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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> PRG Partnership Solicitors v PRG Properties Ltd [2005] DRS 2884 (7 October 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2884.html Cite as: [2005] DRS 2884

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Nominet Dispute Resolution Service

DRS 02884

The PRG Partnership Solicitors –v- PRG Properties Limited

Decision of Independent Expert

1. The Parties

The Complainant

The Complainant is The PRG Partnership Solicitors

The Respondent

The Respondent is PRG Properties Limited

2. The Domain Name

The domain name in dispute is ("the Domain Name").

3. Procedural Background

This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure ('the Procedure') and the Nominet UK Dispute Resolution Service Policy ('the Policy').

The Complaint entered Nominet's system on 17th August 2005 and was validated on the same date. Nominet wrote to the Respondent on the same date, allowing until 13th September 2005, for a Response. No Response having been received and the Complainant having paid the relevant fee, the Complaint was referred to me on 19th September 2005 for a Decision. On that date, I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.

4. Outstanding Formal/Procedural Issues

No Response has been filed by the Respondent in this matter.

Having reviewed the file, I am satisfied that Nominet took all appropriate steps under paragraph 2(a) of the Procedure to bring the Complaint to the attention of the Respondent. In particular, Nominet wrote to the Respondent at the postal address provided by it and e-mailed it at (i) the address provided for 'Admin Contact', namely [email protected], (ii) at [email protected], and (iii) at an address provided by the Complainant, namely, [email protected].

Under Nominet's Terms and Conditions, it is the responsibility of the registrant of a domain name to provide Nominet with accurate contact details and to keep such details updated.

Paragraph 15b of the Procedure provides:

"If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down by the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

I am aware of no such exceptional circumstances in this case.

5. The Facts

The Complainant is a firm of Scottish solicitors. The Respondent is a limited company registered in Scotland.

The Domain Name was registered on 30th October 2003.

The Domain Name resolves to a website at www.prgproperties.co.uk. This appears from its homepage to be a website operated by the Respondent, offering properties for rental throughout Scotland.

The following facts appear from the Complaint. In view of the absence of any Response, none of these facts is contradicted by the Respondent.

(a) The Complainant is a firm of solicitors with offices throughout West Central Scotland. It provides a range of legal services including services relating to the purchase, sale and leasing of commercial and domestic property.

(b) The Complainant was founded in 1971 under the name Paterson Robertson & Graham. However it quickly became known by the name PRG and in the late 1980s it adopted the mark PRG as the dominant part of its overall branding. In June 2001 it changed its name to The PRG Partnership Solicitors. Its current trading style continues to emphasise and rely upon considerable goodwill in the PRG mark.

(c) The Complainant is the proprietor of UK registered trade mark number 2303256. This is a stylised word mark for 'The PRG Partnership Solicitors'. The registration is for classes of services which include 'estate agency' and 'property agency' services.

(d) The Respondent was incorporated on 4 October 2002 and changed its name to PRG Properties Limited on 18 December 2002.

(e) Since its registration of the Domain Name on 30 October 2003, the Respondent has used the name for the purpose of providing property letting services. It does so under the names PRG Properties and PRG Homes, which on its website are frequently shortened to PRG. The Respondent specialises in lettings to DSS applicants.

(f) The Complainant's solicitors wrote to the Respondent on 11 August 2004 demanding that the Respondent cease using the Domain Name and transfer it to the Complainant. Although a director of the Respondent orally agreed to comply with these demands, the Respondent has failed to do so. The Respondent represented in October and November 2004 that it was unable to access its website, but new material has since been added to the website including a property available from March 2005. In August 2005 the Respondent denied that any new material had been added and stated that it did not have the domain name rights for the website.

6. The Parties' Contentions

The Complainant

The Complainant makes the following contentions is support of its complaint:

(1) Rights

The Complainant relies on its UK registered trade mark 'The PRG Partnership Solicitors' referred to above. It also claims unregistered trade mark rights in the name PRG. It contends that both these marks have a very high degree of similarity to the Domain Name.

(2) Abusive Registration

The Complainant contends that (i) the Domain Name was registered in a manner which took unfair advantage of and was unfairly detrimental to the Complainant's rights in the trade mark PRG and (ii) has been used in a manner which takes unfair advantage of and is unfairly detrimental to the Complainant's rights in that mark. In particular:

(a) The Domain Name incorporates the Complainant's mark PRG. The very high degree of similarity between the Domain Name and Complainant's trade marks is such that the Domain Name would be understood as referring to the Complainant's business. The property letting services offered by the Respondent under the Domain Name are very closely similar to the 'estate agency' and 'property agency' services covered by the Complainant's trade mark registration. The likelihood of confusion is exacerbated by the fact that the font used by the Respondent in the banner of its website is almost identical to that used in the Complainant's trade mark registration. The registration and use of the Domain Name infringe the Complainant's trade mark rights under sections 10(2) and 10(3) of the Trade Marks Act 1994.

(b) The Complainant would be entitled to prevent the Respondent's registration and use of the Domain Name by virtue of the law of passing off. The name is inherently and factually deceptive in the hands of the Respondent and an instrument of fraud. Users of the internet may type the Domain Name while seeking information about the Complainant. Persons reviewing the Respondent's registration may erroneously believe the Respondent is in some way connected with the Complainant. The registration also erodes the distinctiveness of the Complainant's mark. This is particularly true given the limited number of properties offered by the Respondent, their slow turnover and the lower-rent sector in which the Respondent operates. The Complainant's goodwill has been damaged by the above matters and the potential for further damage remains, particularly in the West Central Scotland area which the Respondent is targeting.

(c) The Complainant also relies on its solicitors' communications with the Respondent as described above.

The Respondent

As stated above, no Response has been filed in this case.

7. Discussion and Findings

Under paragraph 2 of the Policy:

"(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, that:

 

(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.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities."

Under paragraph 1 of the Policy the term 'Rights':

"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".

The term 'Abusive Registration' is defined in paragraph 1 of the Policy as referring to 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."

Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.

Rights

The Complainant has a registered UK trade mark for the stylised word mark 'The PRG Partnership Solicitors'. The distinctive part of this mark is the term PRG, the remainder being largely descriptive. The mark is registered for classes of goods and services which include 'estate agency' and 'property agency' services.

In addition, I find that the Complainant has unregistered trade mark rights in Scotland in the term 'PRG' for legal services, including those relating to property.

The Domain Name is . Ignoring the formal suffix .co.uk, the dominant or distinctive part of this name is 'prg', the remainder of the name being descriptive. In the circumstances, I am satisfied that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name. The first limb of the test under paragraph 2 is satisfied accordingly.

Abusive Registration

Although no Response has been filed in this matter, there is no provision for a default decision under the Policy. A Complainant must still establish that a registration is abusive under the terms of the Policy. However, where no response has been filed, it will generally be sufficient for the Complainant to establish a prima facie case, in other words, that the Respondent has at least a case to answer.

In this case, the Complainant relies primarily upon its registered and unregistered trade mark rights in the term PRG and contends that the registration and use by the Respondent of the Domain Name is likely to cause confusion to the Complainant's detriment.

Paragraph 3(a)(ii) of the Policy provides that the following shall be one of the factors that may be evidence of an abusive registration:

"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."

The Complainant also cites sections 10(2) and 10(3) of the Trade Marks Act 1994, which provide as follows:

"(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because—

(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

(3) A person infringes a registered trade mark if he uses in the course of trade a sign which—

(a) is identical with or similar to the trade mark, and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."

In this case, the Complainant has a registered trade mark for 'The PRG Partnership Solicitors' which is registered for goods and services including 'estate agency' and 'property agency'. The Respondent is using the Domain Name for property letting services. In my view, this gives the Complainant at least a prima facie case that the matter falls within section 10(2) of the Trade Marks Act, namely, that the Respondent is using a sign that is similar to the trade mark for services which are identical with those for which the mark is registered.

Under section 10(2), however, the Complainant must still show a likelihood of confusion arising out of the Respondent's use of the mark. Indeed, the test is more strictly set out under paragraph 3(ii) of the Policy, where the Complainant must establish that the use of the name has confused people or businesses into believing the Domain Name is connected with the Complainant.

There is considerable authority as to the manner in which likelihood of confusion should be assessed in a trade mark case, not least the decision of the European Court of Justice in Sabel –v- Puma [1997] ECR I-6191. In summary, the likelihood of confusion must be assessed globally, taking into account all relevant factors. These include the degree of recognition of the trade mark in question, the degree of similarity of the two marks, the similarity of the goods or services in question and the impression that would be gained by an average consumer of the goods or services in question, who should not be assumed to have perfect recollection. It is also clear that what must be established is confusion as to the origin of the goods or services in question, not merely that one mark calls to mind the other: this chimes with paragraph 3(a)(ii) of the Policy.

In this case, I accept that the Complainant has an established reputation in Scotland under the mark PRG for legal services. It does not appear directly to provide property letting services, as does the Respondent, but its registration does cover services of that nature. While legal services and property letting services are different, I consider them to be sufficiently connected in the mind of the average consumer for the possibility of confusion to arise. As to the Respondent's actual use of the name, I do not accept that there is any reasonable prospect that a consumer attempting to find the Complainant or information about it would type the Domain Name. However, I do accept that a consumer confronted with the Respondent's website could, in the circumstances described above, believe that the services on offer were connected with the Complainant. Accordingly, I am of the view that the Complainant has made out a prima facie case on confusion, albeit a relatively weak one.

It has, of course, been open to the Respondent to seek to rebut the Complaint's case and to argue, for example, that confusion would not be likely. Equally, it has been open to the Respondent to rely on the various grounds set out under paragraph 4 of the Policy. For example, paragraph 4(a)(i) provides that the following may be an indication that a registration is not abusive:

"Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), 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; [or]

B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name…"

As there is no suggestion by the Complainant that the Respondent's business is not genuine, it would not have been surprising to see an argument from the Respondent under paragraph 4(a)(i). However, no Response has been filed and there is therefore nothing to contradict the Complainant's submission that the registration is abusive for the reasons stated above.

In addition, there is the curious issue of the communications between the Complainant's solicitors and the Respondent. The Respondent has neither contradicted nor explained the Complainant's evidence that it initially agreed to transfer the Domain Name, and that it subsequently denied having control over the either the Domain Name or the website linked to it. While these factors are not directly indicative of an abusive registration, neither are they indicative of any intention by the Respondent to dispute the Complainant's claim under the terms of Policy.

In the circumstances, I am satisfied that the Complainant has made out a prima facie case that the Respondent has used the Domain Name in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. In the absence of any Response, I conclude that the Complainant has established on the balance of probabilities that the registration is abusive.

8. Decision

The Complainant has established on the balance of probabilities that it has Rights in a name or mark that is identical or similar to the Domain Name. It has also established on the balance of probabilities that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Accordingly, the Complaint succeeds and I direct that the Domain Name be transferred to the Complainant.

Signed Steven A. Maier

7th October 2005