Nominet Dispute Resolution Service

DRS 02427

JD Wetherspoon PLC –v- Michael Bowden

Decision of Independent Expert

1.	The Parties

The Complainant

The Complainant is JD Wetherspoon PLC of ... GB, represented by Messrs DLA Piper Rudnick Gray Cary LLP.

The Respondent

The Respondent is Michael Bowden of ... GB.

2.	The Domain Name

The domain name in dispute is <jdwetherspoon.org.uk> (“the Domain Name”).

3.	Procedural Background

This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure (“the Procedure”) and the Nominet UK Dispute Resolution Service Policy (“the Policy”).  

The Complaint in this matter is dated 28 February 2005. It was sent by Nominet to the Respondent on 7 March 2005 allowing him 15 working days, ie until 31 March 2005, to respond. No Response having been received and the Complainant having paid the relevant fee on 14 April 2005, the Complaint was referred to me on 22 April 2005 for a Decision.  On that date, I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.
	
4.	Outstanding Formal/Procedural Issues

No response has been filed in this matter. I also note that the Respondent in this case is named by both the Complainant and Nominet as Michael Bowden. However, according to Nominet’s records, the registrant of the Domain Name is Michael Bowdon. Further, correspondence from Nominet addressed to Michael Bowden has been returned by the Royal Mail marked “addressee unknown”. In the circumstances, but for the matter referred to below, I would have directed that relevant correspondence be resent to the Respondent addressed to Michael Bowdon. However, on 18 April 2004 Nominet received an email from M Bowdon stating as follows:

	“jdwetherspoon.org.uk & your ref 02427

	Dear Sir/Madam
	
	Having recieved your letter dated 4th April 2005 relating to the above domain name and the referal to an independant expert, I am slightly confused as to why this matter has been refered to yourselves, and communication has been sent to me.

	On the 8th October 2004 I surrendered my registration to jdwetherspoon.org.uk using the official form on the back of the registration certificate. I obviously do not have the original copy of this, as this was posted to your offices on the 8th October 2004.

	However, after recieving your copy letter today, and checking my files I have found a scanned copy of the surrender of registration that was posted to yourselves, and if it is helpful I am more than willing to email you a copy.

	As I informed J D Wetherspoon in a letter to their legal representative dated 29th October 2004, I was not the owner of this domain name, and I was unclear how they felt I was.

	As such I have no submission to make in this matter as far as I am concerned. I posted my signed surrender of registration form to you on the 8th October 2004. I wonder if you would be able to clarify why my ownership was not cancelled and why I am six months later still receiving correspondance in this matter.

	Furthermore I can advise you as far as I am concerned J D Wetherspoon can have the domain name as much as they like, and if I had received your letter dated 7th March 2005, then I would have responded at this time advising you of the same.

	I await your reply in due course.

	Yours,

	M Bowdon.”

Nominet replied to the Respondent’s email stating that no surrender of registration had been received from him. They also stated that, while he could transfer the Domain Name to the Complainant, this could not now happen quickly enough to prevent the Complaint proceeding to a Decision. 

In view of the Respondent’s email, it is unfortunate that I am unable stay the Complaint for a period of time to allow a voluntary transfer of the Domain Name to be made. However, there is no specific provision under the Procedure which allows me to do so, and I am informed by Nominet that, once a fee has been paid by a Complainant, there is no alternative other than for the matter to proceed to a Decision. 

In this circumstances, on the basis of his email, I consider the Respondent to have made it clear that he is aware of the Complaint and that it is not his intention to contest it either on procedural or substantive grounds. I do not therefore consider it necessary to be further concerned with the procedural irregularity arising from the misspelling of his surname.       

5.	The Facts

The following facts appear from the Complaint and are not contradicted by the Respondent.

The Complainant is the operator of a chain of public houses under the name ‘JD Wetherspoon’. The business was founded in 1979 and as incorporated in 1983 as JD Wetherspoon plc. It was floated in 1992. It currently operates 640 pubs in the UK and had a turnover in 2004 of £787 million. It is well known throughout the UK by virtue of both advertising the number of pubs it operates.

The Complainant is the owner of six UK and Community trade marks for JD WETHERSPOON in various classes. These comprise four word only marks registered between 1998 and 2003 and two device and word marks registered in 1998 and 2002.

The Complainant is also the owner of numerous domain names which include the string ‘jdwetherspoon’ or similar. Its main website is at URL www.jdwetherspoon.co.uk and a number of its domain names including <jdwetherspoon.com> resolve to that site.

The Respondent is a former employee of the Complainant. He was on long term sick leave from November 2002. In March 2003 he raised numerous grievances concerning his employment. In April 2003 he registered the Domain Name. In January 2004 he resigned, claiming constructive dismissal.

In about October 2004, the Domain Name was used to resolve to an active website at www.anythingandall.streamlinetrial.co.uk. That website, which was aimed at customers and prospective customers of the Complainant was headed “Welcome to the Real JD’s’ and ‘JD Wethershock’. Among other matters the site included damaging allegations concerning the Complainant’s practices at its establishments, advice on how to impersonate a ‘mystery customer’ and details of the Complainant’s security codes for fires and bomb warnings, which it encouraged visitors to the Complainant’s pubs to try out. It also gave home details of the Complainant’s directors. 

Following complaint by the Complainant to the Respondent’s ISPs, the site at www.jdwetherspoon.co.uk was altered and has since stated ‘Site Offline’. The site at www.anythingandall.streamlinetrial.co.uk has since stated ‘You may think you have won but this is just the start!!”

In late October 2004, the Respondent telephoned a solicitor representing the Complainant. He stated that he blamed the Complainant for has back injury and for making him work while he was ill. He disputed that the contents of the website were actionable and indicated that he would fight whatever action the Complainant took and would ensure maximum publicity for his position.   
	
6.	The Parties’ Contentions

The Complainant

On the basis of the facts set out above, the Complainant relies on the following grounds set out in the Policy as indicating that the Domain Name is an Abusive Registration in the hands of the Respondent:

(i)	The Respondent registered the Domain name primarily as a blocking registration against a name or mark in which the Complainant has Rights (paragraph 3(a)(i)(B) of the Policy).

(ii)	The Respondent registered the Domain name primarily for the purpose of unfairly disrupting the business of the Complainant (paragraph 3(a)(i)(C)). 

(iii)	The Respondent has used the Domain Name in a way which will have confused people into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant (paragraph 3(a)(ii)).

The Complainant argues that the Respondent’s possession of the Domain Name is preventing the Complainant from using that name. In view of the Complainant’s famous trade mark rights, there is no legitimate purpose to which the Respondent could put the Domain Name: if he had wished to operate a website that was critical of the Complainant he could have done so without using a domain name that was identical to the Complainant’s name. 

The Complainant further submits that Respondent’s registration of the Domain Name constitutes a false representation that he is connected or associated with the Complainant or that he has rights in the Complainant’s name. He has no legitimate rights or interest in the Domain Name and is unable to make legitimate non-commercial or fair use of it. Any use of the name by the Respondent would confuse the public into believing that the name was connected with the Complainant.

Further, the Respondent has used the Domain Name for the purpose of a website. The Complainant contends that the content of this site was defamatory and plainly intended to disrupt the Complainant’s business in an unfair manner. The disclosure of security codes and related information was dangerous and encouraged the public to make hoax bomb threats and fire warnings. The encouragement to impersonate ‘mystery customers’ was also detrimental to an important aspect of the Complainant’s business monitoring procedures.  

The Respondent

As stated above, no Response has been filed in this case.

7.	Discussion and Findings

Under paragraph 2 of the Policy:

“(a)	A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the 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.

(b)	The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.”

Under paragraph 1 of the Policy the term “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”.

The term “Abusive Registration” is defined in paragraph 1 of the Policy as referring to 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 sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.

Rights

With regard to paragraph 2(a)(i), the Domain Name (ignoring the formal suffix ‘.org.uk’ and the character spacing) is identical to the Complainant’s registered trade marks JD WETHERSPOON. Accordingly the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and the first limb of the test is satisfied.

Abusive Registration

The Complainant relies on the three specific grounds under paragraph 3(a) of the Policy that are set out above.

First, I accept the Complainant’s contention that the Respondent can have had no legitimate purpose in registering the Domain Name. Bearing in mind the observations of the Court of Appeal in British Telecommunication plc and Others –v- One in a Million Limited and Others, [1998] 4 All ER 476, I find that the trading name ‘JD Wetherspoon’ is well-known brand name in use by the Complainant in the course of its business and that it has substantial goodwill attaching to that name. The Domain Name comprises that name without addition or adornment. There is no evidence that, so far as the general public is concerned, the name “JD Wetherspoon” denotes any entity other than the Complainant. Further, the name is neither generic or descriptive. Accordingly, any realistic use of it by the Respondent would be liable to constitute an impersonation of the Complainant.

Looking at the Respondent’s actual use of the Domain Name, it is of course the case that the Respondent has used the name for the purpose of a protest website. It is also true that anyone who visited the site, when active, would quickly have appreciated its true nature and that it was not a site operated by the Complainant. However, while it may be legitimate for a person both to operate a protest site and to refer to a famous trade mark for that purpose, it is not legitimate to do so under a domain name that represents that the site is, in fact, owned or operated by the party being attacked. In my view, a member of the public accessing a website at www.jdwetherpoon.org.uk would be likely to assume that it was a site operated by the Complainant and would visit it for that reason. To create ‘initial interest confusion’ of that nature for the purpose of attacking the Complainant is, in my view, to take unfair advantage of the Complainant’s Rights. 

I also agree with the Complainant that the clear purpose of the Respondent’s website was to disrupt the business of the Complainant, and to use the Domain Name in that manner was also unfair in the circumstances.  

In view of the above, I accept the Complainant’s submission, on the three grounds that it puts forward, that the Domain Name 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 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 an Abusive Registration in the hands of the Respondent.  The second limb of the test, as set out in paragraph 2(a)(ii) of the Policy, is satisfied accordingly. 

8.	Decision        

The Complainant has established on the balance of probabilities that it has Rights in a name or mark that is identical or similar to the Domain Name. It has also established on the balance of probabilities that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Accordingly, the Complaint succeeds and I direct that the Domain Name be transferred to the Complainant.

Signed………………………………………….……………………………...…
    								Steven A. Maier
9th May 2005