Tullis Russell Hot Press Ltd -v- Pattishall Computer Maintenance Ltd [2003] DRS 984 (29 July 2003)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

The Complaint was received by Nominet by email on 2 May 2003 and in hard copy on 6 May 2003. The Complaint was forwarded to the Respondent by post and email on 8 May 2003. A Response from the Respondent was received by Nominet on 30 May 2003 and forwarded to the Complainant on 5 June 2003. A Reply by the Complainant was received by Nominet on 16 June 2003. An attempt to resolve the dispute by mediation was unsuccessful.

Nominet notified the parties on 9 July 2003 that it would appoint an Expert to determine the dispute in accordance with the Dispute Resolution Service Policy (“the Policy”) on receipt from the Complainant of the applicable fee in accordance with §5d of the Dispute Resolution Service Procedure (“the Procedure”). The fee was received on 15 July 2003 and Jonathan Turner (“the Expert”) was appointed to determine the dispute on 22 July 2003. The Expert has confirmed that he is independent of the parties and knows of no facts or circumstances which might call into question his independence in the eyes of the parties.

It is common ground that the Respondent was engaged by the Complainant to provide computer services; that the Respondent registered the Domain Name on the instructions and for the use of the Complainant; that the Respondent invoiced the Complainant £100 in respect of this registration; that this invoice was paid by the Complainant; and that a dispute has now arisen between the parties regarding the computer services supplied by the Respondent to the Complainant.

The Complainant contends that it paid the Respondent to register the Domain Name on the Complainant’s behalf and that the Respondent has now threatened to prevent further use of the Domain Name by the Complainant. The Complainant states that it is part of a group which uses the name “Tullis Russell”. It has also submitted a copy of its notepaper bearing a logo incorporating the name “Tullis Russell Hot Press”, its company name “Tullis Russell Hot Press Limited”, an email address hotpress@trghotpress.co.uk and a web address www.trghotpress.co.uk. The Complainant confirms that the Domain Name is identical or similar to a name or mark in which it has rights and is an abusive registration in the hands of the Respondent, and seeks transfer of the Domain Name to itself.

The Respondent contends that it offered the Complainant two options in respect of the Domain Name: the first being for the Respondent to register, run and maintain the Domain Name; and the second being for the Complainant to purchase the Domain Name outright and deal directly with Nominet. According to the Respondent, the Complainant preferred the former option and paid the lower fee of £100 accordingly. The Respondent contends that the Complaint is unfair, since the Complainant did not choose the option of outright purchase and is not paying for continued services by the Respondent.

The Complainant’s Reply denies that it was offered two options in respect of the Domain Name as claimed by the Respondent. The Complainant states that it believed that the Domain Name had been registered in its name until it found out recently that it was in the name of the Respondent.

To succeed in this Complaint, the Complainant has to prove on the balance of probabilities: first, that it has rights in respect of a name or mark identical or similar to the Domain Name; and, secondly, that in the hands of the Respondent the Domain Name is an Abusive Registration as defined in §1 of the Policy.

In accordance with §16 of the Procedure, the Expert has to decide the Complaint on the basis of the parties’ submissions, the Policy and the Procedure. It is not proper for the Expert to supplement the parties’ submissions by his own investigations or guesses.

The Complainant’s evidence that it meets the first requirement is exiguous. Nevertheless, it seems clear that the Complainant trades under the name “Tullis Russell Hot Press” and the Expert is satisfied on the balance of probabilities that the Complainant has rights in this name at common law by virtue of its use as a trading name. The Complainant also has rights under the Companies Act in its company name, “Tullis Russell Hot Press Limited”.

The Domain Name is clearly not identical to the Complainant’s company or trading name; nor is it merely an abbreviation, given the added “g”. However, in the context of the Policy, the purpose of the first requirement appears to be to ensure that the Complainant has a sufficient interest to complain about the registration of the Domain Name; whether the registration is damaging to the Complainant’s rights falls to be considered under the second requirement. In this context, the first requirement should be regarded as setting a relatively low threshold test. Taking this into account, the Expert concludes that the Domain Name is sufficiently similar to the Complainant’s trading and company names to meet the first requirement of the Policy.

In addition, the Complainant’s notepaper and the Respondent’s invoices indicate that the Complainant has a website at www.trghotpress.co.uk and uses email addresses @trghotpress.co.uk. The Expert is satisfied on a very bare balance of probabilities that the Complainant also has rights in “trghotpress.co.uk” at common law by virtue of such use. Clearly this is identical to the Domain Name. Thus the Expert concludes that the first requirement is met on this basis as well.

Finally, if the Complainant is entitled to the Domain Name under the arrangement made with the Respondent, it follows that the Complainant has a contractual right to it. As was held in DRS 0442 1&1 Internet Limited v SSL, the rights which may be relied upon under the Policy are not limited to rights of a trade mark nature but include contractual rights. Accordingly, if the Complainant is correct regarding the nature of the arrangement made with the Respondent, the first requirement would be satisfied on this third basis. Whether the Complainant is correct on this point is the central issue in relation to the second requirement of the Policy and is discussed below.

“Abusive Registration” is defined in §1 of the Policy as a domain name which was registered or acquired or which has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.

If, as the Complainant says, the Domain Name should have been registered in the Complainant’s name and remained under its control, it seems to follow that the Respondent’s registration of it in the Respondent’s own name was unfairly detrimental to the Complainant’s rights; and that the Respondent’s assertion that it is entitled to suspend the Complainant’s use of the Domain Name unless the Complainant retains its services is a use which takes unfair advantage of the Complainant’s rights. This is so whether the Complainant’s rights are those in its company name under the Companies Act, or in its trading name or the Domain Name at common law by virtue of their use, or in the Domain Name by contract.

If, on the other hand, as the Respondent says, the parties agreed that the Respondent would retain control of the Domain Name and would only make it available to the Complainant as long as the Complainant was using its services, it seems to follow that the registration in the Respondent’s name was not unfair, and that the Respondent’s assertion of its entitlement to suspend the Complainant’s use once the Complainant ceased to retain its services did not constitute unfair use.

The critical issue is which party is right as to the nature of the arrangement between them regarding the registration of the Domain Name. There is no clear documentary evidence confirming either of the rival contentions. However, the charge of £100 made by the Respondent specifically for the registration of the Domain Name allows a very substantial margin over the cost of effecting it. On the balance of probabilities, the Expert considers that this is more likely than not to reflect an agreement that the Domain Name would be registered in the name, and remain at the disposition, of the Complainant.

Accordingly the Expert concludes that the second requirement of the Policy (and the third basis of the first requirement) are met.

Given these findings, it is clearly appropriate that the Domain Name should be transferred to the Complainant.

In light of the above findings, that the Complainant has rights in respect of names which are identical or similar to the Domain Name and that the Domain Name is an Abusive Registration in the hands of the Respondent, the Expert decides that the Domain Name, trghotpress.co.uk, should be transferred to the Complainant.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Tullis Russell Hot Press Ltd -v- Pattishall Computer Maintenance Ltd [2003] DRS 984 (29 July 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/984.html Cite as: [2003] DRS 984

Nominet UK Dispute Resolution Service