[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Enact Conveyancing Ltd v Lantec Corporation [2005] DRS 3000 (2 December 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/3000.html Cite as: [2005] DRS 3000

[New search] [Printable RTF version] [Help]

 
NOMINET UK DISPUTE RESOLUTION SERVICE DRS 3000

Enact Conveyancing Limited –v- Lantec Corporation

Decision of Independent Expert

1. Parties:

Complainant: Enact Conveyancing Ltd.

Country: United Kingdom

Respondent: Lantec Corporation

Country: Dominica

2. Domain Name:

enact.co.uk

3. Procedural Background:

The Complaint was lodged with Nominet in full on 27 September 2005. Nominet validated the Complaint. The Respondent lodged a Response on 19 October 2005, though it was not compliant with 5 v of the Procedure for the conduct of proceedings under the Dispute Resolution Service in that it did not contain a statement to the effect that the information contained in the Response was to the best of the Respondent's knowledge true and complete. Under the Procedure I am to draw such inferences as I deem appropriate from the Respondent's non-compliance. The Complainant lodged a Reply on 26 October. On 10 November 2005 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Cerryg Jones, the undersigned, ("the Expert") confirmed to Nominet that he knew of 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.

4. Outstanding Formal/Procedural Issues (if any):

There are no other outstanding procedural issues that arise.

5. The Background:

The Complainant provides legal conveyancing services to the banking, real estate, home builder and consumer sectors. It has been trading since May 2003 and is based in Leeds. It owns the registered trade mark ENACT no. 2252542 for services in class 36 which include conveyancing and real estate services, as well as other word and device marks that incorporate the ENACT name.

The Respondent is a Dominican corporation that owns a substantial number of domain names in the .co.uk name space that incorporate well known trade marks. The domain name in dispute resolves to a website operated by a business called Sedo as part of Sedo's domain name "parking" service. Sedo hosts the site and provides links to other websites. The domain name owner receives revenue for traffic that is directed to these links on a pay per click through basis. In the present case, the site has links to conveyancers who are based in Leeds.

6. The Parties' Contentions:

The Complainant alleges that the Respondent's registration is abusive because:

7. The Respondent is engaged in the wholesale registration of domain names that incorporate well known trade marks and names in which the Respondent has no apparent rights.
8. The domain name is being used by the Respondent in a way which has confused people into thinking it was associated or controlled by the Complainant and is unfairly disrupting the Complainant's business because (i) traffic is being directed away from the Complainant's business and (ii) the Respondent is fully cognisant of the Complainant's business given the links to other businesses offering conveyancing services and their location.
9. The Respondent is on the balance of probabilities an offshore holding company for Jonathan Stock who transferred the disputed domain name along with 1800 other domain names in April/May to the Respondent to avoid a third adverse decision under the Policy against Mr Stock. In this respect the Complainant has adduced historical Google cache that indicates that Mr Stock is a director of Safenames UK. Safenames UK are the agents for the disputed domain name (both before and after the transfer to the Respondent).
10. The domain name in issue was primarily registered for the purposes of transferring the domain name to the Complainant for a premium to its cost on the basis that during the course of various offers put to the Respondent, the Respondent sought a payment of £15,000.

In its Response, the Respondent makes the following submissions:

11. The disputed domain name is descriptive and generic.
12. The Complainant has no UK Companies House registration that corresponds to ENACT.
13. That he was not aware of the Complainant or its business.
14. That the Respondent paid an undisclosed sum for a portfolio of domain names, that it is registered in Belize and no directors or members of staff are UK citizens.
15. That the Expert should regard as "unfounded" the suggestion that there is a connection between Mr Stock and the Respondent.
16. That it is not passing off its services as those of the Complainant's

In Its Reply, the Complainant submits the following:

17. That the Response should be discounted for failing to comply with the required guidelines, and in particular in failing to provide a statement to the effect that the information contained in the response was to the best of the Respondent's knowledge true and complete.
18. That ENACT is not descriptive in the field of conveyancing services.
19. That the Complainant trades as ENACT.
20. That the Respondent has not stated the citizenship of Mr Stock nor has it denied the allegation that Mr Stock has no relationship to the Complainant.
21. Discussion and Findings:

Paragraph 2 of the Policy requires that for the Complainant to succeed it has to prove to the Expert on a balance of probabilities, that it has rights in respect of a name or mark identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an abusive registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

The Complainant has rights in the name "ENACT" as a result of its trade under the name, and in its various registered trade marks. ENACT is not wholly descriptive of the Complainant's business. I find that the Complainant has rights in respect of a name or mark that is identical to the domain name in issue.

Abusive Registration

The Complainant also has to show that the domain name is an abusive registration. Paragraph 1 of the Policy defines this 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."

A non-exhaustive list of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration.

The potentially relevant factors in this Complaint are contained in subparagraphs 3 a i A and C; 3 a ii and iii that is:

3 a i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

A. 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

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

3 a 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.

3 a iiiThe Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under.uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern.

Considering all the evidence attached to the Complaint, and weighing in the balance the veracity of the Respondent's assertions in the absence of a statement to the effect that the information contained in its response was to the best of the Respondent's knowledge true and complete (which I do regard as significant in the context of this case), the evidence and submissions establish on a balance of probabilities the following facts and matters:

22. That the domain name in dispute was transferred to Lantec Corporation at around the same time as a number of domain names that incorporate well known trade marks and names.
23. That Mr Stock does indeed have some connection with Lantec Corporation.
24. That the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights. However, I do not believe the domain name could be said to be part of that pattern because ENACT is not a "well known" name or trade mark.
25. That the use to which the domain name has been put takes unfair advantage of and is unfairly detrimental to the Complainant's rights in the ENACT name because a significant number internet users in the UK searching for information about the Complainant and its products will type in www.enact.co.uk into their browsers and thereby be taken to a website over which the Complainant has no control. Further, such traffic is directed to competitors' sites, and an inevitable consequence will be a loss of business.

Accordingly, I find that the domain name is an abusive registration.

26. Decision:

In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the domain name in issue and that the domain name, in the hands of the Respondent, is an abusive registration, I direct that the domain name be transferred to the Complainant.

Cerryg Jones 2 December 2005