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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> 1st Choice Leisure Buildings v Shearhod [2006] DRS 3944 (24 October 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3944.html Cite as: [2006] DRS 3944

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Nominet UK Dispute Resolution Service

DRS 3944

1st Choice Leisure Buildings v Cameron Shearhod

Decision of Independent Expert

1. Parties:

Complainant: 1^st Choice Leisure Buildings

Country: UK

Respondent: Cameron Shearhod

Country: US

2. Domain Name:

leisurebuilding.co.uk ("the Domain Name")

3. Procedural Background:

The Complaint was lodged with Nominet on August 22, 2006. Nominet validated the Complaint and notified the Respondent of the Complaint on August 23, 2006 and informed the Respondent that he had 15 working days within which to lodge a Response. The Respondent provided a Response on September 13, 2006 which was communicated to the Complainant the next day. Complainant's Reply was received on September 25, 2006 and communicated to the Respondent the same day. The Complainant submitted a non standard submission on 10 October 2006 as did the Respondent.

Mediation not succeeding, on October 12, 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Dawn Osborne, the undersigned, ("the Expert") confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed 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.

4. The Facts:

The Complainant has been trading on the Internet under leisurebuildings.com since April 2000 and leisurebuildings.co.uk since 2004. It is presently using these domain names for its business which is called 1^st Choice Leisure Buildings.

The Respondent registered the Domain Name on behalf of Leisure Building Specialists on August 3, 2005.

5. The Parties' Contentions:

Complainant:

The substance of the Complaint is as follows:

1. The Domain Name is identical or similar to a name in which the Complainant has rights.

2. The Domain Name in the hands of the Respondent is an abusive registration.

3. The Complainant has rights in the Domain Name as it has been trading on the Internet with the Domain Name leisurebuildings.com since April 2000 and leisurebuildings.co.uk since 2004. A great deal of work has been done in relation to web sites attached to its domain names to make sure it appears on the first page of all major search engines for nearly all search terms in relation to garden and leisure buildings.

4. The Respondent is trying to gain leads from search engines where customers fail to put an "s" on the end of the Complainant's domain names. Customers will look at the site attached to the Domain Name and assume that they were dealing with the Complainant's web site as the Domain Name is so similar.

Respondent:

The substance of the Response is as follows:

1. The Respondent registered the Domain Name on behalf of Leisure Building Specialists ("LBS") and it will in due course be transferred to them.

2. The Complainant does not have rights in English law. It has not provided any evidence and does not have a trade mark registration. The Domain name is generic.

3. The Complainant's main web site is Leisure Buildings.com and this is the web site they promote so the alleged mistakes by customers forgetting an "s" would not happen as easily.

4. LBS had problems with customers and internal use due to misspelling of the "Specialists" part of their name and therefore moved to a shorter domain.

5. LBS has been in existence far longer than the Complainant and the Complainant may be trying to take advantage of the goodwill of LBS. It has spent hundreds of thousands on marketing since 1979.

Complainant:

The substance of the Reply is as follows:

1. The Complainant has spent a lot of money on leisurebuildings.co.uk to compliment its main site.

2. A registered trade mark is not necessary to prove the Complainant's case.

3. The Complainant began business in 1979.

4. "Leisurebuilding" as a combination of words is not generic.

Further Submissions:

There were further submissions from the Complainant and Respondent re the presence of a company Leisure Building Specialists Limited on the UK Companies register. The Expert read these submissions but finds that the issue was irrelevant to the factors necessary for the decision and so has chosen not to deal with the submissions in detail.

6. Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

The Complainant must prove it has enforceable legal rights in a name or mark which is identical or similar to the Domain Name.

The Complainant does not have any registered trade marks for "leisurebuilding" or "leisurebuildings". It is possible that the Complainant has built up some goodwill in the name "leisurebuildings" for its services, but apart from the assertion that the name has been used as part of the Complainant's domain names on which is has spent marketing money, there is no further evidence given of alleged intellectual property rights in the "leisure building" or "leisurebuildings" names. It is certainly possible that "leisurebuildings" is purely descriptive and not distinctive of the Complainant's services. It is unsatisfactory that the Panel is left to guess at the position and it has not been adequately addressed in the Complaint.

Accordingly, the Expert finds that the Complainant has not demonstrated that it has Rights in respect of a name or mark, which is similar to the Domain Name.

Abusive Registration

Partly as a result of the above the Complainant has failed to show unfair advantage and detriment. In particular the Complainant alleges confusion but has not presented any evidence that confusion has been caused by the Respondents activities sufficient to satisfy Paragraph 3 (a)(ii) of the Policy:

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."

This appears to be a case of two businesses both using, in the absence of evidence to the contrary, arguably generic domain names for their businesses. Whilst both sides have accused the other of taking advantage of the other's goodwill by using a similar name, this would not appear to be a bad faith type claim suited for the Policy but more a traditional style unregistered trade mark dispute if such rights can be claimed and enforced in this case.

It is indeed a pity that the parties were not able to resolve this matter at mediation and they should perhaps be urged to renew their negotiations to resolve this matter.

Accordingly, the Expert is unable to determine that the registration is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.

7. Decision:

In light of the foregoing findings, namely that the Complainant has not proven that it has rights in respect of a name or mark which is identical to the Domain Name or that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name remain in the hands of the Respondent.

Dawn Osborne Date October 24, 2006