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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> 1066 Housing Association Ltd v Morgan [2007] DRS 5113 (25 November 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/5113.html Cite as: [2007] DRS 5113

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Nominet UK Dispute Resolution Service

DRS 05113

1066 Housing Association Ltd.

v

Morgan

Decision of Independent Expert

1. Parties:

Complainant:	1066 Housing Association Ltd.
Country:	GB
Respondent:	Mr. D Morgan
Country:	GB

2. Domain Name: 1066housingassociation.co.uk ("the Domain Name").

3. Procedural Background:

3.1     The Complaint was lodged with Nominet on 2 October 2007. Nominet validated the Complaint and notified the Respondent of the Complaint on the same date and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent failed to respond, but on 14 October 2007, did indicate he was willing to transfer the Domain Name. As a result the Complaint's procedure was suspended to allow this to take place. Following failure of the transfer the process was reinstated and on 16 November 2007 the Complainant lodged the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy") and paragraphs 5(d) and 8 of the Nominet UK Dispute Resolution Service Procedure ("the Procedure").

3.2     Andrew Murray, the undersigned, ("the Expert") has 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 further confirmed 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. On 23 November 2007, Nominet invited the undersigned, the Expert, to provide a decision on this case.

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

4.1     The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5(a) of the Procedure.

4.2     The Expert has seen copy communications from Nominet to the Respondent and has no reason to doubt that the Respondent has been properly notified of the Complaint in accordance with paragraphs 2 and 4(a) of the Procedure. In fact as outlined above (at para. 3.1), the Respondent has been in contact with both Nominet and the Complainant and on 14 October 2007 indicated he was willing to transfer the Domain Name to the Complainant. Paragraph 15(b) of the Procedure provides, inter alia, that: "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint." There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the Complaint and notwithstanding the absence of a Response.

4.3     The lack of a Response does not entitle the Complainant to a default judgement. The Complainant must still prove their case to the required degree. The Expert will evaluate the Complainant's evidence on its own merits and will draw reasonable inferences from it in accordance with paragraph 12(b) of the Procedure. Paragraph 15(c) of the Procedure provides that: "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure ..., the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."

4.4     Generally, the absence of a Response from the Respondent does not, in the Expert's view, entitle an Expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit. In this case it seems to the Expert that the probable facts speak for themselves and that it is not necessary to draw any special inferences. The Expert finds that the probable facts asserted by the Complainant and set out in the following section are indeed facts.

5. The Facts

5.1     The Complainant is a Housing Association, registered with the Housing Corporation which governs and regulates Housing Associations operating in England and Wales.

5.2     The Complainant was established in 1995 to take over the entire housing stock of Hastings Borough Council. This take over was completed by Large Scale Voluntary Transfer on 22 February 1996.

5.3     The Complainant is registered with the Housing Corporation under number LH4092 and with the Industrial and Provident Society under registration number 28131R. The Complainant is also registered with Companies House under Company Number IP28131R.

5.4     The Complainant joined the Amicus group in 2002 and in April 2006 the Amicus Group combined with the Horizon Housing Group to form the AmicusHorizon Group. The AmicusHorizon Group owns approximately 28,000 homes in the UK.

5.5     The Complainant's internet presence is located at http://1066ha.org.uk.

5.6     The Complainant's primary aim is to provide social housing to members of the community in housing need. The Complainant owns just over 4,000 properties situated in the Hastings area of East Sussex, England, the majority of which are let on Assured Tenancies to individuals or families in housing need.

5.7     Although the Complainant is a Private Limited Company, it is subject to Regulation by the Housing Corporation and Audit by the Audit Commission.

5.8     The Domain Name was registered on 29 March 2007 by the Respondent. The Domain Name currently resolves to a page operated by a group called "Churchill United" and contains details of and commentary on a housing dispute between the Complainant and the Respondent.

6. The Parties' Contentions

Complainant:

The Complainant contends that:

The Complainant has rights in the Domain Name because:

6.1     The Complainant trades as 1066 Housing Association Ltd., and has registered as such with Companies House under Company Number IP28131R.

6.2     The Complainant's housing stock is located within the Hastings area of East Sussex, England. This area of East Sussex is known locally as '1066 Country', which is a reference to the Norman conquest of England in the year 1066 by William Duke of Normandy as the conquest and immediate occupation of England in 1066 took place within the locality of Hastings. Given the Complainant's location and that of its housing stock, the Complainant adopted the name "1066 Housing Association". This name is an easy and readily identifiable local brand associated with the Complainant's service to the local community of the provision of social housing.

6.3     The name defines the Complainant by reference to its geographic location ('1066') and its service to the community ('Housing Association').

6.4     The name '1066 Housing Association' has become a distinctive identifier associated with the Complainant and its services to the community. The Complainant submits that by usage and registration with appropriate and relevant administration and registration authorities within the UK it has acquired unregistered Trademark and Common Law rights in the Service Mark '1066 Housing Association'.

6.5     The Respondent registered the Domain Name on 29 March 2007 long after Complainant acquired such rights to their domain name.

6.6    The Respondent has no apparent rights to the Domain Name.

The Domain Name in the hands of the Respondent is abusive as:

6.7     The Domain Name is identical or confusingly similar to the Complainant's Service Mark, namely '1066 Housing Association.'

6.8     The Complainant's domain name, as referred to at para. 5.5 above, is 1066ha.org.uk. In addition, the Complainant's email addresses all conclude with the domain: 1066ha.org.uk. The abbreviation 'HA' is a common abbreviation used to shorten the name: 'Housing Association'.

6.9     The Respondent's intention by registering the Domain Name is to use a mark that is commonly associated with that of the Complainant.

6.10     The Respondent has also registered the domain name 1066ha.com which is the subject of a separate complaint to WIPO.

6.11     The registration of the Domain Name by the Respondent was carried out during the course of a dispute between the Complainant and the Respondent, which dispute began in or around December 2006. As a result of the dispute between the Complainant and the Respondent, the Respondent lodged a formal complaint against the Complainant. The Complainant dealt with this complaint through its internal complaints procedure. Details of the complaint and the Complainant's findings were posted and displayed along with additional comments by the Respondent on a website operated at the Domain Name.

6.12     The Complainant submits that registration of the Domain Name that was identical or similar to the Complainant's name and service mark at a time when the Respondent was in dispute with the Complainant and pursuing a complaint against the Complainant through the Complainant's own internal complaints process is prima facie evidence of an Abusive Registration and such a registration unfairly disrupts the Complainant's business.

6.13     On the home page of the website operated at the Domain Name, the Respondent indicates that he is 'closing down'. He further indicates that the '1066 domain names that we own will be auctioned off on our Japanese friends site to the lowest bidder.'

6.14     On the home page the Respondent describes the Complainant as 'liars and cheats'. By clicking on the links on the left of the site titled: 'Stage 3 Result', 'Read This!' and 'They Say We Say', it is apparent that the Respondent is using the site to air his grievances against the Complainant.

6.15     The Complainant submits that it is clear from the content of the pages on the site at the Domain Name that the Respondent is not making a legitimate or fair use of the Domain Name. Given the association of the service mark '1066 Housing Association' with the Complainant, members of the local community could be easily misled that the Respondent's website belongs to the Complainant or at the very least is affiliated to the Complainant or approved or endorsed by the Complainant and consequently it may confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

6.16     The Complainant further submits that the description of the Complainant as 'liars and cheats' on the home page of the site is overtly designed and intended to tarnish the Complainant's good name and Service Mark and is self-evidently abusive.

6.17     The Complainant further submits that it is not a fair or legitimate use for the Domain Name to be used to post and display correspondence from the Complainant to the Respondent nor to post and display the decisions of the Complainant's complaints panel.

6.18     To the best of the Complainant's knowledge and belief, the Respondent has never been commonly known by the Domain Name.

Respondent:

6.19    The Respondent has not responded.

7. Discussion and Findings

7.1 General

According to paragraph 2 of the Policy, in order to succeed in this complaint, the Complainant has to prove to the Expert that, on the balance of probabilities 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.

These matters must be proven by the Complainant, notwithstanding the failure by the Respondent to respond.  The effect of the Respondent's default is rather that, under paragraph 15(c) of the Procedure (there being no exceptional circumstances in this case) the Expert is required to draw such inferences from the Respondent's non-compliance as he considers appropriate.

7.2     Complainant's Rights

7.2.1     Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. This is usually demonstrated by reference to a trade mark registration or evidence of active trading using the name or mark in question.

7.2.2     In this case, the Complainant relies upon their company registration in the name '1066 Housing Association' (at para. 6.1) and their assertion that it 'has become a distinctive identifier associated with the Complainant and its services to the community. The Complainant submits that by usage and registration with appropriate and relevant administration and registration authorities within the UK it has acquired unregistered Trademark and Common Law rights in the Service Mark "1066 Housing Association"' (at para.6.4).

7.2.3     The requirement of 'rights' in a name may be satisfied by the development of goodwill in a name or part of a name [Delamar Academy v. Go-Catch Media Limited [2004] DRS 1543; University of Strathclyde v Hastie & Anor [2005] DRS 2119] or by demonstration of a pre-existing company registration [Gold Financial Group Ltd. v. Stephen Yates [2006] DRS 4081.

7.2.4     Both are present in this case and therefore, on the basis of the evidence presented the Expert is satisfied that the Complainant has rights in respect of the mark '1066 Housing Association' which is identical to the Domain Name (disregarding, for these purposes, the generic domain suffix). Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of a name or mark, which is identical or similar to the Domain Name.

7.3     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."

Under paragraph 3(a) of the Policy is listed a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The Complainant has indicated that they believe that in particular they may make out a claim under paragraph 3(a)(i)(C):

The Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.

And further under paragraph 3(a)(i)(A)

The Respondent has registered or otherwise acquired the Domain Name 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;

And further under paragraph 3(a)(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.

Paragraph 3(a)(i)(C)

7.3.1.1     In making their claim under paragraph 3(a)(i)(C), the Complainant asserts: 'that registration of the Domain Name that was identical or similar to the Complainant's name and service mark at a time when the Respondent was in dispute with the Complainant and pursuing a complaint against the Complainant through the Complainant's own internal complaints process is prima facie evidence of an Abusive Registration and such a registration unfairly disrupts the Complainant's business.' (at para. 6.12).

7.3.1.2     Further the Complainant contends: 'On the home page the Respondent describes the Complainant as 'liars and cheats'. By clicking on the links on the left of the site titled: 'Stage 3 Result', 'Read This!' and 'They Say We Say', it is apparent that the Respondent is using the site to air his grievances against the Complainant.' (at para. 6.14); and 'the description of the Complainant as 'liars and cheats' on the home page of the site is overtly designed and intended to tarnish the Complainant's good name and Service Mark and is self-evidently abusive' (at para. 6.16).

7.3.1.3     The evidence appears to be overwhelming that the Respondent is using the Domain Name to air in public details of a grievance they have with the Complainant. This complaint therefore immediately brings to mind the decision in Ryanair Ltd v Coulston [2006] DRS 3655.

7.3.1.4     As was stated by the Expert, Anna Carboni, in that decision, 'where a name or mark that is strongly linked in the minds of the public to a particular business is registered as a domain name, without any addition or alteration (apart from a standard domain name suffix, such as .org.uk), there is always going to be some risk that internet users will type into the address field [NAME] followed by [suffix] with the aim of finding the relevant business website on the internet. So, in this case, someone who types in the address RYANAIR.org.uk is likely to expect to be taken to a website operated by the Complainant. The fact that, when s/he gets to the Respondent's website, it quickly becomes clear that it is not in fact connected with the Complainant, does not detract from that short period of confusion.'

7.3.1.5     Further she found that, 'the consequence of the Respondent's use of the Domain Name to point to a website on which statements and information are published is of relevance where this leads to unfair disruption of the Complainant's business.'

7.3.1.6     The instant case is similar to the Ryanair case in that a disaffected customer has registered the Domain Name with a view to airing in public details of a grievance with the Complainant. It is clear this has disrupted the Complainant's business in that a considerable amount of time and effort has been expended by the Complainant in dealing directly with the Complainant (outside the normal grievance procedure). While it is acknowledged that under paragraph 4(b) of the Policy a website set up in criticism of the Complainant may be a 'fair use', this defence requires to be made out by the Respondent who has failed to respond to this complaint. As a result the Expert finds that the use of the Domain Name is in the absence of evidence from the Respondent unfair.

7.3.1.7     I therefore find that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant, under paragraph 3(a)(i)(C) of the Policy.

7.3.4     Finding

Accordingly, the Expert finds that the Domain Name is an Abusive Registration as defined by paragraph 1 of the Policy on the basis that it is being used in a manner which takes unfair advantage of the Complainant's rights.

8. Decision:

In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name be transferred to the Complainant.

Andrew Murray Date: 25 November 2007