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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> C-Technics Subsea Video Systems v Brown [2006] DRS 4309 (15 June 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4309.html Cite as: [2006] DRS 4309 |
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Decision of Independent Expert
Complainant: C-Tecnics Subsea Video Systems
Country: GB
Respondent: SKand D, Mr Stephen Brown
Country: GB
colourwatch.co.uk (the "Domain Name")
The complaint was entered on to the Nominet system on 27 February 2006. Nominet validated the complaint on 28 March 2006 and on the same day despatched a copy of the complaint to the Respondent. The Respondent responded in a letter received in hard copy by Nominet on 18 April 2006. The Complainant replied to the response on 26 April 2006. On 16 May 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 deadline for a Complainant to submit a reply (if he so chooses) is within five working days of receiving the Respondent's response (paragraph 6(a) of the Dispute Resolution Service Procedure (the "Procedure")). The Complainant was sent the response by post and email on 18 April 2006 but had not replied by close of business on the due date, 25 April. A reply was then received by Nominet the following day, 26 April.
The reply by he Complainant was therefore out of time. Paragraph 12 of the Procedure gives the Expert the ability to extend any period of time in exceptional cases. No explanation of the delay was provided nor does the file supplied by Nominet indicate any exceptional reason for the late filing. In the absence of any exceptional circumstances, my discretion to extend the deadline and allow the reply into the case does not arise. I have not, therefore, taken the reply into account in this decision.
The Domain Name, colourwatch.co.uk, is registered in the name of "SKandD". The Respondent, SKandD, appears to be Mr Stephen Brown trading alone or with others as SKandD. It is not clear what business Mr Brown or SKandD undertake.
The Complainant is a business trading from a base in St Catherine's, Argyll, Scotland. Its business is in the sale of subsea video equipment including video equipment sold under the name "colour watch". The Complainant has been trading in subsea video equipment for approximately 16 years. The Complainant trades, in part, through its website at www.subseavideo.co.uk.
The website at www.colourwatch.co.uk is, at the date of writing this decision, a holding page stating that the name has been registered by www.names.co.uk. As at 28 March 2006, the print taken from Nominet's file shows a site that stated the following:
"colourwatch.co.uk FOR SALE
colourwatch.co.uk is for sale
Contact:[email protected]
Please email for details
Internet solutions provided by Namesco Limited – Tuesday 28 March 2006".
On 10 February 2006, Stephen Brown sent an email to Mr Crawford Grier of the Complainant to the email address [email protected] stating as follows:
"Crawford.
Sorry for the delay.
I have all the relevant information for the transfer and admin of Colourwatch.co.uk Domain Name. The cost for the ownership, transfer and admin fees will be £580. Please let me know if you agree to this and I will start the ball rolling. Thanks. Regards Steve.
The Complainant has not referred to any registered trademarks and I will, therefore, proceed on the basis that it does not have any registered trademarks of relevance to this complaint.
The Parties' Contentions
Complainant:
The Complainant states that it has used the name "colourwatch" in relation to its range of over 12 products for the past 16 years. The Complainant states that the name is well known and respected internationally with products sold in over 28 countries and to 14 naval organisations.
The Complainant states that the Respondent has offered the Domain Name for sale including to the Complainant's continental agents. The Complainant states that this has caused confusion to its agents and customers and that competitors are using this to their own advantage.
The Complainant states that approximately 18 months ago Mr Stephen Brown, said to be a proprietor of SKandD, was engaged to assist in fulfilling a naval contract. The Complainant states that it was agreed that after completion of the naval contract, Mr Brown would update the Complainant's website. In this timeframe, the Complainant states that Mr Brown was viewed as a candidate for a position as Workshop Manager and, as such, given access to the Complainant's confidential information.
Mr Brown's appointment as Workshop Manger was, says the Complainant, essential to a plan to sell and relocate the Complainant's business. The Complainant states that two days before the sale was to have gone ahead, Mr Brown said that for personal reasons he would not be making the move and immediately left. The Complainant states that the sale of the business did not then go ahead.
In relation to the question of Abusive Registration, the Complainant asserts the following:
- at least two other businesses (not named in the complaint but local to the Complainant) have found themselves in an identical situation as a result of involvement with Mr Brown of SKandD;
- the Domain Name was deliberately acquired by the Respondent to profit from the Complainant's company confidential information;
- the cost of the offered transfer of the Domain Name is inflated; and
- the Domain Name was offered for sale to the Complainant's French agent, M. Willie Ronan by the Respondent.
Respondent:
The Respondent states that he registered the Domain Name in accordance with an agreement he had reached with Mr Crawford Grier of the Complainant. The terms of that agreement are said to be as follows:
- domain names registered by the Respondent on behalf of his clients belong to the Respondent;
- the webspace provided by the Respondent also belongs to him but is provided by a third party, Namesco; and
- the Complainant was to pay an annual fee for the Respondent's services to create and update a website around the sale of the Complainant's products.
The Respondent states that he completed the purchase and initial setup of the website but due to his marriage break-up did not generate an invoice before he had to return to his parents' home in England. The Respondent says he spoke with Mr Grier of the Complainant about the money said to be owed for registering the Domain Name and initial website set-up and agreed that he would afterwards send an email of the cost, being £580.
The Respondent states that he would transfer the Domain Name and transfer fees free of charge if the Complainant would pay what the Respondent says he is owed.
Complainant's Rights
The Complainant annexes copies of promotional materials for its products. These show a long term use of the term "Colourwatch" for certain of the Complainant's products. Whilst "colourwatch" as a trade mark for colour video equipment may have certain descriptive elements, it has 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 Colourwatch name 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 the name is well known and respected in over 28 countries.
In the specific field of use in question, I believe the evidence put forward by the Complainant is sufficient to establish Rights in the name COLOURWATCH.
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."
This case is one which is not ideally suited to the Nominet DRS policy. There is clearly a dispute of fact as between the Complainant and Respondent as to the basis upon which the Domain Name was registered. The Complainant says that the Domain Name was registered with a view to holding the Complainant to ransom in relation to a proposed sale of the Complainant's business. The Respondent says that the Domain Name was registered as the result of an agreement between the Complainant and the Respondent to the effect that the Respondent should register the Domain Name for the Complainant's use but with the registered proprietor being the Respondent.
Whilst it is difficult to resolve this factual dispute with only the benefit of short paper submissions by both parties, I prefer the account of events given by the Complainant. My reasons for this are as follows.
(a) The arrangement described by the Respondent is, so far as I am aware, a rather unusual one with the paying party having no right in the Domain Name itself. Given that this is an unusual arrangement, I would have expected to see some more cogent evidence than simply the Respondent's assertion.
(b) The Respondent has clearly mis-stated the position in relation to his demand for a payment of £580 in the email I have set out above. The Respondent states in his response in this DRS complaint that the email was a request for £580 in relation to his time spent in creating the website. This is quite clearly not what the email says. The email states:
"I have all the relevant information before the transfer and admin of colourwatch.co.uk Domain Name. The cost for the ownership, transfer and admin fees will be £580"
There is no mention in the email of the money being for website design. It is quite clear that the money being requested is in relation to transfer of the Domain Name not for any web design work. This clear mis-statement by the Respondent brings into question the veracity of the other statements made in his response.
(c) The offer for sale of the Domain Name to the world at large via the website at www.colourwatch.co.uk is inconsistent with Mr Brown's account of events that all he was seeking was payment for time spent in website design.
On this basis, I conclude that the Complainant's account of events should be preferred.
It is also my opinion that this is an Abusive Registration in the hands of the Respondent for the following reasons:
- The Respondent has disclosed no legitimate, credible reason for registration of the Domain Name.
- From the materials supplied to me, it is also clear that the Respondent has offered the Domain Name for sale to the world at large.
- There is also the uncontested allegation of the Complainant is that the Respondent also offered the Domain Name for sale to the Respondent's continental agent.
- The Respondent has, further, sought the sum of £580 from the Complainant in respect of, as the Respondent put it in his email, "ownership, transfer and admin fees" for the Domain Name.
The facts of the case, insofar as they can be ascertained, indicate to me that the Domain Name was registered with a view to selling it either to the Complainant or to a third party for a sum considerably in excess of the registration fee. This would take unfair advantage of, and would be unfairly detrimental to the Complainant's Rights. It is also a specific head of evidence of Abusive Registration provided for by the DRS Policy (Paragraph 3(a)(i)(a)).
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 "colourwatch". 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