VEF (UK) Ltd v Jones (t/a ABC Immobilier) [2004] DRS 1609 (27 April 2004)

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2. Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service (“DRS”) Policy and Procedure (“the Policy” and “the Procedure” respectively).

3. Nominet received the Complaint dated 5 March 2004, together with annexed evidence, on 10 March 2004. Nominet validated the Complaint and sent it to the Respondent on 15 March 2004 and advised the Respondent that he had 15 working days, that is, until 6 April 2004, to submit a Response. That time frame is stipulated in paragraph 5(a) of the Procedure. The Respondent failed to submit a Response, either by 6 April 2004, or at all.

4. On 7 April 2004, in accordance with paragraph 5(d) of the Procedure, Nominet notified both parties that an independent expert would be appointed if the Complainant paid the applicable fees, per paragraph 21(a) of the Procedure, within the specified time period. On 16 April 2004, the fees were received from the Complainant.

5. After confirming that no reason existed why the appointment could not be accepted and on providing a declaration of impartiality and independence, the undersigned, Victoria McEvedy, was appointed as an independent expert in this dispute on 23 April 2004.

6. By paragraphs 2(a) & (e) of the Procedure, the Respondent is deemed to have received the Complaint on 16 March 2004, at the latest. The Respondent has failed to submit a Response.

7. There can be no doubt that the Respondent received the Complaint however, as he telephoned and e-mailed Nominet on 15 March 2004, in reaction to it. This is recorded in the file, provided to me, of communications between Nominet and the parties.

8. Where a Respondent fails to submit a Response, the Procedure does not provide for an automatic decision in favour of the Complainant; rather paragraph 15(b) provides that the expert will proceed to a decision upon the Complaint. Paragraph 15(c) further provides that the expert may draw such inferences from a party’s non-compliance as considered appropriate. While both provisions make allowance for exceptional circumstances, no such circumstances have been drawn to my attention and I must therefore proceed to a decision based on the Complaint. I have indicated below where I have drawn inferences from the Respondent’s default.

9. On 15 April 2004, Nominet received an additional submission from the Complainant and provided a copy of it to the Respondent. That submission includes: (1) an e-mail offer from the Respondent to the Complainant dated 15 March 2004, making an offer to transfer the Domain Name for the sum of £750 and promising to redirect the URL immediately as a sign of goodwill; and (2) a webpage from www.Scotreg.com, visited on 31 March 2004, which offers the Domain Name for sale. Paragraph 13 of the Procedure allows an expert to consider additional submissions at their discretion, although they are discouraged, in the interests of the speed and simplicity of the DRS. I accept however, that in this case, the additional submission appears to be genuinely new evidence insofar as the e-mail offer of 15 March 2004 could not have been included with the Complaint which predates it. It is not clear whether the Scotreg evidence could have been provided earlier. I will admit them as evidence.

The Facts:

10. The Respondent trades under the name and style ABC Immobilier, as demonstrated by the Whois search of 15 March 2004, supplied to me by Nominet. The Respondent has a website at www.immoabc.co.uk, and a copy of a page from that site, together with linked pages, as visited on 5 March 2004, has been submitted by the Complainant.

11. Since early April 2003, the Complainant’s formal company name in the UK has been VEF (UK) Ltd. In June 2003, it registered the word “vef” in 2 formats and various classes with the UK Registrar of Trade Marks. Both are evidenced by the Complainant’s submission of Certificates from the Registrars of Companies and Trade Marks respectively. The Complainant had previously, in mid 2002, registered the word “vef” as a French national trade mark, and submitted a letter of 13 June 2002, from its French Conseils confirming this. The Complainant’s website is at www.vefuk.com.

12. The Complainant asserts that there is no connection between the parties and they are competitors. Both are in the business of selling real estate in France to UK residents. This is demonstrated by the copy pages from www.immoabc.co.uk and www.vefuk.com, both as visited on 5 March 2004, submitted by the Complainant.

13. The Respondent registered the Domain Name, vefuk.co.uk, on 1 October 2003, as shown by the Whois search. As at 15 March 2004, the Domain Name led to the website at www.immoabc.co.uk based on the copy of the page from that site, on that date, provided to me by Nominet.

14. The Complainant asserts that the Domain Name is identical or similar to a name or mark in which it has Rights and that registered in the hands of the Respondent, it is an Abusive Registration. In particular, the Complainant asserts its rights as the owner of registered trade marks in the word "vef" in both France and the UK and its rights in its company name, VEF (UK) Ltd. The Complainant alleges that the Respondent’s registration of the Domain Name is an Abusive Registration for the following reasons:

a. It was done with the intention of selling the Domain Name to the Complainant; and/or

b. It was done for the purpose of unfairly disrupting the business of the Complainant.

15. As to registration with the intention of selling the Domain Name to the Complainant, the Complainant relies on the following:

i. An offer made by the Respondent by telephone, to a director of the Complainant, Mr. Paul Owen, to sell the Domain Name for 5,000 euros (“the Telephone Offer”).

ii. An offer made by the Respondent by e-mail, to the Complainant’s employee, Ms Catherine Palmer, on 15 March 2004, to sell the Domain Name for £750, which e-mail is included in the additional submission referred to in paragraph 9 above (“the E-mail Offer”).

16. As to unfairly disrupting its business, the Complainant relies on the following:

i. The Domain Name is similar to the company name of the Complainant, VEF (UK) Ltd, as evidenced by the certificate of incorporation on change of name.

ii. The Respondent and the Complainant operate in the same business, offering properties in France for sale to English buyers (as evidenced by the printed pages from both parties’ websites); people are likely to be confused and believe the Domain Name is controlled by the Complainant.

iii. The Complainant is one of the market leaders in the business; it’s advertising is extensive and well targeted (evidenced by the Complainant’s promotional guide on French Property).

iv. The Complainant and Respondent are competitors, the Domain Name leads directly to the Respondent's website, potentially diverting business away from the Complainant.

v. The Complainant takes great care over its image and branding; the association with the Respondent is potentially damaging to the Complainant's image (evidenced by the Complainant’s promotional guide on French Property).

18. The DRS is designed as a fast, simple alternative to litigation. Domain names are registered on a first come, first served basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy. The Policy is a “standalone” one and disputes should be decided by reference to its terms alone. General principles of trade mark law may inform an expert’s consideration, but legal authorities are persuasive not binding. See the decision of the Appeal Panel in Seiko v Designer Time/Wanderweb DRS 00248. An expert must decide a dispute on the basis of the parties’ submissions, the Policy and the Procedure, as provided in paragraph 16(a) of the Procedure, and the powers of experts and Appeal Panels are limited to deciding whether domain names should be cancelled, suspended, transferred or amended. The DRS does not encompass issues of trade mark infringement or passing-off, which are matters for the courts, to which either party to a dispute may have recourse at any time.

19. Paragraph 2(a) of the Policy requires the Complainant to prove 2 elements:

“i.The Complainant 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.”

The Complainant bears the onus of proof and must prove both elements on the balance of probabilities. As noted in paragraph 8 above, the fact that no Response has been submitted does not relieve the Complainant of the need to prove its case. I am still required to determine the “admissibility, relevance, materiality and weight of the evidence” by paragraph 12(b) of the Procedure.

20. The first of the 2 elements in paragraph 2(a) of the Policy requires the Complainant to establish that it has Rights in respect of a name or mark identical or similar to the Domain Name. Rights are defined by the Policy as including but not limited to rights enforceable under English law. This is not a high threshold, Seiko. Id.. It includes rights to registered trade marks and rights protected by the law of passing-off, as well as other rights. I note that although the parties do business in France, their activities are directed to customers in the UK, therefore English law on passing-off is applicable. In determining similarity, suffixes are to be ignored, see the decision of the Appeal Panel in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359.

21. In this case, the Complainant is the owner of UK registered trade marks in the word “vef.” This comprises the distinctive part of the Domain Name and renders it similar to the registered marks. The Complainant also has rights in, and can protect, its company name, VEF (UK) Ltd, under the law of passing-off. The Domain Name, vefuk, is identical to the company name, if the brackets and the abbreviation, Ltd., are ignored. In my view the Domain Name is, at the very least, similar to the Complainant’s company name. The law of passing-off further extends protection to trading names and styles, and the Complainant’s trading name and style include its own domain name, vefuk.com. Ignoring the suffixes in both cases, vefuk.co.uk and vefuk.com are identical. In summary, I am satisfied that the Complainant has the requisite Rights.

22. The second element the Complainant must prove under paragraph 2(a) of the Policy, is that the Domain Name is an Abusive Registration, namely that the registration or subsequent use of it “took unfair advantage of or was unfairly detrimental to the Complainant's Rights,” as defined in paragraph 1 of the Policy.

23. Paragraph 3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration, while paragraph 4 provides a similarly non-exhaustive, illustrative, list of factors, which may be evidence to the contrary. The Complainant relies on 2 factors from paragraph 3 and these are considered below.

For Sale To Complainant

24. The first factor is at paragraph 3aiA of the Policy and is described as:

“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;”

25. In support of this factor, the Complainant relies on the Telephone Offer, at paragraph 15(i) above. The Complaint is signed and includes a statement of truth and the assertion is uncontested by the Respondent. I therefore accept the Telephone Offer as proved.

26. This alone does not take the Complainant quite far enough however. The key words in paragraph 3aiA are “primarily for the purposes.” Accordingly, only if the Respondent’s intention at the time of registration was a sale to the Complainant, will this factor be made out. “Primarily” here does not mean only (Seiko. Id.,) and it is sufficient if it was one of a number of purposes, or a main purpose.

27. The Respondent, having chosen not to submit a Response, is silent as to his reasons and therefore we cannot know what his subjective intention was. I can however, examine the facts for objective probable intent and on the very face of it, the lack of any connection between the parties and their relationship as competitors, renders the Respondent’s registration of a Domain Name similar to the Complainant’s company name, highly indicative of intentional mischief at the point of registration. This is compounded by the fact that the Domain Name is identical to the domain name of the Complainant, ignoring the suffixes. I must also consider the lack of any explanation by the Respondent for his selection of a competitor’s name. If the Respondent had another reason for his choice of the name, I would have expected him to come forward with it. I am permitted to infer his silence against the Respondent under paragraph 15(c) of the Procedure, and do so here.

28. It can also be inferred that when the Respondent made the registration, he probably foresaw a number of likely outcomes, including his agreeing to relinquish the Domain Name to the Complainant for a profit. This can be drawn from the Complainant’s careful attention to its branding, which rendered a failure to react to the similarity, improbable. Furthermore, the price named in the Telephone Offer demonstrates the Respondent’s intention, and indeed attempt, to realize a profit. I find that the Complainant has made out this factor as evidence of an Abusive Registration.

29. For completeness, I note that nothing turned on the admission of the additional submission. The E-mail Offer referred to in paragraph 15(ii) above, was a response to the Complaint and an offer to settle the dispute. It cannot have much, if any, meaningful bearing on primary purpose. Similarly, in light of my findings above, it is not necessary to rely on the Scotreg offer.

“i. Circumstances indicating that the Respondent has registered or
              otherwise acquired the Domain Name:…
C. primarily for the purpose of unfairly disrupting the business
              of the Complainant;”

Again, the use of the words “primarily for the purpose,” import a requirement of intent and no evidence of subjective intent is available, restricting our inquiry to objective intent.

31. The Complainant relies on the points in paragraph 16 (i)-(v) above. As I read them, these points are cumulative and the Complainant’s case is, in effect, that the similarity between the Domain Name and the Complainant’s company name is no accident; the Respondent having deliberately selected it to confuse and/or suggest a connection to the Complainant, enabling the Respondent to leverage the Complainant’s reputation and expensive advertising, to attract customers to his website, and potentially divert actual business away from the Complainant. In addition to possibly losing actual business to the Respondent, the Complainant is concerned that its reputation may be harmed by the quality of the Respondent’s site, and potential customers deterred.

32. I do not think the words “unfair” and “disruption,” as used in paragraph 3aiC, have any special interpretation beyond their ordinary meaning. To choose a Domain Name similar to a competitor’s name and direct it at one’s own website, in order to attract traffic and possibly divert business, is unfair. It interferes with or disrupts the ability of potential customers to access information about the Complainant and its services and to contact the Complainant. It is not necessary for the Complainant to show that it has actually lost business under paragraph 3aiC of the Policy and I note that the Complainant has chosen not to rely on factor 3aii.

33. For the reasons already given in paragraphs 27 & 28 above, I find that one of the Respondent’s likely intentions at the time of registration was unfair disruption of the Complainant’s business. Indeed it was the actual or threatened disruption that would prompt the hoped-for sale at a premium discussed above. I find that the Complainant has also made out this factor as evidence of Abusive Registration.

34. As noted in paragraph 18 above, I must make my decision on the basis of the submissions, the Policy and the Procedure. Therefore, although the Respondent has failed to submit a Response, I think it right that I should consider whether, on the face of it, any of the factors in paragraph 4 of the Policy, evidence that the registration is not an Abusive Registration. The only factor that could possibly be applicable is paragraph 4aiA, use in connection with a genuine offering of goods and services, and that cannot assist the Respondent, as genuine use is incompatible with a primary purpose of unfairly disrupting the business of the Complainant.

35. Taking all the circumstances of this dispute into account, I find that the Complainant has Rights in respect of a name and mark which are similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration. Accordingly, I direct that the Domain Name be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> VEF (UK) Ltd v Jones (t/a ABC Immobilier) [2004] DRS 1609 (27 April 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1609.html Cite as: [2004] DRS 1609

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