Nominet UK Dispute Resolution Service

DRS 04250/04251

VisitBritain v. 	(1) R.C. Johnson
(2) Enjoy England Limited

Decision of Independent Expert

1.	Parties: 

Complainant:		VisitBritain
Country:		GB

Represented by: 	Mr David Bowden
D Bowden Consulting Limited
Country:		GB

Respondent (1):		R C Johnson
Country:		GB

Respondent (2):		Enjoy England Limited
Country:		GB

2.	Domain Name(s):

(1) enjoy-england.co.uk; (2) enjoy-england.org.uk (“the Domain Names”)

3.	Procedural Background:

The Complaints, initially submitted separately against the Domain Names, were received electronically by Nominet on 24 November, 2006 and in full with hardcopies on 27 November, 2006.  Nominet validated the complaints and informed the respective Respondents, by both letter and by email on 28 November, 2006 noting that the Dispute Resolution Service had been invoked and that the Respondents had 15 days (until 20 December, 2006) to submit a Response in each case. A Response was received electronically by Nominet on 19 December, 2006 and in hardcopy on 20 December, 2006. By agreement, the two original Complaints, DRS04250 and DRS 04251 were merged as of 21 December, 2007 and both subsequently dealt with under the reference DRS 04250. The Response was forwarded to the Complainant on 21 December, 2006 inviting the Complainant to submit a Reply by 4 January, 2007.  A Reply was received electronically by Nominet on 29 December, 2006 and in hardcopy on 2 January, 2007.  The parties were invited to take advantage of Nominet’s facility for Informal Mediation during the period 5-19 January, 2007.  The dispute was not settled by mediation and on 15 February, 2007 Nominet wrote inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly received by Nominet on 28 February, 2007.

Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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 undersigned as Expert with effect from 7 March, 2007.

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

None.

5.	The Facts:

The Complainant, VisitBritain, is a manifestation of the British Tourist Authority and the English Tourist Board, originally established under Statute in 1969.  VisitBritain has been used as the official trading name since 2003.  It also adopted the trading style “Enjoy England” in relation to its promotion of tourism for England in 2003.  

The Complainant has various UK national trade mark registrations, first filed on 18 May, 2006, for marks comprising the concatenated expression “enjoyEngland” together with an image of a Tudor Rose, which image has also previously been a feature of an English Tourist Board logo.

The Complainant operates its principal English tourism website at www.enjoyengland.com.  Other domain names have also been set up to link automatically to the principal website (including, for example, www.enjoyengland.co.uk, and www.enjoyengland.gov.uk).

The first Respondent, R.C Johnson, registered the Domain Name enjoy-england.co.uk, on 21 August 2005, ostensibly as “a non-trading individual” (according to the Nominet WHOIS record). 

The second Respondent, Enjoy England Limited, was incorporated on 24 May, 2006, with the first Respondent as sole Director.  The Domain Name enjoy-england.org.uk was registered in the name of the company on 30 May, 2006 (according to the Nominet WHOIS record).

6.	The Parties’ Contentions:

Complainant:

The Complainant has asserted that:

1.	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and 
2.	The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).

In support of its Complaint, the Complainant made the following submissions:

1. The Complainant has rights in the Domain Name because: 
a.	It is incorporated under the Development of Tourism Act 1969 as both the “British Tourist Authority” and the “English Tourist Board”; 
b. 	By order of the Secretary of State for the Department of Culture, Media and Sport, the Government of the United Kingdom authorized the new trading names of “VisitBritain” and “EnjoyEngland” to be effective from April 2003; 
c. 	It trades under the name “EnjoyEngland” and has done so since April 2003 and with this complaint we are providing evidence in the form of: 
• marketing, 
• advertising materials, and 
• letterheads; 
d.	It has advertised using the name “EnjoyEngland” since April 2003. It spent £4,046,375.00 in the financial year 2003-2004 on such advertisements. It spent £1,930,000.00 in its Spring 2004 campaign to support the “EnjoyEngland” campaign. It spent £300,000.00 in summer 2005 to support the Autumn 2005 “EnjoyEngland” campaign. With this complaint we are providing examples of these advertisements; 
e. 	It provides services under the name “EnjoyEngland” as evidenced by the brochures, map, guides, newsletters and reports which accompany this complaint; 
f. 	It has the following pending UK trade mark application(s): 
• 2422132 
• 2422133 
• 2422134 
• 2422135. 
These applications incorporate the English Tudor Rose which is already a UK Registered Trademark Number: 2160084. 

2. General Background History & Relationship Between the Parties 
We refer to the Complainant’s Indexed Bundle of Documents that accompany this Complaint. We particularly refer to the Chronology at Tab 17, which sets out how the First Respondent has embarked on a series of speculative domain registrations – there are nearly 50 of them we have established. We also refer to the Brand History document at Tab 18, which sets out the Complainant’s prior rights. 
We emphasize: 
• The Complainant is a statutory corporation set up in 1969 and funded by grant-in-aid by the UK Government. 
• The Complainant exists to promote tourism to and within the UK. 
• In April 2003 there was a re-structure and re-branding within the Complainant and “EnjoyEngland” was adopted as a new business name and trademark for its domestic tourism activities. 
• The Secretary of State approved the new business name – see Tab 15. 
• The Complainant registered www.EnjoyEngland.co.uk and www.EnjoyEngland.org.uk on 10th April 2003. 
• The Complainant acquired www.EnjoyEngland.com on 27th April 2005. The name was registered on 15th December 1999 by a previous owner. 
• The Complainant’s Board Minutes and Papers at Tabs 10-13 show that the Complainant spent over £4Million on promoting its new brand identity in the Financial Year 2003-4. 
• At Tabs L-Z and 1-5 are samples of the Complainant’s brochures produced between 2003-2006 all clearly stating its business name “EnjoyEngland” and referring to its website address of www.EnjoyEngland.com. 
• The First Respondent registered www.Enjoy-England.co.uk on 21st August 2005. This was 2 years and 5 months after the Complainant adopted its new business name and trademark. 
• The Complainant has four pending Trademark applications for its EnjoyEngland brand name – see Tab B and an existing Registered Trademark in the Tudor Rose emblem used as part of its post-April 2003 brand identity – see Tab C. 
• There has been extensive promotion of EnjoyEngland by the Complainant. This started with the new brand’s launch at Shakespeare’s’ Globe on St George’s Day (23rd April) 2003. 
• At Tab 19-20 is the data on the public relations and press activity of the Complainant to promote EnjoyEngland. At Tab 21 is a list of all the EnjoyEngland publications. The promotional press and PR is overwhelming. The First Respondent did not think up the EnjoyEngland name! At Tabs G-J are samples of actual Press supplements in the major national newspapers about EnjoyEngland. 
• At Tabs D-F is the initial “Cease & Desist” letter dated 5th May 2006 attempting to obtain a voluntary transfer (of www.enjoy-england.co.uk), the First Respondent’s solicitor’s (Betesh Fox) letter dated 21 June 2006 disputing the Complainant’s entitlement to invoke Nominet’s abusive registration process and the Complainant’s rebuttal letter dated 21st June 2006. At Tab 25 is the Complainant’s letter dated 3rd August 2006 seeking the voluntary transfer of www.enjoy-england.org.uk from the Second Respondent. These requests for voluntary transfer remain unheeded at the date of filing this Complaint. 

3. The Domain Names in the hands of the Respondents are abusive because it [sic] was: 
a. 	primarily registered for the purposes of selling, renting or otherwise transferring it to me or my competitor for at a price greater than his costs in that he has no bona fide intention of offering an “EnjoyEngland” portal. 
b. 	primarily registered to stop me registering it despite my rights in the name because the www.enjoy-england.co.uk was only registered by the First Respondent on 21st August 2005 which was two and a half years after the complaint adopted its new brand identity and started using the www.enjoyengland.com. The domain name www.enjoy-england.org.uk was only registered by the Second Respondent on 30th May 2006 which was 3 years 2 months after the complaint adopted its new brand identity and started using the www.enjoyengland.com. 
c. 	primarily registered to unfairly disrupt my business because the hyphen in the domain name used by the Respondents has the great potential to cause confusion and its use by the Respondents is not innocuous. The Complainant sends out regular newsletters (See: Tab 8 of the Complainant’s Bundle) to its contact database from the newsletter@enjoyengland.com email address and surveys (See: Tab 9 of the Complainant’s Bundle) from the info@enjoyengland.com email address. If the First Respondent was to send out emails from either the newsletter@enjoy-england.co.uk or info@enjoy-england.co.uk or the Second Respondent was to send out emails from newletter@enjoy-england.org.uk or info@enjoy-england.org.uk addresses, the Complainant’s customers, suppliers, contacts, prospects and business users would be misled and deceived into believing that those emails were officially endorsed by the Complainant and/or the UK Government’s Department for Culture Media and Sport. 
d. 	used by the Respondents in a way which already has confused people into thinking that it was controlled by the Complainant, specifically running a tourism portal which purports to be the official UK Government back [sic] tourism website and confused members of the public and those in the tourism industry in the process. 
e. 	could be used by the Respondents (if it has not been so used already) for phishing and cloning scams whereby the Complainant’s identity was impersonated and members of the public were duped into believing they were dealing with a UK Government Non Ministerial Public Body rather the Respondents who seeks to trade off the Complainant’s goodwill. 
f. 	registered with incorrect name and address details, because the First Respondent acted in bad faith and the initial registration he had with Nominet UK was that for a private individual and his address details were hidden from the “Whois” database. It is clear that the First Respondent is running a business and always has done so. 
g. 	The First Respondent has acted in bad faith. The initial “Cease and Desist” letter was sent to him dated 5th May 2006 (See: Tab D of the Complainant’s Bundle). The First Respondent did not cease and desist. In response instead he set up a clone company – Enjoy England Limited – the Second Respondent on 24th May 2006 (See: Tab 24 of the Complainant’s Bundle). He then registered the second abusive name – www.enjoy-england.org.uk on 30th May 2006. This was done in bad faith. This is clear evidence that the First Respondent has acted abusively and without heed to the legitimate prior rights of the Complainant. 

4. Cases resolved by Nominet Experts involving hyphens in co.uk names: 
• Fruit-of-the-loom.co.uk DRS02257 
• Alliance-Leceister.co.uk DRS03453 
• Various Alliance & Leicester DRS02532 
• The-Salvation-Army.co.uk DRS01341 
• Club-18-30.co.uk DRS00655 
All the above cases were resolved in favour of the legitimate rights holder 

Documentation submitted in support of Complaint:

Tab 	Document Description	Date	
A 	Extract of Development of Tourism Act 1969	25th July 1969	
B	Pending “EnjoyEngland” Trademark applications with the UK Patent Office: (i) 2422132, (ii) 2422133, (iii) 2422134, and (iv) 2422135)	18th May 2006	
C	Trademark Certificate for English Tourist Board Trademark Number: 2160084 incorporating the Tudor Rose which is contained in the pending Trademark applications for “EnjoyEngland” at Tab B.	5th March 1998	
D	Initial letter to R C Johnson sent recorded delivery	5th May 2006	
E	Betesh Fox letter to Lobby and Law Limited	21st June 2006	
F	Detailed reply to Betesh Fox from Lobby and Law Limited	21st June 2006	
G	“The Times” supplement on England	15th July 2006	
HI	“The Telegraph” supplement on Spring Breaks in England	22nd April 2006	
JK	“The Observer” supplement on Explore England with a 2006 special focus on Yorkshire		
L	EnjoyEngland “City Culture” brochure 	2005	
M	EnjoyEngland “Your Summer Starts Here” brochure	2005	
N	EnjoyEngland “International & Domestic Market 2006 Profiles” brochures		
O	EnjoyEngland “Put a Spring in Your Step” brochure	2006	
PQ	EnjoyEngland “Just Relax” brochure	2005	
R	EnjoyEngland “Jump on and Enjoy the Ride” brochure		
S	EnjoyEngland “Take a leaf out of our book” brochure	2005	
T	EnjoyEngland “The Strategy” brochure November	2003	
UV	EnjoyEngland “Great Ideas” brochure	2006	
WX	EnjoyEngland “Brand Essence” brochure	2004	
YZ	EnjoyEngland (Tree in red autumnal colours) brochure	Sept 2003	
1	EnjoyEngland (Picnic Hamper on front) brochure	23rd April 2003	
2	EnjoyEngland “Great Days Out” brochure	2005	
3	EnjoyEngland “England’s Genius” brochure	2005	
4	EnjoyEngland “Storybook England” brochure	2006	
5	VisitBritain Annual Report 2003-4	April 2004	
6	EnjoyEngland business stationery - A4 letterheaded		
7	EnjoyEngland business stationery - Compliments slips (x2)		
8	EnjoyEngland newsletters:	(i) July 2006
(ii) June 2006
(iii)  May 2006	
9	EnjoyEngland surveys: 
(i)	EnjoyEngland Movie Map
(ii)	EnjoyEngland Evaluation Campaign Survey
(iii)	EnjoyEngland Outdoor England
(iv)	EnjoyEngland Evaluation Campaign Survey	
29th Nov 2004
Summer 2004
May 2006
Spring 2005	
10	Extracts from the Minutes of the Board Meetings of - VisitBritain.	March 2003 - October 2005	
11	Board Minutes of the England Marketing Advisory Board	11th Sept 2003	
12	VisitBritain Board Paper on KPIs and KSFs Aug/Sept 2003	15th Sept 2003	
13	VisitBritain Board Paper on EnjoyEngland Approval of Expenditure over £100k	21st May 2003	
14	Letter to VisitBritain from the Department of Culture, Media and Sport approving change of name	1st April 2003	
15	Letter from VisitBritain to Rt Hon Tessa Jowell MP, Secretary of State for Culture Media and Sport	23rd Sept 2003	
16	Letter from Rt Hon Tessa Jowell MP, Secretary of State for Culture, Media & Sport to Sir Michael Lickiss, Chairman of VisitBritain	31st Oct 2003	
17	Chronology		
18	EnjoyEngland – Development and Use of the “EnjoyEngland” Brand by VisitBritain	Sept 2006	
19	Excel Spreadsheets on Press coverage of Enjoy England	1 April 2005 – 31 March 2006	
20	Excel Spreadsheets on Public Relations activity undertaken by VisitBritain to promote “EnjoyEngland” 	20th May 2004 - 31st Aug 2004	
21	List of all EnjoyEngland Publications produced between March 2003 and September 2006	September 2006	
22	Front page of EnjoyEngland website	April 2003	
23	Excel Spreadsheet with Responses to EnjoyEngland Marketing Campaign 2003	April 2003 - December 2003	
24	Company Search on Enjoy England Limited	1st August 2006	

Respondent:

The first Respondent made the following observations in the Response:
1. 	I received the Complaint on 29th November 2006. 
2. 	I object to the Complaint and ask that the Expert does not grant the Complainant the remedy that he has asked for. 
3. 	The domain name enjoy-england.co.uk was registered in good faith on 21st August 2005. This is just one of a large portfolio of domain names registered each month as part of a long term publishing plan. 
4. 	The domain name enjoy-england.org.uk was registered on 30th May 2006 after the Complainant suggests I register a different version of the name. This domain name is registered in the name of Enjoy England Limited, a company established to carry out web publishing on 24th May 2006 (see attached document). 
5. 	The rights claimed in the domain names by the Complainant were not/are not now valid rights and/or are not rights at English law because they do not infringe any granted trademarks. When I purchased enjoy-england.co.uk no trademark application had been submitted for the term ‘EnjoyEngland’. This is admitted by the Complainant in Tab B of their supporting documentation, which clearly shows no application for trademark until 31st July 2006 [Expert’s note: The Respondent has mistaken the date of printing shown on the Complainant’s exhibit as the date of application.]. As yet no trademark has been granted. 
6. 	The registration is not speculative. The domain names mentioned in the Complainant supporting literature Tab 17 are not for sale. The domain names form part of a network of seventy five websites and are the basis of a long-term publishing plan. This network of interlinked regional websites or the UK that enable residents and visitors the opportunity to discuss attractions, issues, events and other topics relating to each city, town and country within the United Kingdom. This contrasts sharply with the function of the British Tourist Authority. It is clearly stated within the Complainants supporting document tab A as being ‘To encourage people to visit Great Britain and people living in Great Britain to take their holidays there’. 
7. 	The Complaint is incorrect and/or untrue and/or misleading because no email newsletter publishing of any kind has taken place in conjunction with either domain name. 
8. 	The registration in the hands of the respondent/registrant is not abusive because at no stage have the domain names been used to mention or appear to be the British Tourist Authority. On the contrary, when first approached by the Complainant the registrant added a prominent link to the domain name home page which clearly reads ‘The unofficial guide to England. This site is in no way related to enjoyengland.com’. I have no desire whatsoever to cause confusion and will continue the placement of the link as a measure of goodwill. 
9. 	I am using the name in relation to a genuine offering of goods or services, namely a website that carries content, information feeds and external website links to sites about the United Kingdom. 
10. 	The domain name is generic and descriptive and refers to a sensation or feeling a person may experience about the country of England. 
11. 	This registration is distinct from my other/previous domain name registrations because no other domains are knowingly subject to retrospective trademark applications.

Complainant’s Reply:

The Complainant submitted the following further observations in Reply to the Response:

Mr Johnson on his own behalf and for and on behalf of Enjoy England Limited makes 9 substantive points in his Response. The Complainant will set out each of these points separately below and will underneath each one explain why this does not afford either of the Respondents a defence to the Complainant’s claim that the 2 domain names be transferred to it as the legitimate rights holder. 

1. 	Registrations were in good faith (Paragraph 3 of Response Form) www.enjoy-england.org.uk was registered on 30th May 2006 by the 2nd Respondent (Enjoy England Limited). This consultancy’s initial cease and desist letter to the 1st Respondent (R C Johnson) is dated 5th May 2006 (Initial Bundle Tab D). This name was quite clearly registered in bad faith. www.enjoy-england.co.uk was registered on 21st August 2005 by the 1st Respondent. The Complainant adopted its new trading name on St. George’s Day – 23rd April – 2003. The Complainant spent over £4Million in 2003-4 promoting the official English Tourism portal – www.EnjoyEngland.com (Initial Bundle Tab 10). The Respondents are free-riders. They have not acted in good faith at all. A simple search by the Respondents with an Internet search engine such as Google against the “EnjoyEngland” name would have shown the existence of the Complainant’s prior rights. 

2. 	Complainant suggested Respondent registered a different version of the “Enjoy England” name (Paragraph 4 of Response Form) The Complainant made no such suggestion. The initial cease and desist letter (Initial Bundle Tab D) requests a voluntary transfer – nothing more, nothing less. 

3. 	Enjoy England Limited is a company established to carry out web publishing (Paragraph 4 of Response Form) The Complainant does not accept that Enjoy England Limited is a company that the 1st Respondent has validly formed. We refer to the extracts from Companies House website (Page 6 of the Supplementary Bundle) wherein at Appendix A t sets out those names where approval of the Secretary of State for Trade and Industry is needed before those names can be used in a company name. One of those specially protected words is “England”. The Respondents have not produced any evidence with their Response that the Department for Trade and Industry has approved the company name “Enjoy England Limited”. The company name is not validly registered by the Registrar of Companies. The purported registration of this company’s name by the 1st Respondent provides neither Respondent with any additional protection in relation to the Complaints filed herein. 

4. 	The Respondents’ Domain Names do not infringe any of the Complainant’s Trademarks (Paragraph 5 of Response Form) We refer to Page 1-5 of the Supplementary Bundle. The Complainant has 4 valid Registered Trademarks for “EnjoyEngland”. The Trade Mark Registration Numbers are: 2422132, 2422133, 2422134 and 2422135. The Trade Mark registrations are effective from 18th May 2006. The position in relation to www.enjoy-england.org.uk is plain – the domain name was registered after the Complainant’s 4 Trade Mark Registrations became effective. This domain name infringes the Complainant’s Registered Trade Marks and must be transferred to it. Prior to the 18th May 2006, the Complainant had an unregistered trade mark in the “EnjoyEngland” brand which it could enjoin in a passing off action. The www.enjoy-england.co.uk domain name registered by the 1st Respondent infringed the Complainant’s unregistered trademark and now infringes the Registered Trademarks as well. 

5. 	What the Respondent does is different to the Complainant (Paragraph 6 of Response Form) The Respondents are classic free-riders. The functions of the Complainant are set out in the Development of Tourism Act 1969 (Initial Bundle Tab A). The Respondents are not providing anything new or different. They are seeking to free-ride on the substantial goodwill that the Complainant has built up over the last 3¾ years in the EnjoyEngland brand. The Complainant’s portal has a blog section. There is no difference in service provision between the Respondents and the Complainant. In any event, this is irrelevant to the Complainant’s complaint of abusive registration. The Respondent’s website has not been functioning for some time. 

6. 	No email newsletters have to date been produced by the Respondents (Paragraph 7 of Response Form) This is entirely irrelevant. The use by the hyphen in the Respondents’ two domain names is not innocuous. It has the potential to cause great confusion and to damage the Complainant’s business. The Dispute Resolution Service has previously decided that names such as Fruit-of-the-loom.co.uk (DRS02257), Alliance-Leceister.co.uk (DRS03453), The-Salvation-Army.co.uk, (DRS01341) and Club-18-30.co.uk (DRS00655) infringed the rights of the legitimate rights holders and ordered transfers of the infringing domain names. There is no difference here and the Complainant seeks a transfer of both domain names with the infringing hyphens. 

7. 	The Respondents’ website contain a disclaimer (Paragraph 8 of Response Form) The presence of a disclaimer on the Respondents’ website stating that their site is not connected with the Complainant’s website is not enough to undeceive visitors who thought they were visiting the official English tourism website. This was clearly decided by the Court of Appeal in Phones 4u Limited v. Heykali (19th May 2006). This was pointed out by this consultancy to the solicitors formerly instructed by the 1st Respondent (Betesh Fox). A copy of this letter dated 21st June 2006 is at Pages 7-9 of the Supplementary Bundle. Neither the Respondents or their advisers have heeded the Complainant’s clear warning in this regard. 

8. 	The Respondents’ offering is genuine (Paragraph 9 of Response Form) The Complainant is in difficulty in commenting on this. As stated under Head 5 above, the Respondents’ website does not appear to be functioning. When it has been, it is difficult to see what it is in fact offering. We refer to this consultancy’s letter dated 21st June 2006 at Pages 7-9 of the Supplementary Bundle. In June 2006 when the Respondent’s website was working it was of very poor quality. It appeared to consist of nothing more than a home page. The home page appeared to offer a search facility. When we entered “Alton Towers”, the response returned was: “Keywords shorter than 5 characters will be ignored.” We met with the same response to “Alton”. The link bars on the left hand site of the Respondents’ website were equally bare. The “England Headlines” consisted of nothing more than links to other sites such as the BBC and had no original content created by the Respondents. The “England Links” had no content on either of its 3 subsets at all. We did not seek to explore the “Extended Profiles” or “Private messaging” as they required registration. The copyright notice on the site was also out of date. It also appeared to claim copyright from 2001 yet the domain name was only registered in 2005! It is unlikely that any original work was created by either Respondent before this date. The requirements of the Electronic Commerce (EC Directive) Regulations 2002 (2002 SI/2013) had been entirely ignored by the Respondents. Regulation 6 had not been complied with and the Respondents’ website did not contain their name(s), geographic address or email address. In short, neither now nor at any time in the past has there been any genuine offering by either of the Respondents. 

9. 	The Domain Names are generic and descriptive (Paragraph 10 of Response Form) As stated under Head 4 above, the Complainant has 4 valid Registered Trademarks protecting the “EnjoyEngland” brand name. They have been examined by the Patent Office and advertised for opposition in the usual way. That they have been registered is clear evidence that the Patent Office has satisfied itself that the names satisfy the grounds set out in the Trade Marks Act 1994 for registration. The Respondents’ comments in this regard are entirely irrelevant. In conclusion, the Complainant seeks an order for transfer of the 2 infringing domain names held by the Respondents.

Documentation submitted in support of Reply

Page 	Document Description	Date	
1-5	Four (4) “EnjoyEngland” Trademark Registration Certificates from the UK Patent Office: (i) 2422132, (ii) 2422133, (iii) 2422134, and (iv) 2422135)	17th Nov 2006 
	
6	Companies House website extract relating to approval of certain company names (Appendix A)		
7-9	Lobby and Law letter to Betesh Fox	21st June 2006	

7.	Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of 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 as defined in Paragraph 1 of the Policy.

Complainant’s Rights

The Complainant in this case has asserted that it has rights in the name EnjoyEngland and that this name is identical or similar to the Domain Names. 

In support of its claim to Rights, the Complainant has provided evidence of use of the words Enjoy England, principally in the concatenated form “enjoyEngland”, including in trade mark registrations for the name (with a figurative element) and, although it is clear that the registered trade mark rights have been acquired in the period since the earlier of the Domain Names was originally registered by the Respondent, the Complainant’s commercial use of the name predates both registrations of the Domain Names at issue by the Respondent.

There is no requirement that the Rights should necessarily predate the registration of the Domain Names, and in the present case it is arguable that the Complainant may well have have established rights under common law from its earlier use of the Enjoy England name and registration and use of the of the domain name enjoyengland.com.  

Under the Policy, “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”.

It is normally accepted that this definition sets a relatively low threshold for a Complainant.

The proviso that “a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business.” is nevertheless pertinent and requires particular consideration in the present case.

The name “EnjoyEngland” in which the Complainant seeks to assert “Rights” is plainly directly descriptive of the intended purpose of the Complainant’s services: i.e. that tourists should “enjoy England”.  It is a commonplace exhortation or injunction, like “Bon voyage!”, such as one might expect a well-wisher to use when seeing a friend off to visit the country – “Enjoy England!”

The fact that the Complainant has obtained registrations for trade marks which include the words “enjoyEngland” in concatenated and stylised form with a figurative element is also not decisive in the Complainant’s favour.  Those registrations are not for the words alone.  In the Expert’s opinion, that is not surprising.  Given the directly descriptive nature of the words “Enjoy England” in the context of the Complainant’s business, an application to register the words alone would have been expected to attract objection under Section 3(1)(b) or (c) and the UK Registry would have been expected to require extensive evidence of acquired distinctiveness through use to overcome such objection.  That does not appear to have been required for the stylised marks with figurative elements as registered.

The Complainant has also sought to assert that the presence of the hyphens in the Domain Names enjoy-england.co.uk and enjoy-england.org.uk is immaterial and should be disregarded in considering the similarity of the name EnjoyEngland to the Domain Names.  The Complainant cited a number of DRS cases in support of this argument.  Unfortunately, for the Complainant, the examples cited all related to well-known marks, undoubtedly more distinctive and with longer histories of use than “EnjoyEngland”.   

In the Expert’s view the presence of the hyphen in the Domain Names cannot necessarily be so readily dismissed.

Indeed the Expert considers that the Decision in UDRP case DAU2003-0001 (in which the Expert was a member of the 3-person Panel) relating to the domain name “discover-tasmania.com.au” may offer more relevant analogies than the DRS cases cited by the Complainant.

In that case, the Panel had to consider claims to rights in the words “Discover Tasmania” and prior use of domain names including “discovertasmania.com” against subsequent registration and use of “discover-tasmania.com.au”.

The quote cited there from the judgment of Stephen J in the High Court of Australia in Hornsby Building Information Centre v. Sydney Building Information Centre Ltd (1978) 140 CLR 216 at 229 merits repeating here:

“There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - "So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”

By analogy, the Expert considers that where “eloquently descriptive” domain names are at issue, as in the present case, then it is arguable that “quite small differences” might equally well serve to stop a complaint.

In the present case, despite the reservations expressed above, the Expert believes that the Complainant has provided sufficient evidence to show that it has established at least common law rights in the concatenated form “enjoyEngland” through use on its publications and in relation to its services.  The evidence shows that the mark has been identified as a trade mark enjoyEngland™ and use has clearly been extensive.  The Expert is therefore prepared to accept that the Complainant has rights in “enjoyEngland”.

Additionally, there is some evidence of use by the Complainant, albeit not so extensive, of the words separately as “Enjoy England”.  It is also apparent that any English reader of the concatenated mark “enjoyEngland” would perceive it as interchangeable with, and having the same meaning as, the grammatically correct combination of the two words separated by a space as “Enjoy England”.  It is common practice in domain names to substitute a space (which is not a permitted character in a domain name) between two ordinary words with a hyphen or to omit it altogether.  In the present case, the division between the respective elements of “enjoyEngland” is obvious and thus enjoy-England is essentially equivalent.  The Expert is therefore also prepared to accept that the Complainant has rights in respect of a name or mark, which is identical or similar to the Domain Names in this case.

However, the question remains of whether or not the Complainant can rely on these rights under the Policy, having regard to the proviso in the definition of “Rights”.

According to Section 2(1) of the Development of Tourism Act 1969 (as cited by the Complainant), under which the British Tourist Authority was established:
“2.-(1)  It shall be the function of the British Tourist Authority –
(a) to encourage people to visit Great Britain and people living in Great Britain to take their holidays there; and
(b) to encourage the provision and improvement of tourist amenities and facilities in Great Britain;
and the English Tourist Board, the Scottish Tourist Board and the Wales Tourist Board shall have like functions as respects England, Scotland and Wales respectively.”

By these very words, it would seem clear that, for example, the name “VisitBritain” could reasonably be considered “wholly descriptive of the Complainant’s business”, and were this dispute to be over visit-britain.co.uk (which is evidently not presently owned or operated by the Complainant, but who does own and use visitbritain.co.uk), then the proviso in the definition of “Rights” under the Policy might indeed be applicable. The same might also be the case for (say) “Visit England” or “Tour England” or “Holiday in England”.

So is “enjoyEngland” also to be considered in the same light? Is “Enjoy England” “wholly descriptive of the Complainant’s business”? The Expert has mulled over this question at considerable length.  The Expert has been minded at stages to go one way, then the other.  It is an issue over which reasonable people can be expected to disagree.

The Expert has considered the definition in Section 2(1) of the Development of Tourism Act 1969, as quoted above, as it applies in relation to England and the English Tourist Board, which may be paraphrased:
It shall be the function of the English Tourist Board [VisitBritain]-
(a) to encourage people to visit England and people living in England to take their holidays there;
It appears to the Expert that the words “enjoy England” encapsulate the objectives of the Complainant, very pithily. No doubt that is why they were adopted by the Complainant in the first place, but doubtless also in inadvertent ignorance of the potential difficulty it might pose for deciding on application of the Nominet DRS. 

This is a case where the decision on the applicability of the claimed rights has been finely balanced throughout the Expert’s deliberations. 

However, ultimately, the Expert has come to the view that, whilst they may be an apt encapsulation of the desired end result for the Complainant - that visitors and holidaymakers should “enjoy England”, the words are nonetheless just far enough away from being “wholly descriptive of the Complainant’s business” that the proviso in the definition of “Rights” under the Policy, being an exclusion of Rights, which should be interpreted narrowly, is not applicable in this case.  

Accordingly, the Expert concludes that the Complainant does have Rights in this case in respect of the name and mark, which is also considered to be similar to the Domain Names, and that the Complainant can rely on these Rights for the purposes of the Policy. 

Abusive Registration

The Complainant also has to show that the Domain Name is 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 be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy: 

i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

A.	primarily 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.	primarily 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; 

However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative.  They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

The Complainant has made various assertions in support of its allegation that the Domain Name is an Abusive Registration.

In the Expert’s view a number of those assertions are unsubstantiated and exaggerated speculation.  In particular, there is no evidence to support the Complainant’s contentions that the Domain Names were registered for resale or as a blocking registration or to be utilized in some “phishing” exercise.

The Complainant has asserted that confusion might arise with visitors not knowing if they were visiting a site operated by a “UK Government Non-Ministerial Public Body”.  That criticism might be levelled at the Complainant’s own use of www.enjoyengland.com as its principal portal rather than (say) www.enjoyengland.gov.uk (which does in fact resolve to the Complainant’s .com website) or www.enjoy-england.gov.uk (which is evidently not registered by the Complainant and does not – at the time of writing – resolve to the Complainant’s principal website).

The Complainant has contended that it is evidence of abusive intent that the Respondent has reportedly registered a large number of other domain names including the prefix “enjoy-”, such as:
enjoy-cheshire.co.uk; enjoy-london.co.uk; enjoy-hadrians-wall.co.uk etc.
The Complainant also suggests that the Respondent’s registration of enjoy.uk.com somehow “infringes VisitBritain’s prior rights in its “EnjoyEngland” brand”.  

Even if the Complainant may have some rights in “EnjoyEngland”, it is surely absurd to imagine that registration of other domain names comprising “enjoy-” with any other place name or geographic location could be automatically enjoined.

In its Reply, the Complainant also stated that it had made no suggestion that the Respondent should register another name. In fact, in the letter referred to, the Complainant expressly offered to cover the Respondent’s cost of registering a new, less confusing domain name.  The second Respondent’s subsequent registration of enjoy-england.org.uk might hardly qualify as “less confusing”, but the denial that any suggestion of registering an alternative name is plainly wrong.

The Complainant has also alleged that the Respondent’s company name “Enjoy England Limited” is not validly registered by the Registrar of Companies.  Yet the Respondent had produced a Certificate of Incorporation from Companies House.  In the absence of evidence that any actual objection has been officially raised – and Companies House appears not to have raised any - that company’s registration is surely to be considered as valid as the Complainant’s trade mark registrations.

The Respondents’ alleged failure to comply with the requirements of the Electronic Commerce (EC Directive) Regulations 2002 (2002 SI/2013) is also hardly conclusive of any bad faith when the same criticism could probably be made of a great many corporate websites.

However, despite being infected by a number of spurious and irrelevant assertions, there is nonetheless substance to the Complainant’s case in significant respects.

Since the Complaint was first made, there has apparently been no detailed content at www.enjoy-england.co.uk, and www.enjoyengland.org.uk simply resolves to an ISP holding page.  However, www.enjoy-england.co.uk is being used and does include numerous links going to the websites associated with some of the Respondent’s other listed domains, from which one can reasonably surmise what further use was or would be intended for the “enjoy-england” websites. Many of these links (e.g. www.enjoy-aberdeen.co.uk) resolve to sites with automatically generated Yahoo and Google listings typical of parking sites designed to generate pay-per-click revenue.  Some others (e.g. www.enjoy-northumberland.co.uk) demonstrate a more sophisticated appearance akin to official tourist information sites, but still with search-engine generated links spread about.

On the Respondent’s behalf, it was argued by his lawyers (Tab E above) that the Respondent’s site would “enhance [the Complainant’s] activities in attracting tourism to England and its regions rather than detract from it.”  It was also proposed that the Complainant and Respondent should “operate in harmony with their respective sites.”

In the Expert’s opinion, the evidence suggests that the Respondents’ intention was to use their “enjoy-england” sites to directly generate click-through revenue by providing the attraction of some limited amount of tourist information on such sites, much as they are doing on their similarly named related “enjoy-” sites.  Presently, the enjoy-england.co.uk site is being used indirectly to the same effect, through the links to the Respondents’ related “enjoy-” sites.

It might be thought that this could be complementary to the Complainant’s own business, as the Respondent’s lawyers sought to argue.  

However, this rather disregards the obvious interest the Complainant could be expected to have in ensuring that use of the name of its “enjoyEngland” promotional campaign should be subject to some standards of quality control and consistency. 

It is too much to believe that the adoption of the “enjoy-england” name in the Domain Names by the Respondents, was done in innocent ignorance of the extensive prior use of “enjoyEngland” and the operation of “enjoyEngland.com” by the Complainant.  On the balance of probability, the Expert considers that the first Respondent most likely did register the Domain Name enjoy-england.co.uk, in full knowledge of the Complainant’s use of “enjoyEngland”, and in expectation of gaining some benefit from the potential association of his Domain Name with the Complainant’s “enjoyEngland” promotional activities.  It may be that the Respondent did this in the naïve misperception that in the apparent absence of any trade mark registrations, the Complainant could not have any rights to prevent such use.  The Respondent’s lack of appreciation of the potential for later registered trade marks to be used to constrain such use is evident from the comments in the Response above, and would appear to confirm a degree of naiveté on the Respondent’s behalf.

By adopting such Domain Names, and using or intending to use them for tourist information sites very much like the Complainant, the Expert believes that the Respondents would be unfairly using the Complainant’s goodwill and reputation to provide a springboard for their own business(es), and that the Complainant’s characterisation of the Respondents at least as attempted “free riders” would be appropriate in these circumstances.  The Expert also agrees with the Complainant’s submissions that the presence of the (easily missed) disclaimer of any relationship to enjoyengland.com on the enjoy-england.co.uk site does not provide a sufficient defence in these circumstances. 

In this respect, the Expert would distinguish this case from the discover-tasmania.com.au case noted above.  In that case, the disputed domain was not being used for similar activities to the Complainant.  It was being used for legitimate commentary about environmental concerns in Tasmania.

The Expert would concede that it is conceivable that the “enjoy-england” Domain Names might also be usable for alternative purposes not in the same field as the Complainant.  However, the evidence strongly suggests that is not what the Respondents have done or intended to do.

In the Expert’s view, the evidence is sufficient to show that, on the balance of probability, the first Respondent’s registration and use of the Domain Name enjoy-england.co.uk took unfair advantage of and was unfairly detrimental to the Complainant’s Rights.  The subsequent registration, by the second Respondent under the direction of the first Respondent, of the Domain Name enjoy-england.org.uk, in full knowledge of the Complainant’s claims to rights in “enjoyEngland” and objections to incorporation of “enjoy-england” in a domain name was surely flagrantly provocative in the circumstances and is likewise considered to have taken unfair advantage of the Complainant’s Rights.

The Expert therefore concludes that the Domain Names are to be considered as Abusive Registrations for the purposes of the Policy.

8.	Decision:

Having concluded that the Complainant has Rights in respect of a name or mark, which is similar to the Domain Names, and that the Domain Names, in the hands of the Respondents, are to be considered as Abusive Registrations, the Expert orders that the Domain Names enjoy-england.co.uk and enjoy-england.org.uk be transferred to the Complainant.

29 March, 2007
         Keith Gymer                                Date