Nominet UK Dispute Resolution Service

DRS 2630

Electric Motors Limited -v- Phillip Vamplew

Decision of Independent Expert

1.	Parties: 

Complainant:	Electric Motors Limited	
Country:	GB	
		
Respondent:	Phillip Vamplew	
Country:	GB	

2.	Domain Name Name:

electricmotors.co.uk (“the Domain Name”)

3.	Procedural Background:

A brief chronology is as follows:

17 May 2005: 	Complaint lodged with Nominet electronically	
18 May 2005:	Hardcopy complaint received by Nominet	
18 May 2005:	Nominet forwarded complaint to Respondent	
3 June 2005:	Electronic response received by Nominet	
3 June 2005:	Hardcopy response received by Nominet	
3 June 2005:	Nominet forwarded response to Complainant	
9 June 2005:	Emailed reply received by Nominet	
10 June 2005:	Hardcopy reply received by Nominet	
15 July 2005:	Fee received from Complainant	

On 4 August 2005 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.

4.	Outstanding Formal/Procedural Issues:

None

5.	The Facts:

The Respondent registered the Domain Name on 21 April 1999. 

The Complainant was incorporated on 2 March 2004.

According to a screenshot provided by Nominet, as of 18 May 2005 the home page of the Domain Name stated “Electric Motor Services. Providing a complete Electric Motor service, Rewinds & Repairs, New & Reconditioned Motor Sales and full 24/7 business support …”

6.	The Parties’ Contentions:

Complaint:

The complaint is brief and is reproduced here in full:

“Only Electric Motors Limited should be allowed to use the domain name electricmotors.co.uk. This is no different to much larger organisations who have successfully protected the .co.uk domain name for their unique UK limited company. There should not be one rule for big companies and one rule for small companies to protect their company name. The current user of electricmotors.co.uk is a competitor who trades as electric motor services and not as electric motors.”

Response:

1.	The domain name electricmotors.co.uk was registered in 1999 with the intent of future email / web use for the Respondent’s father’s business (Electric Motor Services (UK) Ltd). The domain was not used in 1999 the email and web technology was then too advanced for this industry. 

2.	Recently the Respondent decided to activate the email and web services to be used for the Respondent’s father’s company. Electricmotors.co.uk was chosen as “electric motors” is a generic term for what that business does - the selling and repairing of electric motors. It was therefore deemed the most appropriate name for email and web use. 

3.	There was no intent of foul play or anticompetitive behaviour towards the Complainant, which was only incorporated on 2 March 2004.

Reply:

1.	When the Complainant was incorporated on 2 March 2004 it checked to establish if anyone was using the name Electric Motors or the website at electricmotors.co.uk and found nobody. The Complainant only subsequently discovered that the Respondent had registered electricmotors.co.uk although he had never used it.

2.	The company using the website and email address electricmotors.co.uk was incorporated on 1 April 2005 and consequently had only used the site and email address since that date. Its name was Electric Motor Services (UK) Limited.

3.	Anyone looking for Electric Motors Limited would be drawn to the site at electricmotors.co.uk and consequently its direct competitor Electric Motor Services (UK) Limited. Likewise email correspondence would cause confusion.

4.	The Respondent’s statement about a strategy for future use for email / web only makes sense from the date of incorporation of Electric Motor Services (UK) Limited which as stated above was 1 April 2005. The Respondent’s statement about the domain name not being used in 1999 because email and web technology being too advanced for the industry was factually incorrect and should be disregarded. The Respondent can only have decided to use the website in 2005.

7.	Discussion and Findings:

General

To succeed, the Complainant has to prove in accordance with paragraph 2 of the DRS Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the DRS Policy) in respect of a name or mark identical or similar to the Domain Name and, second, that the Domain Name, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the DRS Policy).

Complainant’s Rights

The term “rights” is defined in the DRS Policy as follows: “Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business”.

The first issue is whether the term ELECTRIC MOTORS relied upon by the Complainant is wholly descriptive of its business. If so, the Complainant cannot establish rights in that term. 

The Complainant does not give any details of its trading activities. It is, however, called “Electric Motors Limited” and its letterhead states at the top: “supply and repair of electric motors”.  Indeed the Complainant describes the business currently using the Domain as competitor. That business also supplies and repairs electric motors. 

It is reasonable to infer that the Complainant’s business is concerned with supply and repair of a single type of product – electric motors – and that many people looking for the type of products / services supplied by the Complainant are likely to start their search by reference to that generic term. In my view the term ELECTRIC MOTORS is wholly descriptive of the Complainant’s business. 

Even if I am wrong about that, the Complainant still has to prove that it has rights in the term. The Complainant has no registered trade mark. Its use of the corporate name Electric Motors Limited is not enough in itself because that simply prevents others registering the exact company name at Companies House.

The Complainant has to show that through use it has generated sufficient goodwill such that the term ELECTRIC MOTORS has become distinctive of the Complainant. The Complainant has provided no information or evidence about the nature and extent of its trading activity but, even had it done so, it would have faced an uphill struggle. Not only has the Complainant had only a relatively short period of trading (incorporated in April 2004 and no evidence of pre-incorporation trading) but the relied upon is generic and in widespread use, as is apparent from a Google search. 

A number of DRS cases have referred to the principle of English law that traders who adopt descriptive words may have to run some risk of confusion as otherwise they may obtain an unfair monopoly in those words. See for example DRS 00753 (datingagency.co.uk) and DRS 2159 (yachtshipping.co.uk). In each case the complainant failed to establish rights in the relevant term.

While the threshold for establishing rights under the DRS is low, in my view the Complainant has nonetheless fallen short of meeting this requirement. 

The Complainant claims that much larger organisations have succeeded in recovering .co.uk domain names and there should not be one rule for big companies and one rule for small companies.  The Complainant is under a misconception. There is one set of rules applicable to all DRS complainants, namely the DRS Policy and the DRS Procedure. All complainants, whatever their size, must establish the two elements (rights and abusive registration) on the balance of probabilities. Otherwise they will fail.  

Abusive Registration

In view of my conclusion above, it is unnecessary for me to consider this aspect in any detail. However, I can say that the Complainant would undoubtedly have failed here too. The Respondent registered the Domain Name five years before the Complainant was incorporated. Whether or not the Respondent’s father’s business had started trading then and, if so, in what form, is irrelevant because in any case the Respondent could not have registered the Domain Name with the Complainant in mind. Nor is there any evidence at all that the Respondent later used the Domain Name to target the Complainant or do anything other than use it genuinely for a business which happened to be a competitor of the Complainant. 

8.	Decision:

No action should be taken in respect of the domain name electricmotors.co.uk. 

Adam Taylor

15 September 2005