 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Briscoe v Rodenberg [2008] DRS 5718 (23 September 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5718.html Cite as: [2008] DRS 5718 |
||
[New search] [Printable RTF version] [Help]
Decision of Independent Expert
Complainant: Ms Constance Briscoe
Country: GB
Respondent: Jeroen Rodenberg
Address: Ter Haarstraat 31a
Amsterdam
1053 LH
Country: NETHERLANDS
constancebriscoe.co.uk
The complaint was filed on 12/05/2008 and hardcopies with the exhibits were received on 13/05/2008. Details of the complaint were sent to the Respondent on 14/05/2008. On 06/06/2008 a non-standard electronic response was received from the Respondent by email which was forwarded on to the Complainant on the same day. No reply was received from the Complainant. Mediation was unsuccessful and on 02/09/2008 the Complainant paid the fees to refer the matter for adjudication by an appointed expert. On 04/09/2008 I was selected as the expert.
New revised versions of the Nominet Dispute Resolution Service (DRS) Policy and Procedure came into force on 29 July 2008. However, as this complaint was filed before that date, the previous Policy and Procedure apply. Any references I make to the Policy and Procedure are to that previous version.
The Respondent's response did not comply with the Procedure, and in particular paragraph 5 v. which states that:
[The response shall] conclude with the following statement followed by the signature of the Respondent or its authorised representative:-
"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 15 c. of the Procedure states:
If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate.
However, despite the lack of confirmation that the Respondent's response is, to the best of his knowledge "true and complete", I have not drawn any adverse inference from that failure and I have not taken it into account in arriving at my decision.
The Complainant is a barrister and part time judge. She is also a published author, having written an autobiography, entitled "Ugly", that recounted her abusive childhood and upbringing. It was published in January 2006 and became a best seller. A second book has recently been published entitled "Beyond Ugly".
After the publication of the Complainant's first book, the Respondent registered the Domain Name, constancebriscoe.co.uk, on 25 May 2006. At that time, the Respondent was a tenant of the Complainant living in her property in London.
The Domain Name resolves to a website operated by the Respondent that relates to the Complainant and which contains articles and stories about her life, reviews of her books, an online shop where her books can be purchased, and a "guestbook" where visitors to the website can leave their comments and messages. The website also carries a number of changing "Google Ads" with the usual links to the third party websites.
The website is entirely independent of the Complainant in the sense that it is not in any way controlled, contributed to or authorised by her.
Complainant:
In summary the Complainant says that:
• The Complainant has a right to the Domain Name because it is her name and has been since birth.
• The Complainant's website is www.constancebriscoe.com and the Respondent has, quite deliberately, registered a similar domain name with the intention of selling the Domain Name to her. He has repeatedly attempted to sell the Domain Name to her for several hundred pounds.
• Since the publication of the book "Ugly" in 2006 the Respondent "registered the domain name and set himself up as me … by registering my name and advertising by (sic) books and CD's on his site." He did so in order to take advantage of the Complainant's name and to prevent her from using her own name and confusing those who visit the website.
• Many of the job offers for TV work intended for the Complainant are sent to the Domain Name and received by the Respondent. The emails make it clear that the senders believe that they are contacting the Complainant. The entire presentation of the website is designed to confuse users into believing that they are contacting the Complainant and she has missed out on potential job offers because the Respondent has kept the emails. The Respondent has attempted to blackmail the Complainant by suggesting that if she wanted the emails in relation to job offers that she would have to buy the Domain Name off him for several hundred pounds.
• Every email that has been received on the site was intended for the Complainant and all the senders of the emails had assumed that they are contacting the Complainant as every email starts with "Dear Constance".
• The Respondent has traded as the Complainant and is making money at her expense. He has a number of adverts, links, and a shop, information and reviews all about the Complainant and it is all designed to confuse the user.
• The Complainant's reputation has been harmed and she has suffered financially by the Respondent continuing to give the impression that the website is linked to her and by users being continually confused because those who have contacted the site are expecting a response from the Complainant.
• The Respondent has given false information about himself. He claims that he is a UK individual but he is in fact resident in Amsterdam.
Respondent:
In summary the Respondent says that:
• The Respondent registered the Domain Name in May 2006 which then became part of his domain name portfolio to generate income via advertisements. At the time he was living at the Complainant's address as her tenant and as a permanent UK resident. He has never given false information about himself.
• The Respondent did not register the Domain Name with the purpose of selling it. He owns many domain names which all generate income via advertisements. The sole intention of the Domain Name was to make money via advertising. He tried to attract visitors by getting a high Google ranking and creating an informative website.
• The Respondent set up the website as a fan website. Under no circumstance has he ever set himself up as being the Complainant. The website is clear. At the front page it is advertising her new book "beyond Ugly" with the slogan "buy HER new book now" and not with "buy MY new book".
• In December 2006, whilst the website to which the Domain name resolved was still profitable it lacked the average income stream of his portfolio of domain names and he decided to sell the website. He valued the site at £300 at that time.
• By coincidence, in May 2007 The Complainant approached the Respondent by email to tell him how impressed she was with the website. The Respondent used the occasion to offer to sell the website to the Complainant for £250-350. Despite the fact that it had a high number of hits, a high Google ranking and the various requests the site received, the Complainant was not interested in buying it. She said that people would know how to contact her anyway.
• In June 2007 the Respondent put the website up for sale on various auction websites but it never made the reserve price.
• Between June 2007 – Jan 2008 the Respondent had "some good and friendly contact" with the Complainant's publisher about the release date of her new book.
• In January 2008, unlike the previous time, the Respondent decided to approach the Complainant to buy the website. He did not receive a response.
• At the time the Respondent intended to sell the Domain Name and website it was not strange to offer it first to someone who he thought might be most interested in it, especially as the Complainant had made the first contact. As she was not interested, he put the site for sale on various auction sites. As that didn't work out well, he continued to spend time and money to develop the site to increase income. It now generates around £50 a month from Google advertisements and should be worth between 9 and 11 times monthly income.
• The Complainant says that she is missing out on a lot of job offers and that therefore he has harmed her financially, but in fact she wrote to him to say that that people knew how to contact her and she was never interested in buying the Domain Name and website.
• The Respondent challenges any attempt to point out one word on the website that could harm the Complainant's reputation.
• The Complainant should be happy that he has created a fantastic fan base, that he has sold many of her books (generating income for her as well) and has allowed people to share their positive reviews of her books.
• The website and Domain Name are still for sale, but in December he is planning to open a chat facility on the website so people can chat with each other. He hopes that this will bring the site in line with the revenue stream of his other websites.
General
In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:
These terms are defined in the Nominet DRS Policy as follows:
• 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.
• Abusive Registration means 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.
Complainant's Rights
The Complainant does not have any registered trade mark rights protecting her name, but Rights for the purposes of the Nominet DRS can comprise more than just registered trade mark rights. She has exhibited her birth certificate and passport in her name, and, as the author of a best selling book, she is likely to have acquired common law "passing off " rights relating to her name.
I therefore find that the Complainant does have Rights in the name CONSTANCE BRISCOE, being a name or mark which is identical to the Domain Name, ignoring the .co.uk suffix.
Abusive Registration
One point that can be dealt with quickly is the Complainant's claim that the Respondent has given false information about himself, by claiming that he is a UK individual but he is in fact resident in Amsterdam. Paragraph 3 a. iv. of the Policy (being one of the factors which may be evidence that the Domain Name is an Abusive Registration) states "It is independently verified that the Respondent has given false contact details to [Nominet UK]".
However, the Respondent pointed out in reply that at the relevant time he was actually living in the UK at the same address as the Complainant as her tenant. The Complainant has had the opportunity to deny that and has not done so. I therefore find that Paragraph 3 a. iv. of the Policy has not been made out by the Complainant and I do not rely upon it.
Paragraph 3 a. i. A of the Policy states "Circumstances indicating that 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."
The Complainant is quite adamant that the reason the Domain Name was registered must have been so that it could be sold to her. She cites a number of emails where the Respondent has offered to sell the Domain Name and associated website to her. That much is correct. However, that does not necessarily mean that the Respondent originally registered it for that purpose.
The Respondent says he has a portfolio of domain names and all of them, including the Domain Name, were registered by him for the purpose of making money via advertisements. There is certainly nothing objectionable about that per se.
The Respondent points out that in fact it was the Complainant who first made contact with him, and he exhibits an exchange of emails between 17 and 22 May 2007. The first email is dated 17 May 2007 from the Complainant to the Respondent which simply says
"Dear jeronerody
I have found your website and I am very impressed. Please let me have a contact number for you.
Constance Briscoe."
There is no direct suggestion there of the Complainant wanting to buy the website, but the compliment paid of being "very impressed" by it and asking for a number to contact the Respondent may have lead the Respondent to believe that this was the reason for the contact. Equally, it could have been the Complainant attempting to get better contact details for the purpose of making a claim or complaint and not wanting to frighten off the Respondent. Whatever the reason, the Respondent replied. He thanked the Complainant for being impressed by the website and then said that in fact he was planning to sell it "in the next couple of weeks". He went on to say "I didn't think about it before but maybe it's something you might be interested in". He went on to make his sales pitch by confirming that over 70% of the visitors to the website were from the UK and it often had more than 10,000 visitors each month, and he made the point that he had so many domain names he had to sell "a couple of hundred" in order to keep his portfolio manageable. He said a fair price would be £250-300 and he asked the Complainant to let him know what she thought about it.
The Complainant responded to the email simply saying "I have my own web site and domain name." and then, somewhat cryptically, "My interest was not in buying yours. Her email ended there, without expressing what the interest actually was.
However, the Respondent did not leave it there. He decided to turn up the sales pressure. He emailed back, saying it was a pity she was not interested. He quoted an email he had received from a magazine asking to set up an interview with the Complainant, and confirmed that he very often received such emails. He went on to point out that, whilst she may have a dot com website, the most important one in the United Kingdom is .co.uk and that by not having that address she would be missing out on a lot of probably important messages and make it more difficult for people to contact her.
The Complainant replied to the email and also copied in Kerry Hood of Hodder books, her publisher, saying "I thought you might be interested in this". This was presumably a comment directed at her publisher. Kerry Hood responded to the Respondent confirming that she worked on publicity for the Complainant's book and asking whether he had actually had a request from a magazine to interview the Complainant, and, if so, would he let her know who it was. The email ended by saying "The web site is good - well done. All the best, Kerry"
The Respondent replied to Kerry Hood confirming that he had received a request for an interview with the Complainant and in fact he received lots of requests for similar things and he had sent most of them on to the Complainant's own website but had stopped doing that because it was too much work. He again confirmed his intention to sell the website and Domain Name and thought it was worth between £250-350 based on the traffic which sometimes topped 15,000 visits per month and the fact that it was ranked number 1 on Google in response to a search for "constance briscoe". He ended by asking her to confirm "before Tuesday next week" if there was interest in buying the Domain Name and website. He copied out the email he had received from the Sunday Times magazine asking to set up an interview with the Complainant, but said he was not prepared to do it again as it was too time consuming and "it's part of the value of this domain and website."
Kerry Hood replied thanking him, but not responding to the further offer to sell. The Respondent replied to Kerry Hood saying "I guess this means that you are not interested in buying this domain + website? Cause its funny, again today I got a request from someone who wants an interview"
That prompted an email from the Complainant herself on 22 May 2007 saying
"Dear Jeroen,
Thank you once again for your email but I get request for interviews at least twice a month and not all of them I agree to do. I have my own publicity agent and agent if someone wants an interview they normally know how to get in contact with me. I wish you well with the website and domain name.
Constance"
As far as I can see, there is nothing in this email exchange to suggest that when the Respondent had initially registered the Domain Name a year earlier he had done so for the purpose of selling it to the Complainant, whether for an inflated price or otherwise. It smacks of nothing more than an opportunistic attempt to sell it following the contact made by the Complainant in which she had confirmed how impressed she was with the website and wanting a contact number for him. Whilst the Respondent's offers to sell the Domain Name and website had been rebuffed, all he had received from the Complainant and her publisher at this time were compliments about the website and good wishes. There was no hint of the complaint and claims the Complainant now makes. Quite the opposite in fact.
However, this email exchange in May 2007 was not the end of the communications. The Complainant has exhibited other later emails. It seems the Respondent would not take "no" for an answer. He emailed Kerry Hood on 28 March 2008, copying in the Complainant, confirming he had received an invitation from the BBC to involve the Complainant in a television series and said "As you know these kind of invitations are passing by weekly". He pointed out that even if they were not interested in the website itself they could direct the Domain Name to their own website at www.contancebriscoe.com. He invited Kerry Hood to think about it and let him know.
Having received this email from the Respondent, Kerry Hood emailed the Complainant on 28 March 2008 saying
"I thought you were putting a stop to him…! Will you have a look at the request and see if it is something you'd like to do? Kerry".
The Complainant replied to Kerry Hood on 28 March 2008 saying
"Please email this person ND (sic) TELL HIM THAT WE WILL NOW TAKE ACTION AGAINST HIM SINCE HE HADS (sic)BEEN PASSING HIMSELF OFF AS ME FOR QUITE SOME TIME AND NO WE ARE NOT INTERESTED IN USING HIM AS OUR AGENT.
Constance Briscoe"
Kerry Hood replied to the Complainant suggesting that the Complainant herself should tell him this rather than her.
The Complainant then wrote to the Respondent on 29 March 2008 in the following terms:
Saturday, 29 March 2008
DOMAIN NAME constancebriscoe.co.uk
Dear Mr Rodenberg,
I am writing to you to invite you to pass over the domain name constancebriscoe.co.uk. As you know you have been operating under that name for quite some time and you have quite deliberately given the impression that I am connected to or involved with that site and quite disgracefully you have misled others into believing that they are contacting me when they email the site. In addition to that you profited from your misrepresentation.
You have also tried on a number of occasions to sell the domain name to me for several hundred pounds we have refused.
I am quite prepared to resolve the issue of the domain name before a tribunal or in court. I will expect you to reimburse my costs should that become necessary and I will take ever (sic) step to make sure that you do.
You have fourteen days from the above date to hand over the domain name or to indicate you (sic) intentions after that I will peruse (sic) you through legal channels.
Constance Briscoe."
I assume that this is the letter the Complainant sent by registered post and to which she received no reply. The Respondent says he did not receive it because he had recently moved address, and has now updated his address on WHOIS.
In any event, the Respondent persisted and ramped up the pressure with another email on 31 March 2008 to Kerry Hood, copied in to the Complainant, saying that he had received a second email from the BBC who were desperate to get in contact with the Complainant. He opined that it would be much easier if they took over the website/domain and offered it for £299 which he though was not much money considering the emails he was receiving and the effort he had put into the website and how the BBC television series referred to in the emails would be "a fantastic opportunity to reach a broader range of public" .
That was quickly followed by another email from the Respondent later the same day confirming he had received a request to send pictures of the Complainant and her book to "one of Englands biggest newspapers for the Sunday edition." He concluded by saying "I will store the emails in case you want to take over the website."
That prompted an email from the Complainant to Kerry Hood simply saying
"Dear Kerry,
Please ignore this man.
Constance."
The parties communications ended there, until the Complainant made her complaint to Nominet.
It is clear that the Respondent has continued to make repeated attempts to sell the Domain Name and associated website to the Complainant, and that the tone and content of the Complainant's communications in 2008 had changed dramatically from those in 2007. The Respondent quite shamelessly took advantage of the fact that he was receiving, by mistake, lots of request from the media offering publicity and work to the Complainant. The Complainant labels this as out and out blackmail.
Whilst there may well be a degree of commercial blackmail involved, none of it really helps the Complainant to prove that the Respondent's original purpose in registering the Domain Name back in 2006 was to sell it to her for an inflated price in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name. Indeed, the sum of £250-350 sought by the Respondent may well not exceed those expenses bearing in mind the work involved in designing and running the website to which the Domain Name resolves. I am also conscious of the fact that the Respondent had registered the Domain Name and appears to have begun using it a year before there had been any offer to sell it to the Complainant, and such offer was in direct response to contact having been made by the Complainant.
On the evidence before me it appears much more likely that the Respondent is correct in his assertion that his original intention was simply to make money from the website via advertisements.
The Respondent chose the Domain Name precisely because it was the Complainant's name and in order to cash in on her success and fame as an author. However, registering the Domain Name for that purpose does not necessarily demonstrate an abusive purpose.
Clearly, registering the Domain Name does block the Complainant from doing so, and that can, in certain circumstances, be abusive, as is made clear by Paragraph 3 a. i. B of the Policy ..."Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights"). However, that might be excused when the Domain Name is to be used for the purpose of a website dedicated to the Complainant.
Paragraph 4 of the Policy (being factors which may be evidence that the Domain Name is not an Abusive Registration) makes it clear that "Fair use may include sites operated solely in tribute to or in criticism of a person or business." That is what we have here, but it all depends upon the website itself. The fact that Paragraph 4 of the Policy refers to websites "solely" in tribute to (or criticism of) a person, does not in my view preclude such a website from also making money from advertisements or by selling official merchandise associated with the person, provided the content of the website is not misleading.
If any support for that is needed, paragraph 4 a i A of the Policy confirms that one of the factors that may evidence that the Domain Name is not abusive is "Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has 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." Selling official merchandise, such as, in this case, the author's books, would be a genuine offering of goods, again provided the content of the website is not misleading.
I believe the nub of this matter is whether or not the website to which the Domain Name resolves is misleading.
There is no doubt that the Respondent receives, by his own admission, a large number of enquires through the website from media organisations trying to contact the Complainant. In addition, the Complainant has exhibited a very large number of messages from the websites "guestbook". They are written by members of the public who have visited the website, many of whom have clearly been very moved by the Complainant's book. They are all addressed to the Complainant and it is clear from their content that the writers of them believe they are communicating with the Complainant.
When trying to sell the Domain Name and associated website to the Complainant, the Respondent made a point of stressing that it returned number 1 on a Google search for the words "constance briscoe." He is right, I tried it and it does. The Complainant's own website also returns at number 2 as follows.
"1. CONSTANCE BRISCOE - Ugly, Beyond Ugly .....and more - Home
Constance Briscoe - The official fan club - Ugly, Beyond Ugly and more..., Constance Briscoe - Pre-order her new book - Beyond Ugly.
www.constancebriscoe.co.uk/ - 35k - Cached - Similar pages
2. Constance Briscoe - Welcome
This website & its contents are © 2008 Constance Briscoe Home | Books | About | Reviews | Contact | News.
www.constancebriscoe.com/ - 9k - Cached - Similar pages"
It can be seen that the Respondent is prominently claiming that his website is "The official fan club" in the Google search results, which replicates the content of the relevant "meta name="description" metadata of the website.
When entering the website the home page says this:
"Become member of the official "Constance Briscoe Fan Club" and get informed about all events and new releases - register here (your details will NOT be distributed to third parties or used for other purposes!).
Big fan of Constance? Write your message or review in our Guestbook. She told us that she reads all messages on a regular basis!"
A claim to be the "official" fan club clearly carries with it an implication of endorsement or involvement by the Complainant herself. That would certainly explain why all the messages left in the guestbook are addressed and written personally to the Complainant. The claim to be the Complainant's "official fan club" would also explain why so many media organisations try to contact the Complainant via the website with interview requests and offers of work. However, the claim to be the official fan club website of the Complainant is untrue and misleading.
Paragraph 3 a. i. C of the Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) states "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant)
I am also mindful of paragraph 3 a. ii. of the Policy which states "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."
If the Respondent had, when registering the Domain Name, intended subsequently to make the untrue and misleading claim to be the Complainant's official fan club then paragraph 3 a. i. C of the Policy would clearly be made out. Such an untrue and misleading claim made on the website associated with the Domain Name would undoubtedly disrupt the Complainant's business and do so unfairly.
However, part of the pack of information supplied to me by Nominet are screenshots of the website. There is a date shown of 14 May 2008, two days after the complaint was filed and the same day the Respondent was informed of the complaint by email. The screenshots show a material difference in what was said on the home page of the website at that time. The equivalent part read:
"If you would like to be informed about Constance Briscoe on a regular basis please register here (your email address will NOT be distributed to third parties or used for other purposes!).
Please leave your reviews about her new book "Beyond Ugly" in the Guestbook."
There is no claim to be the official fan club, nor any claim that the Complainant had confirmed that she reads all messages left in the guest book on a regular basis. The screenshots do not show whether or not the relevant metadata of the website at that time included the claim to be "the official fan club" so that such a claim would return along with details of the website in response to a Google search. There is no indication of when that claim was first made by the Respondent.
There is therefore insufficient evidence before me to conclude that, on the balance of probabilities, the Respondent had intended to make such a misleading claim when he first registered the Domain Name. I therefore believe that paragraph 3 a. i. C of the Policy has not been made out and do not rely upon it.
But there is no doubt that the Respondent is now making the untrue and misleading claim that the website associated with the Domain Name is the Complainant's official fan club and that the Complainant has confirmed to him that she regularly reads all the messages left in the website's guestbook. I have no doubt that by doing so the Respondent is, in the words of paragraph 3 a. ii. of the Policy, using the Domain Name in a way which is confusing people and businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. In the circumstances, the Domain Name is being used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights, and as such is, in the Respondent's hands, an Abusive Registration.
For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that she has Rights in respect of the name CONSTANCE BRISCOE, being 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.
In the circumstances I order that the Domain Name be transferred to the Complainant.
Chris Tulley
23 September 2008