Nominet UK Dispute Resolution Service

DRS Numbers 04735 & 04736

Navtam Gosai -v- Webcraft Ltd

Decision of Independent Expert

1.	Parties

Complainant Type:	Business
Complainant:		Navtam Gosai
Country:		GB

Respondent:		Webcraft Ltd
Respondent name:	Stephen Bishop
Country:		GB

2.	Domain Names

livecarenews.co.uk, carenewslive.co.uk, carenewstoday.co.uk

3.	Procedural Background

This case originated as two parallel complaints, DRS 04735 in relation to livecarenews.co.uk and DRS 04736 in relation to carenewslive.co.uk and carenewstoday.co.uk. 

Both complaints were lodged electronically with Nominet on 29 May 2007 and in hard copy on 15 June 2007. On 11 July the Respondent provided a single response to both complaints. The Complainant replied separately, on 13 July in relation to DRS 04735, and on 17 July in relation to DRS 04736. Mediation documents were generated for both complaints on 8 August 2007. On 17 August, at the Complainant’s request, the two complaints were merged into the present case.  

The fee for an expert decision was received on 23 August 2007. On the same day Claire Milne was selected to act as expert in the case, having confirmed that she knew of no reason why she could not properly do so; and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality. Her date of appointment was 31 August 2007.

4.	Outstanding Formal/Procedural Issues (if any)

None

5.	The Facts

The Complaint reveals a long-standing professional relationship between the parties, who have both been working in the area of information provision to and about the UK independent healthcare sector. Their level of cordiality has changed more than once, for reasons which are not wholly clear to me from the evidence supplied. The following facts, however, are not in dispute.

i.	In 1999 the Respondent, Stephen Bishop, set up Guide2care to supply information and advice to the UK care sector.  

ii.	On 22 August 2000 the Respondent registered guide2care.com and guide2care.co.uk, and on 29 September 2004 he registered guide2caretoday.co.uk. All these URLs now point to www.guide2care.com.

iii.	A Care News section has been present from the start of Guide2care’s website. For more than 5 years part of the website has been available as www.guide2care.com/today, and a weekly mailshot has been titled “Care News from Guide2care”.

iv.	In December 2004 the Complainant, Navtam Gosai, launched the paper periodical Healthcare Bi-Weekly (of which he is Managing Editor), published every two weeks, containing articles and advertisements targeting care home owners and managers. 

v.	The Complainant and Respondent have known each other in their professional capacities for some years. For example, www.guide2care.com has been advertised in Healthcare Bi-Weekly. They have discussed the possibility of guide2care developing an online publication for Healthcare Bi-Weekly, but this has not come about.

vi.	On 15 November 2006 the Complainant registered the domain name livecarenews.com. This was operational as a news website from 28 December 2006, and has been advertised in Healthcare Bi-Weekly (as a strapline at the head of nearly every page) since 9 February 2007. 

vii.	On 5 April 2007 the Respondent registered carenewslive.co.uk and carenewslive.com.

viii.	On 11 April 2007 the Respondent registered livecarenews.co.uk.

ix.	On 9 May 2007 the Respondent registered carenewstoday.co.uk and carenewstoday.com.

x.	 Today, the URLs based on these various names lead to the following outcomes:

livecarenews.com	News website run in association with periodical Healthcare Bi-Weekly
livecarenews.co.uk	Empty page saying only “This domain is reserved”
carenewslive.com	Page currently unavailable
carenewslive.co.uk	Page currently unavailable
carenewstoday.com	Parked with UKreg (bearing advertisements unconnected with healthcare)
carenewstoday.co.uk	News website run by guide2care in association with periodicals Caring Times, Caring Business, Healthcare Business and Care Management Matters

6.   The Parties’ Contentions

The Complainant’s contentions (in the complaints and the replies) are as follows.

i.	The Complainant has established Rights in the name livecarenews.com through its use and promotion (mainly to Healthcare Bi-Weekly subscribers) since December 2006. In support of this contention, usage statistics are supplied showing 868 unique visitors to the site and 2942 visits between 13 April and 17 May 2007. (Six full copies of this 48-page publication, issues 50 to 55, have also been supplied; I have verified the appearance of the strapline www.livecarenews.com on most pages but have not studied their content in detail).

ii.	The name livecarenews.co.uk is identical to livecarenews.com apart from the suffix. The name carenewslive is similar to livecarenews because the word “live” has just been moved from one end to the other, and the name carenewstoday is similar to carenewslive because the word “live” has simply been replaced by “today”.

iii.	The Respondent is willing to move among these domain names so he has clearly not established any goodwill or rights in any of them.

iv.	The Respondent’s news website is similar to the Complainant’s, and could easily be confused with it. It is being run in association with a number of periodicals which compete directly with Healthcare Bi-Weekly.
 
v.	The Respondent registered the names in full awareness of the Complainant’s registration and use of livecarenews.com. This is clear because the Respondent advertised Guide2Care in Healthcare Bi-Weekly’s 9 February edition. Further, the Complainant’s statistics for www.livecarenews.com for 13 April to 16 May 2007 show 66 visits to the site referred from guide2care.com.

vi.	The Respondent’s purpose in registering the names is to sell them to a competitor of the Complainant, and/or to block the Complainant from using them, and/or to unfairly disrupt the business of the Complainant, and/or to confuse people into believing that they are registered to and connected to the Complainant. These contentions are supported by the following evidence:

a.	On 14 May 2007 www.livecarenews.co.uk led to a page saying just “This domain is reserved for guide2care”. 
b.	A Google search for “live carenews uk” gives the Respondent’s news service as first hit.
c.	Four trade publications (all competing with Healthcare Bi-Weekly) are associated with carenewstoday.co.uk, and the Respondent may plan to sell or rent the domain names to any of these.

vii.	 The Respondent cannot claim to have rights in the name “carenewstoday” just because he has used the three words in connection with his genuine website guide2care.com. 

viii.	The Respondent could easily have set up a news service as part of his existing guide2care website. He did not need to use a name that was almost identical to that of the Complainant, and was therefore likely to confuse the public.

ix.	The Respondent’s news website is very similar to the Complainant’s, which increases the likelihood of confusion. 

x.	The Respondent’s reason for moving from livecarenews to carenewstoday was not (as the Respondent claims) because of the difference between truly live news and daily news, but in order to hide his attempt at disrupting the Complainant’s business.

The Respondent’s contentions, contained in a single response, are as follows.

i.	Guide2care is well established and well recognised in the sector. It recorded more than 40,000 visits during June 2007.

ii.	Following the breakdown of discussions between Navtam Gosai and Stephen Bishop about Healthcare Bi-Weekly taking over Guide2care, the former developed a website at livecarenews.com that appeared to be trying to compete with guide2care. 

iii.	The Respondent has equal and indeed prior rights to use the words “care”, “news” and “today”, combined, in connection with the services he provides.  The terms “care news” and “today” were used by guide2care long before they were used by Healthcare Bi-Weekly or any related website.

iv.	The term “live” (in the context of news) means “as it happens”. At present guide2care cannot provide live care news, so have decided to use the more accurate name carenewstoday for the time being.

v.	“As we considered that we had been supplying weekly care news since 1999, it seemed appropriate to launch a website [to] supply daily care news and compete in some measure with livecarenews.com”.

vi.	The Respondent intends soon to provide a truly live news service, on carenewslive.co.uk and carenewslive.com.

vii.	The online care news services provided by the two parties have several significant differences.

viii.	The Respondent will not be using livecarenews.co.uk and this domain is currently for sale.

7.	Discussion and Findings:

The Nominet Dispute Resolution Service Policy (‘the Policy’) paragraph 2 requires that for a complaint to succeed the Complainant must demonstrate, on the balance of probabilities, that both:

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

The Complainant claims to have Rights in all three names at issue:

•	in livecarenews.co.uk because (apart from the suffix) this is identical to its own website livecarenews.com;

•	in carenewslive because this is similar to livecarenews;

•	in carenewstoday because this is similar to carenewslive.

In my view these claims become progressively weaker, as each later one depends on the one before, and each is itself open to question.

All the four elements of all three names (live, care, news and today) are common words used in their ordinary dictionary senses. These three combinations of the four words have been used descriptively to show what users can expect from the websites. The definition of Rights in Nominet’s Policy says that a Complainant will be unable to rely on a name or term which is wholly descriptive of the Complainant’s business.

It is unclear to me that any of the combinations have acquired a distinctive meaning, as opposed to this descriptive one. In fact, distinctiveness has only been claimed for one combination – livecarenews – and that distinctiveness is claimed only among subscribers to Healthcare Bi-Weekly, and has only been established over a period of a few months.

The Complainant cites the outcome of a Google search on “live carenews uk”, which put the Respondent ahead of himself, as evidence of the Respondent’s intention to disrupt and confuse. It could just as well be read (and in my view this is the more natural reading) as evidence that the Respondent is better established in the relevant market than the Complainant is. This reading is consistent with the undisputed facts above.

Given the generic nature of all the elements, I do not find that carenewslive is similar to livecarenews for the purpose of Nominet’s Policy. Insofar as livecarenews has acquired any distinctiveness, the order of the three simple elements in this specific combination is part of it.  (The question of the order of elements in a name has not arisen much in Nominet cases.  In DRS 02532 the Expert found leicesterandalliance similar to allianceandleicester, but this depended on the distinctiveness of “Alliance” and “Leicester” and especially their combination).

Again, given the generic nature of the elements, I do not find that carenewstoday is similar to carenewslive. Experts have often found that a distinctive name plus a generic element (typically “direct” or “online”) remains distinctive and is therefore similar to the original. But where, as here, there is no really distinctive element, I believe that changing one part can make enough difference to remove similarity.

I therefore do not find that the Complainant has Rights in a name which is similar to either carenewstoday.co.uk or carenewslive.co.uk. “Livecarenews” also strikes me as predominantly descriptive, but given that the Rights hurdle is intended to be a low one, I find that the Complainant has sufficient Rights in livecarenews that I should consider whether its registration was abusive.

Abusive Registration

In Nominet’s Policy, an Abusive Registration is one 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.

I find the Complainant’s arguments and evidence in relation to abusive registration unconvincing and even inconsistent. However, in this case, the Respondent has clearly stated his intention in registering the name livecarenews.co.uk: 

	“it seemed appropriate to launch a website [to] supply daily care news and compete in some measure with livecarenews.com.”

This is consistent with all the evidence and I accept that this was his intention for this name (even if he later changed his mind and used a different name for this purpose, and now has no real use for the name).  The question now is whether the registration took unfair advantage of, or was unfairly detrimental to, the Complainant’s Rights.

In my view, the Respondent was fully entitled to compete with the Complainant’s care news service (which arguably had first been set up to compete with the Respondent’s own, longer established and better frequented, care news service). But, as the Complainant has pointed out (and the Respondent now appears to agree) the choice of livecarenews.co.uk as the vehicle for this competition was unnecessary, and maybe unfortunate.  I agree that the Respondent in all probability chose this specific name not just for its descriptive quality but to match the Complainant’s domain name; it introduced a slight possibility of confusion between the two parties, potentially to the (minor) detriment of both and of the market in which they are competing. 

I therefore find that the registration of livecarenews.co.uk was abusive. I do not, however, find the two care news websites particularly similar, or believe that the registration is likely to have led to any significant detriment to the Complainant. 

8.	Decision

In the case of carenewslive.co.uk and carenewstoday.co.uk, I find that the Complainant has not demonstrated Rights and the Complaint therefore fails. No action is required.

In the case of livecarenews.co.uk, the Complaint succeeds and I direct a transfer, as requested by the Complainant.

Claire Milne
4 September 2007