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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Online Property Search Ltd v Turnette [2006] DRS 3452 (4 April 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3452.html Cite as: [2006] DRS 3452 |
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Nominet UK Dispute Resolution Service
DRS 3452
Online Property Search Limited v. Ian Turnette
Decision of Independent Expert
Complainant: Online Property Search Limited
Country: GB
Respondent: Ian Turnette
(1) roostbarnstaple.co.uk; (2) roostboston.co.uk; (3) roostcarlisle.co.uk;
(4) roostchester.co.uk; (5) roostchippenham.co.uk; (6) roostclifton.co.uk;
(7) roostdover.co.uk; (8) roostdumfries.co.uk; (9) roostdurham.co.uk;
(10) roostexmouth.co.uk; (11) roosthereford.co.uk; (12) roostnewbury.co.uk;
(13) roostscarborough.co.uk; (14) roostshrewsbury.co.uk; (15) roosttaunton.co.uk;
(16) roosttruro.co.uk; (17) roostweymouth.co.uk; and (18) roostworcester.co.uk
("the Domain Names")
The Complaint was submitted to Nominet on 21 February 2006. Hardcopies were received in full on 22 February 2006 and the Complaint was validated by Nominet and sent to the Respondent by post and by email both to postmaster@[each of the Domain Names] and to the email address which Nominet held for the Respondent on the register database. The Respondent was informed in this correspondence that he had 15 working days, that is, until 16 March 2006 to file a response to the Complaint.
The Respondent did not file a response and the case did not proceed to the mediation stage. On 17 March 2006 the Complainant paid the fee for referral of the matter for an expert decision pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy"). On 23 March 2006, Andrew D S Lothian, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. Nominet duly appointed the Expert with effect from 27 March 2006.
No response
The Respondent has failed to submit a response to Nominet in time in accordance with paragraph 5(a) of the Procedure.
Paragraph 15(b) of the Procedure provides inter alia that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."
Paragraph 15(c) of the Procedure provides that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate." In the view of the Expert, if the Respondent does not submit a Response the principal inference that can be drawn is that the Respondent has simply not availed himself of the opportunity to attempt to demonstrate that the Domain Names are not Abusive Registrations. This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration, nor does it in the Expert's view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit. Nevertheless, in the present case the Expert believes that the Complainant makes a compelling case both as to the true identity of the Respondent and his motivation for registering the Domain Names; this requires an answer from the Respondent. In the Expert's opinion, the fact that the Respondent has not submitted a Response in this particular case, either offering explanation or clarification of his conduct, justifies the drawing of an adverse inference.
Deficiencies in the Complaint
The registered trade mark certificate provided and founded upon by the Complainant showed a different proprietor from the Complainant. The person shown on the certificate was in fact the Complainant's nominated contact in the complaint and accordingly it was evident to the Expert that they were connected parties. The Expert considered that it was likely that the Complainant would have assigned the mark since registration. The question for the Expert was whether it was appropriate for him to check for such an Assignment.
In Chivas Brothers Limited v David William Plenderleith (DRS 292) the expert was prepared to verify the existence of an Assignment of a registered trade mark, 'a check which need take no more than a couple of minutes of the Expert's time.' The expert also stated that the principal determining factor was that the complaint was (in all respects other than the absence of averments relating to the Assignment) a full and properly prepared document.
The present Expert also considered a similar question in the case of HIT Entertainment Plc v Tom Loosemore (DRS 1544). In that case, the Expert was presented with a submission that the complainant was the proprietor of certain registered trade marks. The complainant was not listed as the proprietor on any of the corresponding certificates. The Expert considered whether or not the complaint was a properly prepared document and found that it was not. Accordingly, the Expert did not conduct any further enquiries or seek further information from the complainant regarding its apparent rights in the trade marks cited.
In the present case, in the view of the Expert, the complaint is a full and properly prepared document. Furthermore, there is a clear connection on the face of the complaint and supporting evidence between the Complainant and the apparent proprietor of the trade mark, contrary to the position in HIT Entertainment Plc. In these circumstances, the Expert considered that it was appropriate for him to verify the existence of an Assignment in a similar manner to the expert in Chivas. As predicted, the Patent Office's online service showed that the registered trade mark concerned had been assigned to the Complainant with effect from 13 March 2006.
Non-standard submission
On 20 March 2006 Nominet received a letter dated 17 March 2006 from the Complainant. The letter stated: "I am writing to inform you that, since filing our initial complaint, we have received a number of additional emails from the Respondent that could be used as evidence of Abusive Registration. I have enclosed copies of these emails should the Expert wish to view them."
Paragraph 13(b) of the Procedure states:- "Any communication with [Nominet] 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."
Having reviewed the Complaint, Complainant's exhibits and the material provided by Nominet, the Expert does not believe it is necessary to call for the additional material under paragraph 13(b). For the reasons set out in section 7 of this Decision, the Expert considers that the Complainant's original submission is sufficient to make a case on balance of probabilities for the Domain Names being Abusive Registrations.
The Complainant is based in Bath and operates a property website for estate agents. It has traded since July 2005. It has held a portfolio of 88 domain names since November 2004 following the pattern "roost{town}.co.uk" (where {town} refers to the name of a major town in the UK) and it expanded this portfolio by a further 100 domain names in January 2006.
The Complainant has also been the registrant since August 2005 of the domain name roost.co.uk. The Complainant is the proprietor of UK registered trade mark no. 2383636 for the device and word mark ROOST (filed on 4 February 2005 and registered on 15 July 2005). This trade mark was assigned to the Complainant by Christopher Elliot Nicholson, a Director of the Complainant, with effect from 13 March 2006.
The Complainant's website at www.roost.co.uk currently points visitors to two further sites - roostbath.co.uk and roostbristol.co.uk. At these sites the Complainant advertises properties for sale in the applicable locality on behalf of the selling agents.
The Respondent registered all of the Domain Names on 17 September 2005. There is a single web page associated with all of the Domain Names. A screenshot of this web page, which has been provided by Nominet, shows that the site is a standard domain name parking page offering the services of the Nominet member through whom the Domain Names were registered.
Complainant
1. The Complainant has rights in the Domain Names because it has traded and advertised under the name ROOST since 19 July 2005 and continues to do so and by virtue of its UK registered trade mark no. 2383636 for ROOST.
2. Since it has been in business, the Complainant has built up valuable goodwill throughout the national estate agency sector in the name ROOST. The Complainant has provided some specimens of its advertising materials.
3. The Domain Names in the hands of the Respondent are Abusive Registrations because they were primarily registered in order to stop the Complainant registering the Domain Names despite its rights in them, alternatively they were primarily registered for the purpose of unfairly disrupting the Complainant's business.
4. The Respondent has recently (since September 2005) set up a business in Bath similar to the Complainant's. The Complainant has reason to believe that the Respondent's stated name is a pseudonym ("Ian Turnette" = "internet") and that his real name is Nicholas Groom. Mr Groom operates, through a company called housesforsalein.co.uk Limited, an estate agency business e.g. through a website www.housesforsaleinbath.co.uk which went live in January 2006. Mr Groom is also connected with another company, Worldwide Homes Limited, which is currently proposed to be struck off and which is the registrant of 6 other domain names following the pattern roost{town}.com e.g. roostbath.com which resolves to the Respondent's website www.housesforsaleinbath.co.uk.
5. Mr Groom has contacted the Complainant on several occasions, initially pretending to be an estate agent interested in subscribing to the Complainant's business. In his email dated 21 January 2006, Mr Groom stated the Respondent's intention to offer financial services by reference to the ROOST trade mark. This would be directly antithetical to the Complainant's business model.
6. The Respondent has been using the word ROOST in his Google Adwords campaign. The Complainant has written to the Respondent asserting its registered trade mark and asking the Respondent to remove ROOST from its Adwords list. The Respondent has so far refused to do this.
Respondent
The Respondent has not filed a response.
General
In terms of paragraph 2(b) of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, namely that:
(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names; and
(ii) The Domain Names, in the hands of the Respondent, are Abusive Registrations.
Complainant's Rights
Paragraph 1 of the Policy provides that 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". Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the name or term in which the Complainant has these is wholly descriptive of its business; (3) if not wholly descriptive, whether the name or mark is identical or similar to each or any of the Domain Names.
Complainant's Rights in the mark 'ROOST'
The requirement to demonstrate Rights under the Policy is not a particularly high threshold test. Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark.
The Complainant has cited a UK registered trade mark for the device and word 'ROOST', registered in class 35 - the provision of advertising space. As noted above, the Expert felt it appropriate to verify that the mark had been assigned to the Complainant; this is indeed the case. In the circumstances, the Expert finds that the Complainant has rights in the name or mark 'ROOST'.
The second question for the Expert is whether this name or mark is wholly descriptive of the Complainant's business. The Complainant's business advertises properties on behalf of estate agents. The name or mark 'ROOST' is not in any way descriptive of such services.
The remaining question therefore is whether the name or mark is identical or similar to the Domain Names. The first (.uk) and second (.co) levels of the Domain Names can be disregarded as being wholly generic. The Expert is then left with a comparison between the name or mark 'ROOST' and the third level part of each of the Domain Names.
Each of the Domain Names consists of the word ROOST plus a geographic identifier representing a British town or city. Clearly, however, the name or mark in which the Complainant has rights is not identical to any of the Domain Names but is it similar?
The Domain Names are especially similar to the Complainant's trading style which forms a pattern of the mark together with a place name (in the case of roostbath and roostbristol - as shown in its domain names and advertising, and from which the Complainant trades via web sites targeted to these localities). The focus, whether in the Complainant's trading style or in the Domain Names, is always on the ROOST element of the domain, the names of places in the UK being generic or descriptive and adding nothing by way of distinctiveness. Had the Domain Names not included the ROOST mark, their meaning and significance would have been entirely different, in that there would be no similarity to the Complainant's trade mark or its trading style.
Previous disputes under the DRS such as, for example, Deutsche Telekom v ADO1 (DRS 456), and Pickfords Limited v Black Cat (DRS 898), have dealt with complaints involving a trade mark registered to the complainant and the addition of a generic or non-distinctive word usually descriptive of the complainant's business or products. In these cases the experts held that the domains in question were sufficiently similar to a name or mark in which the complainant had rights in terms of the Policy.
In the present case, the Expert is faced with a portfolio of 18 domain names, each of which consists of an initial element which is identical to the Complainant's registered mark followed by a place name, which is generic. Clearly the fact that the first element is identical to the Complainant's registered trade mark and is the dominant element goes some way towards rendering the Domain Names similar to the Complainant's mark. Furthermore, given that it is the nature of the Complainant's business to offer targeted advertising to estate agents selling property in a particular locality or place it is arguable that the place name element also has a part to play in establishing similarity even though the Complainant may not yet be targeting its service at any of the places listed in the Domain Names.
This is a very narrow point but the Expert considers that given (1) the Complainant's registered mark is identical to the first, dominant element of each of the Domain Names; (2) the Complainant's trading style follows a very similar pattern to the Domain Names; and (3) the Complainant's services are necessarily localised to particular places comparable to those listed within the Domain Names, on the balance of probabilities the Domain Names are similar to the name or mark in which the Complainant has Rights in terms of paragraph 2(a)(i) of the Policy.
Abusive Registration
Are the Domain Names, in the hands of the Respondent, Abusive Registrations? 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."
A non-exhaustive list of factors which may constitute evidence of Abusive Registration is set out in paragraph 3 of the Policy.
The Complainant's principal submission is that the Respondent registered the Domain Names primarily to stop the Complainant from doing so despite its rights in the names. This submission falls within paragraph 3(a)(i)(B) of the Policy (blocking registrations). The Complainant's alternative submission is that the Respondent registered the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant. This submission falls within paragraph 3(a)(i)(C) of the Policy.
The Complainant asserts that the Respondent has operated a business in Bath similar to that of the Complainant since September 2005. The Complainant believes that the name under which each of the Domain Names was registered is a pseudonym and asserts that the true registrant is a Mr Nicholas Groom, the operator (through a company named housesforsalein.co.uk Limited) of an estate agency business having a website at www.housesforsaleinbath.co.uk.
The Complainant goes on to state that Mr Groom is also connected with another company, Worldwide Homes Limited, which is the registrant of 6 other domain names following the pattern roost{town}.com e.g. roostbath.com which resolves to the Respondent's website at www.housesforsaleinbath.co.uk.
The Complainant produces an exchange of email correspondence between Mr Groom and the Complainant commencing on 31 August 2005 with an email from Mr Groom in which he expresses an interest in the Complainant's rates, offers, hit statistics, advertising and promotion. In a later email (which does not show a date) Mr Groom asks for details of the agents with whom the Complainant's business is linked. The Complainant supplied details of its pricing, a free trial, advertising coverage, web statistics and customer feedback in an email of 6 September 2005.
Although there may have been other contacts between the Complainant and Mr Groom, the next event in the chronology appears to be the registration by 'Ian Turnette' of the Domain Names on 17 September 2005. Thereafter, the correspondence between the Complainant and Mr Groom relates to a dispute arising from Mr Groom's alleged use of a Google AdWord for the word 'roost' (producing, according to a screenshot supplied by the Complainant, a sponsored link for the site www.housesforsaleinbath.co.uk when the word is typed into the Google Search Engine).
In an email of 21 January 2006, Mr Groom indicates that he will be developing the domain Roostbath.com into a web site for the provision of financial services by Bath companies and brokers. The correspondence ends on 16 February 2006 with an email from Mr Groom suggesting that the Complainant might wish to stop trading as Roost.
It is clear from the Complainant's evidence that the Complainant and Mr Groom have been engaged in conflict with one another, rather than merely in competition, and that this conflict has spilled over into the registration of domain names (on the part of either Mr Groom, 'Ian Turnette' or an individual in Worldwide Homes Limited) having a similarity to the trading style of the Complainant. While this conflict is clearly between the Complainant and Mr Groom, the registrant of the Domain Names is 'Ian Turnette'.
The Expert has been provided with prints from Nominet's register database in respect of the Domain Names. These show that the Domain Names have all been registered in the same pattern - with Ian Turnette listed as registrant and administrative contact and with the trading name field listing Worldwide Homes Limited. The address of the registrant, administrative and billing contact appears to be Mr Groom's residential address, as demonstrated by the Current Appointments Report from Companies House in respect of Worldwide Homes Limited, of which company Mr Groom is listed as a director. Most importantly, the administrative contact email address is Mr Groom's and is the same email address used by him in the correspondence founded upon by the Complainant.
The Expert considers that it is reasonable to infer from this evidence that Ian Turnette is a pseudonym for Mr Groom and that the Domain Names were registered by Mr Groom or another person on his behalf. The Complainant makes a compelling case that the Respondent's/Mr Groom's primary motivation for making the registrations was either to block the Complainant from making corresponding registrations, in a similar pattern to its existing trading styles, or alternatively to disrupt its business, perhaps in the manner of the roostbath.com domain name which has been configured to resolve to the Respondent's/Mr Groom's site which is in competition with the Complainant. It is not clear which of these alternative cases is the correct explanation of the Respondent's conduct but the Expert considers that it is most probably one or the other and that either of them would justify a finding of Abusive Registration.
There is a suggestion in the correspondence, in Mr Groom's email of 21 January 2006, that Mr Groom or his business intended to use the name 'roost' in connection with a site to be developed for the provision of financial services by Bath companies and brokers. The Expert considers that this explanation (and the suggested coincidence that both parties, based in the same locality, might hit upon the name 'roost' for entirely different businesses when they are clearly in competition in a sector where one of them already uses this name) stretches credulity beyond breaking point. The Expert also notes that neither Mr Groom, Ian Turnette or any other related person has filed a response in this case whereby this explanation might have been given any greater substance. As noted in section 4 of this Decision, the Expert considers that the failure by the Respondent to explain or clarify his conduct in the circumstances of this particular dispute entitles the Expert to draw an adverse inference regarding the Respondent's intentions in registering the Domain Names.
In the circumstances, the Expert is satisfied that the Complainant has proved on balance of probabilities that each of the Domain Names constitutes an Abusive Registration.
The Expert finds, on balance of probabilities, that the Complainant has proved that it has Rights in a name or mark similar to the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations. The Expert therefore directs that the Domain Names be transferred to the Complainant.
Andrew D S Lothian
4 April, 2006