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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Archways Properties v Diamond Properties [2005] DRS 2817 (11 October 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2817.html Cite as: [2005] DRS 2817 |
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Nominet UK Dispute Resolution Service
DRS 02817
Archways Properties v. Diamond Properties
Decision of Independent Expert
Complainant: Archways Properties
Country: GB
Respondent: Diamond Properties
Country: GB
The domain name in dispute is archwaysproperties.co.uk ("the Domain Name").
The Complaint was received in full (including annexes) by Nominet on 26 July 2005. Nominet validated the Complaint and sent a copy to the Respondent on 28 July 2005, informing the Respondent that it had until 19 August 2005 to lodge a Response.
A Response was received on 8 August 2005 and forwarded to the Complainant on the same day with an invitation to the Complainant to lodge any Reply by 15 August 2005. A Reply was received on 15 August 2005 and forwarded to the Respondent the next day.
The dispute proceeded to Informal Mediation, which started on 19 August 2005 and ended on 5 September 2005 without an agreement having been reached. On 22 September 2005 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the Nominet UK Dispute Resolution Service ("DRS") Policy ("the Policy").
On 29 September 2005 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.
It will become clear from Section 7 below that the Complainant caused itself difficulty in this case by failing to support most of its factual assertions (apart from its own name and date of incorporation) by documents or evidence from others, with the result that the Respondent did not have to do a great deal to make it impossible for me to decide where the truth lay. The DRS Procedure is speedy and efficient because it can be conducted on paper, without the need for oral witness evidence. However, this means that the Complainant has to go further than bare assertion in a case where his version of events is directly contradicted.
This was also a case where scant regard was paid to the terms of the Policy. This document is intended to assist parties in framing their case, and is ignored at their peril. Again, it is the Complainant who is at most risk from failing to refer to the Policy. Without doing so, the Expert is left to guess at the basis for the Complaint or to do his or her own independent research. Neither is appropriate. The Complainant here did enough to give some clues as to where it thought its Rights lay, and why the Domain Name was an Abusive Registration, and I have gone further than some Experts would in assessing the merits of the case that I was able to infer by reference to the Policy. Others would have thrown the case out because of this deficiency.
These two factors certainly contributed to the Complainant's inability to persuade me of its case to the necessary standard of proof, and I highlight them here in order to warn others of the risks of inadequately explaining and supporting a Complaint under the Policy.
The Complaint has been brought in the name of "Archways Properties", which is the trading name of a property management company, Archways Properties Limited, that was incorporated in England on 24 March 2004 (company no. 508673) and is based in Leeds in West Yorkshire. The Complainant's submissions have been made through Mr Gurjinder Chana.
Prior to its incorporation, the Complainant's properties were managed by the Respondent, which trades under the name "Diamond Properties", also based in Leeds. The Respondent makes its submissions through Mr Mandip Sehmi, who describes its business as a lettings agency. It is unclear whether the Respondent is an individual or an incorporated entity, but that does not matter for the purpose of my decision.
The Respondent registered the Domain Name on 23 April 2004. It currently resolves to the Respondent's trading website at www.diamondproperties.co.uk, but the Respondent says it is in the process of building a specific site to be associated with the Domain Name.
Complainant's Complaint
The Complainant makes the general claims that the Domain Name is identical or similar to a name or mark in which it has Rights and that, in the hands of the Respondent, the Domain Name is an Abusive Registration. It bases these claims on the following facts and assertions:
(1) Prior to its incorporation and opening its own property management office, the Complainant had used the Respondent to manage property on its behalf. The Complainant decided that it would be easier to manage the properties itself, so it terminated the relationship and paid the Respondent a lump sum to cover the commission "for that year". The date when this happened is not explained.
(2) The Complainant was incorporated on 24 March 2004 under the name Archways Properties Limited.
(3) While the Complainant's new office was being renovated, the Complainant displayed its new company logo and name "above the building" as a form of advertisement. No details of the logo are given. Nor are details given of whether the name used was the full company name or trading name, or of how large or prominent the signage was.
(4) When the Complainant opened its office and went to register a domain name for its business, it discovered that the Domain Name had already been registered by the Respondent. According to the WHOIS search, this was done on 23 April 2004, one month after the Complainant company was incorporated.
(5) The Complainant confronted the Respondent about its registration of the Domain Name. The Respondent first denied having registered it, but then admitted it once it was presented with the WHOIS information.
(6) The Complainant subsequently registered the domain name archwaysproperties.com.
(7) Anyone looking for the Complainant on the internet would try www.archwaysproperties.co.uk, which currently leads to the Respondent's website at www.diamondproperties.co.uk. This is taking prospective custom away from the Complainant's business.
Respondent's Response
The Respondent does not frame its Response by reference to the Policy, but states the following:
(1) It is a lettings agency that has been established for almost 10 years.
(2) In early 2004 the Respondent purchased a block of flats in Halifax and decided to expand its business. It decided to have a different name for the 'company' in Halifax from the Diamond Properties name already used in Leeds, because it was aimed at different clientele.
(3) The name Archways Properties was chosen because the Halifax property had large arched entrances. Mr Sehmi started to design a new logo and then also registered the Domain Name for a future internet site to be at www.archwaysproperties.co.uk. This site is being built, and in the meantime the web address diverts to the Respondent's Diamond Properties website.
(4) Mr Chana of the Complainant was a frequent visitor to the Respondent's office at this time, and he asked what the Respondent's plans were for. Mr Sehmi told him. Mr Sehmi was then dismayed to find out that Mr Chana had decided to open a letting agency under the name "Archways Properties".
(5) The Respondent approached the Complainant to discuss the possibility of it changing its name, but Mr Chana refused point blank, on the basis that the companies would not conflict since they were situated in different areas.
(6) Mr Chana has "blatantly lied" in the Complaint. It is very strange that he has done this and has decided to dispute the registration of the Domain Name over a year later.
Complainant's Reply
The Complainant rebuts the Response in two ways, and it is convenient here to use its actual words:
(1) In relation to the allegation that Mr Chana copied the Respondent's idea:
"In response to Diamond Properties statement, which has pointed to accusations that Mr. Chana had copied their idea, we find this to be completely false. The properties that Diamond Properties had purchased in Halifax were never known of by Mr. Chana, and had they have been, there would have been no reason for Mr. Chana to have opened a property letting service with the name. The conversation that Diamond properties had with Mr. Chana regarding the name "Archways Properties" had never happened. The logo and the name were in fact created by myself, Gurjinder Chana, all artwork and prototype drawings for the logo, which are electronically dated, are stored in my possession. These are all available upon request. The name "Archways Properties" was used not because of any properties that we own or manage or because of any resemblance to the structure of a building, but used as it starts with the letter "A" and would appear in first few companies when searched for in alphabetical order in a directory (i.e. Yellow Pages). This has always been our method of naming businesses, as an example Mr Chana also owns and operates AGK Gas Services, which starts with the letter "A"."
(2) And, in order to explain the apparent delay in making this Complaint, the Complainant says:
"At the time when we had confronted Diamond Properties regarding the archwaysproperties.co.uk domain and after the eventual admittance by Mr. Gurdeep Semi of purchasing the archwaysproperties.co.uk domain, he had verbally agreed to pass the domain back to archways properties. We have been waiting since that time for the release and transfer of the domain from Diamond Properties to Archways Properties. Diamond properties have stated in their defence that Archways Properties had not made any attempt to contact Nominet for after a year after they had registered the www.archwaysproperties.co.uk domain. This is true; we had not made any formal complaint until we found that the domain name "archwaysproperties.co.uk" was being forwarded to the "diamondproperties.co.uk" domain name. This was not known by Mr. Chana until it was pointed out to him by a client wanting to access our domain, and had accidentally used .co.uk instead of .com. Upon discovery of this we contacted the Nominet website and started the DRS proceedings. Prior to discovering this we did not realise that the domain was in use, we knew that it had been registered but not that it was in use. We were still waiting for Diamond Properties to transfer the domain to Archway Properties; this has obviously not done and instead is being used to take potential business away from our company. We find this to be highly unprofessional for a company that boasts ten years in the property industry."
General
Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
(i) it 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).
Complainant's Rights
Under paragraph 1 of the Policy ("Definitions"), "Rights" includes, but is not limited to, rights enforceable under English law. Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off.
The Complainant has not mentioned any registered trade marks, so it is clearly relying on unregistered rights. Given that the Complainant has only traded in the UK, the question is therefore whether it has established a passing off right in relation to a business conducted under a name which is the same as or similar to the Domain Name, for the purpose of which I can ignore the .co.uk suffix. To do so, its first step must be to establish that it has a reputation and owns goodwill in a business conducted under such a name.
The Complainant has produced a copy of its certificate of incorporation, which establishes the inclusion of "Archways Properties" in the Complainant's corporate name from 24 March 2004. However, it has not submitted any evidence of actual trading under the name prior to registration of the Domain Name. The assertion that the company name and logo were displayed above the Complainant's building while it was being renovated is not backed up with any photographs or details of use, or any idea of how many people saw the signage.
Mr Chana states that he could provide dated copies of the artwork for the company logo on request. Even if these had been submitted as part of the Complaint, they would not help to establish Rights in the name "Archways Properties", since such behind-the-scenes preparations are incapable of establishing the necessary reputation and goodwill.
The registration of the domain name archwaysproperties.com and the development of an associated website at www.archwaysproperties.com do not help the Complainant either. In the first place, the registration took place after the Respondent registered and started using the Domain Name; and, secondly, a check of the website even now shows it to be "Under Construction". It therefore cannot have led to the development of any relevant reputation or goodwill.
I conclude that the Complainant has not done enough to establish, on the balance of probabilities, that it has relevant Rights.
Abusive Registration
In case I am wrong in my conclusion in relation to the Complainant's lack of Rights, I go on to explain why I would conclude, in any event, that the Domain Name is not an Abusive Registration.
Paragraph 1 of the Policy defines an "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."
The Complainant has not explained by reference to the Policy why it says that the Domain Name is an Abusive Registration. It is for the Complainant to prove its case and not for me to speculate about how it puts its case under the Policy. However, I deal with the most obvious possibilities.
Did the Respondent deliberately choose the Domain Name as a blocking registration or in order to interfere with the Complainant's proposed use of the name "Archway Properties" (either of which might be evidence of an Abusive Registration under paragraph 3(a)(i)(B) and (C) of the Policy)? The Complainant has not provided any evidence of this, or even alleged that the Respondent knew that the Complainant had adopted that name when it registered the Domain Name. Therefore, I cannot conclude that this was the case.
Is the Respondent 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 (see paragraph 3(a)(ii) of the Policy)? The Complainant does allege that potential custom for the Complainant will be diverted to the Respondent, and gives one example in the Reply of an individual wanting to access the Complainant's website being diverted to the Respondent's website. However, given that the Complainant's own website is still under construction, I am not persuaded that a real diversion of custom, or indeed any real confusion, is likely.
In any event, the Complainant's version of events is directly contradicted by the Respondent, who claims that it was in fact the Complainant who 'stole' the idea for the name from the Respondent and not the other way around, and that the Complainant is lying. The details given by the Respondent are on their face no less credible than those put forward by the Complainant.
On the basis of the two directly contradictory stories, each made by individuals involved in the business of the parties, and neither supported by third parties or even simple documentary evidence, I am unable to decide which version of events is true. And, even if the Complainant's version were true, its submissions are insufficient to establish, on the balance of probabilities, that the Domain Name is an Abusive Registration.
I find that the Complainant does not have Rights in respect of a name or mark which is identical or similar to the Domain Name. I also find that the Domain Name is not an Abusive Registration in the hands of the Respondent. Therefore the Complaint fails on both counts and the request for the Domain Name to be transferred is refused.
Anna Carboni
11th October 2005
