PSG Franchising Ltd v Elife Ltd [2008] DRS 5899 (13 October 2008)

[ Home ] [ Databases ] [ World Law ] [ Multidatabase Search ] [ Help ] [ Feedback ] [ DONATE ] Nominet UK Dispute Resolution Service You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> PSG Franchising Ltd v Elife Ltd [2008] DRS 5899 (13 October 2008) URL: https://www.bailii.org/uk/cases/DRS/2008/5899.html Cite as: [2008] DRS 5899 [ New search ] [ Printable RTF version ] [ Help ] NOMINET DISPUTE RESOLUTION SERVICE DRS 5899 PSG Franchising Limited Complainant and Elife Limited Respondent ______________________________________ DECISION OF INDEPENDENT EXPERT ______________________________________ Parties Complainant: PSG Franchising Limited Country: United Kingdom Respondent: Elife Limited Country: United Kingdom Domain name Psg.co.uk (the "Domain Name"). Procedural background 3.1 The Complaint entered Nominet's system on 18 July 2008. Hard copies of the Complaint were received by Nominet on 22 July 2008. The Complaint was validated on 22 July 2008 and was sent to the Respondent on the same date. 3.2 The Response entered Nominet's system and hard copies of the Response were received by Nominet on 13 August 2008. The Response was sent to the Complainant on the same date. 3.3 The Reply entered Nominet's system on 22 August 2008 and was forwarded to the Respondent's representative on the same date. 3.4 The dispute then entered the mediation phase, which evidently was unsuccessful. On 8 September 2008 the parties were notified that the dispute would be decided by an Independent Expert if the Complainant paid the requisite fees by no later than 22 September 2008. 3.5 On 22 September 2008, the requisite fees were received, evidently having been paid on behalf of the Complainant by an entity named Audiotel International Limited. On 24 September a conflict check was sent to the Independent Expert. The Independent Expert's declaration of impartiality and independence was signed and sent to Nominet on 25 September. Outstanding formal/procedural issues (if any) 4.1 There do not appear to be any outstanding formal or procedural issues. There appears to be no reason why a complainant's fees should not be paid on its behalf by a third party. The facts 5.1 The Complainant is a UK limited company with number 3674092 which was incorporated on 25 November 1998 and has since 15 December 1998 been known as PSG Franchising Limited, with a registered office at 133 Ebury Street, London SW1W 9QU. Mr Bernard Connor, who conducted the correspondence with the Respondent on behalf of the Complainant, is a director of that company. 5.2 The Domain Name was registered on 5 April 2006. It is currently registered to the Respondent, Elife Limited, which is a UK limited company with number 5333223 and an address at 383 Pinner Road, North Harrow, Middlesex HA1 4HN. The registrar is Mohammed Zaffer. 5.3 It would appear from the evidence exhibited to the Response that on 31 August 2006 the Domain Name was transferred from Christopher Bowler of 8 Grange Road, Sutton, Surrey SM2 6RS to Mohammed Zaffer of 383 Pinner Road, North Harrow, Middlesex HA1 4HN. The Domain Name appears to have been one of nine domain names transferred from Mr Bowler to Mr Zaffer on that date. 5.4 Since then Mr Zaffer and the Respondent appear to have used it to drive traffic to a search site named 'Go Search', which provides pay-per-click (PPC) links to websites relevant to the term searched against. 5.5 In addition, on 8 January 2007 the Domain Name appears to have been placed into the Respondent's Sedo account for sale. This has been confirmed by an email from Hugo Dalrymple-Smith of Sedo to the Respondent of 7 August 2008. The Complainant has exhibited evidence that the Domain Name was advertised for sale on the Sedo website at some point prior to submission of the Complaint (unfortunately, the screenshot submitted by the Complainant is undated). 5.6 The Respondent, Elife Limited, is Mr Zaffer's corporate vehicle. It was incorporated on 14 January 2005. Its directors are Mr Zaffer and a Mehrooz Fatma Zaffer whom Mr Zaffer says is his wife. Mr Zaffer says that he and his wife have always been directors. I have no reason to disbelieve either assertion. Elife Limited would therefore appear to be a small family company, controlled by Mr Zaffer. 5.7 On 29 May 2008 Bernard Connor of the Complainant sent an email to the Respondent in the following terms: " Dear Sirs I am the CEO of the Property Search Group who trade under the PSG brand and have done so for over 10 years – we have PSG as a registered trademark since 1999. I would therefore like to own this Domain name. I have checked with our advisors and can initiate a nominet DSR procedure which will mean your company wil be forced to handover this domain name due to the fact that you are using our trade name without our permission. However, before I go down that route, I would like to offer you a nominal amount – say £300 – to transfer this domain name and therefore prevent the adverse publicity with nominet that my procedure may cause you and your company. Best regards Bernie Connor – CEO Property Search Group " 5.8 The Respondent replied on the same day in the following terms: " Dear Mr Connor You have unfortunately been advised incorrectly. Whilst you may have a trademark for classes 36 and 42 for 'PSG The PROPERTY SEARCH GROUP', this does not give you total exclusivity for other areas of business for this term and certainly does not give you any exclusivity for the term 'PSG' for any class. Furthermore, we don't promote any products or services under classes 36 and 42. Bearing this in mind you have no grounds for a complaint. As the advice you have been given is obviously incorrect, may we respectfully suggest that you take proper legal advice before pursuing any course of action against us. As we have made you aware of the position, we will of course hold you liable for all costs incurred in this matter without further notice and ask you to make any further communications directly with our lawyers whom we have copied in to this email. Regards Mohammed Zaffer Elife Limited 383 Pinner Road North Harrow Middlesex HA1 4HN " 5.9 Mr Connor of the Complainant replied within half an hour, in the following terms: " Dear Mr Zaffer Many Thanks for your quick reply – I will obviously forward your email on to my legal advisors. As you have not responded to my offer to purchase the domain name from you I must assume that this path is not available. Brest regards [sic] Bernie Connor " 5.10 On 8 July 2008 the Domain Name was transferred by Mr Zaffer to his company, Elife Limited. The Domain Name appears to have been one of 39 domain names so transferred. Parties' contentions Complaint 6.1 The Complainant asserts that it has been registered as a company under the name "PSG Franchising" since 1998. It says it has traded since 1998 under the name PSG and that it has advertised under this name since the same date. The Complainant asserts that it and its franchisees "spent about £1.8m on such advertisements" in 2005. However, no explanation is provided of how much of that advertising spend was contributed by the Complainant and how much by the franchisees. Moreover no evidence at all is provided of that spend (e.g. advertising and/or marketing budgets, media schedules, invoices, etc). The only evidence in support of that assertion is five undated press advertisements in unidentified publications. The Complainant asserts that in 2005 its "brand's sales volume", i.e. presumably the aggregate turnover of the Complainant and all franchisees, was "about £40 million". Again no evidence is provided of that assertion (e.g. report and accounts). Further, it is not clear why more recent financial information could not have been provided, particularly in light of the fact that accounts have been filed at Companies House for the 12 months to 31 March 2008 (which shows the Complainant's turnover for the 12 months to 31 March 2008 as £9.6 million and for the previous 12 month period as £8.9 million). 6.2 The Complainant relies on its registered mark PSG - PROPERTY SEARCH GROUP which was registered on 30 July 1999 with number 2186313. The Complainant points out that the initials PSG comprise more than 90% of the entire registered device, the font for the letters PSG being more than 10 times larger than that for the words Property Search Group. The Complainant also asserts that the letters PSG are "the more memorable portion of the mark, as it abbreviates the rest of it". On that basis, the Complainant asserts that the Domain Name is identical to the Complainant's trading name of PSG and similar to its registered trade mark and company name. 6.3 The Complainant alleges that the Respondent is a "sham entity that serves as the alter ego of Mr Mohammed Zaffer". For reasons best known to its authorised representative, Mr Harry Jacobs of RegainDomain.com, the Complaint refers throughout to Mr Zaffer by his first name, Mohammed. It is not clear why this course has been taken, but parties to the DRS would be well advised to observe the professional courtesies. 6.4 The Complainant says that when it approached the Respondent to "settle the instant matter amicably", the Respondent (a) "promptly altered the registrant's name (cyber-flying)", (b) listed the domain name for sale, and (c) rejected an offer by the Complainant to purchase the domain name "using what appears to be a fill-in-the-blanks form letter" to the effect that where a mark is not registered in all possible classes, "cyber-squatting is allowed". 6.5 The Complainant contends that the Domain Name in the hands of the Respondent is an Abusive Registration on a number of grounds. 6.6 First, it says that the Domain Name was primarily registered for the purposes of selling, renting or otherwise transferring it to the Complainant or to a competitor of the Complainant, at a price greater than the Respondent's costs, i.e. as per paragraph 3(a)(i)(A) of the Policy. The basis for that assertion appears to be Mr Zaffer's refusal of the Complainant's offer of £300 to buy the Domain Name and the allegation that he then listed the Domain Name for sale shortly after receipt of the offer letter. It is said by the Complainant that while Mr Zaffer "stopped short of directly soliciting for a higher offer from Complainant, he has actively sent all the signals that he is highly desirous of one". 6.7 Secondly, it says that the Domain Name was "one of a series of registrations that the Respondent has made, which because of their number, type and pattern prove that the Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well known names in which the Respondent has no legitimate interest". This appears to be intended to address, in part at least, paragraph 3(a)(iii) of the Policy (" 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 "). The Complainant cites in support of that proposition the fact that the Respondent has registered the domain names iphone.co.uk , mysql.co.uk , mozilla.co.uk , smeg.co.uk and qbasic.co.uk . 6.8 Thirdly, the Complainant says that the Domain Name was registered with "incorrect name and address details" which is "independently proved by Mohammed's altering the registrant's name shortly after his receipt of Complainant's notice, an act infamously known as 'cyber-flying'". This is presumably intended to refer to paragraph 3(a)(iv) of the Policy. 6.9 Fourthly, it is said that the Domain Name "is used by Mohammed in a way which confuses people into thinking that it was controlled by the Complainant; specifically, by Mohammed incorporating Complainant's mark in a domain name that in turn displays ads related to the class of services provided by Complainant". This is presumably intended to refer to paragraph 3(a)(ii) of the Policy. 6.10 In support of that allegation, the Complainant exhibits screenshots from the Respondent's website at that URL which do indeed appear to demonstrate that the Respondent is using the Domain Name principally to provide links to websites relating to the Complainant's business and covered by the Complainant's registered trade mark in classes 36 and 42. I will return to this evidence later. 6.11 Fifthly, the Complainant cites a decision in VisitBritian v Johnson (DRS 04250) which considered whether the registration of enjoy-england.org.uk was done in innocent ignorance of the Complainant's extensive prior use of the EnjoyEngland mark. The Complainant asserts that the same considerations apply in this case and therefore appears to be advancing a case that the Respondent has unfairly used the Complainant's reputation and business goodwill to provide a springboard for its own business. 6.12 Finally, the Complainant asserts that the Respondent has caused unfair disruption of its business, i.e. as per paragraph 3(a)(i)(C) of the Policy, and relies on decisions in UFI Limited v Domain Administration Limited (DRS 4292) and Conran Shop Limited v Morrison (DRS 5521) concerning PPC sites and asserts that in this case the circumstances are "substantially similar". Response 6.13 The Respondent says that the Complainant has provided no evidence of having traded under the name PSG since 1998 and also highlights lacunae in the Complainant's evidence in support of its claimed advertising spend. 6.14 The Respondent submits that the Domain Name is dissimilar to the Complainant's registered trade mark of PSG The Property Search Group because while PSG is prominent, it is only a small part of the mark text and the most heavily stylised. For these reasons, the Respondent asserts that the Complainant has failed to establish rights. 6.15 On the question of abusive registration by reference to paragraphs 3(a)(i)(A) to (C) of the Policy, the Respondent draws attention to the decision of the Appeal Panel in Verbatim Ltd v Michael Toth (DRS 4331) that a Complainant has to demonstrate: " as an opener, that the Respondent was aware of the existence of the Complainant or its brand at the date of registration of the Domain Name or at commencement of an objectionable use of the Domain Name " 6.16 The Respondent correctly submits that similar principles were applied by Appeal Panels in Mercer Human Resource Consulting Inc v IMO International Limited (DRS 3733) and The Procter & Gamble Company v Michael Toth (DRS 3316). 6.17 The Respondent explains that it is a company controlled by Mr Zaffer whose business is what is colloquially known as 'domaining', i.e. buying, selling and monetising domain names. The new DRS policy explicitly recognises such activities as permissible. But even under the old policy (which governs this decision), such activities are not in themselves regarded as objectionable. 6.18 The Respondent explains the sequence of events as set out in paragraphs 5.3 to 5.10 above. That chronology of events is not challenged by the Complainant in its Reply. 6.19 So far as the allegation of "cyber-flying" is concerned, the Respondent asserts that "earlier this year" (no date is provided) Mr Zaffer was advised by his accountant that his domain name portfolio should be transferred into the name of the company. It is said that Mr Zaffer waited to implement this until Nominet had introduced its online transfer procedure in June, following which 39 domain names, including the Domain Name, were indeed transferred to the Respondent on 8 July 2008. No evidence is provided of that advice, nor is it clear whether or not the advice was provided prior to or after receipt of the email from the Complainant on 29 May 2008. 6.20 The Respondent further asserts that the Domain Name was not listed for sale on Sedo in response to the approach from the Complainant. This appears to be correct. The Respondent relies on the email referred to in paragraph 5.5 above. 6.21 The Respondent denies that the Domain Name is in its hands an Abusive Registration, as defined by the Policy. 6.22 As regards paragraphs 3(a)(i)(A) and (C), the Respondent relies on the element of intent required. The Respondent asserts that since it had no knowledge of the Complainant when it acquired the Domain Name it cannot fall within any of the heads of paragraph 3(a)(i). It says that PSG is hardly a household name and that in any event the Domain Name was placed for sale with Sedo in January 2007, well before the first approach from the Complainant in May 2008. 6.23 The Respondent also denies that it has fallen foul of paragraph 3(a)(ii) (use in a way which has confused people into believing that the Domain Name was controlled by the Complainant). The Respondent asserts that the Complainant "has set out to deceive" by implying in the Complaint that the website automatically delivers real estate advertising. The Respondent points out that exhibits C5 and C6 to the Complaint have been doctored in that the search terms used to produce the results on which the Complainant relies have been omitted from the screenshots in question in order to create a false impression. 6.24 The Respondent further alleges that the Complainant's authorised representative made a similar misrepresentation as to the Respondent's use of the Domain Name to the host of the Respondent's website. These are serious allegations to which I will return. 6.25 The Respondent asserts that users of the Go Search website are no more likely to be confused than if they obtained a list of results after searching on Google. It is also said that the public are unlikely to think that the Complainant would operate a site branded "Go Search" consisting of little more than a search box. 6.26 The Respondent denies that it falls foul of paragraph 3(a)(iii) (pattern of registrations of which the domain name is a part). Again, the Respondent alleges that the Complainant has doctored the evidence in support of this part of its Complaint, in the same way as that mentioned at paragraph 6.23 above, by introducing in evidence screenshots which appear to be pages on the websites at URLs incorporating the five offending domain names (of which it is said the Domain Name forms part of a pattern), but from which the search term has again been omitted. The Respondent submits in evidence a spreadsheet of the search terms which it says were used by the Complainant in order to generate this evidence. 6.27 Further, the Respondent provides various explanations as to why Mr Zaffer registered the domain names in question. It says that he registered iphone.co.uk in June 2004 well before Apple launched the iPhone in January 2007. It is said that he registered it for "its generic quality". The Respondent says that he registered mysql.co.uk and qbasic.co.uk "because of his interest in the IT field in which he has been involved since 1990". 6.28 It is further asserted mozilla.co.uk and smeg.co.uk were automated registrations and that he thought of Mozilla as a "free browser, not a trade mark" and that he was unaware that smeg.co.uk was referable to a trade mark. 6.29 Finally, it is the Respondent's case that the Domain Name is in any event not part of that pattern but rather part of the large group of three letter domains registered by the Respondent, which run to some 260 such domain names. The Respondent prays in aid the decision of the Appeal Panel in Verbatim Ltd v Michael Toth (DRS 4331) where the Panel disregarded domain names featuring trade marks of third parties which comprised only a small part of the overall portfolio. Reply 6.30 In its Reply the Complainant complains that the Response is "phrased in a pompous and dramatic language to the point of being laughable" and asserts that the Respondent appears to believe that the Complainant is required to discharge a criminal standard of proof, i.e. beyond reasonable doubt. 6.31 The Complainant draws attention to the fact that the Respondent does not dispute the validity of the Complainant's trade mark registration and makes the point that the Complainant is the UK's second biggest supplier of home information packs which are sold to lawyers and non-lawyers alike. 6.32 The Complainant draws attention to the fact that the Respondent uses the names Mohammed Zaffer and Elife Limited interchangeably. 6.33 The Complainant rejects the Respondent's submissions in relation to pattern of abuse, arguing that the fact that it has six domain names, the rights in which may be owned by third parties, should be sufficient to "establish a pattern of abusive registration". It is said that "any other result would render the DRS procedure futile" and that "it is implausible to require a Complainant to thoroughly inspect domain portfolios of scale without rendering the whole DRS system unworkable". The Complainant characterises the Respondent's submissions as "seeking to uphold a policy that rewards the shady business practices of dishonest domainers in the form of offering them an absolute defense even when prior knowledge of the squatted brands is admitted". 6.34 The Complainant casts doubt on the Respondent's assertion that it had never heard of PSG, SQL, iPhone, Basic, Smeg, or Mozilla. Nor is it impressed with the Respondent's assertion that three letter domain names are automatically registered, arguing that such a registration system would justify ownership of domain names incorporating marks such as IBM or BBC. 6.35 The Complainant says that the Respondent's submissions on the requirement to show intent or knowledge of the existence of the Complainant "appears to re-write the DRS to mean that a showing of 'household brand' is required" and that "playing dumb is still not an established DRS defense". 6.36 In response to the Respondent's observations on the screenshots submitted in evidence, the Complainant asserts that the search terms entered all fell within the classes for which the trade marks were registered. However, no explanation is forthcoming as to why the relevant search terms were omitted from the exhibits to the Complaint. 6.37 The Complainant rejects the Respondent's contention that the initials PSG are in common use and points out that the Respondent does not claim fair use of any dictionary meaning. The Complainant rejects the Google search relied upon in evidence by the Respondent as meaningless because it was not really restricted to the UK market. 6.38 The Complainant asserts that the Respondent's record of the Complainant's use of search terms on its website are falsified, asserting that they were "likely manufactured in his own PC, and were conveniently enclosed with no accompanied information as to how they were 'transitioned' from raw logs to a nicely designed word processing document. But in any event, the 'logs' were designed to create a spin: focus on how Complainant gathered the exhibits, without actually denying that said content was indeed displayed on his websites for those looking for the squatted trade mark phrases in their trade mark sense (i.e. looking for the goods and services protected by each registration)". 6.39 The Complainant says that it collected information from the Respondent's site "in the only way information on his sites was designed to be collected: by running query-specific searches which dynamically generate pages full of PPC (pay per click) ads". 6.40 The Complainant says that the Respondent has invoked "the three monkeys defence, operating under the premise that if only he claims to not be able see, hear, or talk, then he is free to continue profiting from the goodwill of others". Discussion and findings General 7.1 To succeed under the Policy, the Complainant must prove on the balance of probabilities, first, that it has Rights (as defined in the Policy) in respect of a name or mark that is identical or similar to the Domain Name (paragraph 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 owns a registered mark PSG THE PROPERTY SEARCH GROUP in classes 36 and 42 covering certain real estate services and property, title and company searching and investigation services. The address given for the trade mark proprietor in Huddersfield is different from that provided by the Complainant in the Complaint, and no explanation is provided by the Complainant for that discrepancy. However, I am prepared to assume that has bona fide historical reasons. 7.4 I accept the Complainant's submission that the initials PSG are the dominant and distinctive part of its registered mark. I therefore accept that the Domain Name is similar to the Complainant's registered trade mark. 7.5 The Respondent is right to say that the Complainant's evidence of its common law rights in the PSG name is scanty. However, in light of my finding as to its registered trade mark, this weakness in its submissions does not fatally undermine its case in this regard. In any event, it would appear that, to some extent at least, the Complainant has traded by reference to the PSG name and has therefore also acquired common law rights in that name, which is identical to the Domain Name. 7.6 Accordingly, the Complainant has satisfied paragraph 2(a)(i) of the Policy by proving, on the balance of probabilities, that it has rights in respect of a name or mark that is identical or similar to the Domain Name. Acquisition of Domain Name primarily for sale (paragraph 3(a)(i)(A)) 7.7 Under paragraph 3(a)(i)(A) of the Policy, Abusive Registration may be made out if the circumstances indicate 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. 7.8 The Respondent is correct to draw attention to the decision of the Appeal Panel in Verbatim Ltd v Michael Toth (DRS 4331). It is in any event axiomatic that a registrant can only have registered or otherwise acquired a domain name primarily for the purpose of selling it to the Complainant, or a competitor of the Complainant, if at that time it was aware of the Complainant's existence. 7.9 The Complainant has been unable to provide any direct evidence that Mr Zaffer was aware of its existence when it acquired the Domain Name from Mr Bowler in August 2006. 7.10 It is therefore reliant on circumstantial evidence. The Complainant may well have a successful franchising business, but it cannot realistically be compared with IBM or the BBC. Indeed, the average man in the street might associate the initials PSG much more readily with the French football club Paris St Germain than with the Complainant. 7.11 Further, the Complainant's services are evidently of a specialist nature and primarily aimed at the property and legal sectors. There is no evidence that the Respondent is involved in either sector. The Complainant answers this in the Reply by characterising as "nonsense" the Respondent's suggestion that the Complainant's advertising is likely to have been "focused upon specialist legal or property media". However, in its most recent report and accounts the Complainant itself states that "PSG's primary sources of income are the sales of HIPs to solicitors and estate agents, searches to solicitors and commission income from water companies and other ancillary search companies." 7.12 It cannot therefore be assumed that Mr Zaffer was aware of the Complainant when it acquired the Domain Name in August 2006. Indeed, on the balance of probabilities, I accept the Respondent's submission that Mr Zaffer was not. In those circumstances, it cannot be said that the Domain Name was acquired in bad faith by Mr Zaffer as provided for in paragraph (3)(a)(i)(A) (see paragraph 7.7 above). 7.13 Plainly, Mr Zaffer's company, Elife Limited, which is the Respondent, was aware of the Complainant when the Domain Name was transferred to it on 8 July 2008. However, there was no change in use at that point and it would be artificial to draw a distinction between Mr Zaffer and his company for the purposes of finding whether the requisite element of intent was present. Indeed, it is the Complainant's contention that there is no real distinction between Mr Zaffer and the Respondent, and the Complainant does not advance a case of abusive acquisition under paragraph 3(a)(i) as at the date of transfer from Mr Zaffer to Elife Limited. 7.14 The Complainant also relies on the communications between the Complainant and the Respondent in support of its contention that the Domain Name was acquired by the Respondent primarily for the purpose of selling it to the Complainant. I cannot agree. That correspondence is set out in full at paragraphs 5.7 to 5.9. The first email from Mr Connor of the Complainant does not assist the Complainant's case. In the first place, he wrongly asserts that the Complainant owns a registered trade mark in PSG, which it does not. Secondly, Mr Connor threatens Mr Zaffer with "adverse publicity with Nominet" if he does not hand over the Domain Name in return for £300. 7.15 Perhaps unsurprisingly, Mr Zaffer rejected that offer. 7.16 The Complainant also alleges that the Respondent is a "sham entity that serves as the alter ego of Mr Mohammed Zaffer". That assertion is not accepted. Elife Limited appears to be a legitimate UK limited company of which Mr Zaffer and his wife are directors. There is no evidence that Mr Zaffer has in any way sought to hide behind the corporate veil or in any other way to mislead the Complainant, Nominet or any other third party as to his true identity. 7.17 Moreover, the Complainant's version of events after its initial email was received by Mr Zaffer is demonstrably incorrect. It accuses Mr Zaffer of having "promptly altered" the identity of the registrant. In fact Mr Zaffer transferred the Domain Name to the Respondent on 8 July 2008, i.e. more than five weeks later. The Respondent says this was in response to advice from Mr Zaffer's accountant to do so, but no date is given for that advice and so it is not clear whether or not the advice was provided prior to or after receipt of the email from the Complainant on 29 May 2008. However, the time lag and the fact that the Domain Name was one of 39 domain names so transferred does not support the Complainant's contention that Mr Zaffer was trying to evade the Complainant. In any event, the transfer did not in any way prejudice the Complainant's position. Mr Zaffer has not sought to evade responsibility for his effective control of the Domain Name, as is clear from the Response. 7.18 Nor is it correct for the Complainant to allege that it was only in response to its approach that the Respondent listed the Domain Name for sale on the Sedo website. It is clear on the evidence that the Domain Name had been registered for sale on the Sedo website since 8 January 2007. This has been independently confirmed by Sedo. 7.19 Nor is it clear why Mr Zaffer's email in reply should be held to count against the Respondent. Whether or not it was, as the Complainant alleges, a "fill in the blanks letter", it appears to be a civil response. 7.20 The Complainant also cites the enjoy-england.org.uk case ( VisitBritain v Johnson DRS 4250). This case cannot realistically be compared with that one. PSG is not a well known brand. As with all three letter acronym domain names, there may well be any number of businesses which can legitimately lay claim to those initials (see Tottenham Hotspur Plc v Trentholme Limited DRS 2426, which concerned thfc.co.uk ). Cursory consideration of the Companies House database discloses more than 70 UK limited companies which use the initials PSG as the first part of the company name, from PSG Accountancy LLP and PSG Building Services Limited to PSG Logistics Limited and PSG Marketing Limited. In the absence of any direct evidence, and in circumstances where a three letter acronym may legitimately be associated with any number of businesses and people, and where the Complainant is not so well and widely known as to displace the materiality of such considerations, the Complainant has failed to prove that the Respondent acquired the Domain Name primarily for this purpose. Acquisition of Domain Name unfairly to disrupt the Complainant's business (paragraph 3(a)(i)(C)) 7.21 Under paragraph 3(a)(i)(C) of the Policy, Abusive Registration may be made out if the circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant. 7.22 As discussed, the Complainant has failed to prove the necessary element of intent. It therefore follows that there can no liability under paragraph 3(a)(i)(C). Confusion (paragraph 3(a)(ii)) 7.23 Under paragraph 3(a)(ii) of the Policy, Abusive Registration may be made out if the circumstances indicate that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. 7.24 The Complainant relies in this regard on screenshots of the Respondent's website which appear to demonstrate that the Domain Name is being used to provide PPC links to websites which relate to the Complainant's line of business and are covered by the Complainant's registered trade mark in classes 36 and 42 (see exhibits C5 and C6 to the Complaint). 7.25 However, it would appear that this evidence has been fabricated. The Respondent correctly points out in the Response that the search terms used to return such search results have been omitted from the screenshot. Indeed, having considered how the Respondent's website is used, I can only conclude that the relevant panel was deleted or otherwise removed from the alleged screenshot. This is unhelpful, to say the least. 7.26 Moreover, when the Respondent highlighted this in the Response, no explanation, let alone apology, was forthcoming from the Complainant in its Reply. On the contrary, the Complainant simply asserted that the searches had been carried out against terms covered by its trade mark specification. Such conduct seriously calls into question the Complainant's bona fides and has no place in any ADR procedure. 7.27 Further, similar misrepresentations were made by the Complainant's authorised representative to the host of the Respondent's website. 7.28 The truth of the matter would appear to be, as the Respondent explains, that the Go Search website is essentially a blank page which generates PPC links in response to the search term entered. It does not automatically display links to real estate related websites. It is therefore unlikely to confuse users into thinking that it is operated by the Complainant. Accordingly, the Complainant fails under this head. Pattern of bad faith registrations of which the Domain Name is part (paragraph 3(a)(iii)) 7.29 Under paragraph 3(a)(iii) of the Policy, Abusive Registration may be made out if 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. 7.30 This is therefore a two limb test. First, the Complainant must prove, on the balance of probabilities, that the Respondent has registered a number of domain names corresponding to well known names or marks in which it has no apparent rights. Secondly, it must prove that the Domain Name is part of that pattern. 7.31 The Complainant relies on the Respondent's or Mr Zaffer's registration of the following domain names: iphone.co.uk , mysql.co.uk , mozilla.co.uk , smeg.co.uk and qbasic.co.uk . The use to which the Respondent has put those domain names is not a relevant consideration for these purposes. Nonetheless, the Complainant has sought to establish that the Respondent has been misusing those domain names by exhibiting screenshots which are said to demonstrate that each of those domain names is being used to provide links to websites which relate to the relevant rights owner's business. Unfortunately, however, again those screenshots have been doctored in precisely the same way as those referred to in paragraph 7.25 above. 7.32 The Respondent's explanations for registering those five domain names are less than convincing. However, knowledge and intent are not relevant for the purposes of paragraph 3(a)(iii). The question is whether those five domain names correspond with well known names or marks in which the Respondent has no apparent rights. Whatever Mr Zaffer's motivation or intention in registering them, I accept the Complainant's submission that the first limb of the test is satisfied. 7.33 However, paragraph 3(a)(iii) also requires the Complainant to demonstrate that the Domain Name is "part of that pattern". Four out of five of those domain names are plainly IT related. Smeg is a manufacturer of appliances such as fridges, dishwashers and ovens. 7.34 By contrast, the Domain Name consists of three letters which do not correspond to a well known name or mark (see paragraphs 7.10 to 7.12 above) and is not, whether as an acronym or as an initialism, related to IT or white goods. If it is part of any pattern, it is part of the Respondent's 260 strong pattern of registrations of three letter domain names. It cannot therefore be said that the Domain Name is part of the same pattern as the five domain names relied on by the Complainant. The Complaint therefore fails under this head. False contact details (paragraph 3(a)(iv)) 7.35 Under paragraph 3(a)(iv) of the Policy, Abusive Registration may be made out if it is independently verified that the Respondent has provided false contact details to Nominet. 7.36 No such independent verification is forthcoming. In any event, even if Mr Zaffer had transferred the Domain Name into the name of Elife Limited as a result of having received the Complainant's email of 29 May, which has not been proved, it is difficult to see where the falsity arises. The address of Mr Zaffer and his company are one and the same and there is no evidence that he has sought to evade a Complaint by making that transfer. Reverse domain name hijacking 8.1 The Respondent submits that the Complaint has been used in bad faith, relying in this regard on the Complainant's attempts to mislead the Independent Expert as to the nature of the Respondent's websites, in particular by submitting doctored evidence. Under paragraph 16(d) of the DRS Procedure, it is open to the Independent Expert to find that a Complaint has been brought in bad faith. 8.2 While the intemperate tone of some of the Complainant's submissions, which would be better suited to a jury trial than an ADR procedure like the DRS, are a little unfortunate, they do not, of themselves, constitute bad faith nor evidence of it. 8.3 However, the use of doctored evidence in a number of separate exhibits, which strongly suggests that this was deliberate rather than accidental, is more troubling. It cannot be right that a party to the DRS be permitted to bolster its case with demonstrably falsified evidence. It therefore seems to me that this is an attempt at Reverse Domain Name Hijacking, which should have the consequences provided for in paragraph 16 (d) of the Procedure. Decision 9.1 Accordingly, I find that the Complainant has Rights in a name or mark which is identical or similar to the Domain Name but that, on the balance of probabilities, the Domain Name in the hands of the Respondent is not an Abusive Registration, and therefore paragraph 2(a)(ii) of the Policy has not been satisfied. 9.2 I therefore determine that the Domain Name should not be transferred to the Complainant. David Engel Signed: ………………………………………… Dated: 13th October 2008 BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII URL: https://www.bailii.org/uk/cases/DRS/2008/5899.html