Malcolm Hall –v- Karen Gruender

Nominet UK Dispute Resolution Service

DRS 04176

xpforum.co.uk

Decision of Independent Expert

1.	PARTIES:

	Complainant:		
				GB

	Respondent:			
Karen Gruender
				GB

2.	DOMAIN NAME:

	xpforum.co.uk (“the Domain Name”).

3.	PROCEDURAL BACKGROUND:

3.1	The Complainant has complained to Nominet UK ("Nominet") and this  dispute is being decided under Nominet’s Dispute Resolution Service Policy (“the Policy”).  The dispute was entered into Nominet’s Dispute Resolution Service (“DRS”) system on 2nd November 2006.  Hardcopies of the Complaint were received in full by Nominet on 21st November 2006.  Nominet validated the Complaint and sent a copy to the Respondent on 22nd November 2006.  A Response was entered into the system on 22nd November 2006 and hardcopies were received on 23rd November 2006.  The Response was forwarded to the Complainant on 23rd November 2006 and a Reply was entered into the system and hardcopies received on 4th December 2006.  Mediation was not  successful and the Complainants paid the fee for an expert decision on 8th January 2007.

3.2	On 9th January 2007 Nominet invited Nick Phillips the undersigned expert (the "Expert") to provide an expert decision on the case.  The Expert confirms that he knows of no reason why he should not accept the appointment and that he knows of no reason why his independence or impartiality might be called into question.

4.	THE FACTS:

4.1	The Domain Name was registered by the Respondent on 11th September 2003.

4.2	For some time the Respondent’s husband, Peter Gruender, maintained and ran a forum providing support and advice for users of Windows XP from the Domain Name and the domain name xpforum.info.

4.3	Subsequently in or around April 2004 Mr Gruender sold two one third stakes in the forum he was running for £300 each.  One of these was sold to a Terry Howe and one to the Complainant.

4.4	In either mid or late 2004 Mr Gruender agreed to sell his  remaining stake in the forum to the Complainant and to Mr Howe for which the Complainant and Mr Howe paid £300 although there is a dispute over exactly what Mr Gruender agreed to sell and particularly whether this included the Domain Name or simply the rights to the website(s) operating at the Domain Name and at xpforum.info.

4.5	Subsequently Mr Gruender transferred certain rights in the Domain Name and the domain name xpforum.info to the Complainant by transferring these domain names from his account at 123-reg.co.uk to the Complainant’s account at 123-reg.co.uk. In relation to the Domain Name at least this had the effect of giving the Complainant control over the Domain Name but did not move the ownership of the Domain Name to the Complainant.

4.6	In July 2006 the Complainant bought Mr Howe’s share in the forum for £450.

4.7	The Domain Name is currently registered in the name of the Respondent and the Complainant has asked that the Domain Name be transferred into the name of the Complainant. The domain name xpforum.info is however now in the Complainant’s name.

4.8	The Domain Name is in use as a password protected site.  Users who enter an incorrect password are informed that the domain name may be for sale and that they should send an email to ‘info@loc8.info’. This site also contains a link to a forum called “The Vista Forum” which offers members an opportunity to get support and advice on both Windows XP and on Microsoft’s more recently launched Vista product. 

4.9	The Complainant continues to operate the forum at the website www.vista-xp.co.uk.  As the name suggests the forum is now concerned not just with Windows XP but also with Windows Vista.

5.	OUTSTANDING FORMAL/PROCEDURAL ISSUES:

5.1	The Respondent attempted to make a non-standard submission under 13(b) of the DRS.  Nominet informed me of this on 18 January 2007 and on this date forwarded to me a letter from the Respondent.  This letter explains the nature of this additional submission but it does not explain why the submission is being made outside of the usual time limits. I had in fact already prepared a first draft of my decision when this communication was received and having considered the Respondent’s summary of the submission I do not believe that it will make any difference to my decision.  I have therefore not asked to see the balance of the Respondent’s submission.
 
6.	THE PARTIES' CONTENTIONS:

The parties' contentions can be summarised as follows:

Complainant

6.1	The Complainant has rights in the Domain Name because he purchased it from the Respondent.

6.2	The Domain Name was transferred to the Complainant via a 123-reg.co.uk internal transfer.  It was done in this way rather than via Nominet because the parties did not wish to pay Nominet’s transfer fee which was then £30 and this internal transfer was free.

6.3	The Complainant produces copies of and relies on a number of emails from the Respondent as evidence of this sale and of the Respondent’s intention to transfer the Domain  Name to the Complainant.

6.4	The invoice from the Respondent to the Complainant produced by the Respondent and which suggests that the Respondent did not intend to transfer the Domain Name itself has been back dated and was created some time after the sale of the Domain Name was completed.  It is misleading and does not reflect the accuracy of the terms of the agreement between the Complainant, the Respondent’s husband and Terry.

6.5	Since the Domain Name was transferred to the Complainant’s 123-reg.co.uk he has been able to add, remove and edit content on the site at the Domain Name.  

6.6	The Complainant has paid all registration/renewal fees since the transfer of the Domain Name to the 123-reg.co.uk account. 

6.7	The Respondent has changed the servers of the Domain Name and the Complainant can no longer access the Domain Name in his capacity as owner.

6.8	The Complainant is entitled to the Domain Name and had asked the Respondent to transfer the domain name certificate into his name, this has not been carried out. 

6.9	The Respondent has subsequently offered to sell the Domain Name to the Complainant for a sum not less than £1,000 and continues to offer the Domain Name for sale at a website linked to the Domain  Name.  The Complainant submits that this amounts to an Abusive Registration.

Respondent

6.10	The only thing that was sold to the Complainant was the design and content of the forum, and not the Domain Name.  This is evidenced in the invoice dated 30 October 2004 from the Respondent to the Complainant.

6.11	The use of the 123-reg.co.uk account was as a temporary measure to enable the forum to continue under the Complainant’s management while the Respondent’s husband was ill.

6.12	The use of the 123-reg.co.uk facility was on the strict understanding that, amongst other things, should the Respondent ever want to sell the Domain Name then the Respondent would give the Complainant the opportunity to purchase the Domain Name.

6.13	At all times it has been made clear to the Complainant that he was not the owner of the Domain Name and that all he owned was the content and design of the forum.

DISCUSSIONS AND FINDINGS

7.1	Paragraph 2 of the Policy requires that the Complainant must prove, on the balance of probabilities, 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.

7.2	My first task is therefore to assess whether, on the balance of probabilities, the Complainant has Rights in a name or mark which is identical or similar to the Domain Name.

7.3	Rights are defined in Paragraph 1 of the Policy as follows:  “includes, but is not limited to, rights enforceable under English law.  However, the Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”.  In deciding this I am conscious that this has always been treated in decisions under Nominet’s DRS as a test with a low threshold to overcome.

7.4	Complaints which are generally made to Nominet’s DRS are usually, although not exclusively, concerned with situations where the Complainant has been trading under a particular style and where it is alleged that the Respondent has adopted or registered a similar or identical Domain Name.  Consequently, in determining whether the Complainant has Rights it is common to be looking at whether the Complainant has either registered or unregistered trade mark type rights in the Domain Name or something similar to it.

7.5	In this case the Complainant is saying that he has Rights in the Domain Name because he has acquired it from the Respondent.  	The definition of Rights is however concerned with whether or not the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name rather than in the Domain Name itself and so whether or not the Complainant has bought or agreed to buy the Domain Name from the Respondent seems to be to be irrelevant at this stage at least.

7.6	It is not seriously disputed that the Respondent’s husband, Mr. Gruender, sold the Complainant a third share in the forum itself, although it is of course disputed whether this included a share in the Domain Name, or that he subsequently sold his remaining share to the Complainant and his then partner Mr. Howe.  It is also not disputed that the Complainant subsequently acquired Mr. Howe’s share.  It therefore follows that from April 2004 the Complainant had a 33% share in at least the design and content of the xpforum web site.  This share was then increased to 50% and subsequently to 100%.

7.7	No real evidence is produced concerning the reputation and goodwill that is attached to either the name “xpforum” or to the xpforum website itself.  I have however had a look at the website myself and it does seem to be a fairly serious and impressive web site with a large number of regular posters and members.  It could therefore be said because of his ownership of at least the design and content of the xpforum web site that the Complainant has acquired rights in the name xpforum.

7.8	However the definition of Rights expressly excludes the Complainant from relying on Rights, “…in a name or term which is wholly descriptive of the Complainant’s business”.  In deciding whether the Complainant’s case falls foul of this provision I have had regard to three other previous decisions of DRS Experts.  The first of these is the decision in the Game Group Plc v Garth Sumpter DRS 2166 which concerned the domain name game.co.uk.  It is convenient to quote a passage from that decision as follows:

Are the Complainant’s rights in the mark ‘GAME’ wholly descriptive of the Complainant’s business?

This is a question which is straightforward in the majority of DRS cases.  However, it merits more detailed consideration in the present case.  How is descriptiveness to be assessed, and how should the term ‘wholly descriptive’ be interpreted?  A simple analysis would consist of comparing the name or term in which the Complainant claims rights with the Complainant’s business and determining whether or not the former describes the nature and substance of the latter, in whole or in part.  A more detailed approach would involve assessing whether the name or term has a distinctive character, either of itself or acquired through use.

Clearly, on a simple analysis, the Complainant’s business is not ‘GAME’; it is the business of selling computer hardware and software, electronic games and related goods.  In this sense, the mark cannot be wholly descriptive.  A term such as ‘ELECTRONIC GAMES’ would be far more descriptive of the Complainant’s business.  A similar approach was used by the Expert in DRS 1057, Simply Energy Ltd v. uSwitch Ltd where he stated:

…the Complainant operates a fuel price comparison web site which allows consumers to ‘shop around’ for the best gas and electricity prices…
…the term “simply energy” is not “wholly descriptive of the Complainant’s business” (such terms are excluded from the ambit of “Rights” in paragraph 1 of the Policy) as the Complainant does not supply energy itself and any allusion to the fact that the Complainant’s business is concerned simply with comparing energy suppliers prices is too oblique in my view to be considered wholly descriptive.

In another sense, the term ‘wholly descriptive’ is often taken to mean ‘devoid of any distinctive character’ – see for example the usage of the latter phrase in Section 3(1)(b) of the Trade Marks Act 1994 denoting a trade mark which cannot be registered.  As in that Act, this definition is usually accompanied by a rider that a distinctive character can be acquired through use, and in fact this is the contention of the Complainant where it submits that it “has acquired, through use, an exclusive right to use of the mark “GAME” in relation to a retail business dealing primarily in computer hardware and software including electronic games and closely related goods” [the Expert’s emphasis].

This more detailed approach to ‘wholly descriptive’ was taken by the expert in DRS 1764, Sterling Direct Finance Ltd v. Paul Mulcaster Associates where he stated:

As indicated above the Expert takes the view that the term easy-loans is descriptive and devoid of distinctive character.  Such a term may acquire a distinctive character through use.  It is however for the Complainant to show that this has occurred.

In finding that the complainant had failed to show the acquisition of such a distinctive character, the expert in DRS 1764 went on to note that Internet searches for “easy loans” produced thousands of results and that the complainant had not identified a single incident of actual confusion.  No evidence had been provided to show that customers of the complainant identified the word easyloans as associated with the complainant.

7.9	The Expert in the GAME case has highlighted two slightly different approaches to this question.  First, as was the case in Simply Energy Ltd v. uSwitch Ltd - DRS 1057 one can simply ask whether the mark or name in question is purely descriptive of the Complainant’s business.  Alternatively, and as was the case in the Sterling Direct Finance Limited v. Paul Mulcaster Associates - DRS1764 case, one looks more carefully at whether the name or mark is, “wholly descriptive” in the trade mark sense of being, “devoid of any distinctive character” which also involves considering whether or not the name or mark has acquired a distinctive character because of the use that has been made of it.

7.10	In the present case I did not think that it much matters which test is adopted. In my view the name “xpforum” is wholly descriptive of the goods and services for which it is used for, i.e. a forum for users of Windows XP.  Indeed, a simple Google search against the term, “xpforum” throws up a large number of hits, the vast majority of which relate to forums for XP users many of which are not in any way connected to either the Complainant or the Respondent. It is also in my view devoid of distinctive character and I do not have any real evidence that the name or mark has acquired distinctiveness because of the use made of it by the Complainant.  Indeed the Google search would appear to support this absence of acquired distinctiveness.

7.11	I therefore find that, on the balance of probabilities, that the Complainant does not have Rights in a name which is identical or similar to the Domain Name.

7.12	Having decided that the Complainant does not have Rights in a name which is identical or similar to the Domain Name I do not need to go on to decide whether the Domain Name is in the hands of the Respondent an Abusive Registration.  I would however comment generally that even if I had decided that the Complainant had Rights in a name which is identical or similar to the Domain Name this would have been a difficult case to find Abusive Registration.  I say this not as a comment on the strengths of either parties position but because this is effectively a contractual dispute and I am really been asked to decide what the terms of a contract were between the Complainant the Respondent or her husband and particularly whether they included the sale and purchase of the Domain Name.  The determination of this kind of issue is really outside of the scope of the DRS and I would suggest that a more appropriate place for the dispute to be settled, if a sensible agreement cannot be reached, would be a County Court.

8.	DECISION

	For the reasons set out above, I find that, on the balance of probabilities, the Complainant does not have Rights in a name or mark which is identical or similar to the Domain Name and that no transfer or other order should be made.  

……………………………………..
Nick Phillips

24th January, 2007