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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Mortgage Point Ltd v Homemakers [2004] DRS 1784 (16 August 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1784.html Cite as: [2004] DRS 1784 |
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Nominet UK Dispute Resolution Service
DRS 01784
The Mortgage Point Limited v. Homemakers
Decision of Independent Expert
Parties:
Complainant: The Mortgage Point Limited
Country: GB
Respondent: Homemakers
Country: GB
Domain Name
Mortgage-point.co.uk ("the Domain Name").
Procedural Background
Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure ("the Policy" and "the Procedure" respectively).
Briefly, the procedural steps in this dispute are that Nominet received the Complaint on 25 May 2004, validated it and sent it to the Respondent on the 27th . The Response was received by Nominet on 18 June 2004 and sent to the Complainant on the 21st. In accordance with paragraph 5(d) of the Procedure, both parties were advised on 20 July 2004, that the dispute would be referred to an independent expert on payment of the requisite fees within the specified time period and those fees were received by Nominet on 28 July 2004.
Confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I was appointed as the independent expert in this dispute on 4 August 2004.
Outstanding Formal/Procedural Issues
There is one procedural issue that I need to deal with, and that is an additional submission by the Complainant. It is additional or 'non-standard' in the sense that it was provided to Nominet on 28 July 2004, under cover of a letter dated the 26th, and is a letter from Radio City of Liverpool to the Complainant dated 23 July 2004. I will refer to it as the Radio Letter. Paragraph 13 of the Procedure allows an expert to consider additional submissions at their discretion, although they are discouraged in the interests of the speed and simplicity of the DRS. In this case however, the Radio Letter was provided to Nominet within the period stipulated in paragraph 6(a) of the Procedure for the Complainant to submit a Reply and, although it is tendered as evidence in support of the Complaint rather than in reply to the Response, I will allow the Radio Letter.
The Facts
The Complainant is a limited liability company and its registered name is 'The Mortgage Point Limited' ("the Company Name"). It has been registered under that name since 18 December 1985. It has its offices at Mortgage Point House in Salford, Lancashire. It is a mortgage broker. In 1998, the Complainant registered the domain name, www.mortgagepoint.co.uk ("the Complainant's domain name"), at which it has its website. The Company Name and the Complainant's domain name, where referred to together, will be described as "the Complainant's Names."
The Respondent says it has been trading under the name Homemakers Mortgage Point since July 1992. It also provides services as a mortgage broker. It is based in Runcon, Cheshire, and says it is well known there and in Widnes. The Whois search, provided to me by Nominet, shows that the Respondent registered the Domain Name on 2 July 1999. The Respondent has its website at www.moneysavers.online.com and I have been provided with a copy of a page, printed from that site, on 27 May 2004.
The Parties' Contentions
Complainant
The Complainant says the Respondent is trying to pass itself off as the Complainant and is using the Domain Name to direct traffic to its website at www.moneysaversonline.com. The Complainant says that it has been established for 20 years and has had the Complainant's domain name since 1998. The Complainant also says that it advertises extensively in the area and has done so for 20 years, including on the Liverpool radio station, Radio City, and relies on the Radio Letter. The Complainant seeks the transfer of the Domain Name or alternatively, its cancellation.
Respondent
The Respondent says as follows (I have substantially retained the Respondent's own words below):
Discussion and Findings
General
The DRS is designed as a fast, simple alternative to litigation. Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy.
Paragraph 2(a) of the Policy requires the Complainant to prove 2 elements:
"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."
The Complainant bears the onus of proof and must prove both elements on the balance of probabilities.
The DRS's jurisdiction is limited to these issues and the remedies of cancellation, suspension, transfer or amendment of the Domain Name. It follows that the Policy does not provide for the determination of allegations of trade mark infringement or passing-off. Those are matters for a court of competent jurisdiction.
Complainant's Rights
The first of the 2 elements in paragraph 2(a) of the Policy requires the Complainant to establish that it has Rights in respect of a name or mark identical or similar to the Domain Name. Rights are defined by the Policy as follows:
"includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."
To determine whether the Complainant has Rights we are therefore entitled to refer to legal principles and authorities of English law, although such authorities are persuasive and not binding and there is not a particularly high threshold for establishing rights under the Policy (appeal panel in Seiko v Designer Time DRS 00248).
Nature of the Rights
The Complainant claims Rights in the Company Name and it is not in dispute that the Complainant is the registered owner of that name. In law however, the incorporation of a company under a particular name does no more than block others from registering the same name with the Registrar of Companies. Registration of a company name, does not, of itself, prevent others from using that name in business. See Active Web Solutions v. Peter Shaw DRS 00228. While registered trade marks confer exclusive rights and the ability to prevent use by others without consent, the Complainant has not registered the Company Name or the Complainant's domain name as a trade mark.
Actual use of a name in trade however may create rights protected by the common law cause of action for passing off. As already noted, the DRS does not determine passing-off claims and we are only concerned here with the existence of rights protected by the law of passing-off. The basic principle of passing-off is that a man should not sell his goods (or services) under the pretence that they are the goods (or services) of another, Warnick (Erven) Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd [1980] RPC 31 HL, and in order to succeed in a passing-off claim, a Complainant must prove the classic trinity of goodwill, misrepresentation and damage, Reckitt & Colman Products Limited v Borden Inc [1990] 1 All ER 873. The thing protected in passing-off, and therefore under the Policy, is the goodwill of the business in question, namely "the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom" IRC v Muller & Co's Margarine Ltd [1901] AC 217, 223-224. The Complainant relies on its use of the Company Name as a trade name over a 20-year period and also its use of the Complainant's domain name since 1998, and its case is that it can protect the goodwill arising from that use in passing-off.
The definition of Rights in the Policy provides that Complainants are unable to rely on Rights in names which are wholly descriptive of their businesses. Businesses choosing names made up of ordinary words in common use that describe the goods and services sold, do not get a monopoly in that name, even after lengthy use. By choosing a descriptive name then, a trader takes the risk of confusion and small differences in the names will generally be accepted as adequate to avoid confusion, Office Cleaning Services Ltd v. Westminster and Windows (trading as Office Cleaners Association) (1946) 63 RPC 39 HL. Whether a name is descriptive is a question of degree in each case and the name or term must be considered on a spectrum, with purely descriptive names at one end and individual, idiosyncratic or unique names at the other. I cannot improve on the example given by Mr Justice Neuberger, in Smith v. Beds Direct, EWHC (Chancery Division), Unreported, Bristol Registry, 14 December 2001, where he said, "One end of the spectrum would be selling soap under the name "soap"; the other end of the spectrum would be selling soap under some wholly fancy name, such as "Flash". It would, to all intents and purposes, be impossible for a business to establish a claim in passing off, if his case simply was that he sold soap under the name 'soap', and the Defendant was doing the same thing... "
Even names at the Soap end can sometimes be protected where, through use, the name has acquired a secondary meaning by becoming so closely associated with a particular trader, so that the goodwill for the trinity can be established. Similarly, the fact that others use a name, while raising the hurdle, is not a complete bar to a claim in passing-off, again, provided the classic trinity can be made out, Parker & Son (Reading) Limited v Parker [1965] RPC (where although there was more than one estate agent trading in Reading under the name Parker, the court did not regard that as relevant to the plaintiff's application to stop the defendant from using it).
In this case the Complainant's Names lean towards the middle of the spectrum between Soap and Flash, perhaps slightly closer to the Soap end. The use of the definite article, 'the,' in the Company Name helps to further distinguish it. In addition, the Complainant has used the Company Name over a long period in its advertising (The Radio Letter supports this), and although it has not submitted evidence from consumers or members of the public, I am satisfied that the Complainant has an arguable case that it has goodwill that it could protect in passing-off. This is sufficient at this stage of the analysis under the Policy.
Finally, there is the issue of similarity. Are the Complainant's Names identical or similar to the Domain Name? In determining similarity, suffixes are to be ignored (appeal panel in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359), as are hyphens (appeal panel in Hanna-Barbera v Graeme Hay DRS 00389). The 'www' abbreviation should also be ignored. Therefore, in terms of the Company Name and the Domain Name, our comparison is between 'the mortgage point' and 'mortgage point.' They are unquestionably similar. In terms of the two domain names, the comparison is mortgagepoint and mortgage point, assuming we replace the hyphen with a space, and if not, then we have mortgagepoint and mortgagepoint, which are identical.
I find that the Domain Name is both identical and similar to names in which the Complainant has Rights.
Abusive Registration
Complainant's burden
The second element the Complainant must prove is that the Domain Name is an Abusive Registration. That is defined in paragraph 1 of the Policy as a registration or subsequent use that "took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
Paragraph 3 of the Policy provides a non-exhaustive, illustrative, list of factors which may evidence an Abusive Registration; while paragraph 4 provides a similarly non-exhaustive, illustrative, list of factors, which may be evidence to the contrary. It should be kept in mind that the Complainant bears the initial burden of proof on Abusive Registration.
The Complainant has not specified which of the factors in paragraph 3 of the Policy it relies on, however only two can be relevant and they are the following:
3ai. Circumstances indicating that the Respondent has registered or
otherwise acquired the Domain Name:.........................
C. primarily for the purpose of unfairly disrupting the business
of the Complainant;
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;
Unfair disruption
Unfair disruption has its ordinary meaning. In essence, factor 3aiC asks whether the Respondent chose the Domain Name with the main intention of disrupting the Complainant's business, other than by honest competition. The key words in 3aiC are "primarily for the purposes." Accordingly, the Respondent's subjective intention at the point of registration is relevant.
The Respondent has not made any statement about its intentions when it registered the Domain Name in July 1999. Indeed, the Respondent makes no statement as to whether it was aware of the existence of the Complainant prior to this dispute. The lack of such a disclaimer is, to my mind, significant, given their common trade and proximity. Rather, the Respondent defends its choice of the Domain Name on the basis that it is a common phrase used by the mortgage broking trade (paragraph 9 (a)). It also points out that the Complainant did not purchase all of the available domain names (paragraphs 9(a) and (c)).
The Complainant relies on the Radio Letter which reads:
"I was extremely surprised to hear that a company with a similar trading name as yourself has launched a web site Mortgage-Point.Co.Uk based in Runcorn. As a continual weekly advertiser on our Radio Station 96.7FM for over 20 years I can understand your concerns that our listeners may very well log onto your competitor's website thinking it may be your company. I would support your claim that this will be confusing to people who are aware of the Mortgage Point."
That is, at best, an opinion about the likelihood of confusion. However, where names are identical or very similar, the likelihood of confusion of the public may be so high, that the choice of the Domain Name by a competitor in a similar geographic area, may, on an objective basis, render an intention to disrupt, more likely than not.
Looking at the Respondent's intent on an objective basis, we cannot know whether the Respondent had heard the Complainant's radio advertisements; however even if the Respondent's choice of the Domain Name was entirely coincidental, when it went to research the available versions of the name in July 1999, it must have become aware of the Complainant's domain name. I therefore find that it is more likely than not that the Respondent was aware of the Complainant when it registered the Domain Name. The Complainant's failure to register all versions of the name is not relevant. Further, given the similarity, their common trade and proximity, I find it more likely than not that the Respondent intended to disrupt the Complainant's business by diverting internet traffic to its own site. This factor has therefore been made out.
Confusion
29. The key words here are "which has confused people......." This requires actual confusion (see Seiko., Id.) preferably proved by evidence such as letters from the people confused. The Radio Letter is not evidence of anyone being confused. While evidence of actual confusion can be notoriously difficult to obtain, the Complainant has not discharged its burden in relation to this factor.
Respondent's burden
The Respondent also does not specify which of the factors in paragraph 4 it relies upon to demonstrate that the Domain Name is not an Abusive Registration; however its points can be broadly allocated to the following factors:
4ai. Before being informed of the Complainant's dispute, the
Respondent has:.........
A. used or made demonstrable preparations to use the Domain Name
or a Domain Name which is similar to the Domain Name in connection
with a genuine offering of goods or services;
B. been commonly known by the name or legitimately connected with
a mark which is identical or similar to the Domain Name;.......
ii. The Domain Name is generic or descriptive and the Respondent
is making fair use of it.
Genuine offering
The Respondent says in paragraph 9(b) above, that it has used the Domain Name for approximately 5 to 6 years. The Whois search shows that it registered the Domain Name in July 1999. As I noted above, I was provided with a printed copy of the Respondent's website at www.moneysavers.online.com. I have checked this myself and can confirm that on entering the Domain Name into the search engine, I was directed to www.moneysavers.online.com. I can also confirm that at the moneysavers site, the Respondent offers mortgage related services.
There is no question then that genuine services are offered at www.moneysavers.online.com, however I do not think that paragraph 4aiA of the Policy was intended to encompass situations where the Domain Name is linked or directed to another site altogether and is not used independently. Other experts have taken a similar view, e.g. Truck n' Trolley Ltd v. Eastern Storage Equipment Ltd DRS 00468. The Respondent has therefore not made out this factor.
Commonly known by the name
Paragraph 4aiB is applicable to situations where the Domain Name is identical or similar to a Respondent's own name or where a Respondent has some other claim to use it, such as a contractual or other right. In such cases, a Respondent may have its own claim to Rights in the name, including Rights protected by the law of passing-off, and that can negate any suggestion of 'abusive' intent by a Respondent in the selection of the Domain Name.
Indeed, the Respondent asserts that it has Rights in the name arising from its use, see paragraph 9(a), (d) and (e) above, and would be able to bring its own claim against the Complainant for passing-off, see paragraph 9(g) above. As to the Respondent's assertion that it is commonly known by a name identical or similar to the Domain Name, its case is unclear. Firstly, at www.moneysavers.online.com, the Respondent gives its name as Money Savers Online. At paragraph 9(e) above, it says, "the name 'Homemakers' is very well known in Runcorn and Widnes." This rather suggests that the Respondent has traded under the name Homemakers and that it is by that name that it is well known. However at paragraph 9(d), it says "the Respondent has been trading in Runcorn since July 1992 as Homemakers Mortgage Point." I am unable to reconcile these contradictory statements. The Respondent does not say whether it is a registered company, but if so, its registered company name would have been highly relevant.
In paragraph 9(b) above, the Respondent says it has "advertised locally as Homemakers Mortgage Point," while in paragraph 9(e) it says that it "does not need to advertise" but may do so in the future. No copies of any advertisements were submitted.
It does seem however that the Respondent does not trade under 'mortgage point' in an unqualified way; rather it uses that phrase together with and qualified by Homemakers and/or moneysavers. In my view it is not clear that it is commonly known by a sufficiently similar or identical name to the Domain Name and I find that the Respondent has failed to make out this factor.
Generic or descriptive
In paragraph 9(a) above, the Respondent asserts that others in the mortgage trade, including itself, use the name or term 'mortgage point.' The result, the Respondent argues, is that the Complainant cannot claim exclusive rights as against other mortgage brokers, paragraph 9(f).
This is similar to the issue of descriptiveness discussed above in relation to Rights. Factor 4aii is slightly wider however and relates here to a lack of likely 'abusive' intent where a name is descriptive or generic, as others in the trade will have honest and genuine reasons for using the name to describe their goods or services.
Factor 4aii extends beyond merely descriptive names and encompasses generic domain names. The Oxford Dictionary gives the following definition of generic "adj.1. characteristic of or relating to a class; general, not specific or special...(the second meaning relates to biology and is not relevant here). 3 (of goods, esp. a drug) having no trade or brand name." Generic names are usually common nouns for things such as violin or aspirin or linoleum. They are generic because the public does not associate them with any particular source of the product, but rather, as designating the product itself. Mortgage on its own is clearly generic, as is Point. Used together however, as a phrase or term, they have an element of linguistic invention and this is strengthened by the use of the definite article.
Again, I turn to the words of Mr. Justice Neuberger in Beds Direct, Id, ""BEDS DIRECT" as a mark is closer to the "soap end" of the spectrum than to the "Flash end". It is not by any means an arbitrary or wholly fancy mark, and it can be said to have a substantial descriptive aspect. Nonetheless, as a mark it is significantly further from the "soap end" in relation to the goods and services which the Claimants supply, than was "Office Cleaning Services" in relation to the services supplied by the Appellants in the Office Cleaning case. "Office cleaning services" is a complete description, which could be used in normal speech by a member of the public, to identify precisely the services which were being supplied by the Appellant in that case." I take a similar view of 'mortgage point.'
I find that the Respondent has not made out this factor.
Decision
Taking all of the circumstances of this dispute into account, I find that the Complainant has Rights in respect of names which are identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration. Accordingly, I direct that the Domain Name be transferred to the Complainant.
Victoria McEvedy
16 August 2004
