Woodway Engineering Ltd -v- Simpson [2004] DRS 1464 (9 February 2004)

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 lodged with Nominet by hardcopy on December 16, 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on December 19, 2003 and informed the Respondent that he had 15 working days within which to lodge a Response. On January 20, 2004 Nominet wrote to the Complainant and Respondent stating that the Respondent had failed to file a response and consequently that the dispute would not go through informal mediation but would be referred to an independent expert if the Complainant paid the appropriate fees by February 3, 2004. On the same date, Nominet received an email communication from David Bettelley, the registrant contact on the Domain Name, indicating that Bettelley had failed to respond due to the fact that he was hospitalised at short notice just prior to the response deadline and offering to transfer the Domain Name to the Complainant in return for a nominal fee of £50 to cover the cost of initial purchase and registration fees. Bettelley requested that Nominet advise the Complainant accordingly. Nominet responded on the same date that the response deadline had been exceeded and that the dispute had moved on to the next stage. Nominet also invited Bettelley to contact the Complainant directly should he wish to negotiate a transfer of the Domain Name. On January 23, 2004 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

On January 27, 2003, Andrew D S Lothian, 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.

The Respondent has failed to submit a Response to Nominet in time in accordance with paragraph 5(a) of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure").

Paragraph 15(b) of the Procedure provides inter alia that "if in the absence of exceptional circumstances, a party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a decision on the Complaint." In the present case, the reason stated on behalf of the Respondent for the failure to comply with the response deadline was that the registrant contact on the Domain Name was hospitalised at short notice just prior to the deadline. Given that the registrant is listed as 'Bartholomew Simpson', which the Complainant notes is possibly an alias, it is not clear whether the registrant contact (listed as c/o David Bettelley) is the same person as the registrant and accordingly the actual Respondent in this case. For present purposes the Expert believes that it does not matter whether the registrant contact is also the Respondent. While the Expert sympathises with the registrant contact concerning his recent hospitalisation, the Expert considers that it would have been reasonable for either the registrant or the registrant contact to provide an indication as to the nature of the response and/or to have sought an extension of the response deadline (the granting of which is competent in terms of paragraph 12(a) of the Procedure). This could have been done within the registrant contact's email of January 20, 2004. Furthermore, the registrant contact's offer in that email to transfer the Domain Name indicates that there is no particular intention on the part of the Respondent to submit a response in the present case. Accordingly, the Expert does not believe that there are exceptional circumstances and will therefore proceed to a decision.

In light of the absence of a Response in this case, it is necessary for the Expert to consider whether to draw any special inferences from the Respondent's non-compliance with paragraph 5(a) of the Procedure. There are many reasons why a Respondent may not provide a Response and the Procedure does not require the Expert to speculate upon these. In the view of the Expert, if the Respondent does not submit a response the principal inference that can be taken is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration. This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration.

The Complainant is a UK registered limited company incorporated in 1973 under its present name.

(a) The Complainant was incorporated in 1973 and has traded under the 'WOODWAY ENGINEERING' name continuously since that time. It is the owner of the Domain Names woodway-engineering.com and woodway-engineering.net.
(b) The Complainant markets and provides installation services for a wide range of optical and signalling apparatus including motor vehicle lighting equipment, emergency lighting and speed detection equipment.
(c) During thirty years of trading the Complainant has acquired a considerable reputation and goodwill in the mark WOODWAY for the products and services marketed under the mark. The Complainant is the sole licensed manufacturer of Whelen products outside the USA and also designs, develops and manufactures their own products in the UK which complement the Whelen range.
(d) When the Domain Name first came to the Complainant's attention it linked to a web site belonging to the Abacus Group. The Abacus Group market products and services in direct competition with the Complainant. The Abacus Group also has two further domain names: vehiclewarningproducts.co.uk and emergencyvehiclesolutions.co.uk. Each links to the same web site which is also owned by Abacus Group. The Domain Name whelen.co.uk links to the same web site of Abacus Group. It is clear, therefore, that there was a concerted effort by Abacus to make use of the Complainant's reputation in its name Woodway Engineering and direct any searches to its own web site.
(e) The Domain Name was subsequently redirected to 123-reg.co.uk which appears to be simply a registration company. A check on the owner of the Domain Name shows it to be registered to "Bartholomew Simpson" which would appear to be an alias. The registrant is also stated as being "AN INDIVIDUAL WHO HAS ELECTED TO HAVE THEIR ADDRESS OMITTED FROM THE WHOIS DATABASE".
(f) A subsequent check on the Domain Name shows that it is currently being redirected to emergencyequipment.co.uk. This web site includes a copyright notice in the name of Emergency Vehicle Solutions and this is indicative of a prima facie link between the registrant "Bartholomew Simpson" and Abacus.
(g) It was and is the clear intention of Abacus to use the Domain Name to redirect the Complainant's customers and potential customers to the Abacus web site in the manner in which persons searching for Woodway products would be redirected. This is likely to cause confusion to the Complainant's customers and potential customers who are trying to access information regarding the goods or services provided by the Complainant.

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and secondly that the Domain Name in the hands of the Respondent is an abusive registration (as defined in paragraph 1 of the Policy).

The Complainant's name is Woodway Engineering Limited and the entry from Companies House provided by Nominet with the papers indicates that it was incorporated in 1973 and has not changed its name at any time over the last 20 years. The Complainant provided an extensive list of the products and services for which it is known in the UK (somewhat précised above). The Complainant's submission on Rights is based on its extensive trading history in such products and services during which time it has established considerable reputation and goodwill in the name WOODWAY. The Expert has no reason to doubt these submissions.

'Rights' as defined in the Policy includes, but is not limited to, rights enforceable under English law. This would include rights in UK registered trade marks and rights to bring an action of passing off in respect of names or marks which have not been registered as trade marks. On the basis of the Complainant's submissions, the Expert considers it reasonable to infer that the Complainant has sufficient goodwill both in its corporate name WOODWAY ENGINEERING and in the brand name WOODWAY sufficient to allow it to bring an action for passing off in respect of either of those names or marks.

In terms of paragraph 2 (a)(i) for the Complainant to succeed, such Rights must be in respect of a name or mark which is identical or similar to the Domain Name. The first (.uk) and second (.co) levels of the Domain Name are disregarded as being wholly generic. This leaves a comparison between 'woodway-engineering' and 'WOODWAY ENGINEERING'. Character or 'white' spaces cannot be used in domain names. Dashes or hyphens are permitted (subject to other rules which do not concern us here) and are often used in substitution of a character space. Taking this into consideration, the Expert is satisfied on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name.

It is then necessary to turn to the second limb: is the Domain Name, in the hands of the Respondent, an abusive registration? Paragraph 1 of the Policy defines "abusive registration" 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."

The Complainant's submissions on Abusive Registration focus on the use of the Domain Name to redirect to the web site of a company named Abacus Group which is a competitor of the Complainant. The papers include a screenshot taken by Nominet showing that at the date of the screenshot the Domain Name redirected or 'web forwarded' to a web site at http://www.emergencyequipment.co.uk. At the date of the decision this web forwarding was no longer active and the Domain Name was pointing to a web hosting company's web site. It is clear that the contact address given on the web site at http://www.emergencyequipment.co.uk is the same as the contact address for the Domain Name. Furthermore, that address also happens to be the contact address for the Abacus Group in terms of the screenshots of what appeared to be the official Abacus Group web site at the URLs http://www.vehiclewarningproducts.co.uk and http://emergencyvehiclesolutions.co.uk. The situation has changed since those screenshots were taken in that as at the date of this decision both of the URLs http://www.vehiclewarningproducts.co.uk and http://www.emergencyvehiclesolutions.co.uk are now pointing to the web site at http://www.emergencyequipment.co.uk, although the contact address is unchanged.

The Expert notes that the 'prima facie link', or apparent connection, between the Domain Name and the Abacus Group contended for by the Complainant is emphasised still further by the fact that the 'reply to' address on the registrant contact's (Mr Bettelley's) email of January 20, 2004 is for an email address at the domain name emergencyvehiclesolutions.co.uk, the domain name which, as noted above, at one stage pointed to an apparently official Abacus Group site.

None of the evidence demonstrates conclusively that the Domain Name was registered by or on behalf of the Abacus Group or that there was 'a concerted effort by Abacus to make use of the Complainant's reputation in its name Woodway Engineering and direct any searches to its own website' as the Complainant contends. Neither does the material presented to the Expert establish that 'it was and is the clear intention of Abacus to use the Domain Name to redirect the Complainant's customers and potential customers to the Abacus website'. It does however demonstrate, in the Expert's view, that those behind the registration of the Domain Name intended at the very least to give the impression of a connection to Abacus. It is also reasonable to infer, as the Complainant submits, that the registration was made with the intent to redirect the Complainant's customers or potential customers to Abacus.

The Complainant's submissions relating to confusion correspond approximately to paragraph 3(a)(ii) of the Policy, a factor in the list of non-exhaustive factors which may be evidence that the Domain Name is an abusive registration. Paragraph 3(a)(ii) of the Policy calls for 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. The Complainant's submission does not however make out a case under paragraph 3(a)(ii) which calls, in the Expert's view, for evidence of actual confusion having taken place through the use of the Domain Name.

While there may not, as yet, be any evidence of actual confusion, the Expert takes the view that there is compelling evidence that the Domain Name was registered primarily for the purpose of unfairly disrupting the business of the Complainant. This is also a factor in the list of non-exhaustive factors which may be evidence that the Domain Name is an abusive registration - paragraph 3(a)(i)(C) of the Policy. The Expert bases this conclusion on (1) the fact that the domain name was registered under what seems highly likely to be an alias which, being an individual's name, ensured that the registrant's other contact details would not be included in the WHOIS - seemingly an attempt to divert those acting for the Complainant from the true nature and identity of the registrant; (2) the apparent link at the point of registration (by the identical address details given at that stage) between the Respondent and the Complainant's competitor; and (3) the use of the Domain Name post-registration as a vehicle to divert or confuse potential customers searching for the Complainant's official web site.

There is no doubt therefore that the Complainant has raised a prima facie case of abusive registration. There is neither a formal nor an informal response by the Respondent to the Complainant's submissions and, indeed, it is difficult to imagine any response which could convincingly rebut the points noted in the preceding paragraph or provide a credible alternative explanation for the Domain Name's registration and use.

The Expert finds that, on the balance of probabilities, the Complainant has Rights in a name which is identical to the Domain Name and that the Domain Name is, in the hands of the Respondent, an Abusive Registration. The Expert therefore directs that the Domain Name 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 >> Woodway Engineering Ltd -v- Simpson [2004] DRS 1464 (9 February 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1464.html Cite as: [2004] DRS 1464