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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Forsey v Xi Software Ltd & Anor [2007] DRS 4113 (4 January 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4113.html Cite as: [2007] DRS 4113 |
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Nominet UK Dispute Resolution Service
DRS 4113
Terry Forsey v. Xi Software Limited / Mr John Collins
Decision of Independent Expert
Complainant: Terry Forsey
Country: GB
Respondent: Xi Software Ltd / Mr John Collins
Country: GB
forsey.org.uk ("the Domain Name")
The Complaint was submitted to Nominet on 11 October 2006. Hardcopies were received in full on 20 October 2006 and the Complaint was validated by Nominet and sent to the Respondent by post and by email both to postmaster@[the Domain Name] and to the administrative email address which Nominet held for the Respondent on the register database on 23 October 2006. The Respondent was informed in this correspondence that he had 15 working days, that is, until 14 November 2006 to file a response to the Complaint.
The Respondent filed a Response electronically on 26 October 2006 and hard copies were received on 27 October 2006. On 3 November 2006 an electronic Reply was received from the Complainant. Hardcopies of the Reply were received on 6 November 2006 and mediation was initiated by Nominet. Mediation was to take place between 9 and 23 November 2006. On 24 November 2006 Nominet wrote to the parties noting that it had not been possible to resolve matters by mediation and advising that if the Complainant paid the appropriate fees by 8 December 2006 the case would be referred to an independent expert for a decision. On 4 December 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 14 December 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 19 December 2006.
Identity of Respondent
Mr Collins, the Managing Director of Xi Software Limited (the company shown as the registrant of the Domain Name in the register database) has responded to the Complaint in a personal capacity. He asserts that the Xi Software Limited is incorrectly named as the Respondent due to an error at the point of registration and provides evidence that although that company is named as legal registrant, it was Mr Collins himself who paid for the registration in his personal capacity. This could be a matter of some importance in any given DRS case as the identity of a respondent might have a significant bearing on any number of issues that either a complainant or respondent might put forward. What does the Policy say about the Respondent's identity? The Respondent is defined in paragraph 1 of the Policy as "the person (including a legal person) in whose name or on whose behalf a Domain Name is registered and against whom the Complainant makes a complaint."
The Complainant here has directed his Complaint against Xi Software for obvious reasons as it was the registrant disclosed on the relative WHOIS. However, the wording of the definition can extend to a person on whose behalf a domain name is registered - this would include Mr Collins (although the Complainant did not actually make this Complaint against him). In the present case, the Expert has decided to treat the Respondent as Mr Collins for two reasons (1) this does not appear to cause any particular prejudice to the Complainant and (2) much more importantly, it is clear that the Complainant was well aware of Mr Collins' assertions on this topic prior to filing the present Complaint. Mr Collins explains in his Response that the Domain Name was the subject of an earlier complaint brought by the present Complainant and that he had already explained his position on the legal registrant issue in response to that complaint. This original complaint was withdrawn by the Complainant before it was issued to an expert for decision.
The Complainant is a self-employed sales and marketing coach. The Respondent, John Collins, is the managing director of Xi Software Limited.
The Complainant was engaged by Xi Software Limited in April 2005 to provide various services. Both parties agree that a dispute arose in January 2006 in connection with an invoice rendered by the Complainant to Xi Software Limited.
The Domain Name was registered by the Respondent John Collins using his personal credit card on 24 February 2006. At some point after registration, a website was associated with the Domain Name via the url www.forsey.org.uk. This site's content is limited to a single page as follows:-
"Terry Forsey
"Here is a link to his mugshot.
[linked photograph of Mr Forsey]
"Please watch this space for information about Terry Forsey.
"You can find his website here. [link to Complainant's website: www.forsey.info]
"If you want to find out the reasons for this website, go here first, [link to Complainant's website - www.forsey.info/testimonials] and/or complete this form:"
[web form with name, address and message input fields]
Complainant
The Complainant asserts that the Domain Name in dispute is identical or similar to a name or mark in which he has Rights and that the Domain Name in the hands of the Respondent is an Abusive Registration.
The Complainant states that Terry Forsey and Forsey are his personal, business and brand names and that he is the registrant of the following domain names:- forsey.info, forsey.com, forsey.biz, forsey.ws, forsey.cc, forsey.gb.com, forsey.me.uk, forsey.tv, forsey.uk.com, forsey.co.uk and forsey.net.
The Complainant submits that the Respondent registered forsey.org.uk with the intent of publishing details of the disagreement between the parties. The Complainant asserts that the Respondent has refused to remove the content, including an image of the Complainant which is the Complainant's copyright. The Complainant also states that the Respondent Mr Collins has taken no steps to change the legal registrant on the Domain Name from Xi Software Ltd.
The Complainant submits that the Respondent has taken technical steps to block the Complainant from viewing the site, while leaving it open for others, by diverting the Complainant's computer to the Complainant's own site at www.forsey.info, possibly by recognising the Complainant's IP address. The Complainant states that he complained to the Respondent's solicitors in March 2006 about the site content and that he believed that it was removed thereafter, although in fact what had happened was that the block had been imposed by the Respondent.
The Complainant submits that the Respondent has promoted the site associated with the Domain Name within the popular Internet search engine Google. The Complainant states that he became aware that the Respondent had not in fact deleted the content on the associated site when he identified its high Google ranking; at the time of the Complaint, the Complainant asserts that the site appears at no. 1 for the search phrase "Forsey" and at no. 3 for "Terry Forsey".
The Complainant submits that the Respondent Mr Collins is a self proclaimed Linux Hacker [conform to his membership profile on the Yahoo! member directory] who is passing himself off as the Complainant by using the Complainant's personal and business name. The Complainant asserts that the Respondent is seeking to cause confusion in the minds of the public and to attract potential customers away from the Complainant's website. In support, the Complainant provides evidence of 28 clicks through to the Complainant's own site from the website associated with the Domain Name since its inception. The Complainant also provides evidence that this equates to 32% of visitors searching and clicking through to his own site using either "Terry Forsey" or "Forsey" in the same period. The Complainant further asserts that the Respondent registered the Domain Name to unfairly disrupt the Complainant's business.
Finally, the Complainant also points to a website headed "Listing of Internet Stalkers, Intellectual Property Thieves and Internet Libelers" which appears to contain an entry in respect of the Respondent Mr Collins in which the author of the site names the Respondent as an "intellectual property thief".
Respondent
The Respondent, John Collins, requests that no action be taken in respect of the Complaint. He asserts that Xi Software Ltd has been incorrectly named as Respondent (see section 4 above under heading "Identity of Respondent"). The Respondent also states that he had no intention to deceive regarding the legal registrant name, that he has attempted to change this to his personal name without success and that he paid for the registration fee personally through an account with his registrar that is in his personal name.
The Respondent states that the Complainant has not provided evidence that he has special rights to domain names containing the name "Forsey". The Respondent adds that almost none of the Complainant's allegations regarding the consequences of the registration are in any way contingent on the domain name containing "Forsey" and this demonstrates that the Domain Name is not abusive.
The Respondent denies that the registration of the Domain Name is abusive and explains that it was made for non-commercial reasons with no intent to divert or disrupt the Complainant's business but with the intention of criticising the Complainant for non-commercial purposes, a circumstance which the Respondent contends places the use of the Domain Name within the criticism/fair use provision of paragraph 4(b) of the Policy. The Respondent adds that the Complainant has provided no evidence of disruption to his business.
The Respondent denies publishing any material which is the copyright of the Complainant and explains that he is providing a randomly-selected link to one of a number of alternative websites containing the Complainant's image. The Respondent also asserts that the presence of the image is irrelevant to the question of whether the registration is abusive.
The Respondent admits that he blocked the Complainant's access to the website associated with the Domain Name but asserts that the Complainant is being untruthful when he states that this blocking came to light at a later stage. The Respondent asserts that the Complainant had known of the blocking for some time as he accessed the site via a series of proxy IP addresses and had also discussed it with a potential client prior to 6 June 2006. This potential client had also corresponded with the Respondent. The Respondent asserts that the Complainant also engaged in IP address blocking against the Respondent and states that in any event the IP address blocking is irrelevant to the question of whether the registration is abusive.
The Respondent denies that he has taken any action to promote the site on Google (beyond the automatic notification of new domain registration that his registrar provides). He argues that if he was able to achieve such high rankings he would have done so with his own company's site. In any event, the Respondent asserts that Google listings are not evidence that the Respondent has taken any action to raise the profile of the site or that the registration of the Domain Name is abusive.
The Respondent states that the Complainant's allegations and conclusions in respect of his being a "self-proclaimed Linux hacker" are irrelevant to the question of whether the registration at issue is abusive.
The Respondent denies passing himself off as the Complainant as the references to the Complainant on www.forsey.org.uk are all in the third person. He also denies attracting potential customers away from the Complainant's site and asserts that the site is not a commercial one. The Respondent states that he is not in the same line of business as the Complainant and would be unable to provide potential customers with the same services as the Complainant. The Respondent adds that the Complainant has provided no evidence of confusion in the minds of visitors to the site.
The Respondent asserts that as the website associated with the Domain Name contains two links to the Complainant's own site which does not rank highly with Google, the Domain Name is contributing rather than detracting from the Complainant's business (given its higher ranking).
The Respondent submits that the Complainant's allegation regarding the 28 clicks through representing 32% of the visits to the Complainant's site is not supported by the evidence provided and that 28 clicks through out of approximately 2,000 are not evidence of diversion of business. The Respondent argues that these visits would not have been made without the existence of the Domain Name due to the Complainant's own site's low positioning on Google.
The Respondent asserts that the allegations regarding stalking and libelling, which he notes were made by a person in Utah, USA in December 2005, are of no possible relevance to the Complaint.
Complainant's Reply to Response
The Complainant reasserts his copyright in the image on the site. The Complainant states that the Respondent is publishing the image on that site because he has control over the link to the picture. The Complainant states that he has received advice that this does indeed constitute a breach of copyright and also asserts that this is a relevant component of the abuse of the Domain Name.
The Complainant asserts that the Respondent has not submitted any evidence that the Complainant has visited the site associated with the Domain Name since the Respondent applied the block and that the Respondent has provided no evidence of the Complainant having placed the alleged access block on his own website at www.forsey.info.
The Complainant explains that he did not raise the subject of the potential client in his Complaint in order to maintain that person's confidentiality. The Complainant asserts that it was as a direct result of communication with the Respondent that the potential client decided not to engage the Complainant.
The Complainant asserts that Google's own guidelines indicate that the Respondent must have taken positive action with regard to the Google ranking obtained for the website associated with the Domain Name. The Complainant submits that this ranking is relevant as it has enabled the Respondent to confuse search engine visitors, attract traffic to the site and encourage communication with the Respondent whereupon the Respondent then encourages communicants not to do business with the Complainant.
The Complainant points out that the Respondent has provided no evidence of his attempts to change the legal registrant name assigned to the Domain Name.
The Complainant states that he accepts that the Respondent is not passing himself off as the Complainant but asserts that the Domain Name and the associated site purports to represent the Complainant and seeks to confuse search engine visitors and attract them to the site in the expectation that it is the site of the Complainant.
The Complainant denies that the website associated with the Domain Name has contributed to his business and asserts that he has received no sales enquiries from any visitor to his own website that have come via the Domain Name.
The Complainant acknowledges that while 32% of the visitors to his own site using either "Forsey" or "Terry Forsey" have come from the Domain Name this represents a small proportion of overall traffic to his own website. However, the Complainant asserts that there are two different types of traffic attracted to his site - traffic arising from searches for relevant terms, generated by the Complainant's keyword advertising, and traffic arising from direct searches for his name and the name of his business generated from referrals and networking contacts; the Complainant alleges that this latter form of traffic is being disrupted by the Respondent's use of the Domain Name.
The Complainant asserts (and presents evidence seeking to demonstrate) that a further 7 visitors have now visited his own website via the Domain Name and that the rate of click through has increased as the Google presence has grown.
The Complainant asserts that the negative comment about the Respondent on the US website is indicative of his having observed a pattern of behaviour. The Complainant concludes that the Domain Name has had a negative commercial effect upon his business and asserts that the Respondent has provided no satisfactory answers to the Complaint.
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 Name; and
(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration.
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 the Domain Name.
Complainant's Rights in the name 'FORSEY'
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.
Here, the Complainant is effectively claiming Rights in his surname. Meanwhile, in the Response, the Respondent asserts that the Complainant has failed to provide evidence of any such Rights. While Forsey is the Complainant's surname, and contrary to the position for example in Tahir Mohsan v. Greg Bond (DRS00693), the Complainant does not use his surname in a personal sense alone. It is clear to the Expert that the Complainant has used his surname in the course of trade for some time (albeit an indeterminate period) in that he has incorporated his surname in the domain name forsey.info (according to the WHOIS print produced by the Complainant, this domain name was registered in November 2001) which he has associated with his own commercial website for the promotion of his various technology sales and marketing services. The Complainant's submissions and evidence also make it clear that he promotes this commercial website with various marketing activities, notably the use of keyword advertising. The testimonials on the Complainant's website furthermore demonstrate that an element of trading goodwill has been generated by the Complainant in his surname (given that it is the focal point of the URL) which, in the Expert's mind, is more than likely to be protectable by action of passing off.
In these circumstances, the Expert considers on the balance of probabilities that the Complainant does indeed have unregistered rights in the name FORSEY that are sufficient to constitute Rights under the Policy. Furthermore, it is clear that this name is not in any way descriptive of the services provided by the Complainant.
The remaining question therefore is whether the name or mark is identical or similar to the Domain Name. The first (.uk) and second (.org) levels of the Domain Name can be disregarded as being wholly generic. The Expert is then left with a comparison between the name 'FORSEY' and the third level part of the Domain Name 'forsey'. Accordingly, the Expert finds that the Complainant has Rights in a name which is identical to the Domain Name.
Abusive Registration
Is the Domain Name, in the hands of the Respondent, an Abusive Registration? 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. In addition, there is a similar list of factors which may be evidence that the Domain Name is not an Abusive Registration in paragraph 4 of the Policy.
It is clear from the parties' submissions that there is no love lost between them, that there has been something of an online battle involving alleged blocking and counter-blocking of IP addresses, and that most importantly the registration of the Domain Name directly results from the original commercial dispute. As is often the case, given the acrimony between the parties, it has been difficult to extract from the submissions those that have a direct bearing on the question of Abusive Registration. Nevertheless, the Expert believes that the Complainant's submissions can be reduced in essence to the following points:- (1) there is an alleged breach of copyright by the Respondent regarding use or linking to the Complainant's photograph; (2) the Respondent has blocked the Complainant's IP address, making it look as though the website had been taken down; (3) there has been an attempt by the Respondent to divert traffic intended for the Complainant's own website via active promotion of the Domain Name and associated site on Google; (4) the Respondent's motivation can be called into question in so far as he lists his occupation as 'Linux hacker' and has been accused on a website of Internet stalking and intellectual property theft; and (5) the Respondent has disrupted the Complainant's business and caused confusion among users of the Complainant's services.
With regard to the alleged breach of copyright in the photograph published on or through the website associated with the Domain Name this is not something with which the Policy is concerned and it would clearly not be appropriate for the Expert to attempt to determine whether or not the Respondent has breached the copyright of the Complainant. As the present Expert noted in Sante de Suisse (Australia) Pty Limited v. Bauhinia International (DRS 3409) lengthy submissions regarding alleged misappropriation of intellectual property and the circumstances whereby a Respondent might legitimately or illegitimately have come by material which may or may not be subject to the copyright of the Complainant are not helpful to a consideration of the question of Abusive Registration under the Policy. Clearly if there is a breach of copyright the Complainant will have remedies available in a court of competent jurisdiction.
The Expert agrees with the Respondent that the alleged IP address blocking is not relevant to the question of Abusive Registration in this case. It may well be that the Respondent took steps to prevent the Complainant from viewing the site through his own IP address as part of the ongoing dispute between the parties but clearly this activity is not in itself a use of the Domain Name which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights.
The Expert is not in a position to determine whether or not the Respondent has actively promoted the website associated with the Domain Name to the Google search engine. Even if he had, the Expert does not consider that this in itself is indicative of any abusive use of the Domain Name. Furthermore, the Expert also does not consider the submissions regarding the Respondent's character or motivation as particularly relevant to the question of abusiveness. Clearly in a case such as this both parties are more than likely to attack the character of the other. What matters, however, is the motivation of the Respondent in registering the Domain Name and/or how he has used it subsequently. While the character of a Respondent may assist in the question of his motivation for making certain domain name registrations, the Expert does not consider that there is any assistance to be derived from (1) the Respondent's choosing to describe himself (possibly in seriousness, perhaps more likely somewhat tongue-in-cheek) as a 'Linux hacker' or (2) the Respondent having been described by an anonymous third party as an 'intellectual property thief' without any further explanation as to the reasons behind this allegation.
In fact, the motivation of the Respondent is agreed by the parties in their submissions. Both parties acknowledge that the original purpose of the Domain Name's registration was for criticism of the Complainant following a business disagreement. The Complainant however asserts that the actual use of the Domain Name has disrupted his business and has (or is likely to) confuse his potential clients, while the Respondent submits that that use of the Domain Name constitutes fair non-commercial use for criticism purposes. This in the Expert's view is the central question in the present dispute.
Effectively, the Complainant is relying on two factors under paragraph 3(a) of the Policy to demonstrate that the Domain Name is an Abusive Registration: -
"i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
[…]
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;"
Meanwhile, the Respondent relies on paragraphs 4(a)(i)(C) and 4(b) of the Policy to demonstrate that the Domain Name is not an Abusive Registration:-
"i. Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has
[…]
C. made legitimate non-commercial or fair use of the Domain Name;
[…]
b. Fair use may include sites operated solely in tribute to or criticism of a person or business."
If the Respondent's website is a criticism site this does not of itself render the Domain Name an Abusive Registration. As the expert noted in Clydesdale Conservatories Limited v. Desmond Lawton (DRS 03161):
"Subject to certain legal constraints, freedom of speech applies in the UK and critical comments on a website, provided that they are not deliberately and knowingly false, cannot properly be said to be "unfairly" detrimental to the Complainant's Rights. Similarly, criticism of itself cannot be said to have "unfairly" disrupted the business of the Complainant. To succeed under the Policy, something further must be shown if there is to be a finding of an Abusive Registration."
In the present case, the website associated with the Domain Name is not identifiable as a criticism site whatever might have been the Respondent's original plan for it. On this basis alone it might be argued that it does not fall within the wording of paragraph 4(b) of the Policy as in no way could it be described as being operated "solely in …criticism of a person or business" (Expert's emphasis). The full text of the site is noted in the Factual Background above, from which it may be seen that there is no actual or even implied criticism of the Complainant, unless one finds the use of the term 'mugshot' derogatory, nor in the Expert's view would any visitor be likely to understand that he had reached a site that was intended to be critical of the Complainant. Instead the site appears to fall somewhere between an official site for the Complainant (given that it links to the Complainant's official site without comment) and some form of information site about the Complainant.
The Respondent focuses on the fact that the references to the Complainant on the site are in the third person and in reply the Complainant appears to acknowledge that the Respondent is not passing himself off as the Complainant. In the Expert's view this does nothing to dispel any confusion - the use of the third person on websites and marketing materials is quite common and neither this nor the actual wording leads to any definite conclusion that the site is operated by a third party who is seeking to criticise the person referred to. In the Expert's view the present content is highly likely to lead to confusion on the part of visitors to the site who may believe that the Domain Name is authorised by or otherwise connected with the Complainant. While paragraph 3(a)(ii) of the Policy is directed to actual confusion, the factors in paragraph 3 are expressed to be non-exhaustive and in the view of the Expert and many other experts in previous DRS cases a likelihood that confusion may result is also relevant to the question of Abusive Registration.
Likely confusion generated by the present content of the site is not the only issue here. It is clear that the Domain Name is identical to the trading name of the Complainant, such that by its adoption the Respondent could reasonably be said to be impersonating the Complainant. Visitors to the website associated with the Domain Name will be expecting to find the Complainant's site rather than the Respondent's, regardless of whether any such confusion might subsequently be dispelled by critical content. In that sense the Domain Name in the hands of the Respondent can reasonably be seen as inherently likely to lead to confusion. It is therefore the Expert's view that the Domain Name has been used in a manner which is unfairly detrimental to the Complainant's Rights.
As with the decision in Clydesdale Conservatories, it is worth expressing the fact that the Expert does not seek to curtail the right of the Respondent to express views that may be critical of the Complainant and this decision should not be seen in any way as a finding against the right to freedom of speech. Such rights are subject to limits imposed by intellectual property law and the law of defamation among others, together with any limits that may be imposed by the operation of the DRS Policy. The Respondent in the present case has, by the registration of the Domain Name, effectively chosen to identify himself directly with the Complainant's established trading style in a way that is inherently likely to cause confusion, and he has gone on to publish content on the site that adds to, rather than detracts from this likelihood. It is this that renders the Domain Name an Abusive Registration rather than any expression of critical views per se.
The Expert finds, on balance of probabilities, that the Complainant has proved that he has Rights in a name or mark identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the Domain Name be transferred to the Complainant.
Andrew D S Lothian
4 January, 2007