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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Abel Alarm Company Ltd -v- EDS Alarms [2004] DRS 1616 (10 May 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1616.html Cite as: [2004] DRS 1616 |
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Nominet UK Dispute Resolution Service
DRS Number 01616
Abel Alarm Company Limited -v- EDS Alarms
Decision of Independent Expert
1. Parties:
Complainant: Abel Alarm Company Limited
Country: GB
Respondent: EDS Alarms
Country: GB
2. Domain Name:
abelalarms.co.uk
3. Procedural Background:
The complaint was lodged with Nominet electronically on 9 March 2004 and in hard copy on 10 March 2004. On 15 March 2004 Nominet validated the complaint and wrote to inform the Respondent of the complaint, asking for a response by 5 April 2004. In addition to a posted letter, Nominet faxed the Respondent, and emailed him at both EDS Alarms’ normal email address and one derived from the disputed abelalarms.co.uk domain. No “undeliverable” messages were received.
No response was received from the Respondent. On 15 April 2004 Nominet wrote to the Complainant, saying that the case could now be referred to an independent expert for a decision if the Complainant paid the appropriate fee by 29 April. This letter was copied to the Respondent by post, fax and email.
On 23 April 2004 Nominet received the fee from the Complainant, together with an additional comment. On 28 April this expert, Claire Milne, confirmed that she had no connection with either of the parties and was appointed to decide the dispute.
4. Outstanding Formal/Procedural Issues (if any):
None.
5. The Facts:
The Abel Alarm Company Limited (also known as Abel Alarms) is an independent UK alarm company that has been trading for over 30 years. In 1998 it registered the domain name abelalarm.co.uk and now uses this for the company website and email addresses.
On 9 March 2000 a representative of EDS Alarms, another alarm company based in the Midlands and set up in 1992, registered the domain name abelalarms.co.uk. The registration was last renewed in January 2004. The URL www.abelalarms.co.uk leads to a “parking” website (hosted by the ISP VirtualNames) where as a headline the name abelalarms.co.uk is offered for sale (no price specified). Below this headline is a long list of other domain names for sale. These other names mostly appear generic, but include the name jesop.co.uk which the Complainant has mentioned (see below).
6. The Parties’ Contentions:
Complainant:
The complaint is so short that I reproduce it in full below, split between the two headings that follow.
Rights in the name
The complaint states: “Abel Alarm Company Limited is a national UK company that has been trading for over 30 years We are recognised as the leading independent alarm company in the UK and are also known as Abel Alarms.”
Abusive registration
The complaint states: “EDS Alarms in Birmingham have used the domain name abelalarms.co.uk to block our company from purchasing it. They are also using the domain name to attract business to their company by deceiving the general public into thinking they are Abel Alarm Company Limited I know that a large amount of our email correspondence ends up with EDS Alarms because our customers complain when we do not reply to their emails. When we check the email address they have sent their email to it is always abelalarms.co.uk. My question to you would be, why would EDS Alarms need the domain abelalarms.co.uk if it was not to deceive the general public and our customers?”
In the later note accompanying the DRS fee, the complainant adds: “We have been informed that EDS has also registered www.jesop.co.uk, a similar name to a local Leicestershire based camera superstore, Jessops, which has a domain name of www.jessops.co.uk”.
Respondent:
The Respondent has not responded.
7. Discussion and Findings:
According to section 2 of Nominet’s Dispute Resolution Service Policy, in order to succeed, a complainant must demonstrate two points, each on the balance of probabilities:
· The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name, and
· The Domain Name, in the hands of the Respondent, is an Abusive Registration.
I shall discuss these points in turn.
Complainant’s Rights
The complainant has simply asserted that the company is well known by the name Abel Alarms. Having looked at its website, and in the absence of a response, I have no reason to doubt this claim. Nominet has supplied me with a copy of the Companies House register entry, which shows that Abel Alarm Company Limited was incorporated in 1965 and continues in business now. In ordinary English usage, adding an “s” to a trading name is often immaterial; this case is an example of such usage. I conclude that the complainant does have Rights in this identical name.
Abusive Registration
Nominet’s Dispute Resolution Policy (1) 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.
Section 3 a) of the Policy is a non-exhaustive list of factors which may be evidence of abusive registration. The Complaint includes little evidence, but asserts factors 3 a) i) B (blocking), 3 a) ii) (confusion) and 3 a) iii) (pattern of abusive registration). In addition, the current offer for sale of the name is some evidence of 3 a) i) A (intent to sell the name at a profit).
The name “abelalarms” is so distinctive that I cannot interpret it as anything other than a version of the Complainant’s company name. The Complainant and Respondent are direct competitors, based not far apart. The Complainant’s name must have been well known to the Respondent at the time of registration. The name is plainly not generic, nor do I find it plausible that the choice of this name to register could have been simple coincidence. However, it is hard to discern any specific purpose such as those in the Section 3 list.
The strongest evidence provided is for confusion: that some of the Complainant’s customers have mistakenly tried to email it using email addresses derived from the domain name abelalarms.co.uk. They naturally received no reply from the Complainant. But no reply from the Respondent is mentioned either.
In answer to the complainant’s question “why would EDS Alarms need the domain abelalarms.co.uk if it was not to deceive the general public and our customers?” I have to say that if EDS Alarms seriously wanted to deceive the public and disrupt or intercept Abel Alarms’ business, they could have used the URL to redirect web traffic to their own website, and could have replied to emails that they received by mistake, with an alternative offer. (They may of course have replied to some mistaken emails, whose authors have not told Abel Alarms what was going on).
The name is advertised as for sale, but this may not mean much. The potential market for such a name is very limited. Abel Alarms itself is the obvious buyer, but there is no mention of them having been approached directly about buying the name. Nor can I interpret one other registration of a mis-spelled name as a “pattern of making Abusive Registrations” (Policy 3 a) iii))
Thus, I see no clear evidence of the purpose of the registration being diversion of business, or of a serious attempt to profit by selling the name. Overall, no clear case has been made for any one of the factors listed in section 3 as evidence of abusive registration, though there is some indication of each of three or four of them. As often occurs in Nominet’s Dispute Resolution Service in the absence of a response, the Expert is left to speculate on the purpose of the registration.
Here I quote the views expressed by another Expert in an earlier Nominet decision (DRS 00658, chivasbrothers.co.uk):
Where a Respondent registers a Domain Name:-
1. which is identical to a name in respect of which the Complainant has rights; and
2. where that name is exclusively referable to the Complainant; and
3. where there is no obvious justification for the Respondent having adopted that name for the Domain Name; and
4. where the Respondent has come forward with no explanation for having selected the Domain Name,
it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain Name for a purpose and secondly that that purpose was abusive.
I agree with this statement and find it applicable in this case. In this case two additional points also apply:
· There is every reason to expect that the Respondent has received Nominet’s communications. In some Nominet cases, doubts arise over the Respondent’s current contact details or reachability. This time there are none; accordingly, one must infer that the Respondent has chosen not to respond.
· The Respondent is a competitor of the Complainant.
These points both make the inference of an abusive purpose yet stronger – even if, as in this case, the exact nature of the abusive purpose is unknown. In reality, the motive for such a registration may be simply gaining some “hold” over the competitor by controlling his domain name. I interpret a motive of this kind as taking unfair advantage of the Complainant’s Rights, and hence as abusive under section 1 of the Policy.
8. Decision:
The Complainant has Rights in the Domain Name. The Registration took unfair advantage of the Complainant’s Rights. The Registration is therefore Abusive. As requested by the Complainant, I direct that the Domain Name should be transferred to the Complainant.
Claire Milne
Date: 10 May 2004