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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Home Office v Community Alerts Ltd [2006] DRS 4248 (1 June 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4248.html Cite as: [2006] DRS 4248 |
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Nominet UK Dispute Resolution Service
DRS 4248
The Home Office v Community Alerts Limited
Decision of Independent Expert
Complainant: The Home Office
United Kingdom
Respondent: Community Alerts Limited
United Kingdom
neighbourhoodwatch.org.uk
On 1 March 2006, the Complaint was lodged with Nominet in accordance with the Dispute Resolution Service Policy. Hard copies of the Complaint were received in full on 3 March 2006.
On 3 March 2006, Complaint documents were generated for service upon the Respondent.
On 27 March 2006, an electronic Response was received from the Respondent, hard copies were received on 28 March 2006.
On 5 April 2006, a Reply was received from the Complainant in electronic form and in hard copy.
On 10 May 2006, Mr Clive Thorne was selected as the Expert. He has confirmed his independence and willingness to act. The Expert understands that the necessary fees were received from the Complainant on 24 February 2006. There are no interlocutory or interim matters outstanding.
The Factual Background is summarised in the Complaint. The Domain Name the subject of the dispute was registered by the Respondent on 9 April 2003. A copy of the registration is set out at tab 1 to the Complaint.
The Complainant is the Home Office whose policy responsibilities include crime issues. It also oversees the Neighbourhood Watch movement, a task it has apparently fulfilled since that movement was set up in the early 1980's.
The Neighbourhood Watch movement is a voluntary sector movement consisting of members of the public formed into Local Neighbourhood Watch groups or schemes. The aim of the movement is to enable people to help reduce criminal and anti-social activity and the fear of such activity in their local communities through the use of simple crime prevention techniques and the sharing of information about suspicious activity with the Police.
The movement has proved to be very popular with the public. There are some 10,000,000 members and findings from the 2000 British Crime Survey show that an estimated 27% of households across England and Wales are now covered by a Local Neighbourhood Watch Scheme. The term "Neighbourhood Watch" is widely known and understood even by those who are not themselves members. The Complainant submits that the term refers to its Neighbourhood Watch movement.
The Complainant uses and licences the use by others of the Neighbourhood Watch name and mark. At tab 2 to the Complaint is a copy of an original design work in relation to the mark using a particular "four faces logo". Examples of use made of the mark in relation to the services provided under it are set out at tab 3 to the Complaint and examples of recent licences granted at tab 4 to the Complaint.
The Complainant submits that the role of the Home Office is well-known to Neighbourhood Watch activities at county level and above. It has also participated in actions brought by Trading Standards Department against people who have wrongly used the Neighbourhood Watch name and mark.
The Complainant is also the owner of the domain name "neighbourhoodwatch.uk.com" details of which are set out at tab 6 to the Complaint. This would appear to have been registered on 27 July 2004.
The Complainant submits that it has developed and acquired considerable goodwill in the mark "Neighbourhood Watch" through extensive use made of the mark in the United Kingdom.
The Complainant is the owner of the United Kingdom trade mark "Neighbourhood Watch" which is registered in Classes 6, 9, 36 and 45. Details of the registrations are set out at tab 7 to the Complaint. It should be noted that the Complainant relies upon two registrations numbers 2323100 and 2323101. They were both filed on 7 February 2003, published on 16 May 2003 and registered on 29 August 2003. The Complainant submits that the mark has been used at all material times and is in force.
The Respondent is a private company limited by guarantee with no share capital.
There has been correspondence between the parties which is set out at tab 11 to the Complaint. This begins with a letter from the Home Office dated 16 September 2005 relating to recommendations for further development of the Neighbourhood Watch. On 17 October 2005, Mr Kent a director of the Respondent wrote to Victoria Deakin, the official at the Home Office responsible for the Neighbourhood Watch scheme, pointing out that the Home Office was "deliberately trying to prevent Community Alerts from launching a much needed service on www.neighbourhoodwatch.org.uk". It would appear that there had been an allegation of trade mark infringement made by the Home Office. Mr Kent pointed out that the service his company was proposing to offer was a contact and introduction database. It was apparently seeking to provide a "free service" that allows all members of the public to find and contact their local Neighbourhood Watch co-ordinator by accessing "neighbourhoodwatch.org.uk".
The letter concluded that:-
"Obviously until this matter is resolved we shall not add any service to the website. In the meantime, we will utilise this domain and the other 30 associated domains, including schoolwatch.org.uk, pubwatch.org.uk and farmwatch.org.uk to set up a forum to gauge the public reaction to the progress of the NW movement since the Home Office intervention last year and see what people would like to see happen in the future".
This was responded to by a letter of 4 November 2005, indicating that the Respondent's use of the domain name had been referred to the Treasury Solicitor's Department. On 14 November 2005, a demand letter was sent to Community Alerts Limited by the Treasury Solicitor alleging trade mark infringement of the above registrations in Class 45 and seeking appropriate undertakings. There the matter appeared to rest pending commencement of the present proceedings. According to the Complainant there was no response to the Treasury Solicitors letter.
Under paragraph 2(a) of the DRS Policy a Complainant has the burden of proof of showing that:-
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
2. The Domain Name, in the hands of the Respondent, is an abusive registration.
The Expert proceeds to deal with each limb in turn.
(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name
The Complainant relies upon the registered trade mark rights referred to above, also upon the fact that it has allegedly "developed and acquired considerable goodwill in the mark "Neighbourhood Watch" through extensive use made of that mark in the United Kingdom".
The Expert accepts that the Complainant is the owner of the registered marks referred to above and that the registrations for "Neighbourhood Watch" are identical to the disputed domain name "www.neighbourhoodwatch.org.uk". However, the Expert notes that the trade marks, though filed on 7 February 2003, were not published until 16 May 2003 which is after the date of registration of the Domain Name in dispute on 9 April 2003. This point is also made by the Respondent in its response.
The Respondent also puts an issue whether in fact the Home Office "owns" Neighbourhood Watch. It submits that it merely supports it. It relies upon evidence within the public domain including a speech by the Home Secretary of the day in 1997 and a document from the Association of Chef Police Officers (Appendix 2 to the Response). It also relies upon the fact that the trade marks relied upon by the Home Office were not filed by the Home Office but were originally filed by the National Neighbourhood Watch Association and subsequently transferred to the Home Office following an apparently "much publicised dispute".
In its Reply, the Complainant Home Office again submits that it "controls the mark and the related goodwill in the mark as well as the usage of the mark" and is responsible for protecting the rights in "Neighbourhood Watch". It also submits that the Respondent does not dispute or provide any response to the Complainant's submission that it has developed and acquired protectable goodwill in the mark "Neighbourhood Watch" through the use of that mark. It submits that the rights in the mark have effect from the date of the filing of the application for registration and that the date of registration of the domain name in dispute was after the date that the Complainant had protectable goodwill in the mark.
In the view of the Expert, it is clear that the Complainant has registered rights in the mark "Neighbourhood Watch" and that the trade mark registrations are identical or similar to the Domain Name in dispute. It follows that the Complainant has succeeded in proving the first element of paragraph 2(a) of the DRS Policy.
(ii) The Domain Name, in the hands of the Respondent is an abusive Registration
At paragraph 3(a) of the DRS Policy is set out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration.
The Complainant appears to rely upon the following to support a finding of an Abusive Registration in the hands of the Respondent:
(1) Registration of some 30 domain names (listed at tab 9 in addition to the disputed domain name) these domain names all correspond to well known names and in five cases to registered trade marks in which the Respondent has no apparent interest.
(2) The Respondent has not traded under the name "Neighbourhood Watch" and is not known by the name or mark "Neighbourhood Watch".
(3) Although the content of the website at the disputed domain name has changed in 2005 following complaints from the Complainant, before the website was active it did generate confusion amongst members of the public searching for the Complainant's website.
(4) The Respondent intends to launch a service using a disputed domain name in a way that will suggest a connection with the Neighbourhood Watch Movement without the Complainant's approval or authorisation.
(5) The public's confidence and trust is essential to the continued success of the Neighbourhood Watch Movement and that the use by the Respondent of Neighbourhood Watch damages the public's trust. It relies upon criticism and misleading comments about the Home Office which had apparently been posted by the Respondent and set out at tab 13 of the Complaint. The Complainant considers that there is an inevitable risk of damage to the Complainant's reputation and to the Neighbourhood Watch Movement because of the Respondent's proposed use of the disputed domain name.
(6) In summary the Complainant submits that the registration was (and remains abusive) in that it took unfair advantage of or was unfairly detrimental to the Complainant's rights at the time of Registration. Further or alternatively, the Respondent's use of the disputed domain name to identify its website has taken unfair advantage of or has been unfairly detrimental to the Complainant's Rights since registration of the disputed domain name.
In its Response, the Respondent relies upon:
(1) the fact that the domain name was registered on 9 April 2003 two months before the first trade mark relied upon was published and five months before registration was granted;
(2) it accepts that it has registered 30 domain names but asserts that it has an interest in those domain names;
(3) it accepts that when it bought the domain name the trade mark relied upon had not been published or granted. Therefore the Respondent did not buy it at a time when it was aware of the trade marks;
(4) it relies upon the correspondence between the Home Office and Community Alerts which "highlights our willingness to try and work with them".
In particular it relies upon the correspondence exhibited at Appendix 7 to the Response which it submits is evidence that the Home Office was prepared to discuss the use of a new website system before Neighbourhood Watch. The Respondent was not looking for any commercial gain from the service it intended to provide and this was not the action of a company which had an abusive registration. For example, the Respondent relies upon an email dated 8 July 2005 from Paul Kent to Victoria Deakin in which it is stated that:
"Community Alerts have always endeavoured to work with the appropriate authorities to deliver a very much needed service nationally. We have met people at the highest level within the Home Office and had many meetings. In every single circumstance the net result has been very disappointing with virtually no feed back or follow up made".
The Respondent also relies upon meetings with Hazel Blears a Home Office Minister and Tony Heal Head of Voluntary Organisations who apparently supported the idea of the Service being offered by Community Alerts and helped the Respondent to try and move the service forward.
In its Reply the Complainant points out that the Respondent has only responded to or disputed some of the points raised by the Complainant.
(1) The rights in the registered trade marks have effect from the date of filing.
(2) The date of registration of the Domain Name was after the date that the Complainant had protectable goodwill in the mark.
(3) The Complainant made it clear to the Respondent in September 2004 that permission would be needed for the general use of the Neighbourhood Watch mark and logo.
(4) The Respondent has not offered the disputed domain name free of charge as alleged in the Respondent's email of 8 July 2005.
Having considered the Parties' submissions the Expert has come to the view that the actions of the Respondent do not fall easily into any of the non-exhaustive list of factors which may evidence an abusive registration within paragraph 3 of the DRS Policy.
There were no circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant for valuable consideration as a blocking registration or for the purpose of unfairly disrupting the business of the Complainant.
The Complainant appears to assert that there are 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 otherwise connected with the Complainant. This submission is not however not supported by evidence.
The Complainant also relies on the 30 domain names registered by the Respondent including 5 cases in which the Respondent has no apparent interest. These are "Prime Watch" which corresponds to a trade mark apparently owned by the BBC, "School Watch" which corresponds to a trade mark currently owned by Hutchison Paging UK Limited, "House Watch" which corresponds to a trade mark apparently owned by House Watch Limited, "Shop Watch" which apparently corresponds to a trade mark owned by PPG Industries Ohio Inc and "Pub Watch" which is not registered as a trade mark but is used by the Police in relation to which a domain name pubwatch.org is registered to the British Institute of Inn Keeping.
In the Expert's view this falls short of demonstrating 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 and the Domain Name is part of that pattern (Paragraph 3(a) (iii) of the Policy). The Respondent submits that the service which it operates ties up directly with these domain names. It also asserts that none of these domain names or intended use of the domain names contravenes any rights of trade mark owners.
The Expert is concerned that the domain name in dispute was registered before the date of publication of the Complainant's marks. The Complainant is correct that rights in the mark have effect retrospectively to the date of filing the application for registration pursuant to Section 9 (3) Trade Marks Act 1994. However, the domain name would have been registered without the Respondent having any knowledge of the application for registration of the trade marks. It is therefore difficult to show that the registration of the disputed domain name was an abusive registration in respect of the registered marks.
The issue that remains and is not dealt with in the Reply is whether the date of registration of the domain name was later than the date that the Complainant had acquired protectable goodwill in the mark so that the registration was an abusive registration vis a vis unregistered rights or trading goodwill.
The difficulty here from the Complainant's point of view is that the extensive use allegedly made by the Complainant of the mark "Neighbourhood Watch" appears to post date the registration of the trade mark and assignment of the trade marks from National Neighbourhood Watch Association on 21 December 2004 (see Appendix 6 to the Response).
In its Complaint the Complainant refers to its use of the domain name "Neighbourhoodwatch.uk.com". It also refers to licensing the use of the mark "Neighbourhood Watch". However, the evidence is recent and post dates the registration of the domain name in dispute. It may well be that the Complainant as it asserts in paragraph 7 of the Complaint has developed and acquired considerable goodwill in the mark "Neighbourhood Watch" through the extensive use made of that mark in the United Kingdom. No evidence is adduced to support acquisition of that goodwill either before the date of registration of the disputed domain name or prior to the registration of or assignment of the registered marks to the Complainant.
In the Expert's view, and taking into account that the Complainant has the burden of proof in showing an abusive registration the Complainant has failed to prove the second element of Paragraph 2(a)(ii) of the DRS Policy ie. that the domain name in the hands of the Respondent is an Abusive Registration.
The Complainant has requested that the disputed Domain Name should be transferred to the Complainant. For the reasons set out above the Complainant fails in its application.
Clive Duncan Thorne
Expert
1 June 2006
