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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Horticultural Society v Ballard [2006] DRS 3845 (31 August 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3845.html Cite as: [2006] DRS 3845 |
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Decision of Independent Expert
Complainant: The Royal Horticultural Society
Country: GB
Respondent: Mr Stephen Ballard
Country: GB
rhs.co.uk (the "Domain Name")
The complaint was entered on to the Nominet system on 18 July 2006. Nominet validated the complaint on 19 July 2006 and on 20 July 2006 despatched a copy of the complaint to the Respondent. The Respondent did not respond. On 31 August 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (the "Policy").
I, Stephen Bennett, the undersigned, (the "Expert") have confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and have further confirmed that I know 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.
The Respondent has not submitted any Response to Nominet in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure").
Paragraph 15b 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 this Policy or the Procedure, the Expert will proceed to a Decision on the complaint."
There is no evidence before me to indicate the presence of exceptional circumstances. Nominet has attempted to communicate the complaint to the Respondent by e-mail and post. The efforts made by Nominet are in accordance with the Procedure and accordingly, I will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.
Paragraph 15c of the DRS Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure …, the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate." I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.
The Domain Name, rhs.co.uk, was registered in the name of "S.L. Ballard", the Respondent before August 1996.
The Complainant is a charitable organisation known as The Royal Horticultural Society. The Complainant was constituted by a Royal Charter, originally granted in 1809, under the name "The Horticultural Society". By 1987, further Royal Charters had been passed and the name "The Horticultural Society" had become "The Royal Horticultural Society". (This can be seen from the Royal Charter dated 10 November 1987 supplied with the Complaint).
The Respondent is recorded by Nominet as a sole trader with an address in Dorking, Surrey and trading as Ballard Communications Management.
At the date of writing this decision, the website that uses the URL www.rhs.co.uk contains a single page of content. The page is titled "RHS Regional Horticultural Services" and states "Welcome to Regional Horticultural Services - Find gardening shops, nurseries, gardeners, landscaping, garden design and advice in your area". There then follows a series of links. The first set of links is to gardening-themed articles found on the website of The Telegraph newspaper.
There is then a link in a box titled ""Ads by Goooooogle…Advertised on this site". The title words are clickable links that link to pages at www.google.com relating to Google's "Adwords" and "Adserve" services.
The link shown in the advertising box on the website is entitled "Gardening Home Study" and links to a site at www.learningcurve-uk.com that offers gardening training. This includes courses offered under the title "RHS Level 2 Certificate in Horticulture" and "RHS Level 3 Certificate in Horticulture" as well as "Leisure Gardening" and "Garden Design". The material posted at the website shows that the courses entitled "RHS Level 2" and "RHS Level 3" referred to courses designed to prepare students to sit the Royal Horticultural Society Certificate in Horticulture at Levels 2 and 3.
The site at www.rhs.co.uk then promises "Forthcoming Features" and lists things such as gardening gifts, and horticultural services.
There are then two further advertisements, one titled "How I Earn £14,577 a Week", and the other entitled "Jim's Mowing". The first of these advertisements links to a site at www.getrichathome.co.uk that offers for sale a guide to a method of making money. The second advertisement links to www.jim'smowing.co.uk which offers garden mowing and hedge cutting services.
Finally, at the foot of the page there are four button-links entitled "RHS", "BBC Gardening", "NAFAS" and "Carry On Gardening". The link "RHS" links to the Complainant's website at www.rhs.org.uk. The second link is to a BBC website at www.bbc.co.uk/gardening. The third link is to the National Associational of Flower Arrangement Society's website at www.nafas.org.uk. The final link is to www.carryongardening.org.uk. Clicking on this link produces an HTTP error "403 - forbidden internet explorer".
Complainant:
The Complainant states that the Domain Name is identical to a mark in which the Complainant has Rights. The Complainant says that it has Rights in the initials RHS through use of the mark RHS since being granted its original Royal Charter in 1809. According to the Complainant, the name RHS has been used as an abbreviation of Royal Horticultural Society since that time. The mark RHS has been used in a trade mark sense since as early as 1980 in relation to publications and other promotional material. The Complainant states that its income is in excess of £10m per year and that the vast majority of that income is derived through licensing and advertising in relation to its publications. Further, the Complainant says the main brand used in relation to these activities is "RHS".
The Complainant states that the Respondent offered the Domain Name to the Complainant for sale in a letter dated 17 August 2005 and stated that the payment sought was £10,000. A copy of the letter was not supplied with the complaint. The Complainant states that following the Complainant's refusal of the offer for sale (by letter of 30 August 2005), the Respondent offered to sell for £5,000 and two life time memberships of the Complainant. That offer was not accepted. The Complainant states that shortly after the contact (above) between the Complainant and Respondent, the Respondent set up a website at the URL www.rhs.co.uk.
The Complainant's main contention in relation to the question of Abusive Registration is that the Domain Name was primarily registered for the purposes of selling to the Complainant for a sum in excess of the Respondent's out of pocket expenses. The Complainant further asserts that once a sale to the Complaint did not occur, the Domain Name has been used in such a way as to unfairly disrupt the business of the Complainant.
The Complainant alleges that the site at www.rhs.co.uk is designed to attract members of the public who will type in the URL assuming that the URL will relate to the Royal Horticultural Society. The Complainant alleges that the name "Regional Horticultural Society" (used as the title of the web page at www.rhs.co.uk) was chosen specifically because the Complainant turned down the Respondent in relation to the proposed sale of the Domain Name.
The Complainant supplements its Nominet DRS Complaint form with a witness statement from Andrew Smith, the Secretary of The Royal Horticultural Society and with exhibits to that statement. The exhibits include sample publications referring to the Complainant as RHS and the Complainant's report and accounts for 1995.
Respondent:
The Respondent has not responded.
Complainant's Rights
The complaint annexes copies of promotional materials for the Complainant's products. These show a long term use of the term "RHS" as an abbreviation for Royal Horticultural Society pre-dating the registration of the Domain Name. The materials provided in support of the Complaint indicate that the Complainant is known both by its full name and as "RHS". The supporting documents also indicate that the Complainant's operations are substantial (in excess of £12.5million turnover in 2005, with 225,000 members in the UK).
Whilst the use of three initials as a name may not carry the same distinctive character as a made-up word, there is no reason why, with sufficient use, goodwill and reputation cannot be acquired in a specific field of business. It has also been made clear in the Appeal Decision Seiko UK Limited v Designer Time/Wanderweb (appeal in DRS 00248) that the test for Rights should not be set high. In that case, on Appeal, that the following was stated "…the requirement to demonstrate "Rights" is not a particularly high threshold test".
The use made by the Complainant of the RHS initials is the type of use that can give rise to rights in the law of passing off. The Respondent has not disputed the Complainant's claims that RHS is well known and is associated with the Complainant.
In the specific field of use in question, (horticulture and gardening), I believe the evidence put forward by the Complainant is sufficient to establish Rights in the initials RHS.
The Domain Name is, on that basis, identical to a name in which the Complainant has Rights.
Abusive Registration
To be an Abusive Registration under the DRS Policy the Domain Name must be one which "…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…".
Section 3 of the DRS Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These are as follows:
"3. Evidence of Abusive Registration
(a) A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is 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;
B as a blocking registration against a name or mark in which the Complainant has Rights; or
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;
(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.; or
(iv) It is independently verified that the Respondent has given false contact details to us.
(v) The domain name was registered as a result of a relationship between the Complainant and the Respondent and the Complainant:
A. has been using the domain name registration exclusively; and
B. paid for the registration and/or renewal of the domain name registration
(b) Failure on the Respondent's part to use the Domain Name for the purposes of email or a web-site is not in itself evidence that the Domain Name is an Abusive Registration."
The Complainant's main assertion is that the Domain Name was registered with a view to selling it to the Complainant for a fee in excess of the Respondent's out of pocket expenses. Had the Respondent simply registered the Domain Name but made no use of it and made no offer of sale to the Complainant then it would have been difficult to see such an intention. Whilst the Complainant may have a reputation and goodwill in the initials "RHS" in relation to gardening and horticulture, it is clear that there could be other legitimate uses of those initials in other fields of commerce.
However, it is clear from the complaint that the Respondent at some point had the Complainant in mind. The three factors that would indicate this are the Respondent's offer to sell the domain name to the Respondent; the content of Respondent's website at www.rhs.co.uk and the use of the link button entitled "RHS" to link to the Complainant's website.
(i) Offer to Sell
Although the Complaint refers to specific dates and letters in which the offer for sale is said to have been made, these letters were not provided in support of the Complaint. It would have made things simpler if they were. However, the failure to provide those supporting documents is not fatal.
In this case, although the copy letters themselves are not provided, detail in relation to the offers is set out in the Complaint which is subject to a Statement of Truth and in a witness statement signed by Andrew Smith, Secretary of the Complainant. The witness statement also contains a Statement of Truth.
It is also the case that the Respondent has not answered these specific allegations. As I have stated above in relation to procedural issues, the Expert is entitled to make inferences where the Respondent has not answered the Complainant's allegations.
The Statement of Truth coupled with the lack of response from the Respondent is sufficient basis to find that such offers were in fact made. An offer of £10,000 is significantly in excess of the out of pocket expense of registering a single .uk domain name. I find therefore that the Respondent did make such an offer and that the offer was in excess of the out of pocket cost of registration.
There may be some doubt as to whether it was the Respondent's intention to offer the domain name for sale at such an inflated price when he registered the Domain Name. However, given the Respondent's other behaviour, this seems likely. Further, the allegation of such an intent remains unanswered. I infer from this that the Respondent did have such an intention.
(ii) Content of the Website at www.rhs.co.uk
The content of the website at www.rhs.co.uk is clearly aimed at the gardening and horticultural arena in which the Complainant operates. The suggestion in the title of the website is that the initials "RHS" are intended to refer to "Regional Horticultural Services" as opposed to the Royal Horticultural Society. Given the apparent timing of the establishment of this website (after the offer for sale had been refused), I am not convinced that the initials RHS in the name are truly intended to refer to "Regional Horticultural Services". There does not appear to be a business operating under that name from this website or otherwise. The choice of the title "Regional Horticultural Services" seems to have been a ploy to allow the Respondent to argue that he intended to refer to the Regional Horticultural Services by using the initials "RHS", not to refer to the Complainant. That is a rather transparent and unsuccessful ploy.
(iii) RHS link button
It is clear, from the button labelled "RHS" at the base of the webpage at www.rhs.co.uk that the Respondent considers that "RHS" refers to the Complainant's business and not the supposed "Regional Horticultural Services". Why else would a link button to the Complainant's website by labelled "RHS".
It also appears that the Respondent intends to make money from the website www.rhs.org.uk by carrying links to third parties advertising services connected with gardening and horticultural services. I infer from the way these advertisements are carried at the website that the Respondent will make money by carrying some of these advertisements. However, as no evidence has been provided that money is being made and given the other findings in this decision, I do not base this decision on the premise that the Respondent is making any money from these advertisements.
On the balance of probabilities, I believe that the Respondent had the Complainant in mind when he registered the domain name and that his intention was to sell the Domain Name for a sum in excess of the cost of registration.
Accordingly, I find the Domain Name to be a Abusive Registration in the hands of the Respondent.
Decision
The Complainant has Rights in the name "RHS". The Domain Name is identical. The Domain Name in the hands of the Respondent is an Abusive Registration.
The Complainant's request for a transfer of the Domain Name should be granted.
Stephen Bennett Date
