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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> The Place For Homes Ltd v Shields [2006] DRS 3890 (5 October 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3890.html Cite as: [2006] DRS 3890

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Nominet UK Dispute Resolution Service DRS 03890 The Place For Homes Ltd. v. Mr Robin Shields Decision of Independent Expert

1. Parties:

Complainant: The Place For Homes Ltd

Country: GB

Respondent: Mr Robin Shields

Country: GB

2. Domain Name

2.1 theplaceforhomes.co.uk ("the Domain Name").

3. Procedural Background

3.1 Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively).

3.2 Nominet received the Complaint on 2 August 2006, validated it and sent it to the Respondent on 4 August 2006, advising the Respondent he had 15 working days, until 29 August 2006, to submit a Response. The Respondent submitted a Response on 24 August 2006. The parties were informed on 15 September 2006 that if the Complainant paid the requisite fees by 29 September 2006, the dispute would be referred to an independent expert and the fees were paid.

3.3 After confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I, Victoria McEvedy, was appointed as an independent expert in this dispute on 3 October 2006.

4.Outstanding Formal/Procedural Issues

4.1 The Complainant submitted an additional non-standard submission in this dispute on a date unknown. Having considered its admission, a matter within my discretion under §13 of the Procedure, I am going to admit the non-standard submission in this case.

5.The Facts

5.1 The Domain Name was registered by the Respondent on 12 April 2000 as recorded in the Register and WHOIS reports supplied to me by Nominet.

5.2 I was also provided with a printed page showing that, as at 2 August 2006, the Domain Name pointed to a Tiscali services page.

5.3 The Complainant is a company selling furniture to the public. It was incorporated in 1986 and has been trading for 20 years. It has registered the domain name .

5.4 The Respondent is an individual. He proposes to use the Domain Name to advertise property. He has recently, in 2006, commenced preparations for a website using the name and other "the Placefor" domain names he has registered.

6. The Parties' Contentions

6.1 Complainant's Case

6.1.1 The Complainant says the Domain Name is identical or similar to a name or mark in which it has Rights and the Domain Name in the hands of the Respondent is an Abusive Registration.

6.1.2 The Complainant says it has Rights in the Domain Name because (and I have largely retained the Complainant's language):

6.1.2.1 The Domain Name is identical to the registered company name of the Complainant. The company name was registered in 1986. The registration number is 1929528. The Complainant's letterhead shows details of the name, registered address and logo as used by the Complainant.

6.1.2.2 The Complainant has traded under the name The Place for Homes for 20 years and is a retail furniture business supplying home furniture including beds and carpets etc. The Complainant is an established business with a good reputation and trading history with suppliers and customers alike.

6.1.3 The Complainant says the Domain Name in the hands of the Respondent is an Abusive Registration:

6.1.3.1 The Complainant has approached the Respondent in the past regarding purchasing the Domain Name. The Respondent stated initially that he would be prepared to sell but at the right price. The Complainant made another approach recently but the Respondent was no longer prepared to sell. In its non standard submission, the Complainant says that at some point after the initiation of the DRS process, the Respondent had the Domain Name resolve to a screen that offered the Domain Name for sale –although later removed it. No printout of that screen was provided.

6.1.3.2 The Respondent has not used the Domain Name since its acquisition of it – six years ago and it points to a blank web page. The Respondent does not appear to have any intention of using the Domain Name as it has owned it for six years without developing a site and as such is a blocking registration.

6.1.3.3 The Complainant has had queries from customers trying to locate it on the web. On finding the blank web page they assume the Complainant does not have a web site. This is impacting business and the Complainant's profile. The Complainant's website is currently being worked on by Boxportable under the domain name theplaceforhomesltd.co.uk, however, as it is known as the Place for Homes, it is concerned that customers will not find it under this address. The way the Domain Name is being used is currently very confusing to the Complainant's customers and is affecting its profile and trade.

6.1.3.4 The Complainant is concerned that in the event the Respondent decides to use the Domain Name, the content of the site might be detrimental to the trading reputation and the goodwill of the Complainant.

6.2 Respondent's Case

6.2.1 The Response is extremely long and detailed and I have therefore summarized the main points.

6.2.2 As to the Complainant's Rights, the Respondent says:

6.2.2.1 The Complainant does not have a registered trade mark.

6.2.2.2 The name in which the Complainant claims Rights is generic and descriptive. There are two other domain names the Complainant should be concerned about and .

6.2.2.3 The Complainant can only rely on Rights arising in the law of passing-off and there can be no passing-off given that the Respondent is not trading through any website or undertaking any activity. The Respondent's failure to operate a website is not the reason the public may think the Complainant is no longer in business –the Complainant's own site has not been operational for some 8-9 months—it is this that causes the damage. Further, the Respondent's site gets only a few hits per month.

6.2.2.4 The use of Limited in the Complainant's company name and ltd in the Complainant's domain name means that the Domain Name is not identical.

6.2.3 As to the position when the registration was made, the Respondent says:

6.2.3.1 Following the Phones4U case (registration of domain name could not be instrument of deception as defendant responded to misdirected emails), mere registration is not enough, distinguishing One in a Million.

6.2.3.2 The Respondent did not register the Domain Name with the intention of selling –and not once did he approach the Complainant in relation to a sale. Rather he responded to two approaches. In November 2003 he indicated he would be prepared to consider selling dependant on the offer (emails were produced) –to which no response was forthcoming. In November 2005, a third party, Boxportable, (on behalf of the Complainant) made another initiative and an offer of £100, which was declined.

6.2.3.3 The Domain Name was not registered as a blocking registration, see § 6.2.4.2.1 below.

6.2.3.4 The Domain Name cannot have been registered in a manner which at the time took unfair advantage of or was unfairly detrimental to the Complainant's Rights as the Complainant did not have a website at that time. Further, the Respondent had no knowledge of the Complainant and deliberately chose a generic name.

6.2.4 As to Abusive Registration:

6.2.4.1 The following points are made to as to the use of the Domain Name:

6.2.4.1.1 The Domain Name is not used in a manner that has confused people – see the points in § 6.2.2.3 above.

6.2.4.2 The following factors are evidence that the registration is not abusive.

6.2.4.2.1 Before being aware of the Complainant's issue, the Respondent made demonstrable preparations for use of the Domain Name. Having always intended to develop a network of ThePlacefor sites, he has been waiting for the .com version, which he recently acquired. He intends to use that and the Domain Name to advertise property—he advised Boxportable of this in Dec 2005. He began to develop the website in April 2006 but was interrupted by the illness and death of his mother. The preparatory work included testing software and screen prints showing this were submitted.

6.2.4.2.2 The Complainant is acting in bad faith in an attempt at reverse cybersquatting and this is demonstrated by a bid from a J G Francis for £200 on 14 August 2006 –after the DRS procedure was invoked. This offer is assumed to have been made on behalf of the Complainant and shows bad faith.

7. Discussion and Findings

7.1 General

7.1.1 Domain names are registered on a first come, first served basis and a registration will only be disturbed if it's an Abusive Registration, as defined in the Policy—paragraph 2(a) of which requires a Complainant to prove 2 elements:

"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."

7.1.2 A Complainant bears the burden of proof and must prove both elements on the balance of probabilities.

7.2 Complainant's Rights

7.2.1 Rights are defined by the Policy as including, but not limited to, rights enforceable under English law. It includes rights to registered and unregistered trade marks, as well as contractual and other rights.

7.2.2 As the Respondent points out, the Complainant does not have a registered trade mark. The Complainant relies on its rights to its registered company name, but this does not assist it. In English law, the incorporation of a company under a particular name, does no more than block others from registering the same name with the Registrar of Companies; it does not, of itself, prevent others from using that name in business, see Active Web Solutions v. Peter Shaw DRS 00228.

7.2.3 The Complainant can however rely on its actual use of the name as creating a reputation or goodwill protected by the common law cause of action for passing off, see Warnick (Erven) Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd [1980] RPC 31 HL; Reckitt & Colman Products Limited v. Borden Inc [1990] 1 All ER 873 and IRC v. Muller & Co.'s Margarine Ltd [1901] AC 217, 223 HL. The Complainant invokes its use of the name in trade for 20 years and the reputation and goodwill that use has created with suppliers and customers.

7.2.4 The only evidence the Complainant has submitted however is a copy of its letterhead. I was unable to access its website at . There is therefore no evidence of reputation nor the geographical extent of the same. Some evidence, such as advertising, or other promotional material, or evidence of sales should have been submitted. There is only a bare assertion.

7.2.5 The Respondent says he does not trade through any website or otherwise so there can be no passing-off, but we are not concerned with a finding of passing-off here. The DRS does not decide issues of defamation, trade mark infringement or passing-off per se, which are matters for the courts. I will not therefore make any finding as to those. The DRS is concerned solely with Abusive Registrations under the Policy. At this stage of the analysis under the Policy, we are merely concerned to determine whether the Complainant has Rights at common law.

7.2.6 The Respondent points out that the Complainant cannot have any exclusive rights in a name which is generic or descriptive. Indeed, the Policy provides in the definition of Rights, "..a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business." Trade mark law imposes similar limits, as in choosing a descriptive name, a trader assumes the risk of confusion, and small differences in the names will generally be adequate to avoid confusion.

7.2.7 The standard required to make out Rights under the Policy is not a high one, see decision of the Appeal Panel in Seiko v. Designer Time DRS00248. Therefore, despite the paucity of evidence and because I will have to revisit the issue of descriptiveness in relation to Abusive Registration below, I am prepared to find at this stage that the Complainant has Rights in the name theplaceforhomes.

7.2.8 Paragraph 2(a)(i) of the Policy requires that the name or mark in which a Complainant has Rights "is identical or similar to the Domain Name." In determining this, the www. prefix is ignored, as are suffixes in the domain names, here ".co.uk", see the decision of the Appeal Panel in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359. The difference here, as the Respondent points out, is the word 'Limited' and the abbreviation 'Ltd.' The name is therefore similar, rather than identical to, the Domain Name.

7.2.9 I find that the Complainant has proved, on the balance of probabilities, that it has Rights in a name which is similar to the Domain Name.

8. Abusive Registration

8.1 The second element a Complainant must prove under paragraph 2(a) of the Policy, is that the Domain Name is an Abusive Registration, defined in paragraph 1, as follows:

"Abusive Registration means 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".

8.2 Paragraph 3 of the Policy provides a non-exhaustive, illustrative list of factors, which may evidence an Abusive Registration. The Complainants rely on a variety of these factors. Paragraph 4 of the Policy provides a non-exhaustive, illustrative list of factors, by which Respondents may rebut an inference of Abusive Registration and again, the Respondent has raised a number of these.

9.Discussion

9.1 The factors related to the registration:

9.1.1 Both parties point to the past approaches by the Complainant to the Respondent as evidence in support of their respective cases. The Complainant relies on this as indicating that the Respondent registered the Domain Name for the purpose of selling or transferring it to the Complainant, at a price in excess of cost price—in terms of Factor §3aiA of the Policy. The Respondent points out that it made no initiatives, named no price and, in fact, declined an offer. The evidence as to the later offer made on the website is inconclusive. I do not find this factor made out.

9.1.2 The Complainant relies on the Respondent's failure, in the six years since acquisition, to use the Domain Name in conjunction with a site, or otherwise, as evidence that it was registered primarily as a blocking registration –in terms of § 3aiB of the Policy. On the other hand, §3b of the Policy expressly provides that a failure to use the Domain Name for email or a website is not, in itself, evidence of Abusive Registration. The Respondent counters by denying an intention to block and relying on its demonstrable preparations to use the Domain Name for a genuine offer of goods and services, before becoming aware of the Complainant's issue, in terms of §4aiA of the Policy. I find the Respondent's evidence in support of its preparations, far from demonstrable; no evidence was provided and I have only a mere assertion. On the whole however, I am not convinced as to the blocking registration – I have no evidence apart from the mere fact of registration and inaction for 6 years, which the Policy stipulates is not enough.

9.1.3 The Respondent relies on Phones4u as overturning the principle in the One in Million case, that mere registration of a domain name could create an instrument of deception. However, on appeal in Phones4u Ltd & Anor v. Phones4u.co.uk & Ors. [2006] EWCA Civ 244, the Court of Appeal approved its earlier decision in BT v One in a Million [1999] FSR 1. Namely that the registration of a domain name of a well-known company was an actionable passing off. Aldous LJ said (p.23): "Mr Wilson submitted that mere registration did not amount to passing-off. Further, Marks & Spencer Plc had not established any damage or likelihood of damage. I cannot accept those submissions. The placing on a register of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected to or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of One In A Million Limited and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered. Further, registration of the domain name including the words Marks & Spencer is an erosion of the exclusive goodwill in the name which damages or is likely to damage Marks & Spencer Plc." And: "I also believe that domain names comprising the name Marks & Spencer are instruments of fraud. Any realistic use of them as domain names would result in passing-off and there was ample evidence to justify the injunctive relief granted by the judge to prevent them being used for a fraudulent purpose and to prevent them being transferred to others." This is not applicable here however, where the Complainant has not established that it is well known, nor indeed submitted any evidence of the extent of its reputation or goodwill.

9.1.4 The Complainant also relies on circumstances indicating the Respondent is using the Domain Name in a way that has caused confusion – in terms of §3aii of the Policy—and in a manner that is likely to cause confusion –the factors being non-exhaustive. The Complainant says that it has had queries from customers who assume, on finding the Respondent's blank site, the Complainant has gone out of business. Unfortunately, the Complainant has not submitted any evidence as to these queries. I would have expected names, dates and content of the query – or at least some detail. The Complainant is concerned customers will not locate its own domain name –not expecting to have to add 'ltd' and that if the Respondent starts to use the Domain Name, it will be detrimental to the Complainant's Rights. The Respondent counters that it is not trading (so that there can be no passing-off) and that it is the Complainant's own lack of an online presence that is the cause of any confusion. It also says it gets only a few hits a month. I might have been prepared to find a likelihood of confusion –as a result of the similarity of the names, but this is subject to the issue of generic/descriptiveness below.

9.1.5 The Respondent generally denies that it registered the Domain Name in a manner that took unfair advantage of or was unfairly detrimental to the Complainant's rights on the basis that it had no knowledge of the Complainant at the time –and the Complainant's lack of a website. I am prepared to accept this as the parties are from very different parts of the country and the Complainant has not submitted any evidence as to the extent of its off-line, bricks and mortar reputation and it is highly possible that it is local. Although it was registered at Companies House under the name –that is no evidence that it trades under the same name. While I have seen its letterhead which indicates that it does trade under that name, there is nothing to suggest the Respondent would or should have known of the Complainant or its trading style.

9.1.6 I do not find any evidence to support the Respondent's allegation of bad faith on the part of the Complainant so as to suggest reverse cybersquatting or domain name hijacking.

9.1.7 This leaves the issue of generic/descriptiveness. The Respondent relies on its choice of a generic name as inherently rendering Abusive Registration unlikely. As discussed above, businesses choosing names made up of ordinary words in common use that describe the goods and services sold, do not get a monopoly in that name, even after lengthy use. By choosing a descriptive name then, a trader takes the risk of confusion and small differences in the names will generally be accepted as adequate to avoid confusion, see Office Cleaning Services Ltd v. Office Cleaners Association (1946) 63 RPC 39 HL. Whether a name is descriptive is a question of degree in each case and the name or term must be considered on a spectrum with purely descriptive names at one end and individual, idiosyncratic or unique names at the other. I cannot improve on the example given by Mr Justice Neuberger, in Smith v. Beds Direct, EWHC (Chancery Division), Unreported, Bristol Registry, 14 December 2001, where he said, "One end of the spectrum would be selling soap under the name "soap"; the other end of the spectrum would be selling soap under some wholly fancy name, such as "Flash". It would, to all intents and purposes, be impossible for a business to establish a claim in passing off, if his case simply was that he sold soap under the name 'soap', and the Defendant was doing the same thing... "

9.1.8 Even names at the Soap end can sometimes be protected where, through use, the name has acquired a secondary meaning by becoming so closely associated with a particular trader, e.g. Parker & Son (Reading) Limited v. Parker [1965] RPC. The fact that others use a name, while raising the hurdle, is not a complete bar to a claim in passing-off, Parker (above) (where although there was more than one estate agent trading in Reading under the name Parker, the court did not regard that as relevant to the plaintiff's application to stop the defendant from using it). In this case, the Complainant's name leans towards the Soap end although the use of the definite article, 'the,' helps to further distinguish it. It has some inventiveness in that it is a phrase people are not likely to use to describe the service itself –i.e. contrast it with, for example, the term Estate Agent –which is entirely descriptive of the service. The Complainant, however, has failed to submit any evidence of distinctiveness acquired through use and I find the name is generic and descriptive and that in this circumstance, the Respondent can rely on factor §4aii.

10. Decision

Taking all the circumstances of this dispute into account, I find that although the Complainants have Rights in a name similar to the Domain Name, the Domain Name in the hands of the Respondent is not an Abusive Registration and direct that no action be taken in relation to the Domain Name.

Victoria McEvedy

5 October 2006