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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Clydesdale Conservatories Ltd v Lawton [2006] DRS 3161 (17 February 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3161.html Cite as: [2006] DRS 3161 |
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Clydesdale Conservatories Limited -v- Desmond Lawton
Nominet UK Dispute Resolution Service
DRS 03161
Clydesdale Conservatories Limited -v- Desmond Lawton
Decision of Independent Expert
Complainant: Clydesdale Conservatories
Respondent: Mr Desmond Lawton
clydesdaleconservatories.co.uk ("the Domain Name")
The Complaint was received by Nominet on 24 November 2005. Nominet validated the Complaint and sent a copy to the Respondent.
A Response was received by Nominet on 19 December 2005 and a copy forwarded to the Complainant.
On 6 February 2006 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to the Nominet UK Dispute Resolution Service Policy ("the Policy").
Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and duly appointed the undersigned as the Expert with effect from 8 February 2006.
The Domain Name was registered on 29 April 2005.
The website to which the Domain Name devolves is a site which criticises the Complainant and, more particularly, its standard of workmanship when constructing conservatories. The Respondent is a customer of the Complainant who is unhappy with the work carried out at his premises by the Complainant.
Complainant:
The Complainant's submissions are as follows:
1. The Complainant has rights in a trade mark which is identical or similar to the Domain Name:
(1) The Complainant has traded under the name of "Clydesdale Conservatories" since 1990.
(2) This is shown by various documents exhibited to the Complaint, including examples of advertisements since 1990.
(3) Having previously used "Clydesdale Conservatories" as a trading name, the Complainant changed its name to Clydesdale Conservatories Limited in September 2004, and continues to trade under that name.
(4) The current website of the Complainant is to be found at www.clydesdaleconservatories.com.
2. The Domain Name is an Abusive Registration in the hands of the Respondent:
(1) The relationship between the Complainant and the Respondent arose as a result of an enquiry for a conservatory, with a contract being signed up in February 2003. The contract did not proceed to the satisfaction of the Respondent who is refusing to settle the balance of the account owed to the Complainant, amounting to £5,754.83, and an action has been raised by the Complainant to recover the outstanding debt.
(2) The Domain Name is abusive in the hands of the Respondent because it was primarily registered because of a relationship between the two parties.
(3) The Domain Name is being used in a manner which is unfairly detrimental to the Complainant's rights and was acquired for the purpose of unfairly disrupting the business of the Complainant.
(4) The Respondent has no rights or legitimate interests in the Domain Name.
(5) The disputed Domain Name is confusing and people could easily go to the Respondent's site thinking that they are going to the Complainant's site. The Domain Name was selected precisely because of its potential for diverting would-be visitors to the Respondent's site. Extracts from the Respondent's site are exhibited to the Complaint showing that people have been misled in this manner.
(6) No fair use of the Domain Name is being made by the Respondent. The sole purpose of the use of the Domain Name by the Respondent is for the purpose of criticising the Complainant and causing it damage. Although criticising the Complainant is quite proper, the registration and use of an identical Domain Name for the purpose of criticising and/or damaging the Complainant constitutes bad faith and unfair use. The selection of a Domain Name by the Respondent, which is not his own name, but which to his knowledge is identical to the name of another, which the Respondent has selected precisely because it is the name of the Complainant, and for a purpose which is directly related to the Complainant, is unfairly detrimental to the Complainant's rights.
(7) The Respondent has acquired and is using the Domain Name without the Complainant's authorisation. The Domain Name has been taken without adornment and without permission and with a view to making direct reference to the Complainant for the purpose of criticising.
(8) The registration and use of the Domain Name by the Respondent has led to potential customers being put off dealing with the Complainant, which is clearly unfair and detrimental to the Complainant's rights. An extract from the Respondent's site is exhibited to the Complaint, showing that this has occurred and has clearly caused the Complainant damage.
(9) The Complainant's agent approached the Respondent in October 2005 to request the purchase of the Domain Name. The Respondent would only consider the transfer of the Domain Name if the legal action against the Respondent was dropped. The Respondent is clearly attempting to achieve a financial gain in excess of his out-of-pocket expenses by asking the Complainant to drop the legal action.
(10) The Respondent registered the Domain Name with the intent to cause unfair detriment to the Complainant's rights and intends to continue with such action if permitted to retain the Domain Name.
Respondent:
The Respondent's submissions are as follows:
(1) The Respondent purchased a conservatory from the Complainant that had to be rebuilt on numerous occasions because of continuing sub-standard workmanship and deviation from the specification.
(2) The Respondent has withheld £5,700 from the Complainant by way of compensation for losses caused by the Complainant's workmanship and in respect of uncompleted items set out on a snagging list. The Complainant claims that a sum of £5,754.83 is owed to it but this is yet to be decided in Court and the Respondent therefore holds this in dispute.
(3) The Respondent does not dispute the fact that the Complainant has been trading under the "Clydesdale Conservatories" name for a number of years.
(4) The Respondent disputes the Complainant's rights to the Domain Name since other domain suffixes were available at the time when the Respondent registered the Domain Name and the Complainant apparently had no interest in them. It was not until the Complainant discovered that the Respondent had purchased the .co.uk Domain Name that the Complainant took steps to secure the remaining available domain names.
(5) The Respondent agrees that the registration of the Domain Name was in connection with the relationship between the two parties, but disagrees that giving the general public access to information that they are entitled to in order to make an informed choice of which company they wish to use, or the Respondent's right to freedom of speech, is abusive.
(6) The Domain Name is being used in a manner which highlights the standard of workmanship carried out by the Complainant and is not unfairly detrimental.
(7) The Respondent has a right to the Domain Name. It was freely available for anyone to purchase. The Complainant had equal opportunity to purchase the Domain Name.
(8) The Respondent agrees that the Domain Name is similar to the clydesdaleconservatories.com domain name (used by the Complainant) but the two websites are so dissimilar that nobody could possibly mistake one for the other. The .com site is a commercial site that sells conservatories and has been designed to do so. The www.clydesdaleconservatories.co.uk site is there solely to provide the public with information that empowers them with informed choice and is obviously not a commercial site.
(9) People visiting the Respondent's website will have used search engines, using key words such as "Clydesdale", "conservatories", etc. If another domain name had the same key words, they would receive the same traffic.
(10) The Respondent's website is not there for the purpose of criticising the Complainant's company. It is there to highlight the standard of the Complainant's workmanship and management.
(11) Purchasing the Domain Name does not constitute bad faith and unfair use. The Domain Name was chosen because it was readily available and it has been used to tell the story about the construction of a conservatory by the Complainant.
(12) When the Respondent was approached by a sales representative for the Complainant with regard to the possible purchase of the Domain Name, the price given was not the monetary figure (of £5,754) quoted by the Complainant. It was and remains the satisfactory closure of this issue. The Respondent requires that all necessary work is completed on the conservatory; and that the Complainant finally admits responsibility and drops its Court case. The money deducted from the fees owed to the Complainant was done so on the explicit instructions of the Complainant's managing director.
General
Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
i it 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 (as defined in paragraph 1 of the Policy).
Complainant's Rights
Disregarding the generic .co.uk suffix, the Domain Name is identical to the trading name "Clydesdale Conservatories" used by the Complainant; or, if one takes the full company name of "Clydesdale Conservatories Limited", then clearly very similar.
The further issue to be determined is whether the Complainant has rights in respect of the name "Clydesdale Conservatories". It is reasonably clear from the evidence submitted by the Complainant that it has traded under the "Clydesdale Conservatories" name for a number of years, and certainly prior to the Domain Name being registered by the Respondent. It is also to be noted that the Response expressly states that the Respondent does not dispute the fact that the Complainant has been trading under the "Clydesdale Conservatories" name for a number of years.
In the light of the above, I find that the Complainant does have Rights in the name "Clydesdale Conservatories". I therefore find that the Complainant has proved what is required under paragraph 2 of the Policy.
Abusive Registration
Paragraph 1 of the Policy defines an "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."
Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those factors which are relied on by the Complainant in this case (all under paragraph 3a) are as follows:
"i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
A for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name; ...
C for the purpose of unfairly disrupting the business of the Complainant;
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."
Paragraph 4 of the Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. The one of potential relevance to this case (under paragraph 4a) is as follows:
"i Before being aware of the Complainant's cause for complaint (not necessarily 'the complaint' under the DRS), the Respondent has ...
C made legitimate non-commercial or fair use of the Domain Name".
Paragraph 4b of the Policy states that fair use may include sites operated solely in tribute to, or criticism of, a person or business.
Taking the above points in turn, I will deal first with the Complainant's allegation that the Domain Name is an Abusive Registration because it was registered by the Respondent primarily for the purposes of selling the Domain Name to the Complainant for valuable consideration in excess of his out-of-pocket costs. In support of this, the Complainant relies on the fact that, on being approached, the Respondent stated that he would only consider the transfer of the Domain Name if the Complainant's legal action against him was dropped. In my opinion, this does not indicate that the Respondent registered the Domain Name primarily for the purposes of selling it to the Complainant for excess consideration.
Even if the Respondent could be said to have had the primary purpose of putting pressure on the Complainant, in my view this would still not fall within the relevant factor set out under paragraph 3aiA of the Policy. This is because it seems clear that the Respondent's aim has been to have the alleged poor workmanship by the Complainant put right. As an alternative, the Respondent appears to wish to achieve closure of the matter by way of the Complainant accepting that the sum of around £5,700, as withheld by the Respondent, is appropriate compensation for the Respondent in respect of the alleged poor workmanship by the Complainant. In neither case, as I will explain below, does this amount to the Respondent's primary motive having been to recover more than his out-of-pocket expenses in return for transferring the Domain Name.
Compensation for the alleged poor workmanship by the Complainant, and money in return for transferring the Domain Name, are separate matters. As to whether £5,700 is appropriate compensation for the former, this is a matter which, from the evidence before me, is the subject of a separate Court action. It goes without saying that I am not in a position to form a view on that. However, I am prepared to find on the balance of probabilities that the Respondent genuinely believes that such sum is a proper amount of compensation (even if it turns out that he is wrong on this). It follows from this that the Respondent would not have registered the Domain Name with the primary motivation of selling it to the Complainant for more than his out-of-pocket costs. From the Respondent's point of view, in saying (if he did) that he wanted the Complainant to drop its Court case in return for a transfer of the Domain Name, he would have seen such outcome as a fair overall result, with the £5,700 (or thereabouts) not recovered by the Complainant equating to the proper compensation due to him in respect of the alleged contractual failings of the Complainant. In other words, from the perspective of the Respondent, such an outcome would be a neutral one financially, and not a gain to him of £5,700. If that is right, and the motivation of the Respondent is what is relevant under paragraph 3aiA of the Policy, transferring the Domain Name to the Complainant would be for no cost, the £5,700 equating instead to the compensation to which the Respondent believes he is separately entitled for the Complainant's breaches of contract.
As for the second factor on which the Complainant relies, namely that the Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant, in my opinion this goes hand in hand with the final factor, namely that of alleged confusing use, which I will come onto below. In other words, if the confusing use claim does not succeed, then neither will the unfair business disruption claim succeed.
It is not disputed that the Respondent's website is a criticism site of the Complainant, or, more accurately, its workmanship and management. Of itself, this does not render the Domain Name an Abusive Registration. Subject to certain legal constraints, freedom of speech applies in the UK and critical comments on a website, provided that they are not deliberately and knowingly false, cannot properly be said to be "unfairly" detrimental to the Complainant's Rights. Similarly, criticism of itself cannot be said to have "unfairly" disrupted the business of the Complainant. To succeed under the Policy, something further must be shown if there is to be a finding of an Abusive Registration.
The final factor on which the Complainant relies is the fact that the Respondent has used the Domain Name in a way which has confused people into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. In support of this, the Complainant relies on the fact that the Domain Name is identical to the trading name of the Complainant and therefore inherently likely to cause people to go to the Respondent's website, believing it to be that of the Complainant. It also relies on the examples of this having occurred which are apparent from the comments posted on the Respondent's website.
Having reviewed those examples, I agree that they are evidence of people having reached the Respondent's website when actually seeking the Complainant's site. These are therefore actual examples of people having been confused by the use of the Domain Name into believing that it is connected with the Complainant. I also agree with the Complainant that the identity of the Domain Name with the Complainant's trading name is inherently likely to have caused, and to continue to cause, other people to be confused in the same way. Although likely, rather than actual confusion is not one of the factors listed in the Policy, the list of factors set out in the Policy is expressly non-exhaustive and, in my view, likely confusion is also relevant (and has been found to be so in other Nominet cases).
The question is therefore whether this confusion means that the Domain Name has been used in a way which is unfairly detrimental to the Complainant's Rights. In my view it is unfairly detrimental. This is because, by registering and using a Domain Name which is identical to the Complainant's trading name, the Respondent has effectively impersonated the Complainant. When going to the website at www.clydesdaleconservatories.co.uk, it is clear that people are expecting to reach a website of the Complainant. On reaching the website, it will immediately be clear to any such person that it is not the Complainant's site. Nevertheless, even if fleeting, such confusion (commonly known as "initial interest confusion") is still relevant and, in my view, unfairly detrimental to the Complainant's Rights.
In summary, I find that the Domain Name has been used in a manner which is unfairly detrimental to the Complainant's rights, and is therefore an Abusive Registration.
It should be made clear that such a finding is not a finding against the right to free speech. The Respondent has the right to express his own views about the Complainant. However, this is not an absolute right, but subject to the rights of others, whether under the law of defamation or intellectual property law, or indeed under the Nominet Policy. It is the Respondent's choice of a Domain Name which is identical to the Complainant's trading name that falls foul of the Policy, not the Respondent expressing his views about the Complainant. The Respondent's right to establish and maintain a website critical of the Complainant is not disputed, but this does not give the Respondent the right to identify himself as the Complainant.
Put another way, the Respondent would not fall foul of the Policy if the content of his website was accessible at a website address which did not consist of a Domain Name which is identical to the Complainant's trading name. In all likelihood, it would not be contrary to the Policy even if the Domain Name contained the words "Clydesdale Conservatories", so long as the Domain Name taken as a whole made it sufficiently clear that it is not connected with the Complainant. For example, ihateclydesdaleconservatories.co.uk or clydesdaleconservatoriessuck.co.uk would in all likelihood be permissible under the Policy.
Whether or not an alternative website address contained the words "Clydesdale" and "conservatories", if the content of such website were to be the same as that of the Respondent's current website (at www.clydesdaleconservatories.co.uk), people wishing to find comments on Clydesdale Conservatories are still going to be able to find the Respondent's site by putting appropriate key words into a search engine. Of itself, this demonstrates that the Respondent's right to communicate his views about the Complainant will not be prevented by having to use a website address other than www.clydesdaleconservatories.co.uk.
Finally, I should add that my decision in this case has not been influenced in any way by whether or not I believe that the Respondent's criticisms about the Complainant are justified or not. I have no way of being able to form a proper view on the merits of the building dispute between the two parties, those merits are not of any relevance to this Nominet dispute, and are quite properly the subject of a separate Court action.
Having found that the Complainant has rights in respect of a name which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent is an Abusive Registration, the Expert directs that the Domain Name clydesdaleconservatories.co.uk be transferred to the Complainant.
___________________________________________________________________
Jason Rawkins 17 February 2006