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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Exposure 2000 Ltd v Trinity Mirror Digital Media Ltd [2005] DRS 2777 (27 September 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2777.html Cite as: [2005] DRS 2777 |
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Complainant: Exposure 2000 Ltd
Country: GB
Respondent: Trinity Mirror Digital Media Limited
Country: GB
Represented by: Lovells, Solicitors
jobswales.co.uk ("the Domain Name")
The complaint was received by Nominet in full with hardcopies on 6 July, 2005. Nominet validated the complaint and informed the Respondent, by both letter and by e-mail on 11 July, 2005, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 1 August, 2005) to submit a Response. A Response was sent on 1 August and delivered on 2 August, 2005. Nominet adjusted the deadline as the delay was due to the courier. Nominet forwarded this Response to the Complainant on 2 August, 2005, giving the Complainant until 11 August, 2005. A (non-standard) Reply was received and entered on 9 August, 2005 and copied on to the Respondent on the same day. The parties were invited to participate in Informal Mediation. The Complaint was not resolved by Informal Mediation, and on 24 August, 2005 Nominet invited the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly paid and was received by Nominet on 6 September, 2005.
On 12 September, 2005, 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.
The Expert has reviewed the non-standard Reply from the Complainant and has taken this into consideration, subject to the observations below on its merits.
From the Nominet WHOIS records, the Domain Name jobswales.co.uk was first registered on 4 April, 2004 and the entry was last updated on 23 May, 2005. It is presently registered in the name of the Respondent. However, as is apparent from the evidence, the original registration was apparently in the name of a third party, Linea Resourcing, from whom the Respondent evidently obtained transfer of the Domain Name sometime between August 2004 and May 2005.
The Complainant was incorporated in 2000 and does business as Jobs in Wales from websites using the domain names jobsinwales.co.uk and jobsinwales.com.
The Respondent, Trinity Mirror Digital Media Limited, is the publisher of many regional newspapers, including the Western Mail and Echo based in Cardiff, Wales. It operates a number of jobs-related websites using various domain names as well as jobswales.co.uk.
Complainant:
The Complainant alleges that the Domain Name in dispute is identical or similar to a name or mark in which Complainant has Rights and that the Domain Name in the hands of the Respondent is an Abusive Registration.
The Complainant states its case in the following terms:
Jobsinwales.co.uk and jobsinwales.com were registered by math web design (previous trading name of Exposure 2000 Ltd prior to becoming a limited company in 2000).
[It claims rights in the name under paragraphs 1 c/d/e of the Nominet Complaint Form: ie.
c. It trades under the name [name] and has done so since [date] (provide evidence, e.g. marketing and advertising materials, letterhead etc.);
d. It has advertised using the name [name] since [date] and spent about £[amount] on such advertisements, examples of which are exhibited at Exhibit [Number];
e. It provides [goods/services] under the name [name] as evidenced by the brochures exhibited at Exhibit [number]]
1 c/d/e - Trading as Jobs In Wales, on the internet, in printed media and local radio advertising over the past five years the name has become a strong brand within the Welsh recruitment industry. Both domains have been active and receiving a combined visitor count of approaching 1,000 visitors a day for the past 18 months. The site has seen a steady year on year growth since 1999. Searches on major search engines for jobs wales combinations thereof brings up one of the jobsinwales sites in the top five and has done for the past five years.
2 - None of the above can be in any doubt to the respondent, as in August of last year we were contacted by:- Kristian Welch of Digital & Recruitment Specialist Western Mail & Echo Trinity Mirror Group [email protected] 02920 583 756 07970 749 245
[It claims that the Domain Name in the hands of the Respondent is an Abusive Registration with reference to paragraphs 3 c/d of the Nominet Complaint Form:
3(c) primarily registered to unfairly disrupt my business because [explain how the registration disrupted your business, how the Respondent is to blame, and provide evidence to prove everything].
3 (d) used by the Respondent in a way which already has confused people into thinking that it was controlled by me, specifically [explain what has been done, how you know that people have already been confused, and provide evidence to prove what you say].]
3 c/d [Mr Welch] was interested in buying the domain of jobsinwales.com from us. We explained that the name was not on the market and voluntarily explained why and shared with Mr. Welch our projections for the site over the next five years. Mr. Welch's response was that if we did not sell that they would set up in competition against us. In May of this year, I was contacted by several companies (customers and business acquaintances by telephone), either concerned that I had sold JobsInWales to the Western Mail, or congratulating me on the fantastic write up I had received in the Western Mail. It transpires that the Trinity Mirror Group, had purchased both jobswales.co.uk and jobswales.com and re-branded their jobs supplement in the Western Mail as JobsWales. This has disrupted my business as it has caused genuine confusion in the recruitment community in Wales. Some potential clients believing that they are already using my site until we explain "no we are jobsinwales not jobswales".
The Complainant asks for the Domain Name to be transferred to it.
Respondent:
In the Response, the Respondent has asserted:
The Respondent objects to the Complaint and asks that the Expert does not grant the Complainant the remedy sought.
Background
The Respondent is part of Trinity Mirror plc, the UK's largest newspaper publisher, with a portfolio of more than 500 media brands. The Respondent is the registrant of a number of domain names similar to the Domain Name, such as jobs-merseyside.co.uk, jobsnortheast.co.uk and jobs-southeast.co.uk (further examples and details were provided as Annex 1 to the Response).
The Respondent makes available at the Domain Name (and the others listed in Annex 1 to the Response) an on-line regional recruitment and employment information service, where recruiters are to place advertisements for positions which they have and potential recruits may then submit responses to such positions. The Respondent has been operating this service as part of the icwales.co.uk (the ic jobs channel) for four years, and under the Domain Name since this May. A copy of the homepage using the Domain Name was provided as Annex 2 to the Response.
The Complainant is the registrant of jobsinwales.co.uk, from which the Complainant offers a similar service. The website provides that "Jobs in Wales is a jobs and employment resource based in Wales for Welsh employers looking to fill job vacancies and Welsh job seekers looking for employment and jobs in Wales". (A copy of the homepage using this domain name was provided as Annex 3 to the Response.)
The Complainant's Rights
The Complainant has not proved that it has Rights in respect of a name or mark which is identical or similar to the referenced domain name. The DRS Policy defines Rights as "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 Complainant seeks to rely on its own domain name, jobsinwales.co.uk. The Complainant has not shown that it has any rights enforceable under English law in relation to this name. The term, "Jobs in Wales" is wholly descriptive of the Complainant's business, which provides a service relating to jobs in Wales.
Abusive Registration
The Complainant has not proved that the Domain Name in the hands of the Respondent is an Abusive Registration. It is unclear whether the Complainant is alleging that the circumstances fall within any of the list of non-exhaustive factors in paragraph 3 of the DRS Policy. They do not.
The Respondent has not registered the Domain Name with the intention of unfairly disrupting the business of the Complainant. As can be seen by the other domain names held by the Respondent (and set out in detail in Annex 1 to the Response), this Domain Name is part of a wider pattern of offering an on-line recruitment and employment information service across the regions of the UK. This wider pattern was the Respondent's purpose in registering the Domain Name.
The Complainant also states that there is genuine confusion in the recruitment community in Wales. The Respondent disputes this and is unaware of any confusion. Since receiving the Complaint, the Respondent has made further enquiries of its staff as to whether there have been incidents of confusion reported. There has been none.
Not an Abusive Registration
There are two further factors which point towards the registration in the hands of the Respondent not being an Abusive Registration
1. Before the Respondent was aware of the Complainant's cause for complaint, the Respondent has used the Domain Name (and other similar domain names) in relation to a genuine offering of services, namely an on-line regional recruitment and employment information service (cf. paragraph 4.a.i.A of the DRS Policy); and
2. The Domain Name is descriptive for the reasons set out above (cf. paragraph 4.a.ii of the DRS Policy).
The Complainant has made a number of allegations in relation to a telephone call with one of the Respondent's employees, Kristian Welch. Mr Welch has given a signed witness statement (which was provided as Annex 4 to the Response). It is clear from this statement, that the Respondent made no threat to set up in competition with the Complainant.
Complainant's Reply
The Complainant made supplementary submissions in a Reply to the Response as follows:
The Respondent's right to the domain through historical and geographical branding
Geographical Branding
We dispute the respondents assertion that the domain name of jobswales.co.uk is similar to it's other 'job' domains. The respondent has 35 'IC' regional sites that we are aware of, and these are shown below, along with their corresponding (branded or hosted) job sites. This shows that the naming pattern for IC web sites is not similar to that of JobsWales, but would have perhaps lent itself, in the opinion of the claimant, more towards either 'jobs-southwest.co.uk' which is still available as of the 4th August 2005 or 'WalesCareers.co.uk' which is already registered to the respondent since June 2004..
| IC Site | Job domain/branding |
| ICAyrshire | Scotcareers.co.uk |
| ICBerkshire | Jobs-southeast.co.uk |
| ICBirmingham | ICBirmingham |
| ICcheshireonline | Jobs-cheshire.co.uk |
| ICCoventry | ICCoventry |
| ICCroydon | Jobs-southeast.co.uk |
| ICDerry | Site down |
| ICDumfries | Scotcareers.co.uk |
| ICDumbartonshire | Scotcareers.co.uk |
| ICEaling | Jobs-southeast.co.uk |
| ICEssex | Jobs-southeast.co.uk |
| ICHarrow | Jobs-southeast.co.uk |
| ICHounslow | Jobs-southeast.co.uk |
| ICHuddersfield | ICHuddersfield |
| ICkent | ICJobs |
| ICLanarkshire | Scotcareers.co.uk |
| ICLiverpool | Jobs-merseyside.co.uk |
| ICNewcastle | Jobsnortheast.co.uk |
| ICNorthEast | Jobsnortheast.co.uk |
| ICNorthernIreland | Site Down |
| ICNorthLondon | Jobs-southeast.co.uk |
| ICNorthWales | ICNorthWales |
| ICPerthshire | Scotcareers.co.uk |
| ICRenfrewshire | Scotcareers.co.uk |
| ICScotland | Scotcareers.co.uk |
| ICSolihull | ICjobs |
| ICSouthLondon | Jobs-southeast.co.uk |
| ICStaines | Jobs-southeast.co.uk |
| ICStirlingshire | Scotcareers.co.uk |
| ICSurreyOnline | Jobs-southeast.co.uk |
| ICTeeside | Jobsnortheast.co.uk |
| ICTheWharf | Jobs-southeast.co.uk |
| ICUxbridge | Jobs-southeast.co.uk |
| ICWales | Jobswales.co.uk |
| ICWestLothian | Scotcareers.co.uk |
Historical Branding
We dispute the assertion of the respondent that owning and operating publicjobswales.co.uk gives them an historical right to jobswales.co.uk. Publicjobswales.co.uk was first registered in August 2004, the same time as the undisputed telephone call to exposure from Kristian Welch, offering to buy the Jobsinwales.com.
Genuine Confusion
When two of the leading job boards in Wales both share the same or similar names there will almost certainly be confusion amongst new and existing users as to who is who, both on and off line. A simple 'brain storming session' in any office contemplating new 'name and branding' scenarios would have thrown this up as a possibility if not a certainty. We suggest that the respondents belief that this is not the case, is based on wishful thinking rather than fact.
Given the time constraints it has not been possible for us to collect signed witness statements but the following two individuals have both agreed to this if required.
Case 1 (Pascoe George Jennifer Griffiths Recruitment)
Background - Jennifer Griffiths Recruitment have been a client of JobsInWales since 2001 with regular contact and daily use of the JobsInWales site.
Circumstances During the initial launch of the jobswales web site Pascoe was reading a large piece in the Western Mail and called us concerned that we had sold the name and business to the Western Mail. We pointed out that the domain name they had quoted was jobswales and that we were jobsinwales.
Case 2 (Nick Pilgrim Regus Recruitment)
Background Regus recruitment have been an ongoing prospective client of jobsinwales.
Circumstances Nick Pilgrim had a scheduled meeting with jobsinwales on the 4th August 2005. By pure chance he was called on the morning of the 4th August by Jobswales apparently soliciting for business. The consultant who took the call tried to put jobswales through to Mr. Pilgrim believing them to jobsinwales concerning his afternoon appointment.
Telephone Conversation
I am not sure of the relevance of this section of the respondent's reply, but it has brought up several points that I will address, for the sake of good order, below.
The complainant has not made a number of allegations regarding the telephone call between Angus Thody and Kristian Welch, but only stated the fact that the telephone call took place and during that call Mr. Welch pointed out that if the respondent was unable to secure jobsinwales as a domain name they would set up in competition against us. This statement, in the context of what the undersigned believed to be a very friendly and congenial telephone conversation, was wholly appropriate.
Often a conversation will be perceived by the separate parties in different ways, and certainly this appears to be the case here. The conversation was to my mind long and friendly, however and in hindsight, some of the things said by the undersigned may have been naοve.
The synopsis of my intentions to this hitherto unknown caller from 'The Western Mail', were to be polite, explain that the domain was not 'on the market' but to also make clear that if an excellent offer was put on the table I would not be foolish enough not to at least consider it.
5-6. To this end I 'naively' shared with Mr. Welch my projections for the site over the next five years explaining that we were budgeting £50,00 profit in the next financial year and any offer would need to take into account the loss of several years' profit on at least this level.
7-8. Rather than go into competition I suggested to Mr. Welch a strategic alliance, as we have with other web sites. I was very open about how we had built the business and achieved top placement on almost all major search engines on a minimal budget and how we were striving for the perfect e'commerce business that requires minimal labour costs but provides excellent service for the end user. I am passionate about my work and may well have unknowingly bored Mr. Welch. I apologise.
10. see above - 'during that call Mr. Welch pointed out that if the respondent was unable to secure jobsinwales as a domain name they would set up in competition against us. This statement, in the context of what the undersigned believed to be a very friendly and congenial telephone conversation, was wholly appropriate.'
11. see Genuine Confusion above 'When two of the leading job boards in Wales both share the same or similar names there will almost certainly be confusion amongst new and existing users as to who is who, both on and off line. A simple 'brain storming session' in any office contemplating new 'name and branding' scenarios would have thrown this up as a possibility if not a certainty. We suggest that the respondents belief that this is not the case, is based on wishful thinking rather than fact'.
12-13. Advertising
By my own admission our spend on conventional advertising has been minimal:
South Wales Business Directory 2004 Full page advert and full page editorial
Welsh Business.com Magazine December 2003 Full page advert inside front cover
Welsh Business.com Magazine April 2004 Full page advert inside back cover (main ad for web design but secondary add for jobs)
Kit Sponsors for Cowbridge Lions under 14 Football team season 2003-2004
Bridge FM Site sponsors for 4 months from March 2004 and over 800 radio promos in that time
Big Issue 4 x 19 cm advert weekly in recruitment section from May 2004 to Jan 2005
Public Awareness
Top or near top of all major search engines for the past 4 years for jobs in Wales and jobs Wales.
Over 1,000 unique visitors a day to the site for the past eighteen months
Just over 5,000 Cv's submitted to the site in the last fifteen months.
Clients and users who have heard of JobsInWales
A list of over 600 employers or agencies in Wales who (the Respondent claimed) have physically logged on and interacted with JobsInWales was included in the Reply.
The above shows beyond doubt that jobsinwales is an established brand within Wales, and that the respondents claim 'that people have never heard of jobsinwales' is groundless. That Mr. Welch called us in the first place meant that at least he had heard of us.
14. I believe that competition is a good thing and that the Western Mail with all its advertising budget can bring the benefits of online recruitment in Wales to the publics' attention is ultimately going to be of benefit to anyone in Wales running an online job board. What I object to is the use of jobswales as a domain name when the respondent was fully aware of our position as jobsinwales in the market place prior to purchasing the name.
We were unaware that Linea Resourcing owned the name during the period from April 2004 so were not in a position to raise an objection. We first became aware in May of this year of the use of jobswales for a rival web site and contacted Hugh James Solicitors in Cardiff on the 24th May 2005 for advice along with Cardiff Trading Standards on the 26th May 2005. After some careful consideration and procrastination befitting the implications of 'doing battle' with the Trinity Mirror Group we raised our complaint to the Dispute Resolution Service on the 5h July 2005
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name at issue; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
Complainant's Rights
The Complainant in this case has asserted that it has rights in the name and mark and that this is identical or similar to the Domain Name at issue.
As the Respondent has noted, "Rights" under the Policy is broadly defined and "includes, but is not limited to, rights enforceable under English Law." It is well established in decisions under the Policy that this requirement represents a relatively low-level hurdle for a Complainant to establish.
In the present case, it is undisputed that the Complainant does business as Jobs in Wales and actively operates websites using the domain names jobsinwales.co.uk and jobsinwales.com for that purpose. Consequently, it may reasonably claim to have some "rights" in those domain names as such, albeit of probably very limited extent.
The Domain Name jobswales.co.uk differs only through absence of the preposition "in". Otherwise, the import of both names is identical they relate to employment (jobs) in Wales.
Accordingly, for the purposes of the Policy, the Expert is prepared to accept that the Complainant does have Rights in this case in respect of a name (or mark), which is identical or similar to the Domain Name at issue.
However, the problem for the Complainant is that the definition of "Rights" under the Policy includes the additional qualification to the effect that "However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."
In the present case, the Expert considers that this qualification is fatal to the Complaint.
The Complainant's business is operated by its own definition as an employment portal for jobs vacancies in Wales. The Expert cannot do otherwise than conclude that the name or term in which the Complainant seeks to assert "Rights" under the Policy is wholly descriptive of the Complainant's business and therefore cannot be relied upon in a claim under the DRS.
Abusive Registration
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.
The Complainant's submissions in this case suggest that, if it were able to justify a claim to have established protectable goodwill in "Jobs in Wales" as a trading style, then it might conceivably have grounds to try to make a claim for passing-off against later users of similar styles. However, pursuit of such claims to passing-off on the basis of alleged rights in descriptive terms established through use would properly be a matter for the Courts rather than the Policy.
It is to be noted that in addition to the qualification in the definition of "Rights", the Policy also recognises that it is evidence that a Domain Name is not an Abusive Registration (under Paragraph 4 a ii if:
ii The Domain Name is generic or descriptive and the Respondent is making fair use of it;
In this respect, the Expert observes that there are also third parties (not being either the Complainant or Respondent in this case) operating websites under the domain names jobs-in-wales.co.uk and jobs-wales.co.uk.
However, as the Complainant's case fails above under the definition of "Rights" the Expert makes no determination on the merits of the Complainant's allegations in relation to Abusive Registration.
Having concluded that the Complainant does not have any Rights which may be relied upon in a Complaint under the Policy, the Expert rejects the Complaint and denies the request for transfer of the Domain Name.
27 September, 2005
Keith Gymer