Nominet UK Dispute Resolution Service

DRS 02242

BAE SYSTEMS PLC v. NATASHA SIME
Decision of Independent Expert
1.	Parties: 

Complainant:		BAE Systems plc
Country:		GB

Respondent:		Natasha Sime
Country:		GB

2.	Domain Names:

baesystems.co.uk;
bae-systems.co.uk;
systems-bae.co.uk;
systemsbae.co.uk 
(“the Domain Names”)

3.	Procedural Background:

The complaint was first received by Nominet on 7 December, 2004 with hardcopies subsequently being received in full on 9 December, 2004.  Nominet validated the complaint and informed the Respondent, by letter on 14 December, 2004, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 10 January, 2005) to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 13 January, 2005, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to Paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly paid on 25 January, 2005.

On 26 January, 2005, Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert on 28 January, 2005. 

4.	Outstanding Formal/Procedural Issues (if any):

The Expert noted that although Nominet’s letter of 14 December, 2004, notifying the Respondent of the Complaint, had been copied to the Respondent’s current address (as identified in the Complaint), subsequent correspondence from Nominet regarding the request for an Expert Decision and appointment of the Expert appeared only to have been sent to the Respondent at the Administrative contact address for the Domain Names, which is in fact an office of the Complainant.  The Expert asked for copies to be sent to the Respondent’s current address as well, but noted that as the original Complaint had been properly sent to the Respondent there was no need to delay the present proceedings, since the Respondent had already been warned of the potential consequences of failing to respond to the Complaint.

5.	The Facts:

According to Nominet’s Register entry for the Domain Names, each was first registered as follows:
baesystems.co.uk – 10 September, 1999
bae-systems.co.uk – 14 September, 1999
systemsbae.co.uk – 21 September, 1999
systems-bae.co.uk – 21 September, 1999

Each was registered in the name of Natasha Sime as Registrant with an Administrative Contact’s Address at:
Warrick House [sic]
Farnborough Aerospace Centre
Hants GU14 6YU
United Kingdom.

The address at Warwick House is in fact the address of the offices of the Complainant where the Respondent was working as an employee at the time the Domain Names were registered.

The Complainant, BAE SYSTEMS PLC was previously registered as British Aerospace Public Limited Company until it changed its name on 5 May 2000 following a merger with the electronics systems business of GEC Marconi in November, 1999.

The Complainant had previously registered BAe and BAE as trade marks and subsequently also registered BAE SYSTEMS as a trade mark. Registrations include:
UK1522133 BAe Class 12 dating from 06.01.1993
UK1522134 BAe Class 37 dating from 06.01.1993
UK1540221 BAe Classes 9, 13, 16, 38 & 42 dating from 30.06.1993
UK1542823 BAE/BAe Class 42 dating from 23.07.1993
UK2211375 BAE SYSTEMS in Classes 9, 12, 13, 16, 37, 42 dating from 14.10.1999

6.	The Parties’ Contentions:

Complainant:

The Complainant has asserted that:

1.	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names (Policy Paragraph 2a(i)); and 
2.	The Domain Names, in the hands of the Respondent, are Abusive Registrations (Policy Paragraph 2a(ii)).

In support of these assertions, the Complaint includes the following submissions:

BAE Systems Plc (hereinafter BAE) is an international company engaged in the development, delivery and support of advanced defence and aerospace systems in the land, on air, at sea and in space. 
[Further information about BAE was attached at Exhibit 1 to the Complaint.] 

BAE was formerly called British Aerospace plc and was first formed as a nationalised corporation in April 1977. It became a public limited company in 1981. In November 1999 British Aerospace Plc merged with GEC Marconi creating a new corporate entity named BAE Systems Plc. 
[Exhibit 2 to the Complaint comprised WHOIS query results for the disputed Domain Names showing that they were all registered in the name of the Respondent as Registrant.]

The complainant has rights in the names BAe and BAE SYSTEMS by virtue of trade mark registrations and a company name registration. 
[Exhibit 3 to the Complaint comprised the following: 
i)	A certified copy of UK Trade Mark Registration No. 1522133 BAe. 
ii)	A certified copy of UK Trade Mark Registration No. 1522134 BAe. 
iii)	A certified copy of UK Trade Mark Registration No. 1540221 BAe. 
iv)	A certified copy of UK Trade Mark Registration No. 1542823 BAE/BAe (series of 2). 
v)	A certified copy of UK Trade Mark Registration No. 2211375 BAE SYSTEMS 
vi)	A certified copy of CTM Trade Mark Registration No. 989020 BAe 
vii)	A certified copy of CTM Trade Mark Registration No. 1358985 BAE SYSTEMS.
viii)	A Companies House Certificate evidencing the existence of the company BAE Systems plc.]

Prior to the adoption of the name BAE Systems plc, the complainant was known as BAe and was frequently referred to as such by the press. The Domain Names in dispute are identical or similar to trade marks in which BAE has rights. 

The domain names baesystems.co.uk and bae-systems.co.uk are identical to UK Trade Mark Registration No. 2211375 and CTM Trade Mark Registration No. 1358985. It is not appropriate to take into account domain name suffixes when considering the identity or similarity of the complainant’s earlier rights and the domain names in issue. 

The omission of a space between BAE and SYSTEMS in baesystems.co.uk and the inclusion of a hyphen in bae-systems.co.uk are of de minimis significance in the comparison to be made. Consequently, these domain names are identical to some of the complainant’s rights. 
The domain names systemsbae.co.uk and systems-bae.co.uk are similar to UK Trade Mark Registration No. 2211375 and CTM Trade Mark Registration No.1358985. Ignoring the domain name suffixes, the space between BAE and SYSTEMS in the trade marks and the hyphen in systems-bae.co.uk, the only difference between the aforementioned domain names and trade marks is the reversal of the words BAE and SYSTEMS. 

Furthermore, all of the disputed Domain Names are similar to UK Trade Mark Registration Nos. 1522133, 1522134, 1540221 and 1542823 and CTM Registration No. 989020. All of these consist of registrations for the marks BAe or BAE. This element is the most distinctive element of the disputed Domain Names as the word systems has descriptive connotations. 

In view of this, the trade marks and Domain Names are similar. 

The Expert may note that the disputed domain names were registered prior to the date of application of UK Trade Mark Registration No. 2211375 and CTM Registration No.1358985 and the change of company name to BAE Systems Plc. This is because, as explained in more detail below, the Respondent registered the domain names on instructions from and whilst she was employed by the Complainant on the instructions of the head of the Complainants’ Corporate Communications Department. 

All of the disputed Domain Names are Abusive Registrations in the hands of the Respondent. 

At the time the disputed domain names were registered, the Respondent was employed by BAE Systems Plc [Expert’s note: strictly her employment at the time was by the company in its then name of British Aerospace plc]. She commenced her employment with this company on 18 June 1990 and left on 30 June 2000. 
[Exhibit 4 to the Complaint provided a copy of the Respondent’s employment contract and copies of the Officials Secrets Act Declarations signed by the Respondent on her joining and leaving her employment with the Complainant.]

The Complainant embarked on a re-branding exercise in July 1999 with a view to creating a new company name. Debra Lewis, a trade mark and patent agent employed in the Complainant’s intellectual property department was involved in conducting the necessary legal searches of the proposed new company names. She worked closely with the Complainant’s Corporate Communications Department of which the Respondent was a member. 

By early September 1999 the new company name had been limited to one out of BAE Systems, Systems BAE or BAE. At this stage, the Complainant already being the proprietor of various BAE domain names decided to register domain name variations of BAE Systems and Systems BAE. 

In an attempt to prevent details of a possible change of name being leaked to the public, Miss Sime was instructed by her manager, Mr Locksley Ryan, head of the Corporate Communications Department, to register various domain names in her name but at the Complainant’s address and at the Complainant’s expense. These included the disputed Domain Names. 

Miss Sime was fully aware of the reasons why the domains were registered in her name and also that she would be expected to transfer these to the Complainant at a later date. In this regard, we draw the Expert’s attention to paragraphs 10 and 14 of the respondent’s employment contract and clause 2 (b) of the Official Secrets Act Declaration. These make it clear that any property, assets or “things” acquired during the course of employment with the Complainant must be assigned to the Complainant or returned to it at the end of the period of employment. The Complainant paid for the registration of all of the Domain Names. 
[Exhibit 5 to the Complaint comprised a copy of an invoice to British Aerospace plc from Domain Network Limited, a domain name registration company, who registered twenty domain names (including the four disputed Domain Names) at the request of Miss Sime.] The invoice was signed off by Mr Ryan. The twenty domain names were not listed on the invoice as, at the time, they were highly confidential. 

The Complainant has subsequently paid for the renewal of each of the disputed Domain Names. [Evidence of the renewal payments was attached as Exhibit 6 to the Complaint.] 

In August 2000, the Complainant became aware that the Respondent was still listed as the registrant for the domain names. The Respondent had, by then, left the company and efforts were made to locate her and arrange for her to transfer the domain names to the Complainant. The Respondent co-operated with this for all domain names other than those ending in .co.uk because at that time the Respondent had to personally request the transfer forms for these domains from Nominet. 

The relationship between the Complainant and the Respondent and the actions taken by the Complainant to transfer the disputed domain names were more fully explained in Witness Statements of Debra Lewis and Linda Bray [attached as Exhibit 7 to the Complaint]. 

Taking all of the above into account, the Complainant asserts that the disputed Domain Names are, in the hands of the Respondent, Abusive Registrations. 

With respect to baesystems.co.uk, this Domain Name falls clearly within paragraph 3a (v) of the DRS policy (Version 2). It is clear from the information provided above and in the two Witness Statements [attached as Exhibit 7 to the Complaint], that this Domain Name was registered as a result of a relationship between the Complainant and the Respondent. Evidence of payment of the registration fee and the renewal fees have been provided at Exhibits 5 and 6 to the Complaint respectively. Furthermore, the Complainant has been using the Domain Name registration exclusively since the end of November 1999. [Attached as Exhibit 8 to the Complaint was a print out from the website attached to the Domain Name baesystems.co.uk.] 

Also attached [as Exhibit 9 to the Complaint] was an email from Cogent IPC, formerly known as Domain Network Limited, which confirms that this Domain Name has been pointed continuously to the BAE SYSTEMS website for the last 2½ years. Cogent’s records do not go back further than that. 

The remaining three disputed Domain Names do not currently resolve to any websites but the Complainant submits that taking all the circumstances of this case into account, they are Abusive Registrations. It is clear that the Domain Names were registered on behalf of the Complainant by the Respondent during her period of employment and under the instructions of her manager. The Respondent was, at all times, fully aware of the circumstances surrounding the registration of these Domain Names. She understood that she had been asked to register them in her name for reasons of commercial security only and that she would always be required to transfer the domain names to the Complainant. 

This is evidenced by the fact that she freely co-operated in transferring the other Domain Names registered as part of the re-branding exercise to the Complainant. The Complainant paid the initial registration and subsequent renewal fees and the Respondent has never had any rights or claims to ownership of the domain names. The Respondent therefore has no right to exploit the Domain Names for her own purposes. Her refusal to transfer them to the Complainant is a breach of her employment contract. The Respondent’s attempt to extort a goodwill payment of a large sum of money [see Exhibit 7] from the Complainant for assets that the Complainant already owns clearly demonstrates that the Domain Names, left in the hands of the Respondent are abusive. Further evidence of this is that the Respondent has implied that that unless she receives her requested goodwill payment, she will consider selling the domain names to a third party [see Exhibit 7]. Left with the Respondent, the domain names become blocking registrations which will unfairly disrupt the Complainant’s business. The Domain Name registrations are assets which rightfully belong to the Complainant and which the Respondent has no right to exploit. Equitably and contractually, the Respondent should not be allowed to remain the registered owner of the domain names and to do so would render them Abusive.

The Complainant requests transfer of the Domain Names to the Complainant.

Respondent:

No response was received from the Respondent.

7.	Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Names; and that the Domain Names, in the hands of the Respondent, are Abusive Registrations as defined in Paragraph 1 of the Policy.

Complainant’s Rights

The Complainant in this case has asserted that the Domain Names are “identical or similar to a name or mark” in which it has Rights. 

“Rights” under the Policy is broadly defined and is not necessarily limited to Rights in existence at the time of registration of the Domain Names at issue. 

The Complainant certainly had Rights at that time in BAE/BAe, but only acquired significant Rights in BAE SYSTEMS, as such, after that time.  Plainly the Complainant now has very extensive Rights in BAE SYSTEMS.

In the light of the facts of this case, where it is undisputed that the Respondent registered the Domain Names on the instructions of, and as agent for, the Complainant and that it was the Complainant which came up with those names first, it is also arguable that the Complainant did have Rights in each of those names, at that time, on that basis.

In any event, the Expert considers it sufficient for the purposes of the Policy that the Complainant had significant Rights already in BAE/Bae and that bae-systems and systems-bae (with or without the hyphen and regardless of the domain suffix) are similar and that the Complainant plainly has further Rights in BAE SYSTEMS which are applicable now.  

Accordingly, for the purposes of the Policy, the Expert is prepared to conclude that the Complainant does have Rights in this case in respect of a name or mark, which is similar to the Domain Names at issue.

Abusive Registration

The Complainant also has to show that the Domain Names are Abusive Registrations. Paragraph 1 of the Policy defines “Abusive Registration” as 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.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in Paragraph 3a of the Policy. Most pertinent to the present case is the example at 3a(v):

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.

Clearly, on the facts, it cannot reasonably be said that the Domain Names were “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”.  The Domain Names were registered precisely in accordance with the Complainant’s instructions at the time. Thus the first alternative of Paragraph 1 cannot apply and the Complainant’s case must rely on the second.

Previously, under the original version of the Policy, it was not universally accepted that the Policy should be applied to disputes which could be characterised principally as contractual in nature, between parties which had an agency or employer/employee relationship, as in the present case.  The present Expert, for example, took the view that the original Policy was not applicable in case DRS 00692 (cityid.co.uk). 

However, following peer review, it was considered generally desirable to allow for such cases to be considered under the Policy and Version 2 of the Policy was amended by addition of Paragraph 3a(v), ostensibly to make this intent clear.  It is unfortunate that Paragraph 3a(v) does not itself identify what is abusive about registration and use in the circumstances described and so it is left to be implied that this is meant to apply in cases where there has been some breakdown in the original relationship and the original intent of that relationship has been frustrated with some unfairly detrimental consequence for the Complainant, notwithstanding that it is the Complainant (and not the Respondent) which is actually making “use” (in any ordinary sense of the word) of the Domain Name at issue. 

Version 2 of the Policy came into effect from 25 October, 2004 and is applicable to the present case.

In the present Expert’s view, as noted above, the inclusion of the Paragraph 3a(v), requires some considerable stretching of the interpretation of the language of Paragraph 1(i) or (ii) and it would perhaps have been preferable for some additional accommodation to have been made in the definition of “Abusive Registration” to avoid this semantic distortion.  

However, the intent of the framers of the Policy is clear and it is necessary for the Expert to allow that the wording of Paragraph 1(ii)  “has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights” is to be construed as encompassing situations where the “use” is to be considered as unfair to the Complainant’s Rights because the Domain Names are not actually registered in the Complainant’s name, when the accepted intention of both parties was clearly that they should ultimately be so registered.

The Complainant has sought to argue that the Domain Names are to be treated as items of Industrial Property or Company Property under the Respondent’s conditions of employment or as “things” which the Respondent was obliged not to retain in accordance with a Declaration under The Official Secrets Act signed by the Respondent.

The Expert does not find such arguments convincing or necessary in the circumstances.  

The Official Secrets Act Declaration referred to obligations in the context of sensitive work done for the Government – it would be absurd to contemplate that registration of corporate Domain Names should fall within its ambit.

Further, Nominet’s Terms and Conditions for registration of domain names explicitly state that domain names are not “property”:

Nature of domain names and the register
10	A domain name is not an item of property and has no ‘owner’. It is an entry on our register database reflected by our nameservers which we provide as part of this contract. 

A “domain name” is thus simply a right under contact for the Registrant to be recognised as the user of that name for internet communications.

In the present case, there is no doubt that it was the intention of the Complainant and the Respondent that the Complainant should ultimately hold those contractual rights as Registrant of the Domain Names after the Complainant’s name change had been made public.  The Respondent has failed to act in good faith in compliance with her ordinary obligations as an employee of the Complainant, and those obligations continue to apply in the circumstances of the present case, despite her no longer being an employee.  The Complainant has made appropriate offers of proportionate recompense to take account of this change.  The Respondent’s failure to act in good faith in these circumstances may reasonably be characterised as “abusive” and “unfairly detrimental to the Complainant’s Rights” in this context.  

The exemplary circumstances envisaged in Paragraph 3a(v) apply in all respects to the Domain Name baesystems.co.uk.  The Complainant has been in de facto control of this domain and has actively used it.  The situation with respect to the other three Domain Names is not exactly the same as these have not been actively used by the Complainant.  However, the Expert does not consider this to be material.  The example of Paragraph 3a(v) is expressly stated to be just one indicative factor in a non-exhaustive list.  The Complainant has also had de facto control over these three Domain Names as well and presumably could have used them actively in the same way as baesystems.co.uk if desired.  The Expert considers the situation of these Domain Names to be analogous in the most relevant respects.  They were always intended to be put into the Complainant’s name as Registrant, but have not been because of the Respondent’s “abusive” conduct as noted above.

Accordingly, for the purposes of the Policy, the Expert concludes that all the Domain Names, in the hands of the Respondent, are Abusive Registrations.

8.	Decision:

Having concluded that the Complainant has applicable Rights and that each of the Domain Names, in the hands of the Respondent, may be characterised as an Abusive Registration for the purposes of the Policy, the Expert orders that all the Domain Names be transferred to the Complainant.

Keith Gymer 
Date: February 10, 2005