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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Shine Ltd v Peoples Net Services Ltd (masterchef.co.uk) [2009] DRS 7584 (23 October 2009)
URL: http://www.bailii.org/uk/cases/DRS/2009/D00007584_full_decision.html
Cite as: [2009] DRS 7584

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NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 7584
Shine Limited v Peoples Net Services Limited
Decision of Independent Expert
1. Parties:
Complainant:
Shine Limited
David Oudot
Primrose Studios
109 Regent's Park Road
Primrose Hill
London
NW1 8UR
United Kingdom
Respondent:
Peoples Net Services Limited
Sam Rosen
19a Alvanley Gardens
London
NW6 1JD
United Kingdom
2. Disputed Domain Name
masterchef.co.uk ("the Domain Name")
3. Procedural Background:

3.1 Nominet received the Complaint on 31 July 2009; the Response on 11 August 2009 and the Reply on 14 August 2009.
3.2 Mediation conducted by Nominet failed to resolve the dispute.
3.3 On 22 September 2009, the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
3.4 Cerryg Jones, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any):
There are no outstanding procedural issues that arise.
5. Factual Background:
The Complainant
5.1 The Complainant is a television production company. It incorporated on 22 May 2000 (though the Complainant states on its website (www.shine.tv) that it was founded in 2001).
5.2 The Complainant supplies television content to a number of TV channels, including the BBC, ITV, C4, Five and Sky.
5.3 The Complainant has produced six series of a programme called "Masterchef", four series of "Celebrity Masterchef" and two series of

"Masterchef: The Professionals" for broadcast by the BBC on BBC 1 and BBC 2.
5.4 Although the Complainant did not start producing "Masterchef" until 2005, it alleges that it acquired the format rights in a pre-existing programme of the same name that had been broadcast on BBC 1 and BBC 2 between 1990 and 2000. No evidence of the acquisition of such rights was submitted with the Complaint.
5.5 The Complainant did, however, submit evidence substantiating the fact that it is the registered proprietor of the following trade marks which comprise or incorporate the word "Masterchef":
5.5.1 A series of two stylised devices for MASTER CHEF dated 31 May 1995 no. 2022465 in class 30 for "Prepared pies, tarts, flans, egg custards, crumbles, quiches, fruit pies, sponges, Christmas puddings, bread and butter puddings."
5.5.2 A series of three word marks for MASTERCHEF MASTER CHEF MasterChef dated 16 December 1996 no. 2118654 in class 21 for "Bowls, dishes, jugs, glasses, chinaware, cups, mugs, earthenware, enamelware, pots, saucers, trays, kitchen tools; sugar basins, knife boards, butter dishes, colanders, covers for dishes, non-electric kettles, lemon squeezers, lids for pots, pastry moulds, table plates, tea strainers, tea and coffee pots, dinner services, tea sets, condiment sets, racks, garlic presses, potato peelers, can openers, slotted spoons, turners and potato mashers."
5.5.3 A Community Trade Mark for the word Masterchef dated 30 May 2008 no. 006952733 in class 16 for "Printed publications relating to food and cookery"; in class 21 for "Household and kitchen utensils and containers; bowls, dishes, jugs, glasses, chinaware, cups,

mugs, earthenware, enamelware, pots, saucers, trays, kitchen tools; sugar basins, knife boards, butter dishes, colanders, covers for dishes, non-electric kettles, lemon squeezers, lids for pots, pastry moulds, table plates, tea strainers, tea and coffee pots, dinner services, tea sets, condiment sets, racks, garlic presses, potato peelers, can openers, slotted spoons, turners, potato mashers, condiment mills and spice grinder;" and in class 41 for "The production, presentation and distribution of audio and video works and materials including television programmes, radio programmes and films and the provision of information relating
thereto".
The Respondent
5.6 The Respondent was incorporated on 31 August 1995.
5.7 It registered the Domain Name on 25 February 1998. According to Nominet's WHOIS service, the details for the Domain Name were last updated on 22 September 2009.
5.8 A one page screen grab resulting from the entry into a browser of www.masterchef.co.uk was filed with the Complaint. This evidence shows that, at some point in time at least, the Domain Name was used for the purposes of a parking page at a website operated by Sedo, the well known internet services company. Regrettably, the Complainant did not file any evidence, or make any submissions, as to when the search was undertaken or the date of the screen grab. This has some relevance in that it now appears that the Respondent's use of the Domain Name has changed somewhat, as I shall explain below.

5.9 It is clear from this evidence that on whatever date the search was undertaken:
5.9.1 The Domain Name was being offered for sale via Sedo on a parking page.
5.9.2 The parking page displayed sponsored advertising links to a variety of third party websites. The headings for the links were as follows: AGA Masterchef; Master Chef takeaway menu; the Kitchen Parsons Green; free cooking recipes CD; Good Food Channel; Luxury Kitchen Appliances; Order Food Online; TurboChef Ovens; Chef knives; and Masterchef Oven. Neither party filed any evidence as to the nature or content of the websites accessed through the advertising links. However, the text under these headings indicates that the goods and services being advertised by such third parties included ovens, kitchen appliances, recipes (as shown on TV and otherwise), restaurants, take away food, and chef knives.
5.9.3 The parking page also contained a section entitled "related searches" under the following headings: Moulinex Masterchef; BBC World News; Cooking; Chef; Beautiful Food; Cooks and Chefs; Delicious Food; Food Industry; Cooks Co; Learn to Cook. Again, neither party filed any evidence as to the nature and content of the websites linked to these "related searches".
5.10 On entering the Domain Name into Google's search engine, the following listing is displayed in the natural results section:
Masterchef.co.uk - Master chef Resources and Information. This ... masterchef.co.uk. FOR SALE: bid online or contact Sedo.co.uk 0207 400 9090. Language: English, Frangais, Deutsch, Espanol, Italiano, Portugues, Dansk ...

5.11 However, www.masterchef.co.uk is currently inactive; the message "internet explorer cannot display the webpage" appears on a computer screen upon entering this address into a browser.
5.12 I have decided that it would be appropriate to undertake a limited investigation into the nature of the advertising links on the parking page in view of the direction to experts contained in paragraph 4e.i. of the Policy. Google's cached link to http/www.masterchef.co.uk provides a snapshot of the webpage as it appeared on 5 August 2009. From this evidence it appears that the Domain Name was available for sale on this date via Sedo.
5.13 The structure and content of the parking page on the cached webpage differs somewhat from the evidence filed with the complaint:
5.13.1 The Domain Name appears near the top of the cached page, within a section containing information about "related searches."
5.13.2 Different headings were displayed in the "related searches" section: Food TV Show; Programmes Agricoles; BBC; TV; Formula 1; Series; Television; BBC Antiques Roadshow; Good Food Recipes;
and BBC Co UK Food.
5.13.3 Different sponsored advertising links were displayed below the "related searches" section under the following headings: IT Channel Programmes; Meet Top Business Mentors; TV News Online; Downsized To Dollars; Kitchen Gadgets; Fry Construction; MUZZY BBC Language Course; BBC I Player Overseas?; Best-Selling Audio Books; and Learn TV Drama Writing.

5.13.4 There is also a disclaimer at the bottom of the cached webpage, which reads as follows:
"This page provided to the domain name owner free by Sedo's Domain Parking. Disclaimer: Domain owner and Sedo maintain no relationship with third party advertisers. Reference to any specific service or trade mark is not controlled by Sedo or domain owner and does not constitute or imply its association, endorsement or recommendation."
5.14 I also conducted a search on Sedo's website for the Domain Name. This reveals that the Domain Name is currently being offered for sale through Sedo's "Domain Marketplace." However, there are no sponsored listings or "related searches" displayed on Sedo's webpage for the Domain Name.
Communications between the Complainant and the Respondent
5.15 The Complainant appears to have made two written approaches to the Respondent to purchase the Domain Name.
5.16 The first came in a letter from David Oudot, the Complainant's Legal and Business Affairs Manager, dated 18 May 2009. The offer was for 300, and was expressed to be conditional upon a transfer of the Domain Name within 7 days and the provision of an undertaking not to register any domain names which incorporated the Complainant's trade marks.
5.17 It is common ground that in a subsequent telephone conversation in June 2009, the Respondent rejected the offer and proposed a higher sum in the region of 15,000.

5.18
The Complainant's second offer of 1,000 was made in a letter from Mr
Oudot dated 27 July 2009.
5.19 Mr Oudot's second letter alleged that the Respondent's:
"inflated valuation has clearly been devised...based on the goodwill that already exists in the Masterchef name and brand and not the value of the Domain Name to you"
5.20 The Complainant's offer of 1,000 was rejected by Sam Rosen of the Respondent by email the same day. Mr Rosen claimed, response to the Complainant allegations, that "masterchef" was generic and that:
"You are always entitled to your views. We are entitled to price domains at whatever we like and we are certainly not pricing in any goodwill that you claim already exists in the name. If we were to be doing as you suggest, any price we would be quoting would be very much higher than we have previously indicated."
5.21 Mr Rosen disputed the allegations set out in Mr Oudot's letter on the basis
that:
5.21.1 The Respondent had held the Domain Name for many years.
5.21.2 During this period the Complainant had done nothing about the Respondent's registration.
5.21.3 The Respondent had not offered the Domain Name for sale to the Complainant.

5.21.4 The Respondent had indicated a sale price of 15,000 in response to the Complainant's inquiry as to whether the Respondent was prepared to sell and, if so, at what price
6. The Parties' contentions
Complainant
The Complainant alleges that:
6.1 The Domain Name is an abusive registration on the basis of paragraph 3(a) i. of the Policy: namely that the circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name primarily:
6.1.1 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;
6.1.2 as a blocking registration against a name or mark in which the Complainant has Rights; or
6.1.3 for the purpose of unfairly disrupting the business of the Complainant;
6.2 That the Domain Name was registered after the launch of the original series of "Masterchef" and after the registration date of the earliest "Masterchef" trade mark. The Complainant also alleges that the Domain Name is identical to the Complainant's registered trade marks (and is the

only co.uk domain name which exactly matches the Complainant's trade marks).
6.3 The acquisition and use of the Domain Name by a third party would cause confusion in the minds of viewers of the Complainant's television programmes.
6.4 Third party use of the Domain Name would damage the reputation of the Masterchef brand.
6.5 The Domain Name is not being used by the Respondent except as a parking page.
6.6 The Respondent has never been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name.
6.7 The Respondent's sale price of 15,000 was heavily inflated and was based on the goodwill that already exists in the "Masterchef" name and brand and not the value of the Domain Name to the Respondent.
6.8 Once the Respondent became aware of the "high regard" in which the Complainant holds its "Masterchef" brand and trade marks and the potential confusion caused between such trade marks and the Domain Name, it sought to leverage that difficulty by obtaining from the Complainant a sum in excess of 15,000.
6.9 The content of the email of 27 July 2009 (referred to in sub-paragraph 5.20 above) shows that the Respondent was using the Domain Name in a manner which took advantage of or was unfairly detrimental to the Complainant's Rights. Although the Complainant says that this conduct is

outside the list of factors under Part 3 of the DRS Policy, it says that the list is non-exhaustive and that the Policy should also be permitted to cover post-registration use of the Domain Name.
6.10 The Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well-known names or trade marks under which they have no apparent rights. The examples cited include idealhome.net; neighboursnet.net; neighboursnet.com; neighboursnet.net; okbarack.com; okbarack.net; okbarack.org; okbarack.us; okobama.net; okobama.org; okobama.us; okpresident.net; okpresident.org; okpresident.us; okyeswecan.com; okyeswecan.net; and okyeswecan.us.
6.11 These domain names are identical, similar to, or common spelling mistakes of the name and office of the US President; the slogan used by Mr. Obama during and after his election campaign; the television series 'Neighbours' that has transmitted in the UK for over 20 years and which is a registered trade mark of Freemantle Operations; and the magazine title "Ideal Home," also the subject of a trade mark application.
6.12 As there is no apparent link between the Respondent and any of these names, the Complainant alleges that that this an indication of the Respondent's persistent registration of domain names identical or similar to registered and unregistered trade marks, and third party brand or well-known names.
6.13 The Respondent has been the subject of an adverse finding in 2003 (case number DRS0989, Langdon Industries Ltd, chillnet.co.uk) in relation to the domain name 'chillnet.co.uk,' for which the Respondent apparently sought 5,000 when invited to sell the domain name the subject of the dispute.

6.14 A WIPO panellist found against the Respondent in 2003 in relation to the domain names 'bayernmuenchen.net' and 'bayernmunchen.net.' The Complainant refers to the fact that, in that case, the Administrative Panel ruled that "When registering the domain names, this must have been obvious to the Respondent, as the [complainant] is... famous in the UK. It is likely that the Respondent is familiar with football, as he has several other football domains, but even if this was not the case it would be likely that he knew about the [complainant] and the [complainant's] trademarks. The Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site by creating a likelihood of confusion with the Complainant's mark and name as to the sponsorship, affiliation, or endorsement of the Respondent's web site or the services constituting the Respondent's business activities."
6.15 The Respondent has given false contact details to the Complainant as communications addressed to the contact details listed on the Nominet site resulted in recorded delivery letters being returned and faxes rejected.
6.16 The Complainant alleges that it was only after performing a Companies House search that it was able to contact the Respondent. The Complainant says updated details as of 19 June 2009 still provide the incorrect address details.
Respondent
The Respondent alleges in its Response that:
6.17 There was no motive to register the Domain Name as an abusive registration and there has never been any abusive use against the Complainant.

6.18 At the time when the registration took place, no unfair advantage was taken of the Complainant's Rights (if any) as, even if the Complainant ever had any rights, it had none at the time of registration.
6.19 The domain is generic and descriptive like "masterbaker" or "mastercarpenter", as evidenced by a variety of websites, such as http://masterchef.com; http://www.masterchefs.com; and http://www.masterchefs.co.uk/.
6.20 An entry from Wikipedia suggest that the Complainant has been using the name "masterchef" from 2005 onwards. Neither the domain name masterchef.com nor masterchef.net have been registered by the Complainant, though it has registered the domain name "masterchef.tv" in
2005.
6.21 The registration date of the masterchef.tv domain is consistent with the Complainant renaming their programme from "Masterchef goes live" to "Masterchef" from 2005 onwards.
6.22 The Respondent has held the domain for many years (since February 1998) and has never sought and will never seek to use the domain in an unlawful manner.
6.23 If the domain was considered an abusive registration (which is denied) and the Complainant was using the name for its broadcast activities at the time, or at least between 1998 and 2005, then it would have disputed the registration well before the current dispute.
6.24 The Respondent currently has the Domain Name under development.

6.25 The Complainant has done nothing about the registration or masterchef.co.uk and to the best of the Respondent's knowledge, any of the other domain registrations mentioned above until 2009.
6.26 The Respondent has never actively sought to sell the domain to the Complainant. A representative of the Complainant enquired of the Respondent if it was prepared to sell the domain and if so at what price. 15,000 was indicated at the time as the Respondent had incurred development costs but the offer is now withdrawn.
6.27 The Domain Name has not and never will be used in a manner which takes unfair advantage of or may be unfairly detrimental to the Rights (if any) of the Complainant.
Reply
In its Reply, the Complainant says:
6.28 The Complainant's trade mark registrations demonstrate that masterchef is not generic or descriptive.
6.29 That it is sceptical of the Respondent's alleged development costs since:
6.29.1 The Respondent registered the Domain Name in 1998.
6.29.2 There has never been anything hosted on that page at any point during this 11 year period.
6.29.3 That as of the date of the response it is still a landing page with no content of any note on it whatsoever.

7 Discussion and findings General - the DRS policy (the Policy)
7.1 Under paragraph 2 of the Policy, the Complainant is required to prove to the Expert on the balance of probabilities that:
7.1.1 The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
7.1.2 The Domain Name, in the hands of the Respondent, is an Abusive Registration.
7.2 An Abusive Registration is defined in paragraph 1 of the Policy as a Domain Name which either:
7.2.1 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
7.2.1 has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant's Rights;
7.3 Rights are defined under paragraph 1 of the Policy as:
"rights enforceable by the Complainant, whether under English law or otherwise, and may include rights in descriptive terms which have acquired a secondary meaning".

7.4 The first question that needs to be decided is whether the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name.
7.5 The Complainant has satisfied this test by virtue of the rights conferred on it through ownership of the registered trade marks identified in paragraph 5.5 above.
7.6 The next issue to be determined is whether or not the Domain Name, in the hands of the Respondent, is an Abusive Registration. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration under the Policy is as follows (so far as may be relevant to this Complaint):
7.6.1 Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
7.6.1.1 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;
7.6.1.2 as a blocking registration against a name or mark in which the Complainant has Rights; or
7.6.1.3 for the purpose of unfairly disrupting the business of the Complainant;

7.6.2 Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
7.6.3 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.
7.6.4 It is independently verified that the Respondent has given false contact details to Nominet.
7.7 The Policy makes it clear that failure on the Respondent's part to use the Domain Name for the purposes of email or a web site is not in itself evidence that the Domain Name is an Abusive Registration.
7.8 A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration (as far as relevant to this Decision) is as follows:
7.8.1 Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has:
7.8.1.1 used or made demonstrable preparations to use the Domain Name or a domain name which is similar to the Domain Name in connection with a genuine offering of goods or services;

7.8.1.2 been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name; or
7.8.1.3 made legitimate non-commercial or fair use of the Domain Name.
7.8.2 The Domain Name is generic or descriptive and the Respondent is making fair use of it.
7.8.3 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.
7.9 The Policy makes it clear that trading in domain names for profit, and holding a large portfolio of domain names, are of themselves lawful activities. In these circumstances, the Expert is to review each case on its merits.
7.10 Connecting domain names to parking pages and earning click-per-view revenue is not of itself objectionable under the Policy either. However, the Expert is required under the Policy to take into account:
7.10.1 the nature of the Domain Name;
7.10.2 the nature of the advertising links on any parking page associated with the Domain Name; and
7.10.3 that the use of the Domain Name is ultimately the Respondent's responsibility.

7.11 First, I need to consider whether the Complaint and evidence in support is sufficient, on a balance of probabilities, to establish that, at the time the Domain Name was registered in February 1998, it was registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.
7.12. Second, if not, whether the Domain Name has subsequently been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant's rights.
7.13. Dealing with the first issue, the Complainant alleges that the Respondent registered the Domain Name primarily for the purposes of selling the Domain Name to the Complainant or to a competitor of the Complainant, for a sum in excess of the Respondent's costs of acquiring the Domain Name (being one of the factors from which an expert can make a finding of abusive intent at the time of registration).
7.14. In fact, all the evidence points the other way; at no point in the 11 years between registration of the Domain Name and the date when the Respondent was first contacted by the Complainant in 2009 did the Respondent ever approach the Complainant with a view to selling the Domain Name. Furthermore, the offers for sale of the Domain Name via Sedo are not specifically directed to any particular person or entity, and, in particular, not directed to the Complainant or its competitors.
7.15. Nor is there any evidence from which I can make a finding that the Respondent's purpose was to block the Complainant's registration of the Masterchef name or mark.

7.16. Where trade marks consist of invented words, their incorporation within domain names by unconnected third parties may readily give rise to an inference of a malevolent purpose in the hands of a Respondent, which is sufficient to make good an allegation of an abusive registration (whether on the basis of a blocking registration, disruption to the Complainant's business, or otherwise).
7.17. However, the Domain Name comprises an ordinary English word. These are often the most valuable domain names because of their descriptive power and wide potential application. There is no evidence that the Respondent, at the time of registration, sought to target the Masterchef registered trade marks. In that respect, it is important to note that at the time of registration of the Domain Name, the Complainant did not exist. It is true that the Complainant subsequently acquired two registered trade marks incorporating the word Masterchef which had an earlier registration date than the registration date of the Domain Name; however, these two marks were limited to a class 30 registration for foods such as pies and tarts, and a class 21 registration for kitchen products such as bowls, dishes and jugs. I see no basis on the evidence before me to suggest that the Respondent had in mind these marks when registering the Domain Name.
7.18. Nor is there any evidence that the Respondent sought to take advantage of any goodwill which may have built up under the Masterchef name at the time of registration.
7.19. It follows from the above that, at the time of registration, the evidence does not establish that the Respondent's purpose was to unfairly disrupt the Complainant's business.

7.20. Accordingly, I find that the Respondent's registration of the Domain Name in itself was not abusive.
7.21. Whether the Doman Name is an abusive registration therefore turns upon the use which the Respondent has made of it since it was acquired. This involves an examination of the evidence of the use of the Domain Name as a parking page and the events culminating in the offer to sell the Domain Name for around 15,000.
7.22. In deciding these issues I have considered (amongst other decisions) the Decision of the Appeal Panel dated 18 April 2008 My Space, Inc v Total Web Solutions Limited DRS 04962. I have paid particular regard to the following passages from that Decision:
"To date experts and Appeal panels have reasonably consistently taken the view that if a registrant acquires a domain name in advance of the coming into existence of the complainant's rights, the registrant is entitled in principle to hold onto the domain name and to use it, notwithstanding that confusion of the "initial interest" variety may be inevitable. Similarly, experts and Appeal panels have concluded in such circumstances it is not of itself abusive for the registrant to demand a high price from the complainant for transfer of the domain name in recognition of its enhanced value. Problems only arise for the registrant if he actively does something to take unfair advantage of his position...
"However, the registration of domain names is still a first-come-first-served system and the Panel is reluctant to place any duty on a registrant, who has merely the good fortune (or maybe ill fortune) to register a name in good faith, which subsequently through no fault of his own, acquires notoriety, provided that he does nothing actively to exploit his position."

The 15,000 offer
7.23. The Complainant alleges that, when the Respondent became aware of the "high regard" in which the Complainant holds its "Masterchef" brand and trade marks, and the potential confusion caused between such trade marks and the Domain Name, it sought to leverage that difficulty by obtaining from the Complainant a sum in excess of 15,000.
7.24. So far as the offer to sell the Domain Name for about 15,000 is concerned, I do not agree with the Complainant that this is evidence of abusive conduct. The evidence is wholly insufficient to conclude on a balance of probabilities that the Respondent sought to extract a premium for the Domain Name based on the Complainant's rights.
7.25. The evidence, such as it is, is insufficient to support a finding that the 15,000 was based on the goodwill that exists in the Complainant's "Masterchef" name and brand, as the Complainant contends, rather than its value as an ordinary word.
7.26. Nor is there any evidence that the Respondent was cognisant of any risk of confusion between the Domain Name and the Complainant's trade marks or business, or of any confusion in the minds of viewers of the Complainant's television programmes, still less that it factored such risks into its offer price.
7.27. Had there been such risk, I would have expected the Complainant to have adduced some supporting evidence, based on the Respondent's long standing registration and use of the Domain Name, and the longevity of the Masterchef programmes and trade marks. The absence of any evidence of confusion is telling in my view.

7.28. I regard the Respondent's offer as a legitimate counter-offer, elicited solely in response to the Complainant's initial correspondence and subsequent discussions. The Policy makes it clear that trading in domain names for profit, and holding a large portfolio of domain names, are, of themselves, lawful activities provided the domain name in any particular case has not been registered or used abusively.
7.29. No evidence was provided with the Complaint which would enable me to assess whether 15,000 was a fair or unreasonable amount to ask for a Domain Name consisting of an ordinary English word. In the myspace.co.uk case, for example, the sale price requested by the Respondent varied from $100,000 to $430,000 USD. No action was taken in that case by the Appeal Panel (though the reasoning appears to have turned on evidential complexities, which made the court a more appropriate forum for the complaint, rather than the Respondent's offer).
7.30. In any case, such evidence would not likely have been of any probative value, as a registrant who has lawfully acquired and used a domain name may name its price, however unreasonable it may appear or inflated.
The parking page
7.31. As the Policy makes clear, connecting domain names to parking pages and earning click-per-view revenue is not of itself objectionable under the Policy either. However, the Expert is required under the Policy to take into account: the nature of the Domain Name; the nature of the advertising links on any parking page associated with the Domain Name; and that the use of the Domain Name is ultimately the Respondent's responsibility.
7.32. I have already considered the nature of the Domain Name above. The Complainant has not adduced any evidence of the reputation of the

Masterchef trade marks or indeed that of the TV programmes broadcast using that name. In the circumstances I have concluded on the evidence that internet users would link the Domain Name to the ordinary meaning of masterchef, not to the Complainant's Masterchef trade marks or its Masterchef programmes .
7.33. Before I go through the evidence in respect of the parking page, and the nature of the advertising links on the parking page formerly associated with the Domain Name, it is important to bear in mind that the Complainant has to establish that the Respondent has taken unfair advantage of, or caused unfair detriment to, the Complainant's rights.
7.34. Where, as here, a complainant relies upon registered and unregistered trade mark rights, one necessarily has to consider the nature and limits of those rights in order to deal with the question whether a respondent has taken unfair advantage of, or caused detriment, to them.
7.35. The rights conferred on a trade mark proprietor under the Trade Marks Act 1994 (which implemented Directive 89/104, approximating the laws of Member States relating to trade marks) entitle a proprietor to prevent all third parties from using in the course of trade:
7.35.1 any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered.
7.35.2 any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public.

7.35.3 any sign which is identical with, or similar to, the trade mark where the latter has a reputation and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
7.36. Case law has also established that the right conferred on a proprietor by a registered trade mark cannot be exercised to prevent the use of a conflicting sign unless such use affects or is liable to affect the functions of the trade mark (in the case of the provisions set out in sub-paragraphs 7.35.1 and 7.35.3 above) or its essential function (in the case of the provisions set out in 7.35.2 above). The essential function of a trade mark is to guarantee to consumers the origin of the goods or services. Its other functions include guaranteeing the quality of the trade marked goods or services and its communication, investment or advertising functions.
7.37. I will therefore approach the question of whether any unfair advantage has been taken of, or unfair detriment been caused to, the Complainant's registered trade mark rights by considering whether the evidence establishes that the Respondent's use of the Domain Name:
7.37.1 has been used in relation to identical, similar or dissimilar services;
7.37.2 has taken advantage of, or caused detriment to, the functions of the Complainant's rights sufficient to constitute an abusive registration.
7.38. At some point in time, the Domain Name has been used as a parking page. By displaying links on the parking page, I am prepared to find that a link would have been established between the Domain Name and the sites advertised. To that extent, I am prepared to make a finding that the Respondent's use was not limited to advertising services over the internet but also includes the goods or services advertised on the parking page (see in that respect the Opinion of Advocate General Poiares Maduro in

Joined Cases C-236/08, C-237/08 and C-238/08, at the Google Adword cases, at paragraph 79).
7.39. As I have mentioned, the parking page adduced by the Complainant in evidence displayed sponsored advertising links under the following headings: AGA Masterchef; Master Chef takeaway menu; the Kitchen Parsons Green; free cooking recipes CD; Good Food Channel; Luxury Kitchen Appliances; Order Food Online; TurboChef Ovens; Chef knives; and Masterchef Oven.
7.40. The text under the headings suggests that the goods and services being promoted included ovens, kitchen appliances, recipes (as shown on TV and otherwise), restaurants, take away food, and chef knives.
7.41. However, the Complainant has not filed any evidence as to the nature or content of the websites advertised under these advertising links. That is regrettable.
7.42. However, I am prepared to proceed on the assumption that the headings displayed fairly describe the goods or services of the websites being advertised. Some of these goods are identical to goods covered by the Complainant's trade marks, some similar, and some are dissimilar.
7.43. Case law has established that for earlier registered trade marks with a reputation, unfair advantage covers, in particular, cases where, by reason of a transfer of the image of the earlier mark, or of the characteristics it projects to the goods/services identified by the later mark, there is clear exploitation on the coat-tails of the reputed earlier mark; (Judgment of the ECJ in Case C-487/07, L'Oreal, paragraph 41.)

7.44. There is not, however, any evidence which indicates that any such exploitation has been attempted or has arisen in respect of the links, or related searches, on the parking page as adduced by the Complainant, or as displayed in Google's cached webpage of 5 August 2009, as described in paragraphs 5.12 and 5.13 above.
7.45. Nor is there any evidence which indicates that the origin identification, advertising, marketing or investment functions of the Complainant's registered trade marks have been taken advantage of, or have had detriment caused to them, whether by the use which the Respondent has made of the Domain Name via sponsored advertising links on a parking page, or indeed the Respondent's current offer for sale via Sedo without displaying such links.
7.46. The Complainant has also failed to adduce any evidence which would indicate that its common law rights under the law of passing off have been taken advantage of, or suffered any harm by reason of the Respondent's activities. There is no evidence that the relevant public would consider the Domain Name itself, or the uses to which it has been put, to have made any misleading representation about the Complainant or its Masterchef trade marks.
7.47. The Complainant has also alleged that the reputation of its Masterchef "brand" would be damaged by the Respondent's use of the Domain Name. Case law establishes that detriment to the repute of an earlier registered trade mark is caused when the goods or services for which the later mark is used by the third party may be perceived by the public in such a way that the earlier trade mark's power of attraction is reduced; (see L'Oreal above, paragraph 40). There is no evidence that the use of the Domain Name has tarnished the reputation of the Complainant or its Masterchef

trade marks, or has adversely affected the Masterchef TV programmes, in such a way to constitute an abusive registration.
7.48. In previous Appeal Panel decisions involving parking pages (for example Oasis Stores Ltd v J Dale dated 26 March 2009, DRS 06365, and the Myspace.co.uk decision referred to in more detail below) it appears to have been accepted that advertising links on parking pages are generated automatically by a standard software package over which domain name holders do not exercise any control. The disclaimer on the cached webpage that I have referred to in paragraph 5.13.4 is consistent with that view, though I accept that the use of the Domain Name is ultimately the responsibility of the Respondent (as the Policy makes clear).However, as I have found that the content of the parking page as shown in the evidence to be not probative of an abusive registration, the fact that such content is the Respondent's responsibility is of no consequence.
7.49. I should also note that this case is distinguishable in my view from the Decision of the Expert in DRS 989, which also involved the Respondent, in two relevant respects. Firstly, there are differences in nature between the respective domain names (chillnet.co.uk and masterchef.co.uk). Secondly, the Expert in that case came to the view that the Respondent unjustifiably sought a premium for the Domain Name because of its correspondence with the complainant's trade mark. In this case, there is insufficient evidence for me to make any such inference.
False contact details
7.50. The Complainant has alleged that the Respondent has provided false contact details to Nominet because all recorded delivery letters were returned and faxes rejected when using contact details which appeared on Nominet's WHOIS database.

7.51. There is, however, a clear difference between a registrant who fails to update its address details on Nominet's database and one who deliberately provides false contact details so as to conceal its whereabouts, or to frustrate attempts to make contact. The former is not evidence of abusive conduct, the latter plainly is.
7.52. I have formed a clear view on the evidence that the Respondent falls into the former category. There is nothing about the Respondent's conduct which indicates a dishonest intent in respect of its contact details. The Respondent changed its address, and while it is true it ought to have updated its contact details sooner than it did, once the correspondence came to its attention, it did not ignore the Complainant's allegations, but responded promptly. There was no attempt to evade answering the Complainant's concerns, or to frustrate the Nominet process.
A pattern of abusive registration
7.53. 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, such evidence constitutes evidence of abusive conduct.
7.54. This can be dealt with swiftly. It is not enough for the Complaint to show that the Respondent has registered domain names which correspond to third party trade marks or names. The Complainant also has to prove that the Domain Name "is part of that pattern." I have already found (for the reasons given above) that the evidence fails to establish that the Respondent's motive in registering the Domain Name was to adopt the

Complaint's trade mark within the Domain Name. Accordingly, the Domain Name cannot be part of any such pattern. I note also that some of the domain names relied upon to establish such an alleged pattern include, for example, okpresident.net, okpresident.org and okpresident.us. Without any evidence, there is no possible basis on which I could infer that such registrations are, by themselves, abusive. The same applies to domain names which are also capable of bearing a descriptive meaning, such as neighboursnet.net.
7.55. Finally, for completeness, I agree with the Complainant that the Respondent has not been commonly known by the name or legitimately connected to a mark which is identical or similar to the Domain Name. I also share the Complainant's scepticism that the Respondent has incurred development costs material to its 15,000 offer. No evidence has been filed in support of this allegation in circumstances where it would have been easy to do so.
8 Decision:
In the light of the above findings, namely that the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name but that the Domain Name, in the hands of the Respondent, is not an abusive registration, I direct that no action be taken.
Cerryg Jones 22 October 2009


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