Nominet UK Dispute Resolution Service

DRS 03660

H20 Window Cleaning Services v Darren Caney

Decision of Independent Expert

1.	Parties

Complainant: 	H20 Window Cleaning Services		
Country:	GB		  

Respondent:	Darren Caney
Country:	GB

2.	Domain Name

      h20windowcleaning.co.uk

3.	Procedural Background

The Complaint was lodged with Nominet on 8 May 2006.  Nominet validated the Complaint and notified the Respondent of the Complaint on 9 May 2006 and informed the Respondent that he had until 1 June 2006 to lodge a Response.  No Response was received from the Respondent and, on 2 June 2006, Nominet informed the parties that, in the circumstances the dispute would not move to the Informal Mediation Stage of the Dispute Resolution Service and invited the Complainant to pay the fee to obtain an Expert Decision by 16 June 2006.                On 15 June 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

On 19 June 2006 the undersigned David King (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties which might appear to call into question his independence and/or impartiality.  Nominet appointed the Expert in this matter on 22 June 2006.

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with Paragraph 5a of Nominet’s Dispute Resolution Procedure (“the Procedure”).

Paragraph 15b of the Procedure provides, inter alia, that “if in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint.”
Paragraph 15c of the Procedure provides that “if in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure….., the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.”
Are there exceptional circumstances present in this case?  At this point in the Decision, the Expert wishes to consider whether the complaint has been properly communicated to the Respondent.  Under Paragraph 2a of the Procedure, Nominet will send a complaint to the Respondent using, in its discretion, one of the following means:
i   	sending the complaint by first class post, fax or e-mail to the Respondent at the contact details shown as the registrant or other contacts in Nominet’s Domain Name register database entry for the Domain Name in dispute;
ii  	sending the complaint in electronic form (including attachments to the extent available in that form) by e-mail to:
	A postmaster@<the domain name in dispute>: or
	B if the Domain Name resolves to an active web page (other than a genuine page which Nominet concludes is maintained by an ISP for the parking of Domain Names), to any e-mail address shown or e-mail links on that web page so far as this is practicable; or
Iii	sending the complaint to any addresses provided to it by the Complainant under Paragraph 3 (b) (iii) of the Procedure so far as this is practicable.
Under Nominet’s current Terms and Conditions the registrant must inform Nominet promptly
of any change in his registered details and those of his Agent if applicable.  It will be the 
registrant’s responsibility to maintain and update any details he submits to Nominet and to 
ensure that his details are up to date and accurate.

Nominet have written to the Respondent at the postal address and the e-mail address shown 
in the Register Entry and to postmaster@h20windowcleaming.co.uk .  The e-mail to the 
postmaster address resulted in a Delivery Failure Report but, as far as the Expert is aware, 
the e-mail to the address shown in the Register Entry was delivered and the Royal Mail have 
not returned Nominet’s correspondence.  The documents provided to the Expert by Nominet 
include non-standard correspondence, namely an e-mail on 23 May 2006 from Nominet to the 
Respondent at his hotmail address shown in the Register Entry.  In this e-mail Nominet 
referred to a telephone conversation that day and they attached a copy of the Complaint.  
Nominet also said that, as discussed, until the case had been resolved or withdrawn by the 
Complainant, no changes could be made to the Domain Name registration, which meant that 
the Respondent’s surrender request would not be actioned until the case was closed.  The 
Expert is satisfied that the Complaint was properly delivered to the Respondent and that, in 
the absence of a response from the Respondent, there are no exceptional circumstances 
present to prevent the Expert from proceeding with the Decision of this Complaint.

5.	The Facts

The Complainant, which is based in Swindon, has traded in the name of H2O Window Cleaning Services since 9 April 2005.  The Complainant’s principal business is commercial and domestic window cleaning.  On 25 July 2005, the proprietor of the business registered the company H2O Window Cleaning Services Limited and, on 15 September 2005, changed the name of the company to H2O Cleaning Limited.

The Complainant has registered the domain names of h2Owindowcleaning.com, h2owindowcleaning.co.uk and h2o-ltd.co.uk.

On 6 June 2005, the Domain Name was registered in the name of the Respondent.  

The print-out of the web-site of the Domain Name provided by Nominet to the Expert shows that, on 9 May 2006, the web-site was dormant.

6.	The Parties’ Contentions

Complainant

The Complaint can be summarised as follows:

The Complainant has rights in the Domain Name because he has advertised since September 2004 and traded since 9 April 2005 using the unregistered trade mark H2O WINDOW CLEANING SERVICES (in addition to H2O and H2O DOMESTIC) and continues to do so. These trade marks are all well known, in Swindon and surrounding areas, to refer exclusively to the Complainant who has built up substantial goodwill in them. 

The Complainant has registered several domain names in its own name or on its behalf including h2owindowcleaning.com (registered 6 September 2004), h2owindowcleaning.co.uk (registered 31 March 2005) and h2o-ltd.co.uk (registered 25 September 2005) all of which resolve to the Complainant’s website. 

The proprietor of the Complainant’s business is also a shareholder and sole director of H2O Cleaning Limited formerly called H2O Window Cleaning Services Limited.

The Domain Name in the hands of the Respondent is an Abusive Registration because it has been registered and/or used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s rights insofar as the Respondent has registered the Domain Name primarily: (a) for the purpose of unfairly disrupting the business of the Complainant; and/or (b) in order to stop the Complainant registering the Domain Name despite its rights in it; and/or (c) for the purposes of selling 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 the Domain Name. The Respondent is a direct competitor of the Complainant and operates in the same geographical area. The Respondent trades under various names including his own name and “Pole Wash” (which actually refers to the water-fed pole-wash system used by both the Complainant and the Respondent). 

As far as the Complainant is aware, the Respondent has no rights in “h20” or any similar mark and has never made any reference to the Domain Name or to “h20” in any advertising.

In November 2005, the Complainant became aware of the potential confusion between the elements “h2o” and “h20”. It is relatively easy for “h20” to be misread as “h2o” (and vice versa), especially when certain fonts are used, and for “h2o” to be mistyped as “h20”, all the more so since the last two characters of “h20” are both digits and “o” and “0” can both be pronounced identically. The Complainant has received, and continues to receive, communications (including from HM Revenue and Customs and from suppliers, customers and distributors) in which “h2o” is mistyped as “h20”. 

The Complainant therefore, on 13 November 2005, registered h20windowcleaning.com and attempted to register the Domain Name as well. However, the Complainant found the Domain Name was already registered by the Respondent and so contacted the Respondent to request a transfer of the Domain Name, offering to pay the Respondent’s reasonable costs of the registration and transfer. Although the ccTLD of the Domain Name is .uk, the Respondent replied by saying that he had purchased the Domain Name to sell it on an American auction website. The Respondent refused the Complainant’s request, at first saying that he may already have received substantial offers for the Domain Name from the auction website. When the Complainant asked for the details of the auction website, the Respondent informed him that he didn’t know the details and that the Domain Name was actually for sale on several auction websites. The Complainant then repeated his offer to purchase the Domain Name and suggested a price of “a couple of hundred pounds”. The Respondent again refused this offer, stating that the Domain Name could be worth “thousands” and that any eventual purchase price would reflect what the Domain Name was worth to the Complainant, not what it might be worth to the Respondent. The Respondent made no apparent attempt to calculate the price by reference to the actual costs of his acquisition of the Domain Name. 

The Complainant instructed lawyers to write to the Respondent. No reply was received to the lawyers’ letter dated 16 February 2006 or to a second letter dated 28 February 2006. Despite the threats of legal proceedings contained in these two letters, no such proceedings have yet been commenced by the Complainant against the Respondent. 

As at 17 February 2006, the Respondent’s website at the Domain Name was as set out at Exhibit 7 but has subsequently (since 19 February 2006 and further to the lawyers’ letters) been amended. Neither version of the website makes any mention of the Respondent’s actual name or his trading name although both versions include the Respondent’s mobile telephone number; nor is there any mention of the Complainant or any facility to redirect visitors to the Complainant’s website or business. Visitors to the Respondent’s website (who may have been led there as a result of misreading or mistyping the Domain Name instead of the Complainant’s domain name h2owindowcleaning.co.uk) are therefore likely to be misled into thinking they are dealing with the Complainant instead of the Respondent. This likelihood is increased by the inclusion of phrases such as “Premier Domestic window cleaners” (which the Complainant had made use of before the Respondent included it on its website, although this does not specifically form part of this Complaint) and by the recent removal by the Respondent of all branding from his van (which was previously branded “D Caney”). Such misrepresentations by the Respondent would amount to passing off. The Complainant continues to receive enquiries from existing and prospective customers who have confused the Respondent’s advertising and website with the Complainant’s. Specifically, several such customers have enquired whether the Complainant is in fact still trading or is dormant as apparently stated on the (Respondent’s) website. The Complainant is also concerned that confidential information is being misdirected to the Respondent (especially by email) as a result of such confusion. The Complainant believes it is likely that the Respondent is also receiving enquiries from members of the public who have confused its advertising and website with the Complainant’s but currently has no further information on this point.

The Expert has read all the documentation supplied with the Complaint by the Complainant’s solicitors in support of their contentions.

Respondent

The Respondent has not responded to the Complaint.

7.	Discussion and Findings:

General

Paragraph 2 of Nominet’s Dispute Resolution Policy (“the Policy”) requires that, to succeed, the Complainant must prove to the Expert, on the balance of probabilities, both that the Complainant 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 as defined in paragraph 1 of the Policy.

Complainant’s Rights

The Complainant is trading as H20 Window Cleaning Services.  The Expert finds that this name is similar to the Domain Name, whether the first part of the name is typed as “H20” or “H2O”.  It is appropriate to discount the domain suffix <.co.uk> which is of no relevant significance and wholly generic.

The term “Rights” is defined by the Policy to include, but not is not limited to, rights enforceable under English law, but a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business.  In this case, the Complainant needs to show that it has established goodwill in the name H20 Window Cleaning Services.  “H20” is of course a variation of the symbol “h2o” for “water”.  If the business was simply called “Water Window Cleaning Services” that would be a wholly descriptive name and the Complainant would not be able to satisfy the first requirement of paragraph 2 of the Policy.  The Expert, however, considers that, including “H20” in the Complainant’s business name, makes the name distinctive and that the name should not be regarded as wholly descriptive of the Complainant’s business.

The question now arises as to whether the Complaint has established goodwill in its trading name.  With the Complaint, the Complainant has provided evidence of the use of its trading name, including copies of advertisements in the name of “h20 Window Cleaning Services”, a photograph of one of its vans bearing the name “h20”, details of its other web-sites referred to in paragraphs 5 and 6 above and, as at 4 May 2006, the company details of H20 Cleaning Limited (incorporated on 25 July 2005) which was previously called H20 Window Cleaning Services Limited.

The Complainant commenced trading as H20 Window Cleaning Services on 9 April 2005, some two months before the Respondent registered the Domain Name.  In the decision of the Expert in the case of Chris Dellar Ltd v Jonathan Hunt DRS 02459, the Expert found “that the Complainant here has begun to develop some reputation and goodwill, which over time will have given rise to common law rights that may well entitle it to restrain others from passing off their business as that of the Complainant by using the name Chris Dellar” and that “the Complainant has Rights in respect of the name Chris Dellar” even though the Complainant had only been trading under that name for a period of approximately two months at the time the Domain Name in question was registered and for a period of four months at the time the Complaint was made.

In the present case, the Complainant’s trading name is distinctive.  The Complainant is based in Swindon and carries on the business of window cleaning in a relatively small area.  In the Expert’s view, a business of this type can quickly build up goodwill.  Furthermore, the threshold for establishing “Rights” under the Policy is a low one and it is the Expert’s view that the Complainant has met this threshold in this case.  However, each case must be decided on its own circumstances and it, therefore, does not follow that an Expert will always find that a Complainant has established Rights under the Policy, merely by showing a short period of trading before registration of a Domain Name by a Respondent.

The Expert finds that, in this case, for the purposes of the Policy, the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.

Abusive Registration

Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

i  was registered or otherwise acquired in a manner, which, at the time when the registration 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.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3 of the Policy.  It is apparent from the Complaint, that the Complainant relies on factors 3 a i A, B and C.

Under paragraph 3 a i A, it may be evidence of Abusive Registration if circumstances indicate that the Respondent has registered the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket expenses directly associated with acquiring or using the Domain Name.

Under paragraph 3 a i B, it may be evidence of Abusive Registration if circumstances indicate that the Respondent registered the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights.  

Under paragraph 3 a i C, it may be evidence of Abusive Registration if circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.  

As mentioned in paragraph 4 above, the Expert is satisfied that the Complaint was properly notified to the Respondent, who has had the opportunity to respond to the Complaint but has failed to do so.  In the absence of a response, it is difficult to establish the Respondent’s primary motive for registration of the Domain Name.  The Expert will therefore consider the three factors in paragraph 3 a i in turn.

The Complaint has referred to contact it had with the Respondent to request a transfer of the Domain Name.  The Complainant has not stated whether the contact took the form of correspondence or telephone calls and no documentary evidence has been attached to the Complaint.  On the other hand, by failing to respond to the Complaint, the Respondent has not disputed the Complainant’s submission that the Respondent was seeking to make a financial gain from his registration of the Domain Name.  Subsequent to the contact referred to by the Complainant, the Complainant’s solicitors wrote to the Respondent on 16 February 2006 asserting the Complainant’s rights to the name and seeking the Respondent’s undertaking not to use the trade name, corporate name or Domain Name including the words “H20 window cleaning” or any other confusingly similar name, to transfer the Domain Name to the Complainant’ and to be responsible for their reasonable costs, failing which they anticipated instructions to seek an injunction and/or initiate the Nominet dispute resolution service.  The Respondent did not reply to this letter or a follow up letter from the solicitors to the Respondent on 28 February 2006.

The registration of the Domain Name is undoubtedly preventing the Complainant from registering its trade name.  It is not know if this was one of the main reasons for registration of the Domain Name by the Respondent.  However, the Expert is satisfied that in view of the nature of the Complainant’s business and the area in which it is located, the Respondent would have been aware of the Complainant’s trading name when he registered the Domain Name.  Whilst the Expert cannot conclude that the Respondent registered the Domain Name primarily as a blocking registration, in the absence of any evidence to the contrary, he considers that this may well have been one of the Respondent’s motives for registering the Domain Name.

Did the Respondent register the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant?  In view of comments already made by the Expert, the Respondent’s prime motive is unclear.  Certainly the evidence supplied by the Complainant indicates that confusion has arisen.  Confusion is another factor to be taken into account as, under paragraph 3 a ii of the Policy, there may be evidence of Abusive Registration if circumstances indicate that the Respondent is using the Domain Name in a way which has caused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.  The print-out of the Domain Name web-site as at 17 February 2006 supplied by the Complainant, is headed “Premier Domestic window cleaners”; it gives a contact telephone number and the Respondent’s hotmail e-mail address shown in the Register Entry for the Domain Name.  It is therefore likely that customers and other have visited the web-site in the belief that it was the Complainant’s web-site, and ended up contacting the Respondent, who is the Complainant’s competitor.  The Expert’s view is not altered by the fact that, since 17 February 2006, the web-site has become dormant or that the Respondent has approached Nominet with a view to surrendering the Domain Name.  

In the absence of any submissions or evidence to the contrary, the Expert concludes that, on the balance of probabilities, when the Respondent registered the Domain Name, he was aware that the Complainant was trading in a business name similar to the Domain Name and that he registered the Domain Name for the purpose of making a business or financial advantage to the detriment of the Complainant.  Taking into account all the circumstances, the Expert considers that the Complainant has proved its case on the balance of probabilities.

8.	Decision

In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name www.h20windowcleaning.co.uk be transferred to the Complainant.

David King
28 June 2006