Nominet UK Dispute Resolution Services

Taylor Woodrow Plc

v

M Davis

DRS 002283

Decision of Independent Expert

1.	Parties
	Complainant:
	Taylor Woodrow Plc
	United Kingdom
	
	Respondent:
	M. Davis
	United Kingdom

2.	Domain Name
	taylor-woodrow.co.uk (“The Domain Name”)
3.	Procedural Background
	On 5 January 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 6 January 2005.
On 11 January 2005 Nominet sent the Complaint by hard copy and by email to the Respondent whose details appeared on a WHOIS search.  The hard copy was sent to the Respondent by post to the above address and by email to the Respondent at md@ashford.org.uk.
An email Response was received on 1 February 2005 and by hard copy letter dated 28 January 2005 on 1 February 2005.
A Reply was received from the Complainant, consisting of a letter dated 3 February 2005, on 4 February 2005.
	It not being possible to achieve a resolution to the Complaint by informal mediation the Complainant paid the fee of £750 + VAT for an expert decision.  The Expert Mr Clive Duncan Thorne was selected on 22 February 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 Taylor Woodrow Plc is a construction company incorporated in England and listed on the London Stock Exchange.  It has a long history; having been incorporated as Taylor Woodrow Estates Limited on 1 February 1935 and changing its name to Taylor Woodrow Limited on 16 October 1943.  Copies of certificates of incorporation are exhibited to the Complainant as Exhibits TW1, TW2 and TW3.
	The Complainant has exhibited to the Complaint copies of promotional literature which shows that the Complainant has been building houses, schools and factories in England, America and Africa since 1948.  Its primary business is house building with 90% of its operating profit coming from developing new homes across the United Kingdom and selected markets in North America, Spain and Gibraltar.  It is currently Britain’s second largest house builder and fourth biggest house producer in the UK, trading mainly through its Bryant Homes brand.  The Company produces over 13,000 new homes each year in Britain, Spain and Gibraltar and North America.  There are currently approximately 89 companies in the Taylor Woodrow Group which trade using the name “Taylor Woodrow”.  A list of these companies is exhibited at TW5 to the Complaint.  
	The Complainant is registered as the owner of the domain name “taylorwoodrow.co.uk” which was registered on 16 February 1996.  
	The Complainant has registered trade marks for the words “Taylor Woodrow” in the United Kingdom and at the European Community Trade Mark office.  Exhibited to the Complaint are copy certificates of registration the trade mark “Taylor Woodrow” registered in the UK no. 2279708 on 20 March 2003 in classes 36, 37 and 42 and European Community Mark no. 002699932 registered on 18 December 2003 in classes 36, 37, 42 and 44.
	The Complainant submits that the brand “Taylor Woodrow” is a valuable asset for the group.  In support of this contention it exhibits at exhibit TW10 to the Complaint an extract from a valuation by PricewaterhouseCoopers which shows that the market value of the “Taylor Woodrow” brand as at 1 November 2003 was estimated at £25 million.
	Having considered the evidence submitted by the Complainant the Expert is satisfied that the Complainant has acquired a valuable trading goodwill in the trading name “Taylor Woodrow” and that it has valid and subsisting trade mark rights in the mark “Taylor Woodrow”.
	Not a great deal is known about the Complainant beyond that she trades as sole proprietor of “m davis” from the address at 26 Vespasian Way, Ashford, Kent.  She appears, although it is not entirely clear, to trade in domain names. She refers in her Reply to registrations on behalf of her “customer”.  The “customer” is not named.  
	
	The history of the dispute is that on or about October/November 2004 the Complainant wrote to the Respondent (the letter is not exhibited) about the existence of the domain name.  In response a without prejudice email was sent to Mr Sampson of the Complainant on 19 November 2004 from kentdirect@aol.com referring to “your threatening letter” and looking forward to the Complainant taking further action with regard to the domain name.  The email appears to be from Mr Rod Vaney who refers to himself as the legal owner of the domain name and indicates that any correspondence should be forwarded to him at 58 Palm Beach Avenue, Hythe, Kent.  Mr Vaney states that the name had nothing to do with the Complainant’s type of business and suggests that “I must admit I was totally fooled into thinking it was an off-shoot of a Taylor Woodrow Company”.  The email concludes: “In a last ditch attempt at an amicable settlement we will accept £595 although we do not really want top (sic) sell the name”.  

	The Complaint was then referred to Nominet.  In her Response the Respondent who signs herself Maggie Davis, indicates that the domain name was registered on behalf of two of her “customers”, “mixed doubles partners” whose surnames are Taylor and Woodrow.  She points out that the site points to “Direct Kent until he and his friends can decide on how to develop their personal website with some Tennis content”.  

	It should be noted that a WHOIS search of the domain name dated 11 January 2005 shows the Registrant as m davis, as well as, administrative contact and billing contact.

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 identically 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 the 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 names (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 that 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 e-mail or a web-site 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 Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed.  This presumption can be reubutted (see paragraph 4(c)).
6.	The Complainant’s Contentions
The Complainant contends that the registration of the Domain Name is an Abusive Registration because:-
a.	The Complainant believes it is designed (sic) to use the Taylor Woodrow name to provide a legitimacy to the website www.kentdirect.co.uk by association with Taylor Woodrow;
b.	It is used to exploit people searching for “taylor woodrow”;
c.	It is confusingly similar to the trade marks registered name and domain names owned by the Complainant.  It also amounts to passing off under common law;
d.	It is registered with the incorrect name and address details.  Here the Complainant appears to contend that although the Registrant is the Complainant m davis the initial response came from Mr Rod Vaney.
e.	Individuals have been misled.  In support of this contention the Complainant relies upon Mr Vaney’s statement that “I was totally fooled into thinking it was an offshoot of a Taylor Woodrow company”.
In its reply the Complainant also refers to an earlier Expert Decision under the DRS Policy; No. DRS02039, QVC Inc and QVC –v- Maggie Davis (trading as m. davis) and points out that there are similarities including the involvement of Mr Rod Vaney, an offer to sell the domain name for £600 and the fact that the domain name resolves to the Respondent’s website at www.kentdirect.co.uk.  A copy of that decision is exhibited to the Reply.
7.	The Respondent’s Contentions
These have already been referred to and are set out in the Respondent’s letter of 28 January 2005.  In summary the Respondent submits:-
i.	The domain name was registered on behalf of two tennis playing partners whose surnames are Taylor and Woodrow;
ii.	The site points to Direct Kent until the Respondent’s “customer” and his friends can decide on how to develop their personal website;
iii.	The reference to Mr Rod Vaney’s statement that he was “fooled” was said in irony;
iv.	There is no connection whatsoever to the business activities of Taylor Woodrow, the Complainant.
8.	Discussion and Findings
The Complainant’s evidence is clear that it has trade mark rights and trading goodwill in the name “Taylor Woodrow” which is identical to the domain name.  The Complainant therefore succeeds in showing in accordance with Section 2(a)(i) of the DRS Policy that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name.  
The Complainant therefore has to show that the domain name in the hands of the Respondent is an Abusive Registration within the second limb of Section 2(a) of the Policy.
The Complainant does not specifically refer to the provisions of Section 3 of the DRS Policy in the Complaint or assert that the Domain Name falls within the non-exhaustive list of factors set out in Section 3.  This may not matter because the factors are expressed to be non-exhaustive.  Nevertheless the Expert in considering the Complaint has considered whether the evidence brings the Complaint within the Section 3 list of factors.  
Section 3(a)(i)(A) deals with a Complainant selling, renting or otherwise transferring the domain name to 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.
The email from Mr Vaney, referred to above, refers to an offer to accept £595 as the selling price of the domain name.  The Expert does not however consider that that figure is necessarily in excess of the Respondent’s documented out-of-pocket costs.  Indeed there is no evidence to that effect.  It finds that the Complainant fails in respect of that factor.  
Section 3(a)(i)(C) of the DRS policy sets out circumstances indicating that the Respondent has registered or acquired the Domain Name primarily “for the purposes of unfairly disrupting the business of the Complainant”.  In particular sub-section (c)(ii) refers to “circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant”.
Here, there is, in the Expert’s view, considerable support from the evidence and the Complainant’s submissions that the Respondent is using the domain name in a way which confuses people or businesses into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant.  
The Expert takes into account particularly that the trading name of the Complainant “Taylor Woodrow” is widely known as a result of the widespread largescale trading activities of the Complainant within the United Kingdom.  The Respondent would also have constructive notice of the existence of the registered trade marks of the mark “Taylor Woodrow” referred to above.  Currently the Domain Name provides access to the website www.kentdirect.co.uk.  In the Expert’s view there is no doubt that this gives an association with the Complainant.  
The Respondent submits that the Domain Name has been registered on behalf of certain unnamed “customers” but, as one might reasonably expect, after proceedings under the DRS Procedure have been commenced, provides no evidence to support the Response and in particular produces no evidence to support the references to tennis partners whose surnames are Taylor and Woodrow.  This is particularly when evidence of the Complainant’s rights in Taylor Woodrow have been drawn to their attention.
Moreover, it may ,be as is put by the Respondents that Mr Vaney’s remark as to confusion was said in irony.  Nevertheless on the face of it it does show that the Respondent and Mr Vaney were fully aware of a “REAL (sic) company called Taylor Woodrow”.
The Expert also takes into account that the Domain Name is hyphenated.  There would be no reason to hyphenate if the Domain Name is created by reference to individuals.
The Expert therefore finds that the Respondent is using the domain name in a way which has confused people or business into believing that the domain name is registered to, operated or authorised by or otherwise connected with the Complainant and that accordingly the registration is an Abusive Registration within Section 2 of the DRS Policy.
Finally, since it is relied upon by the Complainant, the Expert is prepared to comment upon the submission set out in the Reply relying upon the earlier DRS Policy Decision numbered DRS 02039.  The Expert notes that included within Section 3 of the DRS policy as evidence of Abusive Registration is sub-section 3(c) which provides that there shall be a presumption of an Abusive Registration if the Complainant proves the Respondent has been found to have made an abusive registration in three or more Dispute Resolution Service Cases in the two years before the Complaint was filed.  By itself Decision DRS02039 does not satisfy this sub-section even though the Respondent was the same party and there was a finding against her in the earlier decision.  Nevertheless. the Expert, having read the decision, notes the involvement of Mr Rod Vaney, a similar offer to sell the domain name for £600 and the fact that the domain name in that case resolved to the Respondent’s website at www.kentdirect.co.uk.  In the Expert’s view the findings in the earlier decision strengthen the Expert’s finding in the case before him that the Respondent is using the domain name in a confusing manner in that the domain name also resolves to the Respondent’s website www.kentdirect.co.uk.
The Expert finds that the Complainant has succeeded in proving:-
i.	That 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.
9.	Decision
In the light of the foregoing findings, the Expert directs that the Domain Name “taylor-woodrow.co.uk” be transferred to the Complainant from the Respondent.

Signed 

	Clive Duncan Thorne (Expert)

Date	3 March 2005