Oasis Stores Ltd v Dale, Court of Appeal - Nominet UK Dispute Resolution Service, March 26, 2009,  DRS 6365
|Resolution Date:||March 26, 2009|
|Issuing Organization:||Nominet UK Dispute Resolution Service|
|Actores:||Oasis Stores Ltd v Dale|
Dispute Resolution Service
Decision of Appeal Panel
Dated: 26 March 2009
Complainant: Oasis Stores Limited
Country: United Kingdom
Respondent: J Dale
Country: United Kingdom
Note the above address is the address that the Respondent says is out of date - see below - but the Panel has not been furnished with any other.
In this decision the parties are referred to by reference to their nomenclature at first instance. In other words the Complainant remains ``the Complainant'' and the Respondent remains ``the Respondent''.
Domain Name in dispute:
This domain name is referred to below as ``the Domain Name''
3.1 The Complaint entered Nominet's system on 6 October 2008. The Complaint was validated under Nominet's dispute resolution service policy version 3 (the ``Policy'') and sent to the Respondent on 7 October 2008. Nominet informed the Respondent that he should file any Response by no later than 29 October 2008. The Respondent filed no Response and Nominet informed the Complainant and Respondent of that fact in letters dated 30 October 2008. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to the Expert.
3.2 On 20 November 2008 Mr Matthew Harris was appointed as an Expert to determine the Complaint. He gave a decision on 8 December 2008 in which he found that the Complainant had rights in the name Oasis and that it was identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent was an Abusive Registration. He accordingly directed that the Domain Name should be transferred to the Complainant. A copy of his decision is available on Nominet's website. As appears below the Respondent did not participate in the determination of the Complaint by the Expert.
3.3 On 19 January 2009 the Respondent filed an appeal notice seeking to appeal the decision of the Expert.
3.4 In February 2009, Nick Gardner, Claire Milne and David King (the undersigned, ``the Panel'') were appointed to determine this Appeal and have each confirmed to the Nominet Dispute Resolution Service that:
``I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of such a nature as to call into question my independence in the eyes of one or both of the parties.''
3.5 Accordingly this is an Appeal against the decision of the Expert at first instance. The Panel was appointed to provide a decision on or before 23 March 2009. This date was subsequently extended by ten days (see below). This process is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service version 3 (``the Procedure'') and the Decision is made in accordance with the Policy. Both of these documents are available for inspection on the Nominet website (http://www.nominet.org.uk/disputes/drs).
The Nature of This Appeal
4.1 The Panel has considered the nature of this appeal process and the manner in which it should be conducted. The Policy paragraph 10a provides that: ``the appeal panel will consider appeals on the basis of a full review of the matter and may review procedural matters''.
4.2 The Panel concludes that in so far as an appeal involves matters other than purely procedural complaints the appeal should proceed as a re-determination on the merits. Accordingly, the Panel does not propose to undertake a detailed analysis of the Expert's decision.
4.3 In this Appeal the Respondent seeks permission to introduce new evidence. The Respondent did not participate in the initial determination of this Complaint. He says that was because the posted copy of the Complaint was sent to an out of date address and an emailed copy was overlooked.
4.4 In this context the Panel notes:
4.4.1 Paragraphs 18c and 18f of the Procedure provide that an appeal notice and response should contain no new evidence or annexes.
4.4.2 Paragraph 18h of the Procedure provides that the Panel should not normally take into consideration any new evidence "unless they believe that it is in the interests of justice to do so".
4.5 The Panel concludes that it has discretion to admit further evidence, although it should not normally do so unless satisfied that it is in the interests of justice to do so. In order to apply this test in this case the Panel considered it needed to review the evidence and then decide whether the interests of justice required this evidence to be admitted.
4.6 The Panel has therefore called for the non-standard submissions which each party had filed in accordance with paragraph 13b of the Procedure. In accordance with paragraph 13c of the Procedure these submissions had not previously been provided by Nominet to either the Panel or the other party. Having reviewed this material, the Panel noted that the Complainant had not had an opportunity to file any submissions or evidence in response to the material contained in the Respondent's non-standard submission (including its annexes). Had the Respondent introduced this material in the course of the original determination of the Complaint, the Complainant would have been entitled to file a Reply within 5 days of receiving the material.
4.7 The Panel considered that it should firstly afford the Complainant the opportunity of reply that it would have had if this evidence had been introduced at the correct time. Nominet communicated this decision to the parties on 13 February 2009 and invited the Complainant to file, within 5 days of the date of receipt of the notice, any reply evidence it wished to submit in response to the evidence the Respondent seeks leave to introduce. The notice made clear that this invitation did not represent a decision by the Panel that it would admit any further evidence - that issue is considered below. At the same time the Panel extended the date for determining this appeal by ten days. On 16 February 2009 the Complainant responded to the material contained in the Respondent's non-standard submissions.
4.8 The Panel considers that the correct way to proceed is to consider all the evidence before it and decide what outcome, on the evidence, should be reached. If that outcome is to uphold the decision of the Expert and provide for the Domain Name to be transferred to the Complainant then the question of whether or not the Respondent should be allowed to adduce new evidence becomes academic as no prejudice is caused to the Complainant by so doing. If on the other hand the Panel reaches the conclusion that the Decision of the Expert should not be upheld, and the Domain Name should be retained by the Respondent, it will then become necessary to decide whether the interests of justice do allow this evidence to be admitted. If the evidence is not admitted the Panel would then have to decide whether, absent such evidence, its decision should be different.
4.9 On 5 March 2009 the Panel received, via Nominet, a further communication from the Respondent making submissions following the Complainant (or its parent company) having gone into administration. On 23 March 2009 the Panel received, via Nominet, yet further submissions from the Respondent. The Panel declines to admit each of these submissions.
The Facts at first Instance
5.1 The relevant facts that were before the Expert at first instance were as set out in this section. These facts are all as at the time of filing the Complaint.
5.2 The Complainant was incorporated on 2 January 1991 and first began trading as Oasis in that year. The Complainant has used the term Oasis in connection with clothing, fashion and fashion related accessories.
5.3 The Complainant presently operates 269 retail outlets in the UK and a further 132 world-wide, including locations throughout Europe as well as Indonesia, Russia, Saudi Arabia and the United Arab Emirates. The Complainant's annual turnover in the past five years has been in excess of £160 million and on occasion in excess of £230 million.
5.4 The Complainant is the owner of numerous registered trade marks that comprise or incorporate the word ``Oasis''. These include:
5.4.1 United Kingdom registered trade mark no 2336917 for the word ``Oasis'' in class 25, filed on 4 July 2003 and registered on 30 January 2004; and
5.4.2 Community Trade Mark No 206250 for the word ``Oasis'' in classes 3, 14, 18, 21 and 25, filed on 1 April 1996 and registered on 25 April 2007.
5.5 The WhoIs record for the Domain Name reveals that the Domain Name was registered at some time before August 1996.
5.6 On August 28, 2008 the Complainant's lawyers wrote a letter before action in relation to the Domain Name to the Respondent at his PO Box No. address in Bristol in an envelope marked with the name of the Complainant's lawyers' law firm. The letter was returned by Royal Mail in September 2008 marked ``addressee gone away''.
5.7 From at least the date of the Complaint, and up to the date of the first instance decision, the Domain Name had been used for a web site that although varying in style and format had all the hallmarks of having been generated by a ``domain name parking service''.
5.8 Around the time that the Complaint was filed those typing the Domain Name into an internet browser would be diverted to a web site operating from the url http://oasis.co.uk.imondo.com/. The term ``oasis.co.uk'' and a search box were displayed at the top of the page. Below that were the tabs ``Home'', ``Coast Stores Co UK'', ``Oasis Clothing UK'' and ``Beyonce Clothes'', and below that a series of ``Sponsored listings''. The exact sponsored listing varied from time to time and possibly minute by minute but at one point the sponsored links displayed were as follows:
- Women's Clothing Shop
- Woman's Clothes
- UK Clothes
- Flax Clothes at Gidgets
- Shop SKECHERS and Save
- Large Womens Clothes
- Plis Size...
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