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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Game Conservancy Trust -v- RWPS [2003] DRS 1104 (9 September 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1104.html Cite as: [2003] DRS 1104 |
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Game Conservancy Trust -v- RWPS
Nominet UK Dispute Resolution Service
DRS 01104
Decision of Independent Expert
1. Parties
Complainant: Game Conservancy Trust
Country: United Kingdom
Respondent: RWPS
Administrative
Contact: Mr. David Pearce
Country: United Kingdom
2. Domain Name
gameconservancy.org.uk
(“the disputed Domain Name”)
3. Procedural Background:
The Complaint was lodged with Nominet UK (“Nominet”) by hard copy on July 10, 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on July 15, 2003, giving him 15 working days within which to lodge a Response. A Response was lodged with Nominet by hard copy on July 30, 2003, and it was forwarded to the Complainant on the same day. A Reply to the Response was received from the Complainant by e-mail on August 6, 2003 and a hard copy was received on the same day. A copy of this Reply was sent to the Respondent on August 8, 2003.
Nominet initiated its Informal Mediation procedure, but it would seem that an acceptable resolution through mediation was not achieved and the parties were informed of this on August 21, 2003. On August 27, 2003 the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet’s Dispute Resolution Service Policy (“the Policy”).
On September 1, 2003 the undersigned, Mr. David H Tatham (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality. He was subsequently selected by Nominet as the Expert for this case.
4. Outstanding Formal/Procedural Issues (if any)
There are no outstanding formal or procedural issues.
5. The Facts
The Complainant
The Complainant – Game Conservancy Trust – was founded in 1972 and it was registered as a charity registered with the Charity Commission in the United Kingdom under number 279968 in 1980.Throughout its existence, the Complainant has promoted and researched in the conservation and ecology of game species in the UK for pubic benefit under the names "Game Conservancy Trust" and "Game Conservancy".
The Respondent
The actual Respondent is named as RWPS and no information has been provided as to what these initials stand for or what are the objects of this body. Its administrative contact is a Mr. David Pearce and it is he who has provided a Response to the Complaint.
Mr. Pearce is described by the Complainant as an opponent to the role of shooting in the conservation of game species, and indeed this would appear to be confirmed by the very strong language used in the Response (see below) and on the disputed website which is described by Mr. Pearce as follows: “Our anti-cruelty, anti-hunting and pro-wildlife webpage was published to counter the misrepresentations of the Complainant and its gun-toting supporters”.
6. The Parties’ Contentions
The Complainant
The Complainant contends that the disputed Domain Name, save for its designation suffix, is identical or similar to a name or mark in which it has rights, in that it consists of the words "game" and "conservancy". The Complainant also contends – again with the same proviso – that it is identical to some of the domain names operated by and the unregistered trade mark used by the Complainant.
The Complainant’s searches at the UK trade mark registry and Companies House, through the internet, and in the national press have revealed that the Respondent has no registered or unregistered legal interest incorporating the words "game" and "conservancy". Nor does the Respondent carry on any business, charity or other activity which is interested in game conservation.
The Respondent (and particularly its administrative contact) is well known to the Complainant as an opponent to the role of shooting in the conservation of game species. The Respondent has created a website located at the disputed Domain Name, which contains material that is defamatory of the Complainant and a copy of this was attached to the Complaint.
The Complainant points out that Mr. Pearce has also been a respondent in an ICANN case (WIPO D2001-0862) which was brought against him by the Countryside Alliance Limited concerning the domain names <countryside-alliance.com> and <countryside-alliance.net>. On both of these occasions Mr. Pearce was shown to have no rights in the domain names and to have acted in bad faith.
The Complainant considers that the disputed Domain Name is an Abusive Registration. It has been registered by the Respondent to draw the public away from the Complainant's website, to host defamatory material concerning the Complainant and/or to pass off the Respondent's website as that of the Complainant. Alternatively, the Complainant considers that the Respondent has registered the disputed Domain Name in order to prevent the Complainant from registering that name and making a legitimate use of it.
The Response
The Respondent’s Response is, for the most part, a tirade against the Complainant and its activities. It is set out below in full.
“The Complainant's representative is known to the Respondent as a defender of bloodsports in the pay of the gun lobby.
The Complainant claims that the generic term "game conservancy" should be reserved exclusively to the 'Trust'. More specifically, the Complainant argues that the expression "game conservancy" - and any domain name containing these words - should be the sole property of those who seek to kill animals for sport rather than protect them. The Complainant also claims - mischievously - that it is the Respondent, not the Complainant, who has no legitimate interest in game conservancy.
These allegations are preposterous. It is precisely because the Respondent believes that so-called game should indeed be conserved - and not shot at, hunted, terrorised, killed, maimed or otherwise abused for human amusement - that the domain "gameconservancy.org.uk" was registered on 18 October 1999 for our site. Our domain accurately reflects its website's subject-matter. The Complainant's domains do not. Our anti-cruelty, anti-hunting and pro-wildlife conservation webpage was published to counter the misrepresentations of the Complainant and its gun-toting supporters.
You do not "conserve" anything - let alone another sentient creature - by hunting and killing it. The Complainant's representative lists, apparently without irony, a series of domain names his client has registered containing variants on the term "conservancy" or "conservation". These registrations are clearly abusive. Without exception, they employ euphemisms. They do not mention killing. They are designed to mask the cruelty and bloodshed caused by the Complainant's activities. To claim to "conserve" what one seeks to kill is an example of bad faith; and subsequently attempting to trademark such an expression simply compounds the offence.
Bizarrely, the Complainant prints out the results of typing in "game" "conservancy" and then "trust" into the Google search engine; and cites this print-out as evidence for its claim under the DRP. If the domain in question were "game-conservancy-trust" or some plausible variant or acronym thereof, then it is arguable that the Complainant would have procedural if not substantive justice on its side when making its submission.
But this is manifestly not the case. For at issue here is "game conservancy" - a generic concept contested between animal abusers and those who oppose them.
"Game conservancy" is not a made-up mark or proprietary label to which the Complainant can lay any legal (or moral) claim to exclusive use. It is at best controversial whether the Complainant has even any right to use it all. The Complainant is seeking to suppress an opposing viewpoint under the guise of pursuing a domain name dispute.
Large parts of everyday English language have already been appropriated by the trademark lobby (cf the WIPO/ICANN saga etc). The UK namespace is increasingly under threat as well. We are told the Complainant is currently "in the process of" filing a trademark claim [for what mark precisely? and for what purpose???]. In the meantime - and with ingenuity worthy of a better cause - the Complainant's representative seeks to use Nominet's DRP to level a fanciful charge of retrospective trademark infringement against the Respondent.
It world (sic) be unethical - to put it mildly - if the contested term "game conservancy" were taken away from its lawful registrant by those who seek to do the very opposite.
The Respondent urges Nominet to dismiss this complaint as an abuse of its processes."
The Reply
The Complainant filed a Reply to the Response, of which the following is a fairly full summary –
The Respondent makes unsubstantiated and inaccurate statements in fact and at law in his Response about the Complainant, the Complainant's representative, and the ethics of intellectual property right ownership generally. In the Complaint, the Complainant has set out the details of its intellectual property rights in its legal name "Game Conservancy Trust" and trading name/branding "Game Conservancy" as recognised at law and in public documents in the United Kingdom. The Complainant has shown how the words "game" and "conservancy" when combined together are distinctive of the charitable work and marks of the Complainant, who is the only legally recognised body in the UK to undertake charitable investigation into and development of the conservation of game species in particular.
The Respondent acknowledges that a "variant" of the words "game", "conservancy" and "trust" should give the Complainant access to "substantive justice". For these reasons, the Complainant denies that the concept of "game conservancy" is generic as alleged. Contrary to the Respondent's allegations, the Complainant's purpose in applying to Nominet under the DRS Procedure is not to seek worldwide exclusive proprietorial rights in the words "game" and "conservancy"; nor does the Complainant seek to suppress opposition to its charitable works; nor does the Complainant claim "retrospective trademark infringement". It seeks remedy for the Respondent's Abusive Registration of a UK URL that is distinctive of the Complainant.
The Complainant denies that it owns or has cited any domains that contain the word “conservation” rather than "conservancy". The Complainant's trade mark application is available to public scrutiny at the Patent Office where it has passed examination.
The Complaint has been legitimately lodged in accordance with the DPS Procedure and, accordingly, is not "an abuse of process" as is asserted.
The Respondent makes no attempt to illustrate any legitimate or legal claim that he may have to operate a website from a URL which consists of words when combined are identified with the Complainant in the UK. Further, the Response contains highly emotive language and unjustified claims against the Complainant which mirror those contained on the abusive website, which the Respondent has clearly registered in an attempt to draw the UK public away from the Complainant's websites and/or to prevent the Complainant registering the disputed Domain Name.
The Complainant does not consider the DRS Procedure of Nominet or this particular application as an appropriate forum to engage in trading rhetoric on the ethics of intellectual property rights or the morals behind the life cycle of game species in the UK.
7. Discussion and Findings
At the outset, the Expert would like to make clear that he does not consider the Complaint to be an abuse of the DRS process. Nor does he believe that its filing could, in itself, serve to “suppress” the undoubtedly sincerely-held views of the Respondent, as he alleges. The Complaint has been legitimately filed, by a legal entity, with a legitimate claim that a name in which it believes it has rights has been incorporated into a domain name by an unconnected third party.
General
According to paragraph 2 of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that –
i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and
ii the disputed domain name, in the hands of the Respondent is an Abusive
Registration.
Complainant’s Rights
The Respondent accepts that the Complainant has rights in the name “‘game-conservancy-trust’ or some plausible variant or acronym thereof”. However he contests that the Complainant has, or can have, any rights in the name ‘Game Conservancy’ which, he argues, is a generic term.
It is of course perfectly possible for an ordinary dictionary word to be a trade mark, even to be a registered trade mark (e.g. FOX for mint-flavoured boiled sweets or EAGLE for comics, or PENGUIN for books). It is also possible for a dictionary word to be registered and used by different companies for entirely different purposes (e.g. APPLE for computers and for music publishing). None of this prevents the dictionary word from being used in its proper context, nor does it amount to appropriating large parts of the English language , as the Respondent alleges.
The Complainant (Game Conservancy Trust) was founded in 1972 and it was registered as a charity in 1980. It has in fact been in existence for longer than that. The Expert has visited the Complainant’s principle website, and according to a History of the Complainant that appears thereon, the Complainant had its origins in 1969 under the name of ‘The Game Conservancy’. It is a substantial organisation with nearly 100 employees and it is currently involved in over 50 research projects. Clearly the Complainant’s use of the titles ‘Game Conservancy’, ‘The Game Conservancy’ and ‘The Game Conservancy Trust’ are of long standing, and it has acquired a substantial goodwill in them.
In addition, the Complainant is the owner of the following domain names, all of which incorporate its name or the initial letters of its name. Its main website, and the one which details the work of the Complainant, is <www.gct.org.uk> and all the others are linked to it by metatags.
<gct.org.uk>
<game-conservancy.org.uk>
<game-conservancy.co.uk>
<game-conservancy.com>
<game-conservancy.net>
<game-conservancy.org>
<game-conservancy.info>
<gameconservancy.co.uk>
<gameconservancy.com>
<gameconservancy.net>
<gameconservancy.org>
<gameconservancy.info>
<gameconservancytrust.co.uk>
<gameconservancytrust.org.uk>
<gameconservancytrust.com>
<gameconservancytrust.net>
<gameconservancytrust.org>
<gameconservancytrust.info>
<gctauctions.com gctevents.com>
<gctedirectory.com>
<gctedirectory.net>
<gctedirectory.org>
<gctedirectory.info>
The Complainant is also in the process of registering a trade mark No. 2329316 in classes 06 08 09 13 14 16 18 21 24 25 28 41 42, which was filed on April 12, 2003 and which it claims to have used in the UK since 1980. This application has been examined and is apparently now at the publication stage. The Expert has visited the website of the UK Patent Office and examined this application. It consists of the words: THE GAME CONSERVANCY TRUST written on 3 lines alongside the representation of a game bird standing over some claw marks. As this trade mark is only recently filed, as it has not even been published yet, and as the words ‘Game Conservancy’ form only a small part of it, the Expert has decided not to take it into account. Perhaps it is worth pointing out at this time that a pending trade mark application cannot, in normal circumstances, be the basis for an infringement action.
The Complainant claims to be well-known in the UK press because of its work concerning game conservation and in the Complaint it referred to a number of press articles published during 2002 i.e. well after the disputed Domain Name was registered in 1999. However it filed no copies of any of them and reference to them is therefore of very little value.
The Complainant also claims to have made submission to, and to have been referred to in several UK governmental reports, inquiries and/or legislation, but again no proof thereof has been filed.
The Complainant did however file a copy of a search it conducted in July 2003 on google.com for “game conservancy trust” of which 9 out of the first 10 hits relate to the Complainant, its websites or its work while the other hit is the disputed Domain Name registered by the Respondent.
On the basis of all this evidence, the Expert has come to the conclusion that the Complainant does indeed have rights in the name ‘Game Conservancy’.
It is customary in domain name disputes, when making a comparison for similarity, to disregard the suffix ‘.org.uk’, because it has no relevant significance and because it is generic. The definite and indefinites articles are also, sometimes, dropped from any comparison. On this basis the Expert is no doubt that the name in which the Complainant has rights is identical and very similar to the disputed domain name, and he is satisfied that the Complainant has established the first leg of paragraph 2 of the Policy.
Abusive Registration
The Complainant considers that the disputed Domain Name is an Abusive Registration. It contends that the name has been registered by the Respondent to draw the public away from the Complainant's website, to host defamatory material concerning the Complainant and/or to pass off the Respondent's website as that of the Complainant. Alternatively, the Complainant considers that the Respondent has registered the disputed Domain Name in order to prevent the Complainant from registering that name and making a legitimate use of it.
An ‘abusive registration’ is defined in paragraph 1 of the Policy as being “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.”
Paragraph 3 of the Policy reads as follows:
(a) A non-exhaustive list of factors which may be evidence of an Abusive Registration is as follows:
(i) circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights;
C. primarily for the purpose of unfairly disrupting the business of the Complainant.
(ii) 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 by, or otherwise connected with the Complainant;
(iii) in combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making abusive registrations; or
(iv) it is independently verified that the Respondent has given false contact details to us.
Clearly paragraph 3(a)(i)A does not apply in this case as there has been no prior contact between the parties, and no attempt by the Respondent to sell the disputed Domain Name to the Complainant. However both 3(a)(i)B and C would appear to be relevant and indeed both have been claimed by the Complainant.
Burden of Proof
However before ruling on that aspect of the Policy, the Expert must consider the question of whether or not the Respondent’s website is a legitimate protest site and therefore where the burden of proof lies.
Paragraph 4 of the Policy contains a number of examples of how a Respondent might show that his Domain Name is not an Abusive Registration. Paragraph 4(a)(i) reads: “Before being informed of the Complainant’s dispute, the Respondent has: …C made legitimate non-commercial or fair use of the Domain name; and paragraph 4(a)(ii) reads: “The Domain Name is generic or descriptive and the Respondent is making fair use of it”.
According to paragraph 4(b) “Fair use may include sites operated solely in tribute to or criticism of a person or business, provided that if: (i) the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts Rights, without any addition; and (ii) the Respondent is using or intends to use the Domain name for the purpose of a tribute or criticism site without the Complainant’s authorisation, then the burden of proof will shift to the Respondent to show that the Domain Name is not an Abusive Registration.”
There is no doubt that the Respondent’s website is critical of the Complainant. Also, since the dispute was filed, the Expert has visited this site and found that the Respondent has added, as a STOP PRESS item, a copy of its Response in this dispute.
In his defence, the Respondent has not prayed in aid Article 4(b), and indeed it can be said that his Response does very little to address the issues raised by the Complaint, or the content of the Policy itself. Nevertheless, it would be unfair to the Respondent if the Expert were not to consider the question of his website being a protest site.
The first issue to be considered is the question of identicality. In this case, the disputed Domain Name is not exactly identical to the names in which the Complainant has rights, but it would be nit-picking not to accept that it is –
Complainants’ Rights Domain Name
Game Conservancy gameconservancy.org.uk
The Game Conservancy
The Game Conservancy Trust
In connection with the second part of paragraph 4(b), it was said on page 14 of the Decision of the Appeal Panel in Case DRS 00389 (Hanna-Barbera Productions, Inc v. Graeme Hay) in connection with the Domain Name <scoobydoo.co.uk>: “the Panel is unanimous in the view that the purpose of paragraph 4.b is to dissuade people from taking the name of another without adornment and without permission and with a view to making direct reference to that person whether for tribute or criticism. The clear meaning of the Rule is that such a registration is prima facie abusive, unless the Respondent can show otherwise.”
In this case, as has been said above, the site is highly critical of the Complainant (the Complainant says it is defamatory), and it is also clear that what appears on this site is without the approval of the Complainant, Thus, prima facie, the disputed Domain Name is abusive and it was up to the Respondent to show otherwise. It was pointed out above that he has done very little to respond to the main thrust of the Complaint, preferring to level a number of unsubstantiated charges against the Complainant. It is true that he has alleged that the words ‘game conservancy’ are generic and that the Complainant’s name is a misnomer, but in view of the finding above that the Complainant does have rights in this title, these allegations are baseless.
It is the opinion of the Expert therefore, that the Respondent has not discharged his burden of proof and that the website at the disputed Domain Name is not a protest site and that it is abusive.
Nevertheless, it is still necessary to consider the other aspects of paragraph 3 of the Policy.
Firstly, and despite the Complainant’s impressive list of registered domain names, the disputed Domain Name does, in the opinion of the Expert, prevent the Complainant from registering this particular domain name. Therefore, it is a blocking registration according to paragraph 3(a)(i)B of the Policy. As to paragraph 3(a)(i)C and disruption of the Complainant’s business, no one in this country at present and reading the daily press can be unaware of the current debate being conducted between those who deplore blood sports and those who support them. Although not directly concerned with this, the objects of the Complainant are considered by some to be not so far removed from hunting with hounds, and clearly Mr. Pearce can be numbered among them. There are many different fora for this debate and the Complainant is right when it says, in its Reply, that a domain name dispute is hardly the right place for this to be conducted. The Respondent could just as easily have chosen as a platform for his views a website that did not use the Complainant’s name.
However it is apparent that some of the contents of the website are intended to disrupt the Complainant’s business e.g. “The Trust seeks to promote hunting, shooting and killing animals for fun” OR “Game Conservancy Ltd advises farmers, landowners and other ill-named ‘conservationists’ on different ways to kill animals for ‘sport’”.
With regard to paragraph 3(a)(iii) it has already been held that the disputed Domain Name is an abusive registration, and the reference to the WIPO Decision under the ICANN Rules provides some evidence that the Respondent does make a habit of registering abusive domain name registrations.
Paragraphs 3(a)(ii) and (iv) would not appear to be relevant.
8. Decision
The only concern in a dispute such as this is whether or not a disputed Domain Name is abusive and, having weighed all the evidence, the Expert finds that the Complaint as a whole has been proved.
In conclusion, the Expert finds that the Complainant does have Rights in the name ‘Game Conservancy’ and that this name is identical or similar to the disputed Domain Name.
The Expert further finds that the disputed Domain Name is an Abusive Registration in the hands of the Respondent.
The Expert therefore directs that the disputed Domain Name <gameconservancy.org.uk> be transferred to the Complainant.
David H Tatham
Date: 9 September 2003