Nominet UK Dispute Resolution Service

DRS Number 03973

The Loft Company Ltd

and

Robert Ellis

Decision of Independent Expert

1.	Parties: 

Complainant:		The Loft Company Ltd
Country:		GB 

Respondent:		Robert Ellis
Country:		GB

2.	Domain Name:

theloftcompany.co.uk

3.	Procedural Background:

The complaint was received by Nominet on 06/09/2006 and sent to the Respondent on 07/09/2006.  The Respondent filed an electronic response on 13/09/2006 but submitted it on the reply form.  Hardcopies of the response with its exhibits were received on 22/09/2006 and these were forwarded to the Complainant on 25/09/2006.  A electronic reply was received from the Complainant on 03/10/2006 with hardcopies received the following day on 04/10/2006.  Mediation was attempted without success and the Complainant paid the fee for an expert's determination on 31/10/2006 and I was  selected as the Expert.

4.	Outstanding Formal/Procedural Issues (if any):

None

5.	The Facts:

The Domain Name was registered by the Respondent on 22 June 2004.  The Complainant company was incorporated with its present name on 8 June 2004.  Prior to that, the business now carried on by the Complainant company was carried on by Total Loft Conversions Limited, which went into liquidation and was wound up in November 2004. The Respondent was an employee of Total Loft Conversions Limited and he was subsequently employed by the Complainant company as its contracts manger.  There is a dispute as to when precisely the transfer of employment to the Complainant company took place and which of the two companies he was working for on 22 June 2004 when he registered the Domain Name.  However, at least by October 2004 it seems he was employed by the Complainant company.  Immediately, or at least very soon after the Domain Name was registered, it was used to resolve to the Complainant's website and appears to have done so ever since.  The Respondent resigned his position with the Complainant by a letter dated 6 June 2006 and set up a company in competition called Top Loft Company Limited.  

6.	The Parties’ Contentions:

Complainant:

In summary the Complainant says in its complaint that:

•	The Respondent registered the Domain Name on the Complainant's behalf in June 2004 but did so in his own name rather than that of the Complainant, which paid him the registration fee. 
•	the Complainant has spent thousands of pounds optimizing and advertising its website to which the Domain Name resolves.
•	All the Complainant's adverts feature the web address as 'www.theloftcompany.co.uk'.
•	The Respondent renewed the Domain Name in his name and address without the Complainant's knowledge. He was again paid for this by the Complainant. 
•	After he left and set up in competition with the Complainant, the Respondent tried to extort the sum of £1,000 from the Complainant to transfer the Domain Name to the Complainant. 
•	After seeking legal advice the Respondent agreed to transfer the Domain Name and signed and returned a domain transfer form to Nominet. 
•	The Respondent has no legitimate reason to want to prevent the Complainant from holding the registration to the Domain Name. 
•	The Respondent seeks to benefit from the money spent by the Complainant on advertising and optimization its website by diverting the website and enquiries to his own newly formed company.

Respondent:

In summary the Respondent says that:

•	He purchased the Domain Name in his own name, with his own money, and within his own time in June 2004.  
•	He was not working for the Complainant at this time but for its predecessor in business, Total Loft Conversions Limited.  Whilst he was working for Total Loft Conversions they asked him to register totalloftconversions.co.uk. and .net and .inf which he did, and which Total Loft Conversions paid.  
•	During May 2004 there was talk about closing the Complainant's predecessor  company down and starting a new company.
•	In June 2004 he registered the Domain Name which he paid for.
•	He made a website for loft conversions using the Domain Name which was up and running. 
•	He showed Felix Wright of the Complainant the site which he had designed and Felix Wright said "that's a good site, who owns it?".  The Respondent said he "I do" and no more was said.  
•	He went on  holiday in October 2004 and when he returned he was informed that Total Loft Conversions Ltd was in receivership and he now worked for the Complainant, running from the same office with same staff.  
•	The website was not getting enough hits, so Felix Wright arranged for a third party company to modify the site.  They asked the Respondent for passwords and login details to service the website, which he gave them as "I had no time to work on the website".  
•	When he resigned on 6 June 2006 there was a discussion between himself and Chris Nichols of the Complainant about who owned the Domain Name.  When asked, the Respondent said he owned it and was then asked how much he wanted for it.  He said nothing.  [I note that it is not clear in the Respondent's submissions when he said "I said nothing" whether he meant that he remained silent in response to the question or whether he meant that he said he wanted no money for the Domain Name.]  The Complainant offered £100 which was refused. The Complainant then offered £1000 pounds to which the Respondent laughed and said "ok then".  The Complainant then said "that is extortion, I have been in touch with the police and if I don't sign the letter to transfer the domain name over I will get done for extortion".  
•	The Respondent had no use for the Domain Name and was willing to give it to the Complainant for nothing and in the light of these threats he signed the letter.  
•	Chris Nicholls has registered 'toploftcompany.net' which is the Respondent's new company name.
•	The Domain Name was transferred to the Complainant and when the Respondent queried this with Nominet he was told that he had signed a transfer form on 22 June 2006.  He still has the original transfer form that the Complainant sent to him with all inserted details on it dated 12 June 2006 but he never posted this or faxed this to Nominet
•	The Respondent says his signature on the form was a forgery.  Nominet then transferred the Domain Name back to the Respondent.  
•	All the Respondent wants to know is who signed the transfer form in his name.

In the Complainant's reply, it says that:

•	The Respondent registered the Domain Name on instructions from the Complainant but they did not realise at the time he had registered it in his own name. 
•	The Complainant ran in parallel with Total Loft Conversions until Total Loft Conversions was dissolved in November 2004 and the Respondent worked for both companies with his employment being was continuous between the two companies. 
•	When the Respondent resigned he was requested to transfer the Domain Name to the Complainant which he duly did and he was not threatened.
•	The Respondent has given no reason for why he should want to retain the registration of the Domain Name. 
•	The fact that the Respondent still has a copy of the Nominet transfer form is explained by the fact that when the Complainant did not receive a response from the first form sent to him another one was sent. 

7.	Discussion and Findings:

General

In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that: 

1.	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

2.	The Domain Name, in the hands of the Respondent, is an Abusive Registration.

These terms are defined in the Nominet DRS Policy 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.

•	Abusive Registration means 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.

Complainant’s Rights

The Complainant has traded under the name "The Loft Company" for more than two years and has advertised its services in Yellow Pages.  It says it has spent thousands on advertising and optimising its website and that is not challenged by the Respondent.  The sample advertisement provided in evidence also states "As featured on Channel 4's "Room for Improvement.""

It appears likely that as a result of this use and advertising the Complainant will have generated reputation and goodwill under its name which is identical to the Domain Name, excluding the .co.uk suffix. However, the DRS Policy makes it clear that the Complainant is unable to rely on rights in a name or term "which is wholly descriptive of the Complainant's business". 

This is not a point expressly relied on by the Respondent or addressed by the Complainant but it is still an issue that the Complainant has the burden of overcoming if it is to prove, on balance, that it has Rights upon which it can rely.  

The Complainant's business is that of designing and undertaking loft conversions in domestic houses. Is the name "The Loft Company" wholly descriptive of the Complainant's business?  I emphasis the word "wholly".  

The Complainant has not put forward sufficient evidence to show that if the name "The Loft Company" is, on its face, wholly descriptive it has nevertheless acquired a secondary meaning that is distinctive of its business over and above any other loft conversion business.  I will therefore approach this issue by deciding whether the name is, on its face, wholly descriptive of the Complainant's business.

Whilst it gets very close to it, I do not believe it is.  I am mindful that there several different meanings to the word "loft".  The most common may well be a reference to attic space in a building, but it can also refer to the slope or angle of something, as in the loft of a golf club, or to rise high into the air.  It is also a reference to the thickness of a fabric or yarn.  However, the DRS Policy refers to a name that is "wholly" descriptive of the Complainant's business.  It does not say "wholly and exclusively".  There is a difference in the meaning of the two words, as a name can in fact be wholly descriptive of several very different types of business.  Having said that, and on very close balance, I do not believe that "The Loft Company" is wholly descriptive of a company that designs and undertakes conversions to the attic space of domestic houses.  If the name in issue had been "The Loft Conversion Company", my view may well have been different.  

I find that the Complainant does have Rights in the name The Loft Company being a name or mark which is identical or similar to the Domain Name.

Abusive Registration

From the matters relied on by the parties in their submissions the following parts of paragraph 3 of the Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) and paragraph 4 (being factors which may be evidence that the Domain Name is not an Abusive Registration) are potentially relevant:

Paragraph 3 a. 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."

Paragraph 4 a i A "Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services."

There is a dispute between the parties as to whether the Domain Name was registered by the Respondent entirely by and for himself, or whether it was registered as a result of a relationship between the Respondent and the Complainant's predecessor in business, or as between the Respondent and the Complainant.  

I believe the most telling piece of evidence is the fact that the Respondent confirms that during May 2004 he was aware that there was talk about closing the Complainant's predecessor company down and starting a new company.  The Complainant company was then incorporated with its present name on 8 June 2004.  The Domain Name was registered by the Respondent on 22 June 2004.   

The Complainant's predecessor in business, Total Loft Conversions Limited, was not wound up until November 2004 and the Respondent's payslip dated 9 July 2004 states "the Employer" to be Total Loft Conversions Ltd.   It therefore seems on the evidence that the Respondent's employer at the time the Domain Name was registered was Total Loft Conversions Limited not the Complainant.  However, the concept of a relationship between the parties comprises more than just that of a strict employer/employee relationship.  The Complainant says that there was a period of tandem running of the two companies and that the Respondent registered the Domain Name on instructions from the Complainant.  

It is difficult to accept the coincidence of the Domain Name being registered with the exact name of the Complainant company two weeks after it was incorporated and a month after the Respondent was aware that there was talk about closing Total Loft Conversions Limited down and starting a new company.  On balance, I prefer the Complainant's evidence on the point i.e. that the Domain Name was registered by the Respondent on instructions from the Complainant.  The fact that the Respondent carried out those instructions is sufficient to have established a relationship between the parties which resulted in the registration of the Domain Name. 

In addition, it seems that the Complainant has been using the Domain Name, i.e. to resolve to its website.  There is an issue whether that use has been exclusive for the purposes of Paragraph 3 a. v of the DRS Policy.  The Respondent says that having registered the Domain Name in June 2004 he "made a website for loft conversions on this site which was up and running" which he then showed to Felix Wright of the Complainant who liked it.  Mr Wright was then told by the Respondent that he owned the website, but no more was said.  
That also raises the issue of whether, for the purposes of Paragraph 4 a. i A of the DRS Policy, before being aware of the Complainant's cause for complaint, the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a genuine offering of goods or services.
The Respondent does not give any more detail of what he means by having "made a website for loft conversions on this site" and the site having been "up and running".  I am told no more about it and it is not clear whether the website was ever active and live and if so whether it was in fact advertising the Complainant's business or another business and, if so, whether that could be said to have been in connection with a genuine offering of goods or services.
When Felix Wright was shown, by an employee of his business, a website for loft conversions utilising a domain name identical to the name of the Complainant's business, it would strike me as odd if nothing more was said by him other than that he liked the site if he was then told it was owned by the employee and in fact it had been advertising a competing business.  The Respondent accepts that at some time later "the website was not getting enough hits, so Felix Wright got a company in to modify the site, they asked me for passwords and login details to service the website, which I gave them as I had no time to work on the website".  It seems clear that the Domain Name was at least by then being used exclusively by the Complainant to resolve to its website.  
On the evidence before me, and on balance, I find that the Respondent has not used or made demonstrable preparations to use the Domain Name in connection with a genuine offering of goods or services before being aware of the Complainant's cause for complaint and that the Complainant has been using the Domain Name registration exclusively for the purposes of its website. 

There is a dispute as to whether the Respondent was paid by the Complainant for the original registration fees but I do not need to decide that issue as the Complainant has provided evidence that it paid the Respondent for the renewal fees for the Domain Name on 21 March 2006, and that has not been challenged by the Respondent. 
  
The Complainant alleges that Respondent seeks to benefit from the money spent by the Complainant on advertising and optimization of its website by diverting the website and enquiries to his own newly formed company.  There is nothing in the evidence to suggest that the Respondent has used his registration of the Domain Name to do this or even threatened to do this, but if he did so that would clearly be unfairly detrimental to the Complainant's Rights.  In fact, given the circumstances of this case, it is difficult to envisage a scenario whereby the Respondent could make use of the Domain Name, and thus take away the Complainant's ongoing exclusive use of it, without such use by the Respondent being unfairly detrimental to the Complainant's Rights. 

Having come to that conclusion, I do not need to address the issues raised by the Respondent in which he says that he signed a letter agreeing to transfer the Domain Name as a result of threats made by the Complainant and that his signature on a Nominet transfer form was forged. Those allegations are denied by the Complainant, but in any event I have been given insufficient detail of the allegations, and in particular the forgery allegation, nor provided with any of the relevant documents so I make no findings in relation to them.

Likewise, the Respondent's allegation that a representative of the Complainant has registered toploftcompany.net, being the name of the Respondent's competing business, is not an issue that is relevant to, or can be dealt with in, this complaint under Nominet's Dispute Resolution Service.   

8.	Decision:
For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the name The Loft Company, being a name or mark which is identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
In the circumstances I order that the Domain Name be transferred to the Complainant. 

Chris Tulley
21 November 2006