Deutsche-Telekom AG v Lammtara Multiserve Ltd, Court of Appeal - Nominet UK Dispute Resolution Service, October 17, 2008, [2008] DRS 5856

Resolution Date:October 17, 2008
Issuing Organization:Nominet UK Dispute Resolution Service
Actores:Deutsche-Telekom AG v Lammtara Multiserve Ltd
 
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Nominet UK Dispute Resolution Service

DRS 05856

Deutsche-Telekom AG v Lammtara Multiserve Limited

Decision of Independent Expert

  1. Parties

    Complainant: Deutsche-Telekom AG

    Country: Germany

    Respondent: Lammtara Multiserve Limited

    Country: United Kingdom

  2. Domain Names

    t-home.co.uk (``the domain name'')

  3. Procedural Background

    Nominet received hard copy of the complaint dated 2 July 2008 on 3 July. It checked that the complaint complied with its UK Dispute Resolution Service Policy (``the Policy'') and the Procedure for the conduct of proceedings under the Dispute Resolution Service (``the Procedure'').

    The complaint was supported by material in 7 annexes:

    C1 details of the Complainant's UK and European trademark registrations

    C2 printouts from the website to which the domain name resolved for several months

    C3 correspondence between the Complainant and the Respondent (summarised under `Facts' below)

    C4 Dispute Resolution Service guidance on the treatment of material that is, or is labelled, `without prejudice'

    C5 the decision of the appeal panel in Hanna-Barbera Productions Inc v Graeme Hay (DRS 00389)

    C6 printouts from the Respondent's website at 2ergo.com

    C7 Whois database entries for six of the Respondent's other domain names that are referred to in the complaint

    Nominet notified the Respondent of the complaint on 4 July and informed it that it had 15 working days within which to lodge a response. The Respondent requested and was allowed an extension, moving the deadline to 2 August. Soft copy of the response was received on 1 August, with hard copy following on 4 August. The response was supported by material in 7 annexes:

    R1 letter dated 8 July from agents for the Respondent to Nominet, requesting an extension to the deadline for a response

    R2 confirmation from Nominet that the deadline has been extended to 2 August

    R3 a list of 26 of the Respondent's registrations, all with the prefix t- (ignoring the generic suffixes there are 12 domain names across the top level domains .com, .net and .uk)

    R4 text of an agreement (undated but, from the surrounding email exchanges, apparently made in February 2002) for the sale of the domain names t-email.net and t-email.co.uk by the Respondent to a buyer acting on behalf of the Complainant

    R5 exchanges between buyer and seller about the possibility of the sale of the Respondent's other registrations with a t- prefix

    R6 printouts from the Respondent's website at 2ergo.com

    R7 results of a Google search on the term t-home

    The Complainant was given until 8 August to file a reply to the response, a deadline subsequently - at the Complainant's request - extended by Nominet to 12 August. The reply was received on 12 August. It was supported by material in 3 annexes:

    C8 exchanges between buyer and seller about the possibility of the sale of the Respondent's other registrations with a t- prefix (drawn from the Respondent's annex R5)

    C9 results of a Google search on the term ``t-home'' (including quotation marks - unlike the term used to generate the results at the Respondent's annex R7)

    C10 Whois database entry showing the Respondent as the registrant of the domain name who-wants-to-be-a-billionaire.co.uk

    The dispute was then subject to informal mediation. When that did not resolve the dispute, on 22 September Nominet notified the parties that an expert would be appointed to settle the matter if it received the appropriate fee from the Complainant. The fee was received on 26 September.

    On 29 September I, Mark de Brunner, agreed to serve as an expert under Nominet's Dispute Resolution Policy and Procedure. I subsequently confirmed that I am independent of each of the parties and that there are no facts or circumstances that might call into question my independence.

  4. Outstanding Formal/Procedural Issues

    Relevant version of DRS Policy and Procedure

    For complaints filed on or after 29 July 2008 there is a new version (version 3) of the Dispute Resolution Service (DRS) Policy and Procedure. Version 2 of the rules applies to complaints filed between 25 October 2004 and 28 July 2008. This complaint was filed on 3 July 2008 so version 2 of the Policy and Procedure applies.

    Correspondence marked `without prejudice'

    The parties cannot agree whether certain of the correspondence, sent by the agents for the Respondent and labelled `without prejudice save as to costs', should be admitted in evidence in proceedings to settle the dispute. The Complainant says it should be admitted. The Respondent says it should not.

    The Complainant argues that the evidence is admissible because, despite the label, it is not truly `without prejudice' to these proceedings. It says the correspondence relates to a `commercial arrangement' rather than `a genuine attempt to settle' - or alternatively that, even on the Respondent's case, the correspondence is without prejudice to possible court action rather than to settlement through the DRS. If these points do not hold and the evidence is truly `without prejudice' for present purposes, the Complainant points to the long-established approach that the general rule on excluding such evidence in litigation proceedings does not apply to Nominet's DRS. So either the evidence here is not truly without prejudice or it is but can be admitted anyway.

    The Respondent argues that the approach within the DRS, allowing `without prejudice' evidence, applies only to material relating to a DRS complaint and that the correspondence does not fall into that category: it is without prejudice to a defence against threatened proceedings in the High Court either under trade mark law or in an action against passing off. So the evidence is truly without prejudice but not for DRS purposes: the normal DRS approach, admitting such evidence, does not apply and the correspondence should be disregarded.

    As the Complainant notes, the approach to be taken to the `without prejudice' rule was established in the very first appeal heard under the DRS rules introduced in 2001 - Hanna-Barbera Productions Inc v Graeme Hay. The appeal panel concluded that there were sound reasons for not adopting the rule in relation to DRS cases - except for material generated within the informal mediation stage. That conclusion has since been formalised within the Policy. Paragraph 6 says:

    Documents and information which are `without prejudice' (or are marked as being `without prejudice') may be used in submissions and may be considered by the expert except that the expert will not consider such materials if

    (i) they are generated within informal mediation; or

    (ii) the expert believes that it is in the interests of justice that the document or information be excluded from...

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