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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> In 2 Touch UK Ltd v Eriksson [2007] DRS 4455 (11 April 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4455.html Cite as: [2007] DRS 4455 |
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Nominet UK Dispute Resolution Service
DRS 04455
In 2 Touch UK Limited
v.
Ms. Anna Eriksson
Decision of Independent Expert
Complainant: In 2 Touch Limited
Country: United Kingdom
Respondent: Ms Anna Eriksson
Country: United Kingdom
The domain name in this case is(hereinafter "the disputed domain name") and it was registered on August 13, 2003[1].
The Complaint was lodged with Nominet UK ("Nominet") on February 12, 2007, and hard copies were received in full on the same day. Nominet also validated the Complaint on February 12, 2007 and at the same time notified the Respondent of the Complaint giving her 15 working days within which to lodge a Response. A Response was received on March 5, 2007 and a hard copy of it was received on March 6, 2007. Electronic and hard copies of a Reply from the Complainant were received on March 13, 2007. Nominet initiated its Informal Mediation procedure, but without resolution so, on April 2, 2007, the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet's Dispute Resolution Service Policy ("the Policy").
On April 2, 2007 the undersigned, Mr. David H Tatham ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an 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 and he was selected by Nominet as the Expert for this case on the same day.
There are no outstanding Formal,/Procedural issues.
There are 4 parties involved in this dispute – 1 company and 3 individuals. The Complaint has been filed by the company In 2 Touch Limited (hereafter referred to as "the Complainant"). The principal mover behind this company is Mr. Michael Abramowitz ("Mr. A"). The owner of the disputed domain name is Ms. Anna Eriksson ("the Respondent") and she is in business with her husband Mr. Glenn Whiu ("Mr. W").
All the parties are involved in one way or another in the business of Touch Rugby. No one has provided an explanation of what this is but, according to Wikepedia, the online encyclopaedia, "The name 'touch rugby' refers to derivatives of rugby football in which players do not tackle in the traditional, highly physical way, but instead touch their opponents using their hands on any part of the body, clothing, or the ball." It is apparently known as 'Touch Football' in Australia.
It would appear that all the parties are well-known to each other and that early in 2004 Mr. A actually offered to buy the business operated by the Respondent and Mr. W, including the disputed domain name. This offer was declined, but in September 2004, Mr. A and Mr. W collaborated in setting up a Joint Venture company which continued in business until July 2005.
The Complainant filed a first Complaint against the disputed domain name in early February 2007, but this was withdrawn, and the current Complaint filed, on February 12, 2007.
Complainant
The Complainant and Mr. A make the following allegations and contentions –
• "In 2 Touch" is the brand name under which all of the Complainant's services have been known – since 1996 in South Africa and since January 2003 in the United Kingdom – and the business operates under the name In 2 Touch UK Limited. It offers the same services and products as the Respondent and Mr. W i.e. the delivery of Touch Rugby services and leagues.
• The Respondent is a front for the true operator of the disputed domain name, who is Mr. W and the Respondent registered the disputed domain name with the primary purpose of preventing the Complainant from using it. It was registered in the Respondent's name and at an incorrect address (see below) so as to make it more difficult to trace who the real registrant was.
• During 2006, the disputed domain name was linked to the website at. This is the Complainant's major direct competitor in the UK and it is primarily owned and operated by Mr. W. However after the first Complaint (DRS 04426) was filed, this link was removed and it now points to a domain name provider used by Mr. W. The disputed domain name has therefore reverted back to a being a blocking registration.
• Many of the Complainant's potential and existing clients have therefore been directed to the website atas opposed to the Complainant's website at . Annexed to the Complaint was a copy of a letter from one of Complainant's potential clients who was directed to the website when attempting to register for an In 2 Touch league. Other clients have believed that they were dealing with the Complainant when they were in fact dealing with a completely different entity due to this abusive registration; while some clients have also sent mails to [email protected] or [email protected] in error and received no response. Mr. A believes therefore that these mails are being intercepted and are not being forwarded on, nor do the senders get any response or indication that they have sent an e-mail to an incorrect address.
• In October 2006, when Mr. W was contacted by Mr. David Hill, an independent IT Web Development Officer, and asked to release the domain name to the Complainant, he allegedly admitted that he had taken the name in order to benefit from Complainant's good brand name so as to "protect his interest should In 2 Touch move into the UK market". In fact Mr. A had been operating in the UK market from January 2003 and "In 2 Touch UK Limited" was incorporated on May 21, 2005. However when Mr Hill explained why he should release the name to the Complainant, all communication suddenly ceased. Annexed to the Complaint was a copy of an e-mail from Mr Hill describing his meeting with Mr. W.
• The address on the Respondent's WHOIS information is not that of the Respondent and Mr. W but that of Mr. W's brother.
Respondent
The Response was submitted jointly by the Respondent and Mr. W. In it they make the following allegations and contentions –
• Mr. W and the Respondent have been associated with the development of Touch Rugby in the UK since 1996.
• Mr. W is the International Development Director for International Touch Rugby, a company which he founded in 1998 as a portal for the sport of Touch Rugby. It provides products and services on an international basis to individuals, companies and associations, including the Complainant and Touch Rugby International Limited. These products and services are very different from those provided by the Complainant, as are the outward appearance and functionality of the websites of the two companies.
• Mr. W was approached in late 2002 by Mr. Graeme Wallace from South Africa who is the husband of one of his Touch Rugby referees (Mrs. Nicky Wallace) and together they jointly explored the options of introducing In 2 Touch Touch Rugby into the UK They had a series of meetings throughout the remaining part of 2002 and into 2003. As a result of these discussions Mr. W asked the Respondent to register the disputed domain name. He knew of no similar names or marks for in2touch in the UK at that time and thought it was only prudent to secure the name and marks in line with his discussions with Mr. Wallace and with the Touch Rugby business he had established. Although the negotiations continued into 2003 they were not finalised and there was no agreement.
• The domain name registration was effected in the Respondent's name giving "23 Blondin Avenue, Ealing, W5 4UL" as the address as this was a property which she and her husband owned at the time, although it was later sold to Mr. W's brother when the Respondent and her husband moved to Sweden. They receive mail at this address and it is where they stay when they are in London.
• It is not true that the Respondent's primary purpose in registering the disputed domain name was to prevent the Complainant from using it. In any case, when it was registered the Complainant was not a registered company doing business relating to the provision of Touch Rugby in the UK.
• The disputed domain name was registered in good faith and as an extension of the existing business interests of the Respondent and her husband in the sport of Touch Rugby. That is why visitors to the disputed domain name are directed to the existing website belonging to Mr. W at, which is an International Touch Rugby portal.
• The Respondent believes that the Complainant was and is fully aware of who the Respondent is, her relationship to her husband, and that they have previously resided at the 23 Blondin Avenue address. Indeed, Mr. A has personally delivered England Touch Association affiliation forms to that address. Consequently, to imply that the registration has been deliberately made in a way to make it difficult to trace the real owner of the disputed domain name is untrue.
• The Respondent alleges that the Complainant is no longer trading. An Application for Striking-Off (Form 652A) was submitted to Companies House on November 3, 2006, and a Notice for a Voluntary Strike-off appeared in the London Gazette on December 12, 2006. A copy of a Report to this effect from Companies House dated February 22, 2007 was annexed to the Response. The Respondent also annexed a copy of an Annual Return for Touch Rugby International Limited as proof that Mr. A is currently trading under this name and that Mr. Graeme Wallace is also a Director of and a shareholder in this company.
• The Respondent and her husband have never attempted to profit from the disputed domain name, nor have they individually or collectively made attempts to solicit any funds regarding it. It is true that an approach was made to Mr. W to sell the name along with his business (see below) but this was rejected. At no stage has the Respondent been approached directly by the Complainant or by Mr. A to purchase the disputed domain name.
• In response to the Complainant's allegations concerning e-mails no mail server has ever been set up to intercept e-mails and any persons using "@in2touch.co.uk" as an email address with will receive an "Undeliverable mail" response. Annexed to the response were examples of an e-mail to this address and of the reply.
• Mr. W was approached by Mr. A in early 2004, with a view to him buying out his entire interest in Touch Rugby including the disputed domain name, but after discussing the matter with the Respondent they decided to reject the offer. However he maintained contact with Mr. A and in approximately September 2004 they agreed to set up a Joint Venture which included Mr. Graeme Wallace as a shareholder. This company continued in business until July 2005 when, at Mr. A's initiation, proceedings were commenced to split the company. However the split has not been amicable and there are still outstanding issues which are unresolved including finances and Intellectual Property rights.
• Mr. David Hill is not an independent IT Web Development Officer. He is a London based Referee and known to both Mr. A and Mr. W, who has met him on several social occasions whilst promoting the services of the International Touch Rugby portal. Mr. W was under the impression that the first contact made to him by Mr. Hill regarding the disputed domain name was on a social basis and so he replied in a consistent manner. His responses were deliberately generic and gave no real details regarding the full facts regarding the registration of the disputed domain name. However when it became apparent that Mr. Hill was advising the Complainant, and after taking advice, Mr. W stopped all communications with him. Mr. Hill contacted Mr. W again on February 1, 2007, which coincided with the Complainant submitting its first DRS Complaint. In an e-mail he said that he had been approached by Mr. A regarding the disputed domain name; he also offered to sell the domain namethat he personally owned and which was directed to . This offer was initially accepted but this was prior to receiving the first DRS Complaint, and Mr. W thought it might prejudice the Respondent's position, so the transfer has not yet been carried out.
Complainant's Reply
The Complainant filed a Reply in which it was alleged that –
1. Although Mr. W and the Respondent maintain that they registered the disputed domain name prior to them being aware of the Complainant operating in the UK or being registered, the Complainant refers to the documentation previously submitted as proof that this is factually incorrect. However following the discussions during 2002 and 2003 referred to by the Respondent, when Mr W chose not to take up Mr. Wallace's proposal, Mr. Wallace informed Mr. W that "In 2 Touch" would be operating in the UK from January 2003 and this is what happened. The company In 2 Touch UK Limited was incorporated on May 21, 2003, which was long before the disputed domain name was registered on August 12, 2003.
2. Although it is said in the Response that the Complainant knew that the Respondent and Mr. W previously lived at 23 Blondin Avenue, this is untrue. On only one previous occasion in 2004 were documents delivered to 23 Blondin Avenue and Mr. A was made aware during 2004 that this was the address of Mr Whiu's brother. Mr. A was not aware that Mr W or the Respondent ever used this address as Mr W has previously resided at an address in Putney, SW15 and had used this as his address for all correspondence relating to Touch Rugby in the UK. The Blondin Avenue house was sold to Mr Whiu's brother in September 2001 and, but the disputed domain name was registered on August 12, 2003 so the Complainant questions why the disputed domain was registered to this address if the Respondent and her husband had left the country and/or were using another address for all other Touch Rugby related matters, other than to mislead persons attempting to obtain true information.
Preliminary remark
This Complaint is concerned solely with whether or not the disputed domain nameis identical or similar to a name in which the Complainant has rights, and whether or not it is an abusive registration. Both parties have made allegations and assertions which relate to the commercial rivalry between the two parties and to matters which have nothing to do with the crux of the dispute, and the Expert makes no comments thereon
General
According to paragraph 2(a) of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities –
i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and
ii the disputed domain name, in the hands of the Respondent is an Abusive
Registration.
Both of these issues are dealt with separately hereunder.
Complainant's Rights
The Complainant makes no claim to have any trade mark rights, but the Complaint is made in the name of a company called 'In 2 Touch Limited' and the relevant part of this name is identical to the relevant part of the disputed domain name. Thus, the first requirement of paragraph 2(a) of the Policy would be proved beyond doubt, were it not for the Respondent's assertion that the Complainant has no rights to bring the Complaint because it is in the process of being struck-off. The Complainant dismisses this claim, saying that the company is still a currently legal entity.
Neither party has enlarged on these two bald statements, or provided the Expert with any explanation of the procedure for or the effect of the striking-off of a limited liability company. Therefore, despite paragraph 16(a) of the Policy Procedure, which states that "The Expert will decide a complaint on the basis of the Parties' submissions, the Policy and the procedure", the Expert in the present case felt it necessary to consult the Companies House website for more information. From this it is apparent that once the Registrar has accepted a Form 652a for the striking-off of a company, he must "advertise and invite objections to the proposed striking-off in the London Gazette" and he "will strike the company off the register not less than three months after the date of this notice if he sees no reason to do otherwise and the application has not been withdrawn."
The copy of the Companies House entry supplied to the Expert by Nominet, which is dated February 12, 2007, shows the status of the company to be: "Active – Proposal to Strike Off" and, according to the information supplied by the Respondent, which could not be more official as it comes from Companies House, the application to strike the Complainant off the register was made on November 3, 2006 and the advertisement in the London Gazette appeared on December 12, 2006. Thus, in accordance with the above quoted information, the Complainant would not have been struck off the register before March 12, 2007. As the Complaint was filed on February 12, 2007, the Expert has concluded that on that date
In 2 Touch Limited was – just – still a legal entity and so still within its rights to bring the Complaint. If either of the parties disagrees with this conclusion they are at liberty to file an Appeal against this Decision.
Abusive Registration
In the Policy, an "Abusive Registration" is defined in the following terms –
An 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
The Complainant was first registered as a limited liability company on May 21, 2003 which is a few months before the disputed domain name was registered on August 13, 2003. At that time, Mr. Whiu, the Respondent's husband, was known to Mr. Abramowitz who was and is the prime mover behind the Respondent and, apparently, in competition with him in the organisation of Touch Rugby events in the UK. The disputed domain name was registered in the name of Mr. Whiu's wife. There must be a strong suspicion that this was done as a subterfuge to conceal the registration from Mr. Abramowitz. Indeed, according to Mr. Abramowitz, Mr Whiu admitted as much in conversation with Mr David Hill. However what Mr. Hill actually says in his e-mail is: "Glen said it was registered in his wife's name and that he had his wife register it to protect his interest should In2touch move into the UK market". This is denied by Mr. Whiu – although, in the opinion of the Expert, not very convincingly. Furthermore, the South African connection is relevant. Mr. Whiu admits that the disputed domain name was registered as a direct result of his discussions with Mr. Wallace who hails from South Africa. Mr. Wallace must therefore have been acquainted with the name "In 2 Touch" as a result of Mr. Abramowitz's involvement in Touch Rugby in South Africa since 1996 under that name, and he must also have known that Mr. Abramowitz had rights in the name which was a brand name and not generic. It is not credible that he did not impart this information to Mr. Whiu during their discussions. The Expert therefore concludes that the registration of the disputed domain name was detrimental to Mr. Abramaowitz's rights, even though he only incorporated the Complainant a few months previously.
Therefore, the 2 requirements for an Abusive registration have been met: it was registered at a time when the Complainant had Rights in the identical name AND it was unfairly detrimental to those Rights. The Expert has therefore concluded that the disputed domain name is an Abusive registration as it was clearly registered in an attempt to prevent the Complainant from registering it. Furthermore at least one convincing example of confusion was filed by the Complainant.
The Expert finds that the Complainant has clear and indisputable rights in the name 'In 2 Touch' and that this is identical to the disputed domain name.
The Expert further finds that the disputed domain name is an Abusive Registration in the hands of the Respondent.
The Expert therefore directs that the domain namebe transferred to the Complainant.
David H Tatham
April 11, 2007
Note 1 This is the date that appears on the Registry entry supplied by Nominet, but the Complainant gives the date as August 12, 2003. [Back]