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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Retail Human Resources plc v Freeman [2005] DRS 3022 (23 December 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/3022.html Cite as: [2005] DRS 3022 |
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Nominet UK Dispute Resolution Service
DRS 03022
Retail Human Resources plc v Stephen Freeman
Decision of Independent Expert
Complainant: Retail Human Resources plc
Country: GB
Respondent: Stephen Freeman (trading as www.retail.co.uk)
Country: GB
retail.co.uk ("the Domain Name")
The complaint was entered into Nominet's system on 6th October 2005. Nominet validated the complaint and informed the Respondent by letter dated 7th October 2005, noting that the Dispute Resolution Service had been invoked and that the Respondent had until 31st October 2005 to submit a Response. A Response was received on 31st October 2005; and a Reply from the Complainant was submitted and received on 10th November 2005. Further "non-standard submissions" have recently been submitted by the Respondent. I deal with these in the next section.
During November the parties participated in a confidential mediation process, but in accordance with Nominet's practice I have not seen any of the mediation materials and do not know what went on, save that it did not result in a mediated settlement of the Complaint.
On 30th November 2005 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy Version 2 ("the Policy"). The fee was duly paid on 2nd December 2005.
On 5th December 2005 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I 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 my independence and/or impartiality, Nominet duly appointed me as Expert with effect from 9th December 2005.
The principal procedural issues in this case concern the number, volume and contents of the submissions.
The Complaint filed on 6th October 2005 was within the 2000 word limit and appended three unpaginated exhibits.
The Response filed on 31st October 2005 was technically within the 2000 word limit, but commenced with the words "For full statement with footnotes see Exhibit 1A. The complexity of the Complainant's allegations requires this but certain truncations imposed by 2000 word limit occur in Response below." There followed no less than 57 separate exhibits, of which Exhibit 1A was the unexpurgated (i.e. over 2000 word) version of the 'Response'.
The Reply filed on 10th November 2005 was also within the 2000 word limit; but included 11 exhibits.
I was then notified by Nominet on 6th December 2005 that the Respondent had made a further, "non-standard submission" under paragraph 13b of the Procedure. At that stage, in accordance with paragraph 13b of the Procedure, Nominet only sent me the first paragraph of the "non-standard submission".
Later that day, the Respondent's representative emailed to me directly full copies of the "non-standard submission". It will be noted that this is a clear breach of paragraph 10a of the Procedure, which provides "A Party and the Expert must not communicate directly. All communication between a Party and the Expert must be through [Nominet]"
In response I asked Nominet to communicate the following observations to the parties:
"(1) Paragraph 13 of the Nominet DRS Procedure provides as follows:
a. In addition to the complaint, the response and if applicable the reply and any appeal, the Expert may request further statements or documents from the Parties. The Expert will not be obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or this Procedure or which he or she has not requested.
b. Any communication with us intended to be passed to the Expert which is not part of the standard process (e.g. other than a complaint, response, reply, submissions requested by the Expert, appeal notice or appeal notice response) is a 'non-standard submission'. Any non-standard submission must contain as a separate, first paragraph, a brief explanation of why there is an exceptional need for the non-standard submission. We will pass this explanation to the Expert, and the remainder will only be passed to the Expert at his or her sole discretion. If there is no explanation, we may not pass on the document or information.
(2) The expert received an email sent Tue 06/12/2005 17:52 from Nominet UK pursuant to paragraph 13b of the DRS Procedure, attaching the single paragraph referred to in the Procedure.
(3) The expert received a further email sent Tue 06/12/2005 18:20 directly from the Respondent's representative advancing a number of contentions as to the adequacy of what Nominet had sent to the expert and enclosing a further document.
(4) It is irregular, inappropriate and undesirable for the parties to send emails directly to the expert. This should not have been done and the email and its attachment have been deleted. No further such emails should be sent or copied to the expert; if they are, they will be summarily deleted without being read or considered.
(5) Irrespective of the merits of the substantive points the Respondent seeks to make, his criticism of Nominet's email referred to above is unfounded - Nominet has complied with para 13b of the Procedure, to the letter.
(6) It is now up to the expert (at his sole discretion) to decide whether the remainder of the Respondent's 'non-standard submission' should be passed to him.
(7) The expert hereby decides that he does indeed wish to be sent the remainder of the Respondent's 'non-standard submission' by Nominet.
(8) On receipt of that 'non-standard submission' from Nominet the expert will consider, rule upon, and communicate to Nominet whether his decision should be postponed to give the parties a further opportunity to present their case.
Philip Roberts
7.12.05"
On 8th December 2005 Nominet duly sent me the Respondent's non-standard submission. It consists of three lengthy separate documents: 'Objection to Reply', 'Objection to Reply (including Rejoinder)', and 'Reply to Defence on Reverse Domain Name Hijacking'; seeking to have parts of the Reply struck out and seeking permission to adduce further submissions. At my request, Nominet subsequently communicated the following observations to the parties:
"Further to my communication to the parties dated 7.12.05 and my receipt of the Respondent's 'non-standard submission', I consider that there is no reason for my decision to be postponed. I will accordingly provide the Expert Decision to Nominet within the original timescale, attaching such weight as I see fit to the 'non-standard submission'.
Philip Roberts
9.12.05"
I am not going to accede to any of the Respondent's requests for striking out. I am not sure I would have the power to do so in any event the DRS is not nearly as complicated and formal as the Respondent imagines. What I have done instead is to take into account all of the submissions which have been made by both parties, including those made in the non-standard submission, attaching such weight to them as is justified in all of the circumstances.
The unfortunate result of this tit-for-tat deluge of paperwork is that this Dispute now contains many more documents than is either necessary or desirable in what is intended to be a straightforward and user-friendly dispute resolution procedure. I doubt whether parties to all Nominet DRS complaints would be entitled to expect such leniency and indulgence from all of the Experts, particularly those with no formal legal training.
In the future Nominet may wish to give some consideration to imposing limits on the number or length of Appendices, in order to prevent disputes becoming, like this one, afflicted with acute appendicitis.
The Nominet WHOIS search with which I have been provided shows that the Domain Name, retail.co.uk, was registered by or on behalf of the Respondent, an individual, 'before August 1996'. The Respondent says he acquired it from its original owner in 1998.
The print out of the site accessible under the URL http://www.retail.co.uk with which I have been provided essentially depicts a search facility for retail jobs in the UK, by area, advertiser or keyword; although it appears from the historical archive printouts in the exhibits to the Reply that the site has undergone a variety of incarnations and colour schemes.
The Complainant is a public limited company incorporated on 21 January 1999. It carries on business in the UK as a recruitment consultancy for the retail industry.
Complaint
The Complainant makes the following submissions in its Complaint:
"Retail Human Resources has rights to the Domain Name because:
It has a trading division called InRetail.co.uk which trades under the name InRetail.co.uk and has done so since 1st March 2000.
It has advertised using the name InRetail.co.uk since 1st March 2000 and spent approximately £1.3m on press advertisements, and £1m on outdoor advertising, since this time. Examples of these adverts, including the first one from March 2000, can be found in Exhibit 1.
It has continually provided recruitment services under the InRetail.co.uk name since March 2000, as evidenced by several invoices found in Exhibit 2.
InRetail.co.uk was hard launched in March 2000, with more retail specific jobs than any other retail specialist site. Since this time InRetail.co.uk has continued to be the market leader, with more paid for retail jobs than any other site. We became aware of Retail.co.uk in 2004 when we were approached by Stephen Freeman to put advertising on his site for free. Our advertising stayed on the site for free until Sept 05, when because of this dispute we thought it appropriate to remove it. At no time during this period were we asked for advertising fees, nor do we have any reason to believe that any other advertisers on the site have paid any fees.
As we did not think retail.co.uk was operating commercially, we initially thought little of the site's similar name, nature and dress to InRetail.co.uk, although it has become apparent that the continued operation of the site is now damaging to the InRetail.co.uk brand.
The Domain Name in the hands of the Respondent is abusive because it was:
Used by Stephen Freeman in a way which has confused people into thinking that Retail.co.uk was controlled by or is the same as InRetail.co.uk. Since its inception in 1998, www.retail.co.uk appears to have been a directory of retailer websites (possibly run on a commercial basis). In November 2003, the whole appearance and dress of the www.retail.co.uk changed from a dark and light blue site listing retailers, to a purple site dedicated to listing retail jobs. With hindsight this seems more relevant now, as the main colour of the InRetail.co.uk site is purple, and has been since its inception in March 2000.
RHR did not initially object to the site, as due to the look and format of the site we did not see it as a viable commercial competitor. We also acknowledge that at the time we didn't realise our candidates and clients would be confused by the site. Indeed RHR even took the opportunity to place free advertising on the site (as we do with all free-to-advertise sites). This free advertising took place from September 2004, to Sept 2005. The Managing Director of RHR, Peter Burgess, instigated the placement of RHR jobs on the Retail.co.uk website. As such he was in direct communication with Stephen Freeman, of www.retail.co.uk, to finalise the arrangement. At this time Stephen Freeman joked with Peter that he was receiving lots of InRetail.co.uk's traffic due to the similarity of Retail.co.uk's and InRetail.co.uk's names. This is particularly pertinent because as the majority of InRetail.co.uk's marketing is offline, it relies heavily on candidates being able to correctly remember the URL. At the time Peter Burgess perceived this as a minor nuisance, rather than a major concern, and along with our perception of the site as a non-viable commercial competitor, nothing more was done.
However, since a survey was carried out on our behalf in July 2005, we established that in list-prompted questioning, 5% of candidates working in retail (shopping centres) used Retail.co.uk compared to 8% for InRetail.co.uk. This was particularly surprising as this figure for Retail.co.uk was higher than that of InRetail's major competitors, namely Totaljobs.com (4.7%), Retailcareers.co.uk (4.1%), The Appointment (3.6%) and RetailChoice (1.7%). This led us to believe that either Retail.co.uk was much bigger than we believed, or more likely that the overwhelming majority of candidates were confusing Retail.co.uk with InRetail.co.uk. We therefore repeated the Survey, this time with a second question for those who said Retail.co.uk was a site they used. We then showed them a screenshot of Retail.co.uk compared with InRetail.co.uk and asked them to confirm they used Retail.co.uk. In 100% of cases the candidates retracted, saying they meant InRetail.co.uk, not Retail.co.uk. Copies of these survey questionnaires and results can be found in Exhibit 3
In addition to this candidate confusion, one of our clients Alex Pescott of Fusion Consulting emailed the head of InRetail.co.uk, Ellie Burgess to ask her why Fusion's jobs were not showing up on the website when he had clearly paid for them. Alex had in fact become confused between the sites and was trying to find his jobs on Retail.co.uk not InRetail.co.uk. To verify this story, Alex can be contacted via telephone: 020 7437 2800 or email: [email protected]
We also believe that the domain name has been used abusively, as this is one of a series of registrations that the Respondent has made, which because of their number, type and pattern prove that the Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well known names in which the Respondent has no apparent interest. The respondent was the one time owner of www.mbna.co.uk which was later acquired by MBNA (details/cost of transfer unknown). The Respondent is also the owner of www.army.co.uk which appears to be his core business, and somewhat incongruous with Retail.co.uk. Despite a rate card clearly displayed on the site purporting to be of a commercial nature, Retail.co.uk does not appear to be a proper commercial business. As of this date, 5th Oct, it has one recruitment agency advertising on the site, in effect an automatic feed from another web application. Please also refer to our earlier statement regarding 'free' advertising.
We initially approached Retail.co.uk in writing to try and resolve this dispute. We had no objection to Stephen Freeman using the retail.co.uk name, or operating a recruitment website, but not both together - which clearly infringes upon the InRetail.co.uk name and its considerable brand presence. We even made what we consider to be a very generous without prejudice offer of £10,000 for the site name. We received a solicitor's letter back refuting every request/claim we made, at which stage this complaint has been submitted to Nominet."
Response
The Respondent makes the following submissions in its Response. I have not reproduced the 'unexpurgated' text of Exhibit 1A because: (a) Exhibit 1A is not the Response; (b) I do not have an electronic copy of Exhibit 1A; and (c) under the DRS it is not open to the parties to circumvent the word limits by recourse to devices such as this. This is not as the Respondent has suggested an affront to natural justice; the core issue in this case is factually simple and capable of being dealt with very succinctly, notwithstanding both parties' attempts to complicate matters by bringing extraneous considerations into play.
"THE RESPONDENT HAS RIGHTS TO DOMAIN NAME BECAUSE:
1. Domain was registered in 1996 by Mr Andrew Crane. In 1998 Respondent purchased domain in good faith as Respondent operates, inter-alia, an online advertising business. Both before Complainant had rights in name "inretail.co.uk".
2. Prior to purchasing, Respondent researched whether domain address might infringe.
3. No likelinhood of infringement being found.
4. Within a few weeks of purchasing Respondent's site had live content. (Exhibits14 to19)
5. It has actively hosted links to retail companies and adverts for retail jobs since 1998, 2 years prior to Complainant registering inretail.co.uk
6. Exhibit 16 - extensive list of categories of adverts - October 1999.
7. Exhibit 17 - site at December 2000
8. Exhibit 18 proves advertising jobs at 2002 (lefthand column Exhibit18). Earlier proof not available - if wayback machine recorded earlier Respondent's site, it would show jobs.
9. In 7 years since Respondent operated no challenge was made to operations until Complaint.
MISLEADING NATURE OF COMPLAINT
F 1) At Complainant's registration of inretail.co.uk (Exhibit41) retail.co.uk domain name had been registered for nearly 4 years and advertising retail outlets & retail jobs for nearly 2 years
F 2) The Complainant claims a trading "division" inretail.co.uk - a cyberhijacker tactic to disguise its true identity - Retail Human Resources by which its commonly known - and to portray a false illusion of a distinct entity.
F 3) The Complainant's own accounts of 2004 do not list "division" separately in accounts and refer simply to a team
... However at time of writing this Report our InRetail team have most certainly fought off this challenge ..
F 4) Despite Claimant claiming to be a leading advertiser of retail jobs, 2004 accounts also refer to
.. a "move away from traditional recruitment advertising methods and into much more profitable recruitment work"
F 5) Complainant has advertised heavily on Respondent's site since 2004.
F 6) Complainant is mistaken in claiming to have became aware of Respondent in 2004 and lies in saying Respondent approached it to put advertising on site for free.
F 7) The Complainant made first appraoch:
a. Complainant first approached Respondent in summer 2000 by e-mail about putting jobs on retail.co.uk.
b. Respondent then met an RHR contact outside Nellie Dean Pub, Soho becoming aware of RHR operations. Discussion took place but RHR made no further followup.
c. Complainant knowledge of Retail.co.uk's operations at meeting and its unsolicited approach in 2000 shows that Complainant clearly knew that jobs had been advertised on Retail.co.uk site at that time - no other rational reason for approach exists.
d. Contrary to Complaint's self-serving lie, Complainant again approached Respondent in Summer 2004. (ExhibitR2), not other way round.
e. See chain of correspondence about advertising jobs on Respondent's site (Exhibit1 & 23-39).
F 8) The Complainant's site hosts does same as Respondents links to retail company sites and hosts adverts. (EXHIBIT51)
F 9) Having been supplied with rate sheet for advertising, Complainant asked for a trial period. Various delaying tactics were used by RHR to avoid paying post-trial claiming intention to continue advertising with retail.co.uk. (Exhibits 1, 23-29)
F 10) RHR extensively advertised jobs on retail.co.uk from summer 2004 to Sept 2005. RHR usually had over 600 jobs listed on Retail.co.uk and sometimes in excess of 2200 jobs.
In September 2005, adverts were abruptly removed which surprised Respondent
F 11) Within days, allegations of passing off and confusion arrived.
F 12) Claimants are strangers to truth when saying:
a) "At no time during this period were we asked for advertising fees" (Exhibit1, 23-29).
b) RHR "did not think retail.co.uk was operating commercially, we initially thought little of site's similar name, nature and dress to InRetail.co.uk, although it has become apparent that continued operation of site is now damaging to InRetail.co.uk brand".Exhibits23_28 an outright lie, when there was a commercial arrangement of an advert in 'The Appointment' magazine in exchange for a trial period.
F 13) Respondent has received fees in relation to other advertisers.
F 14) RHR actively promoted Respondents website in their own magazine 'The Appointment', advrtising in 2004 August edition. RHR actively throughout 2004 and 2005 (until adverts were withdrawn in September 2005) gave positive encouragement to Respondent in development of retail.co.uk as a way of increasing exposure of adverts provided to retail.co.uk by RHR.
F 15) RHR approached Respondent knowing it was developing its commercial site and engaged in a deceptive practice of obtaining commercial advertising on site, misrepresenting that this was a long-term advertising relationship.
F 16) Respondent believes that RHR were always seeking to maintain and create confusion to allow a large commercial Goliath (inretail.co.uk) to reverse domain hijack a small e-commerce David (retail.co.uk).
F 17) Complainant's knowledge of domains
a. Complainant registered:
i.) rhr.co.uk in June_1997, clear indication that it intended to operate under name "retail human resources" (Exhibit_45};
ii.) October_1999, RHR's sister operation (The Appointment) registered retailcareers.co.uk (exhibit_43);
iii) December_1999, RHR registered careersinretail.co.uk (Exhibit_42);
iv) March_2005, RHR registered careerforums.co.uk (Exhibit_44);
b. Complainant is trying to dominate retail related generic domain names.
F 18) It is unbelievable that Complainant did not know in 1999/2000 of Respondent and its advertising, as Complainant registered numerous retail-related generic domain names in December 1999 and early 2000. It must have looked at retail.co.uk.
F 19) Claimants deliberately choseto ignore implications of two sites both hosting links to retail outlets and retail job adverts). (Exhibits_51_52).
F 20) If Complainant case was genuine they would clearly designate their domain address as in Irish advert (Exhibit_R4)
THE DOMAIN NAME IN HANDS OF RESPONDENT IS NOT ABUSIVE
F 21) Domain Name is generic and Respondent is entitled to use it in relation to all aspects of retail market
F 22) Domain Site was launched before Complainant got rights in name inretail,
F 23) Complainant rights in "inretail" does not give rights over generic "retail.co.uk", already trading when Complainant registered inretail.co.uk.
F 24) Complainant registered its Domain Name & could reasonably be expected to know it was confusingly similar to Respondent's existing domain name.
F 25) Any confusion which has arisen arises from:
a) deliberately confusing nature of logos designed by Claimant
b) deliberate separation of "In" from "Retail" in logos and capitalisation (Exhibits R2 and R3).
F 26) Complainant has since inception in 2000 deliberately sought to have same type of listing as Respondents earlier site. (Exhibits 15-18 cf 51).
F 27) Claimant accepts that Respondent's site was "possibly run on a commercial basis".
F 28) Respondent has at all material times carried advertising for retail outlets and retail vacancies albeit not at level of those adverts of Complainant.
F 29) Complainant placed adverts for nearly a year on Respondent site without complaint). (Exhibit 18).
F 30) Despite saying it only became aware of Respondent's site in 2004 (incorrect see F6 & F7 above) it is able to say that in November 2003, whole appearance and dress of www.retail.co.uk changed. Despite knowledge still no complaint was made.
F 31) At time purples and pinks were new colour for winter of 2003 and many retailers were prominently featuring these (Exhibits_30_31_33_34).
F 32) New colour was purple to reflect market.
F 33) Complainant claims its main colour is purple untrue. Colour of InRetail banner is a mixture of purple green & blue with prominent green circles
- background below banner was blue. (Exhibits_2_3_4 _&_51)
- Complainant site is deep pink banner with blue centrepiece, - Respondent's colour is vibrant purple
F 34) RHR did not object to site. They advertised on it instead.
F 35) Whilst Complainant says "due to look and format of site we did not see it as a viable commercial competitor", their real feelings are displayed in their 30th September letter (exhibit 53) when they say:
We must ask you to cease using your website as a jobsite under retail.co.uk name or for you to use name retail.co.uk for a non-recruitment purpose.
F 36) Complainant states that it has no objection to Respondent using retail.co.uk name, or operating a recruitment website, but not both together (Exhibit_53).
F 37) Respondent was first to market with a generic domain name which Complainant now seeks to hijack, having created a "unit" with confusingly similar name, confusing logos, acquiesced to Respondent's operations since 2000, and actively encouraged development of Respondent's operations and advertised on Respondent's site for a year .
F 38) The real truth of matter is that having designed their site & logo deliberately to be confusing with retail.co.uk (as above) it now suited their purpose to claim confusion.
F 39) The Complainant's letter (Exhibit_53) is wrong when claiming "trading for much longer" than Respondent Respondents traded for a year before Complainants bought their domain.
F 40) Why did Respondents choose name of inretail when a more distinctive name was available?
F 41) Complainant did not complain when they took trial advertising.
F 42) Complainant suggested that Respondent would gain credibility by having RHR jobs listed on Retail.co.uk, reiterated in London in September 2004. (Exhibit_26):
You are probably aware that RHR is largest recruiter of retail appointments. Us being on your site, or not as case maybe will in itself be indicative of your site's credibility in market place.
F 43) The Complainant's own survey is irrelevant as at time of survey - Complainant was advertising on Respondent site.
F 44) Respondent has not had time to complete a survey, DL Legal's initial poll suggests significant people found Complainant's logo confusing and thought Complainant's logo indicated site of retail.co.uk.
F 45) Respondent invited Complainant to issue Court proceedings so a proper survey could be done and costs claimed, Complainant has resisted court proceedings in fear of having to pay costs.
F 46) MBNA Claimant claims that Respondent's former ownership of MNBA is relevant. It is not.
F 47) Respondent's registration of MNBA.co.uk was made when MNBA.com was owned by Mercedes Benz North America. Respondent ran "Marketing Banners for Net Advertising" as part of its online retail promotions business.
F 48) A bank renamed itself as MNBA and purchased MNBA.com then entered UK market. Complainant was subject to Court proceedings and successfully defended initial applications.
F 49) Prior to full trial case was settled under confidentiality undertakings. terms of which cannot be detailed without court order.
F 50) No ruling or finding of infringement was made against Respondent nor any infringement admitted by him.
F 51) If Complainant wishes to rely upon this case, it is invited to issue court proceedings so Respondent can properly disclose circumstances.
F 52) ARMY Respondent does not cybersquat but has registered generic domain names which he uses. Retail.co.uk was one or these and Army.co.uk was another.
F 53) Claimant uses Army.co.uk as Army Surplus Store. Ministry of Defence have communicated with Respondent in past and have no issue with use of site. Links on site to NAAFI insurance provide Armed Forces personnel insurance with consent of NAAFI.
F 54) Complainant's claimthat a history of registration of generic domain names is infringement when they do same (paragraph 15 above).
F 55) Respondent did not joke with Burgess during meeting (approx Sept 2004). Burgess alluded to possible confusion between Inretail.co.uk and Retail.co.uk.
F 56) Respondent did comment that Complainant was unwise to be using a confusing logo and separatomg "In" from "Retail" by green circle, capitalisation and offsetting.
F 57) Complainant complains that Complainant's £10000offer was rejected. - Evidence of good faith, Respondent wishes to carry on his business.
F 58) Claimant chose a domain name confusingly similar, traded in same space and advertised on Respondent's site then claims spurious rights. Issue of Nominet proceedings following rejection of Complainants offer is supporting evidence of Complainant's reverse domain name hijacking.
COUNTERCLAIM FOR REVERSE CYBER-HIJACKING
Respondent asserts that Claimant has engaged in a series of deceptive practices to reverse domain hijack "retail_co_uk" as in Exhibit 56"
The Complainant's Reply
The Complainant makes the following submissions in its Reply:
"INTRODUCTION
The Respondent's Response appears to be set out in three documents and a large number of exhibits. The Complainant does not intend to address each of the points made by the Respondent in the order that they are set out in Response as that order is somewhat confusing.
The Respondent admits that the Domain Name is confusingly similar to the name of the Complainant's InRetail.co.uk trading division. Furthermore, the Respondent has not challenged the Complainant's claim to have rights in the InRetail.co.uk name. The issues between the Complainant and the Respondent are whether the Domain Name in the hands of the Respondent is an Abusive Registration and whether the Complainant has used Nominet's Dispute Resolution Service Policy in bad faith in an attempt to deprive the Respondent of the Domain Name.
Abusive Registration
The Complainant's case is that the Domain Name in the hands of the Respondent is an Abusive Registration because, since November 2003, it has been used as a website dedicated exclusively to listing retail specific jobs. By changing the use of the Domain Name from non-abusive use to an abusive use the Domain Name has become an Abusive Registration from the time of the change of use. Consequently, whether or not the Respondent had legitimate interest in the Domain Name prior to the change in use is irrelevant for this complaint.
Respondents use of the website operated under the Domain Name
1. The Respondent has stated that the Retail.co.uk website has hosted adverts for retail jobs continuously since 1998. It offers no support for this assertion either from its own internal company records or from the Internet Archive. Instead, it simply states that the Internet Archive has not retained the relevant part of the sites that included the job adverts. However, as set out in Annex 1 (Exhibit CR-1) a review of the Internet Archive shows that this assertion and this explanation are not credible.
2. From the facts set out in Annex 1, it is also not credible to suggest that job adverts were featured on the website operated under the Domain Name from its inception and that as well as there being no trace of them found on the Internet Archive there is also no mention of jobs or recruitment on the "US" page of the website (which describes the service offered by the website) nor are there any metatag keywords that mention jobs, recruitment, vacancies etc. Furthermore, the Respondent does not refer to any internal business documents in its possession that can demonstrate that such adverts were featured.
3. The Complainant agrees that the Internet Archive shows that by May 2002 a subsection of the website had been set up with a list of links to the current vacancies section of various retailers' individual websites. However this use was still subsidiary to the main use of the website as a portal for online shopping and was not comparable to the service offered since March 2000 by the Complainant's InRetail.co.uk website.
4. The Complainant's case is that by changing the use in November 2003 of the website to a retail specific job board the use became abusive use in that it takes unfair advantage and is unfairly detrimental to the Complainant's Rights because it has confused people into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant. In this regard the Complainant refers to the details of its survey and the instance of confusion of Mr Pescott referred to in its Complaint.
Advertising placed on the Respondent's website by the Complainant
5. The Response makes much of the fact that between September 2004 and September 2005 the Complainant placed adverts on the Respondent's website. The Complainant's position on the placing of these adverts is as set out in its Complaint. However, in the light of certain allegations, made in the Response, of the Complainant lying, Peter Burgess of the Complainant, has made a statement addressing these allegations. The Statement is attached at Exhibit CR-3.
6. As can be seen from the statement, the advertisements referred to were for RHR and not InRetail.co.uk. They made no reference to InRetail.co.uk. Furthermore, as set out in Annex 1, by the time RHR placed its advertisements on the website it was one of 11 recruitment consultancies dealing with retail vacancies that advertised its jobs on the Retail.co.uk website. It is not credible to suggest that anybody using the Retail.co.uk website seeing Retail Human Resources as one of 11 recruitment agencies listing jobs on the website that they would believe there was some special relationship between Retail Human Resources and Retail.co.uk over and above that relationship of the other recruitment agencies listed in the same way on the website.
7. An analogy can be drawn with estate agents who advertise in local free papers devoted to residential property sales in the local area. Many agencies advertise in the paper and it is unlikely that people reading the paper would think that any one estate agent, by virtue of the fact that it was advertising in the free paper, had some sort of special relationship with the paper over and above the relationship of the other advertisers in the paper.
8. It is also not credible to suggest that people would associate the website service offered by InRetail.co.uk with Retail Human Resources. As explained in Mr Burgess' statement, Retail Human Resources plc is a privately limited company. The consultancy division ("RHR"), dealing with traditional recruitment has its own website operated under the 'rhr.co.uk' domain name that advertises RHR jobs.
9. InRetail.co.uk is the media arm of Retail Human Resources plc and InRetail.co.uk offers advertising space for sale to anyone who wants to advertise retail job vacancies. It is not clear from the InRetail.co.uk website that there is a connection between the InRetail.co.uk site and Retail Human Resources plc or its RHR consultancy division. The only reference to Retail Human Resources on the InRetail.co.uk website is found in the "Terms & Conditions" section accessed by a link in the small print at the bottom of the home page. Here, there is a statement that InRetail.co.uk is owned and operated by Retail Human Resources plc. However, apart from this the connection is not apparent from normal use of the website. It is therefore very unlikely that internet users would, as a result of RHR advertising on the Retail.co.uk website, make a connection that Retail.co.uk is in some way connected to InRetail.co.uk.
10. As explained in Mr Burgess' witness statement, new job board websites are frequently being set up. Often the operators of the new boards will offer established recruitment agencies free advertising for their jobs to help build their credibility. RHR frequently takes advantage of such free advertising. In many cases the jobs boards do not survive long and this is why RHR placed advertising on the Retail.co.uk board but at the same time did not consider that it was going to be a commercial success.
11. As explained in Mr Burgess' statement, at the time the advertising was placed, until the survey was conducted in July this year he did not think that that there was confusion between the Retail.co.uk and InRetail.co.uk websites.
Allegation of Reverse Domain Name Hijacking
12. The Complainant's Response to the Counterclaim alleging Reverse Domain Name Hijacking is set out in Annex 2 (Exhibit CR-2).
ADDITIONAL POINTS
Invitation to complainant to issue Court Proceedings
13. The Respondent is trying to characterise this dispute as a battle between David and Goliath with the Respondent as David and the Complainant as Goliath. Contrary to this assertion, it was the Complainant that commenced Nominet Dispute Resolution Proceedings as a cost effective, efficient and entirely appropriate way to deal with the dispute. It was the Respondent that instructed solicitors and it was the Respondent that wanted to bring the dispute before the Court with all of the increased costs associated with instructing solicitors and engaging in Court proceedings.
14. In the event that the Respondent believes the Court is the appropriate forum for this dispute, (and in the event that the Respondent considered that its case was such that the likelihood was that the Complainant would be ordered by the Court to pay the Respondent's cost as it suggests in its paragraphs F43 and F44) then the Respondent is perfectly entitled to bring proceedings in the Court at which point the Nominet proceedings would be suspended. It is noteworthy that, despite threatening to do just that unless the Complaint was withdrawn, the Respondent has chosen instead to go ahead with the Nominet procedure. Consequently, it is not proper for the Respondent to try to read something sinister into the Complainant's refusal to abandon its Nominet Complaint in favour of Court proceedings.
mbna.co.uk
15. The Complainant drew attention in its Complaint to the fact that the Respondent had also been the registrant of the mbna.co.uk domain name and that there had been legal proceedings over that domain name with the MBNA America Bank. The Respondent has stated that the mbna.co.uk domain name is irrelevant to the current dispute and that the dispute was settled with confidential terms of the settlement. The only comments that the Complainant wishes to make are that in the course of the dispute with MBNA there was an application made by MBNA for an interlocutory injunction to restrain the Respondent from operating a website under the domain name or from selling or offering for sale the domain name before the dispute was resolved at the full trial of the action. The judgment for that hearing is publicly available and is attached at Exhibit CR-11.
16. Despite the Respondent's characterisation that it was subjected "to Court proceedings and successfully defended initial applications", it is interesting to note that at the interim hearing, although the Court did refuse to grant the first injunction request to restrain the Respondent from operating its website (mainly as the Respondent indicated it was unlikely that he would be in a position to operate the website in advance of the expedited trial date ordered by the Court), the Court did grant an injunction preventing the selling or offering for sale of the domain name pending the trial of the dispute.
17. It is also interesting to note that in the judgment reference is made to Retail.co.uk which the Respondent described as a "high profile-ecommerce portal". No reference was made to it being a recruitment or job advertising service.
Survey
18. The Respondent claims that the Complainant's survey is 'irrelevant" as at the time of the survey the Complainant had advertising on the Respondent's site. As explained above, in paras 5-11 the advertising was for RHR and not InRetail.co.uk. Furthermore, the survey still demonstrates the confusion that exists among candidates between the two domain names in question.
19. It is noted that although the Respondent claims not to have had time to conduct a proper survey, it seeks to rely on the results of a 'poll' carried out by the Respondent's solicitors about which no information (other than the final conclusions drawn) is given. Consequently, this 'poll' should be disregarded.
CONCLUSION
20. In conclusion, the Complainant repeats its Complaint and the assertion that the Domain Name as it is currently being used and as it has been used since November 2003 constitutes an Abusive Registration. The Complainant denies the allegation of Reverse Domain Name Hijacking for the reasons set out in this Reply, in the Complaint and in Annex 2 (Exhibit CR-2) of this Reply. The Complainant repeats its request that the Domain Name be transferred to the Complainant."
The Respondent's non-standard submissions
The Respondent makes the following submissions in its document entitled "Objection To Reply (including rejoinder)". I have not reproduced the smaller document entitled "Objection To Reply" separately, as it appears to be subsumed within the larger document.
"GENERAL OBJECTION
The Reply inserts material that does not fall within the class of replying to anything in the Response which is:
"(a) untrue,
(b) misleading,
(c) raises new allegations against [the Claimant] which [the Claimant] should answer (provide evidence, where possible) or
(d) indicates that you have a fatal flaw in your case that [the Claimant] must patch."
which are the permitted grounds for the submission of a Reply.
The Respondent therefore seeks permission to answer the new points raised in the Reply by way of rejoinder and to have the submission of the Reply (or parts thereof as set out below as in breach of the Reply rules) struck out.
Paragraph 13 of the witness statement submitted as part of the Reply is relevant in this matter:
The Complainant is now stating that "it is therefore very unlikely that users would, as a result of Retail Human Resources presence on the Retail.co.uk website make a further connection that Retail.co.uk is in some way connected to inretail.co.uk".
If the Claimant's position is that it is very unlikely that users would make a connection that Retail.co.uk is in some way connected to inretail.co.uk with the presence of Retail Human Resources on the site (in retail.co.uk being part of RHR) then it must also be the case that without that presence users would be even less likely to make a connection that Retail.co.uk is in some way connected to inretail.co.uk (inretail.co.uk being part of RHR) and that this admission by the Complaint is fatal to their claim.
SECTION: REPLY
Claimant's Statement (2nd paragraph).
The Respondent admits that the Domain Name is confusingly similar to the name of the Complainant's InRetail.co.uk trading division.
Objection: The Respondent mischaracterises the Respondent's Response. The Respondent's principle assertion was that the InRetail.co.uk domain name is confusingly similar to the name of the Complainant's InRetail.co.uk
The Respondent stated (paragraphs 24 and 25)
Complainant registered its Domain Name & could reasonably be expected to know it was confusingly similar to Respondent's existing domain name.
Any confusion which has arisen arises from:
a) deliberately confusing nature of logos designed by Claimant
b) deliberate separation of "In" from "Retail" in logos and capitalisation (Exhibits R2 and R3).
Claimant's Statement (2nd paragraph).
Furthermore, the Respondent has not challenged the Complainant's claim to have rights in the InRetail.co.uk name.
Objection: The Respondent mischaracterises the Respondent's Response. The procedure does not allow the Respondent to challenge the Complainant's domain registration.
Rejoinder:
The Respondent challenged the rights of the Complainant to capitalise its domain name as InRetail.co.uk and has, since the Response was served, served a cease and desist notice in this respect. (See Exhibit RR1).
Claimant's Statement:
Abusive Registration
The Complainant's case is that the Domain Name in the hands of the Respondent is an Abusive Registration because, since November 2003, it has been used as a website dedicated exclusively to listing retail specific jobs. By changing the use of the Domain Name from non-abusive use to an abusive use the Domain Name has become an Abusive Registration from the time of the change of use.
Objection:
This paragraph is not admissible. It does not go to a reply to anything in the Response which is (a) untrue, (b) misleading, (c) raises new allegations against [the Claimant] which [the Claimant] should answer (provide evidence, where possible) or (d) indicates that you have a fatal flaw in your case that [the Claimant] must patch.
This is an attempt by the Claimant to re-state the position set out in their Complaint.
Rejoinder: This is also inaccurate. The Respondent's reply states that it has at all material times had retail jobs advertised on its site. As such there is no change of use by the Respondent. The class of use has at all material times been retail and the use has at all material times been advertising of retail stores and retail jobs.
Claimant's Statement:
Consequently, whether or not the Respondent had legitimate interest in the Domain Name prior to the change in use is irrelevant for this complaint.
Objection: The Complainant was aware of the Respondents position prior to the Complaint and should have raised this point during the Complaint. As the Complainant is now represented by Solicitors the Claimant is seeking to raise a new point.
Rejoinder: The Respondent's legitimate use prior to the Complainant's use if its site for the purposes complained of by the Complainant are highly relevant.
Claimant's Statement:
1 . Respondents use of the website operated under the Domain Name
The Respondent has stated that the Retail.co.uk website has hosted adverts for retail jobs continuously since 1998. It offers no support for this assertion either from its own internal company records or from the Internet Archive. Instead, it simply states that the Internet Archive has not retained the relevant part of the sites that included the job adverts. However, as set out in Annex 1 (Exhibit CR-1) a review of the Internet Archive shows that this assertion and this explanation are not credible.
Objection:
Text material in annex 1 should have been included in the main body of the Complaint. No new material not available at the time of the Complaint is made. Accordingly Annex 1 is inadmissible. The use of Annex 1 is an attempt to avoid limitations in the length of the submissions to be made. Should the material be admitted, the Respondent would seek to provide a detailed and equally lengthy response to each of the points raised and the failure to allow this if Annex 1 is admitted is a breach of the respondent's right to a fair trial.
Rejoinder: (The Respondent not having had a chance to answer this allegation).
This is not accepted by the Respondent. The Claimant does not have internal business documents in its possession from this time. The Response sets out evidence by Mr Freeman's Statement that retail job adverts were carried. The Respondent's meta tags refer to all aspects of retail of which jobs are a sub-set and therefore not relevant to the meta-tags according to search engine recommendations which the Respondent considered relevant at the time. The Claimant's assertion that "a review of the Internet Archive shows that this assertion and this explanation are not credible" is not forensically sustainable. If forensic analysis is to be necessary then this is a matter for Court, not Nominet DRP, the Claimant having been invited to proceed to court and having declined that opportunity.
Claimant's Statement
2. From the facts set out in Annex 1, it is also not credible to suggest that job adverts were featured on the website operated under the Domain Name from its inception and that as well as there being no trace of them found on the Internet Archive there is also no mention of jobs or recruitment on the "US" page of the website (which describes the service offered by the website) nor are there any metatag keywords that mention jobs, recruitment, vacancies etc.
Objection:
Text material in annex 1 should have been included in the main body of the Complaint. No new material not available at the time of the Complaint is made. Accordingly Annex 1 is inadmissible. The use of Annex 1 is an attempt to avoid limitations in the length of the submissions to be made. Should the material be admitted, the Respondent would seek to provide a detailed and equally lengthy response to each of the points raised and the failure to allow this if Annex 1 is admitted is a breach of the respondent's right to a fair trial.
Rejoinder: (The Respondent not having had a chance to answer this allegation).
Before March 2000
In Annex 1 (i), the Complainant admits that the pre-March 2000 pages cannot be seen to view. The Complainant's argument that it is not credible from the Web Archive to suggest that there were jobs advertised prior to that date is therefore clear nonsense.
In Annex 1 (ii) The Complainant suggests that the "US" page's failure to mention jobs is relevant. This is not the case as the Respondent's main focus at that time was listing retail sites and the minor (or subsidiary) focus was retail jobs. The drop down link was not designed to feature the jobs as jobs were featured in a different frame.
The meta keywords did not mention jobs as this was a subsidiary use. The Respondent's belief at the time was that the use of the existing meta keywords were appropriate to its advertising of retail stores and retail jobs.
In Annex 1(iii) the list of meta-tags was classes of trading and therefore it would have been irrelevant to include "jobs" or "recruitment" in such list.
The phrase "The UK's online retail/shopping directory" is entirely consistent with a listing of retail jobs on the Respondent's site.
The Claimant's meta keywords do not refer to the listing of retail sites which it now admits is a significant focus on its site (which it developed to compete directly with the Respondent's main focus) and it reserves all of its keywords to jobs and similar descriptors. This clearly shows that meta-keywords are not an accurate measure of the site content.
In Annex 1 (v) the Claimant admits its knowledge of jobs on the Respondent site at May 2002, yet it has acquiesced in the development of the site and has also availed itself of the complained of use of the site by advertising extensively its jobs on the Respondent's site since that date.
By 2002, the focus of the site had changed and use of meta-tags by search engines had changed and had also been better understood.
In Annex 1(vi) (Nov 2003) This is accurate, however the adverts supplied by the Complainant were the vast majority of the adverts on the site.
Claimant's Statement (paragraph 2 cont)
Furthermore, the Respondent does not refer to any internal business documents in its possession that can demonstrate that such adverts were featured.
Objection: This is not a reply to anything in the Response which is (a) untrue,
(b) misleading, (c) raises new allegations against [the Claimant] which [the Claimant] should answer (provide evidence, where possible) or (d) indicates that you have a fatal flaw in your case that [the Claimant] must patch.
Rejoinder: (The Respondent not having had a chance to answer this allegation).
The Respondent does not have relevant business records from that time on this point so dealt with it by Mr Freeman's statement in his Response.
Complainant's Statement (paragraph 3)
The Complainant agrees that the Internet Archive shows that by May 2002 a subsection of the website had been set up with a list of links to the current vacancies section of various retailers' individual websites. However this use was still subsidiary to the main use of the website as a portal for online shopping and was not comparable to the service offered since March 2000 by the Complainant's InRetail.co.uk website.
Rejoinder: (The Respondent not having had a chance to answer this allegation).
It is admitted by the Claimant that use at that time existed for retail jobs. The fact that this was subsidiary is irrelevant. Use existed and the Complainant
a) acquiesced to use known by it from this date and
b) subsequently availed itself of that use by extensively advertising its jobs on the Respondent's site for a period of time (although the Complainant now complains of the featuring of adverts on the Respondent site).
Claimant's Statement (para 4)
The Complainant's case is that by changing the use in November 2003 of the website to a retail specific job board the use became abusive use in that it takes unfair advantage and is unfairly detrimental to the Complainant's Rights because it has confused people into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant.
Objection to Statement: Inadmissible. This is simply a restatement of the Complainant's case and not within the grounds for permitted inclusion in the Reply. This is not a reply to anything in the Response which is (a) untrue,
(b) misleading, (c) raises new allegations against [the Claimant] which [the Claimant] should answer (provide evidence, where possible) or (d) indicates that you have a fatal flaw in your case that [the Claimant] must patch.
Rejoinder: The Response clearly sets out that the Respondent was using the site for advertising retail jobs at all material times. The Complainant's survey has no verifiable methodology and is statistically only as admissible and only as relevant as the Respondent's poll stated in the Reply.
Complainant's Statement (para 5)
The Response makes much of the fact that between September 2004 and September 2005 the Complainant placed adverts on the Respondent's website. The Complainant's position on the placing of these adverts is as set out in its Complaint.
Objection to Statement: Inadmissible. This is simply a restatement of the Complainant's case and not within the grounds for permitted inclusion in the Reply. This is not a reply to anything in the Response which is (a) untrue,
(b) misleading, (c) raises new allegations against [the Claimant] which [the Claimant] should answer (provide evidence, where possible) or (d) indicates that you have a fatal flaw in your case that [the Claimant] must patch.
Complainant's Statement (also paragraph 5)
However, in the light of certain allegations, made in the Response, of the Complainant lying, Peter Burgess of the Complainant, has made a statement addressing these allegations. The Statement is attached at Exhibit CR-3. 6. As can be seen from the statement, the advertisements referred to were for RHR and not InRetail.co.uk. They made no reference to InRetail.co.uk. Furthermore, as set out in Annex 1, by the time RHR placed its advertisements on the website it was one of 11 recruitment consultancies dealing with retail vacancies that advertised its jobs on the Retail.co.uk website.
Rejoinder: (The Respondent not having had a chance to answer this allegation).
The Complainant cannot get away from the fact that Inretail.co.uk is a division of RHR and well known (and certainly evident from a cursory examination of the Inretail.co.uk site as being linked to RHR). Indeed the whois states:
Domain Name:
inretail.co.uk
Registrant:
Retail Human Resources
The Complainants attempts to distance RHR from Inretail.co.uk in its witness statement as therefore not credible. Legally RHR does not have its own corporate identity as claimed in paragraph 3 of his witness statement.
Paragraph 4 of the witness statement:
The Respondent's position is that RHR does not deny that RHR did not know of the retail.co.uk site earlier.
Paragraph 5 of the witness statement:
The Respondent's position is that it is clear from the much earlier meeting covered in the Response (which is not denied) that RHR knew of retail.co.uk much earlier. It is inconceivable that RHR representatives meeting Mr Freeman as stated in paragraph 5 of the witness statement (2000) would have met with him had there been no jobs advertised on the site. If RHR are to be believed their sole business in RHR (including inretail.co.uk) was recruitment and job advertising so if these were not on the retail.co.uk site at the time, there would have been no relevance for the meeting.
Paragraph 6 of the witness statement:
The Respondent's position is that RHR is not entitled in law to make this artificial distinction.
Paragraph 7:
The Respondent's position is that RHR does not deny that RHR did not know of the retail.co.uk site earlier.
Paragraph 8 of the witness statement:
The Respondent's position is that RHR made the first approach.
Paragraph 12 of the witness statement:
This is a matter for evidence in person under oath in court.
Paragraph 13 of the witness statement:
The Respondent's position is that Inretail.co.uk is a division of RHR, and (as the whois clearly shows) inseparable in legal terms to RHR. Anyone knowledgeable in the area of retail (which is where RHR claims the confusion is arising) will know RHR and inretail.co.uk as the same legal entity.
It is well known within the retail industry that RHR and inretail.co.uk are one and the same entity and the Respondent has spoken with al Retail recruitment companies who have been interested in advertising their jobs on the retail.co.uk. Several of them have asked whether there is a connection between RHR and retail.co.uk because of the amount of RHR advertising on the retail.co.uk site. They have said that they are not interested in advertising if retail.co.uk is another RHR site and have been keen to make the Respondent aware that RHR own inretail.co.uk. The discussions that took place made it clear that the companies appeared to consider that advertising on inretail.co.uk was advertising via RHR which was a competing recruitment company.
Paragraph 13 of the witness statement:
The Complainant is now stating that "it is therefore very unlikely that users would, as a result of Retail Human Resources presence on the Retail.co.uk website make a further connection that Retail.co.uk is in some way connected to inretail.co.uk".
If the Claimant's position is that it is very unlikely that users would make a connection that Retail.co.uk is in some way connected to inretail.co.uk with the presence of Retail Human Resources on the site (in retail.co.uk being part of RHR) then it must also be the case that without that presence users would be even less likely to make a connection that Retail.co.uk is in some way connected to inretail.co.uk (inretail.co.uk being part of RHR) and that this admission by the Complaint is fatal to their claim.
If this is the case then Reverse Domain Hijacking must also be found.
Paragraphs 14-16 of the witness statement
These admit the real nature of the complaint. Namely that RHR were happy admit the prior existence in the relevant market of retail.co.uk and to acquiesce subsequently and advertise on the site expecting that retail.co.uk would fail. When it didn't they abused the DRP process
Complainant's Statement (para 6)
As can be seen from the statement, the advertisements referred to were for RHR and not InRetail.co.uk. They made no reference to InRetail.co.uk. Furthermore, as set out in Annex 1, by the time RHR placed its advertisements on the website it was one of 11 recruitment consultancies dealing with retail vacancies that advertised its jobs on the Retail.co.uk website. It is not credible to suggest that anybody using the Retail.co.uk website seeing Retail Human Resources as one of 11 recruitment agencies listing jobs on the website that they would believe there was some special relationship between Retail Human Resources and Retail.co.uk over and above that relationship of the other recruitment agencies listed in the same way on the website.
Rejoinder: (The Respondent not having had a chance to answer this allegation).
The Respondent's position is that Inretail.co.uk is a division of RHR, and (as the whois clearly shows) inseparable in legal terms to RHR. Anyone knowledgeable in the area of retail (which is where RHR claims the confusion is arising) will know RHR and inretail.co.uk as the same legal entity.
Although the featuring of a number of agencies is admitted RHR was the significant majority of advertising.
The question of what people using the site would believe is a matter for a proper survey carried out under court admissible rules.
Complainant's Statement (para 7)
(not cited)
Objection: Irrelevant and not replying to anything in the Response which is (a) untrue, (b) misleading, (c) raises new allegations against [the Claimant] which [the Claimant] should answer (provide evidence, where possible) or (d) indicates that you have a fatal flaw in your case that [the Claimant] must patch.
Complainant's Statement (para 8 & 9)
8.It is also not credible to suggest that people would associate the website service offered by InRetail.co.uk with Retail Human Resources. As explained in Mr Burgess' statement, Retail Human Resources plc is a privately limited company. The consultancy division ("RHR"), dealing with traditional recruitment has its own website operated under the 'rhr.co.uk' domain name that advertises RHR jobs.
9. InRetail.co.uk is the media arm of Retail Human Resources plc and InRetail.co.uk offers advertising space for sale to anyone who wants to advertise retail job vacancies. It is not clear from the InRetail.co.uk website that there is a connection between the InRetail.co.uk site and Retail Human Resources plc or its RHR consultancy division. The only reference to Retail Human Resources on the InRetail.co.uk website is found in the "Terms & Conditions" section accessed by a link in the small print at the bottom of the home page. Here, there is a statement that InRetail.co.uk is owned and operated by Retail Human Resources plc. However, apart from this the connection is not apparent from normal use of the website. It is therefore very unlikely that internet users would, as a result of RHR advertising on the Retail.co.uk website, make a connection that Retail.co.uk is in some way connected to InRetail.co.uk.
Objection: This is legally and factually wrong.
Rejoinder: The use of inretail.co.uk as a division makes inretail.co.uk an inseparable part of RHR in law. It is credible that anyone using the inretail site would associate it with RHR both from the terms and conditions admitted by the Complainant and from the whois search which lists RHR as registrant of the inretail.co.uk domain
Complainant's Statement (para 10 & 11)
(not cited)
Response from Respondent: No response. Goes to Claimant's motive in DRP.
The Respondent makes the following further submissions in its document entitled "Reply to Defence on Reverse Domain Name Hijacking":
"This reply cites the Claimant's paragraph numbers in its Annex 2
1. The Complainant appears confused about the nature of the Respondent's accusation of reverse domain name hijacking.
a) The Respondent's case is that the Claimant's registered a domain name inretail.co.uk which was knowingly similar to retail.co.uk.
b) At some in the Summer of 2005, it is the Respondent's case that the Complainant made the Nominet DRP claim in bad faith.
The Respondent does not claim that all of the work put in by the Complainant was aimed at reverse domain hijacking; simply that the capitalisation of the InRetail and the admitted separation of In from Retail shows the determination of the Complainant to operate from a site utilising a separate mark "Retail" and that at the time that the DRP was taken, the circumstances were clear that the Complainant must have known the DRP action was in bad faith.
The difference in advertising between the irish advertising of the Complainant (which contains the internet address http://www.inretail.ie) and the uk adverting which does not (as per the Reply and assertion of reverse hijacking) is relevant evidence.
In paragraph 2(v) the issue of DRP proceedings when the offer to buy was refused is defended. The Respondent's case is that this is similar to Mess.com.
A recent example is that of Mess Enterprises v Scott Enterprises, Ltd., Case No. D2004-0964. In a decision dated 25 January 2005, all three panellists refused to transfer the domain nameand found the complainant guilty of Reverse Domain Name Hijacking. The panel concluded that the respondent had not registered the disputed domain name in bad faith, thus making consideration of the first two limbs of the UDRP unnecessary. In particular it had registered the domain names before either the complainant started using its mark or filed its trade mark application, and therefore simply could not have had any prior knowledge of the complainant's rights. The panel then went on to find that "this case exhibits one of the most egregious examples of Reverse Domain name Hijacking that any of the panelists has thus far ever seen". One of the reasons for this was that the complainant's email asking if the respondent had any interest in selling the domain name was dated the same day as the complainant's trade mark application, thus leading the panel to conclude that the complainant intended to fraudulently invoke the policy in order to wrest the disputed domain name from the respondent.
Lovells Solicitors, Anchovy Newsletter March 2005
The Respondent's case is that the Complainant knew that it had caused confusion in the marketplace by its deceptive logos and its capitalisation of the domain string and that despite knowing that it's own actions had caused confusion and knowing that "inretail" and "retail" were dissimilar names and that retail was a generic term, the Claimant determined, alternatively continued to commence the DRP in bad faith, hoping to scare the Respondent into handing over the domain name to the Complainant.
The evidence is a matter for the adjudicator. The Respondent is aware that no uk domain DRP has been determined as reverse hijacking to date."
General
Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; 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 must prove 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.
Under paragraph 1 of the Policy, "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 basis on which the Complainant says it has 'Rights' is as follows:
(a) It alleges that it has a trading division called InRetail.co.uk which trades under the name InRetail.co.uk and has done so since 'hard launch' on 1st March 2000;
(b) It alleges that it has advertised using the name InRetail.co.uk since 1st March 2000 and spent approximately £1.3m on press advertisements, and £1m on outdoor advertising, since this time; and
(c) It alleges that it has continually provided recruitment services under the InRetail.co.uk name since March 2000 and is now the market leader in the field of 'paid for retail jobs.'
As to this, the Respondent says:
(a) That the Complainant wasn't in existence at the date of registration of the Domain Name;
(b) That at the date of registration of the Complainant's domain name inretail.co.uk, the Domain Name had already been registered for nearly 4 years and advertising retail outlets & retail jobs for nearly 2 years;
(c) That the Complainant is commonly known as Retail Human Resources and its claim to a trading "division" called inretail.co.uk is merely "a cyberhijacker tactic to disguise its true identity and to portray a false illusion of a distinct entity";
(d) That the Complainant's statutory accounts for 2004 do not refer to InRetail as a "division" it is at most referred to as a "team";
(e) That the same accounts refer to a "move away from traditional recruitment advertising methods and into much more profitable recruitment work".
In its Reply the Complainant alleges that "the Respondent has not challenged the Complainant's claim to have rights in the InRetail.co.uk name." In its 'Objection' document the Respondent says that this "mischaracterises the Respondent's Response. The procedure does not allow the Respondent to challenge the Complainant's domain registration. The Respondent challenged the rights of the Complainant to capitalise its domain name as InRetail.co.uk and has, since the Response was served, served a cease and desist notice in this respect."
In my judgment two things emerge clearly from the submissions and evidence which have been submitted by the parties:
(1) The Complainant did not own any relevant Rights as at 1996 (when the Domain Name was initially registered by Mr Andrew Crane) or as at 1998 (when it was acquired by the Respondent).
(2) The Complainant is not claiming, and cannot legitimately claim, Rights in the term "retail" per se. Rather, it is claiming Rights in the designation "InRetail.co.uk". Had it claimed rights solely in the term "retail", I would have had little hesitation in concluding that that term was wholly descriptive of the Complainant's business and therefore that the complaint fell at the first hurdle (in accordance with the reasoning in DRS No. 01399 Loans.co.uk Limited -v- Abbeyway Contracts Limited & Flexi Loans And Mortgages Limited). This conclusion is irresistible in the light of the submissions and exhibits from both parties which make frequent use of the word 'retail' to refer wholly descriptively to relevant field(s) of activity.
It was only in paragraph 4 of its Reply that the Complainant made it absolutely clear that it was focussing on November 2003 as being the pivotal date: "The Complainant's case is that by changing the use in November 2003 of the website to a retail specific job board the use became abusive use in that it takes unfair advantage and is unfairly detrimental to the Complainant's Rights because it has confused people into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant."
Consequently I must decide whether the Complainant has proven, on the balance of probabilities, that it had Rights in respect of the designation "InRetail.co.uk" as at November 2003.
No trade mark registrations anywhere in the world for "Retail", "InRetail" or "InRetail.co.uk" have been drawn to my attention; though this fact is not determinative either way.
In DRS 1063 Auto Exposure Ltd -v- Mr Kevin Beard the Expert held that:
• "While descriptive names are perfectly capable of giving rise to unregistered rights, (eg. British Petroleum), the more descriptive the name, the greater the burden on the Complainant to establish that the rights exist."; however
• "the 'rights' test was never intended to be a high hurdle for a Complainant to overcome."
The evidence before me of examples of use of "InRetail.co.uk" by the Complainant, including printed advertisements dating back to March 2000, has not been challenged by the Respondent. On the basis of this material I am prepared to conclude on the balance of convenience, and not without some hesitation, that the Complainant had built up Rights in respect of the designation "InRetail.co.uk" as at November 2003. I am also satisfied that the designation "InRetail.co.uk" as opposed to the word 'retail' per se is not wholly descriptive of the Complainant's business.
It goes without saying that the designation "InRetail.co.uk" is similar to the Domain Name.
The Complainant has surmounted the first hurdle, but only a narrow margin. In any event I detect that the Respondent's main line of attack is on the second hurdle ("Complainant rights in "inretail" does not give rights over generic "retail.co.uk", already trading when Complainant registered inretail.co.uk.") and it is to that question of 'abusive registration' that I now turn.
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.
As discussed above, the Complainant cannot and does not pursue any claim under limb (i) of the definition of "Abusive Registration" the Complaint stands or falls on limb (ii) and the question of the alleged abusiveness of the use made of the Domain Name from November 2003.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out under paragraph 3(a) of the Policy. It seems to me that the key sub-paragraphs engaged by this Complaint are paragraphs 3(a)(ii) and 3(a)(iii). They provide as follows:
"3(a)(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"
"3(a)(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"
A non-exhaustive list of countervailing factors are set out under paragraph 4(a) of the Policy. It seems to me that the key sub-paragraphs engaged by this Complaint are paragraphs 4(a)(i) and 4(a)(ii). They provide as follows:
"4(a)(i) Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has
A. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C. made legitimate non-commercial or fair use of the Domain Name"
"4(a)(ii) The Domain Name is generic or descriptive and the Respondent is making fair use of it"
Paragraph 3(a)(ii) - confusion
The Complainant's case on confusion is summarised thus in the Complaint: the Domain Name has been used by the Respondent "in a way which has confused people into thinking that Retail.co.uk was controlled by or is the same as InRetail.co.uk. Since its inception in 1998, www.retail.co.uk appears to have been a directory of retailer websites (possibly run on a commercial basis). In November 2003, the whole appearance and dress of the www.retail.co.uk changed from a dark and light blue site listing retailers, to a purple site dedicated to listing retail jobs. With hindsight this seems more relevant now, as the main colour of the InRetail.co.uk site is purple, and has been since its inception in March 2000."
The Complainant seeks to substantiate this part of its case in two ways. The first is by reference to two surveys, extracts of which are exhibited to the Complaint. The first survey is said to have been carried out in July 2005, but the 'results' document is dated April 2005. I have only been provided with one (undated, partially redacted) questionnaire, presumably by way of illustration. The survey seemingly presented interviewees with a list of sites including retail.co.uk and inretail.co.uk and asked them "Can you name any recruitment sites that you have used regularly?". According to the results document (dated, as I have mentioned, April 2005), retail.co.uk came out at 5% (fifth overall) compared to 8% for inretail.co.uk (third overall).
According to the Complainant a second survey was therefore commissioned, although I have not been told when it was conducted. The difference this time was that anyone who answered 'retail.co.uk' to the relevant question was asked "I will now show you 2 screen shots of similar sites. Did you definitely mean the site at the top?" Of the seven people who mentioned 'retail.co.uk' and were asked the 'screen shot' question, all seven as the Complainant puts it "retracted, saying they meant InRetail.co.uk, not Retail.co.uk." With these results re-coded, retail.co.uk ends up joint last (0%) and inretail comes out first (27.78%).
The second way in which the Complainant seeks to prove its case is anecdotal: it is said that a Mr Alex Pescott of Fusion Consulting emailed Ellie Burgess of the Complainant to ask her why Fusion's jobs were not showing up on the website when he had clearly paid for them; only to discover that he was looking on retail.co.uk not inretail.co.uk. The email in question has not been produced.
As against this, the Respondent points out that "The Complainant's own survey is irrelevant as at time of survey Complainant was advertising on Respondent site." The Respondent maintains that (a) the Complainant first approached Respondent in summer 2000 by e-mail about putting jobs on retail.co.uk; (b) the Complainant again approached Respondent in Summer 2004; and (c) the Complainant extensively advertised jobs on retail.co.uk from summer 2004 to Sept 2005; usually having over 600 jobs listed and sometimes in excess of 2200 jobs. A chain of supporting correspondence between the parties takes up exhibits numbers 23 to 39.
The Complainant deals with this in its Reply and in the statement of Peter Burgess, the Managing Director of the Complainant, at Exhibit CR-3. I have some sympathy with the Complainant's professed motive for including this statement, namely that the Response repeatedly accuses the Complainant of "self-serving" and "outright" "lies". No one likes to be called a liar, particularly in the course of a paper-based procedure with no provision for cross-examination. Essentially, Mr Burgess admits that the Complainant placed adverts on the Respondent's website between September 2004 and September 2005; but he seeks to draw a distinction between the Complainant and its 'InRetail.co.uk' division. Further, to quote the Reply, "until the survey was conducted in July this year [Mr Burgess] did not think that that there was confusion between the Retail.co.uk and InRetail.co.uk websites."
Finally, the Respondent's position is that "Inretail.co.uk is a division of RHR, and (as the whois clearly shows) inseparable in legal terms to RHR. Anyone knowledgeable in the area of retail (which is where RHR claims the confusion is arising) will know RHR and inretail.co.uk as the same legal entity."
I have considered all of these submissions and have studied the exhibits referred to. My conclusions on the issue of confusion are as follows:
(a) the numbers of subjects involved in the surveys cannot be regarded as statistically significant;
(b) much of the methodology of the surveys has not been disclosed;
(c) the relevant information is extracted with closed, leading questions;
(d) only one response document per survey has been disclosed;
(e) the surveys test the position in July 2005 rather than November 2003;
(f) accordingly very little reliance can be safely placed on the Complainant's surveys as quantitative proof of confusion. At best they indicate the existence of a low level of potential confusion between the names and/or sites 'inretail.co.uk' and 'retail.co.uk';
(g) no documents or direct first-hand evidence of actual instances of confusion have been disclosed;
(h) As at November 2003 the Managing Director of the Complainant "did not think that that there was confusion between the Retail.co.uk and InRetail.co.uk websites."
(i) the Complainant has acquiesced in the Respondent's activities by listing thousands of jobs on its retail.co.uk site since the critical November 2003 date (and the Complainant cannot escape this conclusion by relying on separate 'divisions' within the same legal entity); and
(j) it cannot safely be assumed that any confusion which may have arisen has not resulted from (i) the Complainant's listing of jobs on the retail.co.uk site; or (ii) the fact that both the Complainant and the Respondent have chosen to adopt trading names which are wholly or exclusively descriptive.
Paragraph 3(a)(iii) pattern of registrations
I now turn, briefly, to the issue of a "pattern" under paragraph 3(a)(iii) of the Policy. The Complainant points out that the Respondent has in the past registered mbna.co.uk and army.co.uk. The Respondent says that he used mbna.co.uk to run "Marketing Banners for Net Advertising" as part of its online retail promotions business; and implies that this took place prior to the date when "A bank renamed itself as MNBA and purchased MNBA.com then entered UK market". The Respondent was sued by that bank but "prior to full trial case was settled under confidentiality undertakings, terms of which cannot be detailed without court order." As regards army.co.uk, the Respondent denies cyber-squatting and says he registered it as a generic domain name and uses it as an online Army Surplus Store. The Complainant exhibits (at Exhibit CR-11) the decision of the English High Court in interim proceedings between MBNA and the Respondent.
I cannot resolve the rights and wrongs of the Respondent's registration of these two domain name registrations on the basis of the materials before me. The Complainant has not proven that these matters amount to "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". Still less am I able safely to conclude that "the Domain Name is part of that pattern."
Paragraph 4(a) fair use etc.
In the following section I do not distinguish between sub-paragraphs 4(a)(i)(A) ('genuine offering'), 4(a)(i)(C) ('fair use') and 4(a)(ii) ('generic or descriptive'). The coverage of these sub-paragraphs is not mutually exclusive; rather, they overlap. In fact, the second limb of paragraph 4(a)(i)(B) 'fair use' appears to me to be a sub-set of paragraph 4(a)(ii) (fair use + generic/descriptive). Each of these sub-paragraphs is potentially engaged on the facts of this complaint.
The Respondent has used the Domain Name since 1998, and the web site accessible under the Domain Name has undergone a number of re-designs, in keeping with most web sites over the same period. The Complainant admits that "by May 2002 a subsection of the website had been set up with a list of links to the current vacancies section of various retailers' individual websites." Although the Complainant "did not think retail.co.uk was operating commercially" and "did not see it as a viable commercial competitor", it does not seem to be disputed that the Respondent has been using the Domain Name for a "genuine offering of goods or services" for some considerable time.
The Complainant's main concern (at least since the survey in July 2005) is the appearance of the Respondent's web site since November 2003:
"In November 2003, the whole appearance and dress of the www.retail.co.uk changed from a dark and light blue site listing retailers, to a purple site dedicated to listing retail jobs. With hindsight this seems more relevant now, as the main colour of the InRetail.co.uk site is purple, and has been since its inception in March 2000."
"The Complainant's case is that by changing the use in November 2003 of the website to a retail specific job board the use became abusive use in that it takes unfair advantage and is unfairly detrimental to the Complainant's Rights because it has confused people into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant."
The Respondent says that he is entitled to use the Domain Name to advertise retail jobs: "Domain Name is generic and Respondent is entitled to use it in relation to all aspects of retail market". He says that his choice of purple was to reflect market developments: "purples and pinks were new colour for winter of 2003 and many retailers were prominently featuring these (Exhibits_30_31_33_34)." He also disputes the assertion that the main colour of the Complainant's site is purple: "Colour of InRetail banner is a mixture of purple green & blue with prominent green circles" and says the purples are different in any event. Finally he reiterates the point that "RHR did not object to site. They advertised on it instead."
The Complainant does not appear to dispute the contention that the word 'retail' and/or the Domain Name retail.co.uk is generic or descriptive. As I have already pointed out, the submissions and exhibits from both parties make frequent use of the word 'retail' to describe relevant field(s) of activity.
My conclusion is that the Domain Name "retail.co.uk" is generic or descriptive and the Respondent has made fair use of it. The fact that the Complainant may not now (since July 2005) regard it as fair use does not detract from this conclusion. After all, the Complainant seemed to regard the Respondent's site as sufficiently fair use between 2003 and 2004 to actively place advertisements on the site. This species of ex post facto "unfairness" which only becomes "apparent" as a result of a market survey 18 months down the line is not, in my judgment, the kind of unfairness to which the concept of an Abusive Registration under the Nominet DRS is directed.
Conclusion on alleged abusiveness
I bear in mind of course that the considerations set out above and in paragraphs 3 and 4 of the Policy are illustrative and non-exhaustive. The ultimate question for my consideration is whether, on the evidence as a whole, the Complainant has discharged the burden of proving that the Domain Name has since November 2003 been used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights. For the reasons I have set out above, I am not satisfied that the Complainant has discharged that burden and I am not prepared to conclude on the evidence before me that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Reverse Domain Name Hijacking
Paragraph 16d of the Procedure provides as follows:
"If the Expert concludes that the dispute is not within the scope of paragraph 2 of the Policy, he or she shall state that this is the case. If, after considering the submissions, the Expert finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, the Expert shall state this finding in the Decision. If the Complainant is found on three separate occasions within a 2-year period to have brought a complaint in bad faith, Nominet will not accept any further complaints from that Complainant for a period of 2 years."
I have concluded that the dispute is not within the scope of paragraph 2 of the Policy.
'Reverse Domain Name Hijacking' is defined in paragraph 1 of the Policy as "using the Policy in bad faith in an attempt to deprive a registered domain-name holder of a domain name."
The Respondent refers a decision (Mess.com) under the WIPO UDRP, as it "is aware that no uk domain DRP has been determined as reverse hijacking to date". However, this is not correct. The published statistics on the Nominet website make it clear that, as at 12 October 2005, three DRS cases have resulted in a finding of reverse domain name hijacking.
At the end of what is already a long decision, I can deal with the parties' rival contentions on 'Reverse Domain Name Hijacking' (principally contained in Exhibit 56 to the Response, Annex 2 to the Reply and the Respondent's "Reply to Defence on Reverse Domain Name Hijacking" document) in very short order. My conclusions are as follows:
(a) I reject the suggestion that, in selecting its Domain Name, naming its trading division, designing its logo and launching its site; the Complainant has since 2000 been motivated by bad faith "as part of a concerted plan for a future reverse domain name hijack".
(b) I also reject the suggestion that the Complainant only advertised on the Respondent's site in order to generate or manufacture confusion. Its decision to do so may have been imprudent, but I am not satisfied that it was in bad faith.
(c) The fact that the Complainant only issued a DRS complaint when its financial offer for the Domain Name was refused is irrelevant. Had the offer not been accepted, there would have been no complaint.
In a paper-based procedure such as the Nominet DRS it is always going to be difficult to establish an allegation like bad faith. But in the present complaint I have little hesitation in concluding that this Complaint was not brought in bad faith, whether in an attempt at Reverse Domain Name Hijacking, or otherwise.
Having concluded that the Domain Name is not an Abusive Registration, the Expert determines that no action should be taken in relation to the Domain Name, retail.co.uk.
December 23rd 2005
Philip Roberts