Nominet UK Dispute Resolution Service

DRS 05571

Villagefetes -v- Owen Webster

Decision of Independent Expert

a.	Parties

Complainant:	Villagefetes
Country:	GB

Respondent:	Owen Webster
Country:	GB

b.	Domain Name

villagefete.co.uk (the “Domain Name”)

c.	Procedural Background

Definitions used in this decision have the same meaning as set out in the Nominet UK Dispute Resolution Service Policy Version 2, September 2004 (the “Policy”) and/or the Nominet UK Dispute Resolution Service Procedure Version 2, September 2004 (the “Procedure”) unless the context or use indicates otherwise.

Nominet received hard copies of the Complaint in full on 26 March 2008 and notified the Respondent of the Complaint by letter and e-mail dated 4 April 2008.  On 4 April 2008 Nominet received notice of a mail delivery system failure to the address postmaster@villagefete.co.uk.  

No Response was received from the Respondent by the required deadline of 28 April 2008 and Nominet so informed the Complainant and the Respondent by letter and e-mail dated 29 April 2008.  In the circumstances the dispute did not proceed to informal mediation.  

The Complainant submitted a non-standard submission by e-mail dated 8 May 2008.  Nominet notified the Respondent of this non-standard submission by e-mail dated 12 May 2008.  

Nominet received the appropriate fee from the Complainant on 12 May 2008 for a decision of an expert pursuant to §7 of the Policy.  

Steve Ormand, the undersigned, (the “Expert”) confirmed to Nominet on 13 May 2008 that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties that might appear to call into question his independence and/or impartiality.

d.	Procedural Issues

The Respondent has registered the Domain Name as a non-trading individual and opted to have his details withheld from the public register.  However, full contact address details still have to be provided to Nominet and maintained by the individual in order to satisfy the registration requirements.  
Nominet notified the Respondent of the Complaint in accordance with §2a of the Procedure.  Although an e-mail to postmaster@villagefete.co.uk dated 4 April 2008 was returned as “undeliverable”, no such message was received in respect of e-mails sent to the Respondent’s contact e-mail address and there is no evidence before the Expert to indicate that a later e-mail to postmaster@villagefete.co.uk was returned as undeliverable.  Furthermore, under §2e of the Procedure, Nominet’s letters to the Respondent’s contact postal address are deemed to have been received by the Respondent unless Nominet or the Expert decide otherwise.  From the records in the Complaint file it is clear that Nominet have taken all necessary steps under the Procedure to contact the Respondent at the contact address details that he provided.

There is no evidence before the Expert to indicate exceptional circumstances that prevented the Respondent from submitting a Response to the Complaint within the required time period or which should lead the Expert to take any action other than proceeding to a Decision on the Complaint pursuant to §15b of the Procedure.  Accordingly, the Expert will now proceed to a Decision and is entitled, pursuant to §15c of the Procedure, to draw such inferences from the Respondent’s failure to comply with the Policy or the Procedure as the Expert considers appropriate.

Nominet notified the Expert in the Complaint file that the Respondent has been mentioned in at least three decisions where there was a finding of abuse.  

Having considered the explanatory paragraph provided in the Complaint file in relation to the Complainant’s non-standard submission, the Expert exercised the discretion granted by §13b of the Procedure to request the full text of this submission.  Nominet provided the full text to the Expert on 20 May 2008. 

e.	The Facts

Complainant

From the company registration number provided, the Complainant was registered at Companies House on 24 August 2004 as Villagefetes Limited.  

The Complainant operates an online advertising company within the events and leisure industries through a website at villagefetes.co.uk.

Respondent

The Respondent registered the Domain Name on 14 June 2005.  

f.	The Parties’ Contentions

The Complaint

The Complainant contends that it has Rights in the name VILLAGEFETES which is similar to the Domain Name because:
a.	Villagefetes was formed as an online advertising company for businesses within the events and leisure industries in 2000.
b.	It is registered as Villagefetes Limited (Company Number 05213213).
c.	Its main trading website is villagefetes.co.uk (screen picture provided).
d.	Its website is aimed at businesses involved with the events industry.  Business types include: mobile caterers, ice cream van operators, amusement ride operators, equipment hire companies etc.  Key areas include: used items for sale, directory of suppliers, business start-up areas, wholesale product search and businesses for sale.

The Complainant contends that the Domain Name in the hands of the Respondent is an Abusive Registration because:
a.	It has no relationship with the Respondent.
b.	The Domain Name appears to have been primarily registered via www.sedo.com to attract visitors from the Complainant’s website who misspell villagefetes.co.uk. 
c.	The Respondent has provided automated generated keyword content to match the theme and subject of the Complainant’s website from adwords and adlinks.  The website to which the Domain Name resolves contains no unique content and when refreshed in a browser displays a new look with the same content (screen pictures provided). 
d.	The Respondent is clearly using the Domain Name in a way that misleads and confuses visitors into thinking that it is controlled and owned by the Complainant with the intention to make money from accidental visitors.
e.	The Nominet website shows that the Respondent is in the habit of making similar domain name registrations with other well known domains. 
f.	The Domain Name registration is automatically abusive because the Respondent has had three or more DRS cases against him:
i.	DRS 05213  Nov 2007 monarchholidays.co.uk (Transfer);
ii.	DRS 04952 Aug 2007 groupamainsurance.co.uk (Transfer);
iii.	DRS 04200 Nov 2006 nobelmarine.co.uk (Transfer);
iv.	DRS 03967 Sept 2006 newburybuildingsociety.co.uk (Transfer);
v.	DRS 03811 July 2006 nationalcountiesbuildingsociety.co.uk (Transfer)
g.	This matter has been brought to the Complainant’s attention by telephone conversations with its customers.  The Complainant is concerned that emails sent to it may have been sent to the wrong address. 

The Response

The Respondent did not reply.

The Complainant’s Non-standard Submission

The Complainant submitted the following explanatory paragraph with its non-standard submission:

“Since the Complainant (Villagefetes) commenced action through the Nominet DRS service the respondent has after notification of proceedings re-directed the domain villagefete.co.uk to another domain (website) with the deliberate intention to mislead any expert decision.”

The full submission provided to the Expert is:

“The respondent has since notification from Nominet DRS service re-directed the domain villagefete.co.uk to the following website address. http://www.otford.info/villagefete/
The Complainant (Villagefetes) concern is that if the experts (sic) decision goes in the favour of the respondent the domain villagefete.co.uk will revert back to the previous sedo.com hosting account and website setup.”

g.	Discussion and Findings

General

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both limbs of the test that:

1.	it has Rights in respect of a name or mark identical or similar to the Domain Name; and
2.	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

Rights is defined in §1 of the Policy as including, but not limited to, rights enforceable under English law, but a complainant may not rely on rights in a name or term that is wholly descriptive of the complainant’s business.  The wholly generic domain prefix “www” and the suffix “.co.uk” are discounted for the purposes of establishing whether a complainant has Rights in a name or mark which is identical or similar to a domain name.

The name VILLAGEFETES is in general everyday use as a descriptive phrase combining the dictionary meaning of the words “village” and “fetes” to describe celebratory events that occur regularly throughout the UK.  The Complainant has a difficult obstacle to surmount to show goodwill in descriptive words.  The words must have acquired a secondary meaning associating them to the Complainant.  

The Complainant quotes its company registration number and references its website address at www.villagefetes.co.uk as evidence of its assertion of Rights in the name.  

The registration of a company name does not in itself create Rights (see DRS05522 Location Motorhomes Limited v International Travel Extras Limited).  Villagefetes Limited was registered in August 2004 some 10 months before the registration of the Domain Name.

The screen picture of the Complainant’s website does indicate a business “involved with the events industry” and there is a reference to a copyright statement (2001) to Villagefetes.  The website was apparently revised on March 14, 2008.  The Expert checked villagefetes.co.uk on the Nominet WHOIS service and notes that it was registered on 21 September 1999 and is registered at the Complainant’s address.

The Complainant has not demonstrated how long it has traded as VILLAGEFETES or the extent of its trading under that name.  A 2001 copyright statement, even though it is provided under a statement of truth, and evidence of registration of a domain name are not sufficient.

VILLAGEFETES also has strong descriptive connotations but, given the lack of evidence before the Expert, it is not possible to determine whether the name is wholly descriptive of the Complainant’s business.

The Complainant has failed to provide evidence that the name VILLAGEFETES has acquired a secondary meaning and has not discharged its burden of proving on the balance of probabilities that it has Rights in the name.  The Complainant has failed to satisfy the first limb of the test.

Strictly, there is no need to consider the second limb of the test.  However, the Expert will consider issues arising under this Complaint in relation to Abusive Registration.

Abusive Registration

Abusive Registration is defined in the Policy as a Domain Name which either:

1.	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
2.	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

The appeal panel in DRS 04884 (Maestro International, Inc v Mark Adams) concluded:  “Where a domain name is a single ordinary English word, the meaning of which has not been displaced by an overwhelming secondary meaning, the evidence of abuse will have to be very persuasive, if it is to be held to be an Abusive Registration ….”.  

The appeal panel’s conclusion clearly extends to two ordinary English words and, therefore, has significant implications for the Complainant.  If the Complainant could have demonstrated sufficient Rights to satisfy the first limb of the test under §2 of the Policy, it would still have a significant hurdle to overcome to satisfy the second limb of that test.  Conversely, if the Complainant had been able to overcome the hurdle of demonstrating an overwhelming secondary meaning in the words, it would have a relatively easier task to demonstrate abuse.

If the Complainant had been able to show minimal Rights, it has not in any case presented “very persuasive evidence” that the Respondent registered the Domain name, or has used it, in a manner that is abusive.  The Complainant has made bare assertions as to the Respondent’s motive in registering the Domain Name and to confusion caused to users.  The evidence of the Respondent’s use of the Domain Name, in the form of screen pictures, is not very persuasive.  

The Respondent’s failure to reply to the Complaint and his re-direction of the Domain Name after the date of the Complaint might ordinarily be an indication of abusive intentions if the Domain Name was a well known mark or name exclusively referable to the Complainant.  Notwithstanding the Respondent’s motive, the re-direction of the Domain Name demonstrates the ordinary use and meaning of the words since it is now redirected to the Otford village’s website promoting an apparently well known village fete.

An examination of the domain names cited as a pattern of registrations of well known names or marks in which the Respondent has no apparent rights indicates that:

1.	Four out of the five domain names were registered between 17 May 2005 and 29 July 2005 (the registration date of the 5th domain name is not quoted in the decision).  The Domain Name was registered in the middle of this period.

2.	The names chosen by the Respondent in these cases incorporated established names to which significant rights attached.

There is no evidence to suggest that these 6 domain names are the Respondent’s only registrations or whether they are part of a larger series of potentially abusive registrations or part of a series incorporating names of a similar nature to the Domain Name.  Although registered in the same period, the nature of the name in this case does not persuade the Expert to accept that the Domain Name is part of the same pattern. 

The fact that the Respondent has also been found within the last 2 years to have made an Abusive Registration in three or more DRS cases means that there is a presumption of Abusive Registration in this case, under §3c of the Policy, unless the Respondent rebuts that presumption by proving it is not abusive.  Since the Respondent has not replied to the Complaint then clearly he has not rebutted the presumption had the Complainant established Rights.

h.	Decision

In light of the foregoing findings, namely that the Complainant has failed to establish Rights in a name which is similar to the Domain Name, the Expert directs that no action is taken in respect of the Domain Name, villagefete.co.uk.

Signed:Steve Ormand
Date: 	2 June 2008