NOMINET UK DISPUTE RESOLUTION SERVICE

DRS 04705

DECISION OF INDEPENDENT EXPERT

1.	Parties
	Complainant		:	Airwave Solutions Limited
						(previously Airwave O2 Limited)
Country			:	GB

Respondent		:	Seb Clark
Country			:	GB

2.	The Domain Name
airwave.co.uk 

3.	Procedural Background
3.1.	On 17th May 2007 the Complaint was lodged with Nominet in accordance with the Nominet UK Dispute Resolution Service Policy (“the Policy”).  Hard copies of the Complaint and its attachments were received in full by Nominet on 21st May 2007.
3.2.	On 21st May 2007 Nominet validated the Complaint.   On the same day it sent a copy of the Complaint to the Respondent, and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service (“the Procedure”) had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.
3.3.	A Response was received electronically from the Respondent by Nominet on 12th June 2007, the hard copy of the Response being received on 13th June 2007.  A Reply was received by Nominet from the Complainant on 19th June 2007.
3.4.	Mediation was attempted by Nominet, but without success.  On 12th July 2007 the relevant fee was received by Nominet from the Complainant in order for the matter to be referred to an independent Expert for a decision.
3.5.	On 16th July 2007 Bob Elliott was selected and duly appointed as Expert.  The file was transmitted to the Expert pursuant to paragraph 11 of the Procedure, but due to delays arising from postal difficulties, the date of his appointment was fixed by Nominet as being 27th July 2007.

4.	Outstanding Formal/Procedural Issues
4.1.	The Complaint was originally filed in the name of Airwave O2 Limited.  It appears from information available from Companies House that, at the time the Complaint was submitted, that company had already changed its name, firstly, to Airwave Safety Communications Limited (the change having taken place on 23rd April 2007), and subsequently (on 9th May 2007) to Airwave Solutions Limited.  Neither change of name has been specifically mentioned by the Complainant, or its professional representatives.  This is a perhaps surprising omission.  However, in the Expert's view, nothing material turns on the change of name in this case, and the Expert is therefore prepared for the Complaint to be treated as amended accordingly to substitute the current name of the Complainant.
4.2.	There are no other outstanding formal or procedural issues.

5.	The Facts
5.1.	The Complainant apparently provides a secure digital radio network service which is dedicated for the exclusive use of the United Kingdom's emergency and public safety services.
5.2.	It appears to have traded as O2 Airwave but in addition to the company name changes referred to above, it would appear from one of the attachments to the Response that the company was purchased by new owners in April 2007.  Its business appears subsequently to have been rebranded as Airwave.  The Complaint refers the Expert to a website at www.airwaveservice.co.uk, which now consists of a holding page whilst the website is being updated.  It begins "Airwave is unique.  We're the world's largest mobile communications service exclusively dedicated to organisations with a public safety role".  Neither the Complaint nor the Reply refer to the change of ownership, and the rebranding is only briefly mentioned, without details.
5.3.	The Complaint does say that the benefit of the service provided is that users can stay in constant communication even in remote areas or within confined spaces of buildings and tunnels, where radio coverage has often failed in the past.  As such, it is part of the national infrastructure which is designed to stay working even during major incidents, when conventional mobile and fixed telephony networks may overload and fail.  Its users include the UK police.  The service has apparently been provided to all police forces throughout England, Scotland and Wales, and it is said that there are around 150,000 users.
5.4.	It is not clear from the Complaint how long the Complainant has been using the Airwave name.  The Complaint says that the name has been used "since at least as early as November 2003", and produces the front page of a magazine called "The Communicator" from November 2003, which supposedly contains "Airwave service news, views & value-adds from O2 Airwave".  The magazine is apparently "Issue 3", which would suggest that there may have been some earlier issues, but no other details are provided other than that the magazine is one which is "produced by the Complainant which provides AIRWAVE news".
5.5.	The Complainant applied to register the name AIRWAVE as a Community Trade Mark in April 2005, registration being achieved in classes 9, 38 and 41 in October 2006.
5.6.	The Domain Name was registered by the Respondent on 19th March 2004.
5.7.	The Respondent appears to own the company Centraserve Limited, which is a Nominet tag holder and which apparently describes itself as "a cutting-edge Internet Business Solution Provider, specialising in Web Site creation and development."
5.8.	It appears to be common ground that the Respondent has registered more than 10,000 domain names.
5.9.	The first contact between the Complainant and the Respondent appears to have been in April 2007, when a representative of the Complainant telephoned Mr Clark, the Respondent, offering to buy the Domain  Name for £1,000.  The Respondent replied by email of 2nd May 2007 that 
		"I'm afraid this offer is far below the going market rate.  I consider that this generic single word domain name, which I registered in 2004, is a very valuable one.  I'm not sure how familiar you are with the market for sale of generic domain names but for your information here are the prices achieved for some sales of generic single word .co.uk domain names:\
		taste.co.uk to Sainsbury's for £110,000 plus VAT
		three.co.uk to Hutchison for £102,000 plus VAT
		lyrics.co.uk for £46,000 plus VAT
		So I would be looking for something along the lines of £80,000 plus VAT for this domain."

5.10.	The Complainant does not appear to have responded to the Respondent's email of 2nd May 2007.
5.11.	The Domain Name currently points to a website, which is a "parking" website, with links to advertisers' own websites in categories including catalogue shopping, golf, online gambling, car insurance, home insurance and mortgage.

6.	The Parties’ Contentions
		Complainants’ Submissions
	Rights

6.1.	The Complaint is specific in relying upon the Complainant's Community Trade Mark as giving it Rights under the Policy.  The Complainant does not appear to reply upon any prior unregistered rights.
6.2.	The Complainant says that its Rights, dating from April 2005, arose long before the Respondent's abusive behaviour.  The Complainant relies upon the appeal decision in Jemella Limited v Landlord Mortgages Limited, DRS 3078 as authority for the proposition that, even though the Complainant's rights arose after the Respondent's registration of the domain name, where abusive registration is alleged, "the date at which the rights must exist is the date of the complaint".

Abusive Registration
6.3.	The Complainant says that the Respondent's response to its request to purchase the Domain Name for a reasonable fee was in itself taking unfair advantage of or being unfairly detrimental to its rights, by reference to paragraph 3.a.i.A of the Policy, and relying upon the decision in EMI Records Limited v Susan Mary Russell, DRS 1582.
6.4.	Furthermore, referring to the extent of the domain name registrations owned by the Respondent, the Complainant says that the Respondent has registered 11,712 domain names, and points out that although some of these are generic, many consist of or contain famous brands, company names, other such trade marks or obvious misspellings of these.  By way of example, the Complainant refers to superfurryanimals.co.uk, hyundai-cars.co.uk, roverspares.co.uk, goldeneye.co.uk, wriggly.co.uk, clearblue.co.uk, utterly-butterly.co.uk and simplyfood.co.uk.  The Complainant says that it is clear from this list that the Respondent has applied to register, as domain names, trade marks and obvious misspellings of these, which are all pointed at parking pages.  The only explanation of this can be that the Respondent is attempting to purchase these domain names for resale.
6.5.	The Respondent, by registering such non-generic domain names (including the Domain Name) has done so for the purposes of selling, renting or otherwise transferring the domain names to the "right holders for valuable consideration".
6.6.	The Complainant also points out that the domain names relate to business sectors other than the IT sector (which appears to be the Respondent's business sector, given his ownership of the company Centraserve Limited and the nature of the company's business).
6.7.	The Complainant says that, given that the Respondent's website is not being used for a legitimate business, but as an advertisement page with sponsored listings, and given that the Domain Name has been registered since March 2004 and has not yet been used for a legitimate business, it can be inferred that the Respondent is using the Domain Name essentially as a blocking registration, preventing the Complainant from using a domain name in which it has rights to expand its business into the UK following its rebranding.  The Complainant relies upon the decision in Long John Silver's, Inc v Top Class PR, DRS 2546, as finding the use of a domain name registration abusive where it hindered "the ability of the Complainant to use its trade marks to expand its business into the UK".
6.8.	In its Reply, the Complainant refutes the Respondent's suggestion that the word "airwave" is generic.  The Complainant argues that "generic" means not having a trademark or brand name, relying upon the Oxford English Dictionary definition as "the name of a commercial product not protected by legislation from general use".  The Complainant's own Community Trade Mark registration is indicative that the word Airwave is not generic, as is the evidence of the other companies trading using the name Airwave which was produced by the Respondent in his Response.  The Complainant says that the word Airwave is clearly not a generic term, but is a distinctive trade mark which is quite capable of distinguishing the goods and services provided from those others, similarly to the trade mark APPLE.
6.9.	The Reply reiterates and emphasises that the abusive behaviour relied upon postdates the Complainant's trade mark rights arising from its registration of the Community Trade Mark AIRWAVE as from April 2005.
6.10.	The Reply also makes mention of "the fact" that in April 2007 airwave.co.uk "had a link to the Airwave Solutions Website" as being an additional factor showing the Respondent's knowledge of the Complainant and that the Domain Name is an abusive registration.  However, no evidence is produced to support that assertion, and it is not borne out by the prints of the pages from the website attached to the Complaint itself, which date from 2nd May 2007.

Respondent’s Submissions
6.11.	The Respondent argues that the word Airwave is generic.  He relies upon a dictionary definition as "the medium used for the transmission of radio and television signals".  A search of the British National Corpus produces examples of usage in connection with pirate radio DJs.
6.12.	The Respondent also points out that the word Airwave has been adopted by a wide array of other companies in their own fields, with a Google search revealing companies using the word in connection with a DJ, snow wear, air conditioning and chewing gum.  A search on Companies House shows that there are at least 10 other companies whose name starts with "airwave".  The Respondent points out that the Complainant does not own the domain name airwave.com.
6.13.	The Respondent also points out that the Domain Name was registered on 19th March 2004.  He says that it was without any knowledge of the Complainant, simply as a generic domain name, earmarked for future development.  The Respondent points out that the Complainant's company is now a very large organisation, but that the first time he was aware of it was when he was telephoned by the Complainant's representative in April 2007.
6.14.	The Respondent also in turn relies upon the appeal decision in Jemella Limited v Landlord Mortgages Limited, DRS 3078, as establishing that the domain registration could not have been abusive as at the date of registration of the domain name, as the Complainant and its Rights did not exist at that time.  Now that they do exist, the Respondent says that the panel in that case found that there was nothing objectionable about the Respondent cashing in on his good fortune or entrepreneurial skills.
6.15.	Selling domain names is a common practice and is not in itself evidence of any abuse, as was previously established in Cyclone Courier Company Limited v Seb Clark, DRS 1629.  EMI Records Limited v Susan Mary Russell, DRS 1582, is not relevant, as there is no "auction" and it was the Complainant who initiated the offer in this case.
6.16.	In relation to the large portfolio of domain names, the Respondent says that the Complainant has made a number of assumptions.  Many of the domain names are generic.  The Respondent's business is in the "Internet Business", and he/his company hold and manage the electronic Internet Property for businesses and their advertising agencies.  "We are not at liberty to discuss any contracts we have with these businesses and agents as it is confidential".
6.17.	The Respondent also relies upon the decision in Cyclone Courier Company Limited v Seb Clark, DRS 1629 as establishing that the use of a domain name as an advertisement page with sponsored listings is deemed to be "fair use" as defined by Nominet.  The Domain Name was purchased along with many other generic domains with a view to building websites upon them.  The Respondent gives a few examples of generic names in respect of which he says he has developed or is currently developing websites, but says that this is a time consuming business.
6.18.	Finally, the Respondent says that the decision in Long John Silver's, Inc v Top Class PR, DRS 2546, is irrelevant, as the decision in favour of the Complainant in that case was because the Respondent had pointed the domain name to the website of a competitor to the Complainant.
	
7.	Discussion and Findings:
General
7.1.	In order to succeed in these proceedings, paragraph 2.b of the Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2.a are present namely that: 
i.	the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii.	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights
7.2.	The Complainant clearly has Rights in the trade mark AIRWAVE arising out of its Community Trade Mark registration, which was filed on 13th April 2005.
7.3.	The Complainant makes no submissions in relation to prior un-registered rights in the Airwave name.  In any event, if it had done so, the Expert would not have been prepared to find that such Rights existed on the basis of the material supplied with the Complaint, namely the front page of a magazine from November 2003 and an assertion that from this one page it can be seen "that the Complainant has been using the mark AIRWAVE since at least as early as November 2003".
7.4.	The Expert is satisfied on the basis of the Community Trade Mark that the Complainant has established that it has Rights in a name or mark AIRWAVE which is identical to the Domain Name.

Abusive Registration
7.5.	Paragraph 3.a of the Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration.  These include:-
a)	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 (paragraph 3.a.i.A);
b)	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights (paragraph 3.a.i.B);
c)	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 (paragraph 3.a.iii).
7.6.	There is also a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration in paragraph 4.a of the Policy.  These include that the Domain Name is generic or descriptive and that the Respondent is making fair use of it (paragraph 4.a.ii).  There is also a saving in relation to the "pattern of registrations" evidence (paragraph 3.a.iii), under which the Respondent can show that "the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent" (paragraph 4.a.iv).
7.7.	Both parties rely upon the decision of the appeal panel in Jemella Limited v Landlord Mortgages Limited, DRS 3078.  This case has a number of similarities to the facts of that case.  The domain name in that case was registered on 3rd July 1999, before the incorporation of the Complainant in 2001.  Following its incorporation, the Complainant developed its business over 4 or 5 years into one of the largest and best known brands (GHD) in its area of business.  A consultant, acting on behalf of one of the Complainant's authorised distributors, made contact with the Respondent in that case asking how much he would accept for the domain name, and correspondence then ensued in which the Respondent initially asked for £5,000, and then tried to increase that figure, also offering the domain name to another authorised distributor.
7.8.	As the Complainant points out, the appeal panel decided that the date at which the relevant Rights must exist under the Policy is the date of the Complaint.  However, in the Expert's view, this only helps the Complainant in passing the first hurdle set out in paragraph 2.a of the Policy, and does not assist in respect of a finding of Abusive Registration, the second hurdle.
7.9.	The arguments advanced by the Complainant in Jemella Limited v Landlord Mortgages Limited, DRS 3078 as to Abusive Registration were very similar in some respects to those advanced in this case.  In relation to the argument based upon paragraph 3.a.i.A of the Policy (intention to sell for valuable consideration in excess of documented out-of-pocket costs) it might be convenient to quote the appeal panel's decision in full:

"As to the first basis of attack, the Complainant claims that although the Complainant's Rights were not in existence at the time of registration of the Domain Name, the abuse lies in the fact that the Respondent registered the Domain Name with the primary intention of selling it at a profit to "an entity to whom the Domain Name would be of relevance for a price in excess of his out-of-pocket expenses".

The Panel rejects that argument.  That is tantamount to saying that trading in domain names at a profit is an objectionable practice per se.  For a domain name to constitute an Abusive Registration under the DRS Policy on the basis of the Respondent's abusive intent at time of registration, the Respondent must at the very least have been aware at the time of the existence of the Complainant's Rights.  That is not this case".

7.10.	This is not such a case, either.  There is nothing in the evidence, or in the Complainant's contentions to suggest that the Respondent had any awareness of the Complainant's business when he registered the Domain Name, and it seems to the Expert that an argument based upon this factor must fail. 
7.11.	The second basis of attack in Jemella Limited v Landlord Mortgages Limited, DRS 3078 concerned an active attempt to try to sell the Domain Name to the Complainant and its authorised dealers at a profit.  Insofar as it is relevant to this case, the appeal panel's decision was as follows:
"Accordingly, the position is that the Respondent registered the Domain Name "innocently" in the sense that whether he registered it to use it himself or whether he registered it speculatively knowing that as a three letter domain name it would prove in time to have a high value to someone, [h]e did not have and could not have had the Complainant and its Rights in mind.  They did not exist.  Now they do exist, the Respondent realises it and seeks to cash in on his good fortune or entrepreneurial skill, as the case may be.
Thus far, the Panel can see nothing objectionable in what the Respondent has done.  Were it otherwise, domain name dealers could be deprived of their stock in trade by later rights owners simply on the basis that the names in question were being offered for sale at a profit.  Were domain name dealing inherently abusive, there might be force in the Complainant's line of argument, but it is not inherently abusive.
Does the level of the price demanded affect the issue?  No, once it is accepted that domain name trading is not of itself objectionable, the Respondent is free to ask any price he likes and it is up to the Complainant to pay it or not. The Complainant is not compelled to purchase the Domain Name."

7.12.	Although the decision of the appeal panel then goes on to discuss the effect of offering the domain name in that case to other potential purchasers, in this case, the Respondent has only apparently made the one offer, by way of specific response to the Complainant's own enquiry.  As such, there is no reason to differentiate from the approach taken by the appeal panel in the Jemella Limited v Landlord Mortgages Limited, DRS 3708 case, in the paragraphs reproduced above.  Although the Complainant may have been  in existence at the time of registration of the Domain Name (19th March 2004), there is nothing to suggest that the Respondent was aware of the Complainant's existence, and the Complainant itself does not seek to suggest that it had Rights at that date.  The Expert therefore respectfully adopts the appeal panel's reasoning and conclusion in this respect.
7.13.	There are a couple of additional issues in this case, which may distinguish it from Jemella Limited v Landlord Mortgages Limited, DRS 3708 (in which the appeal panel ultimately decided that no action should be taken in respect of the domain name).
7.14.	The first issue is the suggestion (almost as an aside) in the Reply that there was a link to the Airwave Solutions website from the website at the Domain Name in April 2007.  No evidence is produced to substantiate that suggestion, but in any event, it is only said to show the Respondent's knowledge of the Complainant with an unparticularised assertion that "the Domain Name is an abusive registration".  It is not said (for instance) to suggest confusion.  Confusion is not, in any event, relied upon by the Complainant in its Complaint.  In the circumstances, the Expert does not find that this would have been evidence of abusive behaviour (even if sufficient proof had been forthcoming, which it has not).
7.15.	The second issue relates to whether the many other registrations in the Respondent's name may be evidence of an Abusive Registration, in the sense that the Domain Name may be part of a pattern of registrations of domain names which correspond to well known names or trade marks in which the Respondent has no apparent right.
7.16.	The Respondent relies upon the decision in Cyclone Courier Company Limited v himself, DRS 1629, in which the Expert found in his favour, although the Complainant in that case sought to rely upon the Respondent having engaged in prolific registration of single word .co.uk domain names.  It would appear, from the evidence produced by the Complainant in this case, that the Respondent's portfolio of registered domain names may now be wider than it was before, in that the examples quoted by the Complainant are not all limited to just single word .co.uk domain names.  Some of the names do appear to bear relation to names or trade marks in which the Respondent has no apparent rights, and the Respondent has chosen not to explain himself in that respect, relying upon supposed confidentiality.  The decision in DRS 1629 does not necessarily, therefore, help the Respondent as he would suggest.  In addition, it was a decision reached under the earlier version of the Policy, which applied until October 2004.  The current version of the Policy has a number of material changes.
7.17.	However, having regard to the specific wording of paragraphs 3.a.iii and 4.a.iv of the current version of the Policy, which are set out above, it seems to the Expert that the Complaint fails to establish abusive registration in this respect for two reasons.  Firstly, the registration of this Domain Name does not seem to the Expert to correspond to a well known name or trade mark at the date of the registration, therefore, the registration of this Domain Name is not part of such a pattern of registrations.  It may be that others might have better causes for complaint, but the Complainant in this case has not established (and has not tried to argue) that the Respondent knew of its name or business at the time the registration took place, and in the circumstances, the Expert does not see how this registration can be part of any such pattern.  Secondly, even if such a pattern were established, the registration of this Domain Name (looked at as at the date of its registration) is of a significantly different type or character to other domain names registered by the Respondent which might be said to correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Respondent can rely upon paragraph 4.a.iv of the Policy.
7.18.	The Expert would add that he has had regard to the decision of the appeal panel in Procter & Gamble v Michael Toth, DRS 3316, although that decision was not referred to by either party.  In its decision in that case, in considering a domain name involving an ordinary dictionary word “bounce”, the appeal panel concluded that evidence of other domain names amongst a portfolio which featured the well-known trade marks of others, could indicate a “track record of hijacking other people’s names” and therefore be relevant to the question of whether the registration of an ordinary dictionary word as a domain name was abusive.  However, the appeal panel also expressly found that the Respondent in that case knew that BOUNCE was a brand name and registered it for that very reason, which is a feature which is missing from this case.  The appeal panel also indicated that the circumstances in which abusive registration could be found when the registrant was unaware of the Complainant’s name or rights were rare.  The Expert therefore considers, on the balance of probabilities, that in this case such evidence on its own does not override the conclusion he has reached above.
7.19.	For the sale of completeness, the Expert would also mention the decisions in EMI Records v Susan Mary Russell, DRS 1502, and Long John Silver's, Inc v Top Class PR, DRS 2546, both of which are relied upon by the Complainant.  Both of those cases involved findings of Abusive Registration, but both are very different to the present one.  The former concerned the domain name abbeyroadstudios.co.uk and the Expert found that the registration amounted to "pure impersonation" of a well known mark.  In addition, the domain name was offered for sale by auction to the world at large.  In the latter case, the domain name was pointed by the Respondent to a competitor's website, the Respondent then threatened to approach that competitor, and also indicated that the domain name was to be auctioned to the highest bidder.  It was not, in any event a case based upon "blocking" the Complainant, as the Complainant here apparently seeks to suggest.  None of those features is present in the current case, and the Expert considers both decisions are clearly distinguishable from the current case, and of no assistance to the Complainant.
7.20.	The Expert therefore finds that the Complainant has not established, on the balance of probabilities, that the Domain Name, in the hands of the Respondent, is an Abusive Registration within the meaning of the Policy.

8.	Decision
8.1.	The Complainant has proved on the balance of probabilities that it has Rights in the name Airwave, being a name or mark which is identical to the Domain Name.  However, it has failed to prove on the balance of probabilities that the Domain Name, in the hands of the Respondent, is an Abusive Registration, and in the circumstances the Expert rejects the Complaint, and orders that no action be taken.
Bob Elliott
27th July 2007