Gandhi Restaurant v Mahmmued [2002] DRS 1413 (4th February 2002)

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NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 01413
GANDHI RESTAURANT
- AND -
AWAL MAHMMUED

Abbreviation Definition
DRS Nominet UK's Dispute Resolution Service
DRS Policy Nominet UK's Dispute Resolution Service Policy
DRS Procedures Nominet UK's Dispute Resolution Service Procedures
The Expert Kirsten Houghton

Procedural Background:
1. The Complaint was lodged with Nominet on 19th November 2003 and hard copies were received on the same day.
2. Nominet validated the Complaint on 24th November 2003.
3. On 24th November 2003, Nominet sent the complaint to
(a) The Respondent’s address by post;
(b) By e-mail to the Respondent’s email address listed in Nominet’s database and
(c) By e-mail to postmaster@gandhirestaurant.co.uk and postmaster@baffinstakeway.co.uk
4. On 8th December 2003, the Respondent submitted a detailed response to Nominet. This was sent to the Complainant on that date. The Complainant submitted a Reply on 23rd December 2003; this was outside the 5 day time limit permitted by Rule 6 of the DRS Policy, but Nominet granted the Complainant an extension of time under Rule 12(a) and accepted the Reply
5. Mediation was apparently attempted and failed. I have not been provided with any details of the mediation process.
6. On 30th January 2004, the Complainant paid the fee in order to obtain a decision of an independent expert.
7. On 30th January 2004, I confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.

The Facts:
(1) The Parties – the Complainant
9. The Complainant is an Indian restaurant business based in Portsmouth. It is not entirely clear to me from the Complaint who stands behind the trading name “Gandhi Restaurant”.
(a) In the Complaint, Mr. Karim says “I/family are the owners of both businesses”.
(b) A letter dated 11th April 2003 from Bramsdon & Childs (solicitors instructed by Mr. Karim to raise this issue with the Respondent) states that they were “instructed by Ruman Karim on behalf of Lahin Karim and Delwar Hussain trading as The Gandhi Restaurant”.
(c) A bank statement produced by the Complainant shows that Mr. L. Karim and Mr. D. Hussain hold an account in the name of “The Gandhi Tandoori Restaurant” at NatWest in Portsmouth.
(d) A “Certificate of Registration” provided by National Business Register plc shows that “Gandhi Tandoori Restaurant” has been registered as a business name owned by all three gentlemen.
(e) However, a photograph of the restaurant, and a menu, appear to show that the actual trading name is, indeed, Gandhi Restaurant.
10. These facts suggest to me that the Complainant is composed of a partnership between Mr. L. Karim and Mr. D. Hussain, principally because they appear on the bank statements, and because the solicitors should have been careful to ascertain exactly who they were acting for before writing their letter of 11th April 2003.
11. However, I am prepared to accept that Mr. R. Karim is authorised to represent the partnership, again, because the solicitors also accepted that he was so authorised.
12. I have not been provided with any details of turnover or trading history. However, the pictures and menu appear to show a substantial business venture in the name of “Gandhi Restaurant.”
13. I have not been provided with any information at all about the nature of “Baffins Takeaway”; I have no idea whether this is actually a trading entity, or simply an idea for a new business. There is a website linked to the baffinstakeway.co.uk domain name, but it is not possible to tell from the information provided to me whether this is actually trading or who the owners of any such business are.
(2) The Parties - the Respondent
14. The Respondent is a web designer. He now trades as “Tiger Web Design”, although the original quotation underlying this dispute was given in the name of “Tyga D-Zyn” said to be a “corporate member” of a company called Mayfair (UK) Limited of which the Respondent was said to be a director. It is a not at all clear to me what being a “corporate member” of a limited company means, but, for the purpose of this dispute, it is irrelevant since the subject domain names are registered in the Respondent’s own name.
(3) The Complainant’s rights in “Gandhi Restaurant”
15. The Complaint contains only vague assertions as to the Complainant’s rights in “Gandhi Restaurant”. Despite the Respondent’s assertions that there are a number of businesses called “Gandhi Restaurant” and “Gandhi Tandoori Restaurant”, I am satisfied from the information I have seen that the partnership has built up substantial goodwill in the name “Gandhi Restaurant” which it could protect by way of a passing off action if another enterprise in its local area chose to set up a competing business with the same or a similar name.
16. In the circumstances, I consider that the Complainant has established that it has rights in a name which is identical to the Domain Name Rule 2(a)(i) of the DRS Policy.
(4) The Complainant’s rights in “Baffins Takeaway”
17. The Complaint does not contain any evidence in relation to the Complainant’s rights in the name “Baffins Takeaway” save to say that “I/Family are the owners of both businesses”. As stated in Paragraph 13, I have not been provided with any information concerning turnover or business presence, and, in the circumstances, I do not accept that the Complainant has established any rights in respect of this name which qualify it to apply for a remedy under the DRS Policy.

(5) The Complaint
18. The Complaint is very sparse:
“I have provided a breif letter detailing the dipute of the domain name/s which is/are www.gandhirestaurant.co.uk also I have not mensioned another domain name in the letter he had designed for me known as www.baffinstakeaway.co.uk.I/family are the owners of both businesses. The site www.baffinstakeaway.co.uk was designed just may be few days before the dispute, which I therefore haven't paid for unless he registers the domain name in my name. I have recieved many complaints from customers that they are not able to enter the website and I believe he has terminated the site. I hope the letter detailing the dispute will be sufficient for taking action against the respondend if however, you decide he is wrong in holding my website and hence losing potential business due to his unethical actions against me for no reasons what so ever. I have also included a letter which I received from a local website designer stating that www.gndhirestaurant.net is regitered in my name as their client. I got them to register that particular domain name to prove to Tiger Design that other companies would register the name in their clients name and also I could have something to fall back on.”

19. Mr. Karim’s letter states:
“I am writing to you regarding my website www.gandhirestaurant.co.uk which had been designed by Awal Mahammed of Tiga-D-Zyn unit 3, 10 Rodney Road, Portsmouth PO4 8SY. I have enclosed photocopies of original quotation bank statements, menu, businesscard and certificate of registration for the proof of my ownership of the restaurant.

My initial website was designed in year 2000 for 3yr period which can be seen from the original quotation which I still possess and I paid full in cash for the amount he suggested of £387.75 for him to set it up for me.

During the years I had told him to update my site and maintain it during the changes I am making e.g. prices and menu etc. accordingly but wouldn't maintain it at all. I then had suggested to him that I will get my website designed by another company and wanted to leave in good terms as he was a very close friend of mine. Only then 1 had found out and himself told me that I am not the owner of my website and told me he cannot allow anybody else to take over or design the site was he is the registered owner, which I found that to be very unethical.

At the beginning of the site being designed by him he never made me aware that I will not be the registered owner which in my opinion and many others in the same field as him said it is not a normal practise and regardless I had paid him in full for his design and implementation.

During the dispute he has also terminated the site, which has effected potential business I could have received. The site has been terminated since September 2002 and under offer since then. I was shocked to see that the site being on for sale due to the supposed breach of contract. I would like to say that there was no contract set up or involved in that particular business between us, it was purely on the relationship between friendship and trust.”

20. The Response states, so far as relevant:
“I did design and implement a new website called www.gandhirestaurant.co.uk, completed in Nov 2000 for the complainant. This was registered for 2 years (see document 1 - quotation) on 16-Sep-2000 and not 3 years as stated by Mr Karim. As Mr Karim was a friend of mine at the time, I agreed a minimal fee with him for the project. An initial payment of £200 was paid and the balance on completion. As the fee was so low, we agreed that there was to be no set time scale for completion and that any changes would be made free of charge, provided the details were given to me in electronic format. At times when Mr Karim did ask for me to update the site, I made every effort to do so, and changed the design a few times during the course of the two years (see document 2 - designs). He did not however at any time provide me with electronic formats to update the site with. I cannot do updates if I myself do not have the information.
…
Mr Karim states that it was wrong and unethical for me to be the domain registrant. It is however standard practice; I find for web designers to register domains in the name of the web design company or web designer. This is for easier domain management. This is clearly stated in the terms and conditions of www.tigerwebdesign.com (see document 3 - terms and conditions), which Mr Karim had a copy of and is available on the company website. Mr Karim states that he has had another domain, www.gandhirestaurant.net registered in his name by Portsmouth printing and publishing (PPP Ltd). This is also untrue as the registrant of that domain is not Mr Karim, but PPP Ltd (see document 4 - whois lookup). PPP Ltd, have provided a letter to this effect to Mr Karim. I have done exactly the same as PPP Ltd yet I am deemed to be unethical. …
…
Mr. Karim has breached the terms and conditions of www.tigerwebdesign.com. Mr Karim was contacted several times before the expiry of the domain by verbal, telephone and written (see document 7 - renew letter) communication to see if he wanted me to renew the domain and also discuss a redesign and update. Mr Karim agreed for me to renew the registration and we discussed a new commission (see document 8 – redesign quotation) for the redesign and update of the site to the value of £2700. Thus forming a new contract through verbal and written quote. We agreed that the project would be done in the more professional manner and the price reflected this. I did not offer the reduced fee this time, as I would be responsible for the full implementation and maintenance of the site.
I renewed the domain using my own monies to stop the domain being de-tagged, and I awaited payment of the 50% deposit to start the project as stated in the terms and conditions. Having contacted Mr Karim for the payment I was told that I would receive it and to begin the project. I did begin the project and began working on the new design and interactive menu and ordering system (see document 9 – menu). I then contacted Mr Karim as some time had elapsed and I had not received any payment. Still I received no payment. I then wrote (document 10 – payment letter) to Mr Karim and stated that the project would be suspended until I received the renewal and project fees, at which point I would carry on. I still received no payment. I wrote again asking for payment (see document 11 – final letter) and stating that if payment wasn’t made I would terminate the project and the domain shall be used by www.tigerwebdesign.com as it saw fit, including selling, transferring or surrendering the domain. This is stated in the terms and conditions. At this point I terminated the domain and advertised it, to recoup my losses.
I have had several project offers for the domain and I have now been commissioned by another restaurant owner to develop a site for them. The owner would not like to be named and does not want to be involved in this matter as it does not involve him. The owner also owns a restaurant called The Gandhi Restaurant.
Mr Karim states that the registration was an abusive registration, but I contest this as Mr Karim asked for me to renew the domain. Also Mr Karim failed to pay any fees due to me, and still due. I have not in any way tried to use the domain to pressure Mr Karim for monies that are not due to me.
…
Mr Karim’s right to use this domain has been lost, due to non-payment of fees, even though many attempts have been made to resolve this issue over many months due to our friendship. A much longer period than the standard 6-7 weeks that is stated in the terms and conditions.
…
It was in March 2003 Mr Karim approached another web design firm, PPP Ltd to design the website for him. This was 7 months after the renewal period of the domain. Still no payment was made to us and we had a new client in January 2003. Then this application has been made in November 2003, 15 months after the domain was renewed. The new client for the domain has paid his fee to use the domain, commissioned a new website and agreed terms with us. If Mr Karim wished another party to design his website for him. He was to pay the fees due to us for the work we completed. This is all explained in the terms and conditions. ”

21. Mr. Karim has submitted a lengthy reply, which has not been provided to me in electronic form. Suffice to say, he vehemently disputes the entirety of the Respondent’s case. Importantly, Mr. Karim disputes that he ever received a copy of tigerwebdesign.com’s terms and conditions, one of which states:
“2. Domain Name Registration
All domains registered for clients by tiger web design, are registered in the name of the company or associated parties. The company will be the registrant of all domain names registered by the company. Persons requiring registration of domain names to be in their name should take appropriate actions by themselves to do so. The company does not register domains in the name of the client. All domains registered by the company on behalf of the client are registered for a period of 2 years. Any other period of registration can be entered into provided the client advises in writing and pays the registration fees as required. when the renewal date is due, we will contact you to request payment of the relevant renewal fee. If we fail to receive the renewal fee within thirty (30) days of our making a request for the renewal fee, we will suspend your website for at least 14 days. If we do not receive payment within the suspension period we will terminate your contract with the company without further notice to you. All rights to the registered domain name will be with the company. The company reserves the right to do as required with the registered domain, including selling, transferring or surrendering the domain. Any monies owing to the company for other services will remain due to the company. During any period of suspension, we reserve the right not to point to any name servers, and you will be unable to use or transfer the Domain Name.”

22. The terms and conditions I have been provided with are dated 16th December 2002.

(6) Discussion and findings:
23. Abusive Registration: The Complainant must establish, on the balance of probabilities, that the Domain Name, in the hands of the Respondent, is an abusive registration. Abusive Registration is defined in the DRS Policy 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."

24. Clause 3 of the DRS Policy sets out a non-exhaustive list of factors to which I may have regard in determining whether the registration of the Domain Name is abusive in the hands of the Respondent. They include:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A 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;
B as a blocking registration against a name or mark in which the Complainant has Rights; or
C primarily for the purpose of unfairly disrupting the business of the Complainant;
(ii) 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…
(iii) In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
(iv) It is independently verified that the Respondent has given false contact details to us.”

25. The Rule 4 of the DRS Policy also provides guidance relating to potential defences:
(a) A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:
(i) Before being informed of the Complainant's dispute, the Respondent has:

(A) 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;

(B) been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;

(C) made legitimate non-commercial or fair use of the Domain Name; or
(ii) The Domain Name is generic or descriptive and the Respondent is making fair use of it.
(b) Fair use may include sites operated solely in tribute to or criticism of a person or business, provided that if:
(i) the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts Rights, without any addition; and
(ii) the Respondent is using or intends to use the Domain Name for the purposes of a tribute or criticism site without the Complainant's authorisation
then the burden will shift to the Respondent to show that the Domain Name is not an Abusive Registration.”

26. Mr. Karim does not refer to any of the provisions of the DRS Policy or Procedures in the material he has submitted. However, his principal complaint is, in essence that
(a) The Respondent agreed that he would have the domain name for 3 years
(b) The Respondent should have registered the domain name in Mr. Karim’s name and did not tell him that it would not be registered in his own name; Mr. Karim asserts that it is normal practice for web designers to register domain names in the names of their clients and that the Respondent has acted in contravention of this practice.
(c) The Respondent has acted “unethically” by refusing to transfer the domain name and by closing off the Complainant’s website before the 3 year period was over.
27. There are also a large number of issues raised concerning the arrangements for payment and provision of design and hosting services between the parties.   The Nominet procedures are not designed or intended to act as a mechanism for the resolution of this kind of commercial dispute. All that the DRS Policy requires is a determination as to whether or not the registration of a domain name is abusive in the hands of the Respondent, according to defined criteria. Accordingly, I will not deal with these aspects of the Complaint.
28. The Respondent states that:
(a) The initial period of registration was 2 years
(b) The domain name was registered in his name in accordance with his usual practice, and his terms and conditions
(c) Mr. Karim was given the opportunity to pay the renewal charges for the domain name but failed to do so.
(d) He renewed the domain name with his own money in order to prevent it being detagged. He now has another client with a similar name who wishes to use the domain name.
29. I do not accept that Mr. Karim was given a copy of the Respondent’s terms and conditions at the beginning of their relationship, although it seems likely from the later quotations provided by the Respondent that Mr. Karim was made aware of them (or at least that they existed) in about August/September 2002. Further, the terms and conditions which have been provided to me are dated 2002, and, as set out above, the Respondent’s business was trading under another name in 2000. I therefore accept Mr. Karim’s statement that he was not aware of any terms and conditions proposed by the Respondent in 2000.
30. However, if, as the Respondent asserts, the Complainant/Mr. Karim instructed him to undertake significant new work in August/September 2002, the Complainant/Mr. Karim would be bound by tigerwebdesign.com’s terms and conditions (including Clause 2 set out above) in respect of that work.
31. Mr. Karim disputes that he ever received either of the quotations (he asserts that they have been fabricated) or instructed the Respondent to carry out any further design work for the Gandhi Restaurant website, and asserts that he only agreed to pay £300 for the Baffins Takeaway work.   I do not accept this evidence; the Baffins Takeaway website is extensive, and would have cost much more than £300 to design and host, and I do not consider that the Respondent would have been prepared to carry out that work for £300.   The situation with regard to the Gandhi Restaurant site is less clear; it seems that only a small amount of work was done before the Respondent decided to stand down his effort due to non-payment.
32. I do not accept Mr. Karim’s assertion that it was unethical of the Respondent to register the domain name in his own name, or that he was in breach of a “normal practice” in so doing. It is perfectly reasonable for a web designer and host to register domain names for clients in their own names, many do so; indeed, the whois search conducted in respect of Mr. Karim’s new domain name shows that his new designer has also registered the new name in the name of the new design company.
33. Further, I do not accept that Mr. Karim was told that the registration period would be 3 years rather than 2. It is clear from the Tyga D-Zyn quotation that the period was to be 2 years and this is in accordance with the normal time period for renewal of registration. It also seems clear that when the time came for renewal, Mr. Karim failed to pay the renewal fee (£20) despite being requested to do so.
34. Whether or not the terms and conditions apply, it seems to me that a failure to pay renewal fees leaves the registrant with a stark choice, either to pay themselves or allow the registration to lapse. If the person who asserts entitlement to the domain name refuses to pay the renewal fees, or reimburse them within a reasonable time after they have been paid, it can hardly be said to be unfair or abusive of the registrant to renew the domain name using their own funds.
35. Whilst I accept that the Complainant has rights in the name “Gandhi Restaurant”, I do not consider that those rights are exclusive. There are a number of other legitimate businesses with the same or a similar name, and they would all have had the right to apply for the domain name if the registration had been allowed to lapse by non-payment of the renewal fees. In such circumstances, Mr. Karim and the Complainant would not have had any grounds for complaint.

Decision
36. In these circumstances:
(a) I do not consider that the Complainant has established and rights “Baffins Takeaway” which entitle it to seek relief under the DRS Policy and
(b) I do not consider that the registration of ganhirestaurant.co.uk is an abusive registration in the hands of the Respondent.
37. The Complaint is therefore dismissed and no action should be taken with regard to the registrations.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Gandhi Restaurant v Mahmmued [2002] DRS 1413 (4th February 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/1413.html Cite as: [2002] DRS 1413

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