Nominet UK Dispute Resolution Service

DRS 4083

The Waterflow Group PLC v. Bell Construction

Decision of Independent Expert
1.	Parties

Complainant:	The Waterflow Group PLC		
Country:		 GB 

Respondent:		Bell Construction
Country:		GB

2.	Domain Name

2.1.	waterflowutilities.co.uk

3.	Procedural Background 

3.1.	Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service (“DRS”) Policy and Procedure, Version 2 of September 2004 (“the Policy” and “the Procedure” respectively).

3.2.	Nominet received the hardcopy Complaint in full, with evidence, on 11 October  2006, validated it and sent it to the Respondent on the same day, with a letter advising the Respondent that it had 15 working days, until 2 November 2006, to submit a Response.  The Respondent failed to submit a Response. In accordance with paragraph 5(d) of the Procedure, both parties were advised on 3 November 2006, that the dispute would be referred to an independent expert on payment of the requisite fees within the specified time period and those fees were duly received by Nominet. 

3.3.	Confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I was appointed as the independent expert in this dispute on 23 November 2006.  

4.	Outstanding Formal/Procedural Issues

4.1.	Service

4.1.1.	I need to say something briefly about service.  The DRS derives its jurisdiction from the terms and conditions of the contract of registration between the Respondent and Nominet (“the Contract”), clause 14 of which incorporates the Policy and Procedure by reference.  The Contract requires a registrant’s details to be entered in the Register (clause 4.1), and the registrant promises to promptly advise Nominet of any changes; in particular, to ensure Nominet has its correct postal address, telephone and fax number and email address. Certain details are also posted on the public WHOIS database.  Failure to provide correct details or to keep them up-to-date may be grounds for cancellation or suspension of a domain name (clause 17.2).  

4.1.2.	The relevance of this is that §2(a) of the Procedure provides that a Respondent will be served with a Complaint, at Nominet’s discretion, by any of: first class post, fax or email to the contact details in the Register; by email to <postmaster@<the Domain Name in dispute> ; or to any email addresses shown on any active web pages the domain name resolves to.  Later communications are also by fax, first class post or email (§ 2(b)). 

4.1.3.	Nominet has provided me with a copy of the Respondent’s Register entry and WHOIS details.  The postal address given was the Rayner’s Lane address given above and the email address was <info@waterflowgroup.co.uk>.   

4.1.4.	Nominet served the Complaint on the Respondent on 11 October 2006 as follows:  (a) by first class post to the Rayner’s Lane address; (b) by email to: (i) <info@waterflowgroup.co.uk>; and (ii) <postmaster@waterflowutilities.co.uk> .  The postal service returned the posted Complaint marked “address unknown” and the email to <postmaster@waterflowutilities.co.uk> bounced back. Nominet has supplied me with a copy of the envelope marked by the postal service and the bounced email.         

4.1.5.	It appears that the email to <info@waterflowgroup.co.uk> may have been received however—there is certainly no evidence it bounced.  However, the Procedure stipulates that the postmaster address and the postal address will be used for service and the Contract renders the Respondent responsible for any failure to notify Nominet of changes to its details. The Complaint is therefore deemed to have been served on the date of the emails (§2(e)(iii)), 11 October 2006.  

4.1.6.	Nominet’s letter of 3 November 2006 was also sent by post and to both email addresses, again this time again the post was returned and the  <info@waterflowgroup.co.uk> email bounced. On 3 November 2006, however, Nominet was telephoned by a Mr Green of the Respondent who advised that the Respondent had not received the Complaint, at which point the fact that the postal address had changed become known to Nominet.  Nominet then emailed Mr Green on 6 November 2006 and advised him that although the deadline for a Response had passed, the Respondent could submit a non-standard submission instead.  The Respondent did not do so. That telephone call suggests that at least some of Nominet’s emails may have reached the Respondent, and that the Respondent was at least aware of this DRS proceeding.          

4.2.	Default

4.2.1.	Although the Respondent has failed to submit a Response, or any other submission, the Procedure does not provide for a default decision in favour of the Complainant. The Complainant must still prove its case to the requisite standard, see §15(b) of the Procedure.  However an expert may draw such inferences from a party’s default as appropriate, see §15(c), and I indicate below where I am drawing inferences.  

5.	The Facts

5.1.	The Complainant is in the business of drainage, waste and civil engineering and construction services and has been engaged in that business since 1965.  Its company name is The Waterflow Group PLC and it has traded since its incorporation in 1965 under names employing the word Waterflow –either as a composite or separately –albeit with an interval from 2001-2004 when it was called Onsite South Ltd, although even then it employed the words “formerly Waterflow..” or on its stationary.  Its website has been <www.waterflow.co.uk> continually since 1999 and it is the holder of a variety of registered trademarks in which “Waterflow” is the dominant word.  The Complainant says it has an exclusive goodwill and reputation in the name.  

5.2.	From the Register and the WHOIS database information supplied, the Respondent registered the Domain Name on 28 April 2006.  Nominet has also supplied to me a printout from the site to which the Domain Name pointed on 11 October 2006.  That site is a domain name parking site, Sedoparking.com. The Complainant says the Domain Name has pointed at that site since July 2006.  Its says that prior to that the Domain Name pointed to a website for a business of a Waterflow Utilities Services Ltd (“WUSL”), under the domain name <www.waterflowgroup.co.uk>, itself the subject of a separate DRS Complaint by the Complainant.  After July 2006, that domain also pointed to a page offering that domain name for sale for $10,000.  Apparently the domain name <www.bellconstruction.co.uk> continues however to link to a version of the WUSL website.   

5.3.	On 21 June 2006, the Complainant’s lawyers wrote to WUSL complaining of passing-off and demanding that it cease and desist in relation to both the Domain Name and the related <www.waterflowgroup.co.uk>. By a reply on 27 June 2006, lawyers for WUSL denied passing-off but agreed to cease its use of the latter domain name and to entertain offers to sell it.  That letter does not appear to deal with the Domain Name in issue here.          

5.4.	I know nothing of WUSL or Bell Construction, or the relationship between them, other than what has been submitted by the Complainant, and what WUSL’ lawyers advised in their letter—namely that WUSL is in the business of water related industry such as sewers, drainage etc.  The Complainant alleges however that the identities of the individuals given on the company search for WUSL are fictitious and has submitted evidence from a private investigator to support this. 

6.	The Parties’ Contentions

Complainant

6.1.	 The Complainant claims it has rights in a name or mark identical or similar to the Domain Name and that in the hands of the Respondent the Domain Name is an Abusive Registration.  

6.2.	As to Rights, the Complainant says (and I have largely retained its own words here): 

6.2.1.	It is registered at Companies House as a public limited company under the name “The Waterflow Group Plc” and was incorporated on 7 September 1965 (Annex 1). The details show the Complainant’s previous names to have been: Date of Change: 26/08/2004; Previous name:Waterflow Services Limited; Date of Change: 25/08/2004;Previous name: Onsite South Limited; Date of Change: 15/10/2001; Previous name: Water Flow Services Limited. Notwithstanding the change of name on 15 October 2001 to Onsite South Limited, the “Waterflow” name was not abandoned (Annex 2 company Onsite South Limited stationery). The goodwill built up in the “Waterflow” name remained with the company and the company name reverted to Waterflow Services Limited in August 2004 (Annex 3). 

6.2.2.	The Complainant has traded under and by reference to the name “Waterflow” since at least 1965 throughout the United Kingdom and provides goods and services under or by reference to that name. In addition it has spent substantial sums on marketing, advertising and publicity during this time. Since September 2004 alone, the Complainant has spent over £75,000 on marketing activities. Examples of evidence of its trading and advertising include copy brochures, flyers, adverts, press releases and newsletters were attached at Annex 4. 

6.2.3.	The Complainant is the proprietor of the following UK registered trade mark and trade mark applications (at Annex 5): 

6.2.3.1.	UK trade mark No1563071 filed on 22 February 1994 and registered on 12 May 1995 consisting of a device with the words WF WATERFLOW SERVICES LTD in Class 37. 

6.2.3.2.	UK trade mark No 2401315 filed on 12 September 2005 and registered on 25th August 2006 consisting of a device with the words WATERFLOW Plc in respect of: Classes 37, 42 and 45.
 
6.2.3.3.	UK trade mark application No 2423448 filed on 2 June 2006 and currently undergoing examination, consisting of the word WATERFLOW in respect of the classes listed at 1 c ii). 

6.2.4.	The Complainant has operated a website in connection with its business under the domain name <www.waterflow.co.uk> since at least 1999 (copy pages from www.archive.org and current WHOIS search details at Annex 6). This domain name prominently features the Complainant’s registered trade mark and provides information with regard to the Complainant’s activities and products. 

6.2.5.	By trading under and by reference to the “Waterflow” name since 1965, by virtue of its UK trade mark registration No1563071 listed above and through its use of its website at <www.waterflow.co.uk>, the Complainant has built up significant goodwill and reputation in the “Waterflow” name to the extent that members of the public associate the name “Waterflow” exclusively with the Complainant.

6.3.	 As to Abusive Registration, the Complainant says the Domain Name in the hands of the Respondent is abusive as the Domain Name was registered 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; and has since been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights for the following reasons.

6.3.1.	It was primarily registered to unfairly disrupt the Complainant’s business. In particular: 

6.3.1.1.	The Domain Name was registered on 28 April 2006 and the related <www.waterflowgroup.co.uk> was registered on 9 February 2006. The Complainant’s incorporation of its company, use of the Waterflow trading name, trade mark registration and UK trade mark application No 2401315, all predate the registration of the Domain Name by the Respondent. 

6.3.1.2.	On 21st June 2006, the Complainant’s legal representatives wrote to WUSL setting out the concerns of the Complainant (see Annex 14). In response, WUSL’ legal representatives wrote a letter dated 27 June 2006 (see Annex 14) which confirms that WUSL carried out a search of company names in February 2006. It is beyond doubt that WUSL, and in turn the Respondent (based on the above evidence) would have been aware of the Complainant and its business activities. 

6.3.1.3.	The Respondent went on to register and use the Domain Name comprising the Complainant’s corporate and/or trading name and arrange for it to be linked to the WUSL’ website. Indeed, the Respondent continues to host WUSL’s website using its <www.bellconstruction.co.uk> domain name.  This is clear evidence of its knowledge and intention to take unfair advantage of the Complainant’s goodwill and reputation. The Respondent would have been aware of the potential value of the Domain Name to the Complainant. 

6.3.2.	Knowingly registering and using the Domain Name in circumstances where confusion is likely manifestly constitutes bad faith registration.  The deliberate incorporation of the name “Waterflow”, a name synonymous with the Complainant, and in which the Complainant owns substantial goodwill, is likely to have led to confusion in the market. The clear intent behind the registration and use of the Domain Name has been to divert enquiries and internet traffic regarding the Complainant to WUSL’ website and in turn the Respondent’s. Until its change in or about July 2006, the Domain Name linked to the WUSL website which offered virtually identical services to those of the Complainant. As such it is a clear abuse under s3(a)(ii) of the  Policy. In the event that the Domain Name is not transferred to the Complainant there will be a continuing risk of confusion.

6.3.3.	Having received a complaint submitted by the Complainant’s lawyers (Annex 14), WUSL’ lawyers’ letter of 27 June 2006 stated that WUSL would be agreeable to sell the domain name <www.waterflowgroup.co.uk> to the Complainant “for a price” and that they were “open to offers”.  Since July 2006, the <www.waterflowgroup.co.uk> domain name has linked to a page comprising adverts and an offer to sell the www.waterflowgroup.co.uk domain name for $10,000 (Annex 9). The Complainant has also submitted a complaint in relation to the domain name <www.waterflowgroup.co.uk>. The Domain Name is relevant to, and inextricably linked with that domain name which is registered in the name of WUSL (WHOIS search at Annex 7).  The website referred to has since been removed and the web page is now offering for sale the domain name <www.waterflowgroup.co.uk> for $10,000 (Annexes 9 and 14) contrary to s3(a)(i)(A) of the Policy . 

6.3.4.	The Domain Name is registered in the name of Bell Construction at the Rayners Lane address. Until July 2006, the Domain Name linked to the website hosted on <www.waterflowgroup.co.uk> (Annex 8). Since about July 2006, the Domain Name has instead pointed to a parking page ( Annex 13).  It is submitted that it is no coincidence that the link from the Domain Name was removed at the same time that the <www.waterflowgroup.co.uk> domain name ceased to host the WUSL website. 

6.3.5.	The Respondent’s continued use of the Domain Name acts as a blocking registration against a name and marks in which the Complainant has Rights. This is actively and unfairly disrupting the Complainant’s business. In addition, any future use by the Respondent of the Domain Name in connection with similar services to those of the Complainant is likely to constitute passing off and/or registered trade mark infringement. The Respondent’s abusive registration of the Domain Name effectively prevents the Complainant, as the legitimate owner of the “Waterflow” name from utilising the Domain Name, thereby disrupting the business of the Complainant to its detriment. Further the Respondent’s continued use of its <www.bellconstruction.co.uk> domain (in respect of which no complaint has yet been submitted) illustrates an ongoing intent to disrupt the Complainant’s business. 

6.3.6.	Reasonable enquiries have failed to evidence the existence of Melvin or Louise Packard, the Complainant believes that these identities are fictitious and that on a balance of probabilities, the true identities of the directors of WUSL are Ramon and Susan Bell, see extracts from the report of David Kearns, an enquiry agent instructed by the Complainant, Annex 11. In particular:

6.3.6.1.	A company search reveals that the director of WUSL is Melvin Packard and the company secretary is Louise Packard both of 20 Fontwell Close, Harrow, Middlesex HA3 6DE (see Annex 10). However, a search of the publicly accessible Register of Births for England And Wales failed to locate an entry for either of them in relation to the dates of birth given to Companies House (12 January 1955 and 19 July 1960 respectively). There is also no evidence of their marriage and a search of the UK Credit Reference Database has also failed to locate any entries for either of them using their respective dates of birth (at Annex 11). Nor does the electoral roll for 20 Fontwell Close contain entries for them.  

6.3.6.2.	That roll however lists a David Bell as registered at the property and enquiries revealed Susan and Ramon Bell (both with the date of birth 7 November 1962) have also been recorded at Companies House as living at this address in respect of a dissolved company (Annex 11). A Mr Ramon Bell is also registered on the Electoral Role at 436 Rayners Lane. Further investigation suggests that this David Bell is Ramon and Susan Bell’s son and both Ramon and Susan Bell live at 436 Rayners Lane. Since this is also the address of the Respondent, it is submitted that the Respondent is a business linked with Ramon Bell and/or Susan Bell.

6.3.6.3.	A BT telephone search for Bell Construction at 436 Rayners Lane has revealed no entries and a Google search for Bell Construction has not revealed any contact details. Additional searches have revealed the existence of the domain name <www.bellconstruction.co.uk> . A WHOIS search for this domain name reveals that it is also owned by Bell Construction of 436 Rayners Lane. The domain name <www.bellconstruction.co.uk> links and continues to link to a different version of the website for WUSL, the copyright notice evidencing the fact that the website has been constructed in 2006 (Annex 12). The Complainant submits that Bell Construction is part or a division of WUSL. As such the facts relating to the www.waterflowgroup.co.uk complaint are highly relevant and interwoven with this complaint as to the Domain Name. 

Respondent

6.4.	As noted above, no Response has been received. 

7.	Discussion and Findings

General

7.1.	The DRS is designed as a fast, simple alternative to litigation.  Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy.  

7.2.	Paragraph 2(a) of the Policy requires the Complainant to prove 2 elements: 

   	  “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 Complainant bears the onus of proof and must prove both elements on the balance of probabilities.  

7.3.	The DRS’s jurisdiction is limited to these issues and the remedies of cancellation, suspension, transfer or amendment of the Domain Name.  The Policy does not provide for the determination of allegations of trade mark infringement or passing-off proper.    

Complainant’s Rights

7.4.	 Rights under the Policy include but are not limited to rights enforceable under English law and this extends to rights to registered and unregistered trade marks and contractual rights in relation to the same.  This is not a high threshold, see DRS Appeal Panel in Seiko v Designer Time, DRS 00248.   

7.5.	In so far as the Complainant relies on the registration alone of the company name in §6.2.1 above, this does not assist it, as registration of a company name, does not, of itself, prevent others from using that name in business.  See Active Web Solutions v. Peter Shaw DRS 00228.  Actual use of a name in trade however may create rights protected by the law of passing off.  As already noted, the DRS does not determine passing-off claims proper and we are only concerned here with the existence of rights protected by the law of passing-off.  The thing protected in passing-off, and therefore under the Policy, is the goodwill of the business in question, namely “the benefit and advantage of the good name, reputation, and connection of a business.  It is the attractive force which brings in custom” IRC v Muller & Co’s Margarine Ltd [1901] AC 217, 223-224.  The Complainant relies on its use of the Waterflow name as a trade name in connection with its business over a 40 odd year period, see §§6.2.1& 2 and §6.2.4, which it claims give rise to a goodwill and reputation protected by the law of passing-off.
  
7.6.	 In addition, the Complainant relies, at §6.2.3, on its two registered marks, the device mark, a logo showing the letters WF in front of a cylinder, beside the words “Waterflow Services Ltd” and the device mark “Waterflow Plc” and the pending application for the word mark “Waterflow.”  

7.7.	The Complainant has submitted satisfactory evidence of its registered marks and application and extensive promotional and advertising material and material from its website since 1999, and has more than satisfied me that it has Rights in the name “Waterflow.”  

7.8.	Paragraph 2(a)(i) of the Policy requires that the name or mark in which the Complainant has Rights “is identical or similar to the Domain Name.”  In determining this, suffixes are to be ignored and I will therefore ignore “.co.uk.”   We are therefore comparing the relevant aspects of the Domain Name, “waterflowutilities” with “Waterflow”.  I am satisfied the Complainant has Rights in a name similar to the Domain Name.     

Abusive Registration

7.9.	The second element the Complainant must prove under §2(a) of the Policy, is that the Domain Name is an Abusive Registration, defined in §1, as follows: 

“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.”  

7.10.	§3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration.  The listed factors are that the Respondent registered or acquired the Domain Name “primarily” to: sell it above cost to the Complainant (3aiA); block the Complainant’s registration of it (3aiB); unfairly disrupt the business of the Complainant (3aiC); or as part of a pattern of abusive registrations (3aiii).  Other factors relate to the use following registration, for example, circumstances indicating the use has or may confuse (3aii).  Conversely, §4a of the Policy provides a non-exhaustive list of factors which may evidence that a registration is not an Abusive Registration.     

8.	Unfair Disruption 

8.1.	The critical fact, which the Complainant focuses on, is the letter from WUSL’s lawyers of 27 June 2006 in which they admit WSUL undertook a company search in February 2006, before registering the WSUL company name.  WUSL was aware of the Complainant at that point.  I find that would have caused WUSL or its lawyers to carry out internet searches which would have led them to the Complainant’s website and more likely than not, the existence of the registered marks.  

8.2.	What then is the connection between the Respondent and WSUL?  I note the deliberate avoidance of this issue by WSUL’s lawyers in their letter of 27 June 2006.  I also note that prior to July 2006, both WSUL’s and the Respondent’s domain names pointed to the WSUL website and that <www.bellconstruction.co.uk> continues to link to a version of it.  I find there is a connection between those parties and that the Respondent is fixed with the same knowledge as WUSL from the company search.     

8.3.	I find then that at the point of registration of the Domain Name, the Respondent was fully aware of the Complainant, its registered marks, domain name, business and goodwill.  The adoption of the dominant word Waterflow was liable to suggest a connection between the parties, both of whom are in the same business. I find that this was deliberate.  

8.4.	I note the Domain Name is similar, not identical to the Complainant’s trade name and marks.  I also note that in the letter of 27 June 2006, the point is made that the words  “Water” and “flow” are descriptive of WSUL’s business. WSUL also relies in that letter on the fact both company names contain four words –only one of which is common.  While small differences may suffice when names are descriptive, the dominant word here is clearly Waterflow –a composite word not in ordinary usage in joined up form.  Further, the composite word is less descriptive and evidence has been given that it had become distinctive of the Complainant’s business through use.  In any event, descriptiveness has relevance in the absence of actual knowledge of a competitor’s use –as it can explain the innocent selection of a name.  In this case, there was actual knowledge.  Most likely, WSUL’s lawyers advised that there was an argument as to descriptiveness and that with the addition of other words, WSUL and the Respondent would be able to, at least, paint themselves as unaware, while quickly agreeing to demands to avoid an injunction if their use was discovered.   The addition of the other words do not assist them as the average consumer is unlikely to be focused enough to distinguish between Plc or Group and nor is “Utilities” a dominant or particularly distinguishing word.  

8.5.	Finally, I regard the Respondent’s failure to participate in this proceeding as telling.  It is clearly a deliberate choice given that, as discussed above, see §§4.1.1- 4.1.6, the Respondent is aware of this proceeding.  It suggests to me a lack of confidence in its’ case, as if the Respondent has a good explanation for why its registration of the Domain Name is not abusive, one would expect it to have come forward with it. 

8.6.	I find unfair disruption made out.         

9.	Confusion 

9.1.	For similar reasons as given in relation to unfair disruption, I find this factor made out.

10.	Offer to sell 

10.1.	Given my findings above it is not necessary for me to deal with this factor, and I note the express offer was made in relation to the related domain name, not the Domain Name.

11.	Blocking Registration

11.1.	I find this factor made out.  

12.	Fictitious Identities 

12.1.	I make no finding here and nor is it necessary given I have already found a number of factors made out.  

13.	Decision

13.1.	I find that the Complainant has Rights in a name which is similar to the Domain Name which is an Abusive Registration in the hands of the Respondent. Accordingly, the Domain Name should be transferred to the Complainant.    

Victoria McEvedy

29 November 2006