First National Telecom Services Ltd -v- Gibbs [2004] DRS 1642 (14 June 2004)

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The Complaint was received by Nominet on 18 March 2004. Nominet validated the Complaint and sent a copy to the Respondent on 23 March 2004, informing the Respondent that he had until 13 April 2004 to lodge a Response.

A Response was received on 7 April 2004 and forwarded to the Complainant on the same day with an invitation to the Complainant to lodge any Reply by 20 April 2004. A Reply was received on 20 April 2004 and forwarded to the Respondent on 22 April 2004.

The dispute proceeded to Informal Mediation, which started on 23 April 2004 and ended on 29 April 2004 without an agreement having been reached. On 13 May 2005 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

On 13 May 2004 Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet duly appointed me as Expert.

Having discovered on reviewing the papers that the majority of the information and arguments in support of the Complainant’s case against the Respondent were set out in the Reply rather than in the Complaint, that the Complainant had conceded that the Respondent should have the opportunity to respond to these matters, and that the Respondent had asked Nominet to note on the file that he felt it was unfair that he could not respond to new matters raised in the Reply under the Procedure, on 28 May 2004 I issued an interim ruling allowing the Respondent to submit a response to the matters set out in the Reply within five working days and the Complainant to reply to any new matters raised by the Respondent in that response within three working days thereafter.

On 7 June 2004, Nominet received a letter from the Respondent’s representatives by way of further response, which I have accepted into the case. Since in my view this did not raise any new substantive point requiring a reply, Nominet informed the Complainant that there should be no further reply.

As indicated above, I have accepted into the case an additional submission from the Respondent, in order to give him the opportunity to respond to the matters raised against him for the first time in the Reply.

Paragraph 3b of the Procedure clearly sets out the requirements for the contents of the Complaint. In particular, paragraph 3bv requires the Complainant to describe the grounds of the complaint, including the Rights it asserts and why the Domain Name should be considered to be an Abusive Registration. A Reply submitted under paragraph 6 of the Procedure should then merely reply to matters raised by the Respondent which have not been pre-empted in the Complaint.

In this case, the Complainant filed a very short Complaint. Although it was asserted that the Complainant had relevant Rights, no explanation was given as to what these were. The only basis on which the Domain Name was said to be an Abusive Registration was one which the Complainant does not appear to have believed and was without any foundation. In fact, the person filing the Complaint appears to have treated it rather as a preliminary enquiry, the main paragraph ending, “We would like to file a complain (sic.) against Mr Gibbs and be told what our rights are relating to stopping this website and obtain the name for ourselves. Many thanks”.

Therefore the Complaint did not comply with the requirements of paragraph 3. On the other hand, the Reply set out at length the Rights relied on, gave a full explanation of why the Domain Name was said to be an Abusive Registration (not including the reason originally given) and attached documents in support. In other words, it did everything that the Complaint should have done, going much further than replying to the Respondent’s response to the Complaint, as envisaged by paragraph 6.

In addition, whereas the Complaint had given the Complainant’s name as First National Telecom Limited, the Reply stated “Complainant is First National Telecom Services Limited”, without explaining whether this was a different company from the first, or simply a typographical correction of the original party. The file reveals that First National Telecom Limited does exist (though has been dormant for some time), but it is also clear from the exhibited trade marks records that First National Telecom Services Limited owns the trade marks relied on in this dispute and is based at the same address as that given in the Complaint. The companies are clearly both in the same group and I have proceeded on the basis that the initial Complaint was careless as to the correct denomination of the Complainant and that this should have been given as First National Telecom Services Limited. The Respondent is likely to have assumed this, since this company is his former employer.

Before reaching my decision on the other deficiencies in the documents and procedure, I took into account both the decision in superhighway.co.uk (DRS 01063) in which the Expert found the deficiencies in the Complainant’s Complaint were such as to prevent him from determining whether or not relevant rights existed and who owned them, and the appeal decision in bravissimo.co.uk (DRS 01295) in which a Complainant who had previously brought unsuccessful DRS proceedings was not allowed a second bite of the cherry by bringing new proceedings against the same Respondent, but with additional evidence which it could have relied on first time round. In superhighway.co.uk, the Complainant did not remedy the defects in its Complaint at the Reply stage, which is what the Complainant has done here. And this case is different from bravissimo.co.uk because the Complainant has taken its “second bite” within the context of the original proceedings.

Having distinguished those two cases, and with some hesitance, I concluded that I should accept the Reply, in large part as if it were the Complaint, and that the Respondent had to be given the opportunity to respond to it. This has led to a delay which should not have occurred. In being flexible as to the form of the documents in this case, I do not intend to set a precedent for other cases where the Complainant fails to comply with procedural requirements. For the DRS to fulfil its purpose of providing a relatively inexpensive, quick and efficient procedure for resolving domain name disputes, it is important that parties comply with the DRS Procedure. The more that parties fail to do so, the less effective the system will be, which will lead to the experts becoming less tolerant and flexible in their approach.

In this case, I do not believe that the Respondent has been unfairly prejudiced by the procedural deficiencies, whereas I do believe that the Complainant would be unfairly prejudiced by having its case rejected for its failure to observe the formal requirements in relation to its submissions.

The Complainant is a telecommunications company incorporated on 20 February 1998, which since 2003 has been a retail arm of the Wavecrest group. Wavecrest is Europe’s largest wholesale voice carrier and the Complainant is the UK market leader in prepaid calling cards. One of the Complainant’s products is called FIRST NATIONAL. The Complainant operates a website found at the web address www.fntele.com, which it has operated since registering the domain name fntele.com on 13 June 2001.

The Respondent is an individual who was an employee of the Complainant and its predecessor in business between 17 April 2000 and 2 July 2003. His Contract of Employment described him as an Account Executive. On 6 December 2002, the Complainant wrote to the Respondent, requesting that he attend a formal hearing to discuss his performance at work. At the meeting on 12 December 2002, the Complainant expressed dissatisfaction with the Respondent’s performance at work and the Respondent expressed dissatisfaction with his working conditions. The Respondent was given a “formal verbal warning” by the Complainant.

Matters clearly did not improve over the next 6 months. The Complainant wrote to the Respondent again on 16 June 2003, requesting another formal hearing. This took place on 2 July 2003. The Respondent presented a letter of resignation at the meeting, listing points of discontentment with his working conditions, which were responded to by the Complainant at the hearing. By a letter dated 18 July 2003, the Complainant confirmed to the Respondent that the contract between them had terminated on 2 July 2003. For the purpose of this case, it does not matter whether the Respondent resigned or was sacked from his job with the Complainant.

The Registrant registered the Domain Name on 28 March 2003, while still employed by the Complainant. The Domain Name resolves to a website at www.fntele.co.uk, the home page of which welcomes the visitor to “Foreign National Teledating” and then invites people to “click here for Russian dating”. Anyone who does this is then led to a website at www.russiandating.co.uk for what is said will be a UK-based international dating service. The site indicates that it is under construction.

In August 2003, the Complainant complained to the Respondent by telephone and e-mail about his registration of the Domain Name. The Respondent refused to surrender it.

(1) It is the registered proprietor of three UK and Community trade marks for the words FIRST NATIONAL, either on their own or as part of a logo, registered in relation to various products and services relating to telecommunications among other things.

(2) It has used the name FIRST NATIONAL TELECOM SERVICES since around 1998 and the abbreviation FNTELE since before 2001 and has thereby built up a substantial goodwill and reputation in these marks in the telecommunications sector.

(4) The Complainant registered the domain name fntele.com on 13 June 2001 and has operated a website by reference to the domain name fntele.com since then, and all its employees’ e-mail addresses take the form name@fntele.com.

(5) The Complainant and its related companies have registered many other domain names starting with “firstnational” or “fn”, the latter including fncard.co.uk, fncard.com, fncard.net, fntele.biz and fntele.ie.

(6) As a consequence of the above uses of names incorporating the words FIRST NATIONAL, FNTELE and the prefix FN-, the Complainant has acquired rights enforceable under the English law of passing off by virtue of the substantial goodwill and reputation it has acquired.

(7) The Domain Name is identical to the unregistered trade mark FNTELE and is similar to the registered and unregistered trade marks listed above, being a common abbreviation of the company name FIRST NATIONAL TELECOM SERVICES.

(8) The Respondent has registered the Domain Name as a blocking registration against the relevant marks of the Complainant in that:

· the Complainant had a legitimate interest in registering the domain name, in the light of its registered and unregistered trade marks cited above, and in particular the fntele.com domain name;

· the Respondent was at the date of registration of the Domain Name an employee of the Complainant and it therefore would have been obvious to him that the Complainant, as a UK-registered company, could wish to register the Domain Name;

· the Respondent was involved in disciplinary proceedings in the months before leaving his job with the Complainant;

· in the absence of any other reason for or genuine interest in registering the Domain Name, the Respondent registered it knowing or intending that it would prevent the Complainant from doing so.

(9) The Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant’s business. There is little evidence that any business connected to the Respondent uses or intended at the date of registration of the Domain Name to use the name FNTELE. The initial webpage at www.fntele.co.uk is quickly replaced by the “main” page at www.russiandating.co.uk, which contains no reference to “Foreign National Dating” and the website at the latter address is said to be under construction.

As mentioned above, in the initial Complaint, the Complainant also asserted that the Respondent was “trying to sell [fntele.co.uk] to our company”. It appears from the full version of the Complainant’s grounds for complaint set out in the Reply that it may not be pressing this point. However, it has not retracted the statement, which was the initial basis for arguing that the Domain Name was an Abusive Registration.

(1) He registered the domain name fntele.co.uk and three similar domain names (which are not identified) for an international teledating business owned by a company called CPAV Ltd in January 2003. (In fact, the WHOIS search shows the correct date to be 23 March 2003.)

(2) He denies that he/CPAV Ltd ever approached the Complainant or attempted to sell the Domain Name (or the other domain names which are not in issue in these proceedings) to them.

(3) In August 2003 the Complainant’s Sales Director called the Respondent and said that they would take legal proceedings against the Respondent/CPAV Ltd if they did not sell or transfer the domain name to them.

(4) He had absolutely no intention to obtain the Domain Name for malicious reasons. He owns two other variations of the domain name (again, not identified) which are an integral part of his business.

(5) He accepts that the Domain Name is used for a developing business, but he still wishes to retain the name and resist the Complainant’s attempts to have it transferred.

Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
i he 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 (as defined in paragraph 1 of the Policy).

Under paragraph 1 of the Policy, “Rights includes, but is not limited to, rights enforceable under English law”.

The Complainant’s registered trade marks relied on are all for the words FIRST NATIONAL, either on their own or together with a figurative device. Although the letters “fn” in fntele.co.uk are an abbreviation for the name FIRST NATIONAL, that is not in my view sufficient to establish similarity of any of the registered trade marks with the word element of the domain name, “fntele”.

On the other hand, the Complainant’s evidence does establish the use of the abbreviation FN- for First National and in particular the on-line use of “fntele” as part of three domain names, including the one which indicates the address of its main website, i.e. www.fntele.com, since at least some time in 2001 in connection with a substantial telecommunications business. Anyone who accesses the Complainant’s website will see that the e-mail given for its sales department is sales@fntele.com and that for customer services is customerservices@fntele.com. Employees of the Complainant have e-mail addresses, name@fntele.com. Consequently, the Complainant has built up a reputation in the name “fntele”, which has contributed to the goodwill of its business and which may be enforceable in a passing off action in the UK.

I therefore conclude that the Complainant has Rights in respect of the name FNTELE which is identical to the Domain Name (ignoring the suffix .co.uk, which I have to do).

"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."

I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.

Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are brought into play by the Complainant are all set out in 3ai, as follows:

“3ai: Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

A. primarily for the purposes of selling....the Domain Name to the Complainant ..., for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B. as a blocking registration against a name or mark in which the Complainant has Rights; or

C. primarily for the purpose of unfairly disrupting the business of the Complainant."

On the other hand, paragraph 4 of the Policy sets out a non-exhaustive list of factors on which the Respondent can rely to show that the Domain Name is not an Abusive Registration, of which the following may be relevant in this case:

“4aiA: Before being informed of the Complainant’s dispute, the Respondent has used or made demonstrable preparations to use the Domain Name…in connection with a genuine offering of goods or services;

4aii: The Domain Name is generic or descriptive and the Respondent is making fair use of it.”

So far as paragraph 3a1A is concerned, there is no evidence beyond the mere assertion in the initial Complaint that the Respondent tried to sell the Domain Name to the Complainant. The Respondent denies this, and the overall facts and circumstances support his denial. (If the Complainant did not intend to pursue this allegation, as I suspect to be the case, it should have made that clear in the Reply.)

Before considering the other two contentions of the Complainant, I turn to the circumstances of the Respondent’s adoption of the Domain Name. Although he does not expressly state it, there is an obvious inference to be drawn that it is an abbreviation for the name “Foreign National Teledating” which appears on his website and therefore the Respondent would say that the Domain Name is descriptive of his proposed teledating service.

However, at the time that the Respondent registered the Domain Name and started using the name “Foreign National Teledating”, he had been an employee of the Complainant for almost three years. He would have been well aware of the common abbreviation of the Complainant’s name from FIRST NATIONAL to FN-, of the fact that the Complainant operated a website at the web address www.fntele.com, and that e-mail addresses for people and departments at the company were name@fntele.com. Accordingly, he would have been aware of the Complainant’s rights in the name FNTELE and it should have been obvious to him that the Complainant might wish to use the domain name fntele.co.uk, or at the least to stop other people from doing so.

The fact that the Respondent was in between disciplinary hearings about his work at the Complainant and was disgruntled with his job highlights the possibility that his intention in adopting the name Foreign National Teledating was to give himself a spurious “reason” for choosing “fntele” as the word element of a domain name.

It is not clear whether or not the Respondent genuinely intends to proceed with an internet dating business, though – despite having had two opportunities to do so by way of response – he has presented no evidence as to his business plans or those of CPAV Ltd. Although I have no company details for CPAV Ltd, I note that the Respondent purported to respond to the Complaint in the name of Couch Potato Audio Video Ltd, giving his home address as that for the company. I draw the inference from this that the Respondent is closely associated with the company which he alleges owns the proposed teledating business. I have concluded that, even if his business intentions are genuine, the Respondent’s aim in adopting the Domain Name was to block the Complainant from holding or using the Domain Name itself and/or to disrupt the Complainant’s business.

I find that the Complainant has Rights in respect of a name which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Domain Name fntele.co.uk should be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> First National Telecom Services Ltd -v- Gibbs [2004] DRS 1642 (14 June 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1642.html Cite as: [2004] DRS 1642