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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Free Fringe Ltd v The Laughing Horse [2007] DRS 4638 (15 August 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4638.html Cite as: [2007] DRS 4638 |
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Decision of Independent Expert
Complainant: The Free Fringe Ltd
Country: GB
Respondent: The Laughing Horse
Country: GB
2.1 Freefringe.co.uk
3.1 The Complaint was entered onto the Nominet system on 24 April 2007and validated on 25 April 2007. The complaint papers were sent to the Respondent on 1 February 2007. The response was received on 11 May 2007 in electronic form and in hard copy on 16 May 2007. A reply was received on 25 May 2007. The Complainant paid the required Nominet fee on 25 June 2007 and on 28 June 2007 the Expert was appointed.
4.1 This case has been fully contested, involving a complaint, response and reply. The complaint was very short and not supported by any exhibits. Accordingly, Nominet wrote to the Complainant on 25 April 2007 enclosing a standard letter from the chairman of the DRS Expert Panel warning the Complainant about these issues.
4.2 I have taken the unusual step in this case of requesting a further response from both parties. The reasons for this are as follows.
4.3 The Complainant and the Respondent both referred to there being a written agreement in 2006. The Complainant dates the agreement as May 2006 and the Respondent says there is an agreement of 12 March 2006 (although the Respondent makes the point that the agreement is in the Complainant's stage name). However, neither party has spelt out the terms of this agreement nor had I been supplied with a copy of the agreement.
4.4 I considered that the agreement between the parties may be of relevance to the issues to be decided in this case. I therefore asked Nominet on 8 July to request that both parties supply this document. Nominet stipulated a response by 12 July and I received copies of an agreement dated 12 March 2006 from both parties.
4.5 In his reply, the Complainant claims that he made a contribution towards registration costs of the Domain Name and other website related costs at the request of the Respondent. This allegation was not made in the complaint but in the reply. It ought to have been raised in the complaint. I have decided to consider the issue nonetheless but on 8 July asked Nominet to ask the Respondent what it said about this allegation. Again, Nominet asked for a response from the Respondent by 12 July. Nominet supplied me with the Respondent's answer on 11 July 2007.
5.1 The Domain Name was registered on 11 January 2005. The registrant details provided to Nominet indicate that the registrant is "The Laughing Horse" with an address as follows: 57 Nelson Road, Whitton, Twickenham, Middlesex, TW2 7AR United Kingdom.
5.2 The Complainant is a company incorporated in England and Wales. The Complainant was incorporated on 4 November 2005. The Companies House return supplied by Nominet shows three director appointments: (i) Edward Peter Hill; (ii) Melanie N Hill-Stephens and (iii) Alexander Robert Petty. Alexander Robert Petty resigned as a director on 1 July 2006.
5.3 There is some dispute about the shareholders of the Complainant. It appears that Edward Peter Hill owns at least 50%. There is a disagreement about ownership of the other shares of the company.
5.4 Edward Peter Hill is a director and shareholder of the Complainant and appears to be the principal mover behind the company. Edward Peter Hill is known by the stage name of Peter Buckley Hill. Peter Buckley Hill has appeared at the Edinburgh Festival over a number of years.
5.5 The website at www.freefringe.co.uk is a one page website containing a click-through to the site at www.laughinghorse.co.uk. The text of the website at www.freefringe.co.uk states the following:
"August 4 - 25th
Free Edinburgh Fringe
Festival 2007
Welcome to the 2007 Free Festival click here to enter the site
After 3 hugely successful years at the Fringe Laughing Horse Comedy return to Edinburgh in 2007 with over 133 Fringe Shows in Ten Venues that are all free for performers to hire, and free for audiences to watch…
click here to see our programme of comedy, theatre, music and more for the 2007 Edinburgh Fringe."
5.6 The website at www.laughinghorse.co.uk contains promotional material for events at the Edinburgh Festival taking place in August 2007.
5.7 The Respondent trades under the name "The Laughing Horse" it is not clear from the papers whether the Laughing Horse is a company or a trading name for Mr. Alexander Petty. It appears that The Laughing Horse promotes and organises comedy shows under the brand "Laughing Horse Comedy".
The Complainant
6.1 The Complainant states that Edward Peter Hill (stage name Peter Buckley Hill) is the inventor of a concept at the Edinburgh Fringe known by the name "Free Fringe". The concept of Free Fringe is that neither performers nor the audience pays for the performances.
6.2 The background (which seems to be uncontested) is that (at least some) venues at the Edinburgh Fringe charge performers for use of the venue and the audience is also charged an entry fee. The concept of "Free Fringe" appears to be that the only payment is made by voluntary contribution from the audience and that the venues benefit by virtue of money taken over the bar.
6.3 The Complainant states that the Free Fringe has received three awards for the work in setting up the Free Fringe concept and that Peter Buckley Hill personally has received a further award.
6.4 The Complainant states that the Laughing Horse has been involved with the Free Fringe and that they were "recruited to help with the development" of the "Free Fringe". The Complainant states that the Laughing Horse registered the domain names freefringe.co.uk and freefringe.com in that capacity as well as designing a website on behalf of Free Fringe using those domain names.
6.5 The Complainant states that in May 2006 an agreement was signed under which the role of the Laughing Horse was confined to the management of performance venues. Following disputes, the Complainant says that the Laughing Horse resigned in August 2006 from involvement with the Free Fringe or association with Free Fringe Limited. The Complainant states that the Respondent has set up its own festival in opposition to the Free Fringe using the domains including freefestival.co.uk. The Complainant states that it is the rightful owner of the name Free Fringe. The Complainant states that the Domain Name is pointed at the Laughing Horse's main website, to the confusion of browsers for the Free Fringe and as such is used in such a way as to confuse or deceive people searching for the Free Fringe into thinking that the Laughing Horse's rival event is in fact the Free Fringe.
The Respondent
6.6 The Respondent also states that there is a relationship between Laughing Horse Comedy and Edward Peter Hill of the Complainant in relation to shows at the Edinburgh Fringe and states that this has been the case since 2004. The Respondent states that Laughing Horse Comedy has provided the venue management, promotion, equipment and programming for these shows and venues each year and that Edward Peter Hill has only been involved with these shows by presenting his own two free shows and assuming responsibility for some unspecified aspects of the event.
6.7 The Complainant states that in 2006 things were divided into two with different names ("PBH'S Free Fringe" and "Laughing Horse Free Fringe Venue") in order to "segregate responsibility".
6.8 The Respondent states that to support the free shows, it registered and paid for the Domain Name.
6.9 The Respondent states that Laughing Horse Comedy parted company with Edward Peter Hill in August 2007 (I assume that this is intended to be August 2006) due to "irreconcilable differences" and signalled an intention to continue with the free fringe shows and venues. The Respondent states that since September 2006, Laughing Horse Comedy has continued promoting free venues and shows at the Edinburgh Fringe Festival as "The Free Edinburgh Fringe Festival".
6.10 The Respondent states that it is using the Domain Name in relation to a genuine offering of goods or services and continuing to operate free venues at the Edinburgh Fringe Festival as "The Free Edinburgh Fringe Festival" in 2007 as it has done in 2004, 2005 and 2006.
6.11 The Respondent states that the term "Free Fringe" and "Free Festival" are generic terms used widely by performers, press and the organisers of the Edinburgh Fringe Festival and other fringe festivals worldwide. The Respondent states that the term "Free Fringe" is not that of a single promoter or business. The Respondent goes on to state that the Edinburgh Fringe Festival has a policy which allows anybody to perform, for free or otherwise, and it has no official "Free" promoter or business. The Complainant also points out that of 185 Free Fringe shows in 2006 only 69 were related to either Laughing Horse Comedy or Edward Peter Hill shows and venues.
6.12 The Complainant states that the Free Fringe name is one that Laughing Horse Comedy is known by and connected to because of its free fringe shows in previous years.
6.13 The Respondent states that the use it is making of the Domain Name is fair and non-commercial in that the "Free Edinburgh Fringe Festival" is operated on a not for profit basis.
6.14 The Respondent points out that the Complainant has been operating his business from two separate websites using the URLS www.freefringe.org and www.freefringe.org.uk since December 2006 and has at no time indicated an intention or desire to use or require www.freefringe.co.uk.
6.15 The Respondent denies that Edward Peter Hill organised "Free Fringe" events prior to 2004 and that from 2004 the events that were organised were organised and jointly marketed between Laughing Horse Comedy and Edward Peter Hill.
6.16 The Respondent says there is nothing inventive in the concept of the Free Fringe as described by the Complainant. This is no more than a form of busking says the Respondent.
6.17 The Respondent states that since 2004 and until 2006, the free venues and shows have existed "as a partnership" between Laughing Horse Comedy and Edward Peter Hill with Laughing Horse Comedy responsible for the programming of venues, supply of equipment and marketing of the venues as a whole.
6.18 The Respondent denies that the Domain Name was registered at the instruction of Edward Peter Hill. Specifically, the Respondent states that no costs or payment have been received for the ownership of www.freefringe.co.uk from Edward Peter Hill.
6.19 The Respondent states that there is an agreement in existence dated 12 March 2006 between Laughing Horse Comedy and signed in the name of "Peter Buckley Hill", the stage name of Edward Peter Hill, director of the Complainant. The Respondent states that the agreement would be invalid because, it seems, the stage name of Mr. Hill was used. In any event, the Respondent states that the agreement does not refer to the Domain Name.
Complainant's Reply
6.20 In reply, the Complainant states that the event in question was not known as the "Free Edinburgh Fringe Festival" but as "The Free Fringe" or "PBH's Free Fringe".
6.21 The Complainant states that he is widely recognised within the comedy industry as the founder of the Free Fringe and has accepted three different awards in that capacity on behalf of the Free Fringe. The Complainant relies upon awards from "Three Weeks", a fringe publication and from "Chortle Awards".
6.22 The Complainant states that in relation to the registration cost of freefringe.co.uk, the Complainant paid half and the Respondent the other half. The Complainant relies upon the text of an email to Alex Petty of the Respondent dated 22 April 2006 and in particular the following wording from an earlier email of 10 April 2006 from Alex Petty to Peter Buckley Hill of the Complainant:
"Finally to cover the costs of the domains that have been paid for this year and also so I can pay the person who's helping on the uploads and design work could you send me the cheque for you (sic) half of the costs, as agreed - £182.50. Please make the cheque payable to Laughing Horse Comedy and post to Alex Petty…".
6.23 The reply also exhibits copy of an article from The Scotsman dated 23 August 2006 with the title "The man who wants to set the Fringe free - Peter Buckley Hill's fresh idea inspires Kate Copstick". The article discusses three performances that have taken place "under the Laughing Horse banner…". It also discusses something it refers to as the "Free Fringe" which the article states is the "…brainchild of Peter Buckley Hill, Edinburgh Legend and long time eccentric". The article then lists venues at which "Free Fringe" shows can be found and these are listed as "Laughing Horse at Canongate" "Laughing Horse at Jekyll and Hyde" "Laughing Horse at Lindsays" and "Laughing Horse at Meadow Bar".
Additional Submissions
6.24 The Respondent states that the payment upon which the Complainant relies was in relation to a <.com> domain, not the Domain Name. Further, says the Respondent, the payment related to Section 4.3 of the agreement and to the ongoing cost of "the domain names - not the acquisition of any domain name".
6.25 The agreement dated 12 March 2006 supplied by the parties is between "Laughing House Comedy" and Peter Buckley Hill. According to the agreement, Peter Buckley Hill "… encompasses the Limited Company Free Fringe Ltd". The agreement addresses the involvement of Peter Buckley Hill and laughing Horse Comedy in what the agreement refers to as "Free Fringe". The agreement provides for the use of a website at www.freefringe.com to which both parties contribute. There is no mention of the Domain Name; nor is there any mention of rights in the name Free Fringe.
Rights
7.1 There are two key issues to be decided in relation to the question of "Rights" in this case. First: is the term "Free Fringe" a name that is sufficiently distinctive that "Rights" can exist in it. Secondly, does the Complainant have sufficient rights in that name that he is entitled to exclude the Respondent from its use in a domain name.
7.2 The papers supplied with the Complaint indicate that the Festival in question is known by a variety of names including The Edinburgh Fringe Festival, Edinburgh Fringe and simply The Fringe. On the first issue, the question that censes is as follows:
7.3 There is a suggestion in the material annexed to the complaint and the agreement between the parties that the term "Free Fringe" is used as a distinguishing mark for certain shows at the Edinburgh Fringe. There is the fact that throughout the agreement, publicity material and newspaper article the term appears with capitalised initial letters. In this case, however, I do not believe there is enough to establish that Rights exist in the name "Free Fringe". Given the descriptive starting point for the name, more is required to establish Rights. The Complainant did not help himself in this respect by submitting a very brief complaint with no supporting materials. There is also the Respondent's allegation, uncontested by the Complainant that others use the term "Free Fringe" to refer to free shows at the Edinburgh Fringe.
7.4 In case I am wrong about the existence of Rights, I should deal with the second issue - whether the Complainant has a sufficient interest in the Rights. The picture as to the promotion of "Free Fringe" events by the parties seems to be complicated. Based on the material that has been submitted, It seems that both parties may have some interest in the "Free Fringe" from their respective contribution. The agreement does not help to clarify what interest each has.
7.5 Conceivably, each has an interest in the name Free Fringe yet neither may have a sufficient interest to exclude the other. It is not possible for me to tell this from the materials submitted with the complaint. That sort of exercise in determining rights of co-owners or partners is, in my view, beyond the scope of the DRS.
7.6 I should deal with one specific point which is whether the Complainant paid towards registration of the Domain Name. There is no evidence that convinces me of this. The payment made by the Complainant was over a year after registration of the Domain Name and the agreement refers to the payments to be made by the Complainant to the Respondent as being for FreeFringe.com.
Abusive Registration
7.7 It appears that both parties would have some interest in the name Free Fringe had I found that the name was sufficiently distinctive to provide Rights. I have not been able to determine what the respective interests of the parties in relation to any Rights would have been nor what each would have been entitled to do without the permission of the other. Accordingly, I am not able to determine that the Respondent's activity amounts to Abusive Registration. Accordingly, I find that even if the Complainant had Rights, he has not established that the Domain Name is an Abusive Registration in the hands of the Respondent.
8.1 The Complainant has not done enough to establish rights in the name Free Fringe of Abusive Registration. The complaint fails. The short and unsupported complaint in this case has not helped the Complainant's cause.
Stephen Bennett Date
