out a case to answer regarding the Domain Name being an Abusive Registration in the hands of the Respondent, on the basis that (1) the registration of the Domain Name clearly took advantage of the Complainant's Rights at the time that the registration was made given that the Respondent had the Complainant in mind and took its name without any addition or qualification and (2) the Respondent's subsequent use of the Domain Name in pointing it to www.unitedkingdom.co.uk has taken unfair advantage of those Rights.

It is necessary then to turn to the submissions of the Respondent. The Respondent argues that the Domain Name was not registered with intent to sell it and indicates that he has rejected two approaches from interested parties whose identities he cannot disclose. The Complainant states in its Reply that this shows that there is a market for the Domain Name and that the Respondent may sell it at some point. However, the sale or potential sale of a Domain Name in itself does not give rise to Abusive Registration. Paragraph 3(a)(i)(A) of the Policy provides a non-exhaustive factor, indicative of Abusive Registration, if there are "Circumstances indicating that the Respondent has registered...the Domain Name primarily for the purposes of selling...[it]...to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs...". The Complainant does not assert that the Respondent had a primary purpose of selling the Domain Name and the Expert considers that the parties' submissions on this point are not particularly helpful or relevant.

The Respondent answers the issue as to his present use of the Domain Name by explaining that his undeveloped domain names are forwarded to www.unitedkingdom.co.uk, and that in the case of the present Domain Name this step has been taken pending his developing it into an information web site for students of the Complainant. He will be "getting round to all of the URLs in due course". In the Expert's view this does not provide a justification for the present use of the Domain Name. The forwarding of web traffic to the commercial site at www.unitedkingdom.co.uk may be a perfectly appropriate and acceptable use for generic domain names such as those which the Respondent gives as examples of his domain name portfolio (albeit that these point to developed sites) but it is not so for the Domain Name which clearly relates to and identifies a specific UK institution. In these circumstances the Respondent, whether inadvertently or otherwise, is exploiting such traffic for commercial purposes.

The Respondent then submits that he registered the Domain Name intending to construct an informative web site for students. It is not clear whether this web site would have a commercial aspect to it but it is apparent that all of the other web sites belonging to the Respondent which are cited in the Response are commercial in nature. The Complainant states that it would be able to make out a claim for passing off were such a web site to be developed for the Domain Name and indeed both parties discuss this potential issue in their submissions. In the Expert's view, whether such a future claim could be made out, and the possible consequences, are beyond the scope of the Policy. However, the Respondent's submission here is still relevant, as it may point to non-abusive registration in terms of the non-exhaustive list of factors in paragraph 4 of the Policy.

Paragraph 4(a)(i)(A) provides that a Domain Name might not be an Abusive Registration where, "before being informed of the Complainant's dispute, the Respondent has...used or made demonstrable preparations to use the Domain Name...in connection with a genuine offering of goods or services;"

Given the Expert's earlier finding that the present use of the Domain Name takes unfair advantage of the Complainant's Rights, such use could not be described as "a genuine offering of goods or services". With regard to his proposed future use, the Respondent offers no evidence other than a mere submission and does not even present a signed declaration of truth. His submission could not be described as "demonstrable preparations". The Respondent gives examples of web sites which he has developed previously but this does not constitute evidence of demonstrable preparations to use the present Domain Name. The example sites do not have any relevance to the present dispute beyond showing that the Respondent has developed web sites in the past, and, as the Complainant points out in its Reply, such sites bear generic names which are not associated with a specific institution such as the Complainant.

The Respondent indicates that he will take steps to avoid confusion between the website which he proposes to develop for the Domain Name and that of the Complainant. This does not assist the Respondent with regard to the present use of the Domain Name, nor does it deal with any confusion which may have been caused by such use to date.

For the sake of completeness, the Expert will consider the other factors in paragraph 4 of the Policy which might demonstrate that the Domain Name is not an Abusive Registration. Paragraph 4(a)(i)(B) requires the Respondent to have been commonly known by or legitimately connected with a mark which is identical or similar to the Domain Name. There is no evidence of this.

Paragraph 4(a)(i)(C) requires the Respondent to have made legitimate non-commercial or fair use of the Domain Name. The present use could not be described as legitimate non-commercial or fair use for the reasons set out above.

Paragraph 4(a)(ii) requires the Respondent to demonstrate that the Domain Name is generic or descriptive and that the Respondent is making fair use of it. Given that the Domain Name is a direct representation of the Complainant's name and trade mark it could not be described as generic or descriptive. The Expert does not believe that the present use is fair.

Accordingly, the Expert finds that the Respondent has not met the case to answer raised by the Complaint and therefore that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

The Expert finds that, on the balance of probabilities, 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 therefore directs that the Domain Name be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> University of London -v- Toth [2004] DRS 1740 (23 August 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1740.html Cite as: [2004] DRS 1740