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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Dalau Ltd v McAllister [2005] DRS 3044 (29 November 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/3044.html Cite as: [2005] DRS 3044 |
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1. The Parties
The Complainant
1.1 The Complainant is Dalau Limited of Ford Road, Clacton on Sea, Essex CO15 3DZ, represented by Messrs Thompson Smith & Puxton.
The Respondent
1.2 The Respondent is Mr Edward McAllister of 65 Hatfield Road, Witham, Essex CM8 1EF. The Respondent is unrepresented.
2. The Domain Name
2.1 The domain name in dispute is("the Domain Name").
3. Procedural Background
3.1 This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure ('the Procedure') and the Nominet UK Dispute Resolution Service Policy ('the Policy').
3.2 The Complaint entered Nominet's system on 13 October 2005. It was validated and sent to the Respondent on 14 October 2005. A Response was received on 19 October 2005 and a Reply was served by the Complainant on 26 October 2005. Mediation not being possible and the Complainant having paid the relevant fee the Complaint was referred to me on 23 November 2005 for a Decision. On that date I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.
4. Outstanding Formal/Procedural Issues
4.1 There are no such issues in this case.
5. The Facts
5.1 The Domain Name was registered by the Respondent on 21 February 2005.
6. The Parties' Contentions
The Complaint
6.1 The principal submissions set out in the Complaint may be summarised as follows:
6.1.1 The Complainant is a UK limited company which has been registered under the name Dalau Limited since 1955. It is the largest producer of PTFE plastics in the UK, exports to 36 countries and is well known in its specialist field.
6.1.2 The Complainant is the proprietor of UK registered trade mark number 1350224 for the name DALAU for custom manufacturing of plastics products in Class 37. No other UK business has a similar name or trade mark. The Complainant has spent £40,000 in the past five years advertising under the name Dalau.
6.1.3 The Respondent worked for the Complainant as an IT manager. He was directly employed by the Complainant between March and October 2000 and was subsequently engaged as a consultant from November 2000 until October 2004.
6.1.4 In February 2005 the Respondent wrote to the Complainant demanding the payment of certain sums. The Complainant refused to pay these sums which did not form part of the parties' termination agreement and were not due in any event. The Respondent then made certain threats to the Complainant linked to continued demands for payment which the Complainant reported to the police.
6.1.5 Having registered the Domain Name on 21 February 2005, the Respondent emailed to the Complainant on 22 February 2005 stating:
'As you can see, I now own the dalau.co.uk domain and I shall be using the email address for all further communications to whomsoever I please. To be honest, I rather thought you would have protected the 'Dalau' name, but there you go, that's what comes of having zero IT knowledge. I shall be developing the 'dalau.co.uk' website, so be sure to look for some exiting [sic] developments. I have decided not to tell the authorities about Dalau's illegal use of unlicensed software (yet) because I'm going to have such a lot of fun with my new website.'
6.1.6 In March 2005 the Respondent set up a website purportedly aimed at allowing 'budding authors to see and criticise their work'. However the website includes only one item and this appears to have been written by the Respondent. The website has a 'Legal Notice' page but it would be unlikely to be seen by anyone visiting the site. The content of the site has no connection with the name Dalau and the site should be regarded as a sham.
6.1.7 The Respondent offered to transfer the Domain Name to the Complainant for 'little more than' the sum of £2.90 he claims to have paid for the registration. However, the Respondent has ignored an offer by the Complainant to buy the name for £50. This demonstrates that he is acting in bad faith.
6.1.8 The Domain Name in the hands of the Respondent is an Abusive Registration because:
6.1.8.1 it was primarily registered for the purpose of selling, renting or otherwise transferring it to the Complainant for a sum in excess of the Respondent's out of pocket costs. The Respondent's intention throughout has been to cause trouble for the Complainant with a view to securing payment of the sums demanded following the termination of his engagement; and/or
6.1.8.2 it was primarily registered to prevent the Complainant from registering it despite its rights in the name Dalau; and/or
6.1.8.3 it was primarily registered unfairly to disrupt the business of the Complainant. This is evident from the Respondent's threat to 'have such a lot of fun' with the website, which 'fun' was likely to be harmful to the Complainant.
6.1.9 In addition, the Respondent may be infringing the Complainant's registered trade mark contrary to section 10(3) of the Trade Marks Act 1994 because the Domain Name without due cause takes unfair advantage of and/or causes detriment to the distinctiveness and/or reputation of the mark and/or threatens to do so. People who wish to visit the Complainant's website will end up visiting the Respondent's site and he will gain the undeserved windfall of increased internet traffic.
6.1.10 The Complainant exhibits documentary evidence to the Complaint in support of the factual submissions referred to above.
The Response
6.2 The principal submissions contained in the Response may be summarised as follows:
6.2.1 The name Dalau is not exclusive to the Complainant. It is one of the most common names in China and is the name of a river in Wales, several cities and locations worldwide and a publishing company in London whose works are still in print.
6.2.2 The purpose of the Respondent's website is to assist unpublished writers, not to attempt to steal trade from the Complainant. The Respondent has no method of manufacturing plastics. It is denied that the existence of the website has had any impact whatsoever on the Complainant's business.
6.2.3 The Complainant made false charges of blackmail against the Respondent all of which have now been dropped by the Crown Prosecution Service. While on bail as a result of the false charges the Respondent was advised not to update or promote his website. However, he has now started to reactivate interest in it.
6.2.4 The registration is not an Abusive Registration because:
6.2.4.1 It was not registered in order to make a profit greater than the Respondent's costs. Rather than agree to pay the purchase price, the Complainant bombarded the Respondent with solicitors' letters.
6.2.4.2 The website has not caused any 'trouble' for the Complainant, nor is there any risk of confusion between the Complainant's website and a website for unpublished authors. The Respondent neither manufactures PTFE products nor advertises any company that does. None of his metatags contain anything to do with the Complainant's business or processes.
6.2.4.3 Having 'fun' is what a private website is all about.
6.2.4.4 If the Complainant was concerned about protecting its name it would have registered dalau.net, .org, .info, .us, .biz and other names. It has no rights in the name Dalau, which is the name of 15 million Chinese citizens.
6.2.4.5 The Respondent is not in a position to benefit from any 'windfall' of increased visits to his site. It is a not-for-profit website for unpublished authors. The Respondent is prepared to provide a link to the Complainant's website with a brief explanation if the Complainant so wishes.
The Reply
6.3 The Complainant's principal submissions contained in its Reply may be summarised as follows:
6.3.1 While the Respondent claims that the name Dalau is common, it was generated from the first letters of the company founders' names, namely David and Laurence.
6.3.2 The amount invoiced by the Respondent to the Complainant that is disputed is £14,579.
6.3.3 The Respondent made threats to expose the Complainant for the alleged illegal use of software and stated: '… be in no doubt at all, it will be in Dalau's best interests to pay this invoice' and: 'it's just cheaper to pay the money Dalau owes me'.
6.3.4 The Respondent's website has received visits from people looking for the Complainant's website.
Remedy
6.4 The Complainant seeks a transfer of the Domain Name.
7. Discussion and Findings
7.1 Under paragraph 2 of the Policy:
'(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, that:
(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.
(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.'
7.2 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.'
7.3 The term 'Abusive Registration' is defined in paragraph 1 of the Policy as referring to 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.'
Rights
7.4 The Complainant has a UK registered trade mark DALAU which is identical to the operative part of the Domain Name. The name is not descriptive. Accordingly the Complainant has established that it has Rights in respect of a name or mark which is identical or similar to the Domain Name and the first limb of the test under paragraph 2 of the Policy is satisfied.
Abusive Registration
7.5 Having considered the submissions made by the parties and the documentary evidence provided, I find that the following facts are established:
7.5.1 After ceasing to be engaged by the Complainant as a consultant, the Respondent invoiced the Complainant for £14,579, all or part of which the Complainant refused to pay.
7.5.2 Following that refusal the Respondent made a number of threats against the Complainant linked to continued demands for payment of the monies claimed.
7.5.3 The registration of the Domain Name on 21st February 2005 formed part of that course of conduct on the part of the Respondent. In particular, the Respondent taunted the Complainant for failing to protect the name Dalau and threatened to use the Domain Name for the purposes of email and for a website where he was intending to 'have such a lot of fun'.
7.5.2 The Respondent stated that he would sell the Domain Name to the Complainant for little more than his registration costs, but then ignored the Complainant's offer to buy the name for £50.
7.6 The Complainant relies on three of the grounds set out in paragraph 3 of the Policy as circumstances indicating that the registration may be an Abusive Registration. First the Complainant submits that the Respondent registered the Domain Name 'primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant… for valuable consideration in excess of the Respondent's documented out-of-pocket costs' (paragraph 3(a)(i)(A) of the Policy). In this case the Respondent made no direct demand for payment for the Domain Name, save for his offer to sell it for little more than the purchase price, which he did not fulfil. However, as stated above, I find that the registration of the Domain Name was one of a series of hostile actions that the Respondent employed in order to put pressure on the Complainant to pay his outstanding invoice. Therefore, I consider that the Complainant has made out this ground despite the indirect nature of the demand.
7.7 Secondly, the Complainant relies on paragraph 3(a)(i)(B) of the Policy, namely that the Respondent registered the Domain Name primarily 'as a blocking registration against a name or mark in which the Complainant has rights'. I agree. A clearer case of a blocking registration would be difficult to imagine.
7.8 Thirdly, the Complainant submits that the Respondent registered the Domain Name 'primarily for the purpose of unfairly disrupting the business of the Complainant' (paragraph 3(a)(i)(C) of the Policy). The Respondent argues that there is no possibility of anyone confusing his website with that of the Complainant and that he is not offering similar goods to those of the Complainant nor advertising the services of any other plastics company. While all of this may be true, the fact remains that the Respondent registered a domain name which consists of the Complainant's company name and trade mark, in an unadorned form, with only the formal suffix .co.uk. The name Dalau is neither generic nor descriptive and on the evidence I accept that it is distinctive of the Complainant, certainly in the UK. In these circumstances, I consider that the Respondent's registration of the Domain Name was both liable, and intended, to cause 'initial interest confusion', in other words, to impersonate the Complainant and to divert internet traffic that was intended for the Complainant to the Respondent's website. The Respondent's intentions in this regard are confirmed by his express threats to use the Domain Name for the purposes of email and to have 'fun' with his website. In the circumstances, I find that the Complainant has also established this ground of complaint.
7.9 The Respondent argues that the Complainant does not enjoy exclusivity in the name Dalau and that it is a common name, particularly in China. He also argues that he is operating a website for budding authors that carries no risk of confusion with that of the Complainant. Under paragraph 4(a)(i)A of the Policy, a Respondent can show that a registration is not abusive if he can demonstrate that:
'before being aware of the Complainant's cause for complaint (not necessarily the 'complaint') under the DRS), the Respondent has used or made demonstrable preparations to use the Domain Name… in connection with a genuine offering of goods or services.'
7.10 In addition, under paragraph 4(a)(i)(C) of the Policy the Respondent may have a defence if he can show that he has 'made legitimate non-commercial or fair use of the Domain Name'.
7.11 However, in my view neither of these provisions has any application in this case. The Respondent did not establish his website before being aware of the Complainant's cause for complaint; he established it deliberately to give rise to that cause for complaint. Nor do I accept that the Domain Name is being used in connection with a genuine offering of goods or services. While the Complainant does not have exclusivity in the name Dalau, it has established sufficient property in that name for the Respondent to be required to demonstrate some legitimate interest in having selected it. In this case the Respondent can demonstrate no such interest and selected the name purely to put commercial pressure on the Complainant. The Domain Name is therefore being used in bad faith and the offering of goods or services on the Respondent's website cannot be regarded as genuine.
7.11 So far as paragraph 4(a)(i)(C) is concerned, for the same reasons as set out above, I do not accept that the Respondent's use of the Domain Name, even if non-commercial, was either legitimate or fair.
8. Decision
8.1 The Complainant has demonstrated 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. It has also demonstrated that the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds and I direct that the Domain Name be transferred to the Complainant.
Nominet Note (24 January 2006):
Mr McAllister has asked us to make clear his belief that the allegations of blackmail against him were entirely unwarranted, and exposed him and his family to police searches, imprisonment and the threats of prosecution and the attendant stress they impose for many months. He always strongly denied the allegations. No charges were ever brought, and the CPS has confirmed to him that all charges have been dropped. He is therefore an innocent man.