Driver & Vehicle Licensing Agency -v- Registrations 4 Vehicles [2004] DRS 1590 (10 June 2004)

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3.1 The Complaint was lodged with Nominet on 2 March 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on 5 March 2004. The Respondent was advised that it had 15 working days to respond to the Complaint, that is, until, 29 March 2004.
3.2 A fax from the Respondent was received by Nominet on 29 March 2004. The fax alleged that the Respondent had not had time to deal with the Complaint, essentially due to a variety of business-related matters. A substantive response was promised by 1 April 2004.

3.3 Nominet sent the fax received on 29 March 2004 to the Complainant’s representatives, taking that fax as the Respondent’s Response. Nominet did not consider that there were exceptional circumstances justifying an extension of the Response deadline, and refused the requested extension. A subsequent letter received from the Respondent on 2 April 2004 was sent to the Complainant’s representatives as a non-standard submission.

3.4 Nominet indicated to the Complainant’s representatives that if the Complainant wished to file a Reply, it should do so by 7 April 2004. The Complainant indicated on 30 March 2004 that it did not intend to respond to the fax from the Respondent of 29 March 2004. The Complainant’s representatives were sent a copy of the Respondent’s non-standard submission on 2 April 2004, and prepared a Reply. The hard copies of both the Respondent’s non-standard submission and the substantive response by way of Reply from the Complainant’s representatives were delayed due to a postal strike. Nominet extended the time for receipt of the Reply to 19 April 2004 and the Reply was received on that date.

3.5 Nominet acknowledged the Reply and notified the Respondent of the same and initiated its mediation procedure on 19th April 2004.

3.6 On 13 May 2004 Nominet notified the Complainant and the Respondent that mediation had been unsuccessful and that provided the Complainant paid the appropriate fee by 27 May 2004, Nominet would refer the case to an independent expert for a decision. The Complainant duly paid the fees on 24 May 2004.

3.7 On 25 May 2004 Bob Elliott, the undersigned (“the Expert”) confirmed to Nominet that there was 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. Nominet duly appointed the Expert with effect from 1 June 2004.

4.1 The non-standard submission provided by the Respondent on 2 April 2004 was not in accordance with Paragraph 5 of Nominet’s Procedure for the Conduct of Proceedings under the Dispute Resolution Service (the Procedure). Nominet refused an extension of time for the same, as no exceptional circumstances were justified.

4.2 Under Paragraph 13 of the Procedure, the Expert is not obliged to consider any statements or documents from the parties which have not been received according to the Policy or Procedure. Nevertheless, in this case, the Expert is conscious that the non-standard submission largely served to repeat matters which had previously been included in correspondence between the parties, and that the Complainant (which is represented by solicitors) does not appear to have had any difficulty in providing a substantive reply to that submission within the time permitted. Furthermore, there is no suggestion of such documents having been generated during the informal mediation stage. In the circumstances, the Expert proposes to treat the non-standard submission received by Nominet on 2 April 2004 as if it were a Response in accordance with the Procedure.

5.1 The Complainant commenced operations in 1974 as the Driver and Vehicle Licensing Centre, changing its name to the Driver and Vehicle Licensing Agency (DVLA) in 1990. It is an Executive Agency of the Driver, Vehicle and Operator group of organisations within the UK Government’s Department of Transport, Local Government and Regions. It is responsible for issuing and, where appropriate, withdrawing driving licences, for licensing and registering vehicles, and for collecting vehicle excise duty. It maintains and controls records of licensed drivers and vehicle keepers within the United Kingdom.

5.2 In 1989, the Complainant began selling un-issued vehicle registration numbers to the public through two separate trading names. Exclusive and highly personalised registrations are sold through auction under the name “DVLA Classic Collection”. “DVLA Select Registrations” is a telesales business for more affordable registrations. The Complainant also uses the trading name “DVLA Custom Marks” to sell more affordable registrations, by way of auction. Such business has apparently continued uninterrupted since 1989. In 1999 the Complainant registered the following trademarks: DVLA Classic Collection, DVLA Select Registrations, and DVLA Custom Marks (each in classes 35 and 42). In 2002 the Complainant also registered DVLA in the classic “Road” logo, DVLA, and DVLA Driver and Vehicle Licensing Agency (each in classes 6, 9, 12, 16, 20, 25, 35 and 42).

5.3 The Respondent is in the business of buying and selling personalised number plates in respect of issued registrations, conducting its business through a website located at www.r4v.co.uk. Its website advertises personalised number plates, car registrations, private plates and cherished registrations. It contains the following disclaimer: “PLEASE NOTE: We are not the Driver & Vehicle Licensing Agency – to contact them please consult your local telephone directory”.

5.4 Solicitors for the Complainant wrote to the Respondent on 16 September 2003, complaining about the Respondent’s use of the Domain Name, asserting that the Domain Name was an abusive registration within Nominet’s DRS, and claiming that the use of “DVLA” in the Domain Name would give rise to confusion on the part of the public. An invitation to transfer title in the Domain Name voluntarily to the Complainant was refused by the Respondent in its letter in reply dated 7 October 2003 on grounds which are essentially the same as those now put forward in its Response to these proceedings and which are set out below. These grounds are, therefore, not duplicated.

6.1 As to Rights, the Complainant details the registered trademarks referred to above, outlines the Complainant’s trading activities, and provides copies of relevant certificates or reports. The Complainant does not, however, specifically address itself in its Complaint to the requirement of Paragraph 2.a.i of Nominet’s Dispute Resolution Service Policy (the “Policy”), which requires the Complainant to prove on the balance of probabilities that it has “Rights in respect of a name or mark which is identical or similar to the Domain Name”. The Complainant’s solicitors’ letter to the Respondent of 16 September 2003 refers to the Domain Name being confusingly similar to two of the registered trademarks (being the DVLA “road” logo and DVLA itself).

6.2 As to Abusive Registration, the Complainant refers to three of the non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration within Paragraph 3 of the Policy, namely 3.a.i.B (“circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name as a blocking registration against a name or mark in which the Complainant has Rights”), 3.a.i.C (“circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of disrupting the business of the Complainant”), and 3.a.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”).

6.3 The Complainant’s belief as to the registration being a blocking registration is not explained. There is an assertion that the registration by the Respondent of the Domain Name was “as a blocking registration against a mark in which the Complainant has rights” but no elaboration.

6.4 As to the Respondent having registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Claimant, this appears merely to be a “belief” on the Complainant’s behalf, as there is no elaboration on what disruption was intended.

6.5 As to circumstances indicating that the Respondent is using the Domain Name in a way which has confused people and businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant, there is no evidence offered of such confusion. The Complainant says that there is no legitimate reason for the Respondent to use the letters “DVLA” in relation to what it calls “the title of its business”. It also points out that there is no reason to register a Domain Name containing the Complainant’s name, unless the Respondent seeks the benefit of the implication that it is somehow authorised, and/or associated in some other way with the Complainant. The form of disclaimer on the website (see paragraph 5.3 above) is said to acknowledge a risk of confusion. The Complainant says that by the time the user reads that statement, it will be too late, as the user will already have been confused. Because of the Respondent’s business of selling vehicle registrations, the Complainant says that the Respondent must have been aware that its use of the Complainant’s trade mark would lead to confusion in the minds of the public. The use of the word “registrations” itself is said to clearly reference the Complainant’s own activities. Because the Domain Name points to the web pages of www.r4v.co.uk, the Complainant says that this reinforces the fact that the Domain Name is being used deliberately to attract more web traffic to that site at the cost of the Complainant.

6.7 The Response does not specifically address itself to the issues of Rights or Abusive Registration under the Policy. It does, however, make the following points:-

a. At the time the Domain Name was registered (March 2000), the Complainant did not then use the domain name which it apparently now uses in its advertising, namely dvlaregistrations.co.uk, which was only registered by the Complainant in August 2002.
b. Prior to the Complainant’s decision to use dvlaregistrations.co.uk, it used the domain name of dvla-som.co.uk.
c. As a Public Department with a primary function of maintaining the register of authorised drivers and vehicle licences, the DVLA is not a private/limited company set up for commercial gain. It should, therefore, be using a .gov domain name extension in any internet media, and not a .co.uk domain name extension.
d. The Complainant’s business is operated under the names DVLA Personalised Registrations, DVLA Select Registrations, and DVLA Classic Collection and Cherished Marks, which are neither the same as the Domain Name, nor similar. The Complainant has no rights to use of the word “registrations”, and the Complainant does not ever refer to itself as DVLA Registrations.
e. The Complainant does not trade in issued registrations – it only trades in respect of un-issued registrations. The Respondent has to deal in issued registrations, which are held by the DVLA on its database. That phrase is, therefore, a generic term and a descriptive term used by trade and public alike to describe cherished numbers and registration marks in general, held on the register of vehicle registrations.
f. The Respondent could easily have registered the domain name dvlaregistrations.co.uk without the hyphen before the Complainant, but chose not to do so, as its registration was of the hyphenated name which the Respondent contends is the “generic” term used in the Respondent’s industry. Therefore, there is no intention to register as a blocking registration, as the domain name being allegedly similar was not even registered when the Respondent registered the Domain Name in 2000.
g. The Complainant has a conflict of interest, as it holds the records of all of the vehicle registrations, but cannot and does not trade in those. The Respondent has to refer to its products as DVLA Registrations “to ensure that potential clients do not think that we trade in acrylic number plates alone, and that we actually sell personalised registration marks instead”. The Respondent also complains about the monopolistic position of the Complainant.
h. As the Complainant took no action for some 6 months after its solicitors’ letter was responded to by the Respondent, the Complainant is aware that its Complaint has no legal standing, and is instead “just a heavy handed attempt to pressure us to transfer the Domain with the use of threatening letters”. The Respondent also refers to the unsuccessful attempts by the Complainant to obtain transfer of the domain name dvla.com through the UDRP.
i. As a small family run business, based at Leicester, offering completely different services to the Complainant, the Respondent claims that it “cannot be confused with [the Complainant] under any circumstances”.

a. The date of registration of dvlaregistrations.co.uk is irrelevant for the purposes of determining abusive registration.
b. The fact that the Complainant has decided to use a different domain name which is similar to the Domain Name first registered by the Respondent is not relevant whether the Domain Name is confusingly similar to the Complainant’s registered trade mark. The Complainant is entitled to register as many Domain Names as it wishes which incorporate its registered trade marks.
c. The Complainant is an Executive Agency (not a Public Department) but even it were not, it would not prevent it from objecting to abusive domain name registrations.
d. The Complainant is not seeking to claim rights in the word “registrations”, the Complainant objects to the registration of the Domain Name using its registered trade mark in conjunction with the word “registrations”.
e. “DVLA Registrations” is not a generic term. The Domain Name is similar to the Complainant’s registered trade mark “DVLA Select Registrations” and to the other trade marks owned by the Complainant.
f. The registration of the Domain Name prevents the Complainant from registering the same domain name, and contains a mark in which the Complainant has Rights, and is, therefore, a blocking registration.
g. The allegation of a conflict of interest is denied and is said to be irrelevant. The reference to the prior and irrelevant dispute involving dvla.com is neither necessary nor helpful to the present proceedings.
h. It is denied that the Complaint is frivolous or inappropriate.
i. There is no separate response to the Respondent’s assertion that it is a family owned business, based in Leicester, trading in different services, and, therefore, not to be confused with the Complainant under any circumstances.

7.1 For the Complainant to succeed according to paragraph 2 of the Policy, the Complainant must prove to the Expert on the balance of probability both of the two elements set out in paragraph 2a of the Policy, namely that:-

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

7.2 The definition of Rights under the Policy “includes, but is not limited to, rights enforceable under English Law, but excludes rights in a name or term which is wholly descriptive of the Complainant’s business”.

7.3 The parties’ respective submissions do not add much clarity in respect of the Complainant’s Rights under the Policy. It would appear from the Complainant’s Reply that it is claiming that it has Rights in DVLA Select Registrations which is said to be similar to the Domain Name, as indeed are “the other trade marks owned by the Complainant”. The Respondent asserts that the expression “DVLA Registrations” is merely descriptive or generic, and that the Complainant has no rights in respect of the same.

7.4 The Complainant has provided evidence of the registered trade mark DVLA Select Registrations. It seems to the Expert that Domain Name is similar to that registered mark. In the circumstances, the Expert concludes that the Complainant has established that it has Rights within the meaning of Paragraph 2 of the Policy, and does not need to decide whether the Domain Name is similar to other trade marks owned by the Complainant.

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”.

7.6 The Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration in Paragraph 3(a) of the Policy. As noted above, the three factors relied upon by the Complainant are those contained in Paragraphs 3.a.i.B, 3.a.i.C, and 3.a.ii. Those will be dealt with in turn.

7.7 As to the assertion that the Respondent had registered the Domain Name as a blocking registration against a name or mark in which the Complainant has Rights, the Expert does not consider that this is made out. The Complainant itself did not register dvlaregistrations.co.uk until two years after the Domain Name was registered. It would seem strange for the Respondent to have specifically chosen the Domain Name to “block” either the Complainant’s business using the trading name DVLA Select Registrations (and other trading styles), or the business being carried out through the web site dvla-som.co.uk at the time, and as the Complainant does not elaborate upon this element of its Complaint, the Expert finds that it is not made out.

7.8 As to the assertion that the registration was primarily for the purpose of unfairly disrupting the business of the Complainant, this is not elaborated upon by the Complainant. No evidence is provided to as to the motives of the Respondent at the time of acquisition of the Domain Name, so far as the Complainant’s own business was concerned. Given the nature of the Respondent’s business, it seems to the Expert that the choice of the Domain Name would have been aimed at benefiting the Respondent’s business, rather than disrupting the Complainant’s business unfairly. In the absence of any further clarification of the Complainant’s case in this respect, the Expert finds that this is also not made out.

7.9 The third factor relied upon by the Complainant is the assertion that there are 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.

7.10 The Complainant has put forward no evidence of confusion. Its contentions in this respect (see paragraph 6.5 above) are based upon conjecture. However, given the nature of the Respondent’s business, the Expert considers that it was inconceivable that the Complainant’s mark “DVLA” was not known to the Respondent when it registered the Domain Name in May 2000. The Respondent’s response is essentially to confirm that it was aware of the DVLA’s name, but that its choice of the Domain Name was not intended to cause confusion, but instead was to describe its own business, namely the business of selling registrations which had already been issued by the DVLA. The Respondent points to the fact that it registered the Domain Name at a time when the DVLA itself was using a rather different domain name, and other trading styles, and that the DVLA does not, in fact, apparently have a business which trades issued registrations. It has separate businesses of selling un-issued registrations, and maintaining details of issued registrations.

7.11 Although there is some force in the Respondent’s contentions, the Expert does not accept the Respondent’s contention that its products have to be referred to as DVLA Registrations. Nor does the Expert accept that the expression DVLA Registrations is either descriptive or generic. The evidence produced by the Complainant shows a substantial degree of recognition of DVLA as a trade mark through its trade mark registrations (although the Expert notes that there are no associated figures for turnover in respect of the trading activities concerned or other evidence of goodwill). The Expert considers that it would have been possible for the Respondent to have chosen a Domain Name which does not make direct reference to the DVLA – indeed as already noted the Domain Name only points to a web site located at www.r4v.co.uk. In the circumstances, it seems to the Expert that the benefit to the Respondent of the registration of the Domain Name is likely to have been and to be that it will be taken by some users to be a suggestion of an association with the DVLA which does not, in fact, exist. Although the Complainant has failed to provide evidence of actual confusion to support its case, the Expert concludes that it is likely that there will have been some degree of confusion on the part of users (and is supported in that conclusion by the Respondent’s own disclaimer on its website).

7.12 The Expert therefore concludes that the Complainant has succeeded on the balance of probabilities in making out the factor as to causing confusion in Paragraph 3.a.ii of the Policy.

7.13 As to other issues raised by the Respondent which are not directly dealt with above, the Expert observes that it is the Respondent’s current use which provides for the possibility of confusion. Therefore, the Complainant’s change of marketing style, and previous failure to register the domain name dvlaregistrations.co.uk are not relevant to the Respondent’s use. The assertion that the Complainant cannot use the suffix .co.uk because it is a Government department is not made out as the Complainant clearly has a trading role as an Executive Agency. The supposed “conflict of interest” seems to have no direct relevance to any of the salient issues.

7.14 Finally, the Expert accepts the Complainant’s submission that the reference to the previous decision under the UDRP in respect of dvla.com is of no assistance, involving very different facts and circumstances.

8.1 The Expert finds that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name. Furthermore, the Expert decides that the Domain Name is an Abusive Registration in the hands of the Respondent. The Expert, therefore, orders transfer of the Domain Name to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Driver & Vehicle Licensing Agency -v- Registrations 4 Vehicles [2004] DRS 1590 (10 June 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1590.html Cite as: [2004] DRS 1590

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