Nominet UK Dispute Resolution Service

DRS Number 2689

Securit World Ltd and Custom Card - IBS

Decision of Independent Expert

1.	Parties: 

Complainant:		Securit World Ltd
Country:		GB

Respondent:		Custom Card - IBS
Country:		GB

2.	Domain Name:

securitworld.co.uk

3.	Procedural Background:

06/06/2005	Dispute entered into system
06/06/2005	Hardcopies received in full on: 02/06/2005
07/06/2005	Complaint validated
07/06/2005	Complaint documents generated
30/06/2005	Response due date amended by 1 working day because waiting for import
30/06/2005	Electronic Response entered into system
30/06/2005	Electronic Response matched
30/06/2005	Response hardcopies received on: 30/06/2005
04/07/2005	Forward response to complainant documents generated
05/07/2005	Reply entered into system
05/07/2005	Electronic Reply matched
05/07/2005	Electronic Reply entered into system.
05/07/2005	Reply hardcopies received on: 05/07/2005
05/07/2005	Reply received and Initiate mediation documents generated
05/08/2005	Mediation documents generated
10/08/2005	Fees received from complainant on 09/08/2005
11/08/2005	Mr Chris Tulley selected as expert

4.	Outstanding Formal/Procedural Issues (if any):
On reading the papers there appeared to be an issue as to the identity of the Respondent. The Domain Name is registered in the name of "International Bureau Services" of The Lennox,  Lennox Road, Basingstoke.  The DRS Response Form has been completed in the name of "Custom Card - IBS" of The Lennox,  Lennox Road, Basingstoke.  A subsequent letter sent to Nominet UK shows this to be the trading name for "A Division of Emos Information Systems Ltd". 
The DRS Procedure defines the Respondent as "the person (including a legal person) in whose name or on whose behalf a Domain Name is registered and against whom the Complainant makes a complaint".
The Response Form in the name of Custom Card - IBS contains the usual declaration that "The information contained in this response is to the best of the Respondent's knowledge true and complete and the matters stated in this response comply with the Procedure and applicable law."  
I am therefore proceeding on the basis that by completing and signing the Response Form, Custom Card - IBS (or rather Emos Information Systems Ltd trading as Custom Card - IBS) has accepted that it is the Respondent and that the registration of the Domain Name by "International Bureau Services" was made on its behalf. 

5.	The Facts:

•	The Complainant and Respondent are direct competitors in the supply of identity cards and associated goods and services.

•	The Complainant's main website is at www. securitworld.com

•	The Complainant is the proprietor of the UK registered trade mark SECURIT number 2138012 registered on 4.7.1997 for "personal identification security systems, software and hardware for use in relation thereto, photo-identity cards"  and  "security services relating to personal identification."

•	The Domain Name (securitworld.co.uk) was registered in November 2004 by the Respondent and resolves to its business website at www.idbureau.com.

•	The domain name idbureau.co.uk was registered by the Complainant in March 2004 and resolves to its "ID Card bureau" website at www.idbureau.co.uk which shows a contact email address of "idbureau@securitworld.com" and has links to its www.securitworld.com website amongst others.   

6.	The Parties’ Contentions:

Complainant:

In summary the Complainant says that:

•	It is a leader in the field of ID Card systems, bureau services and supplies
•	Since 1997 it has used securitworld.com for its website. 
•	Securit World is a registered trade mark (on checking, the registration is actually for SECURIT). 
•	The Respondent is a direct competitor. 
•	By registering and using the securitworld.co.uk Domain Name the Respondent is ‘passing off’ and deliberately seeking to attract the Complainant's clients to their website by linking the Domain Name to their www.idbureau.com website.
•	It was entitled previously to have registered and used idcardbureau.co.uk (in fact the domain name it registered is idbureau.co.uk) as "ID card bureau" is a generic descriptive name and in any event this is not a valid reason for the Respondent to use the Complainant's trade name.
 
Respondent:

In summary the Respondent says that:

•	The Complainant registered idbureau.co.uk in October 2004 and has this domain name linked to their web site. 
•	It is a leader in the field of ID Card bureau systems and supplies and has used the internet address www.idbureau.com since August 2000. 
•	The Complainant is a direct competitor and the idbureau.co.uk domain name should be transferred to the Respondent.

7.	Discussion and Findings:

General

In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that: 

1.	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

2.	The Domain Name, in the hands of the Respondent, is an Abusive Registration.

These terms are defined in the Nominet UK DRS Policy as follows:

•	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.

•	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.

Complainant’s Rights

The Complainant has SECURIT as a registered trade mark and has used www.securitworld.com as its business website since 1997. The Complainant has also provided a copy of its product catalogue which prominently refers to its SECURIT trade mark, its www.securitworld.com website address and its Securit World Ltd name.  Both parties say they are leaders in the field of identity card services and that the other is a direct competitor, which means that both parties appear to acknowledge that the other party is also well known in that particular field.   

In the circumstances, I find that the Complainant does have Rights in the names "Securit" and "Securit World", being names or marks which are identical or similar to the Domain Name.

Abusive Registration

From the matters relied on by the parties in their submissions the following parts of paragraph 3 of the Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) are potentially relevant:

Paragraph 3 a. i. B "Circumstances indicating 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;"

Paragraph 3 a. i. C "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant."

Paragraph 3 a. 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."

The Complainant alleges that the Respondent has registered the Domain Name and is using it to resolve to its website at www.idbureau.com as a deliberate act of passing off by diverting the Complainant's clients to the Respondent's website and that this has been done as a "tit for tat" response to the Complainant's registration and use of idbureau.co.uk.  This seems to be borne out by the Respondent's response to the complaint which does not deny the Complainant's allegations but limits itself to a "they did it first" reply.

In that respect, the Respondent has asked for the idbureau.co.uk domain name to be transferred to it.  However, the subject of this complaint and my decision is the Domain Name, securitworld.co.uk.  If the Respondent wishes to raise a separate complaint in relation to the idbureau.co.uk domain name it will have to follow the Nominet UK procedure.  It cannot short circuit that procedure by raising the issue in its Response Form to the Complainant's complaint.

I will make no comment on the parties respective arguments in relation to the idbureau.co.uk domain name, other than to point out in general terms that even if the Respondent is correct, two wrongs do not make a right.   However, I make no findings in respect of the parties contentions as regards the idbureau.co.uk domain name.
In respect of the Domain Name, it seems clear on the evidence submitted by both parties that the Respondent has indeed deliberately registered the Domain Name and has it resolving to its own website at www.idbureau.com in response to the Complainant's registration and use of idbureau.co.uk.  The Respondent appears to have set out with the intention of unfairly disrupting the business of the Complainant as a tit for tat response and there is no reason to suppose that the Respondent has not been successful in its intention.  In addition, the registration of the Domain Name will inevitably act as a blocking registration against a name or mark in which the Complainant has Rights.  
Due to the similarity to the Complainant's name and own website address and the fact that the parties are direct competitors, I believe that the Respondent's use of the Domain Name is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. Whilst the DRS Policy talks of use which "has" confused people, and the Complainant has produced no evidence of any actual confusion having occurred. However, the list of factors set out in paragraph 3 of the Policy is expressly non-exhaustive; it is illustrative.  If the abuse identified in paragraph 3 a ii of the Policy indicates an Abusive Registration, then so must anything likely to lead to such a situation.

8.	Decision:
For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the names SECURIT and SECURIT WORLD, being names or marks which are identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
In the circumstances I order that the Domain Name be transferred to the Complainant. 

Chris Tulley
30 August 2005