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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Davy Bal Solicitors Ltd (t/a Claim Today) v Rodden [2004] DRS 1533 (6 May 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1533.html Cite as: [2004] DRS 1533 |
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1. Parties
Complainant: Davy Bal Solicitors Limited trading under the style and title Claim Today
Country: GB
Respondent: Sophia Rodden
Country: GB
2. Disputed Domain Name
The domain name in dispute is <claimtoday.co.uk>.
3. Procedural Background
On 4 February 2004, the Complaint was lodged with Nominet UK accordance with the Dispute Resolution Service Policy (hereinafter the “DRS Policy”) and hard copies of the Complaint were received in full on 5 February 2002.
On 10 February 2004 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure allowed the Respondent 15 working days within which to respond to the Complaint.
On 26 February 2004 Nominet UK received a response in hard copy from the Respondent.
On 8 March 2004 Nominet UK received the Complainant’s reply in electronic form and in hard copy.
On 16 April 2004 Mr James Bridgeman was selected as Expert and having confirmed to Nominet UK 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 he was duly appointed.
4. The Facts
The Complainant is a firm of solicitors.
On 2 November 2000 a private limited company Claim Today Limited was registered by the Complaint’s managing partner with Companies House
The said managing partner of the Complainant is also the owner of a UK registered trademark number 2292789 registered as of 15 February 2002. Said registered trademark consists of a clock device with the words “claim today 100% compensation – 0% deduction” and was registered in classes 35 for the following services: “advertising, business information” and in class 42 for “legal services”.
The Respondent is the spouse of a partner in the firm of solicitors trading under the style and title Easterleys Solicitors. The Respondent registered said domain name <claimtoday.co.uk> on 5 April 2000 and claims to hold same in trust for the said solicitors firm Easterleys Solicitors.
5. The Parties’ Contentions
The Complainant requests that said domain name be suspended.
The Complainant claims that in the month of December 1999 the Complainant established a marketing business with the main purpose of securing clients for solicitors across England and Wales. At that time the Complainant launched an advertising campaign on satellite television.
The Respondent registered said domain name <claimtoday.co.uk> on 5 April 2000 after the Claimant commenced trading under the style and title CLAIM TODAY with the launch of said satellite advertising campaign.
Subsequently on 2 November 2000 the Complainant incorporated said company Claim Today Limited to carry on said marketing business.
Since that time the Complainant and said Claim Today Limited has been advertising widely on television and CLAIM TODAY has been established as a brand in the field of legal services.
The Complainant submits that until recently said domain name <claimtoday.co.uk> has not being utilised by the Respondent, however in recent weeks the Respondent has now established a web presence with this address and is marketing services as CLAIM TODAY.
The Complainant submits that this is a clear abuse and an attempt by the Respondent to dishonestly obtain clients who are under the impression they are contacting the Complainant. In one advertisement said Easterleys Solicitors does not use its own name but merely gives a freephone number with the domain name <claimtoday.co.uk>. The Complainant submits that the Respondent is passing off.
Moreover the Complainant submits that the sequence of chronological events is significant. This domain name and address were dormant for some years not being utilised by the Respondent until after the Complainant drew matters to the attention of the Respondent in June 2003. The Complainant believes that the Respondents decision to now utilise this domain name was also influenced by a large television campaign launched by the Complainant in December 2004.
The Complainant maintains that the use of said domain name by the Respondent is an Abusive Registration, which is designed to usurp the Complainant’s corporate identity and obtain clients by deception.
The Respondent submits that she is the spouse of one of the partners in the firm Easterleys Solicitors whose principal place of business is The Manor Office, Victoria Street, Paignton Devon TQ4 5DW.
The Respondent submits that she holds the certificate to said domain name on trust for the partners of Easterleys Solicitors and both the name CLAIM TODAY and said domain name <claimtoday.co.uk> have been used by said Easterleys Soclicitors with the Respondent’s consent.
The Respondent further submits that the Complainant cannot establish that said domain name <claimtoday.co.uk> 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 as required by paragaraph 1(i) of the DRS Policy.
Said domain name was registered by the Respondent on 5 April 2000 with the intention that said domain name would be used by the Respondent in connection with marketing of legal services primarily for personal injuries claims.
The Respondent reserves its position as to whether the Complainant now has any rights in the name CLAIM TODAY, but asserts that any such rights that the Complainant may have, arose after the date of registration of said domain name.
The Complainant has not registered CLAIM TODAY as a trademark, but rather a device incorporating those words and a clock device. The Respondent has never sought to use or imitate this device.
With regard to the issue of whether there is evidence of an Abusive Registration, as the domain name was registered prior to the incorporation of the Complainant’s company, the chronology of the issues in dispute demonstrates that there are no circumstances indicating that the Respondent has registered or otherwise acquired said domain name <claimtoday.co.uk> 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 said domain name. Neither is there any evidence that said domain name <claimtoday.co.uk> was registered as a blocking registration against a name or mark in which the Complainant has rights, or primarily for the purpose of unfairly disrupting the business of the Complainant. Neither is there any question of the Respondent being engaged in any pattern of making Abusive Registrations nor has there been any allegation that the Respondent has given false contact details to Nominet UK. It follows that the Complainant cannon rely on any of these circumstances listed in paragraphs 3(a)(i), 3(a(ii) and 3(a)(iv) of the DRS Policy.
Only the circumstances set out in paragraph 3(a)(ii) of the DRS Policy remain as a potential argument for the Complainant i.e. that there are circumstances indicating that the Respondent is using said domain name <claimtoday.co.uk> in a way which has confused people or businesses into believing that said domain name <claimtoday.co.uk> is registered to, operated or authorised by, or otherwise connected with the Complainant.
The Respondent relies on paragraph 3(b) of the DRS Policy i.e. that failure on the Respondent’s part to use said domain name <claimtoday.co.uk> for the purposes of e-mail or a web-site is not in itself evidence that the registration of said domain name is an Abusive Registration.
The Respondent further claims that before being informed of this Complaint, the Respondent has used or made demonstrable preparations to use the domain name or a domain name which is similar to said domain name in connection with a genuine offering of goods or services. The Respondent has attached to the Complaint, copy advertisements showing use of the name Claimtoday and the domain name claimtoday.co.uk which pre-date the date of the present dispute. These advertisements were placed and paid for by said Easterleys Solicitors. The Respondent has further attached a an advertising schedule showing the publication dates throughout 2003-2004.
The Respondent further asserts that it has been commonly known by said domain name.
The Respondent’s registration of said domain name predates the incorporation of the Claimant’s company. Said registration is a matter of public record and the Complainant should have carried out the necessary searches and checked the availability of the name prior to seeking a trading style of CLAIM TODAY.
Said domain name is generic. Almost every derivation of “claim” and “personal injury” has been registered as a domain name by various individuals and corporations. Nothing within the Respondents web site is an unfair use. If there was any such unfair use the Complainant could pursue a “passing off” action without reference to this dispute resolution procedure.
The Respondent was unaware of the Complainant’s advertising campaign in December 2003. The Respondent has not endeavoured to deceive any individuals into believing that said domain name is associated with the Complainant. The Respondent owns or is linked to the domain name <claimtoday.biz> and the Respondent assumes that the Complainant displays that domain name in its own advertising.
The Respondent alleges that the Complainant is engaged in reverse domain name hi-jacking.
6. Discussion and Findings:
Complainant’s Rights
Abusive Registration
As to whether the domain name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS 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.”
It is clear from the chronology of this dispute that the said domain name was registered prior to the incorporation of the Complainant’s marketing company Claim Today Limited.
The Complainant claims use of the name CLAIM TODAY by the Complainant in the period from December 1999 to the date of incorporation of the Claimant’s company and subsequent use by said Claim Today Limited.
There is no evidence of any significant use of the name CLAIM TODAY by the Complainant prior to the registration of the domain name on 5 April 2000. The Complainant’s trademark registration post-dates the incorporation of the marketing company.
Said domain name was registered by the Respondent on 5 April 2000. The Respondent claims to have registered said domain name <claimtoday.co.uk> with the intention that said domain name would be used by the Respondent in connection with marketing of legal services primarily for personal injuries claims.
There is no reason not to accept this as being the case. The Respondent has close connections with a legal firm and claims to have registered said domain name on behalf of that firm. The domain name itself is quite descriptive of the type of services in which each of the Parties are engaged so it is not improbable that they both co-incidentally hit upon the same descriptive name or slogan “claim today” as submitted by the Respondent.
It is clear from the information supplied by the Respondent that before the Respondent was informed of the Complainant’s dispute, the Respondent has used said domain name in connection with a genuine offering of legal services.
Said domain name has a generic or descriptive character. The Complainants registered trademark is a device mark and this is significant in the circumstances of the present case. The fact that the Complainant has decided to carry on business under the style and title CLAIM TODAY carries with it clear marketing advantages, but there are disadvantages also.
There is not sufficient evidence to establish that the Respondent was aware of the Complainant’s marketing campaign prior to registering the said domain name. It follows that the Complainant has failed to prove that said domain name 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.
Neither is there any evidence that since the date of registration said domain name has been used in a manner, which has taken unfair advantage of or was unfairly detrimental to the Complainant’s Rights. There is no evidence that the Respondent has represented that either herself or Easterleys Solicitors are the same firm as the Complainant or have any connection with the Complainant. The Respondent has not used the Complainant’s registered trademark with the clock device.
There is no evidence of circumstances indicating that the Respondent is using said domain name <claimtoday.co.uk> in a way which has confused people or businesses into believing that the said domain name is registered to, operated or authorised by, or otherwise connected with the Complainant.
While in certain circumstances passive domain name holding can constitute evidence of Abusive Registration, the DRS Policy is very clear that failure on the Respondent’s part to use the domain name for the purposes of e-mail or a web-site is not in itself evidence that the domain name is an Abusive Registration.
On the other hand there is evidence that before being informed of this Complaint, the Respondent has used or made demonstrable preparations to use the domain name in connection with a genuine offering of legal services.
In the absence of any evidence of awareness on the part of the Respondent of the Complainants advertising campaign prior to the registration of said domain name, on the balance of probabilities the Respondent’s registration of said domain name was not an Abusive Registration.
Furthermore in the absence of any evidence on the part of the Complainant of infringements of the Complainant’s registered trademark by the Respondent or evidence of any actual or threatened confusion in the market for legal services, since the date of registration of said domain name, this Expert concludes that the Complainant has failed to prove that said registration subsequently became an Abusive Registration by the acts or omissions of the Respondent.
In reaching this decision, this Expert is influenced by the narrow rights gained by the registration of the device mark, by the fact that there is no evidence of substantial use of the name CLAIM TODAY by the Complainant prior to the registration of the domain name and by the fact that the Respondent holds said domain name in trust on behalf of a firm of solicitors engaged in personal injury litigation and using said domain name to advertise its services. If there is an issue of passing off to be decided that is for another forum.
7. Decision
This Expert therefore directs that the Complainant has failed in its application.
______________________ ______________________
James Bridgeman Date: 6 May 2004
