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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Road Runner Motor Trade Ltd v Ostashko [2007] DRS 4620 (7 July 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4620.html Cite as: [2007] DRS 4620

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Nominet UK Dispute Resolution Service

DRS No. 4620

Road Runner Motor Trade Limited

v.

Mr. D Ostashko

Decision of Independent Expert

1. Parties

Complainant: Road Runner Motor Trade Limited

Country: United Kingdom

Respondent: Mr. D Ostashko

Country: United Kingdom

2. Domain Name ("the disputed domain name")
3. Procedural Background

The Complaint was lodged with Nominet UK ("Nominet") on April 18, 2007, and hard copies were received in full on April 20, 2007. Nominet validated the Complaint on April 20, 2007 and at the same time notified the Respondent of the Complaint giving him 15 working days within which to lodge a Response. Electronic and hard copies of a Response were received on May 15, 2007. An electronic copy of a Reply from the Complainant was received on May 24, 2007 and a hard copy on May 25, 2007.

Nominet initiated its Informal Mediation procedure, but without resolution and so, on June 14, 2007, the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet's Dispute Resolution Service Policy ("the Policy").

On June 15, 2007 the undersigned, Mr. David H Tatham ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an 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 and he was selected by Nominet as the Expert for this case on the same day.

4. Outstanding Formal/Procedural Issues

On June 19, 2007 I was informed by Nominet that the Respondent had filed, electronically, a non-standard Submission. I decided to view this and take it into account in my Decision. The Complainant had filed a Reply and I believed it was only fair that the Respondent should also be allowed to have his say.

On June 29, 2007 I was informed by Nominet that the Complainant had filed a Response to the above non-standard Submission. I declined to see this, as it was 2 weeks after my appointment and the commencement of the proceedings, which I believed was too late for a further submission.

5. The Facts

The Complainant was formed in 1998 and it, or its predecessors in title, have traded in the UK under the trade mark ROAD RUNNER since at least 1994 in relation to motor insurance services. It appears that it may be one of a number of companies whose ultimate parent company is Fyfe Group Limited.

The Trademark ROAD RUNNER is the subject of two registrations in the UK in the name of the Complainant in respect of "Insurance services; insurance brokerage; and insurance underwriting" in Class 36 – No. 2370282 dated August, 10, 2004 and No. 2385262 dated February 23, 2005.

The Complainant filed copies of advertising and marketing materials showing use of the trade marks as well as copies of its Annual Reports for the last three years. The sole business of the Complainant is the sale of insurance to individuals and companies in the UK in the motor trade under the trade mark ROAD RUNNER.

6. The Parties' Contentions

Complainant

The Complainant contends that the disputed domain name is abusive for the following reasons –

a) The disputed domain name incorporates words which are identical to a known trademark which is registered to the Complainant who has no connection with the Respondent. The Complainant became aware that the Respondent had registered the disputed domain name in late 2006 at which time the website at the disputed domain name pointed to other websites offering motor insurance for sale in the UK. A copy of the site was annexed to the complaint.

b) The Complainant uses the domain name where its main website is situated and it was concerned at the risk of confusion arising, and a loss of business, as a result of possible confusion between the two websites with very similar domain names. The disputed domain name was advertised as being for sale and so, rather than file a Complaint, the Complainant initially preferred to try to purchase it. The Complainant's representative first submitted an offer of £500 which drew the response to sell the domain name for £5,500. The offer was increased to £600 but the seller peremptorily cancelled any further negotiations. On December 12, 2006 the Complainant's representative sent a letter to the Respondent offering to buy the disputed domain name for £1000, failing which a Complaint would be filed. An e-mail was received on December 13, 2006 from the Respondent which the Complainant's representative considered to be both inaccurate and offensive. Copies of the original offer thread and of the subsequent correspondence were annexed to the Complaint.

c) The Respondent subsequently modified the website at the disputed domain name so that its front page did not refer to motor insurance. However the Complainant found that by typing the word 'insurance' into the search box on the front page it would bring up the original page from December 2006 with its links to websites selling motor insurance. Copies of all these pages were annexed to the Complaint.

d) The Complainant submits that through these actions the Respondent, by using a domain name that is very similar to the Complainant's domain name, and which is identical to the Complainant's registered trade mark, for a site offering motor insurance (i.e. the same services which the Complainant offers) is seeking to profit – because the links to other sites will be sponsored links, for which the Respondent will be paid – from any confusion between the Respondent's website and the websites offering motor insurance confusion is likely to arise as a result of customers accessing the Respondent's website thinking that it is the website of, or one connected with, the Complainant.

e) The Complainant further contends that the Respondent has registered at least 231 domain names in the .uk ccTLD and that a significant number of these incorporate words which are well known trademarks belonging to third parties who have, so far as the Complainant is aware, no connection with the Respondent. The Complainant submits that this constitutes evidence of an abusive registration under Clause 3(c)iii of the Policy. In the case of a domain name such as there can be no question that what the Respondent is seeking to do is to register a domain name which contains a well-known registered trademark i.e. BBC along with the generic term for the goods. Annexed to the Complaint were copies of –

all the domain names registered in the UK by the Respondent;

a selection from these domain names with extracts from the UK and/or Community Trade Marks Offices official websites showing that the trademark which is incorporated by the Respondent into that particular domain name is owned by a third party and not by the Respondent;

copies of the pages accessed via these domain names showing that they contain material relating to the goods and/or services which are covered by the corresponding trade mark registration.

The Complainant contends that the Respondent is thus seeking to capitalise on the connection between the domain name, the registered trademark, and the information and materials on the website accessed via the corresponding domain name. The Complaint further contends that this pattern of an individual registering a large number of domain names which include well-known registered trademarks owned by third parties is evidence of the Respondent having a history of registering domain names which relate to trademarks in which they have no apparent rights.

Finally, the Complainant contends that the Respondent's actions are contrary to the provisions of Clause 3(a) iii of the Policy because it has registered the disputed domain name, despite being advised and aware that he was not entitled to register it because it corresponded to a well known name or trade mark in which he has no apparent rights.

Respondent

The Respondent contends that he registered the disputed domain name on June 19, 2006 which is when it was released to the public after having been owned for about 10 years. He says, however, that although the Complainant claims to have registered the trade mark ROAD RUNNER on August 10, 2004, in fact this is the trademark filling date and it was not officially registered until August 4, 2006, i.e. after he had registered the disputed domain name.

The Respondent states that his interest in the disputed domain name was based solely on its keyword combination, which is both generic and descriptive. It was obvious to him that such a domain name could be used in a number of ways such as, for instance, trading in used cars trading or for a car hire service.

The Respondent contends that the Complainant has filled the Complaint in bad faith and that it is full of deliberately false statements. For example, it is stated in the Complaint that: "The Complainant submits that the domain name complained of is abusive under the provisions of Clause 3(a) iii of the Dispute Resolution Policy because the Respondent has registered the domain name, which is the subject of this complaint, despite being advised and aware that he was not entitled to register it because it corresponded to a well known name or trademark in which the Respondent has no apparent rights." However the Respondent states, firstly, that he was neither "advised" nor even aware of the Complainant's existence until he was contacted by their representative in December, 2006, and secondly, the Complainant's business is not "well known" as they say, it is rather not known If, at the time of registering the disputed domain name, he could have associated the words "road runner" with anything, it would have been with the "Road Runner" cartoon made by Warner Bros., who own registrations of the trade mark "ROAD RUNNER" in the United Kingdom in a number of classes. In registering the disputed domain name there was never any intentions of using it in a way that would be unfairly detrimental to any other third parties.

Furthermore, although the Complainant describes themselves as "specialists in cover for sole traders & small independents" anyone outside of the scope of this business and consumer target group would have no idea about this small company which had after-tax profits of only £15,460 in 2006 and £17,877 in 2005 and who sell motor insurance taking advantage of the popular term "road runner".

An internet search for "road runner", a copy of which was annexed to the Response, shows that there are dozens of other "road runner" companies and websites and that the Complainant is not present neither on the first nor on the second page of the search results. Furthermore, a search on the UK Companies House website (also annexed to the Response) shows that there are many more entities incorporated with the words "road runner" in their title. A trade mark search (also annexed) lists a number of right holders for the words "Road Runner" ranging from "chemical substances" to "dog leads". The Respondent contends that it can be seen from these searches, that there is a wide use of "road runner" keywords in both commercial and non-commercial areas by different companies and so the Complainant has no exclusive rights to a generic domain name such as "roadrunner.co.uk".

With regard to the Complainant's submission that the Respondent is in breach of clause 3(c)iii of the Policy because of the many domain names he registered, he contends that in fact it is the Complainant who is acting in bad faith because the list includes hundreds of highly generic and descriptive domain names such as "kingdom.co.uk", "freedomainname.co.uk" or "italyhotel.co.uk". The Respondent contends that the huge amount of paper submitted by the Complainant is irrelevant to the case because none of these domain names ever resulted in DRS case, so there can be no presumption of a pattern of abusive registration.

The Respondent contends that the disputed domain name is not part of a wider pattern or a series of registrations because it is of a significantly different type or character to the other domain names registered.

The disputed domain name was never registered for the purposes of selling, renting or otherwise transferring it to the Complainant or to a competitor of the Complainant. The Respondent has not yet started to use it for a planned business, but is keeping it as a future investment. Any or all of the many entities who trade under the "road runner" name, could benefit from having a shorter and memorable domain name. Notwithstanding, the Respondent has never pursued anyone by offering to sell the domain name. The disputed domain name is listed on the domain market place Sedo (www.sedo.com) as a part of the Respondent's domain name portfolio, where he is able to receive offers from interested parties. Most of the domain names in this portfolio are listed as being "maybe for sale, make an offer" and this reflects his business model which is to sell some domains in order to support the development of others.

The Complainant first contacted the Respondent anonymously through Sedo in November, 2006 offering to buy the disputed domain name for £500. They received a price quote of £5,500 which was based on a very realistic expectation of the Respondent's own commercial interests in the name. They counter-offered with £600, which showed that they hardly appreciated his position or interests. In December 2006, lawyers acting on behalf of the Complainant contacted the Respondent again, now clearly stating who they were and offering to buy the domain name for £1,000 or, otherwise, to extort it via Nominet's DRS procedure. The Respondent states that he was not interested in selling it to these people and replied in a communication, a copy of which was annexed to the Complaint, saying that they did not deserve the domain name if they used such tactics.

While the disputed domain name remains undeveloped, it employs a Pay-per-click model and displays advertisement listings which are delivered by third parties but which are based on a defined keyword or domain category which, in this case, was related to 'Cars'. As soon as the Respondent learned about the Complainant's rights, he applied extra restrictions to the domain name settings, to make sure it did not display anything related to insurance services even though master keyword was always set to "car parts".

The Respondent contends that the Complainant has admitted that the domain name is not currently displaying any unfairly detrimental links to its trademark class, but notes that they can trick it into producing an "insurance page", which they claim is similar to what they saw in November, 2006. The Respondent contends that this is clearly 'evidence manufacturing'. The domain name is not configured and intended to display anything related to the Complainant's services, but they trick it into doing so by deliberately entering "insurance" into the search box. This claim is fundamentally absurd. The search box executes searches for the specified keyword for all advertisers world-wide and is delivered from Google. Any domain name which employs similar advertisement technology could be forced to display anything based on the search term. For example, typing 'tesco insurance' on a domain name such as would result in a listing showing dozens of advertisers who bid on this keyword (including Tesco itself) but that would not mean that <'insurance.co.uk'> abuses or is unfair to Tesco's rights. This is the principle and the widely used and accepted Internet advertisement model and the Respondent contends that the Complainant is trying to abuse it for their own advantage.

In summary, the Respondent contends that –

•    The words 'road runner' are generic and descriptive;

•    the Complainant has no rights to the domain name 'roadrunner.co.uk';

•    the domain name registration is not abusive and does not take unfair advantage of or is unfairly detrimental to the Complainant's rights;

•    the disputed domain name is fairly used to display advertisement listings related to Car parts; and

•    the Complaint is filled in a bad faith, considering the number of false statements submitted, and the Complainant's obvious desire to obtain a better and shorter name for their business.

Complainant's Reply

The Registrant is correct in saying that the trademark ROAD RUNNER was not registered until August 4, 2006, but Sections 40(3) and 9 of the Trade Marks Act 1994 make it quite clear that the rights in a trademark registration date from the date of registration which is the date of the filing of an application for registration. Therefore, it is perfectly clear that the Complainant owns registered trademark rights in the mark ROAD RUNNER from August 2004. In addition, as was made clear in the Complaint, the Complainant owns unregistered user rights in ROAD RUNNER by virtue of their use of the mark dating back to 1994.

Although the Respondent claims that the Complainant is not known, nevertheless he clearly accepts that it sells motor insurance under the trade mark ROAD RUNNER. The Complainant finds it odd for the Respondent to make this claim and yet, when the disputed domain name was first acquired, it pointed to a website selling only motor insurance. Given the Registrant's claim not to know anything about the Complainant's trade mark rights that seems to the Complainant like a huge coincidence. Given the huge range of goods and services which could be offered under a website to which a domain name such as points, it seems to the Complainant an enormous and highly unlikely coincidence and it happens to point to a website selling motor insurance given the Complainant's interest in the name and mark ROAD RUNNER for motor insurance. The mark ROAD RUNNER is not descriptive of, or likely to be used in connection with motor insurance and, as a domain name, it could more obviously be used to point to, for example, websites offering road racers, footwear or other materials.

The Complainant submits that it is irrelevant that there may be other users of the mark ROAD RUNNER for other goods and services. Had the Respondent been using the disputed domain name to point to websites selling dog leads or chemical substances, for example, then the Complainant would have been less concerned about those activities. It was the combination of the disputed domain name pointing to a website selling motor insurance that raised the concerns of the Complainant and led to the filing of this Complaint.

The Complainant accepts that some of the Respondent's many domain names are for generic and descriptive domain names, but the Complainant maintains that it was –

a) proper to draw to the attention of Nominet all the domain names registered by the Complainant so that there was no suggestion of the Complainant "cherry picking" information, and

b) that there are a considerable number of the Respondent's domain names which comprise well known trade marks which are registered to third parties with whom the Registrant has no relationship.

The Complainant denies that they or any third party can trick the website at the disputed domain name into displaying web pages offering motor insurance. It is a fact that, as is indicated in the Complaint, by clicking onto the web page at the disputed domain name and by entering the term "insurance", one is led to a website offering only car insurance. This is, of course, what the Complainant offers under the trade mark ROAD RUNNER. In contrast, if one enters the term "insurance" into Google® one gets a completely different home page with a mixture of hits offering house insurance, car insurance etc. The Complainant therefore contends that the Respondent's claims in this regard are inaccurate, and annexed to the Reply were copies of pages accessed through the disputed domain name where the term "insurance" is entered into the search box and pages from Google® where the term "insurance" is entered into the search box.

The Complainant contends that it is irrelevant that the Respondent has never featured in a DRS case. There is no requirement, for a finding of bad faith, that the Registrant has been involved in a successful, or even an unsuccessful, dispute resolution case.

Respondent's non-standard Submission

The Respondent insists that the website at the disputed domain name always displayed advertisements related to "car Parts" and there is no evidence to suggest otherwise, apart from 2 rough print-outs of pages dated November 23, 2006 and November 29, 2006 both of which lack the important web browser element known as an 'address bar' which could confirm which URL and which domain name had been typed in. In the Respondent's submission this evidence should be rejected because –

•    it is unreliable and inconsistent; and

•    it has been proved that the Complainant prepares its evidence by executing deliberate text searches tricking web site generic search functions to display 'car insurance' advertisements while the website was not intended to do so.

The Complainant denies that it can trick a website into displaying insurance links, but in fact continues to do exactly that. The Complainant makes the false statement that the results of a Google® search for the word 'insurance' are significantly different to the results delivered by the website at the disputed domain name and implies that the website is somehow delivering listings related to 'car insurance' more than to any other insurance. This, the Respondent contends, is a blatant lie.

As part of his Submission, the Respondent filed a screen shot showing how Google® delivers mostly 'car insurance' in sponsored listings for the search term 'insurance'. In any case, he contends, the website at the disputed domain name is not configured for anything to do with insurance.

7. Discussion and Findings:

General

According to paragraph 2(a) of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities –

i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and

ii the disputed domain name, in the hands of the Respondent is an Abusive

Registration.

Both of these issues are dealt with separately hereunder.

Complainant's Rights

It is clear that the Complainant has rights in the trade mark ROAD RUNNER. It has 2 trade mark registrations for these words, one of them consisting of a series of 3 marks – ROADRUNNER, ROAD-RUNNER, and ROAD RUNNER, and the other consisting of two representations of the words ROAD RUNNER in a stylised form which appears as if it may be in two different colours. The Complainant has apparently used the name since 1994. Its turnover figures are not huge, but that is not relevant. Usage over some 13 years should have accumulated substantial common law rights in the name.

The Respondent argues that the trade mark has a registration date that is subsequent to his registration of the disputed domain name, but the Complainant points out – correctly – that the rights in a registered trade mark arise from the moment it was filed and that the filing dates of both trade mark registrations pre-date that of the disputed domain name.

When comparing for similarity a domain name and an earlier right under the Policy, it is customary to disregard suffixes such as, in this case, ".co.uk". Consequently, since the disputed domain name is identical to the Complainant's trade mark, the first requirement of paragraph 2(a) of the Policy is proved.

Abusive registration

An "Abusive Registration" is defined in paragraph 1 of the Policy in the following terms –

An Abusive Registration means 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

It is for a Complainant to explain why a Domain Name in the hands of a Respondent should

be regarded as an Abusive Registration.

In paragraph 3 of the Policy there is set out a non-exhaustive list of factors which may

constitute evidence that the Domain Name is an Abusive Registration and I shall examine each of those which I consider could be relevant to this case –

3(a)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;

The evidence shows that the disputed domain name was advertised as being for sale, but when the Complainant attempted to buy it for the fairly modest sum of £500, which was subsequently increased, in two stages, to £1000, the Respondent came back with a price of £5500 which he refused to reduce and which is far more than it cost to register the name. However there is not a shred of evidence that the Respondent's prime purpose in registering the disputed domain name was to sell it to the Complainant or to one of his competitors. The Respondent does not itemize his business in any detail, but at least in part it consists of the registration and sale of domain names, which is a perfectly legitimate activity. Otherwise why register so many, and why list most of them on a website as being for sale? The vast majority of these names consist of generic words and terms. However, according to the evidence supplied by the Complainant, there are some which do not. That is perhaps an indication that the Respondent could be a cybersquatter, but the evidence is far from conclusive and so I dismiss the possibility.

3(a)i Circumstances indicating that the Respondent has registered or otherwise acquired the

Domain Name primarily:

B as a blocking registration against a name or mark in which the Complainant has Rights;

There is no evidence that the disputed domain name is or was registered as a blocking registration. Indeed the Complainant admits that it has its own domain name - .

3(a)i Circumstances indicating that the Respondent has registered or otherwise acquired the

Domain Name primarily:

C for the purpose of unfairly disrupting the business of the Complainant;

and

3(a)ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

I shall deal with these two factors jointly as together they make up the main thrust of the Complainant's objection.

The words "road runner" are generic. A road runner is a bird of the cuckoo family which, according to the dictionary, is also known as a paisano or a chaparral. Despite the fact that this creature is indigenous to the USA, it is – as the Respondent has pointed out – well known in the UK as the result of a cartoon series featuring a road runner which was originally shown on British television in the 1970s.

Neither the name nor the trade mark ROAD RUNNER is the exclusive preserve of the Complainant. The evidence submitted by the Respondent shows that there are many other companies registered with these two words as part of their name, and that there are many other ROAD RUNNER registered trade marks.

Paragraph 4(a)(ii) of the Policy provides that a domain name is not abusive if it "is generic or descriptive and the Respondent is making fair use of it."

Also, in the Appeal Decision^[1] in the case of The Procter & Gamble Company v. Michael Toth [June 26, 2006] DRS 03316 it was stated, in paragraph 8.3.8 "The mere fact that a generic word happens also to be a trade mark cannot lead to the trade mark owner monopolising all uses of the word. Certainly for the purpose of complaints under the DRS Policy there has to be something more."

Therefore what I have to decide is whether there "something more" in this case, and whether the Respondent is making fair use of the disputed domain name?

The Complainant relies upon the fact that it is in the business of offering motor insurance, and although this appears to be restricted to a rather narrow type of insurance, namely insurance for motor traders, nevertheless it does fall within the general category of motor insurance, and the entries and links that originally appeared on the website at the disputed domain name do appear to have been in respect of motor insurance, although with one exception.

The Respondent protests that he had never heard of the Complainant and that he had other things in mind when registering what he considered was a generic term. He claims that the site at the disputed domain name is a click-per-view model and that the category which he instructed should be listed thereon was 'cars'. However he subsequently contradicts himself when he says, in his non-standard Submission, that "the domain name was always displaying advertisement links to 'Car Parts'". I think it is to his credit that, on receipt of the first challenge to the disputed domain name, the links on the site were altered to remove the references to motor insurance, but that may have been too late.

There is some dispute between the parties as to the appearance of the site. The Complainant filed what it claimed were copies of the site before and after the change, and it further claimed that by entering 'insurance' in the search box on the amended site the original page with all its references to 'motor insurance' could be accessed. The Respondent says that all of these copies are suspect and should be rejected. He claims that the original printouts "lack important web browser element known as an address bar, to confirm which URL (and which domain name) was typed." However they look perfectly standard to me. For instance both are clearly headed with the domain name and on both the legend "http://www.roadrunner.co.uk/" is printed in the bottom left hand corner. I therefore reject the Respondent's slur on the Complainant over these pages and conclude that what was filed by the Complainant is a true copy of how the website appeared at the time. On a page dated 23/11/2006 there are 10 entries and only 1 does not relate to motor insurance, while on a page dated 29/11/2006 all 10 entries relate to motor insurance. This completely contradicts the Respondent's assertion that the site displayed links to cars or car parts. I agree with the Complainant that the many references on the site to motor insurance are more than just a coincidence.

However I also think that the Complainant's search for 'insurance' on the amended pages is somewhat far-fetched. The amended page contains no links to any insurance site and there is no mention of insurance in a box at the side headed "POPULAR SEARCHES". There is therefore absolutely no reason why anyone should think that the site was in some way connected to insurance and so make a search therefor.

Even though there may be no proof that the Respondent registered the disputed domain name with the prime intention of disrupting the Complainant's business, there are certainly people who, on reaching the original site, could well have believed that the domain name was owned by a company of the same name and it has to be borne in mind that the definition of 'abusive registration' in paragraph 1(i) of the policy, quoted above on page 7, requires one to look at the situation when registration of the domain name took place.

My Decision to take into account the origin al appearance of the website is reinforced by the following comment from the Appeal Decision in the case of Hanna-Barbera productions, Inc. v. Graeme Hay [August 21, 2002] DRS 00389 – "The Panel is of the view that the wording of the second limb of the definition of Abusive Registration ("has been used in a manner which took unfair advantage of …) entitles the Panel to look at all use of the Domain name from the commencement of that use to date"

I therefore conclude, on balance, that the registration of the disputed domain name was abusive.

3(a) 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

There remains the Complainant's charge – which the Respondent has not really answered –that the Respondent is in breach of this paragraph because he has registered a total of 231 other domain names. (The Complainant actually refers to paragraph 3(c)(iii) in this regard, but this is clearly a misprint as there is no such paragraph in the Policy.)

In a case relating to the domain name DRS 1629 [May 10, 2004] the following passage appears in the Decision:

"The Complainant also relies on the other registrations made by the Respondent whereby a large range of names unrelated to the Respondent's activities are acquired which may be attractive to legitimate users in the hope of selling them on for significant profits. That may be so, but such a pattern of behaviour is not necessarily objectionable. It describes the activities of numerous legitimate dealers of domain names".

DRS Experts are not bound by previous Decisions and in any case the above case was decided before the Policy was amended in September 2004 and paragraph 3(c), the "3 strikes and you're out rule", was introduced. However the facts in the above quoted passage are very similar indeed to the facts in this case and I concur with what was said. Furthermore it is worth noting that the Respondent has never, as he says, been involved in a domain name dispute. The Complainant dismisses this as being irrelevant but, on the contrary it is extremely relevant for, if the Respondent had been so involved the paragraph 3(c) might have applied.

However amongst the 231 names registered by the Respondent there are 12 which, on the evidence supplied by the Complainant either consist of or contain the registered trade marks of third parties. These are – , , , , , , , , , , , and . The Complainant describes these as "a significant number" and as "a considerable number" but that is a mighty exaggeration. The Respondent, on the other hand, refers to hundreds of highly generic and descriptive names which is more accurate. However I cannot accept that the disputed domain name "of a significantly different character" to the other registered domain names as the respondent claims.

If one swallow does not make a Summer, do12 domain names (out of 231) constitute a pattern? Possibly not, but those 12 are so blatantly aimed at the owner of the corresponding trade mark that they could not have been registered accidentally and furthermore the website pages for each of them contain matter which is clearly directed at the business of the owner of the trade mark.

I therefore conclude, on balance, that the Respondent is acting contrary to paragraph 3(a)(iii) and that his activities do constitute a pattern of registrations corresponding to names or trade marks in which he has no apparent rights.

8. Decision

The Expert finds that the Complainant has clear and indisputable rights in the name and trade mark 'Road Runner' and that this is identical to the domain name .

The Expert further finds that the domain name is an Abusive Registration in the hands of the Respondent.

The Expert therefore directs that the domain name be transferred to the Complainant.

David H Tatham

07.07.07

Note 1   All Experts have been enjoined by Nominet not to rely on this Decision as its value may be limited. However in this Expert’s opinion the quote that follows is a mere statement of practice and was not derived from any of the facts in the case.    [Back]