Nominet Dispute Resolution Service
DRS 05488
Instabook
v
Signature Architectural

Decision of Independent Expert
1	Parties
Complainant:		Instabook
Country:		GB

Respondent:		Signature Architectural

	Country:		GB

2	domain Name
2.1	instabook.co.uk (“the Domain Name”)
3	Procedural Background
3.1	Nominet entered the complaint onto its system on 27 February 2008 and received hard copies of the complaint on 28 February 2008. The complaint was validated on 3 March 2008 and the complaint documents generated on the same day. No response from the Respondent was received before the deadline of 27 March 2008. 
3.2	On 28 March 2008 the Respondent indicated that it would be willing to transfer the Domain Name to the Complainant provided the Complainant paid all costs involved in the transfer. This followed Nominet’s e-mail of 28 March 2008 notifying the Respondent that as it had not responded to the complaint, the Complainant had the option of asking for an expert decision. On 2 April 2008 Nominet sent out transfer forms to both parties for the transfer of the Domain Name. On 4 April 2008 Nominet received the completed transfer form from the Complainant. On 7 April 2008 Nominet chased the Respondent for the transfer form. On 11 April 2008, in the absence of a response from the Respondent, the Complainant requested an Expert decision. On 14 April 2008, Nominet amended the fees due date by one working day and the complaint fees were received from the Complainant.
3.3	On 14 April 2008 Patricia Jones (“the Expert”) confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties, which might call into question her independence and/or impartiality. 
3.4	The Expert was appointed on 15 April 2008. 
4	The facts
4.1	On 21 August 1998, Instabook Limited was granted a UK registered trade mark (No. 2155728) (“the Trade Mark”) for Instabook in respect of publishing of information electronically via the internet. 
4.2	On 2 March 2001 Kenneth John Petrie (“Mr Petrie”) was entered on the UK Register of Trade Marks as the proprietor of the Trade Mark, in place of Instabook Limited. This reflected Mr Petrie’s change of trading entity, from limited company to sole trader. On 16 January 2008 Mr Petrie renewed the Trade Mark. 
4.3	The Complainant is also the owner of the domain name, instabook.com. The Complainant’s main business is web design and associated services, such as hosting. 
4.4	The Respondent is an agent for the products of InstaBook Corporation, an American company based in Florida, relating to patented technology that provides instant book on demand publishing. 
4.5	In March 1998 Instabook Limited (through Mr Petrie) notified InstaBook Corporation of its application to register the Trade Mark in the UK. Mr Victor Celorio (“Mr Celorio”) responded that his company, InstaBook Corporation, had been using the name InstaBook for over two years and that it was legally registered in 1997. Whilst there was some suggestion that the parties could work together, this did not materialise.
4.6	In August 2007, the Complainant notified the Respondent that any unauthorised use of the Domain Name would be an infringement of the Trade Mark. The Respondent responded by removing the site content from the Domain Name, stated it would use the Domain Name to forward to another site and that its literature and information would state it sold InstaBook Corporation’s patented system. The Complainant said these proposals were acceptable and offered to link its website to a page explaining that InstaBook Corporation was a separate company and to direct people to the Respondent’s website.
4.7	The Complainant also queried whether the Respondent would sell the Domain Name, indicating that it would be prepared to pay £10 plus the transfer costs. The Respondent said that it had no issues with this, as it wanted to market the system in the UK under a different name, but that Mr Celorio had asked the Respondent to offer a small sum of money. In late August 2007, the Respondent indicated that it wanted to retain the Domain Name until a decision was made on the trading name in the UK. In this respect apart from the single reason of having a global brand, the Respondent preferred to market the product under a different name in the UK, but Mr Celorio wanted the Respondent to market under the InstaBook name. The Respondent asked the Complainant what figure it would look to sell the Instabook name for and told the Complainant that Mr Celorio had offered to put $350 “into the pot” towards an offer for the name. The Complainant responded with a price of £10,000 for the Instabook name and also notified the Respondent that it considered the use of the Domain Name to route to another website was an infringement of the Trade Mark. The purchase discussions for the Instabook name have not proceeded.
4.8	The Respondent uses the Domain Name to link to a site at www.getmybook.co.uk. This site describes the InstaBook Maker as the world’s first patented technology that provides instant book on demand publishing, “a fully and perfectly bound book can now be manufactured and in your hands within a matter of minutes.” It refers to InstaBook Corporation in Florida, gives the US patent numbers and names the inventor, Mr Celorio. UK enquiries are asked to use the contact page.
5	The Parties’ Contentions
The Complainant
5.1	The Complainant asserts that the Domain Name is an Abusive Registration under the Dispute Resolution Policy and should be transferred to him because:
(a)	It infringes the Trade Mark and is detrimental to its rights by:
(i)	Conflicting with and reducing the distinctive nature of the name Instabook to the Complainant’s internet publishing services in the UK, as the Respondent publishes information that does not originate from the Complainant. The Complainant points out that the Trade Mark is registered for publishing information on the internet.
(ii)	Setting a precedent of use that could be used to undermine the Complainant’s ability to register or oppose the registration of a Community trade mark similar to the Trade Mark.
(b)	InstaBook Corporation’s knowledge of the Trade Mark from 1998 should have been communicated to the Respondent to prevent the infringement of the Trade Mark. The Complainant suggests InstaBook Corporation is resisting the transfer of the Domain Name to the Complainant.
(c)	The Respondent has refused the Complainant’s offer to purchase the Domain Name.
(d)	The price offered for the Trade Mark is derisory and this demonstrates use of the Domain Name to unfairly affect the value of the Trade Mark, that the Respondent or those for which it acts wishes to acquire.
(e)	The Trade Mark means the Respondent has no right to use the Domain Name.
5.2	The Complainant accepts that there was no bad faith when the Respondent originally registered the Domain Name but states that the continued use of the Domain Name is abusive. The Complainant alleges InstaBook Corporation is using the Domain Name and the Respondent to enter the UK market and ignore the Trade Mark. 
The Respondent
5.3	The Respondent has not entered a Response.
6	Discussion and Findings
6.1	Paragraph 2 of the Nominet Dispute Resolution Policy (“the Policy”) sets out that for the Complainant’s complaint to succeed it must prove to the Expert, on the balance of probabilities, 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.
In this respect, it is relevant to this complaint to note that the issue of whether the use of a domain name constitutes trade mark infringement is not a matter for the Policy.
Complainants Rights
6.2	Paragraph 1 of the Policy states that “Rights includes, but is not limited to, rights enforceable under English Law. However, a Complainant will be unable to rely on rights in a name which is wholly descriptive of the Complainant’s business.” 
6.3	Mr Petrie is the owner of the Trade Mark. Nothing turns on this, as I am satisfied from the evidence that the Complainant is the trading name of Mr Petrie. 
6.4	The Trade Mark has been registered for the publishing of information electronically via the internet. The Complainant’s main activities are website design and associated services, such as hosting. I do not consider Instabook is wholly descriptive of these activities or of on-line publishing.
6.5	Whilst the Complainant has not provided any evidence of the size of his business, the hurdle to establish Rights is a low one and I am satisfied on the basis of the Trade Mark that the Complainant has Rights. 
Abusive Registration
6.6	The question is therefore whether the Domain Name, in the hands of the Respondent, is an Abusive Registration? Paragraph 1 of the Policy defines ‘Abusive Registration’ as 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.
6.7	The Complainant accepts that the initial registration of the Domain Name by the Respondent was not in “bad faith” and therefore seemingly accepts that the initial registration was not an Abusive Registration as set out at paragraph 1(i) of the Policy. In my view that is a fair concession for the Complainant to have made. In order to constitute an Abusive Registration under paragraph 1(i) it is crucial to establish that the Respondent had knowledge of the Complainant and/or its rights at the time of registration. The Complainant’s evidence suggests that when the Domain Name was registered the Respondent was not aware of the 1998 correspondence with InstaBook Corporation on the Trade Mark and that it was only after registration of the Domain Name that the Respondent became aware of the Complainant. Although the Complainant submits InstaBook Corporation should have told the Respondent about the Trade Mark, in my view this is not relevant. The factual evidence is that the Respondent was not so told. 
6.8	I must therefore consider whether there is an Abusive Registration under paragraph 1(ii) of the Policy, namely whether after becoming aware of the Complainant’s Rights the Respondent used the Domain Name in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights. In this respect, whilst the Complainant contends that the use of the Domain Name by the Respondent is Trade Mark infringement, I have approached this complaint on the basis that the Policy has its own criteria in relation to the transfer of a domain name and that trade mark infringement is a matter for the Courts and not for the Policy. Similarly, the Complainant’s assertion that use of the Domain Name will undermine its ability to register or oppose the registration of a Community trade mark similar to the Trade Mark is also a matter of trade mark law. My focus is on whether the use of the Domain Name is an Abusive Registration under the Policy.
6.9	In this regard, paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. I consider that a relevant factor in this complaint is paragraph 3(a)(ii) of the Policy, “circumstances indicating 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.”
6.10	The evidence suggests that after the Respondent became aware of the Trade Mark, it used the Domain Name to route through to the getmybook.co.uk domain name and site, which is described at paragraph 4.8 above.
6.11	In deciding whether this is a confusing use of the Domain Name, it is relevant to consider the Complainant’s business activities. The Complainant acknowledges in its evidence (e-mail communications with the Respondent) that its main activities are in web design and hosting and that it has carried out limited on-line publishing. The Claimant has not provided any evidence of a substantive on-line publishing business. Indeed, it appears that the Complainant’s concern regarding the use of the Domain Name by the Respondent is that the Complainant may want to enter the on-line publishing market, including print-on demand publishing, in the future.
6.12	In the circumstances, I do not consider that the Respondent’s use of the Domain Name would confuse or is likely to confuse anyone into believing that the use of the Domain Name was registered to, operated or authorised by the Complainant. I note the Complainant contends that the use of the Domain Name reduces the distinctive nature of the Instabook name, as the published information does not originate from the Complainant. However, I do not find that there would be any confusion with the Complainant under paragraph 3(a)(ii) of the Policy, bearing in mind the content of the getmybook.co.uk website and given the Claimant is not involved in on demand publishing and has very limited activities in on-line publishing.  
6.13	I also do not consider the Respondent’s refusal of the Complainant’s offer to purchase the Domain Name or the negotiations regarding the purchase of the Trade Mark to be evidence of an Abusive Registration. The Respondent’s conduct would only be offensive if by getting to the Domain Name first the Respondent takes advantage of or causes unfair detriment to the Claimant's Rights, which I do not consider is the case, taking into account the use of the Domain Name by the Respondent. I do not accept the Complainant’s contention that the Respondent is using the Domain Name to unfairly affect the value of the Trade Mark. Rather the Respondent is using the Domain Name for a business it has an interest in, which is marketed under the InstaBook name in the US, and in a way that does not cause confusion with the Complainant. The broader issue of whether the Respondent is entitled to use the InstaBook name in the UK given the Trade Mark is a matter for trade mark infringement law. 
7	Decision
7.1	I find that the Complainant has Rights in a name or mark which is identical with the Domain Name. For the reasons set out above, on the balance of probabilities, I do not find that the Domain Name in the hands of the Respondent is an Abusive Registration because it has not been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights. 
7.2	I direct that no action be taken regarding the Domain Name.

Dr Patricia Jones
28 April 2008