MFI UK Ltd -v- Jones [2003] DRS 850 (1 May 2003)

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The Complaint was lodged with Nominet UK (“Nominet”) by e-mail on February 10, 2003 and a hard copy of the Complaint was received by Nominet the following day on February 11, 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on February 12, 2003, giving him 15 working days within which to lodge a Response. A Response was lodged with Nominet by e-mail on March 4.2003 and a hard copy of this response was received the following day on March 5, 2003. It was forwarded to the Complainant on the same day. A Reply to the Response was received from the Complainant by e-mail on March 17, 2003 and a hard copy was received on the same day. This was deemed to be in order as Nominet had amended the due date by 1 working day. A copy of this Reply was sent to the Respondent.

Nominet initiated its Informal Mediation procedure on March 17, 2003, but it would seem that an acceptable resolution through mediation was not achieved, for on April 22, 2003 the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet’s Dispute Resolution Service Policy (“the Policy”).

On April 23, 2003 the undersigned, Mr. David H Tatham (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an 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. He was subsequently selected by Nominet as the Expert for this case.

In this Decision, the two Complainants will be jointly referred to as “the Complainants” but where either needs to be referred to individually, then MFI UK Limited will be referred to as “the First Complainant” and MFI Furniture Group plc will be referred to as “the Second Complainant”.

The letter from Nominet appointing the Expert states that only the initial complaint has been checked for validity and that it is up to the Expert to decide on how much weight should be given to any non-compliant or incomplete submissions. Nominet’s published Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”) refers only to a Complaint (paragraph 3), a response to which must be filed within 15 working days (paragraph 5), and a reply by the Complainant which must be filed within 5 working days (paragraph 6).

In this case, and allowing for a 1 day extension which was agreed to by Nominet, all the documents were filed within the time allowed. The Expert has decided that he will take all the submitted documents into account in this Decision.

The First Complainant is a subsidiary of the Second Complainant. It claims to be the leading manufacturer and retailer of furniture in the UK with over 200 retail outlets under the name “MFI” in locations throughout the country. The Second Complainant has several registrations of “MFI” as a trade mark of which brief details were annexed to the Complaint. It has a website at mfi.co.uk.

The First Complainant’s full name is MFI UK Limited and this name is used on stationery such as receipts, order forms, notepaper, contracts, examples of which were annexed to the Complaint

The Respondent was, for a period of approximately 10 months, employed by the First Complainant as a security officer from June 2001 to April 2002, when his employment was terminated. He complains that he was bullied by his Supervisor and treated unfairly by the Complainants. According to a letter from the Mersey Care Health he was, on February 27, 2003, suffering from agoraphobia with panic disorder; scared to go out of his house; and on psychotropic medicine.

The Complainants contend that the disputed domain names are, in essence, identical to the First Complainant’s full name and similar both to its name and to the Second Complainant’s trade mark registrations of “MFI”.

The Complainants accept that the Respondent was previously employed by the First Complainant as a security officer but state that his employment was terminated on or around April 2002. They contend that the Respondent registered one of the disputed Domain Names (<mfiuk.co.uk>), and also the domain name <mfiuk.com>, in January 2002 and the other in May 2002. The WHOIS records of the disputed Domain Names were contained in an annex to the Complaint.

The Complainants contend that confusion has resulted from the Respondent’s registration of the disputed domain names as e-mails intended for the Complainants have been sent to the Respondent. On July 31, 2002, the First Complainant’s managing director was informed by email that misdirected emails would not be forwarded, but that the domain names in dispute were for sale. The email said “if you would like to offer him a sensible offer, you will be able to get your mail, he is also willing to hand over the websites content as part of the purchase agreement.”

The Respondent established a website at the disputed Domain Names which was identical in each case. It purports to be of an entity called “Manufacturers Fighting Injustice UK” and it is currently unavailable. This is because after a thorough investigation by the Complainants regarding the allegations on the site, its Human Resource Lawyers, DLA Solicitors wrote to the Respondent’s ISPs and as a result the ISPs withdrew the sites. Copies of these letters were attached to the Complaint as an annex.

A partial copy of the website that had appeared at both of the disputed Domain Names was also annexed. The website alleges that the Respondent was “bullied and sacked by management after he tried to whistle blow on his incompetent supervisor”. After a thorough investigation between September 2002 and January 2003, the Complainants satisfied themselves that there was no substance to these allegations.

The Complainant instructed Mr. Michael Coyle of Lawdit Solicitors to seek the transfer of the disputed domain names and he e-mailed the Respondent on 5 August 2002. Copies of the ensuing correspondence were annexed to the Complaint. They were replied to by a Ms Liser Jones on behalf of the Respondent. At Mr Coyle’s suggestion, she telephoned him on 6 August 2002 and Mr Coyle’s attendance note of the conversation was contained in an annex, together with a statement signed by 2 other employees of Lawdit who listened to the conversation and who confirmed its accuracy. In this conversation, Mr Coyle offered £500 for the three domain names plus the costs of acquiring a suitable alternative domain name at which the Respondent could continue his publicity campaign. Mr Coyle suggested changing the disputed domain names to <manufacturers fightinginjustice.co.uk> but according to the attendance note, Ms Jones rejected this outright and said that the Complainants should pay the Respondent a six-figure sum especially as her client has suffered to such an extent that he would never work again. Following this initial contact the Complainants instructed their lawyers to continue the negotiations pending a full enquiry into the whole matter.

Lawdit Solicitors was unable to establish any further contact,but the Complainants did receive a further communication, in the form of an e-mail dated February 3, 2003, from what it believes to be the Respondent containing various threats, a copy of which was annexed to the Complaint.

The Complainants contend that, since the disputed domain names are identical to the Complainant’s name, according to Clause 4(b) of the Policy, the burden of proof lies on the Respondent to show that they are not abusive registrations. However, even without this presumption, the Complainant contends that it is clear that the disputed domain names are abusive registrations in the hands of the Respondent. They are unfairly detrimental to the Complainant’s rights in that they are causing confusion and misdirection of emails resulting in disruption to the Complainant’s business. Furthermore, the Respondent is using the said domains to take unfair advantage of the Complainant in the form of payment of a substantial sum of money. In particular, various factors expressly identified in the Policy as indicative of abusive registration are present:
(a) The circumstances indicate that the Respondent registered the domain names primarily for the purpose of selling them to the Complainant for valuable consideration in excess of his out-of-pocket costs of acquiring them (3(a)(i)(A)) or of unfairly disrupting the Complainant’s business (3(a)(i)(C)).
(b) The circumstances indicate that the Respondent is using the domain names in a way which has confused people or businesses into believing that they are operated by the Complainant (3(a)(ii)).
(c) The Respondent has engaged in a pattern of making abusive registrations, registering three domain names incorporating the name of his employer while he was still employed (3(a)(iii)).

The Respondent’s Response, as well as replying to the Complaint, contains a number of statements and allegations by Mr. Jones relating to his dispute over the manner in which he was dismissed and treated by the Complainants. Only what is relevant to this dispute is contained in the following summary.

The Respondent contends that the Complaint has been submitted in bad faith and is just another incident of bullying against the Respondent.

The Complainants cannot claim the sole right to an abbreviation MFI, especially on the internet where most addresses and/or titles are abbreviated. Annexed to the Response were examples of many different online identities that refer to themselves as ‘MFI’.

The Complainant’s full name is an abbreviation of Mullard Furniture Industries which is no longer trading, and the Complainants own a number of domain names not all of which are used, and a list of these was annexed to the Response.

The Complainants allege that they use MFI UK but they only annexed a single example of this. They also claim that MFI UK & MFIUK are their trade marks yet there is no ™ symbol on any of their material. The Respondent challenges the fact that the Complainants’ claim to own the name MFI when so many ‘identities’ legally refer to themselves as ‘MFI’.

Although the Respondent worked for the First Complainant, neither MFI or MFI UK is mentioned in his contract of employment, a copy of which was annexed to the Response.

The Respondent contends that at the time of purchasing the domain names, he was being psychologically & mentally bullied by his Supervisor and that he made the First Complainant’s Human Resources Manager & Employee Relations Manager aware of what he intended to do with the website before it was launched. He contends that they told him to get on with it.

The demand by the Complainants’ solicitors to the Respondent’s ISP that it remove the website because it displayed alleged defamatory content, was made just days before this Complaint was submitted and the Respondent contends that this was done in order to stop Nominet from seeing the true nature of the Respondent’s website. In fact the websites contained the Respondent’s complaints that he was unfairly treated but could not sue the Complainants because he didn’t have 12 months consecutive employment, as well as documentation to support the complaint.

The Respondent points out that amongst the correspondence relating to the removal of the website is another letter from the Complainants’ solicitors regarding the HYSTC website, but that this website has nothing at all to do with the Respondent. It is run by ISTC Union Officials who are fighting their own campaign against the Complainants.

The Respondent’s website is hosted by The Care Bar, which is a support group for Care Leavers, and who took control of any e-mails sent to the disputed domains because the Respondent was on psychotropic medication. In connection with the e-mails intended for the Complainants but misdirected to the Respondent, the Respondent contends that the volunteer on duty on the day in question was not acting on the Respondent’s behalf and should never have written the e-mail referred to by the Complainants in which the offer to sell the disputed domain names was made. The Care Bar took appropriate action on realisation of what had happened and apparently put in place new procedures to prevent this situation from re-occurring. The Respondent alleges that there have been roughly 18 misdirected e-mails, of which only 4 related to the Complainant’s business. The rest were personal e-mails intended for the Complainant’s employees. All of the e-mails were returned to the senders with ‘misdirected’ in the subject line & then deleted in accordance with proper e-mail policy. The 4 e-mails that concerned the Complainant’s business were not only returned to the sender, but also forwarded on to the intended recipient, and carbon copied to the Complainant’s CEO as a gesture of goodwill. They were then deleted on 09/07/02, 31/07/02, 17/11/02, 15/12/02 respectively. The Respondent contends that the e-mails that were immediately forwarded on could not have caused any disruption, damage or confusion to the Complainants’ business.

The Respondent contends that at no time have ‘substantial amounts of money’ been demanded and that during the conversation between Mr. Coyle and the Respondent’s representative he was told again that the domain names were not for sale as the campaign was not over until the Respondent’s name was cleared of any wrong doing so that he could move on without fear of recriminations. The Respondent was not interested in selling his domains and has repeatedly said so. He himself has never asked the Complainants to buy the disputed domain names, and maintains that it was their authorised representative who was harassing him to sell. Mr. Coyle suggested using the alternative name <manufacturersfightinginjusticeuk.co.uk, but the Respondent contends that this is very confusing to type as it is 32 digits long which is why it has been abbreviated to the two domain names in dispute.

The Respondent’s representative states that she cannot confirm that the ‘final’ e-mail referred to by the Complainants was from Mr. Raymond Jones as she alleges that he cannot remember what he did 5 minutes ago while he is on psychotropic medication and under a psychologist.

The Respondent contends that his website was founded in April 2002 as a direct result of his experience of dealing with workplace bullying. He decided to share his knowledge with other UK workers and identified the Internet as the most cost effective medium. He gave it the name Manufacturers Fighting Injustice UK. It is not a critisism site, it is a campaigning site that uses the Respondent’s case as an example of how loopholes can be breached by large companies. The petition published on the site has 2,000 subscribers. The site also has a database of employment advice, it offers a reporting service for workers who fear for their safety in the workplace, and a shop to help fund the running costs.

The Respondent contends that he does not wish to damage the Complainants’ business in any way and that he has good friends who still work for them. He contends that the Complaint is just an excuse to delay his “campaign” against the Complainants in particular and the current employment laws in general. He currently receives e-mails about Health & Safety breaches under the PIDA through the disputed domain names, and that if the Complainants’ were given the disputed domain names, they would gain access to private and confidential information which would have a detrimental affect on employees who are working in fear of their safety. It would be impossible to contact all of the people who have picked up a leaflet directing them to the sites at the disputed Domain Names for further information, four thousand of which have so far been handed out

The Respondent concludes that this Complaint has been submitted in bad faith and as such, should be dismissed.

The Complainant filed a Reply to the Response, of which the following are the salient points –

· With regard to the allegations in the Response that Mr. Jones did not work for the First Complainant, it is stated that the Complainants are well-known throughout the UK as “MFI” and although Mr. Raymond Jones was originally employed by Hygena Limited, an annex to the Reply proves that this company changed its name to MFI UK Limited in June 2001. This is the main UK trading company in the Second Complainant’s group and in 2001 it had a turnover of nearly £600 million. The Complainants maintain that it is clear from the transcript of an interview with the Respondent that was annexed to the Response that he himself considered that he worked for MFI.
· Further examples of stationery showing use of the name MFI UK were annexed to the Reply.
· The name Manufacturers Fighting Injustice was contrived to fit the disputed Domain Names and it is not even appropriate for complaints, however absurd they might be, against manufacturers.
· One of the disputed Domain Names was registered on January 11, 2002 when the Respondent, Mr. Raymond Jones, was employed by the First Defendant and the other was registered on May 14, 2002 after he had been dismissed. It is inconceivable that when taking out these registrations, Mr. Jones did not know of the Complainants. As for this dismissal, Mr. Jones’ complaints were fully investigated and the conclusion of this investigation was that no further action was warranted. The Complainants deny having actual knowledge of the website.
· As for the allegation that there is no connection between the Respondent and HYSTC, there was annexed to the Reply extracts from a website at www.hystc.com which, the Complainants contend, link it to Mr. Raymond Jones.
· Concerning the allegation that the Respondents did not approve of the original e-mail to the Complainants in which the disputed Domain names were offered for sale, the Complainants point out that in a subsequent e-mail from the Respondent’s representative she refers to the e-mail and to the sender of it as “her colleague” and the Complainants infer from this that if the original e-mail had not been approved then this would have been said at that time, not subsequently when the Response came to be filed.

The Reply was filed on behalf of the Complainants by their solicitor Mr. Coyle. In a final point he outlines in some detail how he approached Mr. Jones’ representative; how he attempted to avoid any further aggravation of the situation or unpleasantness by adopting an informal and conciliatory approach and by offering £500 for the disputed Domain Names. The resulting telephone conversation was, according to Mr. Coyle as well as two of his employees, lengthy and his conciliatory attitude was in vain. However he confirms his belief that during the conversation, the Respondent’s representative did seek a six-figure sum.

Mr. Coyle also alleges that the Respondents attempted on February 24, 2003 to disrupt his business by referring to MFI UK in an on-line questionnaire relating to domain name searches which Mr. Coyle’s firm posts on its website.

According to paragraph 2 of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that –

i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and
ii the disputed domain name, in the hands of the Respondent is an Abusive
Registration.

The Complainant annexed only details of the numbers and the classes of 6 trade marks that consisted of or contained the letters MFI which it said were in the name of the Second Complainant. It did not annex copies of the registration or renewal certificates of any of these marks, but the Expert has checked the records of the UK Patent Office and the Community Trade mark Office (the OHIM) in Alicante, and has found that the earliest trade mark, for the letters MFI alone, was taken out in the UK in 1978 for goods in class 20. There is another UK registration in Class 20 dating from 1980 for the letters MFI in a stylised form, and 2 UK registrations of MFI Homeworks in a logo dated 1995 in a variety of classes. There is also a Community trade mark(“CTM”) registration of MFI HOMEWORKS dating from 1996 in Class 20, and a Community trade mark application for MFI in ten different Classes which was filed in 2000 and which has been opposed. Apart from the pending CTM application, all of these marks are still in force.

The name of the First Complainant is MFI UK Limited.

It is clear from this that, between them, the Complainants do have rights in the names MFI and MFI UK whether as trade marks, as company names, or as domain names, all of which are rights that are enforceable under English law.

It is customary in domain name disputes, when making a comparison for similarity, to disregard both the suffix ‘.co.uk’, because it has no relevant significance and because it is generic, as well as an insignificant piece of punctuation such as a hyphen. On this basis the Expert is no doubt that the names in which the Complainants have rights are either identical or very similar to both of the disputed domain names, and he is satisfied that the Complainant has established the first leg of paragraph 2 of the Policy.

The Respondent contends that the letters MFI are used by others and so the Complainants cannot claim the sole right to this abbreviation. However that is not the point. The Complainants have established that they have rights in the letters MFI which are either statutory (through their trade mark registrations and application) or at Common Law (through their use). This is sufficient for the Policy. However to clarify the position, the Complainants’ trade mark and Common Law rights extend solely to the goods or services for which the letters MFI are registered or have been used, as well as to similar goods or services. In theory, there is nothing to stop a third party from using the letters MFI in the UK or the European Union on other goods or services that are neither the same nor confusingly similar to those for which MFI and MFI HOMEWORKS are registered.

The Respondents also allege that the letters MFI cannot be a trade mark because in the Complainants’ literature they are not followed by the ™ symbol. However, there is no obligation on any trade mark owner to indicate that his mark is either a trade mark (™) or a registered trade mark (® ). Thus the absence of any symbol has no effect on the Complainants’ rights.

An ‘abusive registration’ is defined in paragraph 1 of the Policy as being “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.”

In paragraph 3(a)(i) of the Policy there is the following non-exhaustive list of factors which may be evidence of an Abusive Registration:

“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;
C. primarily for the purpose of unfairly disrupting the business of the Complainant.”

Clearly B does not apply in this case, but both A and C would appear to be relevant and indeed both have been claimed by the Complainants. However before considering them, or other relevant parts of the Policy, it is necessary to consider the moment at which the website that was available at the disputed Domain names needs to be assessed. Should all of the Respondent’s use be looked at or only his use at the date of the Complaint? Currently the site at <mfi-uk.co.uk> is unavailable, but <mfiuk.co.uk> resolves to the following message –

Notice: this domain name is currently subject to a series of complaints from the mfi Furniture Group Ltd which, could end in the domain name being unfairly taken from Ray.

We do not know what is to happen at this moment but as a precautionary measure, we are asking that everyone please pass on a new contact e-mail address for the Manufacturers Fighting Injustice UK campaign to their friends & colleagues which is justice4 ray@public-court.co.uk

You can still send us your concerns about workplace bullying or breaches in your health & safety in the workplace & we will continue to report them to the relevant Government Agencies for immediate investigation.

We will be launching a brand new web site in the near future which we hope will catch the Governments attention & close the loopholes that are allowing modern day slavery & workplace bullying to thrive in the UK.

We’ll send out an update via our newsletter once we have more news. If you’re not already on our mailing list, click here to join.

We’d like to take this opportunity to thank everyone who has supported Ray through this difficult time, it is very much appreciated.

The Respondent alleges that both sites previously contained 45 pages of text and that although these sites were removed as the result of action taken on behalf of the Complainants because of their allegedly defamatory contents, nevertheless the sites contained only one unfinished sentence that could be described as being defamatory, and that there was nothing defamatory on them, and that they were removed in order to stop Nominet from seeing the true nature of the Respondent’s website. Had this been the case, there was nothing to prevent the Respondent from submitting a copy of all 45 pages as part of its Response. In fact, it was the Complainants themselves who attached copies of 8 pages from the website. The alleged defamation is no part of this dispute.

In the Complaint and the Response, both parties refer freely to the contents of the two websites before they were shut down and, it should be noted, in the present tense. Furthermore, the wording of the second leg of the definition of an abusive Registration (“has been used in a manner which took unfair advantage of …”) entitles the Expert to look at all the use of a domain name from the date that that use commenced up to the present. Consequently the Expert will consider the two sites (which both parties agree were always identical) both before and after they were shut down.

Paragraph 4 of the Policy contains a number of examples of how a Respondent might show that his Domain Name is not an Abusive Registration. Paragraph 4(a)(i) reads: “Before being informed of the Complainant’s dispute, the Respondent has: …C made legitimate non-commercial or fair use of the Domain name; and paragraph 4(a)(ii) reads: “The Domain Name is generic or descriptive and the Respondent is making fair use of it”.

According to paragraph 4(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 purpose of a tribute or criticism site without the Complainant’s authorisation, then the burden of proof will shift to the Respondent to show that the Domain Name is not an Abusive Registration.”

In this case, the disputed Domain Names are not exactly identical to the names in which the Complainant has rights, but it would be nit-picking not to accept that they are –

Complainants’ Rights                       Domain Names
  MFI UK                                                  mfiuk
                                                              mfi-uk

In connection with the second part of paragraph 4(b), the Respondent maintains that the disputed Domain names do not resolve to a criticism site but to a campaigning site. This is a moot point. It was said on page 14 of the Decision of the Appeal Panel in Case DRS 00389 (Hanna-Barbera Productions, Inc v. Graeme Hay) in connection with the Domain Name <scoobydoo.co.uk>: “the Panel is unanimous in the view that the purpose of paragraph 4.b is to dissuade people from taking the name of another without adornment and without permission and with a view to making direct reference to that person whether for tribute or criticism. The clear meaning of the Rule is that such a registration is prima facie abusive, unless the Respondent can show otherwise.” .

The text that is currently displayed at the disputed Domain Name, as set out above, would seem to confirm the Respondent’s claim that it is a Campaigning site but only if one disregards the pejorative statement on it “ … unfairly taken from Ray”. Without seeing the whole of the original website, it is impossible for the Expert to say with any certainty whether it was, in toto, devoted to campaigning for injustice to workers in general, or to criticizing the Complainants in particular for their treatment of the Respondent, However two of the pages that he has seen are devoted exclusively to criticism. One of them is the Home Page which contains a history of Mr. Raymond Jones’ objections concerning the behaviour of the Complainants towards himself written in fairly colourful terms. Then, out of 8 items on the ‘Site Menu’, 3 specifically refer to ‘MFI’. 2 other items on the Home Page are headed ‘MFI Employees’ and ‘MFI Customers’ and another ‘What’s been on Watchdog’ has the subtitle ‘MFI Home Delivery has been featured on BBC’s Watchdog’.

The pages of the website seen by the Expert demonstrate a considerable degree of polish and a good knowledge of how to construct a website. It is admitted in the Response that it was Mr. Jones who founded the website and gave it its name, and not The Care Bar who now run it. Given Mr. Jones’ medical condition, this high level of sophistication seems surprising.

The Expert tends to the view that although the site may not now be a criticism site, in its original form a major part of it probably was. If so, then the burden would fall on the Respondent to prove that the disputed Domain Names are not Abusive Registrations. To do so, the only relevant factor in the Policy would appear to be paragraph 4(a)(i) C which is quoted above – legitimate non-commercial or fair use. The site contains several pages of illustrations of items such as T-shirts, mugs or teddy bears all carrying the slogan “Manufacturers Fighting Injustice in the UK” all of which can be purchased (curiously they are priced in $). It would seem to follow from this that the site is not a non-commercial one. As for it being ‘fair’, but the site refers to “Ray Jones who worked for MFI Furniture Limited (sic). Ray was bullied and sacked by management after he tried to whistle blow on his incompetent supervisor” and “MFI Furniture named & shamed as the UK’s Worst Employer” and “Listen to a tape recording of Ray being bullied in work”. None of these indicate that the Complainants’ side of the case is being presented, so they are hardly fair comment in the normal sense of the word, rather than as used in the Policy.

Then there is the question of the name Manufacturers Fighting Injustice UK. The Respondent has not explained how this name came to be chosen, but it seems clear that, having registered the disputed Domain names, he gave some thought to finding a name that fitted these letters, and came up with the present one. As the Complainant points out a rather more appropriate name would have been something like “Employees Fighting Injustice UK” but this does not fit the letters. The Expert agrees that the alternative – employeesfightinginjusticeuk.co.uk – which was suggested by the Complainants’ solicitor, being 32 digits, is somewhat lengthy but at the same time, the Respondent appears to have had little trouble in coming up with a more appropriate name - <justice4ray@public-court.co.uk> – that appears on the current site and which, it should be noted, is only 4 digits shorter than the suggestion.

Paragraph 4 is not exhaustive. There could be other facts evidencing that the disputed Domain Names are not abusive. As has been said, the Respondent has filed a great deal of evidence relating to Mr. Ray Jones’ allegedly unfair dismissal and the campaign to change the current employment laws – including a 38 page “Statement” which appears to be a transcript of one or more interviews with Mr. Jones, but there is nothing to say who were all the parties participating in the interviews nor when and how they were made. As has also been said, this has nothing to do with the present dispute, the sole object of which is to determine whether or not the disputed Domain Names are or are not abusive. The Respondent has tried to link the two disputes, by claiming that the domain name dispute has been brought in order to “delay the Respondent’s campaign because he is ‘causing a fuss’ & being listened to”. However no evidence is brought to support this allegation, although it could be inferred that Mr. Jones, even though under strong medication, and scared to leave his house because of his agoraphobia and panic disorder, is giving the Human Resources Department of the Complainants some additional work.

However the fact is he registered the first of the disputed Domain Names when he was still employed by the Complainants and the second shortly thereafter. No responsible employer could countenance this. There are perfectly legitimate ways for an aggrieved employee to complain about an allegedly unscrupulous employer without infringing his trade mark rights or from passing off. Indeed, by adopting the new name justice4ray@public-court.co.uk for one of the disputed domain name sites, the Respondent and his advisers appear to have done just that.

The Expert therefore concludes that if there was a burden upon the Respondent to prove that the disputed Domain Names are not Abusive Registrations – and there must be some doubt about this – he has not discharged it.

The Complainants have made four further charges against the Respondent which now fall to be dealt with, namely:

that the Respondent has tried to sell the disputed Domain names to the Complainant for more than his out-of-pocket expenses;
There is a dispute between the parties as to whether or not the Respondent offered to sell the disputed Domain Names to the Complainants. There can be no doubt that an offer to sell was contained in the original e-mail dated July 31, 2002 to the Managing Director of the First Complainant as can be seen from its full text:
“You might be interested to know that Mr Jones has stated that he would like to sell all of his Manufacturers Fighting injustice UK domains www.mfiuk.co.uk, www.mfiuk.com & www.mfi-uk.co.uk – if you would like to offer him a sensible offer, you will be able to get your mail, he is also willing to hand over the websites content as part of the purchase agreement.”

In the Response, it is stated that this was not authorised and that the offer was made by someone who was not acting on the Respondent’s behalf, who was only a volunteer, who had no right to make the offer and indeed who no longer works for The Care Bar. However it is curious that, as the Complainants point out, this disownment of the author of the e-mail comes only in the Response, i.e. after he had been acknowledged as a colleague, and after the charge of attempting to sell has been made, possibly when the Respondent had had a chance to read the Policy and realise the implications of the offer, rather than in the original e-mail correspondence with the Complainants’ solicitor. In the event, the Expert has concluded that the Respondent’s representative’s explanation is implausible and that a genuine offer to sell the disputed Domain names to the Complainants was made in July 2002.

The Respondent’s representative also denies ever having made the offer of a ‘six figure sum’ which, according to the Complainants’ solicitors she did. Both the Respondent’s representative and Mr. Coyle agreed to the telephone conversation between them being recorded so presumably the truth or otherwise of this could be established by listening to the recording. Apart from this item, the accuracy of the transcript which was verified by two witnesses, has not been challenged. Perhaps there is some right on both sides. According to the transcript (page 1, final paragraph) “She rejected the domain and the £500 (possibly saying it was laughable) and stated that her client had a six-figure sum in mind, as he would never work again.” It is possible that Mr. Coyle understood this to be the price the Respondent’s representative was demanding for the disputed Domain names, while the Respondent’s representative had in mind the sum of money which she hoped her client would receive from the Complainants in return for his wrongful dismissal or whatever other charge she intended to bring against them on his behalf, especially as the phrase ‘six-figure sum’ appears earlier in the conversation when the Respondent’s representative was describing her clients’ grievances. However, given the context when this occurs again, i.e. immediately after the rejection of £500, the Expert has concluded that this was indeed what the Respondent was hoping to receive for the disputed Domain Names.

The Respondent’s representative claims that she was harassed by Mr. Coyle, firstly into telephoning him and secondly regarding the selling of the domain names when she had repeatedly said they were not for sale. The Expert can see no evidence of harassment. Indeed it would seem from the transcript that the Respondent’s representative welcomed the opportunity to air her client’s grievances, and the transcript makes no mention of her repeating that the Domain Names were not for sale.

that they were registered in order to disrupt the Complainants’ business;
There is very little evidence to support this charge. Certainly the disputed Domain Names are very close to the name of the Complainants’ own website on which it advertises the whereabouts of its many stores and its extensive range of products. However, as the Complainants acknowledge, it is known throughout the UK as, simply, ‘MFI’ and anyone wishing to look for the Complainants on the web would be most likely to type in <mfi.co.uk> rather than either of the two disputed Domain Names <mfiuk.co.uk> or <mfi-uk.co.uk>.

that they are being used in a way that has confused people into believing that they are operated by the Complainant;
The evidence for this is the misdirected e-mails. The disputed Domain Names are not e-mail addresses, and no one has produced evidence to show how the e-mails were received. However according to the Respondent, initially he went to some lengths not only to inform the sender of any misdirected e-mail that it had been misdirected, but also to forward it to the Complainants. This stopped I July 2002 when the Complainants were told the practice would be discontinued unless they made an offer for the disputed Domain Names.

The Expert cannot believe that anyone visiting the site, either before it was closed down or now that could be under the impression that it is operated by, or has anything to do with, the Complainants.

that the Respondent has engaged in a pattern of making abusive registrations.
The Respondent registered the two disputed Domain names, as well as the domain name <mfiuk.com>, within a few weeks of each other. At a pinch, perhaps 3 registrations could be described as creating a pattern, but given the Respondent’s circumstances and in the absence of any further evidence, the Expert has concluded that this charge is not proved.

The Expert consequently finds the Complaint as a whole has been proved, but for the sake of completeness, will now deal with several other outstanding points.

The Respondent alleges bad faith on the part of the Complainants, but produce no evidence or proof thereof. The Complainants have attempted to separate the Domain Name dispute from the Respondent’s other allegations against them, but whatever the rights and wrongs of that dispute, in the opinion of the Expert the Complainants have acted in this dispute with propriety and there has been no bad faith.

It is said by the Respondent that when Mr. Raymond Jones registered the disputed Domain Names he informed his Managers of what he intended to do and they allegedly told him to proceed. The Complainants refute this, but in doing so use an interesting form of words. It is said in the Reply “In relation to the Complainants having actual knowledge of the website this allegation is denied”. This is neither a full-blooded denial on behalf of the individuals who were said to have been consulted by the Respondent, nor does it refer to the Domain names, but to the website. It certainly seems improbable that the individuals identified by Mr. Jones would have approved of his action, but in the event, as the Complaint is proved, nothing hangs on this allegation.

The Further Communication

The Complainants refer to a further communication from someone whom it assumes to be the Respondent. This cannot be either confirmed or denied by the Respondent’s representative on behalf of Mr. Jones. A copy of the e-mail was attached to the Complaint. It is signed “Billy Bully” and is addressed to David Pocknell at MFI. It certainly contains a number of threats but as its true author cannot be established with any certainty, it adds nothing to the Complaint or the Response and the Expert will not take it into account.

HYSTC
There were annexed to the Complaint, copies of a number of letters on behalf of the Complainants from a firm of solicitors called DLA to various Service providers complaining that some of the sites they hosted contained defamatory allegations. As referred to above, one of these letters resulted in the closure of the websites at the disputed Domain Names. However the letters also refer to the websites at www.carebar.co.uk and www.hystc.com. The Respondent makes no reference to the first of these but, in connection with the second states as follows: “The Complainants have submitted another letter from DLA regarding the HYSTC website. This website has nothing at all to do with the Respondent it is run by ISTC Union Officials who were fighting their own campaign against the Complainants.” In their reply, the Complainants filed what they term “Evidence linking the Respondent with Hystic.com”. Neither party identified what the initials HYSTC or ISTC stand for, and whilst there is a great deal about Mr. Raymond Jones in the material submitted with the Complainants’ Reply, none of it appears to have anything to do with this Domain name dispute.

Detrimental to give the Domain names to the Complainant
The Respondent fears that if this dispute is decided in favour of the Complainants, they would gain access to private & confidential information which would have a detrimental affect (sic) on employees who are working in fear of their safety.” This is curious, as it was the Respondent who made the offer to transfer the contents of the websites in the original e-mail to the First Complainant’s managing director on July 31, 2002. However so far as the Expert is aware, this fear is completely groundless as the Respondents would have the opportunity of clearing the site before any transfer, and the Complainants – if the Complaint succeeds – will possess only the disputed Domain Names themselves.

Publication of the Decision

The Respondent expresses some dismay that only the Complainants’ case will be published on Nominet’s website, but in fact it is only this Decision, in which the Expert has attempted to set out as fairly as possible the relevant allegations and contentions of both parties, that will be available for public inspection.

In the reply, the Complainants’ solicitor, Mr. Coyle, alleges that the Respondent made an attempt to disrupt his business by referring to MFI UK in an on-line questionnaire relating to domain name searches which Mr. Coyle’s firm posts on its website. Again, this is something which can be neither proved not disproved and the Expert makes no decision thereon.

In conclusion, the Expert finds that the Complainant has Rights in the names ‘MFI’ and ‘MFI UK’ and that these names are identical or similar to the contested domain names.

The Expert further finds that the contested domain names are Abusive Registrations in the hands of the Respondent.

The Expert therefore directs that the contested domain names <mfiuk.co.uk> and <mfi-uk.co.uk> be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> MFI UK Ltd -v- Jones [2003] DRS 850 (1 May 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/850.html Cite as: [2003] DRS 850

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