NOMINET UK DISPUTE RESOLUTION SERVICE

DRS Number 04198

Decision of Independent Expert

1.	Parties

Complainant:	Moss and Coleman Solicitors
Country:	United Kingdom

Respondent:	Rick Kordowski
Country:	United Kingdom

2.	Domain Name

mossandcoleman.co.uk (the “Domain Name”)

3.	Procedural Background

3.1.	The Complaint of the Complainant was lodged electronically with Nominet on 9 November 2006.  Nominet wrote to both parties informing the Respondent of the Complaint on 14 November 2006. 

3.2.	A Response was received from Respondent on 28 November 2006, and was forwarded that same day to the Complainant.  The Complainant did not submit a Reply to the Response.

3.3.	On 2 January 2007 Nominet wrote to both parties indicating that it was not possible to achieve a resolution of the dispute through informal mediation, and inviting the Complainant to refer the matter for an expert decision by 16 January 2007.  Nominet received the fee for an expert decision and invited Christopher Gibson to act as expert in the case.  Christopher Gibson, the undersigned (“the Expert”), has confirmed to Nominet that he knows 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 drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.  He was appointed as an Expert in the case on 10 January 2007.

4.	Outstanding Formal/Procedural Issues (if any)

4.1.	No formal or procedural issues are outstanding.

5.	The Facts

5.1.	The Complainant is a general partnership of solicitors, registered with The Law Society since at least 1987 and submitting partnership tax returns to the Inland Revenue since 1953.  Moss and Coleman have been located in the Hornchurch, Essex area since 1953, with an address on the High Street from 1971. The Complainant has submitted documentary evidence to show that it has been operating for more than 50 years.

5.2.	The Respondent is a resident of Essex in the United Kingdom.  He was a former client of the Complainant and filed a complaint with The Law Society against the Complainant for inadequate legal services.  The Law Society decided this claim in Respondent’s favour.  He registered the Domain Name on 17 December 2001 and has used it to operate a website which criticises the Complainant based on the claim that Complainant provided inadequate legal services.

6.	The Parties’ Contentions

Complainant

6.1.	The Complainant claims that it has rights in the Domain Name because Moss and Coleman Solicitors has operated as a general partnership for more than 50 years, during which time it has developed goodwill and a long-standing reputation in its name.  In particular, the Complainant states “The name, Moss and Coleman is, in effect, the Complainant's common law or unregistered combination mark and has accrued comparable goodwill and reputation as a law firm dating back to 1950/51.”  There is no other firm of solicitors registered with The Law Society trading as Moss and Coleman or any other similar name, and likewise, there is no other firm of accountants registered and trading as Moss and Coleman or any other similar name.

6.2.	The Complainant referred to, and attached a copy of, a recent UDRP decision, Moss and Coleman Solicitors v. Rick Kordowski (No.D2006-1066), dated 23 October 2006 (the “WIPO Decision”), in which the same parties – Moss and Coleman Solicitors as complainant and Rick Kordowski as respondent – were in dispute over the domain names that had been registered by Mr. Kordowski: <mossandcoleman.com> and <mossandcoleman.net>.  The WIPO panelist found that the complainant had established that the domain names in dispute had been registered and were being used in bad faith.  The panelist ordered that these domain names be transferred to the complainant in that case, Moss and Coleman Solicitors.

6.3.	The Complainant asserts that the Domain Name in the hands of the Respondent is abusive because it was primarily registered to (i) unfairly disrupt the Complainant's business and (ii) cause confusion to Complainant’s clients by passing off the Respondent's website as that of Moss and Coleman Solicitors.  The Complainant has submitted copies of the Respondent’s web pages and argues that the Respondent has engaged in bad faith as evidenced by “its primary purpose of harassing the Complainant, diverting the Complainant's clients to the website that disparages and defames the Complainant's business, and interfering with the Complainant's business of solicitors.”  The Complainant argues that use of Moss and Coleman's unregistered mark would create customer confusion and damage to their business resulting in an infringement of the unregistered mark.

6.4.	The Complainant states that the registration of the Domain Name is one of a series of registrations that the Respondent has made including <mossandcoleman.com>, <mossandcoleman.net> and <mossandcoleman.eu>.  The Complainant has submitted documentary evidence to show that after the UDRP decision noted above was rendered, the Respondent sent a “threatening letter” to the Complainant’s legal representative and registered a variation of the domain name commonly used by that legal representative (i.e., see <wwjltd.eu> compared with <wwjltd.com>).

6.5.	The Complainant affirms that it does not contest the Respondent's freedom to criticise the Complainant.  Instead, it contests the right of the Respondent to appropriate the Complainant's name and mark in the disputed Domain Name.

6.6.	The Complainant requests that the Domain Name be transferred to it.

Respondent

6.7.	The Respondent filed a Response in which he made the following submissions.

6.8.	First, he refers to and has attached two decisions of The Law Society, dated 9 September 2003 and 10 December 2003.  The Law Society found in his favour in these decisions and declared that the legal services provided by the Complainant, Moss and Coleman Solicitors, to Mr. Kordowski were inadequate.  Moss and Coleman was ordered to pay compensation of £500.

6.9.	The Respondent also raises in defence of his Domain Name registration Article 10 of the European Convention on Human Rights (Right to Freedom of Expression).  He asserts that “If the information on my website offended shocked and disturbed Moss and Coleman, its partners/staff/potential clients, I submit that it does not matter, as such critical information is permitted by the ECHR in the interests of ‘pluralism, tolerance and broadmindedness without which there is no democratic society’.  The Respondent cites to the decision of the European Court of Human Rights in Handyside v. United Kingdom, 5493/72 [1976] ECHR 5, in which the Court in paragraph 49 stated in relevant part:

“Freedom of expression constitutes one of the essential foundations of such a society, one of the basic conditions for its progress and for the development of every man. Subject to paragraph 2 of Article 10 (art. 10-2), it is applicable not only to "information" or "ideas" that are favourably received or regarded as inoffensive or as a matter of indifference, but also to those that offend, shock or disturb the State or any sector of the population. Such are the demands of that pluralism, tolerance and broadmindedness without which there is no ‘democratic society’”

6.10.	The Respondent observes that the Complainant had the initial opportunity to register the Domain Name or similar domain names (e.g., www.mossandcolemen.xxx), but opted instead for <www.mosco.co.uk> as their online presence.

6.11.	The Respondent argues that if the Complainant had timely addressed his original complaint (regarding their legal services to Respondent), then all that came later would not have been necessary.  However, “on losing my home my frustrations understandably came to the boil, hence my full and frank website.”

6.12.	Finally, the Respondent contends that the website associated with the Domain Name <mossaandcoleman.co.uk> “is basically a customer grievance site which by your own (DRS) rules provide that a fair use of a domain name ‘may include sites operated solely in tribute to or criticism of a person or business.’”  The Respondent indicates that his defence “is much the same as put to the WIPO”.  However, in reference to the DRS Policy’s paragraph 4(b) (indicating that fair use may include sites operated solely for tribute or criticism), he states that “I hope you will stand by your own [DRS] policy.”

7.	Discussion and Findings:

General

7.1.	The DRS rules of Procedure mandate that Expert will decide a complaint on the basis of the Parties' submissions, the Policy and the Procedure. 

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

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.

Complainant’s Rights

7.3.	The Complainant has established that it has developed reputation and goodwill in its trading name, Moss and Coleman, through use of that name for over 50 years in association with its law practice, as well as through registration of the name with The Law Society in 1987.  The Respondent does not dispute that the Complainant has traded under this name.  Instead, as noted in the WIPO Decision, “the Respondent’s grievance against the Complainant is entirely based on that fact.”  The definition of “Rights” under the DRS Policy includes, but is not limited to, rights enforceable under English law.  It is a widely expressed view that this definition was not intended to present a high hurdle.  The Complainant has undoubtedly established that it has Rights in the name Moss and Coleman.

7.4.	The substantive part of the Domain Name contains identical letters to the Complainant’s name, except that in the Domain Name there are no spaces between the three words: “Moss”, “and”, and “Coleman”.  It is thus obvious that the Domain Name is essentially identical to the Complainant’s name.

7.5.	The Complainant has therefore established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration

7.6.	As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS 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 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.”
7.7.	Sub-paragraphs 3.a. and 4.a. of the DRS Policy set out non-exhaustive lists of factors which may be evidence that the Domain Name is an Abusive Registration (sub-paragraph 3.a.) or that the Domain Name is not an Abusive Registration (sub-paragraph 4.a.).  

7.8.	The Complainant has relied upon three of the factors set out in paragraph 3, namely: 
3(a)(i): the Domain Name was registered primarily for the purpose of unfairly disrupting the business of the Complainant; and
3(a)(ii): circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant; and
3(a)(iii): the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern.
7.9.	The Respondent does not deny that it registered the Domain Name which is identical to the Complainant’s name.  Instead, the Respondent contends that its website is a criticism site directed at the Complainant and its services.  The Respondent therefore claims that it has made fair use of the Domain Name in accordance with paragraphs 4(a)(i)(C) and 4(b) of the Policy, as follows:

4(a)(i)(C): before being aware of the Complainant’s cause for complaint, the Respondent has made legitimate non-commercial or fair use of the Domain Name; and

4(b): fair use may include sites operated solely in tribute to or in criticism of a person or business.

7.10.	The Complainant’s submissions make clear that the Respondent’s website is directed against and strongly hostile to the Complainant and its business.  Copies of the web pages were attached to the Complaint and the website is currently in operation as of the date of this decision.  The Respondent was aware of the existence of the Complainant and its name at the time it chose to register the Domain Name identical to the Complainant’s name (as well as register other identical domain names but with different extensions – .com, .net and .eu).  Indeed, the choice of a Domain Name identical to the Complainant’s name appears to have been made to achieve maximum impact for the Respondent’s criticism site.

7.11.	The Complainant’s allegations of unfair disruption to its business are closely related to the alleged confusing use of the Domain Name.  See e.g., Clydesdale Conservatories Limited v. Desmond Lawton, DRS 3161 (Feb. 2006); Ryanair Limited v. Michael Coulston, DRS 3655 (July 2006).  If an Internet user seeks to find the Complainant’s web site, s/he will likely either (i) enter the Complainant’s name directly into the address field of their browser (i.e., by making a guess at the URL, such as www.mossandcoleman.co.uk), or (ii) use an Internet search engine such as Google.  In the former case, the Respondent’s web site will appear directly.  In the latter case, a trial test on Google produced the top ten listings on Google’s search return page.  The top two listings referred to the Respondent’s web site.  For example, the first (top) listing was as follows:

“Moss and Coleman - SUCK
Moss and Coleman Solicitors - working against you - if its more profitable!
www.mossandcoleman.co.uk/”

7.12.	It is clear that the primary purpose for which the Respondent chose the Domain Name identical to the Complainant’s name, has been to divert as many Internet users as possible seeking information about the Complainant to the Respondent’s criticism website.  It is well-understood that the technology of Internet navigation results in this outcome, if the domain name chosen is identical the name of a targeted business.  The Respondent has also used the Complainant’s name in the meta-tags of its website to increase the likelihood of users being diverted to the Respondent’s site.  Those Internet users attempting to find the Complainant will arrive at the Respondent site and could be confused, at least initially.  The fact that a review of Respondent’s site would make clear that the user was not on the Complainant’s site does not dispel this “initial interest confusion”.  WIPO has reported on this issue in its Overview of WIPO Panel Views on Selected UDRP Questions:
“Consensus view: The content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer from “initial interest confusion”, where a potential visitor does not immediately reach their site after typing in a confusingly similar domain name, and is then exposed to offensive or commercial content. The test for confusing similarity should be a comparison between the trademark and the domain name to determine the likelihood of confusion.”
7.13.	The Expert thus agrees with the view that a complete “identity of the Domain Name with the Complainant’s trading name is inherently likely to have caused, and to cause, other people to be confused…”  Clydesdale Conservatories Limited v. Desmond Lawton, DRS 3161 (Feb. 2006).  Further, where the Domain Name is identical, the potentially disruptive impact on the business of the Complainant, and in particular, on the Complainant’s efforts to establish a presence on the Internet for purposes of providing information, communications and services, is also apparent.

7.14.	The question remains, however, whether such disruption should be considered “unfair” under the DRS Policy.  More generally, this brings the inquiry back to whether or not the Respondent’s use of the Domain Name “took unfair advantage of or was unfairly detrimental to the Complainant’s Rights”.  (Policy, Definition of “Abusive Registration”).  With this pivotal issue in mind, the Expert has made a review of DRS decisions in which a respondent has claimed fair use in reliance on paragraph 4(b) of the DRS Policy, in particular, because the domain name in dispute was allegedly being used in connection with a site operated solely in tribute to or in criticism of a person or business.  In this regard, the Expert notes that the Complainant has not alleged, nor is there any evidence, that the Respondent’s Domain Name has been used for commercial purposes.  The issue is therefore whether use of a domain name which is identical to a complainant’s trade name or trade mark solely for purposes of tribute or criticism should be considered fair use.

7.15.	In this case, the Expert takes the view that the right of Respondent to criticize does not extend to registering the Domain Name which is identical to the Complainant’s trade name.  The Expert has found no case decided under the DRS in which such a registration and use of an identical domain name, whether for purposes of criticism or tribute, has been considered fair use.  This subject was addressed in the DRS Appeal, Hanna-Barbera Productions, Inc -v- Graeme Hay, DRS 00389 (August 2002), which involved a tribute site associated with the disputed domain name <scoobydoo.co.uk>.  The Appeal Panel stated: 
“In the view of the majority of the Panel, in the context of a tribute site, the vice is in selecting a domain name, which is not one's own name, but which to one's knowledge is identical to the name of another, which one has selected precisely because it is the name of that other and for a purpose which is directly related to that other. For a tribute or criticism site, it is not necessary to select the precise name of the person to whom one wishes to pay tribute or criticise. In this case the domain name could have been 'ilovescoobydoo.co.uk', for example. 
Taking the Domain Name in these circumstances arguably amounts to impersonation of the owner of the name or mark. Substantial numbers of people will have visited the Respondent's website (the Respondent admits to a total of over 37,000 visitors to his site) believing that they were visiting the site of the Complainant, a phenomenon sometimes referred to as 'initial interest confusion’.”
The Hanna-Barbera Appeal Panel added that “Impersonation can rarely be fair.”
  
7.16.	The Hanna-Barbera case was decided before Nominet made certain changes to simplify the language of paragraph 4(b) of the DRS Policy in October 2004.  Nevertheless, the cases that have been decided after this time have arrived at the same conclusion on these issues.  For example, in another case involving a criticism site, in response to a claim of fair use under paragraph 4(b) of the DRS Policy, the expert in Ryanair Limited v. Michael Coulston, DRS 3655 (July 2006), stated that

“my findings in relation to the inherent likelihood of confusion in adopting an essentially identical Domain Name to the mark RYANAIR, lead me to conclude that the Domain Name was from the start registered in a manner which took unfair advantage of and was unfairly detrimental to the Complainant’s Rights and, as such, was an Abusive Registration.”

7.17.	Similarly, the expert in Clydesdale Conservatories Limited v. Desmond Lawton, DRS 3161 (February 2006), again a case involving a criticism site, reached the same result: “It is the Respondent’s choice of Domain Name which is identical to the Complainant’s trading name that falls foul of the Policy, not the Respondent expressing his views about the Complainant.”  See also The JRR Tolkien Estate Limited v Tolkienet.com, DRS 33665 (June 2006) (finding that registration of <jrrtolkien.co.uk> for a tribute site was “necessarily detrimental” and “necessarily unfair” to the Complainant ownership Rights).

7.18.	Finally, the same concerns were raised by the panellist in the WIPO Decision: “The clear conclusion of relevant panel decisions is that a respondent which adopts a complainant’s mark exactly for the purpose of a criticism site is, by that fact, wrongly identifying itself as the complainant or, at the very least, wrongly conveying an association with a complainant.”

7.19.	In the instant case, the Expert’s decision has not been influenced in any way by whether or not he believes that the substance of the Respondent’s criticisms against the Complainant are justified.  Indeed, even if all of the criticisms and the manner in which they were made on the Respondent’s site were justified, this finding would not change the Expert’s decision in this case.  The Respondent’s reference to Article 10 of the European Convention on Human Rights confirms his right to freedom of expression.  If the Respondent had chosen to establish a criticism website using a domain name that did not identify himself as the Complainant, the issues in the present case would not have been raised.

7.20.	The record above, including the documentary submissions of the Complainant, establishes that on the balance of probabilities, the Domain Name is an Abusive Registration.  The Complainant has therefore established the second element of the test in paragraph 2(a) of the DRS Policy.

8.	Decision

The Expert finds that the Complainant has Rights in respect of a name which is identical or similar to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration.  The Expert therefore directs that the Domain Name <mossandcoleman.co.uk> be transferred to the Complainant.

Christopher Gibson 
1 February 2007