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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Webservers Ltd /Answers & Solutions Ltd v Betley [2006] DRS 3169 (10 February 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3169.html Cite as: [2006] DRS 3169 |
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Nominet UK Dispute Resolution Service
DRS Number 03169
Webservers Ltd / Answers & Solutions Ltd -v- Stephen Betley
Decision of Independent Expert
Complainant Type: Business
Country: GB
Respondent: Stephen Betley
Country: GB
webservers.co.uk ('the Domain Name')
The complaint from Mr Christopher Wainwright, on behalf of the Complainant, was lodged electronically with Nominet on 29 November 2005. Hard copies were received on the same day.
Between 6 December and 16 December there were non-standard exchanges between Nominet and the two parties on the following topics:
• A technical error on Nominet's website which led to the tag TECRES being mistakenly attributed to Dr Betley between 22 and 25 November, in addition to the two tags that he actually owned. An allusion to this third tag had been included in the Complaint, but the Complainant withdrew this element of the Complaint once Nominet had confirmed the error.
• The exact timing of registration of webservers.co.uk and webservers.ltd.uk. The Respondent enquired about this, and Nominet replied that webservers.co.uk was registered at 12.50.56 on 8 November 2005, and webservers.ltd.uk on 14 November 2005 (time not available).
• The timing of the cancellation of the previous registration of webservers.co.uk. The Complainant rang Nominet to ask about this. Nominet staff had already explained to him that because the previous registrant was a company that was now dissolved, the 60-day suspension period used in cases of non-renewal did not apply.
• The implication of the coming Christmas holiday period for the case timetable.
On 20 December 2005 Nominet received both electronic and hard copies of the Response, and on 30 December 2005 both electronic and hard copies of the Complainant's Reply. The informal mediation stage took place between 4 and 18 January 2006, but no resolution was achieved. On 30 January 2006 Nominet received the fee for an expert decision and on 1 February Claire Milne was appointed to act as expert in the case, having confirmed that she knew of no reason why she could not properly do so; and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.
On starting to consider the case, the expert sought and obtained from Nominet staff additional information on Nominet's procedures for suspension and release of domain names.
On 9 February 2006 the expert was sent a description of a non-standard submission by the Respondent. She agreed to receive it, and read it later the same day. However, this non-standard submission has not changed her views or this decision, so it is not referred to again.
None.
The following account of events relies on materials supplied to me which have not been questioned by either of the parties.
The domain name webservers.co.uk used to belong to a company called Birmingham Web Servers Ltd. According to a Companies House printout supplied in support of the Complaint, this company was incorporated on 19 February 1996 and dissolved on 8 October 2002.
The Complainant, represented by Mr Christopher Wainwright trading as Answers & Solutions Ltd, offers a variety of information technology services, including structured cabling and server room hardware as well as hosting and software. During the summer of 2005 the Complainant was considering rebranding its software services and domain hosting business. After discussion and trial of alternatives, the decision was taken to rebrand as 'webservers'. Having discovered on 30 October that Birmingham Web Servers Ltd were no longer trading, and that webservers.co.uk was 'in limbo' (on the basis of records shown at CoolWhois.com as last updated on 13 October), the Complainant wrote to Birmingham Web Servers Ltd on 4 November 2005 at their last known trading address in an attempt to secure the name.
On 4 November a special resolution was carried to change the name of one of the Complainant's companies from Altigen Ltd to Webservers Ltd; the new certificate of incorporation is dated 11 November 2005.
On 8 November 2005 the Respondent, Dr Stephen Betley, a Nominet member and tag-holder, registered the name webservers.co.uk. By 9 November he had parked it with NameDrive.com, where it carried a list of companies offering web hosting and similar services (with pay-per-click links).
On 14 November 2005, the Complainant offered through NameDrive to buy the domain name from the Respondent for £75. The Respondent turned down this offer, and suggested that the Complainant should look at a well-known domain business site (Acorn Domains) to find current domain resale prices. Also on this day, the Complainant registered webservers.ltd.uk.
This is a brief summary of what I understand to be the parties' main contentions, drawing on the Complaint, the Response and the Reply (each supported by a considerable number of exhibits).
Complainant
Respondent
General
The Nominet Dispute Resolution Service Policy ('the Policy') paragraph 2 requires that for a complaint to succeed the Complainant must demonstrate, on the balance of probabilities, that both:
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.
Complainant's Rights
Paragraph 1 of the Policy defines Rights as follows:
Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.
The Complainant argues that it had Rights in the name webservers.co.uk at the date of registration, although its company name change to Webservers Ltd actually took place a few days later, because:
• By applying for the company name change before the date of registration, it had clearly signalled its commitment to this name.
• It had already put considerable resources into its rebranding exercise.
It argues that it has since reinforced those Rights by setting up a new website at webservers.ltd.uk and telling its customers and business contacts about the change.
The Respondent is puzzled by the Complainant's reference to 'webservers' as its trademark, since he is unaware of any such trademark.
Discussion
The evidence is clear that at the date of registration, the Complainant had no formal Rights in the name. The Complainant is correct in thinking that, in principle, he could establish Rights (even without formal company name or trademark registrations) by showing that his company has become known by the name because of its established trading record, or through significant promotional activity. However, the Complainant admits that he is not yet well-established as a trader under this name, having only decided to use the name within the last few months.
I have scoured the copious materials provided and failed to find evidence of any actual promotional activity, beyond informing one or more direct contacts of the planned name change (a letter from Jackie of All Digital to Mr Wainwright, dated 6 October, acknowledges the plan). Copies of two purchase orders have been supplied, dated 4 November, to software companies for services including system rebranding; the planned outlays are only £220.00 and £320.00.
The Complainant offers his own interpretations of important terms in the Policy. He believes that the name is neither 'generic' (because it has a specific meaning) nor 'wholly descriptive' of the Complainant's business (because it is too narrow). I have to interpret these terms for myself, in the light of Nominet experts' usual interpretations, which differ from his. Good examples are DRS 00753 datingagency.co.uk for 'generic' and 02676 specialwelds.co.uk for 'wholly descriptive'. In the context of the Policy, a word or phrase that would normally apply to many members of a class (making it generic) can escape being generic because through use or promotion, as discussed above, it is applied distinctively to one member of that class. Similarly, the usual escape from being 'wholly descriptive' is that the name has come to have a distinctive meaning. The expert in DRS 00370 therugcompany.co.uk felt that inclusion of 'the' weighed in the direction of a distinctive meaning; similarly the fact that 'webservers' is plural influences me slightly towards a generic understanding. But these considerations are minor compared with how far the relevant public recognises the name as signifying the Complainant.
The term 'web servers' plainly covers a large number of individual instances, each of which is included in its specific technical meaning. But as just remarked, the Complainant has provided no evidence of having any special recognition associated with the name. The fact that the name does not even describe his business very well hardly helps him – rather, it suggests that he will have plenty of other, equally good or better, options. His ideas about compound words and the results of Google searches seem to me to have no bearing on whether this name is generic.
I therefore find that the Complainant has failed to establish Rights in the name, which in any case is both generic and descriptive (albeit not descriptive, far less wholly so, of the Complainant's business).
Since the Complaint has failed the first limb of the test (Rights), it is not strictly necessary for me to consider the second (Abusive Registration). I will nonetheless do so, so that both parties may feel their arguments have been fully considered.
Abusive Registration
The Nominet Dispute Resolution Service Policy ('the Policy') paragraph 1 defines Abusive Registration to be 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.
Discussion
The Complainant argues that the registration was abusive because it 'took unfair advantage' of his position as a member of the DAC development team. He does not seem to have read to the end of the sentence, which says that an abusive registration takes unfair advantage of the Complainant's Rights. He has not attempted to show this.
He also argues that the manner in which the name has been used (the pay-per-click holding page) is unfairly detrimental towards him, because it tends to direct people who might be looking for his company towards his competitors. This argument would carry some weight with me if he had demonstrated public recognition of the name as his own, but as he has not done this it has no weight. Such pay-per-click pages are not to my personal taste, but in common with the expert in DRS 01629 cyclone.co.uk I find that they are a fair use of generic names. The finding in DRS 03035 searchpress.co.uk that such a page constituted abuse rested on the name in question being specific to the Complainant. I therefore accept the Respondent's citation of 4 (a) (ii) in his defence.
The Complaint devotes a good deal of space to showing that the Respondent is professionally engaged in domain name registration, and the holder of two tags (one for business and one for personal use), with all of which the Respondent agrees. The Complaint does not however include even one example of a domain name which could constitute evidence of a 'pattern of registrations …of domain names … which correspond to well known names or trade marks in which the Respondent has no apparent rights', as would be required in order to rely on 3 (a) (iii) of the Policy.
It appears to me that the main reason that the Respondent was successful in registering the name, while the Complainant was unsuccessful, is that the Respondent took more trouble to be fully informed about Nominet's procedures for releasing suspended names for re-registration, and their implications for this particular name. I have enquired of Nominet's staff why the Complainant wrongly expected that the name would not be available before 12 December. I have been told that the Complainant mistakenly assumed that the standard (non-renewal) procedure would apply, whereas this was a case of a dissolved company (and a pre-Nominet registration), which means the standard procedure does not apply. In addition, he mistakenly assumed that 'last updated on 13 October' meant that 13 October was the date when the name was suspended, when in fact the update that took place on 13 October was a change to the nameserver field carried out by an automated Nominet database cleaning process.
The Complainant alleges that the Respondent's only possible motive for registering the domain name (along with other domain names registered by the same person, such as gamblingodds.co.uk and dreamhomes.co.uk) was to sell it for profit. I do not accept this. The Respondent has not tried to sell the name to the Complainant. The Respondent claims to be planning a business using this name, and given his known skills this is plausible. The Respondent may sell other generic names for profit, which would not affect this case, as has been clarified by the expert in DRS 01952 lists.co.uk among others.
The Complainant objects to the whole business of domain name trading, and to related aspects of how Nominet's systems are run. A case brought within the Dispute Resolution Service is bound by the existing legal and regulatory framework, within which domain name trading is a legitimate business (subject to constraints such as the Policy). His strong views on domain name trading do not influence my decision; nor have I found evidence of Nominet departing from its known rules. The Complainant is of course entitled to use other channels to try to change policies and practices in this area. He should note, in particular, that membership of Nominet is open to anyone interested who is willing to pay the dues. Likewise, anyone with certain technical facilities can become a tag-holder, and all Nominet members who are tag-holders are entitled to access the Domain Availability Checker for an additional subscription.
Misuse of complaint procedure
Lastly, I must consider the Respondent's view that this is a case of reverse domain name hijacking. Certainly, the Complainant's case is unusually weak, even though he must have spent many hours putting it together. But the case is also unusual in that the Complainant appears to have thoroughly misunderstood the Policy, in spite of his extended study of previous DRS cases. In the circumstances, I find it hard to conclude with confidence that the Complainant deliberately set out to misuse the Policy. Instead, he may have been carried away by his feelings of righteous indignation. A finding of reverse domain name hijacking implies bad faith and is a serious matter, so I would require a high level of confidence before making such a finding. I therefore do not pronounce on this matter.
The Complainant has not established Rights in the name. Nor has he shown that, if he had Rights, this would have been an Abusive Registration. Therefore the Complaint fails. No action is required.
Claire Milne
10 February 2006