Tottenham Hotspur Plc v Trentholme Ltd [2005] DRS 02426 (3 June 2005)

Nominet UK Dispute Resolution Services

Tottenham Hotspur PLC

V

Trentholme Limited

DRS 02426

Decision of Independent Expert

1	Parties
Complainant:
Tottenham Hotspur PLC
GB
Respondent:
Trentholme Limited
GB

2	Domain Name
“thfc.co.uk”
3	Procedural Background
On 1 May 2005 the Complainant lodged a Complaint against the Respondent in relation to the Domain Name with Nominet UK under the Dispute Resolution Service Policy (“the DRS Policy”).  Because the Complaint was filed after 25 October 2004 version 2 of the DRS Policy applies.  Hard copies of the Complaint were received on 1 March 2005.
On 3 March 2005, Nominet sent the Complaint by hard copy and by email to the Respondent.  An email Response was received on 30 March 2005, hard copies being received on the following day.
A Reply was submitted electronically by the Complainant on 7 April 2005 by email with hard copies on 8 April 2005.
A further submission was received from the Complainant under cover of a letter dated 8 April 2005 and submitted as a “non-standard submission” by way of a 52 word amendment to paragraph 7 of the Complainant’s Reply.  This was submitted in accordance with paragraph 13(b) of the DRS Procedure.
It not being possible to achieve a resolution to the Complaint by informal mediation the Complainant paid the fee of £750 plus VAT for an Expert Decision.  The Expert Mr Clive Duncan Thorne was selected on 23 May 2005.  The Expert has completed a Declaration of Impartiality and Independence and indicated his independence and willingness to act.
In the Expert’s view there are no outstanding formal or procedural issues.
4	Facts
The Complainant, Tottenham Hotspur PLC, operates the internationally renowned and highly successful Tottenham Hotspur football club which has been ever-present in the Football Association Premier League and which the Claimant asserts is the pinnacle division of English Football.
Premier League matches are broadcast in the UK (and Worldwide) to an audience of millions.  The Complainant has won several major English and European Competitions including the Football League Championship twice, the FA Cup eight times, League Cup three times, the European Cup Winners Cup and was the first British Team to win a Major European Trophy and the EUFA Cup twice.  As a result of such achievements, the Complainant has apparently acquired a pre-eminent reputation for football.  
The Complainant is the registered owner of a large number of trade marks for inter-alia the mark “THFC”.  These are set out in the Complaint and exhibited in the bundle of exhibits accompanying the Complaint.  In particular, the Complainant is registered owner of the UK trade mark “THFC” no. 1199568 in classes 6, 14, 16, 18, 20, 21, 24, 25 and 28 which was originally filed in 1983.  It is also the registered owner of Community Trade Mark no. 002801959 for the Mark “THFC” in classes 6, 14 and 25.  The letters “THFC” are also used as a significant element in other UK and CTM marks dating back to 1989. 
In the annex to the Complaint the Complainant produces examples of merchandise offered for sale under the logo THFC including baseball caps, sun-visors, sweatshirts, jewellery and other items.
At Exhibit 5 to the Complaint is a photograph of the Complainant’s White Hart Lane Stadium where the letters THFC are reproduced prominently on the seating.
The Complainant asserts that it uses the THFC mark extensively through its substantial loyal fan base and significant commercial activities.  It asserts that it has built up a reputation and goodwill in the THFC mark.
The Expert accepts the evidence of the existence Complainant’s registered marks and reputation and goodwill in the mark THFC.
The Expert also notes that the Complainant owns the website www.thfc.com which apparently receives over 6,000,000 page hits per month.
Although the Complaint was brought against Trentholme Limited, the Response was submitted on behalf of Trent-Holme Funding Consultants Limited.  It appears Trentholme Limited has changed its name to Trent-Holme Funding Consultants Ltd.  In the Expert’s view nothing significant turns on this.  In the case of both Trentholme Limited and Trent-Holme Funding Consultants Ltd the contact is expressed to be Mr Derek Sidney White.  He is a Fellow of the Institute of Chartered Secretaries and Administrators.  He refers generally in his evidence to the companies which he owns and controls.
In an Addendum to the Response dated 29 March 2005, Mr White elaborates upon his group of companies.  In particular, he asserts that he owns and controls two limited companies and one sole trading practice.  The two companies are the CWM Partnership Limited and Trent-Holme Funding Consultants Limited.  He indicates that in August 2005 he acquired Trentholme Limited and used that vehicle for the purposes of negotiating contracts with specialised brokers and others.  The Company was not intended to become operational until April 2005.  In particular, he states at paragraph 14:-
	“At the point of preparing this reply I reasonably envisage that Trentholme will not be ready to properly commence trading for probably another 2 or 3 weeks as I am still working on the backlog created as a result of the Inland Revenue 31 January 2005 deadline.  
In the interim I have regularised a few matters.  The name of Trentholme Limited has been changed to Trent-Holme Funding Consultants Limited and a full and proper website is presently being designed for my approval.  Proper stationery is being designed and work is being undertaken by our associates on the preparation of a detailed brochure outlining the services available under the auspices of Trent-Holme.  Reference will be made in the brochure to the firms who will be contractually tied in with Trent-Holme.”
Mr White goes on (paragraph 21) to assert that when he formed Trentholme Limited he instructed an employee Mr Gary Barrett to research a domain name for Trentholme in readiness for a website and he discovered, through his searches on the computer, that THFC was available for purchase.
It apparently struck him as sensible that those initials should be used for Trent-Holme Funding Consultants and he instructed Mr Barrett to follow up the matter.  He then had discussions with Mr Connolly the vendor of the website, the upshot of which was that after negotiation Trentholme Limited purchased the domain name from Mr Connolly at a price of £3,000 plus expenses of £75.  This sum was paid to Mr Connolly and the domain name was transferred to the Complainant.
Although in its Complaint, the Complainant submits that the transfer to Trentholme Limited “was set up to avoid the DRS Policy”, the Complainant has adduced no evidence to contradict Mr White’s account.  
The Complainant adduces evidence of an investigation of the Complainant undertaken by commercial investigators, Carratu International.  Their report is annexed at Exhibit 9 to the Complaint and refers to a visit to the Complainant’s premises on 26 January 2005 and a meeting with Mr White.  It is clear from the report that the Respondent has a portfolio of 300 small businesses.  The report also indicates that the issue of transfer and purchase of the domain name was raised at the meeting.  Carratu indicated that Mr White was “amenable” to such a course of action and it was left that he would contact us in the near future.  Mr White refers to the visit at paragraph 24 of the Reply.  He initially thought that the reference to THFC fitted in nicely with “The Health Food Company”.  However, it was not until 3 March when the Nominet Complaint was commenced that Mr White became aware that the interest in the domain name came from the Complainant.  In this regard, he states at paragraph 33 of the Addendum that:-
	“I am not in the slightest bit interested in going in to competition with Tottenham Hotspur Football Club in the sale of what it presently sells to its fans at its ground or by mail order and that I am not, at all events, the slightest bit interested in entering into the wholesale or retail market place.  It will be evident, from what I have said, that my businesses are different to the businesses of Tottenham Hotspur Football Club - as different as chalk and cheese”.
At this stage, it is worth commenting that in its Reply the Complainant points out that the Respondent has not provided any evidence to substantiate the transaction involving the purchase of the domain name by the Respondent.  This is so.  However, the Expert is not in a position, in the current proceedings, to readily resolve conflicts of evidence and must as far as possible to be able to determine the matter on the basis that the accounts of all parties are truthful.
5	DRS Policy
Section 2 of the DRS Policy states that a Respondent must submit to proceedings under the Nominet Dispute Resolution Service if a Complainant asserts to Nominet according to the DRS Procedure that:-
	
(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 is required to prove to the Expert that both elements are present on the balance of probabilities.

“Abusive Registration” is defined in Section 1 of the DRS Policy as meaning 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. 

Section 3 of the DRS Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration as follows:

(i)	circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily;

	A	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; 

	B	as a blocking registration against a name or mark in which the Complainant has Rights; or

	C	for the purpose of unfairly disrupting business of the Complainant.

(ii)	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;

(iii)	the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the Registrant of Domain Name (under .uk or otherwise) which correspond to well-known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of the pattern;

(iv)	it is independently verified that the Respondent has given false contact details to us; or 

(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.

b	failure on the Respondent’s part to use the Domain Name for the purposes of the email or a website is not in itself evidence that the Domain Name is an Abusive Registration;

c	there shall be a presumption of Abusive Registration if the Complainant proves that the Respondent is found to have made an Abusive Registration in three or more dispute resolution service cases in the two years before the Complaint was filed.  This presumption can be rebutted (see paragraph 4(c)).  

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

The Complainant asserts that it has both registered and unregistered rights in the mark THFC.

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

The Complainant contends that the registration of the Domain Name is an Abusive Registration because:-

(a)	The Respondent primarily registered the Domain Name to block the Complainant from obtaining the Domain Name and to unfairly disrupt business.  

In particular:

	(i)	the Domain Name is being used as a website to advertise a funding consultancy business and does not generally offer any goods; 

	(ii)	the Respondent has no presence at its trading and registered office;

	(iii)	the Respondent is not commonly known by the Domain Name or legitimately connected with it;
	
	(iv)	the Respondent has admitted that the Domain Name was registered as a means to advertise;

	(v)	the Domain Name is not generic or descriptive and no other legitimate or fair use appears to have been made of the Domain Name;

	(vi)	the Complainant’s Trade Mark is so well-known that the Registrant would have been aware that the Complainant would have wished to assert its rights.

(b)	The Complainant relies on the use of the Domain Name by the previous Registrant (ie the transferor to the Complainant) and the circumstances of the transfer.  In particular, the Complainant relies upon:

	(i)	the use by the transferor of the “www.roar.com” pay per click search engine, in which the Domain Name was being advertised for sale prominently;

	(ii)	following enquiry by the Complainant the transferor claimed to have been offered £5,000 from a health and fitness company.  Coincidentally the week following Trentholme Ltd was incorporated,the following Trentholme Limited was incorporated; 

	(iii)	a letter before action from the Complainant’s solicitors to the transferor “Bubblegum IT” was returned by the Royal Mail “as addressee gone away”.  In this regard the Complainant relies upon earlier correspondence with the transferor;

	(iv)	the fact that the registrant “bubblegum.co.uk” is “Alliance of Enfield” which was a previous Respondent in Nominet DRS Proceedings DRS 01879.  This suggests that the Transferor was using different names to register Domain Names to register Domain Name to evade detection and circumvent the DRS Policy.

	(v)	the Complainant made an unsuccessful offer of £2,500 to purchase the Domain Name.

In summary the Complainant believes that there is a strong presumption that the Domain Name transfer to the Respondent “was a sham and a continuation of the previous Abusive Registration designed to block the Complainant from recovering the Domain Name”.  It relies in particular on the fact that Mr White has indicated that he would be amenable to selling the Domain Name to Carratu.  

The Complainant also raises the policy issue that, unless checked, Abusive Registrants can by-pass the DRS Policy by transferring a Domain Name into a different name and removing the abusive content.  Furthermore, in order to avoid such a transfer brand owners will be forced to file a complaint with Nominet as soon as they become aware of an Abusive Registration.

7	The Respondent’s Contentions
The Respondent contends:-

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

The Respondent does not take issue with the Complainant’s rights (paragraph 45 of the Response).  It does however submit that Tottenham Hotspur Football Club is commonly known as “Spurs” and suggests that the Complainant’s use of THFC for branding is less than it used to be so and that its business is declining (paragraphs 34 and 35 of the Reply).

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

The Respondent’s submissions are as follows:-

(i)	The Respondent has a bona fide intention to use THFC in conjunction with the trading activities of Trentholme Limited, which has changed its name to Trent-Holme Funding Consultants Limited.

(ii)	without any knowledge of the interests of the Complainant, the Respondent took a transfer of the Domain Name at a negotiated price of £3,000 plus expenses of £75.

(iii)	The Respondent has no intention of competing in the activities of the Complainant.

(iv)	The history of the Complainant’s approaches to Mr Connolly is not a matter of concern to the Respondent.  Mr Connolly did not divulge the existence of the correspondence before the Respondent purchased the Domain Name.  Mr White submits that he had no knowledge of the Complainant’s previous dealings with Mr Connolly.

(v)	The suggestion that the Respondent set out to undermine the business of the Complainant is “ludicrous”.

(vi)	Trent-Holme is an extension of the activity of Mr White’s existing businesses which are very active.  

(vii)	The Complainant has merely re-directed the Complaint which was originally to be made against the transferor to the Respondent against the Respondent.  This is unfair and unreasonable.

8	Discussion and Findings
(i)	The Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name.
	
	The Expert finds on the basis of the Evidence of the Complainant’s Rights that the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name.  The rights owned by the Complainant are for the mark “THFC”.  The Domain Name is “thfc.co.uk”.  Indeed, this issue is not really in contention.   The Respondent accepts in paragraph 45 of the Addendum that it does not take issue with the Complainant’s Rights.

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

	In summary the Complainant’s contention is 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 within Section 3 (i) B of the DRS Policy.

	The Evidence in support of this claim is generally based upon the submission that the Respondent’s use of the Domain Name is a sham and that the Respondent is not a viable or active company.  

	The difficulty faced by the Complainant is that in a detailed Response and Addendum to the Response Mr White on behalf of the Respondent explains the operation of the Complainant’s business and the circumstances in which the Domain Name was acquired.  Bearing in mind that the Complainant has the burden of proof, it appears to the Expert that the Complainant does not succeed in showing that the activities of the Respondent constitute a sham or indeed that the Domain Name was acquired with the object of blocking the Complainant’s Rights.  Mr White, who has a professional qualification as a Chartered Secretary, gives a plausible account of the activities of the Complainant.  In the Expert’s view there is no counter-evidence from the Complainant which is sufficient to satisfy the Complainant’s burden of proof.

	For example, the Complainant relies upon the Carratu Report.  During the course of the Carratu investigator’s enquiries Mr White apparently explained the basis of the operation of his business and his two companies, including Trentholme Limited which accords with Mr White’s account in the Response and Addendum.

The Complainant also submits that the trade mark THFC is so well-known that the Respondent would have been aware that the Complainant would have wished to assert its rights.  There is really no evidence to support such a contention.  Indeed Mr White’s account of his initial meeting with Carratu indicates that he had in mind another entity ie “The Health Food Company”.  It is arguable that the Respondent had constructive notice of the Complainant’s rights in THFC as a result of its registered rights, trading and acquired goodwill.  However, there is no evidence that, being aware of those rights, the Respondent sought to block the Complainant’s mark as is asserted.

	The Complainant also relies upon the circumstances of the transfer of the Domain Name to the Complainant and in particular the correspondence with the transferor at “Bubblegum IT”.  It is suggested that the transfer to the Respondents was a sham and a continuation of the transferor’s alleged Abusive Registration so as to block the Complainant from recovering the Domain Name. 

	Having considered the submissions of the Complainant the Expert finds that there is insufficient evidence to show that the transferor had made an Abusive Registration.  The email exchange exhibited at Exhibit 12 to the Complaint and the copy of the returned envelope addressed to Bubblegum is in the Expert’s view insufficient evidence to enable the Expert to reach any conclusion as to an Abusive Registration in the hands of the transferor.

	Indeed, the Expert is unconvinced that even if he were able to reach such a finding that this would necessarily detrimentally affect the rights of the Respondent.  The DRS Policy requires the Expert to consider whether the Domain Name in the hands of the Respondent is an Abusive Registration.  The account of the transfer given by Mr White is also plausible.  Moreover, Mr White points out that he was unaware of the Complainant’s approaches to the transferor, Mr Connolly.  This was because Mr Connolly did not divulge the existence of the correspondence with the Respondent.  This is not contraverted by the Complainant.  In the Expert’s view the Complainant falls short of proving that the transfer was a “sham”.

	In summary the Expert finds that the Respondent has given a plausible account of an intention to use THFC in conjunction with the trading activities of Trentholme  Limited (which has changed its name to Trent-Holme Funding Consultants Limited).   There is no compelling evidence to the contrary that the Respondent sought to block the Complainant from obtaining a Domain Name and unfairly disrupting the Complainant’s business.    

	In these circumstances, the Expert finds that the Complainant has failed to prove that the Domain Name 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.

The Domain Name is therefore not an Abusive Registration.

Accordingly, the Complainant’s Complaint fails.

…………………………………………

Signed - Clive Duncan Thorne (Expert)

………………………………

Date -	3 June 2005