Nominet UK Dispute Resolution Service

DRS 4247

Ductwork UK Ltd v. Mark Knight

Decision of Independent Expert
1.	Parties

Complainant:	Ductwork UK Ltd		
Country:		 GB

Respondent:		Mark Knight
Country:		GB

2.	Domain Name

2.1.	ductworkukltd.co.uk  (the “Domain Name”).

3.	Procedural Background 

3.1.	Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service (“DRS”) Policy and Procedure, Version 2 of September 2004 (“the Policy” and “the Procedure” respectively).

3.2.	Nominet received the hardcopy Complaint in full, with evidence, on 23 November 2006, validated it and sent it to the Respondent on 27 November 2006, advising the Respondent he had 15 working days to submit a Response.  It was sent by post and by email to mknight@ductworkukltd.co.uk and postmaster@ductworkukltd.co.uk.
3.3.	 The Respondent contacted Nominet the following day and provided a new email, mknight@roberthurstltd.co.uk, and postcode to which the Complaint documents were then resent.  The Respondent was granted a 2 day extension and the Response was due on 21 December 2006.  The Response was duly submitted and both parties were advised the Complainant had 5 working days to reply, until 2 January 2007.  On the 3rd both parties were advised the deadline for a reply had passed. On 4 January 2007, the Complainant advised Nominet it had mistakenly believed it had a 2 day extension.   In accordance with paragraph 5(d) of the Procedure, on 26 January 2007, both parties were advised the dispute would be referred to an independent expert on payment of the requisite fee, within the specified time period, and Nominet duly received the fee on 9 February 2007.  

3.4.	Confirming there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I was appointed as the independent expert in this dispute on 16 February 2007. 

3.5.	The Complainant lodged a non-standard submission on 12 February 2007, under 13b of the Procedure, and exercising the powers under that provision, I allowed it into evidence.  On 14 February 2007, I requested the Respondent   respond to that submission by 16 February 2007, which it duly did.  I also sought a confirmation, within the same time period, from the Complainant that the Domain Name was not the subject of current or pending legal proceedings and that was also duly provided. 

      
4.	The Facts

4.1.	The Complainant is a Ductwork recruitment agency. It commenced trading in January 2006 and was incorporated on 20 January 2006.  Its website is at www.ductworkukltd.co.uk.  Its registered company name is Ductwork (UK) Ltd and it trades as Ductwork UK Ltd.
 
4.2.	The Respondent was a director and secretary of the Complainant from 20 January 2006 to 2 November 2006. This is evidenced by the Company Search provided to me by Nominet.  The Respondent was also an employee of the Complainant from 1 April 2006 to 1 November 2006 –based on his own admission in an ET1 he filed in the Employment Tribunal in January 2007, submitted by the Complainant.     

4.3.	From the Register and the WHOIS database information provided to me by Nominet, the Respondent registered the Domain Name on 13 January 2006.       

            

5.	The Parties’ Contentions

Complainant

5.1.	 The Complainant says it has rights in a name or mark identical or similar to the Domain Name and that in the hands of the Respondent, the Domain Name is an Abusive Registration.  

5.2.	As to Rights, the Complainant relies on its use of the name in trade since its incorporation.  It has submitted some promotional materials and evidence of its spending on advertising in the papers and points to its turnover (although the attachment with those figures was omitted).  

5.3.	 As to Abusive Registration, the Complainant says the Domain Name in the hands of the Respondent is abusive under §3aiV of the Policy as the Domain Name was registered as a result of a relationship between the parties and the Complainant has exclusively used the Domain Name and paid for the registration.   In its own words “Although it has been registered in his name it has only functioned for Ductwork UK Ltd and been paid for by the Ductwork UK Ltd.”  It alleges the Respondent has tried to have the hosting service release the name to him to enable him to assume its email addresses and custom. 

5.4.	In the non-standard submission, the Complainant points out inter alia the Respondent had no trading entity at the time of the registration.   

Respondent

5.5.	The Respondent says he purchased the Domain Name and dukltd.com in his personal capacity, for his own use, and lent them to the Complainant only on a temporary basis until the Complainant purchased it from him (“I lent them to the company my company (sic) as a director of the company (Ductwork UK Ltd) was (sic) a temporary arrangement until the domains were purchased from me by the company.”).  The Respondent says that his new company DUK (Contracts) Ltd, trading as “ductwork uk”, has a Construction Industry Card in its  company and trading name and is recognised by Companies House, the Revenue, the DTI and the Department of Work and Pensions.  The Respondent further says its customers and suppliers are confused and the Domain Name in the hands of the Complainant is an instrument of fraud and passing-off.           

6.	Discussion and Findings

General

6.1.	The DRS is designed as a fast, simple alternative to litigation.  Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy.  

6.2.	Paragraph 2(a) of the Policy requires the Complainant to prove 2 elements: 

   	  “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.”

The Complainant bears the onus of proof and must prove both elements on the balance of probabilities.  As mentioned above, even where no Response is submitted, the Complainant must meet this burden. 

6.3.	The DRS’s jurisdiction is limited to these issues and the remedies of cancellation, suspension, transfer or amendment of the Domain Name.  The Policy does not provide for the determination of allegations of trade mark infringement or passing-off proper.

Complainant’s Rights

6.4.	Rights under the Policy include rights to registered and unregistered trade marks and names and contractual rights to the same.  Rights enforceable under the law of passing-off are protected.  This is not a high threshold and I find that for these purposes, the Complainant has rights arising from its use of the name in trade.    

6.5.	Paragraph 2(a)(i) of the Policy requires that the name or mark in which the Complainant has Rights “is identical or similar to the Domain Name.”  In determining this, suffixes are to be ignored.  We are therefore comparing the relevant aspects of the Domain Name, namely “ductworkukltd” with the name and mark, “Ductwork UK Ltd”. Case is irrelevant as are spaces.  I am satisfied the Complainant has Rights in a mark identical to the Domain Name.     

Abusive Registration

6.6.	The second element the Complainant must prove under §2(a) of the Policy, is the Domain Name is an Abusive Registration, defined in §1 thereof.  §3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration.  Conversely, §4a of the Policy provides a non-exhaustive list of factors which may evidence that a registration is not an Abusive Registration.     

6.7.	The Complainant’s case, as stated, appears to rest primarily on §3aiV of the Policy which provides:     

“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.”

6.8.	As to the relationship between the parties, the Respondent himself states (“I lent them to the company my company (sic) as a director of the company (Ductwork UK Ltd) was (sic) a temporary arrangement until the domains were purchased from me by the company”) (emphasis added).  The understanding appears to have been therefore that the Respondent registered the Domain Name as a director of the Complainant, which was to purchase the Domain Name from him.  In other words, the Respondent purchased the Domain Name on the Complainant’s behalf. 

6.9.	I also note the Complainant was incorporated on 20 January 2006, and on the same day the Respondent was appointed as a director.  Some 7 days earlier he had registered the Domain Name.  Whether as a promoter of a company to be incorporated, or as a director pending formal appointment, at that point, he owned the Complainant fiduciary duties, including the duty of good faith, the duty not to make a secret profit, not to put himself in a position where his interest and duty conflict, and not to misappropriate company property.   A private registration in his personal capacity would have been incompatible with those duties.  

6.10.	 As to the 2 limbs of §3aiV of the Policy, the Complainant says “Although it has been registered in his name it has only functioned for Ductwork UK Ltd and been paid for by the Ductwork UK Ltd.”  On one reading this suggests both limbs are satisfied as the Complainant made exclusive use of and paid for the Domain Name.  The Respondent does not contradict the first limb.  §3aiVA is not therefore in issue.  As to B, the Complainant says it paid.  It is not clear whether this is for the hosting or the registration fee however.  It may mean it reimbursed the Respondent.  The best evidence would have been receipts or expense statements but these have not been submitted.  The Respondent says he “purchased” the Domain Name, but he does not expressly say he was not reimbursed.  I cannot determine this on the evidence submitted and make no finding under limb B. The factors are however non-exhaustive and I can make a finding without meeting the strict terms of the factor.      

6.11.	§4aiii of the Policy provides it may be evidence of a non-abusive registration in relation to §3aiV, that the “Registrant’s holding of the Domain Name is consistent with an express term of a written agreement between the parties.”  The Respondent’s own evidence is that he purchased it in his capacity as a director and there was an understanding or agreement, although oral, that the Complainant was to purchase the Domain Name from him.  That oral understanding may have contained terms, express or implied, prohibiting the Respondent from retaining the Domain Name on termination of his relationship with the Complainant.  Even the Respondent does not appear to advance a positive case that his current holding of the name is the subject of an agreement between the parties.  I make no finding on these issues.    

6.12.	I find the registration by the Respondent was not abusive at the point of registration.  It was as a result of the relationship between the parties, their understanding and was on behalf of the Complainant.  However, I find that for the Respondent to now retain the Domain Name, in light of the Complainant’s use to date, would be abusive.  It may also give rise to a civil claim in passing-off against the Respondent.    
  
6.13.	For the sake of completeness, I note that the Respondent appears to advance the proposition that he has legitimate rights in a name identical or similar to the Domain Name, whether under §4ai of the Policy or otherwise, when he says that his new company DUK (Contracts) Ltd, trading as “ductwork uk”, has a Construction Industry Card in its company and trading name and is recognised by Companies House, the Revenue, the DTI and the Department of Work and Pensions.  Under English law, neither the incorporation of a company under a name, nor any of the other matters relied on, give rise to rights to prevent others using a name.  The law of passing- off protects goodwill and reputation arising from use and although this proceeding is not concerned with determining passing-off, it appears the Complainant may well have a case in passing-off against the Respondent.      

7.	Decision

7.1.	I find that the Complainant has Rights in a mark which is identical to the Domain Name, which is an Abusive Registration in the hands of the Respondent.  Accordingly, the Domain Name should be transferred to the Complainant.    

Victoria McEvedy

 7 March 2007