Platinum Events -v- McGovern [2003] DRS 662 (15 January 2003)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

The complaint was notified to Nominet on 17 October 2002 and received in full on 25 October. Nominet checked that it complied with the Nominet UK Dispute Resolution Service Policy (“the Policy”) and the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”). Nominet notified the Respondent of the Complaint on 25 October and informed the Respondent that he had 15 days within which to lodge a response. The response was received by Nominet on 8 November. The Complainant filed a reply, which was dated 15 November and received by Nominet on 19 November. Informal mediation followed. When that did not resolve the dispute, Nominet notified the parties that an Expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 23 December.
On 28 December 2002 I, Mark de Brunner, agreed to serve as an Expert under Nominet’s Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.

There is a reference in the papers to the Complainant’s need to incorporate, though no evidence that incorporation in fact followed. Nevertheless it is the ‘Director’ who holds herself out as representing the Complainant. Whatever her formal status, I refer to her below as the Complainant’s Director.

Platinum Events and Central Reservations is a hotel venue-finding and accommodation-booking service. A business bank account for Platinum Events and Central Reservations was in existence from June 1999. The venue-finding and accommodation-booking sides of the business appear to have run in tandem.
There is some dispute between the Complainant’s Director and the Respondent about their respective standing in and contribution to the business. But it seems clear to me that
(i) the business was started, in March 1999, by the Complainant’s Director. She opened the bank account, as sole signatory, and was responsible for initiating all the key activities associated with running a business.
(ii) the Respondent was at the time married to the Director’s sister and was given a job by the Director on the strength of that family connection. There was a period during which the Respondent was treated as a self-employed contractor (paid without deduction of tax and national insurance), but on 1 January 2001 he began to be treated as an employee (his earnings paid net of tax and national insurance). In September 2001 the Complainant’s Director replied to a request from Halifax Plc for information in support of a mortgage application by the Respondent. She did so as the respondent’s manager in the business that employed him.
The Respondent registered the domain name on 26 January 2001 while working for the Complainant.
Preparations for a website began almost as soon as the domain name was registered. The Complainant spent at least £2,000 or so having the site developed. The Respondent was not involved. In August 2001 the domain name was being used for the Complainant’s business email. By October 2002 the domain name was also being used as a website for the Complainant’s business.
The business relationship did not work out and towards the end of 2001 the Respondent stopped working for the Complainant.
At some stage the Respondent opened a bank account in his name ‘trading as Platinum Events’ but there is no evidence about when that happened, nor is there any other evidence to suggest he might have begun trading under that name. Indeed there is no other evidence at all of his trading on his own account.
Late in 2002, several months after leaving the business, the Respondent told the Complainant that he had received some interest in buying the domain name. He asked for £50,000 to transfer the domain name to the Complainant, on the understanding that if he could not sell it to the Complainant he would take down the website and dispose of the domain name so that it could no longer be used for the Complainant’s business.

The Complainant’s contentions can be summarised as follows.
(i) It has rights in the name Platinum Events.
(ii) When the Respondent registered the domain name he did so on the Complainant’s behalf, and the Complainant reimbursed the registration fee. (There is evidence from another employee to this effect.)
(iii) The registration must have been abusive because the Respondent is now trying to sell the domain name to the Complainant - and alternatively threatens to sell it elsewhere, disrupting the Complainant’s business.
Respondent

The Respondent says that his registration and use of the domain name is justified for the following reasons.
(i) He has rights in the name Platinum Events.
(ii) He registered the domain name on his own initiative, for himself and at his own expense.
(iii) In asking for £50,000 for the domain name he is legitimately exploiting an asset that he owns.

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
(i) it 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.
Complainant’s Rights

The Complainant has been trading as Platinum Events (and as Central Reservations) since at least the middle of 1999. It has invested time and money in developing the business, and I infer that is has built up a measure of goodwill. It was the Complainant that invested in the development of the website that used the domain name. It evidently has rights in respect of the name Platinum Events. That name is identical to the domain name. The Complainant therefore has rights in respect of a name which is identical to the domain name.

The Dispute Resolution Service rules define an abusive registration as 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.

The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. These factors are

(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 expenses directly associated with acquiring or using the domain name

(b) as a blocking registration against a name…in which the Complainant has rights; or

(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 or authorised by, or otherwise connected with the Complainant

(iii) where, 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.
None of these factors applies here. There is no evidence that the Respondent registered the domain name in order to sell it later for a profit. The subsequent attempt to make a sale looks to stem from the Respondent’s frustration at the ending of his business relationship with the Complainant. This was not a blocking registration, nor was it intended unfairly to disrupt the Complainant’s business: the domain name was registered so that it could be used by and for the business trading as Platinum Events (and it was in use several months after the Respondent’s business connection with the Complainant had come to an end). There is no evidence of the domain name’s being used in a way that confused anyone: it was used by and for Platinum Events. There is no evidence of any other registrations by the Respondent, so no pattern of registrations is discernible – let alone a pattern of abusive registrations.
The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. These are where

(a) used the domain name in connection with a genuine offering of goods or services

(b) been commonly known by the name…which is identical or similar to the domain name

(ii) the domain name is generic or descriptive and the Respondent is making fair use of it.
None of these factors applies satisfactorily here either. The Respondent did not use the domain name in connection with an offering of services (the Complainant did). On the evidence I have, the Respondent was not known by the name Platinum Events. As for non-commercial or fair use of the domain name before being informed of the Complainant’s the dispute, it was not the Respondent but the Complainant that was making use of the domain name. The domain name is not generic, nor – in the terms implied by the Policy - is it descriptive.
The list of factors that may be evidence that the domain name is an abusive registration, and the other list of factors that may point the other way, are both mainly concerned with either motive in registration, or the use to which a domain name has been put. A key difficulty here is that there is very little evidence of either motive or use.
Of course neither list of factors is exhaustive, and the underlying question remains whether the domain name was registered or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights. In answering that question, it seems to me helpful to consider the alternative ways in which the Respondent’s connection with the Complainant is described. On the Complainant’s reading:

(ii) the Respondent did not have a stake in the business (he was only ever a contractor or an employee) and

(iii) the Respondent registered the domain name on the Complainant’s behalf.
On the Respondent’s reading:

(ii) registered the domain name not for the Complainant, but for himself.
I accept that the Complainant’s Director set up and controlled the business. She was responsible for initiating all the key activities associated with running a business – including devising the business model, and arranging financing and marketing. She thought up and brought into use the name Platinum Events; set up and ran the bank account; hired the workforce (including the Respondent); agreed and paid for the development of the website; and at least at the planning stage was to have featured heavily in the content of the site. On the evidence before me, it is clear that the Respondent registered the domain name on the Complainant’s behalf. If that is a fair view, it is not open to the Respondent to exploit the asset for himself, and the Respondent’s threat to sell the domain name is use of that domain name in a manner that takes unfair advantage of the Complainant’s rights.
But I think the answer to the underlying question is the same even on the alternative view that the Respondent registered the domain name for himself. He would still have been doing so by virtue of his connection with the Complainant, but - beyond the opening of a bank account - there is no evidence that the respondent was trading, and only unsubstantiated assertions that he had any rights in the name Platinum Events. I think it is telling that the Respondent says
If I had invented the game ‘Bingo’ would I have rights to the name bingo.com? No of course not, and as such is true in this case.
Asserting his rights to the domain name platinumevents.co.uk in this way, the Respondent implicitly concedes that he had nothing to do with the setting up of Platinum Events. It seems to me that he himself had no rights in the name. On this view, he nevertheless went ahead with the registration knowing that the domain name was to be used by and for the Complainant. That cannot have been fair. The Complainant clearly took the view that the domain name was being registered for the business. Had it known it was exposed to the possibility that the domain name might be exploited by the Respondent on his own account, it would presumably not have invested in the development of a website and email using the domain name – because of the risk that the domain name, investment and associated goodwill might have been lost at a stroke beyond its control. If that is right, registration of the domain name by the Respondent could only have been unfairly detrimental to the Complainant’s rights in the name Platinum Events.
Either reading leads inevitably to the conclusion that the domain name was registered or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.

I find that the Complainant has rights in respect of a name which is identical to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.
In the light of that, I direct that the domain name platinumevents.co.uk be transferred to the Complainant.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Platinum Events -v- McGovern [2003] DRS 662 (15 January 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/662.html Cite as: [2003] DRS 662