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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Daniel Thwaites Public Ltd v Clues Internet Ltd [2006] DRS 3841 (14 September 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3841.html Cite as: [2006] DRS 3841

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Nominet UK Dispute Resolution Service DRS 3841 Daniel Thwaites Public Limited Company v Clues Internet Limited Decision of Independent Expert
1. Parties

Complainant:

Daniel Thwaites plc

UK

Respondent:

Clues Internet Limited

UK

2. Domain Name
3. Procedural Background

A Complaint in respect of (the "Domain Name") under Nominet UK's Dispute Resolution Service Policy ("the Policy") was received from the Complainant and forwarded to the Respondent by Nominet on 19 July 2006. No Response was received from the Respondent.

On 11 August 2006 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). The Complaint was referred for a decision by an Independent Expert following payment by the Complainant of the required fee on 24 August 2006. I was appointed as Independent Expert as of 1 September 2006 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.

4. Outstanding Formal/Procedural Issues (if any)

There are no outstanding formal or procedural issues.

5. The Facts

The Complainant is a brewery company. It has a website at www.thwaites.co.uk. The brewery operates a managed public house under the name NTK at 23-25 Market Street, Blackpool.

According to the Nominet WhoIs database, the Domain Name was registered on 24 April 2004. At the date of the Complaint the Domain Name resolved to a web page featuring the letters NTK above photographs of a bar and drinkers.

6. The Parties' Contentions

Complainant

The Complaint is very short. The submissions on the part of the Complainant are as follows:

The Complainant has operated from 23-25 Market Street, Blackpool for over 50 years. The venue has traded under the name NTK for six years. The Complainant's right to the name NTK is evidenced by a copy of the gas bill for the premises dated 22 March 2006 and a solicitor's invoice referring to work done in connection with licensing applications for NTK dated 26 June 2006.

In 2004 the then manager contacted a local company, the Respondent, to have a web page created. This was a very basic one page site which does not in any way promote the venue. The manager has since left the company and the venue has undergone a major refurbishment. The Complainant now wishes to promote the venue via the website at www.ntkblackpool.co.uk but it has been unable to contact the Respondent although it has tried to do so by phone (with no response), by email (returned undeliverable) and by letter (no reply).

The fact that the Complainant cannot develop the web site is a major restriction of its trade and for that reason it feels the registration is abusive.

Respondent

The Respondent has not filed any response to the Complaint.

7. Discussion and Findings:

General

Although the Respondent failed to submit a Response to the Complaint, there is no scope for a decision in default under the Policy and Procedure. Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non-compliance with the Procedure as I consider appropriate. The Complainant is still required, however, under clause 2b of the Policy to prove to the Expert on the balance of probabilities 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.

Complainant's Rights

"Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law".

The Complainant has put forward minimal evidence as to its rights in a relevant name. The Complaint makes the bare assertion that the Complainant's public house at 23-25 Market Street, Blackpool is a major outlet for the brewery and has operated under the name NTK for six years. It exhibits documents that simply support the existence of NTK in early 2006.

As has often been stated in Nominet decisions under the Policy, the threshold for the establishment of Rights under the Policy is low. The Complainant does not purport to have any registered rights in the names NTK or NTKBlackpool. The Complaint, however, includes the usual statement of truth, signed on behalf of the Complainant, to support what is, in the absence of any response by the Respondent, uncontroverted evidence of the public house trading under the name NTK for over six years.

In the circumstances, I consider that such use could, on balance, be sufficient to establish appropriate rights in the name NTK for the purposes of a claim in passing off under English law. In comparing NTK and the Domain Name I am entitled to ignore the non-distinctive geographical indicator BLACKPOOL. Accordingly, as at the date of the Complaint, I am satisfied that the Complainant had Rights in the name NTK which is similar to the Domain Name, .

Abusive Registration

Paragraph 1 of the Policy defines "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 only specific submission the Complainant makes as to Abusive Registration is, as set out above, that:

"The fact that the Complainant cannot develop the web site is a major restriction of its trade and for that reason it feels the registration is abusive."

In circumstances where, as I have indicated, the Complainant has not produced strong evidence of Rights in a name identical or similar to the Domain Name, then a Complainant faces a greater onus to satisfy the Expert on the balance of probabilities as to an Abusive Registration. In general, the stronger the Rights, the less difficult it will be to demonstrate that the registration is abusive.

A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy. These include:

3ai Circumstances indicating that the Respondent has registered or acquired the domain name primarily:

B as a blocking registration against a name or mark in which the Complainant has Rights;

3aii 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; and

3av The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A. has been using the domain name exclusively; and

B. paid for the registration and/or renewal of the domain name registration.

During the process of completing and filing the originating online complaint under the Policy through Nominet's website, complainants are directed to a specimen complaint and reminded of the need to refer to the terms of the Policy and of the requirement to demonstrate proper grounds for the Complaint. The Complainant has not, however, referred to the above or any other circumstances in terms to support its submission that this is an Abusive Registration.

The factors described at Paragraph 3av of the Policy were introduced by Nominet when Version 2 of the Policy was introduced in September 2004. The new provision was intended to deal with a reasonably common occurrence whereby through error, oversight or lack of foresight a domain name when first registered was registered in the name of the agent for the intended user of the domain name, classically a web designer or ISP. As illustrated by a number of expert decisions under the Policy prior to September 2004, the user later encountered difficulties in renewing the registration or moving the website to a different ISP or updating the website because the agent in whose name the domain name had bee registered had disappeared or been dissolved or was otherwise uncontactable.

Experts had come to conflicting views as to whether the registration by the agent could be characterised as abusive in such circumstances, particularly where the original registration in the name of the agent had been deliberate or simply an error. It was hard to describe such circumstances as the domain name having been registered or used "in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

With the introduction of the new version of the Policy, including the additional factors specifically aimed at a situation where there had been a relationship between the complainant and the respondent, relief is now expressly available through the Policy. In view, however, of the special nature of the new provision, I consider that in order to succeed on this ground a Complainant does need to satisfy the Expert that all the elements of Paragraph 3av are present.

In this case, the Complainant has made no attempt to produce any evidence that those elements are met. The only reference in the Complaint is:

"In 2004 the then manager contacted a local company, the Respondent, to have a web page created."

There is no clear evidence that the Domain Name was registered as a result of a relationship between the Complainant and the Respondent; no evidence that the Complainant has been using the Domain Name exclusively; and no evidence that the Complainant paid for the registration or renewal of the Domain Name. Furthermore, it is not at all obvious from the copy of the web page exhibited to the Complaint and also downloaded by Nominet on receipt of the Complaint that the web page had any connection with the Complainant. It features the letters NTK and photographs of a bar and drinkers but, so far as I can see, no indication that this is a reference to the public house at 23-25 Market Street, Blackpool or that it is in any way connected with Thwaites brewery.

Finally, I note that the letter written by the Complainant to the Respondent on 15 May 2006, exhibited to the Complaint, is in the following terms:

"I am writing to request the transfer of the domain name you hold for www.ntkblackpool.co.uk. The pub, NTK in Market Street, Blackpool is owned and operated by Daniel Thwaites Brewery plc [sic] and folllowing a major refurbishment we wish to use the name in the marketing of the business.

I look forward to hearing from you with a positive response in the near future."

There is no suggestion in the letter of any earlier relationship between the Complainant and the Respondent or that the Complainant regarded the Domain Name as already belonging to it. The Complainant does not claim that the Respondent originally registered the Domain Name for the Complainant at its request or that the Complainant had in fact paid for the registration of the Domain Name.

In the circumstances, I find that the Complainant has failed to establish any factors that would amount to evidence that the Domain Name is an Abusive Registration.

8. Decision

Accordingly, I find, on the balance of probabilities, that the Complainant has Rights in a name which is similar to the Domain Name but that in the hands of the Respondent the Domain Name is not an Abusive Registration. I therefore determine that no action be taken in respect of the Complaint

Ian Lowe

14 September 2006