Nominet UK Dispute Resolution Service

DRS 04575

Clive Tattersall v Brainfire Group

Decision of Independent Expert

1.	Parties

Complainant:		Clive Tattersall
Country:		United Kingdom

Respondent:		Brainfire Group
Country:		Canada		

2.	Domain Name

joulesestateagents.co.uk (“the domain name”)

3.	Procedural Background

On 26 March 2007 Nominet received hard copy of the complaint dated 22 March and checked that it complied with the Nominet Dispute Resolution Service Policy (“the Policy”) and Procedure (“the Procedure”). The complaint was supported by material in a series of annexes:

A	an example of one of the Complainant’s staff business cards

B	one of the Complainant’s compliments slips

C	an example of the Complainant’s headed notepaper

D	one of the Complainant’s property guides

E	an advertisement for the Complainant in a local newspaper

F	an advertisement for the Complainant on a website at rightmove.co.uk

G	an advertisement for the Complainant on a website at ourproperty.co.uk

H	an example of one of the Complainant’s paper property brochures

I	an example of one of the Complainant’s window display cards

J	one of the Complainant’s marketing leaflets

K	the homepage from the Complainant’s website at joulesestateagents.com on 22 March 2007

Nominet notified the Respondent of the complaint on 28 March and informed it that it had 15 working days within which to lodge a response. No response was received. Informal mediation not being possible, on 24 April Nominet notified the parties that an expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 26 April. 

On 26 April I, Mark de Brunner, agreed to serve as an expert under Nominet’s Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties and that there are no facts or circumstances that might call into question my independence.

4.	Outstanding Formal/Procedural Issues

There are email delivery failure reports on file, generated in connection with Nominet’s attempt to notify the Respondent of the complaint. I need to decide what to make of them.

My starting point is that those registering domain names with Nominet agree to keep Nominet up to date with their contact details. The Procedure says that Nominet will send a complaint to the Respondent by, at its discretion, any one of a range of means – including

-	email using the contact details shown as the registrant or other contacts in the domain name register database entry for the domain name in dispute

-	email to postmaster@<the domain name in dispute>

In the event, Nominet sent the complaint to both admin@brainfire.com (the contact address in the register entry for the domain name) and postmaster@joulesestateagents.co.uk. The delivery failure reports relate to both of these addresses.

Given that it is the Respondent’s obligation to keep its contact details with Nominet up to date I am satisfied that Nominet did what it could to notify the Respondent of the complaint and of how that complaint was being handled. I therefore propose to proceed on the basis that the Respondent has been properly notified of proceedings under the Dispute Resolution Service.

5.	The Facts

I have visited the Respondent’s website at joulesestateagents.co.uk and the Complainant’s website at joulesestateagents.com. From those visits and the complaint I accept the following as facts. 

Joules Estate Agents has been in business since 1966. The Complainant took the business over in 1985 and has been running it as a sole trader since then. Joules Estate Agents offers houses and flats for sale and for rent in and around Stockport, Heaton Mersey, Cheshire, Breadbury and the SK4 postcode area.

The Complainant spent £15,000 on advertising in 2005 and a further £11,000 in 2006. He has also invested £10,000 in his website at joulesestateagents.com, which he registered on 29 January 2002. Houses and flats are offered for sale and rent through the website, which contains information about the Joules Estate Agents business and its staff.

The domain name at issue, joulesestateagents.co.uk, was registered by the Respondent on 17 March 2005. There is a webpage at the domain name containing a list of property-related links.
Within the terms of Nominet’s Dispute Resolution Service Policy, the Respondent has been found to have made the following abusive registrations:

Dispute Resolution Service reference	Domain name	Date of decision	
2908	britishcredittrust.co.uk	12 October 2005	
3386	lambertandbutler.co.uk	27 March 2006	
3817	wellconstruct.co.uk	24 August 2006	
4001	generaldynamics.co.uk	3 November 2006	

6.	The Parties’ Contentions

Complainant

The Complainant says that he has rights in respect of a name which is identical to the domain name.

He says the domain name is an abusive registration because

(i)	the Respondent registered the domain name primarily as a blocking registration

(ii)	in being designed to draw internet traffic to the Complainant’s competitors, the Respondent’s registration of the domain name was intended to cause unfair disruption to the Complainant’s business

(iii)	internet users will be confused into thinking that the domain name is connected with the Complainant

(iv)	the Respondent has been found to have made an abusive registration in 4 or more Dispute Resolution Service cases in the last 2 years	

(v)	the Respondent can have no legitimate reason for its choice of domain name

(vi)	its only possible motive is the misappropriation of the Complainant’s goodwill in his trading name

Respondent

There has been no reply.

7.	Discussion and Findings:

General

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that

-	he has rights in respect of a name or mark which is identical or similar to the domain name; and that

-	the domain name, in the hands of the Respondent, is an abusive registration.

Approach where there has been no reply

There is now a well-established approach to be taken by experts where there is no reply to a complaint. The Complainant must make out at least a prima facie case that the domain name is an abusive registration. Such a case demands a reply. If there is no reply, the complaint will ordinarily succeed. The question therefore becomes whether the Complainant has established a prima facie case.

Complainant’s Rights

The Joules Estate Agents business has been running since 1966 and the Complainant has had an interest in it since 1985. The complaint refers to Joules Estate Agents as a trade mark but there is no evidence of a trade mark registration. There is, however, clear evidence of investment by the Complainant in marketing the Joules Estate Agents name. The Complainant has evidently established goodwill in the name and therefore at the least has unregistered rights in it.

The domain name is joulesestateagents.co.uk. Ignoring the .co.uk suffix as simply a generic feature of the Nominet register, the domain name is identical to the name in which the Complainant has rights.

I conclude that the Complainant has rights in respect of a name which is identical to the domain name.

Abusive Registration

The Dispute Resolution Service rules define an abusive registration as a domain name which either

-	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

-	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.

The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. The first 4 of the Complainant’s contentions each reflect one of the factors in that list and I can start with them.

The Complainant says that the Respondent registered the domain name primarily as a blocking registration. As a matter of fact, registering a domain name does prevent or block other registrations of that domain name for the period of registration. But I take this element of the Policy to be concerned with the Respondent’s motives in registering the domain name. The difficulty here is that there is no direct evidence of motive. The Complainant says the motive is clear enough nonetheless – and must have been in part to stop him registering the domain name and that can only have been to take unfair advantage of his rights. That seems to me to be at least arguable. Of course the Respondent has not taken the opportunity to counter that argument.

The Complainant goes on to contend that the Respondent’s registration was intended to cause unfair disruption to his business. As with the first claim, there is no direct evidence of motive, nor is there direct evidence of the effect the Respondent’s use of the domain name is in fact having. But it is hard to avoid the conclusion that both registration and use of the domain name were designed to disrupt the Complainant’s business unfairly. The Respondent could have taken the opportunity to offer evidence to challenge that conclusion, but has not done so.

Given the property-related links at the domain name, it also seems to me highly likely that internet users will have been confused into thinking that the domain name is connected with the Complainant and that web traffic intended for the Complainant will end up somewhere else entirely (possibly with a direct competitor).

The Complainant says that the Respondent has been found to have made an abusive registration at least 4 times in the past 2 years. The 4 findings of abusive registration are indeed all in decisions made within the 2 years before the complaint was filed. The significance of that is that, under paragraph 3(c) of the Policy, where a Complainant proves that a Respondent has been found to have made an abusive registration in 3 or more Dispute Resolution Service cases in that period, there is a presumption of abusive registration. The onus is therefore on the Respondent to show that this is not an abusive registration. As the Respondent has not replied to the complaint, it is not in a position to shoulder the burden of proof. That alone would be conclusive of the nature of the registration here.

There is more, however. The Complainant argues that the Respondent can have no legitimate reason for its choice of domain name and that its only possible motive is to misappropriate his goodwill. It is in fact possible to conceive of legitimate reasons and motives that might apply, but on the evidence presented they seem to me to be implausible. The only reasonable conclusion seems to me to be that the Respondent set out to draw on the Complainant’s goodwill for its own purposes and in a way that can only have taken unfair advantage of the Complainant’s rights.

The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. These include where the Respondent has used the domain name in connection with a genuine offering of goods or services. The ‘offerings’ through the links on the website may be genuine, but if the manner of those offerings takes unfair advantage of the Complainant’s rights that does not help the Respondent. None of the other factors in the Policy’s list appears to apply: the Respondent has, as far as I can tell, not been commonly known by the name which is identical to the domain name; use is not ‘non-commercial’, ‘generic’ or ‘descriptive’; and whether use has been ‘fair’ is really the main question before me anyway.

The Respondent has chosen a domain name identical to the name in which the Complainant has rights. As far as I can tell, the Respondent has no legitimate reason for doing that. It looks like impersonation, with consequential risks to the Complainant’s reputation and goodwill. At the very least, that requires an explanation. No explanation has been forthcoming.

In summary, the only reasonable conclusion seems to me that the domain name was registered and has been used in a manner which takes unfair advantage of the Complainant’s rights. In the absence of a response, the Complainant has only to make out an arguable case. In doing that, both in terms of the long-established approach in ‘no reply’ cases and in the explicit terms of paragraph 3(c) of the Policy, he has established a claim that must succeed.

8.	Decision

I find that the Complainant has rights in respect of a name which is identical to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.

In the light of that, I direct that the domain name be transferred to the Complainant.

Mark de Brunner

13 May 2007