GuideStar UK -v- Wilmington Business Information Ltd [2005] DRS 02193 (20 May 2005)

GuideStar UK -v- Wilmington Business Information Limited

Nominet UK Dispute Resolution Service

DRS 02193

Decision of Appeal Panel

Parties

Complainant:		GuideStar UK
Country:		GB

Respondent:		Wilmington Business Information Limited
Country:		GB
Email:			

Domain Name

GUIDESTAR.CO.UK

Procedural Background

On 17 November 2004 the Complaint was lodged with Nominet in accordance with the Dispute Resolution Service Policy (“the DRS Policy”) and hard copies of the Complaint were received in full on 18 November 2004.

Nominet validated the Complaint on 23 November 2004.  

On 23 December 2004, following extensions of time granted by Nominet, the Response was received by Nominet and forwarded to the Complainant.

On 12 January 2005, following an extension of time granted by Nominet, the Reply was received by Nominet and forwarded to the Respondent.  

On 4 February 2005 Mr Philip Leith was selected as the Expert having confirmed his independence and willingness to act.

On 21 February 2005 the Expert issued his decision in which he held that “the Complainant succeeded in demonstrating a right to the Domain Name, but did not succeed in demonstrating an Abusive Registration” and declined to order the transfer of the Domain Name to the Complainant.

On 29 March 2005 the Complainant lodged this Appeal and the Appeal Notice was forwarded to the Respondent.  

On 19 April 2005 Nominet received the Respondent’s Response to the Appeal Notice and forwarded it to the Complainant.

On 26 April 2005 the undersigned Panelists, Tony Willoughby, Andrew Clinton and Mark de Brunner were appointed to form the Panel of Appeal (“the Panel”) all three having confirmed their independence and willingness to act.  

Factual Background

The Complainant was incorporated in England as a company limited by guarantee on 23 December 2002.  On 23 April 2003 it was registered as a charity with the Charity Commission of England and Wales. 

The Complainant was incorporated to emulate the success of the GuideStar Charity in the US, i.e. to collate information about UK charities in an electronic database and to make that information readily available via the Internet to all interested parties, whether they be donors, funders, boards of trustees, grant making charities, government policy makers and researchers.

It has yet to launch its service, but it is apparent from the press cuttings and other literature exhibited to the Complaint that significant sums of money have been invested in the project and that its impending service has attracted much attention both favourable and unfavourable.

The Complainant stemmed from research undertaken by the Institute of Philanthropy in 2001 and has the support of the UK Government and the Charity Commission.  John Stoker, the Chief Charity Commissioner, is quoted as having said:

	“ The Government funding of the GuideStar UK initiative creates    an exciting  opportunity for us and the charity sector. There is much hard work ahead, but an opportunity has been created, which the sector and we must now seize.“

The Complainant operates a website at www.guidestar.org.uk.  

The Respondent states and the Panel accepts that “the Respondent, Charity Choice and Caritas Data are well known and respected brands within the charity sector”.  The Respondent maintains a database containing financial information on UK charities.

The Respondent registered the Domain Name on 22 February 2004.

From June to August 2004 visitors to the website connected to the Domain Name were redirected to the Respondent’s site at www.charitychoice.co.uk.  

Since August 2004 the Respondent has operated what it describes as a protest site at www.guidestar.co.uk.  The page is headed “Concerns About The Public Funding Of Guidestar UK” and goes on to set out what is the Respondent’s basic complaint, namely that if the process leading to the Complainant’s formation and funding had been properly conducted at the outset, the Respondent’s database and related services would have been assessed for suitability and the Respondent would have been allowed to compete for the business. In addition, the page features links to the Respondent’s operating website.

On 30 July 2004 the Complainant wrote a letter to the Respondent objecting to the Respondent’s registration of the Domain Name and seeking transfer of the Domain Name. The same day a telephone conversation took place between the Managing Director of the Respondent and the Chief Executive of the Complainant. Those communications were then followed by further communications between the parties and/or their representatives. The Panel does not believe that these communications are in any way relevant to the issues which the Panel has to decide and, despite the effort devoted to dealing with them in the parties’ submissions, declines to spend further time on them.

The Parties Contentions (distilled from both the original submissions and the submissions on appeal insofar as they are relevant to the dispute)

The Complainant

The Complainant contends that it has built up a substantial reputation and goodwill in its name GuideStar UK and the shortened form, GuideStar. It contends that the names GuideStar UK and GuideStar are either identical or similar to the Domain Name.  

The Complainant further contends that the registration of the Domain Name by the Respondent was unfairly detrimental to the Complainant’s rights “as it has prevented the Complainant from registering the Domain Name for its own legitimate purposes”. 

The Complainant further contends that the registration was made for the purpose of unfairly disrupting the business of the Complainant.  The Complainant refers to the Respondent’s original use of the Domain Name to redirect visitors to the Respondent’s own website at www.charitychoice.co.uk.

With reference to the Respondent’s subsequent use of the Domain Name to criticise the Complainant’s charitable status, funding and operations, the Complainant contends that this is a cynical ex post facto explanation devised to defeat the Complaint.  The Complainant observes that the protest site (such as it is) is not exclusively a protest site in that it also features links to the Respondent’s operating sites.

The Complainant further contends that, as a result of the Respondent’s use of the Domain Name, visitors to the Respondent’s website connected to the Domain Name will be likely to believe, if only fleetingly, that the Respondent is in some way associated with the Complainant.

The Complainant seeks transfer of the Domain Name.

The Respondent

The Respondent observes that the Complainant has no trade mark registrations of its name and contends that the Complainant has not produced enough to demonstrate common law rights in respect of its name. Indeed, the Complainant’s service is not yet up and running.

The Respondent produces evidence to show that other companies/organisations have the name Guidestar registered and could potentially claim rights in respect of the name.

The Respondent contends that the Complainant does not have any valid rights in its name such as to form the basis of a complaint under the DRS Policy.

The Respondent denies the Complainant’s allegations as to the Domain Name constituting an Abusive Registration in the hands of the Respondent.

The Respondent’s position is that it registered the Domain Name in order to use it for a site criticising the legitimacy of the Complainant’s charitable status, the timing of the bid for funding, the validity of some of the commissioned research, the award of £2.9 million in public funds, the manner in which GuideStar USA was appointed to provide technical assistance and the mismanagement of the Complainant’s project and complaining about the damage done to the Respondent and its business.

The Respondent contends that the re-direction of visitors to the site at www.guidestar.co.uk to its website at www,charitychoice.co.uk “was to emphasise that the Respondent already provided these services without the need for public funding.”

The Respondent does not expressly deny that visitors to the website connected to the Domain Name could believe there to be an association between the parties, but asserts that, far from being damaged by any such perceived association, the Respondent’s reputation is such that the Complainant will derive a benefit from it.

In essence, the Respondent contends that it registered the Domain Name for a legitimate purpose and has been using it for a legitimate purpose. 

The Respondent contends that the complaint should be dismissed.

The Decision Under Appeal

It is plain from the evidence of both the Complainant and the Respondent that the Expert completely misunderstood the sequence of events on 30 July 2004.  As a result he drew inferences adverse to the Complainant, which were utterly misconceived; moreover, they clearly had a material effect on his approach to the case.  

In the circumstances, the Panel proposes to ignore the decision of the Expert altogether and to start again, afresh.

Discussion and Findings

What needs to be proved

To succeed in a Complaint under the Policy the Complainant must prove that (i) the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name and (ii), that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

(i) The Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name

Rights are defined in paragraph 1 of the Policy in the following terms:-

‘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.’

For the last 18 months or so since receipt of funding from HM Treasury to the tune of £2.8 million, the Complainant has been engaged in preparing for the launch of its service.  

Both parties have included in their evidence press cuttings demonstrating that GuideStar UK is a name very well known in the charity sector.  The press cuttings also show that the Complainant is commonly referred to simply as ‘GuideStar’.

The fact that the Respondent selected the Domain Name as being an appropriate name for a protest site directed to the formation/funding of the Complainant is itself indicative that to the relevant public GuideStar means the Complainant.

The Panel is in no doubt that if any unauthorised third party were to operate in the charity sector under the name GuideStar UK or GuideStar, the Complainant would certainly be able to obtain an injunction by way of a passing off action. The level of investment and preparatory effort in launching the Complainant and its service has been sufficient to develop the necessary goodwill and notwithstanding that the service has not yet been launched. Accordingly, GuideStar UK and GuideStar are names in respect of which the Complainant has common law rights.  

The Respondent has filed evidence to show that other parties in other fields own rights in respect of the name Guidestar.  This is of no relevance whatsoever.  In the field of activity with which we are concerned, namely the charity sector, GuideStar and GuideStar UK mean the Complainant.

The Domain Name comprises the name Guidestar and ‘.co.uk’, the generic domain suffix.  The Panel finds that the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name and that the name in question Guidestar UK/Guidestar is not a name or term which is wholly descriptive of the Complainant’s business.

Accordingly, the Complainant has succeeded in overcoming this, the first hurdle.

(ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration

Abusive Registration is defined in the Policy in the following terms:-

‘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.’

‘Fair use’ of a domain name is one factor which may be evidence that that domain name is not an abusive registration (paragraph 4 (a) (i) C of the DRS Policy). In assessing what is and is not fair use, paragraph 4.b. of the DRS Policy may come into play:

“Fair use may include sites operated solely in tribute to or in criticism of a person or business”

It may be necessary therefore to consider both the Respondent’s intentions at the time of registration of the Domain Name and how the Domain Name has been used thereafter.  

Variously in the Response and the Reply to the Appeal Notice the Respondent has stated that it registered the Domain Name in protest at the manner in which the process had been conducted, which led to the formation and funding of the Complainant and to various issues relating to the management of the Complainant’s project.  The Respondent is also concerned at the resultant detrimental impact on the Respondent’s existing business.

Manifestly, the Respondent registered the Domain Name at a time when it felt aggrieved at what it saw as the unjustly favourable treatment meted out by the Government and the Charity Commission to the Complainant to the Respondent’s own commercial disadvantage.  

How has the Respondent in fact used the Domain Name?

Originally, the Respondent used the Domain Name to direct visitors to the Respondent’s operational website at www.charitychoice.co.uk, which according to the Respondent offered goods and services which would compete with the goods and services to be supplied by the Complainant.

It was only following the correspondence between the parties in August 2004 that the Respondent introduced a protest webpage at www.guidestar.co.uk.  However, this webpage is not only a protest page; even now, it also features a link to the Respondent’s commercial website.

Registering as a domain name, the name of another (without any adornment), knowing it to be the name of that other and intending that it should be recognised as the name of that other and without the permission of that other is a high risk activity insofar as the DRS Policy is concerned. Ordinarily, it would be tantamount to impersonating the person whose name it is.  

Rarely will it be the case that deliberate impersonation of this kind will be acceptable under the DRS Policy.   Various decisions under the DRS Policy have condemned such practices including the following:

“In the view of the majority of the Panel, in the context of a tribute site, the vice is in selecting a domain name, which is not one's own name, but which to one's knowledge is identical to the name of another, which one has selected precisely because it is the name of that other and for a purpose which is directly related to that other. For a tribute or criticism site, it is not necessary to select the precise name of the person to whom one wishes to pay tribute or criticise. In this case the domain name could have been 'ilovescoobydoo.co.uk', for example. 
Taking the Domain Name in these circumstances arguably amounts to impersonation of the owner of the name or mark. Substantial numbers of people will have visited the Respondent's website (the Respondent admits to a total of over 37,000 visitors to his site) believing that they were visiting the site of the Complainant, a phenomenon sometimes referred to as 'initial interest confusion'. Prior to the posting of the disclaimer, those visitors might well not have been disabused. The fact that the Respondent was selling official merchandise may have encouraged those visitors in their belief that they were visiting an authorised/licensed site. Notwithstanding the Respondent's denial of any advantage, the Panel is of the view that on the balance of probabilities there must have been an advantage to the Respondent of some kind. Whether or not that 'advantage' has led to financial gain is irrelevant. The question is as to whether the advantage he has taken has been fair.” [Appeal decision DRS 00389 – scoobydoo.co.uk]

and:

“The Expert should also add that, although there is no evidence to suggest the Respondent's purpose in registering the Domain Name, was one of the three purposes set out in paragraph 3(a)(i) of the Policy, the Expert concludes that there is no obvious reason why the Respondent could possibly be justified in registering the Domain Name for any legitimate purpose. The Domain Name comprises a distinctive made up name. It is identical to the Complainant's trade mark. There is no other UK company using the inventive word which comprises the Complainant's trade mark. In the hands of the Respondent the Domain Name constitutes a threat hanging over the head of the Complainant and there are many obvious and potentially damaging uses to which the Domain Name could be put.” [DRS 00193 – harmankardon.co.uk]

The fact, if it be a fact, that the Domain Name is being used as part of a URL for a protest site is not of itself indicative of fair use.  Paragraph 4.b of the DRS Policy merely indicates that such a use may constitute fair use.  Much will depend upon all the surrounding circumstances, including in particular the identity of the domain name itself.  A finding of fair use will be much more likely in relation to a ‘-sucks’ domain name e.g. guidestarsucks.co.uk.

In this case, however, paragraph 4.b does not begin to come into play, because the website is not being used solely as a protest website.  As indicated above, the webpage features links to the Respondent’s operating website.

However, of more concern to the Panel is the manner in which the Domain Name was being used between June and August 2004, the original use to which the Domain Name was put, namely the redirection of visitors to www.guidestar.co.uk to www.charitychoice.co.uk, a website of the Respondent.  This was a redirection without any explanation at all being given to the Internet user.

The Respondent explains this in the following terms:-

“The redirection to the Respondent’s website for two months was to emphasise that the Respondent already provided these services, without the need for further public funding.”

And 

“Regarding the claim that the Respondent intended to unfairly disrupt the Complainant’s business through redirection from www.guidestar.co.uk to www.charitychoice.co.uk, this direction was active only between June and August 2004.  The Complainant is unable to show any evidence of disruption to its activities during this period, when the Complainant had no products or services available.”

Had the Respondent of its own accord and without intervention from the Complainant substituted the redirection with a protest webpage of its own volition, it might have been easier to accept that the redirection was a temporary measure which could be ignored.  But that is not what happened.  The redirection was only terminated following complaint by the Complainant. The Panel is driven to the conclusion that this is what the Respondent intended to do with the Domain Name when it registered it and that the idea of a protest page only emerged after the Complainant had complained.

Whether or not that is correct, the Panel is in no doubt that all use of the Domain Name since registration has been abusive.  The redirection of visitors intending to visit the Complainant at www.guidestar.co.uk to a competing site of the Respondent was clearly unacceptable.  It was calculated to cause confusion and manifestly involved taking unfair advantage of the Complainant’s rights.

The fact that there is no evidence of any actual confusion is irrelevant.  In circumstances such as these where the Respondent’s undisputed objective was to use the Domain Name to identify the Complainant, the Panel has every justification for assuming that the Respondent achieved its objective and diverted to its own website persons intending to visit the Complainant.

In consequence, the Panel finds that the Domain Name in the hands of the Respondent is an Abusive Registration.

Decision

The Appeal succeeds and the Panel directs that the Domain Name be transferred to the Complainant.

_______________________

Tony Willoughby

_____________________			____________________

      Andrew Clinton	                                    Mark de Brunner

Dated: 20 May 2005