Fahamu Ltd v ITT Corp [2005] DRS 2413 (27 April 2005)
  
Fahamu Ltd v. ITT Corp.
DRS 2413
Decision of Independent Expert

Parties:
 
Complainant:	Fahamu Ltd
Country: 		UK

Respondent: 
Country: 		USA

Domain Name
1.	fahamu.org.uk ("the Domain Name"). 
Procedural Background
2.	Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively). 
3.	Nominet received the Complaint on 23 February 2005, validated it and sent it on to the Respondent on 28 February 2005, advising the Respondent it had 15 working days, until 22 March 2005, to submit a Response.  The Respondent failed to submit a Response, either by 22 March 2005, or at all. 
4.	On 24 March 2005, in accordance with paragraph 5(d) of the Procedure, Nominet notified both parties that an independent expert would be appointed, provided the Complainant paid the applicable fees and the fees were paid.  After confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I, Victoria McEvedy, was appointed as an independent expert in this dispute on 15 April 2005. 

Outstanding Formal/Procedural Issues
Default
5.	Although the Respondent has failed to submit a Response, the Procedure does not provide for a default judgment/decision in favour of the Complainant.  The Complainant must still prove its case to the requisite standard, see paragraph 15(b) of the Procedure.  However an expert may draw such inferences from a party's default as appropriate, see paragraph 15(c) of the Procedure, and I have indicated below the inferences I have drawn. 
	The Facts
5.	The Domain Name was registered to the Respondent on 17 February 2005, as recorded in the Register and WHOIS reports supplied to me by Nominet.  I was also provided with a printed page showing that as at 28 February 2005, the Domain Name led to a website of a pornographic nature, labelled “Premium Sex.”  

6.	When I attempted to replicate this result on 25 April 2005, the Domain Name took me to http://www.sedoparking.com/fahamu.org.uk which said “fahamu.org.uk “This domain may be for sale by its owner!”” and when I clicked the “more details” bar, advised me that the Domain Name is for sale for US$2,499.    

7.	The Complainant is a not-for-profit organization registered as a company limited by guarantee and incorporated in June 2001.  From the pamphlet provided to me with the Complaint, explains that the Complainant works for social justice and human rights, particularly in Africa, provides courses and training and publishes an electronic newsletter on social justice and other materials. It is funded by a group of well known charities, such as Oxfam, NGOs and Governmental bodies, including the EU the Foreign and Commonwealth Office and the Office of the High Commissioner for Human Rights.  

8.	The Complainant says it has owned the Domain Name for 5 years and has provided 3 Nominet Registration Certificates showing that from 4 December 2000 to 4 December 2006, a company called Oxford Learning Space Ltd t/a Fahamu Learning for Change was registered as owner.  The Complainant says that its registration was cancelled on 16 February 2005 when Nominet belatedly discovered that Oxford Learning Space Ltd had been dissolved.  The Complainant says it had requested its service provider to reregister the Domain Name as soon as it became available (and I have been provided with an email request to support this) but it appears that there was an oversight and this enabled the Respondent to acquire the name.  

9.	The Complainant also owns fahamu.org, where it maintains its website, and fahamu.org.za and fahamu.net, both of which point to the fahamu.org site, as, says the Complainant, did the Domain Name prior to cancellation.            
The Parties' Contentions
Complainant
10.	The Complainant says the Domain Name is identical to a name or mark in which it has Rights and, in the hands of the Respondent, is an Abusive Registration.  More particularly, the Complainant says: 

A.	A related company, Oxford Learning Space Ltd t/a Fahamu Learning for Change, owned the Domain Name for 5 years.  Oxford Learning Space Ltd was then dissolved and the Complainant incorporated.  Nominet cancelled the registration on 16 February 2005 because the registrant no longer existed.  Although the Complainant took steps to register the Domain Name once it became available on the cancellation, it failed to do so. 

B.	The Complainant has rights in the company name, Fahamu Ltd. 

C.	The Complainant has rights in fahamu.org, fahamu.org.za, and fahamu.net. 

D.	The Complainant has a reputation with innumerable organisations who use the fahamu.org.uk link, e.g. the World Health Organisation, Oxfam, All Africa, University for Peace etc.  

E.	The Complainant has worked tirelessly, under the name Fahamu, over the past 7 years to promote both human rights and womens’ rights and the Complainant’s reputation will be harmed by the association with the pornographic content made available under the Domain Name by the Respondent. 

F.	An organization which usually links to the Domain Name, brought the change in its content to the Complainant’s attention.    

G.	The Respondent has no right to use the Domain Name under any circumstances.

11.	In support of its Complaint, the Complainant submitted: a fahamu.org pamphlet; the 3 certificates of registration in the name of Oxford Learning Space Ltd t/a Fahamu Learning for Change for the period from 4 December 2000- 4 December 2006; an invoice for the renewal from 4 December 2004 to 4 December 2006; a confirmation of that renewal and an email from Nominet advising of its investigation into the dissolution of the registrant; and an email from the Complainant, requesting its service provider register the Domain Name.         
Respondent
12.	As already noted, no Response has been submitted. 
Discussion and Findings
General 
13.	Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it’s an Abusive Registration, as defined in the Policy.  Paragraph 2(a) thereof requires the Complainant to prove 2 elements: 
"i. The Complainant has Rights in respect of a 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."
The Complainant bears the onus of proof and must prove both elements on the balance of probabilities. As noted in paragraph 5 above, the fact that no Response has been submitted does not relieve the Complainant of its burden of proof. 
Complainant's Rights
14.	Rights are defined by the Policy as including but not limited to rights enforceable under English law. This is not a high threshold; see decision of the Appeal Panel in Seiko v. Designer Time DRS00248.  It includes rights to registered and unregistered trade marks, as well as other rights.

15.	I can quickly deal with one of the Complainant's contentions, at paragraph 11B above; the fact that its registered company name is identical to the Domain Name, does not assist it. In English law, the incorporation of a company under a particular name, does no more than block others from registering the same name with the Registrar of Companies; it does not, of itself, prevent others from using that name in business, see Active Web Solutions v. Peter Shaw DRS 00228.  

16.	Registered trade marks confer exclusive rights and the ability to prevent use by others without consent, but the Complainant hasn’t submitted any evidence that it has registered the name as a trade mark.  I have to therefore assume it has not registered it, although this is surprising given it is the easiest and most cost effective method of protecting a name.

17.	Fortunately, the Complainant can rely on its actual use of the name which creates rights protected by the common law cause of action for passing off, see Warnick (Erven) Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd [1980] RPC 31 HL (to succeed in a passing-off claim, a Complainant must prove the classical trinity of goodwill, misrepresentation and damage); Reckitt & Colman Products Limited v. Borden Inc [1990] 1 All ER 873 and see IRC v. Muller & Co.'s Margarine Ltd [1901] AC 217, 223 HL (goodwill is "the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force that brings in custom").

18.	It is well established that trading charities, which raise funds through trading, whether or not incorporated, have as much standing to bring a passing-off action, as any other business.  See Wadlow, 2nd. Ed. §2.17 p.60 (which takes the view that the same applies to non-trading charities) and see British Legion v. British Legion Club (Street) Ltd (1931) 48 RPC 555 and Dr. Barnado’s Homes v. Barnardo Amalgamated Industries (1949) 66 RPC 103.    

20.	I find that the Complainant, by its use of the name Fahamu, both offline and through its website and the other domain names referred to in paragraph 11C above, has a reputation and goodwill with the organisations with which it deals, such as those referred to in paragraph 11D above, and with others.  That goodwill is protected as a common law or unregistered mark by the law of passing-off.    

21.	I note that in addition to the goodwill arising from the Complainant’s own use of the name since its incorporation in June 2001, it could also rely on the use by its predecessor, Oxford Learning Space Ltd, which traded under the name “Fahamu Learning for Trade,” as it is highly likely that the restructuring that saw that company’s dissolution, and the incorporation of the Complainant, involved an assignment of the business (albeit not-for-profit) together with its goodwill.  I find however that there is no need to rely on this earlier use, as the Complainant’s own use is sufficient. 

22.	The Complainant therefore has Rights in the name Fahamu.  

Identical or Similar

23.	Paragraph 2(a)(i) of the Policy requires that the name or mark in which the Complainant has Rights "is identical or similar to the Domain Name." In determining this, the www. prefix is ignored, as are suffixes, here ".org.uk", see the decision of the Appeal Panel in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359.  This renders the Complainant's name, Fahamu, identical to the Domain Name. 
Abusive Registration
24.	The second element the Complainant must prove under paragraph 2(a) of the Policy, is that the Domain Name is an Abusive Registration, defined in paragraph 1, as follows: 
"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"

Paragraph 3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration.  

25.	I am of the view that the Respondent’s registration was unfairly detrimental to the Complainant.  A precursory web search demonstrates that the name is referable, it appears exclusively, to the Complainant and that being the case, it is difficult to see how another party could fairly or without causing detriment, acquire an identical domain name.  In Chivas Bros. Ltd –v- D. W. Plenderleith, DRS 00658, the Expert, and founding father of the DRS, Tony Willoughby, laid down the following 4 part test which can be usefully applied here. Where a Respondent registers a Domain Name: 1) identical to a name in respect of which the Complainant has rights; 2) that name is exclusively referable to the Complainant; 3) there is no obvious justification for the Respondent having adopted that name; and 4) the Respondent has come forward with no explanation for having selected the Domain Name; it will ordinarily be reasonable to infer that the Respondent registered the Domain Name for a purpose and that that purpose was abusive. I agree and find that the Domain Name was, and is, an Abusive Registration.  

26.	A number of the factors in paragraph 3 of the policy apply.  I think it highly probable that the Respondent reasoned that, given the Complainant’s registration of similar domain names, and its goodwill in the name—acquired over a number of years—it was foreseeable that the Complainant would wish to acquire the name, and the Respondent registered it in order to sell it to the Complainant at a profit, see paragraph 3(a)(i)(A) of the Policy.  The use of pornography on the site was, in my view most likely designed to hasten such a sale.  This is borne out by my search on 25 April 2005, which demonstrates that the Respondent is now offering the Domain Name for sale (although of course, paragraph 13 of the Policy prohibits transfers while a dispute is on foot).

27.	I also think it highly probable that the Respondent registered the Domain Name as a blocking registration to prevent the Complainant acquiring it originally, see paragraph 3(a)(i)(B) of the Policy, although this is circular in the sense that the Respondent’s purpose here leads us back to its intention to sell the Domain Name to the Complainant. 

28.	Again, the use of pornography on the website accessed through the Domain Name and therefore the association of the Complainant’s name with indecent and illicit purposes was, in my view, calculated to denigrate the business and reputation of the Complainant, and unfairly disrupt the same, another factor evidencing an Abusive Registration, see paragraph 3(a)(i)(C). This also leads back to the Respondent’s likely dominant purpose –namely sale to the Complainant. 

29.	I note that even if I had not found that the registration was unfairly detrimental, I would have found that the Respondent has used the Domain Name in an unfairly detrimental manner.

Decision

30.	Taking all the circumstances of this dispute into account, I find that the Complainant has Rights in a name identical to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration and direct that the Domain Name be transferred to the Complainant.  
	Victoria McEvedy 
27 April 2005