Nominet UK Dispute Resolution Service

DRS No. 3977

Amateur Boxing Association of England v Mr M. Green

Decision of Independent Expert

1.	Parties
Complainant:	Amateur Boxing Association of England
Country:		GB

Respondent:	Matthew Green
Country:		GB

2.	Domain Name
<abae.co.uk> (the “Domain Name”)
3.	Procedural Background
3.1	The Complaint entered Nominet’s system on 8 September 2006.  Hard copies of the Complaint were received by Nominet on 11 September 2006. The Complaint was validated and sent to the Respondent on 13 September 2006. Response hard copies were received on 5 October 2006 and reply hard copies were received beyond the deadline on 18 October 2006. An extension was granted until 10 November 2006.  Mediation being unsuccessful and the Complainant having paid the relevant fee, the Complaint was referred to me.  I confirmed that I was not aware of any reason why I could not act as an Independent Expert in this case and I was appointed as such on 6 December 2006.
4.	Outstanding Formal/Procedural Issues (if any)
4.1	On Friday 8 December 2006 the Respondent submitted a non-standard submission to Nominet.  I was informed by Nominet of this fact on Monday 11 December 2006 and provided with a copy of the Respondent’s reasons as to why the Respondent wanted to submit this extra material.  I then asked for, and was provided with, a copy of the Respondent’s entire submission, albeit without prejudice as to my ultimate position as to whether I should take the contents of this submission into consideration for the purposes of this decision.  
4.2	Accordingly, it is first necessary for me to decide whether I should take any of this additional material into account.  The starting point in this assessment is the reasons given by the Respondent.  These are provided pursuant to paragraph 13 of the Nominet Dispute Resolution Procedure Rules which state that:
“Any non-standard submission must contain as a separate, first paragraph, a brief explanation of why there is an exceptional need for the non-standard submission”.
4.3	In this case, the explanation provided by the Respondent is not particularly convincing.  He claims that he does not think that “the question and answer approach of the DRS Policy which outlines the response method enabled [him] to present a brief overall view of what actually happened”.  However, this is simply not so.  There is nothing in the DRS Policy or in Nominet’s systems that prevents a respondent from setting out in detail the background facts in any particular case.
4.4	Accordingly, I believe I would be entitled to disregard the Respondent’s additional submission in this case.  Nevertheless, I have decided that I will take this material into account.  The reason is that this submission sets out in some detail the Respondent’s contentions as to why and in what circumstances he originally registered the Domain Name (something that was far from clear from either the Complainant’s and the Respondent’s standard submissions).  In particular he provides a statement from one Mrs King, an employee of the Complainant at the time that the Domain Name was registered.  I have found this material particularly valuable in understanding what occurred at the time the Domain Name was registered.  
4.5	Significantly, and for reasons that will become apparent, I do not think consideration of this additional material is prejudicial to the Complainant’s case.  It is for this reason that I have also not considered it necessary to invite the Complainant to respond to this new material.
5.	The Facts
5.1	The Complainant is a limited company, incorporated under the laws of the United Kingdom. It is the National Governing Body of amateur boxing in England. Although the Complainant was only registered in 1993, it is able to trace its history as the Amateur Boxing Association back in the 1880s.  It is not the owner of any registered trade marks but has a logo (the nature of which is described in greater detail later in this decision) which is currently “awaiting trade mark registration.”
5.2	In 2002 either the Respondent directly or the Respondent’s company Biz-Tec Support Ltd (“Biz-Tec”) began to provide information and communications technology support to the Complainant’s business. This included editing of the Complainant’s then existing website which operated from the domain <abae.org.uk>.
5.3	In or around September 2004 the Domain Name was registered by the Respondent in his name.  It was then used by a number of the Complainant’s staff for email purposes and the Complainant’s website continued to operate from <abae.org.uk>.
5.4	In early 2006 the Complainant contracted British Telecom to design, develop and host a revised website for the Complainant.  This website was launched under the Domain Name in March 2006.  The Domain Name appears to have been widely advertised by the Complainant, including on boxing ring covers that were visible in various BBC broadcasts.
5.5	The Complainant asserts that the Respondent then demanded £20,000 from the Complainant for the Domain Name, and threatened to close down the Website unless payment was made. 
6.	The Parties’ Contentions
Complainant
6.1	The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is identical or similar to a name or mark in which it has Rights, and that the registration of the Domain Name in the name of the Respondent is an Abusive Registration.
6.2	The Complainant points to the fact that it has been established since 1993, and its roots in connection with the Amateur Boxing Association (“ABA”) go back to 1881.
6.3	The Complainant contends that from 2002 the Respondent’s company, Biz-Tec, provided a range of information communications support and procurement services to the Complainant including work on its then existing website.  However, according to the Complainant “no contract exists to support this work nor fees paid”. It was whilst he was providing these services that the Respondent registered the Domain Name. The Complainant has “invoices going back to 7 August 2002 from Biz-Tec”, but these do not “indicate any charges for the use of the [Domain Name] or for its registration”.  
6.4	The Complainant believes that by registering the Domain Name under his own name in 2004, the Respondent was abusing his position as supplier of IT services to the Complainant.    Neither the “Chairman” nor any other “officer” of the Complainant gave permission or was aware of the actions of the Respondent in registering the Domain Name.
6.5	It is claimed that in June 2006 the Respondent told Malcolm Bull at Liverpool Direct Limited (a company engaged to develop and implement the Complainant’s website) that he held the Domain name “for future investment”.  Mr Bull offered him £200. It is alleged that in a subsequent conversation with Paul King, the Chief Executive of the Complainant, that the Respondent asked for £20,000.
6.6	The Complainant asserts that in July 2006 the Respondent threatened to “remove” the Complainant’s website.  These claims are supported by reference to emails from the Respondent such as that of 21 July 2006 in which the Respondent stated as follows:
“I have not heard from you or Paul King since last Friday and therefore assume that there is no wish on your part to negotiate a value for the [Domain Name].  I must therefore today begin the process of removing the DNS TAG that points to your servers and advise you to put in place procedures to manage the website and all email traffic immediately”.
6.7	The Complainant states that closing down the Website would have been highly damaging to the Complainant’s business. 
6.8	In fact the Respondent did not follow through with this threat (there is some suggestion in the material filed by the Complainant that this was because the relevant TAG was not controlled by the Respondent, but this aspect of the Complainant’s case is far from clear).  However in subsequent, email correspondence the Respondent sought £99 per week from the Complainant for use of the name.
6.9	The Complainant contends that the Respondent has ”deliberately misled” the Complainant by not advising it of his personal registration of the Domain Name notwithstanding that he was “fully aware of the significant financial investment it was about to make in its website” in 2005.  It also claims that the Respondent has attempted by means of its demands to hold the Complainant to ransom.
6.10	The Complainant asserts that it has therefore been the victim of an “abusive registration”.
Respondent
6.11	It is somewhat difficult to follow the Respondent’s Response in this case.  However, in essence the Respondent’s case as set out in this document appears to be as follows:
(1)	There was no contract between him/Biz-Tec.  (It is not clear whether this is a general statement, simply an assertion that there was no written contract in relation to the provision of his services, or merely an assertion that there was no contract, whether written or otherwise, in relation to registration of the Domain Name).
(2)	The Complainant “did not wish to use nor made any claim” in relation to the Domain Name since it had the domain name <abae.org.uk>.
(3)	The Domain Name was registered by the Respondent with a view to providing additional email addresses and an alternative email system for staff of the Complainant who faced difficulties with the operation of the then existing system.
(4)	The Complainant was aware of the registration (although exactly when it became aware is not explained).
(5)	The Respondent does not appear to deny that it sought at various times £20,000 or £5,000 per annum in respect of the Domain Name but asserts that other “options” were available to the Complainant.
(6)	The Respondent claims that the Domain Name is “generic or descriptive”.  It is also claimed that “Fair use was made as in the site operated, non commercially, solely in tribute to the amateur boxing sport” but no evidence is provided as to this alleged “fair use” by the Respondent.
(7)	Biz-Tec has “invoiced and received payment for the use of its domain webspace and email systems”.  The Respondent attaches a document which looks as if it is a partial printout from a computer screen displaying a computerised form that purports to represent an invoice to the Complainant.  This “invoice” describes fees of £335.80 in respect of a “Website Email Package: www.abae.co.uk One Year Package Fee Package (1 year) from 16-09-2004 to 21-09-2005”.  At the top of this “invoice” it has the word “paid” in the form of an imitation stamp.  No evidence is provided that a printout of this “invoice” was sent to the Complainant, nor apart from the imitation stamp, is there any evidence that the Complainant paid to the Respondent any money in this respect.
(8)	The Respondent also claims that the Complainant has made false statements and allegations and claims that Mr Smart the “Chairman” of the Complainant did not authorise a statement under his name that was enclosed by the Complainant with the Complaint.  No further evidence is offered in this respect.
The Respondent’s further submission
6.12	As I have explained above, the Respondent forwarded a further non-standard submission to Nominet on 8 December 2006.  This submission was supported by a statement from Mrs Elizabeth King a former employee of the Complainant.  From these documents a far more coherent story emerges.
6.13	Mrs King explains that, she was employed by the Complainant in September 1999.  In September 2000 she “assumed the role of “Administrator/Office Manager” upon the suspension of the then General Manager of the Complainant.  As such she had control of “day to day management procedures” although she had to make “frequent trips to Mr Smart’s [the Complainant’s Chairman] place of work to fulfil financial procedures, cheque signing, invoice authorisation” and updating Mr Smart on outstanding matters.  This role continued until September 2002 when Mr Jim McCarthy was appointed as the new General Manager of the Complainant.
6.14	It was Mrs King who “secured the services” of the Respondent in 2002.  Mrs King states that Mr Smart and Mr McCarthy were aware of the Complainant’s association with Biz-Tec but they were “not particularly interested in getting involved with any decisions or requests, [and] they encouraged [her] to take any action [she] considered necessary to ensure the smooth running of the [Complainant’s] offices”.
6.15	Mrs King makes reference to the difficulties that the Complainant suffered in 2004 with its then current email system and states that “Mr Green suggested to [her] the possibility of setting up an alternative domain for [her]”. This led to the registration of the Domain Name.
6.16	Mrs King states that the email system operating from the Domain Name was used by staff of “Amateur Boxing England Limited”, a separate company that had been set up by the Complainant to administer a Lottery Grant that the Complainant had secured.  Since this new company “would not necessarily continue to exist once the term of the funding finished, [Mrs King] was happy for Mr Green and Biz-Tec to set up and own the abae.co.uk domain.”  However, she also states that “neither Mr Smart or the Board of [the Complainant] made any enquiry about, or showed any interest in the [Domain Name]”.
7.	Discussion and Findings:
General 
7.1	To succeed under the Nominet Dispute Resolution Service Policy (the "Policy"), the Complainant must prove on the balance of probabilities, first, that it has Rights in respect of a "name or mark" that is identical or similar to the Domain Name (paragraphs 2(a)(i) of the Policy) and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent (paragraph 2(a)(ii) of the Policy).
7.2	Abusive Registration is defined in paragraph 1 of the Policy in the following terms:
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.
Complainant’s Rights
7.3	The Complainant does not claim to be the owner of a registered trade mark.  However, such rights are not a requirement of the Policy.  Rights in a name which are protectable under the English law of passing off are sufficient.
7.4	With this in mind, the Complainant does not directly address the question of how it comes to have rights in a name or mark which is identical or similar to the Domain Name.  It does refer to a logo of which the predominant feature is the letters “ABA”.  How long it has used this logo is not explained but it does appear on various documents annexed to the Complaint, including a Newsletter dated March 2006
7.5	There is also evidence that the Complainant refers to itself as the “ABAE”.  This abbreviation is for example used throughout the March 2006 Newsletter.  However, it is reasonably clear that the use of the “ABAE” name has been more widespread.  “ABAE” was used in the domain name initially used by the Complainant (i.e. <abae.org.uk>).  Whilst the Domain Name was not registered in the Complainant’s name, it is clear that that the Complainant has also developed goodwill in the name ABAE through the extensive use of the Domain Name.  The Domain Name was advertised on BBC television and the Respondent’s own evidence (in the form of a LYCOS web hosting report) suggests that it received extensive traffic in 2005. 
7.6	In short, I believe that the Complainant in this case has developed sufficient goodwill in the ABAE name for the purposes of establishing trademark rights under the Policy.  In doing so I also bear in mind the comments of the appeal panel in Seiko UK Limited v Designer Time/Wonderweb [2002] DRS 00248 that the “requirement to demonstrate ‘rights’ is not a particularly high threshold test”.
7.7	I am therefore, satisfied that the Domain Name is identical to the trade mark in which the Complainant has Rights and that the Complainant has made out paragraph 2(a)(i) of the Policy. 
Abusive Registration
7.8	A key issue in this case is the reason why the Respondent registered the Domain name and the circumstances surrounding that registration.  With one slight reservation I am prepared to accept Mrs King’s explanation of what occurred in this respect.  Despute that emotive terms in which both the Complainant and the Respondent have sometimes formulated their cases, Mrs King’s description is, in large part consistent with both parties’ contentions and strikes me as inherently plausible description of events.
7.9	The one slight reservation arises from Mrs King’s statement that she was “happy for [the Respondent] and Biz-Tec to set up and own the domain”.  It is the reference to “ownership” that causes me some concern.  I comment on this point later on in this decision.
7.10	With this in mind I turn to the requirements of the Policy.  Paragraph 3 of the Policy provides “a non-exhaustive” list of factors which may be evidence that a domain name is an Abusive Registration. Great play is made by the Complainant of the fact that the Respondent offered to sell the Domain name to the Complainant for £20,000 or to rent it for £5,000 per year.  In the circumstances it might be thought that the Complainant seeks to rely upon paragraph 3(a)(i) A of the Policy.  This describes:
“Circumstances indicating that the Respondent has registered or otherwise acquired the Domain name primarily.…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”.
7.11	However, this provision requires the Respondent to have had the intention of sale or renting in his mind at the time of registration.  I cannot draw the conclusion that the Respondent’s intention at the outset was to make a registration purely for the purposes of selling the Domain Name later on. As Mrs King describes, he did it in order to provide an email service for the Complainant.
7.12	In the circumstances the Respondent’s actions seem closer to that covered by paragraph 3(a)(v) of the policy i.e.: 
“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 exclusively; and B. paid for the registration and/or renewal of the domain name registration.”
7.13	Undoubtedly the Domain Name was registered as a result of a relationship between the Complainant and the Respondent.  The Respondent was providing IT services to the Complainant at the time. Further, there is no doubt that since registration the Complainant has been using the Domain Name exclusively since registration.  The difficulty here is that it seems unlikely that the Complainant directly paid for the registration.  The Complainant asserts that it has made no payment to the Respondent. The Respondent contends that it has sought and received payment in respect of its services.  However, the purported invoice relied upon by the Respondent in this respect, even if it is taken at face value, does not pass on registration fees.  According to the Respondent’s version of events, it simply represents payment for the provision of IT services operating from the Domain Name.
7.14	Is this fatal to the Complainant’s case?  I think not.  It is helpful here to briefly consider the history behind paragraph 3(v).  It is a relatively new addition to the Policy.  It did not form part of version 1 of the Policy and was brought in with version 2 of the Policy in October 2004.  Prior to October 2004 there had been a number of cases where a complainant had succeeded against a person who had registered a domain name for the complainant but registered it in another name.  Examples include Arbeta Plc v Potter [2003] DRS 827, Multiplex Media Ltd v SU Corporation Ltd [2003] DRS 1036 and Reebok International Ltd v Media Café [2003] DRS 1074.  However, there were decisions that pointed in the other direction.  These cases suggested that unless there was abusive intent at the time of registration, the Policy did not apply.  Examples here include Kent Qualified v Hewlett [2002] DRS 599 and City ID Ltd v Icon media Lab Ltd [2003] DRS 692.  The October 2004 amendment made it clear that the former view was the one that should prevail.
7.15	What these cases and the amendment to the Policy make clear is that the fact that a domain name has been registered for someone else with that person’s consent as a result of a commercial relationship between the registrant and that person, this does not preclude a finding that there is an abusive registration.  In a case where the complainant has directly paid for the fees associated with registration that clearly indicates that it was the intention of the parties that the domain name should be “owned” by the paying party.  However, the fact in this case that there was no such payment does not to my mind mean that there is no abusive registration.
7.16	This may not be a case which falls squarely within paragraph 3(v) of the Policy but the list of factors in paragraph 3 which evidence Abusive Registration are non-exhaustive.  If a person registers a domain name for use by another, the domain name represents the name of that other person and the registrant has no obvious interest in that domain name, then the refusal to transfer that domain name can constitute abusive use of the domain name.
7.17	The Respondent, has of course claimed that the Domain Name is “generic”.  However, domain names are not “generic” in abstract.  It depends upon the context in which they are being used.  So for example, the word ”Apple” might be seen as generic or descriptive when it comes to fruit but has quite different connotations in the fields of computers and music.  No generic use of “ABAE” is suggested by the Complainant and there is no evidence before that he had no such use in mind at the time of registration.
7.18	I of course accept that if there had been an agreement between the parties that the Respondent would retain ownership of the Domain Name, the case would be somewhat different.  At first sight Mrs King’s evidence might suggest there was just that sort of agreement in this case.  However, as I have already stated, this is the one aspect of Mrs King’s evidence about which I have some reservation.
7.19	The Respondent has not provided any contemporaneous evidence to suggest that ”ownership” of the Domain Name was actually discussed at the time, let alone an agreement reached as to who would “own” the Domain Name. Indeed if one reads Mrs King’s statement carefully, it is apparent that she does not actually suggest that there was any such agreement.  At best it would seem (although again Mrs King does not expressly say this) that she either knew or was indifferent to the fact that the Domain Name was registered in the Respondent’s name.
7.20	It is also necessary to consider Mrs King’s status within the Complainant at the relevant time.  She may have been responsible for the day to day running of the Complainant’s office, but even when she assumed the role of Office Manager it seems reasonably clear that any significant decision affecting the Complainant had to be referred to Mr Smart.  For example, and as Mrs King explains, all cheques were signed by Mr Smart.  By the time of the registration Mrs King was once again working for and reporting to an Office Manager, on this occasion Mr McCarthy.  In short, it seems inherently unlikely that Mrs King had the authority to enter into an agreement with the Complainant as to the ownership of the Domain Name which incorporated the Complainant’s name.  Also it is clear from Mrs King’s evidence that neither the “Board” nor Mr Smart were informed, or approved of, any agreement between the Respondent and the Complainant whereby the Respondent would own the Domain Name.
7.21	Lastly, it is far from clear why the Respondent would have a legitimate reason for wanting to keep the Domain Name.  As I have already described, no “generic” use for the Domain Name has been suggested by the Respondent.
7.22	In conclusion, whilst I accept Mrs King’s statement that she was happy for the Respondent to retain ownership of the Domain Name, it strikes me as inherently improbable that there was an agreement in place between the Complainant and the Respondent as to ownership of the Domain Name. I therefore find as a matter of fact for the purposes of this decision that there was no such agreement.
7.23	A further factor that points to abusive registration in this case is the sum of £20,000 sought by the Respondent.  Domain name trading is not abusive per se and a name may be so commercially attractive that it can command a very high sum when sold.  However, in this case it is hard to see how the name “ABAE” in abstract might justify a claim for £20,000.  Its value comes from the use made of it by the Complainant to date and the association between the ABAE name and the Complainant.
7.24	In conclusion, I find that the Complainant has made out its allegation that the Domain Name is an Abusive Registration.
8.	Decision
8.1	I find that the Complainant has Rights in the Domain Name, which is identical to its trade mark, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
8.2	I therefore determine that the Domain Name should be transferred to the Complainant.

Matthew Harris
20 December 2006