Nominet UK Dispute Resolution Service

DRS  03903

Midlands Limos Limited v Ranzan Ali

Decision of Independent Expert

1.	Parties

Complainant:		Midlands Limos Limited
Country:		GB

Respondent:		Mr Ranzan Ali
Country:		GB

2.	Disputed Domain Names

The domain names in dispute are <midlandlimos.co.uk> and <midlandlimohire.co.uk>

3.	Procedural Background

On 4 August 2006 the Complaint was lodged with Nominet UK in accordance with the Nominet UK Dispute Resolution Service Policy Version 2 applying to all disputes filed on or after 25 October 2004 (the “DRS Policy”) and hard copies of the Complaint were received in full on 8 August 2006.

On 8 August 2006 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service (“the DRS Procedure”) had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.

On 29 August 2006 a Response was received in electronic form and hard copies were received on 31 August 2006.

On 6 September 2006 a Reply was filed.

On 2 November 2006, following unsuccessful mediation, the Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.

On 2 November 2006 James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure 

4.	 	The Facts

The Complainant is a private limited company that was incorporated on 18 August 2005. It is established in Nottingham and has carried on business as MIDLANDS LIMOS since 2005. The Complainant does not own any registered trade mark for the words MIDLANDS LIMOS.

The Complainant is the owner the following Internet domain names  <midlandslimosltd.co.uk>,  <midlandslimousine.co.uk>, <midlandslimousines.co.uk>, <midlandlimousine.co.uk>, < <midlandlimousines.com>, <midlandlimo.co.uk>, < midlandlimo.com>,  <midlandslimo.com>,  <midlandslimos.co.uk>, <midlandslimos.com>, <midlandslimos.eu>, <midlandslimohire.co.uk>,< midlandslimohire.com>, <eastmidlandslimos.co.uk>, <eastmidlandslimos.com>, <midlanflimoshire.com>.

The Respondent is also established in Nottingham and has been trading as ACE STAR LIMOUSINES since 2004. 

Both the Complainant and the Respondent are competitors in the business of hiring of limousines in and around the Midland region.

The domain names in dispute were both registered on 28 March 2006.

5.	The Parties’ Contentions

Complainant’s Submissions

The Complainant submits that the domain names in dispute are identical or similar to the name or mark MIDLANDS LIMOS in which the Complainant has Rights and that the domain names in the hands of the Respondent are Abusive Registrations.

The Complainant submits that it has been carrying on business as MIDLANDS LIMOS LIMITED since last year, 2005, offering a nationwide limousine service at a very professional level.

The Complainant has registered a number of Internet domain names, listed above for use in the promotion of the Complainant’s business. The Complainant claims to have spent over £5,000.00 this year advertising the company, its websites established at the <midlandslimos.co.uk> , <midlandslimos.com> and other similar addresses.

The Respondent has registered the domain names in dispute and used the domain names as the address of a web site owned by the Respondent. Since the Respondent commenced such use of the domain names in dispute, the Complainant has started to receive complaints from its customers who have been confused into believing that the web sites were maintained by the Complainant and that they had received bad service from the Complainant when they had in fact been in receipt of bad service from the Respondent.

The Complainant points out that the domain name in dispute <midlandlimos.co.uk>, in particular,  has only one letter different from the Complainant’s  <midlandslimos.co.uk> domain name. 

The Complainant commenced operating in the year 2005 before the Respondent purchased the domain name in dispute in March 2006. The Respondent is, and has been  fully aware that the Complainant trades as <midlandslimos.co.uk>. Both the Complainant and the Respondent are based in the city of Nottingham and both offer limousine services.

The Complainant submits that it is wrong for the Respondent to use the domain name <midlandlimos.co.uk> when the Respondent’s name is <acestarlimos.co.uk>. 

Furthermore, the Respondent is fully aware that the Complainant has spent a substantial sum of money on advertising. 

Respondent’s Submissions

The Respondent submits that in December 2005 the Respondent decided to extend his existing presence on the Internet and engaged a professional web-design and search engine optimization company to assist him in achieving his goals. 

As part of the search engine optimization package that company registered some 25 domain names, including the domain names in dispute in these proceedings, for the Respondent during the months of March and April 2006. 

All of the chosen domain names were based on search terms used in web searches. The Respondent also registered domain names for the specific exclusive limousines owned by the Respondent including <bmwx5limohire.co.uk>, <babybentleylimohire.co.uk>, <sian-wedding-limousine.co.uk>, <chryslerlimohire.co.uk>, <derbylimohire.co.uk>, <derbylimousinehire.co.uk>, <derby-limousine-hire.co.uk>, <leicesterlimohire.co.uk>, <limousine-hire-mansfield.co.uk>, <limousine-hire-nottingham.co.uk>, <mansfieldlimohire.co.uk>, <midlandlimohire.co.uk>, <midlandlimos.co.uk>, <nottingham-limo-hire.co.uk>, <nottingham-limousine-hire.co.uk>, <wedding-cars-leicester.co.uk>, <wedding-limo-hire-derby.co.uk>. 

Both of the domain names in dispute were chosen because the Respondent’s business is based in the Midlands and because the Respondent found that many people search for limousine hire companies using the specific terms "midland limos" and "midland limo hire", as well as a host of other terms. The Respondent chose the domain names in dispute because people use these words in their searches and not because the words are existing business names. 

All of the Respondent’s domain names are English terms, descriptive of the services that the Respondent offers, and terms that would be used by Internet users searching for the services provided by the Respondent. Each of the Respondent’s domain names opens up a website with a similar design theme and with the Respondent’s trading name clearly visible. The Respondent is well established across the UK and has never misrepresented his business name. Anyone who is looking for the Complainant and comes across one of the Respondent’s web sites, would immediately know that it is not the Complainant’s site.

The Respondent has a completely different logo and website design theme and the Respondent does not use the Complainant’s trading name any where on any of his websites. 

The Respondent argues that it is unfair to say that he is responsible for mistakes made by the Complainant or by any of its customers. 

The Respondent denies that there is any evidence of an Abusive Registration in the Complaint.

In conclusion the Respondent submits that the term "Midland(s)" is a generic term used to describe a geographical location in the UK; the term "limo(s)" is a generic term used as a short form for “limousine”; and the term "hire" is also a generic term in the English language. 

The Respondent is in business is in the hiring of limousines in and around the Midland region, therefore the domain names <midlandlimos.co.uk> and <midlandlimohire.co.uk> allow the Respondent to directly describe the service that he offers.

Complainant’s Reply

In its Reply the Complainant challenges the Respondents submission that the reason for the Respondent’s choice of  those specific names was to have names that were descriptive of his business. 

The Complainant submits that if the Respondent wants to optimise the chances of his web site appearing in results generated by search engines, there is no need or justification for him to use the words “midland” and “limos” in a new domain name. It would be sufficient for him to include both the words “midland” and “limos” in the predefined searchable key words on his <acestarlimos.co.uk> web site. 
 
If the Respondent had engaged a reputable Internet design company to register and design his website they would have, or should have, pointed out that there may be possible legal implications if he were to advertise his services on a web site with a domain name address which is already fully established. This is particularly so where both enterprises are in the same city and in the same line of business i.e. limousine hire. 

The Complainant submits that the Respondent is clearly trying to poach the Complainant’s potential customers under false representation.

6.	Discussion and Findings:

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainants to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. 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.

The Complainants’ Rights

“Rights” are defined in paragraph 1 of the DRS Policy as including “but 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 Complainant’s claim is based on the similarity of the domain names in dispute with its company name and its Internet domain names. The Complainant has a stated intention to apply for trade mark registration for its logo, but does not claim to rely on any rights in the nature of a registered trade mark. 

The Complainant chose the descriptive name Midlands Limos Limited as its company name and has carried on business using that name since 2005. While it has claimed to have expended a significant sum of money in advertising its name on the Internet in particular, it is unfortunate for the Complainant, that because its name is descriptive of the location and nature of the services that it provides, it is not sufficiently distinctive to allow the Complainant to have exclusive rights to use the words “midlands” or “midland” or “limos” alone or in combination in relation to the provision of limousine hire services.

The definition of “Rights” in paragraph 1 of the DRS Policy expressly states that “a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business.”

In the circumstances, since the Complainant’s company name is descriptive of its business and since the domain names complained of are also descriptive of the Complainant’s business, the Complainant has failed to establish that it has Rights in respect of a name or mark which is identical or similar to the domain names in issue, since such wholly descriptive terms are outside of the definition of “Rights” in the DRS Policy.

It follows that the Complainant has failed to satisfy the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration

Paragraph 1 of the DRS Policy further defines “Abusive Registration” 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.”

It would appear to be more than a coincidence that the Respondent chose to register these domain names so soon after the Complainant commenced carrying on business using the MIDLANDS LIMOS  name and advertising its services on the Internet. Furthermore on the balance of probabilities it is also likely that the Respondent was aware of the Complainant and its business, given that they both were established in Nottingham. 

While the Respondent has submitted that he does not use the Complainant’s trading name any where on any of his websites, the words “Midland limos hire” appear prominently on the website to which both names resolve. 

However, because of the descriptive nature of the domain names in dispute, the Respondent was entitled to use each of the words “Midland”, “limos” and “hire” to describe the location and nature of his hire services, it is therefore not possible to conclude that the registrations were Abusive Registrations as defined in the DRS Policy.

In the circumstances the Complainant has failed to establish either of the elements of the test in paragraph 2(a) of the DRS Policy and the application must fail.

7.    Decision

This Expert directs that the Complainant’s application is refused in respect of the registration of both the domain name <midlandlimos.co.uk> and the domain name <midlandlimohire.co.uk>.

James Bridgeman                                                                 Date:  22 November 2006