ELIGIBILITY
REQUIREMENTS DISPUTE RESOLUTION POLICY
DECISION
Nominet
Claim Number: FA0905001265524
PARTIES
Complainant is Nominet UK (“Complainant”),
represented by NickWenban-Smith,
of Nominet UK,
REGISTRAR AND DISPUTED REGISTERED NAME
The Registered Name at issue is <nominet.name>, registered with Total Web Solutions Limited trading as TotalRegistrations.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 29, 2009; the Forum received a hard copy of the Complaint on June 9, 2009.
On June 11, 2009, Total Web Solutions Limited trading as TotalRegistrations confirmed by e-mail to the Forum that the Registered Name <nominet.name> is registered with Total Web Solutions Limited trading as TotalRegistrations and that Respondent is the current registrant of the Registered Name. Total Web Solutions Limited trading as TotalRegistrations has verified that Respondent is bound by the Total Web Solutions Limited trading as TotalRegistrations registration agreement and has thereby agreed to resolve registered name disputes brought by third parties in accordance with the Eligibility Requirements Dispute Resolution Policy (“ERDRP”).
On June 16, 2009 a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 6, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with 2(a) of the Rules of Procedure for the Eligibility Requirements Dispute Resolution Policy (the “ERDRP Rules”).
A timely Response was received and determined to be complete on July 1, 2009.
On July 8, 2009, pursuant to ERDRP Rule 6(b), the Forum appointed Honorable Karl V. Fink (Ret.) as the single Panelist.
Complainant requests that the Registered Name be cancelled pursuant to ERDRP Policy 5(f)(i)(A).
A. Complainant
The Complainant is based on Paragraph 4(b) of ERDRP.
The domain name, <nominet.name>, does not meet the Eligibility Requirements. The Registrant’s name is given as “Customer Domain Services Team.” The address details of the Registrant are for an Internet Service Provider called Solis <solis.co.uk>.
The Eligibility Requirements require that the domain name must be the Personal Name of the Registrant. The name Nominet is not the name of the Respondent, nor is the Respondent commonly known by the name Nominet.
Nominet is a made up word with no
meaning other than to denote the Complainant.
The complainant is the owner of a European Community trademark and a
The Respondent is not known by the name Nominet and would not be able to use the name Nominet as a result of the Complainant’s rights in that name. The Respondent is well aware of the Respondent’s right having been a member of the Complainant since before it registered the domain name.
B. Respondent
Solis regularly registers domain
names for and on behalf of our customers.
Solis will, if requested to do so, maintain their privacy by entering
our own contract details. In such cases,
the publicly available WHOIS information does not indicate “ownership” of the
particular domain name. Nominet
The domain registration was not abusive and has not been misused.
The registration of the term NOMINET is not relevant. The domain name in question is personal and has not been used for anything commercial.
The domain name is being used for email, solely in connection with “netnews.”
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
Paragraph 15(a) of the ERDRP Rules instructs this Panel to “decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(b) of the ERDRP requires that the Complainant prove each of the following elements in order to establish that the Registered Name was registered in violation of the Eligibility Requirements and obtain an order that a Registered Name should be cancelled:
(1) the name corresponding to the Registered Name is not the legal name of Respondent; and
(2) the name corresponding to the Registered Name is not the name of a fictional character in which the Respondent has trademark or service mark rights; and
(3) the Respondent has not been commonly known by the name corresponding with the Registered Name.
Respondent makes no claim that Respondent, or
Respondent’s customer’s name is Nominet.
Complainant asserts that Respondent’s legal name is not NOMINET because
the WHOIS information for the <nominet.name> domain name lists “Customer Domain Services Team” as the registrant. From the evidence, the Panel finds that
Respondent’s legal name is not NOMINET pursuant to Policy ¶ 4(b)(i). See Van Kampen Investments Inc. v.
Titan Net, FA 566611 (Nat. Arb. Forum Nov. 10, 2005 (“There is no evidence
that Respondent’s legal name is “Van Kampen” or “Van Kampen Investments.” The evidence in the record reveals that
Respondent’s legal name is Titan Net or Titan.
Therefore, Respondent’s registration of the <vankampen.name> and
<vankampeninvestments.name> Registered Names do not meet [ERDRP Policy ¶
4(b)(i)].”).
This element has been satisfied.
Name of Fictional Character
Complainant contends that Respondent does not own any trademark rights in a fictional character under the NOMINET mark. Complainant further contends that the NOMINET mark is a made-up word with no meaning other than to identify Complainant. Complainant holds registration of its NOMINET mark with the Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 1,662,972, filed May 18, 2000, issued January 16, 2006). Based on the evidence, the Panel finds that Respondent is not the name of a fictional character in which Respondent owns a trademark under Policy ¶ 4(b)(ii). See Morgan Stanley v. Bross, FA 304684 (holding that the respondent failed to satisfy ERDRP Policy ¶ 4(b)(ii) with respect to the <morganstanley.name> Registered Name because the records of several major Patent and Trademark Offices around the world failed to reveal any registrations of the MORGAN STANLEY mark by Respondent).
This element has been satisfied.
Commonly Known As
Complainant asserts that Respondent is not commonly known by the NOMINET name because Complainant owns the rights in that mark. Complainant further asserts that the aforementioned WHOIS information for the <nominet.name> domain name, which lists “Customer Domain Services Team” as the registrant, does not indicate that Respondent is commonly known by the NOMINET name. The Panel finds that Respondent is not commonly by the NOMINET name under Policy ¶ 4(b)(iii). See C. R. Bard, Inc. v. Titan Net d/b/a Titan, FA 563782 (Nat. Arb. Forum Oct. 28, 2005) (“Respondent is known to this Panel only as Titan Net. There is no evidence in the record, nor has Respondent come forward to establish that it is commonly known as “crbardinc,” “bardurlogy,” “bardcr,” “crbard,” “bardport” or “bardaccess.” Therefore, Respondent does not meet this Eligibility Requirement in relation to the . . . domain names and ERDRP ¶ 4(b)(iii) has been satisfied.”).
This element has been satisfied.
In accordance with the EDRP Rules, the relief sought by Complainant is GRANTED.
The Panel orders that the registration for the registered name <nominet.name> be CANCELLED.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 21, 2009
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