 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> DVLA v Scotweb Ltd [2005] DRS 02226 (22 February 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02226.html Cite as: [2005] DRS 2226, [2005] DRS 02226 |
||
[New search] [Printable RTF version] [Help]
DVLA v Scotweb Ltd [2005] DRS 02269 (22 February 2005)
Nominet UK Dispute Resolution Service
DRS 02226
Driver and Vehicle Licensing Agency v Scotweb Ltd
Decision of Independent Expert
Complainant: Driver and Vehicle Licensing Agency
Country: GB
Respondent: Scotweb Limited
Country: GB
dvla-gov.org.uk ("the Domain Name")
The Complaint was lodged with Nominet on 2 December 2004. Nominet validated the Complaint and informed the Respondent on 7 December 2004 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days (until 31 December 2004) to submit a Response. A Response was received on 15 December 2004. The Complainant did not file a Reply. The informal mediation stage did not result in a resolution and the parties were informed accordingly. On 1 February 2005, the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 7 of the Nominet DRS Policy Version 2 ("the Policy").
On 8 February 2005 Nominet appointed Andrew Clinton ("the Expert"). The Expert has confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as expert in this case, and further confirmed that he knows 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.
None.
The Domain Name was registered on 1 December 2003 and the Registrant is Scotweb Limited.
The Complaint, so far as is material, is as follows:-
Driver and Vehicle Licensing Centre (DVLC) commenced operations in 1974, and changing its name to Driver and Vehicle Licensing Agency (DVLA) in 1990. DVLA is an Executive Agency of the Driver, Vehicle and Operator (DVO) group of organisations within the UK Government's Department of Transport, Local Government and Regions. DVLA is responsible for issuing and, where appropriate, withdrawing driving licences, for licensing and registering vehicles, and for collecting vehicle excise duty. The DVLA maintains accurate records of 40 million licensed drivers and 31 million licensed vehicle keepers, and controls all statutory documents related to these records.
In 1989, DVLA began selling un-issued vehicle registration numbers to the public through two separate trading names. Exclusive and highly-personalised registrations are sold through auction under the name "DVLA Classic Collection". "DVLA Select Registrations" is a telesales business which sells more affordable registrations. These include registrations with a year letter prefix and new style registration numbers (introduced for new vehicles from September 2001). The sale of registration numbers under these two trading names has continued uninterrupted since 1989. In addition, DVLA uses the trading name "DVLA Custom Marks" to sell more affordable registrations again by way of auction.
The trading names are prefixed by "DVLA" in order to distinguish the DVLA business from other car registration number dealers and to indicate that these trading services are provided by a Government Agency which is very well known, and respected by the motor industry and all DVLA's customers. In addition to the general public, DVLA's customers include the courts, police and local authorities as well as motor manufacturers and dealers, motoring associations, insurance companies and other government departments.
Since 1999, DVLA has registered the following marks:
Mark Date Registered T/M Number Classes Registered
DVLA Classic Collection 15/07/99 2203115 35, 42
DVLA Select Registrations 15/07/99 2203118 35,42
DVLA Custom Marks 16/12/99 2217273 35, 42
DVLA 03/04/02 2297000 06, 09, 12, 16, 20, 25, 35, 42
DVLA 03/04//02 2297001 06, 09, 12, 16, 20, 25, 35, 42
DVLA Driver and Vehicle Licensing Agency 02/04/02 2297002 06, 09, 12, 16, 20, 25, 35, 42 Class 06: vehicle registration plates (number plates) of metal; Class 09: apparatus for displaying the position of vehicles etc Class 12: Vehicles; and parts of vehicles. Class 16: Paper, cardboard and goods made from these materials, etc Class 20: Vehicle registration plates (number plates) not made of metal. Class 25: Clothing, footwear, headgear. Class 35: Marketing, auctioneering; advertising and marketing etc Class 42: Legal services relating to the drivers' licences and vehicle registration; etc
Copies of the registration certificates or the trade mark detail reports available from the trademarks database maintained by the UK Patent Office for the above trademarks are provided at Annex 1. In addition to its registered trademarks the acronym DVLA is extremely well known within the UK and substantial goodwill has been established in the mark by the Complainant. Further, the Complainant undertakes a substantial amount of income generating activity under the mark and attached at Annex 6 is a copy of the Complainant's Income and Expenditure account for the year ended 31 March 2003. From these accounts, it will be seen that the Complainant generated total income during that year of approximately £312m and the income generated by the sale of registration marks alone was approximately £75m Accordingly, it is clear that the Complainant has rights in the mark DVLA which is extremely similar to the disputed domain name and is also very similar to the Complainant's official web site address of www.dvla.gov.uk. The Respondent According to a "whois" query undertaken on 24 November 2004 the domain name is registered to the Respondent (copy of who is result at Annex 5). The Respondent is currently subject to a proposal to strike off by Companies House and has failed to file an Annual Return or Annual Accounts, both of which are overdue. The web site which is located at the Domain Name specifies that the contact e-mail address for the web site is [email protected]. Additionally, the web site specifies that the mailing agents (for post only) are Copperhill Consulting Ltd, International House, 226 Severn Sister Road, London, N4 3GG - e-mail: [email protected].
According to the information displayed on the web site located at the Domain Name the ("Web Site") the Respondent is in the business of selling a range of customised fake documents, including: • full and provisional driving licences; • MOT certificates • vehicle tax discs • vehicle ownership documents (V5 logbook) • UK passports • UK and European identity cards, The business operated from the web site is called 'Driver and Vehicle Licensing Acquisition', and the above documents can apparently be ordered from an address provided on the Web Site, customised with the purchasers personal information and their photograph, for a range of fees. The business also advertises a handgun on the Web Site capable of firing CS gas, pepper and small projectiles.
The Web Site has a green colour scheme, as does the Complainant's web site, and the home page of the Web Site has a prominent banner at the top of the page that states: Welcome This is the official website of the DVLA Below this banner is a reproduction of the Complainant's registered device and word mark no. 229700, and below this appears the following statement: "This part of the DVLA website gives you access to a unique range of driving services. We now provide Fake Driving Licences, which should not be used for driving, but are excellent examples of personalized identification. Also we provide Fake British Passports". A copy of the Web Site's home page is attached as Annex 2.
The mark 'DVLA' is neither generic nor descriptive and in view of the Respondent's business, it is inconceivable that the Complainant's mark, was not known to the Respondent on 01.12 2003 when the Respondent registered the Domain Name.
Additionally, as of the date the Respondent registered the Domain Name, the Complainant had already registered several trademarks using the 'DVLA' mark, accordingly the Respondent had constructive and/or actual knowledge of the Claimant's rights in the mark 'DVLA'. Further, the fact that the web site hosted at the disputed domain name refers to the DVLA and its trademarks is further evidence of the Respondent's knowledge of the Claimant's rights in the mark DVLA.
It is the Complainant's belief that the registration by the Respondent of the Domain Name is an Abusive Registration under the Nominet Dispute Resolution Service Policy v. 2. Paragraph 3 sets out a non-exhaustive list of factors which may evidence an Abusive Registration and it is submitted that the current dispute falls within sub-paragraphs 3a(i)c - unfairly disrupting business and 3 (ii) causing confusion. Additionally, it is the Complainant's view that the Respondent's registration and use of the Domain name is an Abusive Registration in any event without necessarily coming within the non-exhaustive list of factors.
Unfairly Disrupting the Business of the Complainant. In view of the use to which the domain name has been put and the web site hosted at the domain name, it is the Complainant's view that this is clearly intended to disrupt its business by:-
1 Offering for sale fake UK driving licences, MOT Certificates, vehicle tax discs and vehicle ownership documents. If these items are acquired then the purchasers would presumably not pay the appropriate price for legitimate documentation. Additionally, the work of the DVLA in endorsing the licenses of drivers convicted of motoring offences and maintaining a record of these endorsement will be compromised by the use of fake driving licenses.
2 Offering for sale the fake documentation through a web site which purports to be the official web site of the DVLA. This act inevitably carries the risk that visitors to the site will conclude the DVLA participates in and condones such activity which would be detrimental to the public perception of the integrity of DVLA as an agency of the UK Government.
3 The sale of fake documentation which would undermine the effectiveness of the legitimate documentation issued and might impact on the safety of the users of roads in the UK.
Causing Confusion. The existence of the web site, the Respondent's use of the 'DVLA' in the domain name appended to the word 'gov', the claim to be the official DVLA web site, the use of the Claimant's registered trademark and logo on the site, and the use of a contact e-mail address of [email protected] are all intended to confuse the public into believing the domain name is registered to, operated or authorised by, or otherwise connected with the Complainant. Whilst the Complainant currently has no evidence of actual confusion, it is considered highly likely that there will have been some degree of confusion on the part of users.
Abusive Registration Per Se. The nature of the business conducted at the web site is so highly questionable and offensive to the public good and the public safety that the registration should be deemed abusive. The nature of the business conducted is also potentially illegal and this is a matter which is being investigated by the police. Attached at Annex 4 are copies of email correspondence received by the Complainant from members of the general public expressing their concerns regarding the website.
The Complainant contains a request for a transfer of the Domain Name but also contains a request seeking cancellation of the Domain Name. On 16 December 2004 the Complainant's representative made a request to Nominet to amend the remedy requested and stating that the request for cancellation was made in error and confirming that the remedy sought was the transfer of the Domain Name. This request amounts to a non-standard submission under paragraph 13b of the Procedure.
On 9 December 2004 Nominet received an e-mail in the following terms:-
"Sorry for the delay in reply, Scotweb Limited and Copperhill Consulting have ceased all business."
Nominet sent an e-mail in reply asking for confirmation whether that e-mail was to be regarded as the official Response to the Complaint. On 10 December 2004 Nominet received an e-mail in the following terms:-
"You chose, if you check the website, you will see it has been closed with no references to DVLA"
Nominet therefore treated the e-mail dated 9 December 2004 as the Response.
On 16 December 2004 Nominet received a further e-mail in the following terms:-
"Mr Clark is currently unavailable to reply to this, this has been responded to and you should checked the former website and seen that it is now clear of all reference to DVLA therefore, we have no case to answer to, as far as we are concerned the matter is now closed."
This e-mail is not part of the Response and therefore amounts to a non-standard submission.
Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities: first, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and, secondly that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Expert is satisfied that the Complainant has rights in the mark DVLA. It has operated using that acronym since 1990 and has built up a substantial business; the turnover for the year ended 31 March 2003 was approximately £312m, of which £75m came from the sale of registration marks. In addition, it is the registered proprietor of 6 trade marks that include the mark DVLA. It also operates a website at the domain name dvla.gov.uk. The mark DVLA, in which the Complainant clearly has Rights, is similar to the Domain Name, which differs only by the addition of the "-gov" suffix. Accordingly, the Expert finds that the Complainant has rights in a mark that is similar to the Domain Name.
Abusive Registration is defined in paragraph 1 of the Policy to mean 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.
Non-exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy is as follows:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
A. 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; or
C. 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;
(iii) The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;
(iv) It is independently verified that the Respondent has given false contact details to Nominet; or
(v) The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
A has been using the domain name registration exclusively; and
B paid for the registration and/or renewal of the domain name registration.
The Complainant relies upon two of the factors in particular, being sub-paragraphs 3a(i)C (unfair disruption) and 3a(ii) (confusion). The Complainant also says that the registration and use of the Domain Name is an Abusive Registration in any event without necessarily coming within the non-exhaustive list of factors. It is very clear from the wording of the Policy that the list of factors at paragraph 3 is non-exhaustive and that a Complainant can succeed in proving Abusive Registration without the need to prove any of those factors. However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.
In relation to sub-paragraph 3a(ii) the Complainant concedes that there is no evidence of actual confusion but argues that it is highly likely that there will have been a degree of confusion on the part of users. In the absence of actual confusion the Expert makes no finding on this ground.
The Domain Name currently points to a website that does not appear to refer to DVLA and contains the following message:
"Now ceased trading"
However, it is clear from Annex 2 to the Complaint (which consists of printouts of various pages from the website taken on 3 November 2004) and from the printout supplied by Nominet as at 7 December 2004 that the Domain Name previously pointed to a website that contained the following message on the homepage:
"Welcome
This is the official website of the DVLA"
The homepage also contained a reproduction of the DVLA logo with the following statement underneath:
"This part of the DVLA website gives you access to a unique range of driving services. We now provide Fake Driving Licences, which should not be used for driving, but are excellent examples of personalised identification. Also we provide Fake British Passports."
The website offered for sale a number of items, including:-
- Fake UK plastic photo card driving licences;
- Fake paper counterpart driving licences;
- V5 Logbooks;
- UK Passports – it is stated that the passports are original but that the photo page could be altered to show any photo and details;
- UK National Identity Cards;
- European Identity Cards;
- Employment Cards;
- MOT Certificates; and
- Python Revolver Guns that fire blanks, CS cartridges, pepper and firecrackers.
When given the opportunity to put forward its case the Respondent failed to engage on any of the points made in the Complaint and said that it had ceased trading. In the subsequent non-standard submissions the Respondent adopted the position that as the website had been closed and all references to DVLA had been removed there was no case to answer. That is clearly wrong. The definition of Abusive Registration refers to use of a Domain Name in the past tense. It is therefore no answer to a Complaint about use of a Domain Name to say that, after the date of the Complaint, the use complained about has ceased. If that were right it would defeat any Complaint based on use of a domain name.
It is the responsibility of the Complainant to issue and, where appropriate, withdraw driving licences as well as to license and register vehicles. The Complainant maintains records of licensed drivers and licensed vehicle keepers and those records are used for various purposes, including Court proceedings. It unfairly disrupts the activities of the Complainant to offer for sale fake documentation. The Complainant has produced two examples of e-mails from members of the public drawing the Complainant's attention to the website. One of those e-mails is expressed as a complaint and in the other the author says that he has reported the website to the Police. The Expert also takes into account the fact that the Respondent has not sought to demonstrate that the Domain Name was not an Abusive Registration, other than by arguing that the use has ceased. The Expert's view is that offering for sale fake driving licences and other forms of identification from a website that purports to be the official website of the DVLA amounts to use of a Domain Name in a manner that took unfair advantage of or was unfairly detrimental to the Complainant's Rights. The Expert also finds that sub-paragraph 3a(ii) is satisfied.
The Expert therefore finds that the Domain Name amounts to an Abusive Registration.
Non-exhaustive factors – paragraph 4 of Policy
There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy. There is no evidence to suggest that any of the factors in paragraph 4 are made out and the Respondent did not seek to rely upon any of those factors.
Decision
The Expert finds, on the balance of probabilities, that the Complainant has rights in a name which similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert directs that the Domain Name be transferred to the Complainant.
Andrew Clinton
22 February 2005