Nominet UK Dispute Resolution Service

DRS 03631

Better Bathrooms UK Limited v J H Rejuvenation

Decision of Independent Expert

1.	Parties

Complainant:		Better Bathrooms UK Ltd
Country:		GB 

Respondent:		J H Rejuvenation
Country:		GB

2.	Domain Name

betterbathrooms.co.uk (“the domain name”)

3.	Procedural Background

The complaint dated 25 April 2006 was received in full by Nominet on 8 May. On 9 May, Nominet wrote to the Respondent telling it of the complaint and explaining that it had 15 days in which to respond. There was no response. Informal mediation not being possible, Nominet wrote to both parties telling them that, if the Complainant paid the appropriate fees, the matter would be referred for an expert decision. The fees were received on 16 June.

On 24 June I, Mark de Brunner, agreed to serve as an Expert under Nominet’s Dispute Resolution Service Policy (“the Policy”) and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.

4.	Outstanding Formal/Procedural Issues

There are no outstanding formal or procedural issues.

5.	The Facts

I have visited the websites of both parties (the Complainant’s at www.betterbathrooms.com and the Respondent’s at www.betterbathrooms.co.uk). From those visits and the complaint I accept the following as facts.

The Complainant is a company that sells, online, a variety of bathroom-related products - including suites, taps, showers, baths and sanitary ware. Its website makes clear that it also has a showroom (in Wigan). According to the website, the ‘family’ has been ‘selling bathroom fittings on a large scale for over 25 years’.

The Complainant established an online presence by registering the domain name betterbathrooms.com on 18 January 2003. Better Bathrooms UK Limited was incorporated on 5 December 2003. During 2003, the Complainant worked to establish a Better Bathrooms brand, initially trading on eBay (intended as a temporary measure). Since then, the Complainant has created stationery with Better Bathrooms branding: appended to the complaint there is a business card, headed notepaper and a sales brochure, all carrying the web address www.betterbathrooms.com and the email address sales@betterbathrooms.com. 

The Respondent registered the domain name on 4 April 2003. From its website, which is labelled ‘under construction’, it offers a repair, cleaning and polishing service for bathroom and kitchen fixtures, ceramic tiles and PVC windows. The site is billed as ‘brought to you by J H Rejuvenation’. It also advertises restored cast iron baths and Belfast and Butler sinks for sale – though most of the website is about its bathroom restoration and maintenance services.

In August 2005, the Complainant emailed the Respondent to ask if it would be interested in selling the domain name. The contact for the Respondent replied that he had advertising commitments for the next 12 months. He went on: ‘I then may be open to offers after this time (or before if you are desperately wanting it, but the price would have to reflect my loss of revenue over this time)’.

From time to time, the Respondent has received emails (including sales enquiries) intended for the Complainant – as the Respondent’s representative seems to have acknowledged freely to the Complainant from the outset. On 20 April 2006, the Complainant reminded the Respondent of the situation, noting the inconvenience and again expressing an interest in buying the domain name. The Respondent replied on 24 April, to the effect that:

-	misdirected emails brought it revenue. (The exact words are: ‘Misdirected emails we receive are far from an inconvenience to us. Last financial year they produced enough sales to cover rent and rates for our unit – and that is well into five figures.’)

-	it always replied to the sender pointing out the mistake

-	the domain name was not for sale

-	the website at the domain name was about to be overhauled

There are details of one misdirected email. A customer of the Complainant used the address sales@betterbathrooms.co.uk to send an email about a replacement for a ‘Marbella’ basin (he had returned it because it was in a damaged state when Parcelforce delivered it). The Respondent’s Jon Haggar replied:

Unfortunately you sent the email to the wrong email address (we are info@betterbathrooms.co.uk). We too supply discounted bathrooms. Our company is A J Bathroom Solutions.

We can also supply basins similar to the Marbella (our ‘Tunnel’ basin is a close match) and delivery is by our supplier’s own drivers (Traditional Ceramics) and not Parcelforce.
The customer was then offered links to further information.

6.	The Parties’ Contentions

Complainant

The Complainant says it has rights in the name Better Bathrooms because it registered the trading name Better Bathrooms UK Limited with Companies House in December 2003 and because it has invested substantially in the Better Bathrooms brand.

It contends that the domain name is an abusive registration because

(i)	the Respondent does not have rights in the name. In particular, it has not established its rights by registering a trading name at Companies House.

(ii)	The Respondent’s is a blocking registration

(iii)	Customers have been confused into thinking that the domain name is connected to the Complainant

(iv)	The Respondent is making money out of that confusion, effectively at the Complainant’s expense

Respondent

There has been no response. 

7.	Discussion and Findings:

General

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that

-	it has rights in respect of a name or mark which is identical or similar to the domain name; and that

-	the domain name, in the hands of the Respondent, is an abusive registration.

Where there is no response in a dispute of this kind, the approach to be taken by experts in applying the Dispute Resolution Service Policy is long established: if the Complainant can establish a prima facie case, that case deserves an answer. In the absence of an answer, the complaint will succeed. So the question becomes whether the Complainant has established a prima facie case that the domain name is an abusive registration.

Complainant’s Rights

The Complainant makes much of the fact that it has registered Better Bathrooms UK Limited as its trading name at Companies House. In fact, however, what it has done is register its company at Companies House, as it is required to do as part of incorporation. (The absence of a Companies House registration for the Respondent establishes only that the Respondent is not incorporated.) That may have a bearing on the names in which the Complainant has rights, but it is not conclusive of the question of rights.

The relevant facts here are the Complainant’s establishing an online presence with betterbathrooms.com in January 2003, the initial trading on eBay during 2003 and the Complainant’s incorporation at the end of the year. From this and the reference to the family’s having been selling bathroom fittings for many years, I infer that bathroom sales before 2003 were not under the name Better Bathrooms.

For all that, the Complainant has evidently spent time and money trying to establish Better Bathrooms as a brand. It has clearly acquired goodwill and therefore rights in Better Bathrooms. The domain name (ignoring the suffix as a generic feature of the Nominet register) is betterbathrooms. By convention, web addresses are expressed in lower case lettering and an attempt is not usually made to mirror the gaps between words of ordinary writing.  In the world of web addresses, betterbathrooms is the nearest equivalent to Better Bathrooms.

I conclude that the Complainant has rights in a name that is identical to the domain name.

Abusive Registration

The Dispute Resolution Service rules define an abusive registration as a domain name which either

-	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.

I can start by taking, in turn, each of the Complainant’s four main arguments that this is an abusive registration.

(i)	the Respondent does not have rights in the name

If the Respondent had no apparent rights in the name, that could – on the face of it – be a strong indicator that the registration took unfair advantage of the Complainant’s rights. The Complainant implies that it is its registration at Companies House that gives it rights in Better Bathrooms and, conversely, that it is the absence of a Companies House registration that means the Respondent has no rights in the name. But as noted above in discussing the Complainant’s rights, the absence of a Companies House registration for the Respondent establishes only that the Respondent is not incorporated. It is clear that the Respondent has been working, at about the same time as the Complainant, to establish a Better Bathrooms brand. It has been marketing its bathroom servicing and sales business – apparently with some success – since 2003, just like the Complainant. It seems to me that the Respondent does have rights in the Better Bathroom name.

(ii)	the domain name is a blocking registration

The DRS Policy contains a non-exhaustive list of factors that may be evidence that a domain name is an abusive registration. Those factors include circumstances indicating that the Respondent registered the domain name primarily as a blocking registration. As a matter of fact, the Respondent’s registration of the domain name prevents the Complainant from registering it. But I read this part of the Policy as requiring an intention to block if it is to be considered a factor pointing towards an abusive registration. Had the Complainant been trading under the Better Bathrooms brand for some time before the domain name was registered, the registration would raise legitimate questions of motive. But by the Complainant’s own account it was only just starting trading on eBay (as a temporary measure) during 2003. Given that the Respondent registered the domain name in April of that year, it seems to me that both parties were effectively trying to do the same thing at about the same time. For me, that is not evidence of motive that would make this look like the sort of ‘blocking’ registration envisaged in the Policy.

(iii)	customers have been confused into thinking that the domain name is connected to the Complainant 

This claim reflects another of the factors on the Policy’s list of potential evidence of an abusive registration. There clearly has been some confusion experienced by some of the Complainant’s customers. The Respondent seems to have put them straight (at least some of the time) but confusion has already occurred by then. The question is what weight to attach to this.

(iv)	the Respondent is making money out of that confusion, effectively at the Complainant’s expense

In effect, the Complainant is arguing that the Respondent’s use of the domain name is disrupting its business. The Respondent is candid in admitting to exploiting the sales opportunities that misdirected emails present. The Respondent is clearly taking advantage of the confusion. The question, though, is whether that advantage is unfair.

That picks up a number of the points in the Policy’s non-exhaustive list of factors that may be evidence of an abusive registration. None of the other factors is relevant here.

On the other side, though, the Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. These are where

-	before being informed of the Complainant’s cause for complaint, the Respondent has

-	used…the domain name…in connection with a genuine offering of goods or services

-	been commonly known by the name…which is identical or similar to the domain name

-	made legitimate non-commercial or fair use of the domain name
or where
-	the domain name is generic or descriptive and the Respondent is making fair use of it.

Here, the Respondent clearly has used the domain name in connection with a genuine offering of goods and services and is known by the name (though it does also appear to be known by the name J H Rejuvenation – referred to on its website and on Nominet’s records as the domain name registrant). Whether the use of the domain name was ‘fair’ is really another way of asking whether unfair advantage has been taken of the Complainant’s rights. It does seem to me to be relevant that the domain name is descriptive and arguably generic. Potentially all manner of sellers of bathroom goods or services could make use of the name ‘better bathrooms’. 

Looking at this in the round, there are factors that point both away from and towards the conclusion that this is an abusive registration. Both parties began to acquire an interest in a name identical to the domain name at about same time: they started up at a similar time, seeking business in related markets. ‘Better bathrooms’ is generic. It is possible to conceive of any number of bathroom sales or service businesses making use of it. The original overlap of interest here appears entirely co-incidental. Domain names are offered first-come, first-served. The Respondent got in first. It seems to me clear that the domain name was not registered in a manner which took unfair advantage of the Complainant’s rights.

On the other hand, since then the use of the domain registration has generated some confusion – and, as a direct result, substantial income for the Respondent. There is certainly a case to be made that the domain name has been used in a manner which takes unfair advantage of the Complainant’s rights.

In my judgement, the key factor here is that – by its own admission – the Respondent is making a significant amount of money that might otherwise have found its way to the Complainant. Given that both parties had a legitimate interest in the name Better Bathrooms from around the same time, an amount of confusion between the two, at the margins, would not necessarily of itself be highly significant. But when the Respondent concedes it is generating a noticeable proportion of its income through misdirected interest, it begins to look as though – however legitimate the original registration – the domain name is increasingly being used in a way which takes unfair advantage of the Complainant’s rights.

This is finely balanced. But the Complainant has only to establish a prima facie case that the domain name is an abusive registration. That case turns on the view to be taken about the confusion and business disruption caused by the Respondent’s use of the domain name. Both parties seem to agree that advantage has been taken. The Complainant’s position is essentially that the advantage taken is of its rights and that the advantage is unfair. The Respondent could have taken the opportunity to put the acknowledged confusion and disruption into context. (Subject to the facts, someone in the Respondent’s position might conceivably have argued that the amounts involved were far smaller than appears (that the reference to a large sum in the email was a groundless boast), or that it lost as much business to the Complainant as it gained from it and that overall there was therefore no unfairness.) It has chosen not to do so. I am left to conclude that the Complainant has established a prima facie case that advantage has been taken of its rights and that the advantage is unfair. In the absence of an answer to that case, the complaint succeeds.

8.	Decision

I find that
-	the Complainant has rights in respect of a name which is identical to the domain name; and that
-	the domain name, in the hands of the Respondent, is an abusive registration.
In the light of that, I direct that the domain name be transferred to the Complainant.

Mark de Brunner

6 July 2006