Nominet UK Dispute Resolution Service

DRS 05428

New Claims Direct Limited v Omid Shirdelrana

Decision of Independent Expert

1.	Parties

Complainant:		New Claims Direct Limited
Country:		GB

Respondent:		Omid Shirdelrana
Country:		GB

2.	Domain Name

claimdirectuk.co.uk (“the Domain Name”)

3.	Procedural Background

The Complaint was filed with Nominet on 5 February 2008.  Nominet validated the Complaint on 6 February 2008 and notified the Respondent by post and by email, informing him at the same time that he had until 28 February 2008 to file a Response.

On 27 February 2008 the Respondent contacted Nominet by telephone and by email to request an extension to the Response date due to the fact that he had only just become aware of the Complaint after suffering an accident.  In accordance with paragraph 12(a) of Nominet’s Dispute Resolution Service Procedure (“the Procedure”), Nominet granted an extension of 5 working days to the Respondent and notified both parties that the new deadline for the Response was 6 March 2008.  On 5 March 2008 the Respondent filed a non-standard Response in the form of an email.  

Nominet notified the Complainant that it had until 13 March 2008 to file a Reply, and the Complainant did so on 10 March 2008.  

The Informal Mediation procedure failed to produce an acceptable resolution.  On 23 April 2008 (after a one day extension granted by Nominet) the Complainant paid Nominet the required fee for the decision of an Expert pursuant to paragraph 7 of Nominet’s Dispute Resolution Service Policy (“the Policy”).

On 29 April 2008 the undersigned, Jane Seager (“the Expert”), confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as an Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question her independence and/or impartiality.

4.	Outstanding Formal/Procedural Issues

The Respondent’s Response was submitted in the form of a simple email and thus does not comply with the standard formal requirements set down by the Procedure.  Notably it does not contain the statement of truth at paragraph 5(c)(v):

“The information contained in this response is to the best of the Respondent's knowledge true and complete and the matters stated in this response comply with the Procedure and applicable law”

Paragraph 12(b) of the Procedure provides that it is for the Expert to consider the “admissibility, relevance, materiality and weight of the evidence”, and it is therefore clear that such an omission has affected the weight given to the Respondent’s submissions by the Expert.  However, it should also be noted that the Expert has nevertheless carefully considered the Response in the interests of fairness, given that the Respondent has clearly not received any legal assistance in filing his submission.

The second minor issue which falls to be considered here is that the Complainant states that it has included a copy of its cease and desist letter to the Respondent in annex to the Complaint, but this appears to be missing.  However, the Complaint does contain the statement of truth required by paragraph 3(c)(ix) of the Procedure ("The information contained in this complaint is to the best of the Complainant's knowledge true and complete") and so the Expert is prepared to accept that this letter was indeed sent.  In any event the content or indeed the existence of the letter is not determinative in this case.

5.	The Facts

The Complainant is a limited company trading under the name “Claims Direct”.  It was incorporated on 7 May 2002 and is owned by Russell Jones & Walker, a well known firm of solicitors trading in England and Wales.  

The Complainant is a claims management company.  It considers whether personal injury victims have a valid claim caused by a third party's negligence.  In the event that there may be a valid claim, the Complainant will refer the applicant to a firm of solicitors, either Russell Jones & Walker or another firm on their panel.  The Complainant is authorised by the Ministry of Justice to carry out such activities. 

The Complainant is the registered proprietor of various Community and UK trade marks in the term CLAIMS DIRECT (notably trade mark numbers 2258925, E2067338, 2249430, 2223290 and E1686468).

The Complainant is also the registrant of a number of domain names incorporating the words "claims direct", including claimsdirect.co.uk which it registered in 1997 and which points towards its main website.  

The Respondent registered the Domain Name on 3 November 2006.  He is also connected with a company called Claim Direct UK Limited (Company No. 05982755) which was incorporated on 30 October 2006.  

At the time that the Complaint was filed, the Domain Name was pointing to a website inviting personal injury victims to contact Claim Direct UK Limited with a view to making a claim after an accident and obtaining compensation.  However, at the date of the decision, the Domain Name was no longer pointing to an active website.

The Complainant’s solicitors sent the Respondent a cease and desist letter on 19 December 2007 but no response was received.

6.	The Parties’ Contentions

Complaint

In addition to its registered marks, the Complainant also claims to have rights at common law in passing off.  The Complainant asserts that it is the biggest brand in the claims management sector, having had a presence on the internet for about ten years and having conducted significant advertising on television and in newspapers (links to the Complainant’s current UK television advertising campaign are included).  The Complainant states that it has been active for many years in trying to prevent imitators from trading on its good name.  

The Complainant also points out that its solicitors have made various efforts to reach Claim Direct UK Limited using the telephone number provided on the website to which the Domain Name was originally pointing, but such efforts have been in vain.  

The Complainant argues that it is clear that the registration of the Domain Name is abusive and intended to trade on its rights and goodwill.  The Complainant therefore requests a transfer of the Domain Name.

In support of its Complaint, the Complainant attaches the following documents:

•	Printouts of the five registered trade marks referred to in the Complaint;
•	A printout of the WHOIS of the Complainant’s main domain name, claimsdirect.co.uk;
•	A two page printout of the first page of the website to which the Domain Name was pointing at the date of the Complaint; and
•	A three page printout of the Complainant’s main website.

Response

The Respondent responded by email, the content of which can be said to be rather difficult to understand at times.  However, the Expert has carefully considered the email and is of the opinion that the Respondent’s main arguments may be summarised as follows:

Claim Direct UK Limited is a claims management company which provides legal advice to those who wish to pursue a claim for compensation after having suffered an accident, in the same manner as other companies in this field.  It works with a firm of solicitors in Harringay, North London, to deal with such claims.  Claim Direct UK Limited has a business bank account with Barclay’s bank and an accountant.  The Respondent asserts that the company does good business in the field of claims management.

The Respondent acknowledges that the Complainant was active before Claim Direct UK Limited in the claims management business and states that he respects the Complainant because of this.  

The Respondent also states that the Complainant has a good ranking on the Google search engine and is thus listed on the first page of Google search results (presumably as a result of a search on the terms “claim” or “claims” and “direct”, although this is not expressly stated).  The Respondent asserts that the Complainant has spent money to achieve its high Google ranking and uses Search Engine Optimisation (SEO) techniques to attract customers via the internet.  The Respondent then provides links to the results of searches on the terms “claim” and “direct” performed using a tool known as “Google Trends”.

The Respondent points out that both the Domain Name and the main domain name used by the Complainant use only a few words, namely “claim” and “direct”.  In the Respondent’s opinion these are not unique names like “Google”, “Yahoo” and “Microsoft”.  Instead they describe the type of business in question and are close to both the Complainant’s and the Respondent’s company names.  The Respondent stresses several times that the Domain Name matches the name of his company, Claim Direct UK Limited.

The Respondent states that he believes that the Domain Name is very interesting for all companies in the claims management field because “claim” and “direct” are two main keywords used for searching on Google and other search engines.  The Respondent claims to have had many offers to buy the Domain Name from many companies but he has never accepted them.

The Respondent states that as the Domain Name is very important to him he also registered the same one under .com two or three years ago.  He stresses that he has never registered any other domain names that are similar to his company name and used them to abuse other trade.  

The Respondent points out that the Complainant is also using the terms “claim” and “direct” in its company name.  He asserts that searches of the Companies House database and on the Google search engine reveal that the use of such words is normal in the kind of trade in question.

In addition the Respondent stresses that the Domain Name has the term “uk” at the end of it and is thus not the same as the Complainant’s main domain name.

Finally, the Respondent reiterates that the Domain Name is the same as his company name and that he never intended to abuse any other company.  He ends with the following wording:

“I will standing my word and will be using my solicitors if decision was not fair to me. 
As I am not solicitor and I am not familiar with those words I tried my best to giving my explanation and look forward to receive fair decision”.

Reply

In its Reply the Complainant points out that the Respondent has admitted that his use of the mark “Claim Direct” post-dates the Complainant’s use.  The Complainant asserts that the Respondent’s use thus infringes its registered and common law rights and adds that the Respondent appears to have no understanding of intellectual property rights.

The Complainant further asserts that the addition of the word “uk” after “claimdirect” in the Domain Name is abusive and cannot protect the Respondent.

The Complainant points out that the Respondent has not given any explanation for his failure to respond to the Complainant’s cease and desist letter of 19 December 2007. 

Finally, the Complainant states that Claim Direct UK Limited is not authorised under the Compensation Act 2006 to conduct claims management activities (unlike the Complainant who has incurred registration fees of £25,000 securing such authorisation).  In this regard, the Complainant states that it understands from the Claims Management Regulator at the Ministry of Justice that the activities of Claim Direct UK Limited are being investigated.

7.	Discussion and Findings

General

Under paragraph 2(a) of the Policy, the Complainant is required to demonstrate, on the balance of probabilities, that:

(i)	It 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

The Complainant holds various registered UK and Community trade marks in the term CLAIMS DIRECT, in particular trade mark number 2249430 (a word mark which contains no design element, only the term CLAIMS DIRECT). 

As far as the Complainant’s unregistered rights are concerned, the Expert would have liked to have been presented with more evidence as to the Complainant’s goodwill and reputation, other than an assertion that it is “the biggest brand in the claims management sector” and that it has conducted “significant” advertising (for example an indication of the amount actually spent on advertising or details of awards won etc).  

However, despite this omission, the Expert is satisfied that the Complainant has built up a substantial reputation in the UK in the claims management field.  The Expert is thus of the opinion that the Complainant has also acquired unregistered (common law) trade mark rights under English law in the term CLAIMS DIRECT.

The Expert therefore finds that the Complainant has both registered and unregistered Rights in the term CLAIMS DIRECT under the Policy (which defines Rights as including, but not limited to, rights enforceable under English law).

Furthermore, the Policy stipulates that the name or mark in which the Complainant has Rights (CLAIMS DIRECT) must be identical or similar to the Domain Name (claimdirectuk.co.uk).  It is accepted practice under the Policy to discount the “.co.uk” suffix, and so the only differences between the Complainant’s mark and the Domain Name are the removal of the “s” after the word “claim” and the addition of the term “uk” in the Domain Name.  The Expert is of the opinion that neither of these two differences is significant enough to mean that the Complainant’s mark and the Domain Name are dissimilar to one another, especially in view of the fact that the Complainant also operates in the UK.  

As a result the Expert finds that paragraph 2(a)(i) of the Policy is satisfied.  

Abusive Registration

Abusive Registration is defined in paragraph 1 of the Policy to mean a Domain Name which:

(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.

It is for the Complainant to demonstrate the above on balance of probabilities, but in this regard it should first be noted that the Complaint itself is of little assistance to the Expert.  Upon closer examination, it mainly consists of statements of fact about the Complainant and the Respondent, some of which are easily verifiable (for example registration dates), others of which are less so (for example the Complainant’s assertion that it is the biggest brand in the claims management sector).  The only argumentation appears to be the following phrase:

“It is clear that the registration of the domain name claimdirectuk.co.uk is abusive and intended to trade on the rights and goodwill enjoyed by the Claimant.”

Similarly the Complainant’s Reply consists mainly of factual statements apart from the following assertions:

“Their use amounts to an infringement of our clients’ registered and common law rights. They appear to have no understanding of intellectual property rights…….The addition of the word “UK” after “Claim Direct” is abusive and cannot protect Claim Direct UK Limited.” 

The Complainant does not expressly refer to the Policy in either the Complaint or the Reply, and seems to centre its case around trade mark infringement and passing off under English law.  Whilst it should be noted that such concepts may be of assistance to the Expert in determining Abusive Registration under the Policy, they are by no means determinative.  

In this regard, the Expert would highlight the wording of the Appeal Panel in Seiko UK Limited v Designer Time/Wanderweb, DRS 00248, which reads as follows:

“The Panel considers that parties and Experts should not be overly concerned with whether or not an allegedly abusive registration also constitutes an infringement of registered trade mark. The question of trade mark infringement is, as both parties (and the Expert) agree, one for the courts to decide. The question of abusiveness is for the Expert to decide. The two jurisdictions co-exist alongside each other, and no doubt there will be considerable overlap. However there may well be factual scenarios in which an abusive registration under the Policy would not be an infringement of trade mark under the 1994 Act, and where an infringement of trade mark under the 1994 Act would not be an abusive registration under the Policy. The safest course for parties and Experts is simply to address the terms of the Policy.”     

The Expert would stress that Nominet UK’s Dispute Resolution Service (DRS) is essentially a fast, simple procedure designed predominantly for clear cut cases of Abusive Registration under the Policy (often referred to as “cybersquatting”).  It is not intended to deal with complex points of English law in relation to infringement and passing off, which would be better left to a court of competent jurisdiction.  In particular, court proceedings would allow for a more detailed examination of the evidence on issues such as the similarity of the Domain Name and the Complainant’s marks, the likelihood of confusion and/or deception, and the type of damage suffered by the Complainant etc.  

It is with this in mind that the Expert has chosen to not to make any detailed consideration of the Complainant’s assertions with regard to trade mark infringement and passing off and instead to simply consider whether the Complainant has succeeded in making out its case under the terms of the Policy. 

Paragraph 3(a) of the Policy sets out a non-exhaustive list of five factors which may be evidence that the Domain Name is an Abusive Registration, as follows:

“(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
A. 	for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B.	as a blocking registration against a name or mark in which the Complainant has Rights; or
C. 	for the purpose of unfairly disrupting the business of the Complainant;

(ii) Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

(iii) The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent  is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

(iv) It is independently verified that the Respondent has given false contact details to us; or

(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.”

The Expert has chosen to reproduce this paragraph in full as a reading of both the Complaint and the Response would indicate that neither party is particularly familiar with the Policy.  

Upon careful consideration of the above, the Expert is of the opinion that paragraph 3(a)(ii) is  most relevant in this particular case, even though the Complainant has not provided any concrete evidence that people or businesses have actually been confused into believing that the Domain Name is connected with the Complainant.  Previous Experts have seen fit to interpret paragraph 3(a)(ii) as requiring a mere likelihood of confusion, and this is also felt to be appropriate here for the reasons outlined below.

As referred to in the section on the Complainant’s Rights above, the Expert is satisfied that the Complainant has built up a substantial reputation in the UK in the claims management field.  Even though “claims” and “direct” are both ordinary dictionary words, when used together they form a distinctive term which cannot be said to be merely descriptive of the Complainant’s services.  Given the degree of similarity between the Complainant’s mark and the Domain Name, in the Expert’s opinion it is therefore highly likely that certain internet users will in fact be confused into thinking that the Domain Name is connected with the Complainant and do business with the Respondent in error as a result.  Confusion is especially likely given the fact that internet users looking for claims management companies may well have just suffered an accident and thus be at their most vulnerable.  

It is true that such confusion may well disappear once the user accesses the Respondent’s website as, looking at the printouts provided by the Complainant, it does not appear that the Respondent has attempted to overtly copy the Complainant’s “get-up”.  To the best of the Expert’s knowledge, the Complainant does not have a logo similar to the one on the Respondent’s website which consists of a map of the UK with the words “Claim UK Direct” on it.  Both websites do contain quite similar wording, but upon closer examination the Expert is of the opinion that this could be merely due to the similar nature of the services being provided rather than any overt copying on the part of the Respondent.

However, the fact that some internet users may no longer be confused upon accessing the Respondent’s website does not matter.  If users access the Respondent’s website as a result of their initial confusion over the Domain Name and then realise that the Complainant is not in fact behind the website, they may well decide to continue to do business with the Respondent anyway on the (probably misinformed) basis that one claims management company is much the same as another, in which case the damage to the Complainant’s business will have been done and the Respondent will have been unfairly enriched.  

The Expert therefore finds that paragraph 3(a)(ii) of the Policy has been made out and thus that limb (ii) of the definition of Abusive Registration is satisfied, namely that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

It is therefore not strictly necessary for the Expert to go on to consider whether limb (i) of the definition of Abusive Registration has also been fulfilled, namely whether the Domain Name took unfair advantage of or was unfairly detrimental to the Complainant's Rights at the time when it was registered.  However, for the sake of completeness it should be noted that the Expert is convinced that the Respondent would certainly have been aware of the Complainant’s reputation when he registered the Domain Name.  It is therefore difficult to think of a plausible explanation as to why the Respondent would have chosen to register a domain name so similar to the Complainant’s mark if it wasn’t in order to take unfair advantage of the Complainant’s goodwill and reputation, and the Expert is satisfied that this is indeed the case.  The Expert therefore finds the Domain Name has been registered in a manner which took unfair advantage of the Complainant's Rights, in accordance with limb (i) of the definition of Abusive Registration.

Having said this, the Respondent has attempted to explain the reasons behind his choice of the Domain Name in the Response.  It is difficult to assess on the strength of this whether the Respondent genuinely believes that there has been no Abusive Registration or whether he is simply trying to convince the Expert of this in an attempt to keep the Domain Name (in accordance with paragraph 7(e) of the Procedure, the Expert is aware of the fact that Informal Mediation took place but not why it failed to resolve the dispute).

In the event that the Respondent may have a genuine belief that there has been no Abusive Registration, it seems sensible to briefly consider the arguments put forward in the Response and to explain why they are of no assistance to the Respondent.  Somewhat ironically certain of the Respondent’s assertions only help the Complainant’s case.  

The Respondent first states that Claim Direct UK Limited is a genuine claims management company with a bank account and an accountant.  However, even if this is true it is not enough to justify the Respondent’s registration and use of the Domain Name.  Indeed, it could be argued that if the company is actually carrying on claims management business using the Domain Name then this increases the likelihood of unfair detriment to the Complainant’s business.  

The Respondent’s assertions about the Complainant’s high Google ranking and the fact that the Complainant may have spent money on SEO techniques also serve no purpose as a way of justifying the Respondent’s actions.  Indeed, they only add weight to the Complainant’s claim to have built up a substantial reputation.  

In his Response, the Respondent provides links to the results of searches on the terms “claim” and “direct” on a tool known as “Google Trends”.  However this merely demonstrates the popularity of each of these terms relative to the total number of searches done on Google over time.  The popularity of these terms when taken separately does not mean that the Respondent is justified in combining them in a single domain name.  As previously explained, two ordinary dictionary words may form a distinctive term when combined, in much the same manner as more fanciful terms such as “Google” and “Yahoo”.  

The Respondent asserts that the words “claim” and “direct” are frequently used in the claims management business, as evidenced by searches of the Companies House database and on the Google search engine.  In the Expert’s opinion this may well be true of the word “claim”, as this can be said to partly describe what such companies do.  However, the same cannot be said for the word “direct”, which is presumably used by the Complainant to illustrate the speed and ease of its service.  It is most certainly not true that the two words are frequently used side by side (in that order) by third parties in the claims management business (regardless of whether the term “claim” is singular or plural).  

In this regard, the Respondent notes that his company name uses the terms “claim” and “direct”, as does the Complainant’s.  However, the mere registration of a company name does not mean that such a name is necessarily legitimate.  Furthermore, the Respondent places great reliance on the fact that his company name is the same as the Domain Name, but prior registration of a company name does not automatically legitimise the registration of a corresponding domain name.  

As referred to in the section on the Complainant’s Rights above, contrary to the Respondent’s apparent belief, the use of “uk” at the end of the Domain Name does not distinguish it sufficiently from the Complainant’s mark, especially as the Complainant also operates in the UK.

Finally, the Respondent acknowledges that the Complainant was active before Claim Direct UK Limited in the claims management business.  As previously stated, the Expert is satisfied that the Respondent knew about the Complainant’s prior activities not only at the time of his Response but also at the time that the Domain Name was registered.  The Respondent argues that he did not intend to abuse any other company, but in the Expert’s opinion his prior knowledge of the Complainant means that he would have been aware that the registration and use of the Domain Name would lead to him obtaining an unfair advantage on the back of the Complainant’s reputation.  It is therefore difficult to see how he could not have intended this to happen.

In short, none of the Respondent’s arguments carry any weight.  For the sake of completeness, the Expert would point out that paragraph 4(a) of the Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration and which the Respondent could have attempted to rely on.  On the face of it, paragraphs 4(a)(i)(A) and (B) could appear to be potentially relevant, and they read as follows:

“(i) Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has
A.	used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services; 
B.	been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name”
  
As far as paragraph (A) is concerned, in the Expert’s view an offering of goods and services cannot be said to be genuine if it takes unfair advantage of another company’s reputation.  In addition, the Expert has no reason to doubt the Complainant’s assertion that Claim Direct UK Limited has not obtained the relevant authorisation under the Compensation Act 2006 to conduct claims management activities and is being investigated by the Ministry of Justice.  Clearly this calls into question the “genuine” nature of the services on offer.

Turning to paragraph (B), even though the Respondent’s company name can be said to be identical to the Domain Name, the Respondent cannot be said to be “commonly known” by such a name, as this would require a far greater degree of fame than the Respondent can be said to possess.  Even if the Respondent did have the relevant degree of fame, the Expert is of the opinion that the Respondent’s abusive conduct would prevent the Respondent from relying on this defence.  

In the Expert’s opinion, none of the factors at paragraph 4(a) of the Policy offer any assistance to the Respondent.  

In conclusion, the Expert has considered the admissibility, relevance, materiality and weight of the evidence as a whole and is satisfied that the Complainant has succeeded in proving, on balance of probabilities, that the Domain Name is an Abusive Registration in accordance with paragraph 2(a)(ii) of the Policy.  

8.	Decision

In light of the above findings, namely that the Complainant has Rights in a 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. 

Jane Seager

12 May 2008