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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Fuel Theft Solutions Ltd v Mototrader.co.uk [2005] DRS 2643 (21 July 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2643.html Cite as: [2005] DRS 2643 |
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a. Parties
Complainant: Fuel Theft Solutions Ltd
Country: GB
Respondent: Mototrader.co.uk
Country: GB
b. Domain Name
fueltheftsolutions.co.uk ("the Domain Name")
c. Procedural Background
The Complaint was lodged with Nominet on 20 May 2005. Nominet notified the Respondent of the validated Complaint on the effective date of 23 May 2005 and set the required 15 day response period to expire on 14 June 2005. On 14 June 2005 the Respondent requested an extension of 1 day to the response period, which Nominet granted. The Respondent filed a Response to the Complaint on 15 June 2005 and Nominet so informed the Complainant on the same date. The Complainant filed a Reply to the Response on 23 June 2005, which was forwarded by Nominet to the Respondent on 27 June 2005. Nominet informed the parties on 30 June 2005 that informal mediation had failed to achieve a resolution to the dispute. The Complainant paid Nominet the appropriate fee on 4 July 2005 for a decision of an Expert, pursuant to §7 of the Nominet UK Dispute Resolution Service Policy ("the Policy"), within the stated deadline. The Respondent made a non-standard submission to Nominet dated 3 July 2005 in response to the Complainant's Reply and on 5 July 2005 the Complainant declined to reply.
Steve Ormand, the undersigned, ("the Expert") confirmed to Nominet on 5 July 2005, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew 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.
d. Procedural Issues
The respondent's letter dated 3 July 2005 is a non-standard submission under the definition in §13b of the Nominet UK Dispute Resolution Service Procedure ("the Procedure"). The Respondent stated that the purpose of this letter was to point out inaccuracies in the Complainant's Reply dated 23 June 2005. The Expert has exercised his discretion, granted by §13b of the Procedure, and requested that the whole letter be passed to him for consideration.
e. The Facts
Complainant
The Complainant supplies a fuel marker/dye known as "dieseldye". The Respondent was a customer of the Complainant's prior to its incorporation as a limited company when Mr Chris Day operated the business apparently as a sole trader. In September 2004 the Respondent offered to promote the Complainant's dieseldye product on its website, carplates4u.com, on a commission only basis. This involved the Respondent in the procurement of the domain names dieseldye.co.uk and dieseldye.com and the building of a website, although the basis of this arrangement is not clear. The domain name dieseldye.co.uk is the subject of a separate DRS dispute (02642) raised by the Complainant. However, in DRS 02642 the Respondent is Mr Russell Dossett who is the named contact for the Respondent in this case.
Mr Day established Fuel Theft Solutions Limited, the Complainant, as a limited company that was incorporated on 5 January 2005. The Respondent acquired the Domain Name and modified the dieseldye website to incorporate the Fuel Theft Solutions name and to link the Domain Name to the dieseldye.co.uk website and the Respondent's website at carplates4u.com. The parties dispute the contractual basis of this arrangement.
Respondent
The Respondent sells car registration numbers via carplates4u.com. This website is built by mototrader.co.uk and a link takes the user to "Mototrader.co.uk website services". Here, the Respondent lists some 50 domain names, including fueltheftsolutions.com and dieseldye.com. Some domain names are for sale, but not fueltheftsolutions.com and dieseldye.com. Some of the domain names link to active sites which promote carplates4u.
The Respondent registered the Domain Name on 7 January 2005.
f. The Parties' Contentions
Complainant
The Complainant's assertions in its submissions are:
a. Mr Chris Day requested the Respondent to purchase www.dieseldye.co.uk on the 7 of September 2004 and www.dieseldye.com on the 8 September 2004. Both transactions were carried out on behalf of Mr Day. The Respondent set up a web site at dieseldye.co.uk for Mr Day to promote and sell his dieseldye product.
b. Mr Day established Fuel Theft Solutions Ltd which was registered at Companies House on 5 January 2005 with Mr Day as a director.
c. The Complainant instructed the Respondent by telephone to purchase the Domain Name and fueltheftsolutions.com as the Complainant's agent.
d. The Complainant paid the Respondent £50 on 7 January 2005 for the names and his charges. The Domain Name was linked to dieseldye.co.uk.
e. On or about April 2005, the Complainant and the Respondent came into dispute regarding the use of "metatags".
f. The Respondent refuses to transfer ownership of the Domain Name to the Complainant despite it having been acquired by the Respondent as agent for the Complainant and the Respondent having been paid in full.
g. The Domain Name website states "dieseldye is a mark of Fuel Theft Solutions Ltd". The site displays the Complainant's company registration number and company name.
h. The dieseldye.co.uk website, in German, maintains that "dieseldye is a mark of Fuel Theft Solutions Ltd".
a. On the 2 April 2005 the Respondent made unfair demands and also offered to sell the sites to the Complainant and unfairly withheld the use of the websites and related e-mail address [email protected] from the Complainant. The Respondent took full control of the Complainant's e-mail account [email protected] which contains personal and confidential information including log-ins and passwords.
b. On the 6 April 2005, the Respondent e-mailed the Complainant, indicating that he had already received offers for the websites. On 8 April 2005 the Respondent claimed to have sold the websites for £55.
c. On 7 April 2005, the Respondent sent an e-mail to the Complainant at [email protected] which implied that the control of this e-mail account had been returned to the Complainant. On 8 April 2005 the Complainant sent an e-mail to [email protected] as a test which was intercepted and replied to by the Respondent.
d. On or about 8 April 2005 the Complainant discovered that the Respondent, together with others, had sent and was sending e-mails to previous customers of the Complainant's using the [email protected] e-mail account making unfair, untrue and defamatory comments about the brand and product.
e. The Complainant instructed his solicitor to write to the Respondent on 12 April 2005 to request the Respondent to assign the Domain Name, fuletheftsolutions.com, dieseldye.co.uk and dieseldye.com (the "Other Sites") to the Complainant. The Respondent responded by telephone on two occasions and refused to do so, claiming ownership of the sites and that they had been sold.
f. The Domain Name and Other Sites, which are the property of the Complainant, and are being used to sell a similar product under the brand names of "dieseldye" and "fuel theft solutions" to the detriment of the Complainant's business.
g. The site is unfairly using the well recognised and established e-mail account of [email protected] which is misleading and confusing customers of dieseldye and Fuel Theft Solutions Ltd that they are buying the Complainants product.
h. The public is being unfairly and deliberately mislead to believe that the Domain Name and Other Sites and e-mail account are still in the control of the Complainant by, for example, not changing text information, brand logo, company logo and contact e-mail address details. However, payments are being taken by a different e-mail account.
i. The Complainant has notified the police of the Respondent's actions who are investigating accordingly.
j. The Respondent remains the registrant for the Domain Name and the Other Sites.
a. The statement that the registration is not abusive as per §4 a iii of the Policy is not true as there was no written agreement entered into or made by the parties. The Complainant requested the Respondent to purchase the Domain Name on his behalf as his agent.
b. The claim that Respondent has not received payment for the registration of the Domain Names is not true because the Complainant made a paypal payment to the Respondent for £50 for the purchase of the two domain names fueltheftsolutions.co.uk and fueltheftsolutions.com.
c. The claim that an agreement was made by telephone that the Respondent would register the Domain Name and would be the legal owner is not correct as the agreement was only that the Respondent would publish the site on one of his servers as the Complainant did not have the knowledge or the facilities to do this. The Complainant requested the Respondent to purchase the Domain Name on his behalf and link it to his dieseldye site payment.
d. The claim that the Respondent has received some payments for web design and maintenance but that these amounts were not sufficient to justify the amount of time spent building and maintaining the sites is not true. The amounts paid in commission for sales made via the web site were agreed by the Complainant and Respondent at the time of set up and it was in the Respondent's interest as much as the Complainant's that the website be well maintained.
Respondent
The Respondent's assertions in his Response are:
a. The Respondent has never received payment for registering the Domain Name but has received some payments for web design and maintenance. These amounts have not been sufficient to justify the amount of time spend building and maintaining the sites.
b. The registration of the Domain Name was carried out under the same agreement as dieseldye.co.uk and that is that the Domain Name would be registered to the Respondent as the legal owner.
a. Under §4 a iii of the Policy there is an agreement between the parties of the Respondent's holding of the Domain Name.
The Respondent's assertion in his non-standard submission, in response to the Complainant's Reply, is that the Complainant's statement that he paid £50 for the dieseldye website and £100 for Flash Build in September 2004 is not true because the Respondent did not purchase the Trendy Flash Desktop Site Builder until 30 March 2005. Although this submission is specifically related to DRS claim 02642, the Respondent also submitted it in respect of this case in order to substantiate the inaccuracies in the Complainant's statements.
g. Discussion and Findings
General
To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both limbs of the test that:
1. it has Rights in respect of a name or mark identical or similar to the Domain Name; and
2. the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
The wholly generic domain suffix ".co.uk" is discounted for the purposes of establishing whether the Complainant has Rights in a name or mark which is identical or similar to the Domain Name.
The first hurdle for the Complainant is whether it is prevented from establishing rights in its name, Fuel Theft Solutions, under the definition of Rights in §1 of the Policy because it is a term that is wholly descriptive of the Complainant's business. The word "wholly" is defined in the Collins English Dictionary as "1. completely, totally or entirely. 2. without exception, exclusively".
Fuel Theft Solutions is descriptive of the Complainant's business, but is this without exception, or exclusively, a description of the Complainant's business? Examples of descriptive words that have been successfully registered as trademarks in this field include "Fuel Save", "Fuel Station" and "Fuel Master". It is also possible to establish goodwill if the descriptive words have established a secondary meaning to the customer. Examples of substantial goodwill in descriptive words include British Telecom and British Airways.
The Respondent established a website at the Domain Name at some point after 7 January 2005 and this website has offered the dieseldye product for sale until at least 20 May 2005, as evidenced by the Nominet printout of the Domain Name website at that date. The Expert is satisfied that there was an agreement between the parties that the Respondent would establish and maintain a website on behalf of the Complainant for the purpose of promoting the Complainant's product for the mutual benefit of the parties.
Furthermore, the Complainant has provided evidence that up to 19 April 2005 both the Fuel Theft Solutions name and dieseldye product were closely linked on webpages displayed under the Respondent's own website, internetcarplates.co.uk, and from other websites maintained by the Respondent. The Respondent's website carplates4u.com still displays a Fuel Theft Solutions and dieseldye link, although the link is now inactive. The Complainant had thus begun to establish linkages between the Fuel Theft Solutions name and its longer-established product dieseldye and, importantly, the Respondent knew that this was the Complainant's intention and had participated willingly in furthering that aim.
In the Expert's opinion, the Complainant has established a sufficient degree of goodwill in the name Fuel Theft Solutions, and linkage of that name with the dieseldye product, such that it is not wholly descriptive of the Complainant's business. The Complainant has, therefore, sufficient Rights in the name to satisfy the low threshold of the first limb of the test.
The Respondent also claimed, as evidenced in a file note provided by the Complainant's solicitor, that he had proof in "black and white" that the agreement was for him to merely set up the website. He has failed to produce this evidence in his Response. The Expert is satisfied from the parties' submissions that, on the balance of probabilities, the Complainant has contractual rights in the Domain Name.
The Expert finds, therefore, that the Complainant has Rights in respect of a name that is identical to the Domain Name.
Abusive Registration
The substance of the Complainant's assertion of Abusive Registration is that the Respondent is unfairly withholding use of the Domain Name and selling a similar product in place of the dieseldye product, thereby disrupting the Complainant's business. Thus, the Complainant's assertions may be evidence of Abusive Registration within §3a ii of the Policy in 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.
The submissions of both parties confirm that the Respondent did develop a website and host a Domain Name which did hold itself out to be operated by the Complainant, since this was a purpose of the agreement between the parties. The Respondent has neither confirmed nor denied that he was selling a substitute product via the Domain Name and the Complainant's evidence on this point is not conclusive. The Complainant's submissions have not established that actual confusion has taken place.
The Respondent admits he developed the websites for the Complainant in an email dated 2 April 2005 in which he also threatens that in one click he could "change it all to blank pages", a threat which he has carried out at some point since 20 May 2005, the date of the Complaint, as access to the Domain Name is no longer possible and the linkages from the Respondent's websites no longer work. The Respondent's suspension of access to the Domain Name is unfairly disrupting the Complainant's business irrespective of who is contractually entitled to the ownership of the Domain Name. Under §3a i C of the Policy, unfairly disrupting the Complainant's business is evidence of Abusive Registration but in circumstances where the Respondent has registered or otherwise acquired the Domain Name for this purpose, which clearly was not the case.
Abusive Registration may also be evidenced by §3a v of the Policy if the Domain Name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant has been using the Domain Name registration exclusively and paid for the registration and/or renewal of the Domain Name registration.
The submissions of both parties confirm that the Domain Name was registered as the result of a relationship between the Complainant and the Respondent. There is evidence from the Nominet screen dump of 20 May 2005 that the Domain Name was the site of Fuel Theft Solutions Ltd, that the site promoted the Complainant's undisputed product dieseldye, and that the site linked to fuletheftsolutions.com and dieseldye.com. This is consistent with the Complainant's version of events. The Complainant's submitted screen dumps show the linkage between Fuel Theft Solutions Ltd, dieseldye and the email address [email protected]. Again this is entirely consistent with the Complainant's version. The Expert is satisfied that the Domain Name was used, or was intended to be used, exclusively by the Complainant and the Respondent acquired the Domain Name and established the website with this purpose in mind.
The Complainant submits evidence that he paid the Respondent £50 on 7 January 2005, the date on which the Domain Name was registered, but it is not clear whether this was for the registration. The Complainant submits evidence of a payment of £28 on 13 March 2005 which states that it brings the Respondent "up to date for commission including fees". The Respondent denies that the purpose of the payments was to pay for the Domain Name but has not offered any evidence to substantiate his claims. The Expert is satisfied on the balance of the submissions that the Complainant has paid for the registration of the Domain Name.
The Respondent states that the registration of the Domain Name is not an Abusive Registration because there was an agreement between the parties of the Registrant's holding of the Domain Name which, under §4a iii of the Policy, is evidence that it is not an Abusive Registration. However, the Respondent has ignored the wording of the Policy which states it is not an Abusive Registration where "the Registrant's holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties". The Respondent has not produced evidence of a written agreement or evidence of an express term.
Accordingly, the Expert finds on the balance of probabilities that the Respondent has used the Domain Name in a manner which is an Abusive Registration in contravention of the Policy.
h. Decision
In light of the foregoing findings, namely that the Complainant has rights in respect of a name which is identical to the Domain Name and the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, fueltheftsolutions.co.uk, be transferred to the Complainant.
Signed:
Steve Ormand
Date:
21 July 2005