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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> BM Trada Certification Ltd v Tariq [2006] DRS 3737 (21 August 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3737.html Cite as: [2006] DRS 3737

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BM Trada Certification Limited -v- Mohammed Tariq

Nominet UK Dispute Resolution Service

DRS 03737

BM Trada Certification Limited -v- Mohammed Tariq

Decision of Independent Expert

1. Parties:

Complainant: BM Trada Certification Limited

GB

Respondent: Mr Mohammed Tariq

GB

2. Domain Name:

bmtrada.co.uk ("the Domain Name")

3. Procedural Background:

The Complaint was received by Nominet on 7 June 2006. Nominet validated the Complaint and sent a copy to the Respondent.

A Response was received by Nominet on 28 June 2006 and a copy forwarded to the Complainant.

On 3 August 2006 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to the Nominet UK Dispute Resolution Service Policy ("the Policy").

Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and duly appointed the undersigned as the Expert with effect from 10 August 2006.

4. The Parties' Contentions:

Complainant:

The Complainant's submissions are as follows:

1. The Complainant has rights in a trade mark which is identical or similar to the Domain Name:

(1) The Complainant has been registered at Companies House under the name of "BM Trada Certification Limited" since 26 February 1999.

(2) The Complainant has been trading as a certification body since 1987. It originally traded as Trada Certification, but changed its name after the acquisition of another certification body, BMT QA, in 1996.

(3) The "BM Trada" name and brand is well-known and recognised in the certification industry. Examples of recent advertising, marketing and promotional literature are annexed to the Complaint.

(4) All of the Complainant's clients receive a certificate confirming the details of their certification, each of which carries the BM TRADA name and brand. An example of one such certificate is annexed to the Complaint. The Complainant has issued in excess of 12,000 such certificates.

(5) The Complainant uses the website address www.bmtrada.com.

2. The Domain Name is an Abusive Registration in the hands of the Respondent:

(1) The Respondent uses the Domain Name to direct internet users to its website at www.ic-risk-management.com. The services detailed on the Respondent's website vary from being complementary to the Complainant's accredited certification services to directly competing with the Complainant's training services. The Complainant has been offering its training services since 2000.

(2) There is an implication that the services of the Respondent are endorsed by the Complainant when this is not the case.

(3) There is no explanation as to why the Domain Name directs internet users to the Respondent's own site.

(4) After becoming aware of the Domain Name, the Complainant contacted the Respondent to request that the Respondent cease using the Domain Name. The Complainant also informed the Respondent that it may be open to the purchase of the Domain Name.

Respondent:

The Respondent's submissions are as follows:

(1) The Domain Name was purchased in good faith to help advertise the Respondent's business via the internet.

(2) Contrary to the Complainant's assertion, the services of the Respondent are entirely complementary to those of the Complainant. The Complainant is prevented from offering consultancy services. The Respondent's services consist of consultancy in areas linked to helping businesses to put in place risk based management systems prior to their independent third party audit and certification by a separate and independent accredited third party certification body, such as the Complainant.

(3) The Respondent's training services are not directly competitive with those of the Complainant. The Complainant offers public training courses which are by their nature generic and cannot, by virtue of the restrictions placed on the Complainant by the United Kingdom Accreditation Service, be linked to consultancy. By contrast, the Respondent offers training services which are bespoke and unique to each client based on the risks assessed as part of a consultancy package. The Respondent does not offer any standard stand-alone off-the-shelf training courses to the public of the nature that the Complainant does. The Respondent's training services are therefore entirely complementary to the Complainant's activities as a certification body and do not compete directly with the Complainant's training services.

(4) It is correct that the Complainant offered to purchase the Domain Name. However, the Domain Name is not for sale. The Domain Name was acquired to advertise the Respondent's complementary services via the internet and not for financial gain from its sale.

(5) There would not be any genuine confusion caused by the Respondent using the Domain Name to direct internet users to its own site as the Respondent's site has never made any claims of any association with the Complainant. There is no implied endorsement by the Complainant. To further ensure that there is no such possibility, the Respondent's site has been updated with the following prominent statement:

"Please note that we are neither a division nor a subsidiary of any Management Systems Certification Body and, hence, are completely independent and impartial."

5. The Facts:

The Nominet Records show that the Domain Name was registered on 10 April 2006.

Based on the parties' submissions and a review of the materials annexed to the Complaint and the Response, set out below are the main facts which I have accepted as being true in reaching a decision in this case, together with comments where relevant:

(1) The Complainant has been trading under its current name since at least February 1999. The Companies House change of name certificate, which is annexed to the Complaint, is an indication of this. However, it does not follow from a company being incorporated under a particular name at Companies House that it has actually been trading, and it would therefore have been better for the Complainant to have annexed copies of its annual accounts to the Complaint. Nevertheless the Complainant has annexed to the Complaint materials which are consistent with having actively traded for several years; together with some more recent direct evidence of its having done so in the form of advertisements dating from the end of 2005 and early 2006 (prior to the date when the Domain Name was registered). It is therefore clear that the Complainant has traded under the "BM Trada Certification" name prior to the date of registration of the Domain Name; and, on the balance of probabilities, I accept that it has done so since at least 1999. The Respondent does not dispute this.

(2) The materials annexed to the Complaint also show that the Complainant has used the name and brand "BM TRADA", as well as its full title of BM Trada Certification.

(3) The Complainant has offered training services since before the date of registration of the Domain Name. Direct evidence of this comes from the training brochure annexed to the Complaint which sets out a programme for 2006, with training dates from January 2006 onwards.

(4) Use of www.bmtrada.co.uk takes internet users to the Respondent's website. This is common ground between the parties.

(5) The home page of the Respondent's website is headed "Integrated Corporate Risk Management", as can be seen from the copy provided to me by Nominet (dating from the time when the Complaint was filed). The current version of the home page has had added to it the statement to which the Respondent refers (see above).

(6) The Respondent's services consist of consultancy and training services to assist businesses to implement risk-based management systems prior to being audited and certified by an independent accredited certification body such as the Complainant. For the purposes of this decision, I have not needed to reach a view on whether or not it is correct that some or all of the Respondent's training services are directly competitive with those of the Complainant or rather, as the Respondent asserts, complementary.

6. Discussion and Findings:

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

Disregarding the generic .co.uk suffix, the Domain Name is identical to the name "BM TRADA" used by the Complainant; or, if one takes the full company name of "BM Trada Certification", then clearly similar.

A further issue to be determined is whether the Complainant has rights in respect of the name "BM TRADA" and/or "BM Trada Certification". I have accepted that the Complainant has traded under its current name since 1999, and certainly prior to the Domain Name being registered by the Respondent; and that it has also made use of the name and brand "BM TRADA".

In the light of this, I find that the Complainant does have Rights in "BM Trada Certification" and in the shorthand/brand "BM TRADA". I therefore find that the Complainant has proved what is required under paragraph 2 of the Policy.

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."

Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those factors which are of potential relevance in this case (all under paragraph 3a) are as follows:

"i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of 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; ...

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."

Taking the above points in turn, the Complainant does not put forward any evidence which could validly support a finding that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant. The Complainant refers to having offered to purchase the Domain Name from the Respondent, but nothing more. The Respondent's position is that the Domain Name is not for sale and that he registered it in order to advertise his business via the internet. In the light of how the Respondent has used the Domain Name, I see no reason to doubt the Respondent's explanation.

In effect, the Respondent is admitting that he registered the Domain Name in order to help attract internet users to his website. In any case, it is common ground between the parties that an internet user who types in www.bmtrada.co.uk will find himself taken to the Respondent's website at www.ic-risk-management.com. The central issue in this case is therefore whether such use of the Domain Name by the Respondent takes unfair advantage of, or is unfairly detrimental to, the Complainant's rights in the "BM Trada" name.

Paragraph 3aii of the Policy (set out above) refers to actual confusion having occurred, namely people or businesses having believed that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. Paragraph 3 is a non-exhaustive list of factors. It has been held in previous Nominet decisions that a likelihood of such confusion arising in the future is also relevant, and I agree with this.

The key question is accordingly whether the Respondent's use of the Domain Name has caused such confusion, or is likely to do so in the future. The Respondent claims that such confusion will not occur because his site has never made any claims of any association with the Complainant. The Respondent also refers to having updated his site with the following "prominent" statement:

"Please note that we are neither a division nor a subsidiary of any Management Systems Certification Body and, hence, are completely independent and impartial."

The implication is that the Respondent added the above statement after the date of the Complaint. This is confirmed by the copy of the home page of the Respondent's site, as at the date of the Complaint, which has been provided to me by Nominet.

In my opinion, the statement does not serve to eliminate the risk of confusion having already occurred or occurring in the future. Having reviewed the current home page of the Respondent's website, the statement is not particularly prominent. It is also worded in a general way and does not state that the Respondent has no connection with "BM Trada". The problem is exacerbated by the business name used by the Respondent on its site, namely "Integrated Corporate Risk Management". This is very descriptive in nature and not a distinctive name which one would readily and quickly associate with a separate company. In any case, one needs to take into account the form of the Respondent's website is at the date of the Complaint, when the statement did not appear on the site.

I should add that, even if the statement had been on the Respondent's website at all times, was properly prominent and had made express reference to the Respondent having no connection with the Complainant, I still do not believe that this would not have led to a particular type of confusion being avoided. I will deal with this below.

In my view, by registering and using a Domain Name which is identical to the shorthand name/brand of the Complainant, the Respondent has in effect impersonated the Complainant. When typing in the website address www.bmtrada.co.uk, it is clear that many, if not most people will be expecting to reach a website of the Complainant. Even if, on reaching the Respondent's website, it would quickly become clear to any such person that it is not the Complainant's site, temporary confusion of that nature (commonly known as "initial interest confusion") is still relevant and, in my view, takes unfair advantage of and/or is unfairly detrimental to the Complainant's rights. In fact, even as updated, I do not believe that somebody reaching the Respondent's website would necessarily quickly realise that it is not in any way associated with or endorsed by the Complainant.

The fact that the Respondent is using the Complainant's name to attract visitors to his website means, on the balance of probabilities, that he will already have caused confusion to occur and/or that it will occur in the future, whether just "initial interest confusion" or also confusion of a more long-lasting nature. Even if, as the Respondent asserts, his services are complementary to those of the Complainant and not directly competitive, the Respondent will still have gained, in my view unfairly, by attracting visitors to his site who would not otherwise have assessed it.

In summary, I find that the Domain Name has been used in a manner which takes unfair advantage of, and/or is unfairly detrimental to, the Complainant's rights, and is therefore an Abusive Registration.

7. Decision:

Having found that the Complainant has rights in respect of a name which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent is an Abusive Registration, the Expert directs that the Domain Name bmtrada.co.uk be transferred to the Complainant.

Jason Rawkins 21 August 2006