Power to Light Ltd -v- Pestel [2003] DRS 1052 (19 August 2003)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

The Complaint was lodged with Nominet on 11th June 2003 with hard copy papers received by Nominet on 17th June 2003. Nominet validated the Complaint and notified the Respondent of the Compliant by letter dated 19th June 2003 sent by post and email informing the respondent that he had until 11th July 2003 to lodge a response. The Respondent failed to respond within this deadline (or at all). On 15th July 2003 Nominet wrote to the Complainant confirming that the Respondent had failed to file a response and further that the Complainant had until 29th July 2003 to formally requested (and pay the appropriate fee for) an Expert decisions founded on the Complaint. On 28th July 2003 the Complainant wrote to Nominet confirming its request for an Expert decision and on 29th July Nominet received the appropriate fee pursuant to the Nominet UK Dispute Resolution Service Procedure (“the Procedure”) and everything Nominet UK Dispute Resolution Service Procedure. On 6th August 2003 Tom Thomas the undersigned (the “Expert”) 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 impartiality.

The Respondent has failed to submit a response to Nominet in time (or at all) in accordance with paragraph 5a with the Procedure.

Paragraph 15b of the Procedure provides inter alia that “if in the absence of exceptional circumstances the Party does not comply with any time period laid down in the Policy [the Nominet Dispute Resolution Policy] or this Procedure the Expert will proceed to a decision on the Complaint”. Accordingly the Expert will now proceed to a decision on the Complaint notwithstanding the absence of a response from the Respondent.

Paragraph 15c 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”.

The Expert notes that the domain name dispute was registered by the Respondent on 21st May 2003. This being the case the Expert is of the view that it is unlikely that the contact details provided by the Respondent at registration have changed since that date. Accordingly the Expert is satisfied that the Respondent has received all relevant communications from Nominet in relation to the Complaint and has elected not to file a response. In the circumstances therefore the Expert infers that the Respondent admits the factual assertions made by the Complainant in the Complaint. As such the Expert is satisfied that the facts asserted by the Complainant set out in the following section may be treated for the purposes of the decision as facts.

The Complainant company was incorporated on the 11 April 2003 under the name Power to Light Limited. The company was established to manufacture electronic power supplies or “ballast units” for use in film and TV location lighting. The Complainant is based in Manchester. The Complainant company was founded by Mr John Parkinson formerly engineering director of Power Gems Limited a competitor of the Complainant also based in Manchester. The Respondent has connections with Power Gems Limited having worked with one of its directors as part of the technical crew for a number of theatre productions at Salford University.

1. The Complainant has Rights in the name of Power to Light (with the addition of the suffix “Limited”) as this name represents the Complainants corporate name registered as Companies House on 11th April 2003.
2. The Respondent is a known associate of the director of a competitor company Power Gems Limited.
3. The Respondent has registered the Domain Name as a blocking registration against the Complainant; and
4. There is no other justification for the Respondent registering the Domain Name.

The Respondent has not responded to any of the correspondence issued by Nominet in relation to this dispute.

In accordance with paragraph 2 of the Policy the Respondent must submit to proceedings under the dispute resolution service if in respect of a Domain Name the Complainant satisfies the Expert in the balance of probabilities that:-

“ (i) the Complainant has rights in respect of the 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”

Definitions of “Rights” and “Abusive Registration” are provided in paragraph 1 of the Policy.

The Complainant is a limited company registered under the Companies Act 1985 as Power to Light Limited.

When comparing any name or marking which the Complainant has rights with the Domain Name, the first and second level suffixes of the Domain Name, being generic in nature are to be discounted.

The Complainant produced no evidence of ownership of any registered trademarks in or similar to the Domain Name nor did the Complainant produce any evidence to support any inference of goodwill associated with the Domain Name. Indeed since the Complainant was registered on the 11th April 2003 the Expert is satisfied that in the absence of any evidence to the contrary the Complainant has no such rights or goodwill. The Expert must therefore consider whether the Complainant is entitled to claim rights in the name of “Power to Light” simply by virtue of the fact that this is identical to the Complainant’s corporate name.

Under English law a company registered under the Companies Act 1985 does have certain rights in respect of its registered name. Section 26(1) of that Act prohibits the registration of a company with a name which is the same as a name already appearing on the index of names of current registered companies kept by the Registrar of Companies at Companies House. Section 28(2) of the Act also provides that a name registered in contravention of section 26(1) maybe compulsorily changed within 12 months of the date of registration.

The Expert recognises that forgoing rights are extremely limited and would not for example prevent a third party company (registered with a different corporate name) from trading as “Power to Light”. Nevertheless taking account of the principal set out in DRS appeal decision Seiko UK Limited v Designer Time / Wanderweb (DRS 00248) which stated that “the requirements to demonstrate “rights” is not a particularly high threshold test” the Expert finds that the Complainant has rights in respect of a name that is (excluding the suffix “Limited”) identical to the Domain Name.

i was registered or otherwise acquired in a manner which at the time when the registration or acquisition took place took unfair advantages 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”

The Policy provides (at paragraph 3a) a non exhaustive list of a factors which may be evidence that a domain name is an Abusive Registration. Of these factors the only relevant assertion the Complaint relates to paragraphs 3a(i). This paragraph refer to

“Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:-

B As a blocking registration against the name or mark in which the Complainant has rights;”

The evidence produced by the Complainant in support of the assertion relates to connections between the Respondent and a director of a competitor company operating in the same geographic area as the Complainant. No evidence has been produced by the Complainant that the competitor company in question Power Gems Limited has been directly involved in the registration of the Domain Name. The evidence produced by the Complainant in support of its assertion is at best circumstantial and there are in the Expert’s opinion a number of plausible explanations that could have been put forward by the Respondent to justify registration of the Domain name in rebuttal of the Complainant’s assertion. However the Respondent has failed to submit any such explanation or rebuttal to the Complaint. This being the case in the circumstances the Expert is inclined to infer that there is indeed some substance to the Complainant’s assertions and that the Respondent registered the Domain Name as a blocking registration. The Expert therefore finds on balance that the Domain Name is an abusive registration.

The Expert finds that on the balance of the probabilities that the Complainant has rights in a name which is the same as the Domain Name and that the Domain Name in the hands of the Respondent is an abusive registration. The Expert therefore directs that the Complaint in relation to the Domain Name be allowed and the Domain Name be transferred to the Complainant.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Power to Light Ltd -v- Pestel [2003] DRS 1052 (19 August 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1052.html Cite as: [2003] DRS 1052