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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Speciality Welds Ltd v Hydroweld [2005] DRS 2676 (24 August 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2676.html Cite as: [2005] DRS 2676 |
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Complainant: Speciality Welds Ltd
Country: GB
Respondent: Hydroweld
Country: GB
Email: [email protected]
The domain names in dispute are specialitywelds.co.uk and specialwelds.co.uk ("the Domain Names").
On 31 May, 2005 the Complaint was lodged with Nominet UK in accordance with the Dispute Resolution Service Policy (hereinafter "the DRS Policy") and hard copies of the Complaint were received in full on 13 June, 2005.
On 16 June, 2005 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the procedure for the conduct of proceedings under the Dispute Resolution Service ("the DRS Procedure") had been invoked and allowed the Respondent 15 working days (ie until 8 July, 2005) within which to respond to the Complaint.
On 6 July, 2005 Nominet UK received the Response from the Respondent and on the same day Nominet UK notified the Complainant that the Response had been received and sent the Complainant a copy allowing the Complainant until 15 July, 2005 to file a Reply. The Reply was received by Nominet UK on 15 July, 2005.
The mediation process then ensued but to no effect.
On 4 August, 2005 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.
On 4 August 2005 Tony Willoughby, the undersigned, ("the Expert") confirmed to Nominet UK that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of nothing which ought to be drawn to the attention of the parties which might appear to call in to question his independence and/or impartiality.
On reading the papers the Expert came to the conclusion that for him to make a finding in relation to the allegation of reverse domain name hijacking he needed further information from the parties.
On 8 August 2005 the Expert issued a procedural order directed to the parties in the following terms:
"By his letter of 5 July 2005, Mr Pett on behalf of the Respondent, repeats a claim made in the Response to the effect that this is a case of reverse domain name hijacking. Reverse domain name hijacking is defined in the Nominet Procedure as meaning "using the Policy in bad faith in an attempt to deprive a registered domain name holder of a domain name."
In the same letter Mr Pett complains of the lack of an opportunity afforded by the Procedure for the Respondent to respond to the Complainant's Reply.
Ordinarily, this Expert would simply have left the matter on the basis that the Procedure is the Procedure and that is that.
However, the allegation of reverse domain name hijacking is a serious allegation. It amounts to an allegation that the Complainant, knowing that he had no real prospect of success under the Policy nevertheless triggered the Policy in the hope that it would nonetheless deprive the Respondent of the Domain Name registrations.
The Complainant has not addressed that allegation head on. The Expert invites the Complainant to respond to that allegation indicating with a reasonable degree of documentary evidence why he believes that he has rights in respect of the name Speciality Welds such as to entitle him to invoke the Procedure.
In addressing the issue, it should be noted that the Complainant has made a serious allegation against the Respondent claiming that the Respondent deliberately selected the domain names in order to deprive the Complainant of them. There is nothing before the Expert to indicate how or why the Respondent should have known of the existence of the Complainant in August 2002. The only document before the Expert which pre-dates August 2002 and mentions Speciality Welds is a fax dated 18 May 1999 addressed to another party altogether.
The Expert directs that the Complainant has until close of business on Friday of this week to submit a Response to this Procedural Order.
The Respondent will then have until close of business on the following Thursday (18 August 2005) to respond. The Expert permits the Respondent to use that opportunity to respond not only to the new submission put in by the Complainant but also to respond to the Reply.
In permitting this departure from the Procedure, the Expert does not in any way wish to suggest that it should be the norm. However, serious allegations are being levelled on both sides and the matter is clearly of significance to both of them. The Expert is keen to have before him sufficient information to enable him to resolve the dispute fairly.
The date scheduled for the decision should be put back by two weeks."
The Complainant responded on 11 August, 2005 and the Respondent replied on 18 August, 2005.
The Complainant is a company based in Yorkshire which specialises in the supply of goods and services relating to welding and, in particular, underwater welding. The Complainant was incorporated on 18 February 2004.
It appears from the papers supplied by the Complainant that the Complainant may be a successor in title to:-
(a) the welding consultancy business conducted by a Mr David Keats from about 1996 to 1999 under the name Speciality Welds; and
(b) the welding business of MOS Speciality Welds Limited which operated under that name from about August/September 1999 when Mr Keats joined that company to mid 2002; and
(c) the welding business of Mr Keats conducted under the name Speciality Welds from mid 2002 when he acquired the business of MOS Speciality Welds Limited to early 2004 when his business was acquired by the Complainant. Mr Keats is Managing Director of the Complainant.
The Expert is not absolutely certain that this is an accurate statement of the position. However, for the purposes of this decision the Expert accepts as fact that continuously from about 1996 to date the business conducted by the Complainant and its predecessors in title has made use of the name Speciality Welds in one shape or form.
On 28 June 2002 the Complainant's predecessor MOS Specialist Welds Limited registered the domain name specialwelds.com, a domain name which is now held and used by the Complainant for its operational website.
The Complainant is the proprietor of a UK trade mark registration for the mark SPECIALITY WELDS in device form. The mark was applied for on 6 February 2004 and the registration came through on 2 July 2004. The certificate shows that the registration is in the name of Mr Keats, but for the purposes of this decision, the Expert is prepared to accept that the registration is held for the benefit of the Complainant or has been assigned to the Complainant.
The Respondent is a company which has been engaged in the specialist field of wet welding since 1981.
The Respondent registered the domain name specialitywelds.co.uk on 19 August 2002 and the domain name specialwelds.co.uk on 16 September 2002. The latter is in active use, being connected to an operating website of the Respondent. The site connected to the former is "under construction". Together these domain names are hereinafter referred to as "the Domain Names".
The Complainant
The Complainant contends that it has rights acquired by use and/or registration in the names SPECIALITY WELDS and SPECIAL WELDS. It contends that these names are identical or similar to the Domain Names.
The Complainant further contends that the Domain Names are abusive registrations. The Complainant contends that when the Respondent registered the Domain Names it knew of the Complainant's rights in the names SPECIALITY WELDS and SPECIAL WELDS and deliberately registered the Domain Names to block and/or damage the Complainant.
In Mr Keats' letter to Nominet UK of 20 April 2005 he says in respect of the Domain Name, specialitywelds.co.uk, "in my view this is a deliberate ploy to prevent me from registering this as my legitimate domain and to try and disrupt my business wherever possible."
The Respondent
The Respondent contends that the Domain Names comprise names which are wholly descriptive and incapable of being monopolised by anyone engaged in the field of special or speciality welding. The Respondent points to the fact that the registered mark is a stylised form of the words "speciality welds" rather than the words themselves.
The Respondent states categorically that, contrary to what the Complainant alleges, when the Respondent registered the Domain Names it was unaware that the Complainant or its predecessors had traded under the name SPECIALITY WELDS per se. It seems to accept that it was aware of MOS Speciality Worlds Limited.
It claims that the Domain Names are wholly descriptive and that in registering the Domain Names and in using them (only specialwelds.co.uk is currently in active use) it is making fair use of them. The Respondent observes that the Complainant has produced no evidence of any confusion/damage resulting from the Respondent's use of the Domain Names.
The Respondent alleges that the Complainant is guilty of reverse domain name hijacking on the basis that the Complainant, knowing of the existence of the registration of the domain name specialitywelds.co.uk, deliberately held back on the Complaint until after the Respondent had made commercial use of that name and had built up a reputation and goodwill associated with it. The Respondent alleges that the Complainant did this in order to cause maximum damage to the Complainant, a competitor.
General
To succeed in a Complaint under the Policy the Complainant must first prove that it "has rights in respect of a name or mark which is identical or similar to the domain name" (paragraph 2(a)(i) of the Policy).
Rights are defined in paragraph 1 of the 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;"
Speciality Welds
This is a highly descriptive name in the context of specialist welding goods and services, but is it 'wholly descriptive' within the terms of the above definition? If it is, the mere fact that the Complainant has a trade mark registration of the name in device form will not assist it. However, highly descriptive names are capable of acquiring distinctiveness through use. British Airways, British Petroleum and English China Clay are examples.
As indicated above, the Expert is prepared to accept that the Complainant and its predecessors have made continuous use of the name SPECIALITY WELDS in one shape or form as a trading name for about nine years or so, although for about a third of that period the name appears to have been used mainly, if not exclusively, as part of the corporate name, MOS Speciality Welds Limited.
While the Complainant and its predecessors are in a very different league to the likes of British Airways, British Petroleum etc the Expert is prepared to accept that in the very narrow specialist field in which the parties operate the Complainant's name SPECIALIST WELDS has by use acquired a degree of distinctiveness sufficient to take it out of the proviso to the definition of "rights". In other words, the Expert finds that the Complainant has rights in the name SPECIALITY WELDS. Specifically, the Expert very much doubts that a competitor of the Complainant could now set up in business under the name Speciality Welds without infringing the Complainant's common law rights. However, in making this finding the Expert observes that:-
(a) the first hurdle that the Complainant is required to prove under the Policy is not intended to be an onerous obstacle;
(b) the Complainant's rights, such as they are, have to be treated with considerable circumspection as the Complainant has produced little or no evidence directed specifically to the extent of the business conducted under and by reference to the name SPECIALITY WELDS.
Special Welds
Again, this is a highly descriptive name in the context of specialist welding goods and services. In this case, however, the Complainant has produced no evidence of any use of the name save as a domain name and even then there is nothing before the Expert to show the extent of any use made of the domain name in a manner likely to give rise to any rights.
The name Special Welds does not appear to have been used as a company name or trading name, but simply as an email address and web address of the Complainant.
The Expert finds that the name Special Welds is wholly descriptive of the Complainant's business.
Accordingly, the Complainant has no relevant rights in respect of this name and the Complaint in respect of the Domain Name, specialwelds.co.uk, fails at the first hurdle.
Abusive Registration
Having established, as the Complainant has in the case of specialitywelds.co.uk (hereinafter referred to as "the Domain Name"), that the Complainant has rights in respect of a name identical or similar to the Domain Name, the Complainant must demonstrate that the Domain Name in the hands of the Respondent is an Abusive Registration.
Abusive Registration is defined in paragraph 1 of the Policy as follows:-
"Abusive Registration means 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."
For the purposes of the first element of this definition one needs to assess the nature of the 'Complainant's rights' as of the date of registration of the Domain Name (ie 19 August 2002).
What evidence does the Expert have before him as to the extent of the Complainant's rights in the name SPECIALITY WELDS as at 19 August 2002? He has before him:-
(i) headed notepaper of a predecessor of the Complainant featuring the name SPECIALITY WELDS. The example of the notepaper is dated 18 May 1999;
(ii) a fax header sheet featuring the name SPECIALITY WELDS dated 30 August 1999;
(iii) documents evidencing registration of MOS Speciality Welds Limited on 31 August 1999;
(iv) headed notepaper of MOS Speciality Welds Limited;
(v) three invoices dated 1 August,2000, 14 August, 2000 and 1 July, 2002 addressed to Speciality Welds Limited at a time when the company name was in fact MOS Speciality Welds Limited;
(vi) receipt from the International Diving Schools Association dated 2 July 2002 addressed to Speciality Welds;
(vii)Abbey National statement for an account set up in the name of Speciality Welds in July 2002.
None of the above gives any hint of the extent of the Complainant's predecessors' use of the name SPECIALITY WELDS as at August 2002. A goodwill valuation which could be relevant to the value of the name is dated 2004 and some press advertisements which evidence trading activity under the name all post date the date of registration of the Domain Name.
There is very little before the Expert to demonstrate the use of SPECIALITY WELDS (per se) by MOS Speciality Welds Limited; only the inference to be drawn from the invoices and receipt at (v) and (vi) above. The Expert does not accept that the use of the name MOS Speciality Welds Limited gives any rights (per se) to the name Speciality Welds.
The Expert is not persuaded that as at the date of registration of the Domain Name (as distinct from to-day) the Complainant had any relevant rights in the name Speciality Welds. It and/or its predecessors may have had some such rights acquired by use, but there is insufficient evidence before the Expert for the Expert to make any such finding.
Even if the Complainant's predecessors did possess any relevant rights at the date of registration of the Domain Name, for this element to be proved, the Complainant has to show abusive intent on the part of the Respondent in registering the Domain Name.
The Complainant asserts that the parties were at that time competitors in their specialist field of business and that it is inconceivable that the Respondent could not have been aware of the Complainant and its name Speciality Welds.
The timing of the various domain name registrations certainly raises questions. MOS Speciality Welds Limited registered 'specialwelds.com' on 28 June, 2002 and the Respondent registered the Domain Names on 19 August, 2002 and 16 September, 2002.
However, it is to be noted that the Respondent denies any knowledge of the existence of the Complainant (or its predecessors) under that name. The Respondent admits to knowledge of MOS Speciality Welds Limited, but denies all knowledge of any of the Complainant's predecessors trading under the name Speciality Welds. Moreover, it is also to be noted that as at August 2002, Mr Keats, the purchaser of the business of MOS Speciality Welds Limited, had by then only been trading under the name Speciality Welds for a month or two at the most.
At all events, the Complainant has failed to satisfy the Expert that the Expert should disbelieve the Respondent's denial of any knowledge of the Complainant's rights in the name SPECIALITY WELDS at that time.
That leaves the question of the Respondent's use of the Domain Name. Has that use taken unfair advantage of or been unfairly detrimental to the Complainant's rights?
Clearly, it is disadvantageous to the Complainant that the Respondent, a competitor, is using a domain name which reproduces its corporate name and trading name.
However, on the evidence before the Expert, there is nothing unfair about that use or its intended use. As the Expert understands it a website to which the Domain Name is connected, when constructed, will simply be another operating website for the Respondent. Inevitably, there must be a risk that confusion will arise, but that is simply a consequence of the Complainant having selected such a descriptive name for its business.
If the Respondent's use of the Domain Name constitutes infringement of the Complainant's trade mark rights, that is a matter which will fall to be decided by another tribunal. Certainly the Expert is not in a position to express a view on the matter on the material before him.
In the result, the Complainant fails in respect of both of the Domain Names.
Reverse Domain Name Hijacking
The Respondent has alleged that the Complainant's launching of the Complaint constitutes reverse domain name hijacking. Reverse domain name hijacking is defined in paragraph 1 of the Procedure as "using the Policy in bad faith in attempt to deprive a registered domain name holder of a domain name;".
The Respondent makes the allegation not on the basis that the Complainant launched the Complaint knowing that the Complaint was devoid of merit, but that he deliberately delayed the launch of the Complaint for a period to enable the Respondent to generate goodwill under and by reference to the Domain Name before effectively pulling the rug from under the Respondent's feet. In other words, the allegation is that the Complainant, expecting the Complaint to succeed, delayed the filing of it with a view to causing the Respondent, a competitor, maximum damage.
The Expert is not persuaded that that was the Complainant's intention. In any event, in the view of this Expert, reverse domain name hijacking is a term which should be restricted to abusive use of the Policy to deprive a registrant of a domain name in circumstances where the Complainant knows that the Complaint has no merit within the terms of the Policy. Here, the Respondent's case is that the Complainant expected the Complaint to succeed.
The Expert dismisses the allegation of reverse domain name hijacking.
The Complaint is dismissed. No action is called for.
Tony Willoughby
24 August, 2005
