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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> GHI Ltd (t/a aviance UK) -v- Draper [2002] DRS 147 (21 February 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/147.html Cite as: [2002] DRS 147 |
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Nominet UK Dispute Resolution Service
DRS 0147
GHI Limited t/a aviance UK -v- Neville Draper
Decision of Independent Expert
Parties:
Complainant's Details| Complainant: | GHI Limited t/a aviance UK |
| Country: | GB |
| Respondent: | Mr Neville Draper |
| Country: | GB |
Domain Name:
aviance.co.uk ("the Domain Name")
The Complaint was lodged with Nominet on 7 December 2001. Nominet validated the Complaint and notified the Respondent of the Complaint on 12 December 2001 and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent lodged a purported response on 1 January 2002. The purported response was forwarded to the Complainant on 7 January 2002 and Nominet advised the Complainant it had 7 days within which to lodge a Reply. The Complainant did not lodge a Reply. On 15 January 2002 Nominet advised the parties that the Informal Mediation stage of the Dispute Resolution service would start on 18 January 2002 and finish on 1 February 2002. The Respondent did not take up the option of Informal Mediation, so no such Mediation was possible. The Complainant was informed accordingly on 1 February 2002 and invited to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly paid on 4 February 2002.
On 4 February 2002, Nominet invited the undersigned, Niel Ackermann ("the Expert"), to provide a decision on this case and, following an indication from the Expert that he wished to disclose circumstances which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly notified the parties of this and were given until 4.30pm on 8 February 2002 to respond. The Complainant indicated it was happy for the Expert to continue. No response was received from the Respondent within the deadline. Nominet duly appointed the undersigned as Expert with effect from 11 February 2002.
The Respondent has lodged a purported response with Nominet. This response, comprising a three paragraph letter from the Respondent's solicitors, in effect, seeks to incorporate by reference the prior correspondence between the parties. This response does not comply with paragraph 5 of the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure"). In particular, the Respondent has failed to comply with paragraphs 5 c iii, iv, v and vi. It is therefore necessary to deal with the consequences of the Respondent having submitted a response to Nominet but one which does not materially comply with paragraph 5 of the Procedure. The Expert takes the view that the phrase "The response shall:" in paragraph 5 c of the Procedure is peremptory and the failure of the Respondent to comply with the formal requirements, in particular, the failure to comply with paragraph 5 c v of the Procedure, means that the purported response is defective and that the Expert should ignore the purported response as lodged by the Respondent and make his determination as if no response had been submitted pursuant to Paragraph 5.
Paragraph 15 c of the Procedure provides that, in the absence of exceptional circumstances, if a Party does not comply with any provision in the Policy or the Procedure or any request by Nominet or the Expert, the Expert may draw such inferences from the Party's non compliance as he considers appropriate"
In this case, the evidence which the Respondent sought to draw to the Expert's attention is, in fact, contained in the evidence submitted by the Complainant and, in any event, the probable facts are relatively straightforward so that it is not necessary to draw any special inferences.
The Expert has power to ask for further statements or documents from the Parties pursuant to paragraph 13 a of the Procedure but he is not obliged to do so. In the Expert's view, particularly in the case of a party whose Complaint has been prepared with professional assistance, it should only be in exceptional cases that a party should be invited to produce evidence which could easily have been produced at the time of the Complaint. The Expert has considered carefully whether this is a case in which the parties should be asked to comment on or produce further documentation relating to the reputation of the Complainant in the name "Aviance". However, the Expert but has decided that, on balance, the parties having been advised by lawyers who, on the face of the correspondence passing between them, seem well versed in the law of passing off, this is not an appropriate case to ask for such further evidence.
Generally, the absence of a Response from the Respondent does not, in the Expert's view, entitle an expert to accept as fact all uncontradicted assertions or submissions of the Complainant. In the light of the evidence which the Expert is prepared to consider, the Expert finds the relevant facts as set out in the next following section.
Complainant:
The Complainant submissions are as follows:
As indicated, the Respondent has not formally responded but the Complainant has filed as evidence copy correspondence including letters from the Respondent's solicitors. The information contained in these letters is, accordingly in evidence before the Expert, but the Expert is entitled under Paragraph 12 c of the Procedure to determine what weight to give this evidence. As the bulk of this evidence is in the form of legal argument, the Expert has determined to give very little weight to the letters from the Respondent's solicitors.
General
The Complainant has to establish under paragraph 2 of the Policy that it has Rights as defined in paragraph 1 of the Policy in respect of a name or mark identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in paragraph 1 of the Policy. Rights, as defined, "includes but is not limited to rights enforceable under English Law". The Complainant has the burden to prove on the balance of probabilities both that it has the Rights and also that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
The Expert holds that the Domain Name is identical to the name or mark in which the Complainant asserts rights.
Paragraph 2 of the Policy requires the Complainant to prove that "it has Rights". There is no explicit requirement as to when those Rights have to exist. Do the Rights have to be in existence before the Respondent applies for the disputed Domain Name or is it sufficient that they exist at the time when the Complaint is lodged? If the former, the evidence is that the Respondent's Application for the Domain Name was applied for on the same day as the Complainant announced that it was going to trade under the "aviance" name. While this seems suspicious, the Complainant has not adduced evidence to prove which came first, the announcement or the application. It seems unlikely that, had the Respondent applied for the Domain Name before the Complainant made the announcement, he would not in correspondence or in a Response in this dispute asserted that fact.
In order to assert its claim, the Complainant has submitted three types of right which it says entitles it to the Domain Name, namely:
The Complainant has not made any submissions as to the date at which these rights have to exist. There are three possible dates which might be relevant:
As no further evidence was adduced between the date the Complaint was submitted and the date of the adjudication, for the purposes of this Complaint only the first two dates have any real relevance.
The Complainant has no registered trade mark, merely an application for a CTM jointly with Alyzia Airport Services. The Complainant has not made any submissions as to how it relies on this trade mark application as establishing Rights as defined in the Policy. The Expert can only assume that it intended to suggest that it might be a right enforceable under English Law but it is trite law that the mere application for a trade mark is not a right which is enforceable under English Law. Whether a mere application for a CTM creates rights elsewhere is not addressed in the Complaint. If the CTM application proceeds to grant, the Complainant will clearly have an enforceable right under English Law.
The other rights on which the Complainant relies are rights in relation to "goodwill and reputation". Rights in goodwill and reputation are enforceable under English Law under the common law provisions for passing off. To succeed on this point, the Complainant must prove that, at the relevant date, it had a reputation, and therefore goodwill, in the marketplace by demonstrating that it uses a name which the relevant market recognise relates to the Complainant's goods and/or services to the extent that, if someone else were to use that name, they would be confused as to the origin of those goods and/or services. In order to enforce a claim for passing off in England, the relevant marketplace in which the Complainant must have goodwill must exist in England. Goodwill outside the jurisdiction is not sufficient.
In support of its claim that it has the right to sue for passing off, the Complainant has asserted that "the Respondent is holding himself out as associated with or connected to "aviance" or the Complainant". This is an unsubstantiated assertion which is not borne out by the evidence but, in fact, there seems to be no requirement for the Complainant to prove that the Respondent has infringed its rights other than by proving the second limb of paragraph 2 a of the Policy, namely that the Domain Name in the hands of the respondent is an Abusive Registration. To get over the first limb, the Complainant merely has to establish that it has Rights in the name and not necessarily that it can enforce those rights in the courts against the Respondent.
The Complainant has attached to its Complaint a press release which was posted on the Internet but the Complainant has given no evidence to explain how that press release created goodwill for the Complainant, for example by detailing how many hits that press release had received or whether that press release was picked up and published elsewhere. The Complainant has also attached a brochure but has not explained what this brochure is meant to prove.
The Complainant has submitted a great deal of evidence on the extent of the operations of the "aviance" alliance but the period to which this evidence relates is not clear. The Complainant has submitted very little evidence of the use that has been made of the "Aviance" mark. The global evidence is summarised by the Complainant as follows:
"aviance" was formed on 6 November 2000 and brings together nearly 200 years of experience within the industry, covering more than 40 airports in six countries. It handles over 200 airlines and employs nearly 12,000 staff that deal with 1.2 million flight movements, over 57 million passengers and 800,000 tonnes of cargo, including 17% of the Heathrow cargo.
Insofar as the UK operation is concerned, the Complainant's evidence (which the Expert accepts as a fact) is:
[The Complainant] operates at Aberdeen, Birmingham, Cardiff, Dublin, Edinburgh, London Gatwick, Glasgow, London Heathrow, Jersey, Leeds/Bradford, Manchester, Southampton, London Stansted and Teesside airports, employs 4,500 people and deals with over 500,000 flight movements, nearly 25 million passengers and over 420,000 tonnes of cargo each year
The date of 6 November 2000 is said to be the date the "aviance" alliance was formed but that does not appear to be the date it commenced trading as "aviance". The brochure suggests trading under the "Aviance" name might have commenced in January 2001 but the press release suggests it commenced on 23 February 2001. The Complainant's evidence does not address the issue of what reputation and goodwill the Complainant had acquired in the "Aviance" name by 23 February 2001, if any. If anything, the press release suggests that 23 February 2001 was the first time notice was given to the relevant market (whatever that relevant market might be) of the new trading style. On the evidence before the Expert it seems unlikely that the Complainant had the requisite reputation and goodwill to establish a claim for passing off in England at the date of the application by the Respondent for the Domain Name.
However, that may not be the appropriate date at which the Rights have to exist. If it were, it would have been very easy for the relevant date to have been specified in the Policy or Procedure as, for example, is done in paragraph 4 of the Policy in relation to how a respondent may demonstrate that a domain name is not an Abusive Registration.
The mere registration of a name as a domain name without any trading by the owner under or by reference to that domain name, would not give the owner of that domain name any protection against a claim for passing off in the English courts from a trader who, subsequent to the registration of the domain name but before the domain name owner built up any reputation himself, built up a significant reputation in that name. The prior registration of the domain name would not extinguish the trader's enforceable right to sue for passing off and the date when the claimant's rights would be determined would be the date when proceedings were commenced. There seems no particular reason why the same rule should not prevail in these circumstances. The fact that an application for a domain name precedes the existence of a complainant's rights seems more logically something which needs to be considered under the second limb of Paragraph 2 a of the Policy, namely in determining whether a domain name, in the hands of a respondent, is an Abusive Registration.
While the Expert does not give much weight to this evidence because it is only in the Respondent's solicitors' correspondence annexed to the Complainant's submission, there is evidence that there are others with possibly earlier rights to the name "Aviance". Even if correct, this would not necessarily deprive the Complainant which might have sufficient concurrent reputation to enable it to sue for passing off.
In order to prove reputation and goodwill in the "Aviance" name, the Complainant needs to prove that the relevant market had not only become aware of the "Aviance" name but that the relevant market associates that name with services provided by the Complainant. While the Complainant is clearly a substantial business, the evidence it has submitted does not in the Expert's view establish what the relevant market is nor does it establish any market in which the Complainant can be said to have the requisite reputation and goodwill in the name "Aviance". For example, while the uncontroverted evidence is that "aviance" staff in the UK deal with nearly 25-million passengers, there is no evidence that any such passengers associate the name "Aviance" with the Complainant. The Expert has accepted as a fact that the Complainant provides services required by airlines including passenger check in, passenger processing, information desks, VIP lounges, aircraft slot management, baggage loading and unloading, cargo processing, cargo loading and unloading, cargo security screening, aircraft co-ordination, aircraft weight and balance, aircraft push-backs and aircraft towing but the mere fact that the Complainant provides these services does not mean that the relevant market associates these services with the "Aviance" name. There seems to be a strong possibility that passengers would associate services such as passenger check in, passenger processing, information desks, VIP lounges, baggage loading and unloading with the relevant airline or the airport, rather than with the Complainant. If the relevant market in which the Complainant asserts a reputation is the airlines, the evidence does not prove that, since the Complainant adopted the name "Aviance", that name has become associated with the Complainant.
The fact that the Complainant or the "aviance" alliance traded for may years before adopting the "Aviance" name, does not assist in proving that the Complainant has acquired any reputation in the "Aviance" name nor, for that matter, does the scale of the Complainant's operation.
In the absence of any contradictory evidence from the Respondent, it would be open the Expert to take at face value any evidence of the Complainant as to how the Complainant has established the requisite the reputation in the name "Aviance". However, without such evidence, the mere existence of the press release and the brochure do not establish that reputation. Reputation is not something which the Expert can infer. Even in the absence of a Response, the existence of the Rights relied on have to be proved by the Complainant.
The definition of Rights in paragraph 1 of the Policy, provides that rights other than rights enforceable under English Law can be considered by the Expert. If the Complainant wished to rely on a right, other than rights enforceable under English Law, it is incumbent on the Complainant to explain what right exists and prove that right belonged to it. There is a great deal of evidence in the Complaint as to the nature of the "aviance" alliance's business outside England but this evidence does not establish any right owned by the Complainant outside England. It would appear that each of the "aviance" alliance members will be developing their own reputation and goodwill in the "Aviance" name in their own territory and, therefore, would probably be acquiring any rights in the "Aviance" name in those territories. The mere association between the Complainant and members of the "aviance" alliance does not entitle the Complainant to enforce the other members' rights, if any.
The only evidence to which any significant weight can be attached is that which relates to the Complainant's own rights. In respect of the rights claimed by the Complainant, the Expert holds that:
For the reasons given above, the Expert finds that the Complainant has not proven, on a balance of probabilities, that it has Rights in respect of a name or mark, which is identical to the Domain Name.
Abusive RegistrationAs the Complainant has not proven that it has Rights in respect of a name or mark, which is identical to the Domain Name, it is unnecessary to decide whether the Domain Name in the hands of the Respondent is an Abusive Registration.
In light of the foregoing finding, namely that the Complainant has not proven on a balance of probabilities that it has Rights in respect of a name or mark which is identical to the Domain Name, the Expert directs that the Complaint in respect of the Domain Name aviance.co.uk be refused.
Niel Ackermann
Date: 21 February 2002