Crown Protection Services Ltd v Top Dog Security Ltd [2004] DRS 1703 (1 June 2004)

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The complaint was received by Nominet in full on 14 April, 2004. Nominet validated the complaint and informed the Respondent, by both letter and by email on 20 April, 2004, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 13 May, 2004) to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 17 May, 2004, noting that Informal Mediation was not an option in this situation, and inviting the Complainant 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 24 May, 2004.

On 26 May, 2004, Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as Expert with effect from 1 June, 2004.

The Complainant, Crown Protection Services Limited was incorporated under its present name in 1993. It provides security services and operates an established web site at www.security-guards.com (the domain name security-guards.com was registered in May 1998). It has various pending UK trademark applications in its name (under ADP number 0849135001), including UK 2362204 for CROWN PROTECTION SERVICES dating from 30 April, 2004.

The Respondent, Top Dog Security Limited, was incorporated in 2001. It is also in the business of providing security services. It operates a website at www.topdogsecurity.co.uk.

From the WHOIS records, the Domain Name crownprotectionservices.co.uk was registered for Top Dog Security Ltd on 23 October, 2003. At the time of the Complaint and when checked by the Expert, there was a website at www.crownprotectionservices.co.uk which reproduced the Respondent’s website at www.topdogsecurity.co.uk.

1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).

In support of its case, the Complainant says that Crown Protection Services Limited was incorporated on the 23rd July 1993 under registration number 2838849 at Cardiff U.K.

The owners of the web address (www.crownprotectionservices.co.uk) are Top Dog Security Ltd who have made an abusive registration.

Both Crown Protection Services Ltd and Top Dog Security Ltd provide Security Services and [the Complainant is] concerned that Top Dog are passing themselves off as [the Complainant] Company.

[Complainant requests] help in having the name removed from the ownership of Top Dog so that [Complainant] may be allowed to own [a] web name which is the same as [its] Limited Company name which [it has] owned for the past 11 years. Complainant asks why it was not made aware of the purchase [of the Domain Name by Top Dog Security Ltd.

The Respondent made no Response to, and raised no challenge to, any of the facts and statements submitted by the Complainant.

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is 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.

The Complainant in this case has asserted that it has rights in the name CROWN PROTECTION SERVICES and that this name is identical or similar to the Domain Name.

Although the Complainant has recently filed a number of trade mark applications, including one for CROWN PROTECTION SERVICES, these applications do not predate the registration of the Domain Name or the date of the Complaint.

However, as the Complainant has stated, it is clear that it has used the CROWN PROTECTION SERVICES name at least since 1993 in general and for sometime since 1998 in relation to its website on the internet. Its name clearly appears on its headed paper and on the website. It is apparent that such use predates the registration of the Domain Name at issue by the Respondent.

The Respondent has not challenged any of the submissions made by the Complainant regarding the Complainants rights in the name CROWN PROTECTION SERVICES. In the Expert’s view, in these circumstances, these submissions are quite sufficient to establish a basic claim to common law rights in the name as a company name and as an unregistered trade mark.

Accordingly, for the purposes of the Policy, the Expert concludes that the Complainant does have Rights in this case in respect of a name or mark, which is similar to the Domain Name.

The Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines “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.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy. The most relevant factor in the present case is as set out in Paragraph 3a(i)C:

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 or authorised by, or otherwise connected with the Complainant.”

However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

The evidence shows that the Domain Name has been used for a webpage which was identical to that at www.topdogsecurity.co.uk, and which included the Respondent’s contact details with no reference to the Complainant.

On the evidence, which has not been questioned or countered by the Respondent, the obvious inference is that the Respondent, as a direct competitor of the Complainant, has knowingly taken the Complainant’s name and used it in the Domain Name for the specific purpose of diverting potential customers of the Complainant away from the Complainant and towards the Respondent’s business. Subject to being able to meet the more stringent evidential requirements for Court action, the Complainant would appear potentially to have good grounds for asserting that the Respondent’s actions amount to a flagrant case of passing-off and that the Domain Name is being used as an “instrument of fraud”, as contemplated by the Court of Appeal in its judgment in the “One In A Million” case (British Telecommunications plc & Others v. One In A Million Limited & Others, [1999] FSR 1), in that the motivation and action of the Respondent has evidently been to misappropriate the Complainant’s property – their goodwill in the CROWN PROTECTION SERVICES name – and to use that name in the Domain Name crownprotectionservices.co.uk in a calculated misrepresentation with the deliberate intention of taking business away from the Complainant. In circumstances like these, it is surely beyond argument that such action goes beyond the realms of legitimate competition and is manifestly unfair, to say the very least.

Consequently, the Expert has no hesitation in concluding that the Domain Name has been used by the Respondent in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights and that it is an Abusive Registration for the purposes of the Policy.

Having concluded that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert determines that the Domain Name, crownprotectionservices.co.uk, should be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Crown Protection Services Ltd v Top Dog Security Ltd [2004] DRS 1703 (1 June 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1703.html Cite as: [2004] DRS 1703