Nominet UK Dispute Resolution Service

DRS 4260

Global Highland Management Services Limited v. Castle View Personnel Limited

Decision of Independent Expert

1.	Parties

Complainant:		Global Highland Management Services Limited
Country:		GB

Respondent:		Castle View Personnel Limited
Country:		GB

2.	Domain Name

The domain name in dispute is globalhighland.co.uk (“the Domain Name”).

3.	Procedural Background

3.1	The Complaint was received in full (including annexes) by Nominet on 4 December 2006. Nominet validated the Complaint and sent a copy to the Respondent on 5 December 2006, informing the Respondent that it had until 29 December 2006 to lodge a Response.  

3.2	Since no Response was received by the deadline (or at all), the dispute did not proceed to Informal Mediation. On 8 January 2007 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the Nominet UK Dispute Resolution Service (“DRS”) Policy ("the Policy").

3.3	Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet appointed me as Expert on 15 January 2007. 

4.	Outstanding Formal/Procedural Issues 

4.1	Since the Respondent has not submitted a Response, I have checked the Complaint file to determine whether there are any exceptional circumstances which should lead to my taking any action other than proceeding to a decision pursuant to paragraph 15(b) of the DRS Procedure (“the Procedure”). In particular, I have looked at the methods used to notify the Respondent of the Complaint.

4.2	The name and address given for the Registrant in both the WHOIS search printout and Nominet’s database entry for the Domain Name are identical to those of the Respondent as set out in section 1 above. In Nominet’s database, an individual called Stewart McCallum is given as the Registrant contact, with an e-mail address of stewart.mccallum@castleviewpersonnel.com. 

4.3	The Complaint file discloses that Nominet attempted to notify the Respondent of the Complaint by the following means: 

i.	by e-mail to stewart.mccallum@castleviewpersonnel.com and to postmaster@ globalhighland.co.uk; and

ii.	by post to the address given for the Respondent in Nominet’s database and the WHOIS entry.

4.4	These are three of the various means of communicating the Complaint to the Respondent which are provided for in paragraph 2(a) of the DRS Procedure, any one of which may have been sufficient.

4.5	The file reveals that, although a delivery failure message was received from the postmaster e-mail address, none was received from Mr McCallum’s e-mail address, and the postal copy was not returned. I therefore conclude that the Respondent has been properly notified of the Complaint but has chosen to ignore it.

5.	The Facts

5.1	This case concerns direct competitors. Both the Complainant and the Respondent are recruitment agencies based in Inverness in Scotland. The Complainant has been operating for over twenty years and has used the trading name “Global Highland” since March 2001. The Respondent was incorporated in June 2004. Although its company name is Castle View Personnel Services Limited, it operates under the trading name “Highland Jobs”.  

5.2	The Complainant has not relied on any registered trade marks for the name “Global Highland”. However, it has registered the domain name globalhighland.com, which it uses to direct internet users to its website at www.globalhighland.com. The name “Global Highland” features prominently on the website, which advertises and promotes the Complainant’s business.

5.3	The Domain Name was first registered on 12 October 2003 but only seems to have been acquired by the Respondent on 11 August 2006. (In case I am wrong about this, since the position is not entirely clear from the file, I should make clear that my decision would be the same if the Respondent in fact acquired the Domain Name earlier than this.) The Domain Name currently resolves to a website at the web address www.globalhighland.co.uk, which advertises and promotes the Respondent’s “Highland Jobs” recruitment business. This website is identical to the Respondent’s main business website found at www.highlandjobs.co.uk.

5.4	There is no evidence of any correspondence between the parties prior to the Complaint.  

6.	The Parties’ Contentions

Complainant

6.1	The Complainant states that it has rights in the Domain Name because:

(a)	it has been registered at Companies House under the name “Global Highland Management Services Limited” since 12 March 2001;

(b)	it has traded under the name “Global Highland” since 12 March 2001;

(c)	it has advertised using the name “Global Highland” since 12 March 2001 and has spent about £720,000 on such advertising; 

(d)	it provides services under the name “Global Highland”.

6.2	The Complainant adds by way of background that “Global Highland” is an established recruitment agency based in Inverness in Scotland. It has been trading for 21 years and is established as the largest recruitment company in the Highlands of Scotland. It won the Highlands and Islands Business of the Year Award 2006. 

6.3	The Complainant has provided copies of documents to back up its assertions, including a print-out from Companies House, a company brochure, sample advertising and marketing material (being evidence of press, magazine and directory advertising, TV and radio advertising from autumn 2005, cinema advertising and shop frontage), the Business of the Year Award certificate and an ISO certificate of conformance with a management system standard for “the provision of advanced recruitment solutions and support services” dated 5 July 2006.

6.4	The Complainant has provided evidence of its registration of the domain name globalhighland.com and its use of that domain name to host the “Global Highland” website at www.globalhighland.com. The Complainant states that a major part of its custom comes through this website, which is branded extensively by reference to the name “Global Highland”.

6.5	The Complainant asserts that the Respondent’s business was inaugurated on 9 June 2004 under the trading name “Castle View Personnel” as a direct competitor to Global Highland’s business. 

6.6	The Complainant states its belief that the Respondent “is benefiting from the small variation on the domain name where ‘.com’ is replaced by ‘.co.uk’.”

6.7	The Complainant states that the Domain Name in the hands of the Respondent is abusive because it was primarily registered to unfairly disrupt the Complainant’s business by confusing the marketplace into thinking that they are dealing with Global Highland (i.e. the Complainant).

Respondent

6.8	The Respondent has not filed a Response.

7.	Discussion and Findings:

General

7.1	Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that: 

i.	it 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 (as defined in paragraph 1 of the Policy).

7.2	In the absence of a Response from the Respondent, I must first consider whether the Complainant has established a prima facie case on the face of the Complaint. If it has done so, I must then consider whether there are any circumstances which prevent that from being sufficient to satisfy the burden of proof.

Complainant’s Rights

7.3	Under paragraph 1 of the Policy:

 “Rights includes, but is 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.”

7.4	Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off in the United Kingdom and similar rights in jurisdictions elsewhere.

7.5	The Complainant has not mentioned any registered trade mark rights in respect of the name “Global Highland”, but has given details of use of this name in connection with its activities, as set out in section 6 above. 

7.6	The name “Global Highland” comprises two common words, each of which is in everyday use. On the one hand, the combination of the two words cannot be said to be commonplace, nor can it be said to be wholly descriptive of the Complainant’s business. On the other hand, the name “Global Highland” is not particularly distinctive and would probably not stick in the mind of members of the public without some repetitive use of it. In this case, the Complainant has provided some clear evidence of several years’ use of the name as a “brand” for its recruitment agency business, such that it must have built up a reputation and goodwill among a significant number of employers and potential employees in Scotland. This conclusion is supported in particular by the Complainant’s success in winning the Highlands and Islands Business of the Year Award 2006, the certificate for which states the following on its face: “GLOBAL HIGHLAND is commended by the panel of judges for its contribution to the economy of the Highlands & Islands”.

7.7	I conclude that the Complainant has done enough to establish a prima facie case that the Complainant has Rights in the name “Global Highland”, in that it would be entitled to rely on rights in passing off to prevent others from using the name in relation to recruitment agency activities (subject to the facts of any particular case). The Respondent does not oppose the Complainant’s contentions, and there is nothing else in the file which indicates that I should look any further.

7.8	For the purpose of comparing the name “Global Highland” with the Domain Name, I ignore the suffix .co.uk and the lack of a space between the two words, since the average internet user would do the same. For the purposes of paragraph 2(a)(i) of the Policy, I therefore regard the name “Global Highland” to be identical to the Domain Name.  

Abusive Registration

7.9	Paragraph 1 of the Policy defines an “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.”

7.10	I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.

7.11	Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are brought into play by the Complainant are as follows:

 	“3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

	(A) …(B)…; or

	(C) for the purpose of unfairly disrupting the business of the Complainant;

(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;...”

7.12	The Complainant’s website is at www.globalhighland.com. I have visited the website to see for myself that it is a well-presented source of information about the Complainant’s business, with clear branding by reference to the name “Global Highland”. Anyone wishing to access the Complainant’s website has a choice of methods to reach it. One method would be to put the name “Global Highland” into a search engine, while another would be to type one or more of the most likely internet addresses into the address field. The most likely internet addresses to try for a UK-based company would be either www.globalhighland.com or www.globalhighland.co.uk. The former address would lead one to the Complainant’s “Global Highland” website, while the latter address would lead one to a website which advertises and promotes the Respondent’s “Highland Jobs” recruitment business. 

7.13	I tested this myself and found that, although the web address shown on the screen was www.globalhighland.co.uk, a hard copy printout of the page identified the web address www.highlandjobs.co.uk along the bottom of the page. I then visited that address by typing it into the address field and found the identical website, being the Respondent’s main business website. 

7.14	It seems very probable that a significant number of people searching for the Complainant’s website on the internet may end up on the Respondent’s website. Given the direct overlap between the Complainant’s and Respondent’s businesses, this is not a case where people would necessarily realise that the website they had reached was unconnected with the Complainant. And, even if they were to realise that they had not ended up where they had intended, they could decide to go ahead with enquiries about the Respondent’s business, which would not have happened had the Respondent not used “Global Highland” in the Domain Name and its web address. 

7.15	In this way, the Respondent’s use of the Domain Name is likely to cause confusion and inconvenience to people who wish to use the Complainant’s website. At best, this would cause minor disruption to the Complainant’s business by having to deal with disgruntled customers; at worst, the Complainant could lose business from people who decide to try out the Respondent as a result of having been diverted to its website. Such disruption would be unfair, having arisen out of use of the “Global Highland” name. It is highly unlikely that the Respondent was unaware of the Complainant’s “Global Highland” business, given that the parties are direct competitors based in the same city.

7.16	I have considered whether there are any factors in the Respondent’s favour which demonstrate that the Domain Name is not an Abusive Registration, some examples of which are given in paragraph 4 of the Policy. None of the examples apply here, and there is nothing else in the circumstances of which I am aware that assists the Respondent.

7.17	In all the circumstances set out above, I conclude that both limbs of the definition of “Abusive Registration” are satisfied in this case.

8.	Decision

I find that the Complainant has Rights in respect of a name (“Global Highland”) which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Domain Name globalhighland.co.uk should be transferred to the Complainant.

Anna Carboni

25 January 2007