World's Fair Ltd -v- Harper [2004] DRS 1897 (20 September 2004)

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The Complaint was lodged with Nominet on 16th July 2004. Nominet validated the Complaint and notified the Respondent of the Complaint on 21st July 2004. The Respondent was advised that he had until 12th August 2004 to respond to the Complaint. A Response was received by Nominet on 12th August 2004. The Complainant was advised by Nominet that it had until 19th August 2004 to file any Reply, but did not do so.

Nominet initiated its mediation procedure on 23rd August 2004. Although the Informal Mediation stage was due to finish on 10th September 2004, Nominet wrote to the Complainant and the Respondent on 1st September 2004, notifying the parties that mediation had been unsuccessful, and that provided the Complainant paid the appropriate fee by 15th September 2004, Nominet would refer the case to an independent expert for a decision. The reason for curtailing the period of informal mediation has not been explained to the Expert.

The Complainant duly paid the fees on 6th September 2004. On 13th September 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 13th September 2004.

The Complainant is a company which appears originally to have been incorporated in 1911. It carries on the business of publishing newspapers, journals and periodicals. Those publications include titles such as "Facilities Management UK", "Football and Stadium Management", "The World's Fair" and others. It appears that the Complainant has also published a magazine entitled "IS Opportunities" since March 2001. The Complainant says that the name IS Opportunities has been used as the name of a magazine since 1994, and that the Complainant purchased the title from its previous owner in March 2001. Unfortunately, the Complainant does not exhibit a copy of the magazine in question. Instead it only attaches to its Complaint two pages from an edition in August 2000, including the front cover of the magazine which describes itself as a "magazine for IT sales and marketing professionals".

The Respondent, Richard Harper, is a Director and principal shareholder of a company called IS Opportunities Limited. This company appears to have been incorporated on 31st July 2000, under the name "My-car.com Limited", and changed its name to the present name on 8th February 2001. Its website describes itself as "the recruiters of choice for the software industry", and the Response filed claims that IS Opportunities Limited is a recruitment consultancy dealing mainly, but not exclusively, in vacancies within the software and life sciences sectors of the UK and European markets.

The Domain Name was registered by the Respondent on 15th January 2001. The Response claims that the website at the address www.isopportunities.co.uk is used exclusively to promote IS Opportunities Limited and for advertising vacancies which it has received specific instructions to fulfil, and as an information platform about that company.

The website currently contains a disclaimer on every page, which reads as follows:-

It would appear that the Respondent had some previous connection with the magazine IS Opportunities. The Response itself claims that Mr Harper was the founder of the magazine in March 1994, and ran the company that launched the title and oversaw the production for the first 45 issues before selling the title and subscription lists, but no trademark, to Ballentyne Ross plc. in December 1997. That sale appears to have been accompanied by a non-competition undertaking imposed on the vendor relating to either launch of another magazine title or promotion of an internet advertising job board, which lasted for a period of three years, expiring on 13th December 2000.

The Response says that the Respondent understands that the magazine IS Opportunities changed hands several times from 1997 through to March 2001, when it was acquired by the Complainant. The Complaint itself, however, merely refers to the acquisition of the title "from its previous owner" in March 2001.

The Complainant asserts that the Respondent placed several adverts for a company called HB Associates Limited, in the IS Opportunities magazine, in August 2000 and March 2001. There is no evidence provided in relation to the former. In relation to the latter there is an order form produced which seems to be for IS Opportunities, and which on the face of it bears Mr Harper's signature on behalf of HB Associates, dated 3rd March 2001. The Respondent claims that is not his signature (and says that he has referred what he describes as a "forgery" to the police) but does not specifically deny or confirm whether HB Associates did in fact place advertisements in IS Opportunities during this period. The Complaint attaches a company search report which suggests that Mr Harper is a Director of a company now known as HB Associates (Evesham) Limited.

The Complainant does not produce any evidence of a registered trademark, and asserts instead (without evidence) that it has been producing the magazine IS Opportunities since March 2001. No details are given as to turnover or sales.

The Complainant argues that, by placing the advertisements in August 2000 and March 2001, the Respondent knew of the existence of the trademark "IS Opportunities". The Complainant also produces evidence of supposed confusion, in the form of one truncated e-mail to it from what appears to be a recruitment agency which competes with IS Opportunities Limited, from 21st June 2004, asking whether the "recruitment company IS Opportunities and Richard Harper have anything to do with your IS Opportunities magazine and are they part of the same group?" The response to that e-mail which is also exhibited, confirms that there is no link, but adds that "up until this morning I was not aware that there was a recruitment company with this name."

The Respondent effectively admits that he was aware of the publication IS Opportunities, because of his previous involvement in establishing the title. However, although the Respondent has clearly taken a decision to use the name IS Opportunities Limited in early 2001, and to acquire the Domain Name for the purpose of promoting that company, the decision to do so is largely unexplained (although the Response refers to IS being an equivalent for the "Information Systems" sector).

Although the Respondent takes issue with the relevance of any advertisements prior to the purchase of the title by the Complainant, and as to the genuineness of the document produced in relation to the supposed advertisement booked in March 2001, he does not deny knowledge of the IS Opportunities title (nor could he sensibly do so, in the light of his previous involvement).

As regards the claim to recent confusion, the Respondent notes that the advertiser in question is a competing recruitment company, who has placed a substantial amount of advertising in recent issues of the IS Opportunities magazine, and therefore the Respondent does not accept that this is "unbiased evidence", and says that it should be "dismissed".

The Respondent relies heavily upon the disclaimer on its website (referred to at 5.4 above), and on the fact that, as a recruitment company, it is not a publisher of a magazine, and operates in a different market sector.

For the Complainant to succeed according to paragraph 2 of the Nominet Dispute Resolution Service Policy ("the Policy"), the Complainant must prove to the Expert on the balance of probability both of the two elements set out in paragraph 2.a of the Policy, namely that:-

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".

The parties' respective submissions do not deal in any detail with the Complainant's Rights under the Policy. However, the Respondent does not appear to dispute that the Complainant has produced and sold the magazine IS Opportunities since March 2001, and irrespective of whether in doing so it inherited the goodwill of previous owners, is seems to the Expert to be sufficient for the purposes of the Policy to conclude that the Complainant has Rights in the name or mark "IS Opportunities".

The Domain Name is identical to the name IS Opportunities, and in the circumstances the Expert concludes that the Complainant has established that it has Rights within the meaning of paragraph 2 of the Policy.

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. The Complainant does not address itself to any of the non-exhaustive list of factors. However, given that the Complainant has referred firstly to the fact that the Respondent knew of the IS Opportunities name at the time it acquired the Domain Name, and secondly that he is currently causing confusion, it seems to the Expert that the two potentially relevant factors are as follows:-

The former of these appears to the Expert not to be made out at all. Knowledge of the existence of the magazine IS Opportunities does not equate to an intention on the part of the Respondent to register the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant. Indeed, although there is comparatively little evidence provided by either side, it seems to the Expert that the Domain Name was registered and has been used for the purposes of a recruitment agency since early 2001, which (as the Respondent asserts) is different from magazine publishing even if the latter does include advertisements from recruitment agencies.

As regards the latter, and the allegation of "confusion", the evidence is less than convincing. If there is indeed only one instance of arguable confusion in 3 1/2 years of use of the Domain Name (which the Complainant's own evidence seems to suggest), then that hardly indicates that there has been a substantial degree of confusion. The presence of the disclaimer on each page of the website could perhaps be taken to be an acknowledgment of the possibility of confusion, but at the same time, it may be difficult to criticise the Respondent for trying to make the position clear.

The Expert also notes that in paragraph 4 of the Policy there is a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. Those include (in paragraph 4.a.i.A of the Policy) the following: "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."

Although there are a number of aspects of the background to this matter which are not fully explained by the parties' evidence, it seems to the Expert that the Respondent has probably decided to use the relatively descriptive name IS Opportunities, once he was free of his restrictive covenants after the sale of the business in 1997, to set up a business operating in the same market sector, but substantially different from the business of magazine publishing, to offer services (namely recruitment consultancy), without intending to trade upon the goodwill of the magazine, or in such a way as to cause confusion. The Complainant does not suggest what ulterior motive there may have been on the part of the Respondent. The Respondent therefore would succeed in showing, firstly, that his use of the Domain Name is not intended to confuse people or business into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant, and secondly that he had made use of the Domain Name in connection with a genuine offering of goods or services for some 3 1/2 years, before being informed of the Complainant's dispute. Neither party's evidence or submissions are particularly compelling, but the onus is upon the Complainant to prove to the Expert that, on the balance of probabilities, the Domain Name, in the hands of the Respondent is an Abusive Registration. The Expert concludes that it has failed to do so, and therefore rejects the Complaint.

The Expert finds that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name. However, the Expert decides that the Domain Name is not an Abusive Registration in the hands of the Respondent and therefore makes no order.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> World's Fair Ltd -v- Harper [2004] DRS 1897 (20 September 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1897.html Cite as: [2004] DRS 1897

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