Nominet UK Dispute Resolution Service

Dispute no. 3051

J F Home Improvements Ltd -v- Mr David Giddy

Decision of Independent Expert

1	Parties

Complainant:		J F Home Improvements Ltd
Country:			GB

Respondent:		Mr David Giddy 
Country:			GB

2	Domain Name

<jfhomeimprovements.co.uk> (the “Domain Name”)

3	Procedural Background

3.1	The Complaint entered Nominet’s system on 17 October 2005. Hardcopies of the Complaint were received by Nominet on 21 October 2005. The Complaint was validated and sent to the Respondent on 21 October 2005. No response was received within the deadline for response on 11 November 2005 and therefore no response was forwarded to the Complainant. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me on 1 December 2005. On that date, I confirmed that I was not aware of any reason why I could not act as an Independent Expert in this case and I was appointed as such on 1 December 2005. 
3.2	On 2 December 2005, I issued a procedural order (the “Procedural Order”) under paragraphs 13(a) and 12(a) of the procedure for the conduct of proceedings under the Dispute Resolution Service Procedure (the “Procedure”) for further information to be submitted by the parties in connection with the rights claimed by the Complainant in a name or mark similar to the Domain Name (see below).  The Procedural Order provided for provision by the Complainant of a further submission by no later than 7 December 2005 and for the Respondent’s response to the same by no later than 12 December 2005.  The Procedural Order also provided that the time by which I should forward a decision in this matter to Nominet be extended to 30 December 2005
3.2	The Complainant submitted further material in accordance with the Procedural Order on 7 December 2005.  The evidence submitted by the Complainant pursuant to the Procedural Order was forwarded to the Respondent on 8 December 2005.  The Respondent sent an email in response to this submission that same day.  

4	Outstanding Formal/Procedural Issues

4.1 	The information provided in the Complaint is very limited.  So far as the “Rights” required under paragraph 2(a)(i) of the Dispute Resolution Service Policy (the “Policy”) are concerned, the Complaint contains a mere assertion that the “Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights”.  
4.2	However, the Complainant appeared to be a limited company and there were aspects of the Complaint that suggested that this company might be trading to some degree.  Therefore, it seemed likely that this was a case where the Complainant would be able to show that it had Rights for the purpose of the policy. 
4.3	In other cases experts have issued procedural orders directing a complainant to file further evidence to substantiate a claim of Rights under the Policy (see for example  Watermark Group PLC v Watermark Recruitment Bureau, [2002] DRS 657 and Scottish Police Federation v Rolf Carlin, [2001] DRS80).  I believed it to be appropriate to make such an order to this effect in this case.   
4.4	The Procedural Order made it clear that any such submission and any response from the Respondent in relation to the same should be limited to the question of Rights under the Policy only.  Notwithstanding the clear terms of the Procedural Order the Respondent sought in his submissions in response to raise issues that extended beyond the limited question of the Complainant’s Rights.  The Respondent by means of his email of 8 December 2005 essentially purported almost a month out of time to respond in general terms to the allegations in the initial Complaint.  
4.5 	Paragraph 13(a) of the Procedure provides that “the Expert will not be obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or this Procedure or which he or she has not requested.”  In the case of non-standard submission (i.e. a submission not provided for under the Procedure or requested by an expert) the party submitting that submission must incorporate a “brief explanation of why there is an exceptional need for the non-standard submission”.   
4.6	Whether or not the Respondent’s email of 8 December 2005 should be classed as a non-standard submission or a late Response does not matter.  In each case I have discretion as to whether or not to consider such material and absent unusual circumstances that would justify my doing so and absent an explanation for such late submission I decline to do so.  
4.7 	Therefore, for the purposes of the Policy the Respondent is to be treated as not having submitted a Response.  Paragraph 15(c) of the Procedure allows me, in the absence of any exceptional circumstances, to draw such inferences as I see fit in relation to any non-compliance of any of the parties with the Policy or the Procedure.  
4.8 	However, the failure by the Respondent to file submissions in response does not entitle the Complainant to the equivalent of a default judgment.  The Complainant still has to make out his case on the balance of probabilities under the Policy in order to obtain the decision it wants. 
4.9	Further, as will become apparent later in this decision even if one were to take the Respondent’s 8 December 2005 email into account in this case, it makes no difference to the outcome of this case.   

5	The Facts

5.1	The Complainant is a private limited company, incorporated under the laws of the United Kingdom on 9 September 2004, with company registration number SC273168.  
5.2	The Respondent appears to be an individual living in Scotland.  
5.3	The Domain Name was registered on 14 July 2005 in the name of the Respondent (by whom it continues to be held).

6	The Parties’ Contentions

Complainant
6.1	The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is identical or similar to a name or mark in which it has Rights and that the registration of the Domain Name in the name of the Respondent is an Abusive Registration.
6.2	The Complainant asserts that it was set up in 1994 and is listed at Companies House with the registered number SC273168.  However, it appears from the Companies House documentation submitted by the Complainant that the Complainant was in fact incorporated under the name J. F. Home Improvements Limited on 9 September 2004.  Mr Graham and Ms Jan Fairchild are directors of the Complainant. 
6.3	The Complainant alleges that the Respondent is a “client” of the Complainant’s and is currently “in dispute with the company”.  
6.4 	The Complainant also asserts that the Respondent has no other relationship with the Complainant’s business other than being a client and that the Respondent does not have a business by the name of J F Home Improvements.  
6.5	The Complainant asserts that the Respondent’s registration of the Domain Name “can only be interpreted as a spiteful either in an effort to sully the name [of the Complainant] or to prevent a presence on the internet using a domain which matches exactly the name of [the Complainant]”.
Respondent
6.6	For the reasons set out earlier in this decision the Respondent can be treated as having served no Response in these proceedings.  Nevertheless, the Respondent’s contentions in his 8 December 2005 email can be summarised as follows:
(i) 	that the Complaint is “speculative and unfounded”;
(ii) 	that the information provided by Mr Graham of the Complainant contradicts previous statements made as to whom “JF Home Improvements belonged”;
(iii) 	that the Respondent is not a client of the Complainant but that his “partner Ms Lennox” is indeed a client of Mr Graham and is in dispute with him “regarding services and products supplied by Mr Graham and his associated and associated businesses”;
(iv)	that the Respondent is a sole trader in the business of providing publication services and web page design services; 
(v) 	that the domain name was registered for “a client”, for whom the Respondent is also designing a website;
(vi)	that “it is purely coincidental and circumstantial that the domain name is similar” to the name of the Complainant;
(vii) 	that designing the current website operating from the Domain Name “is time consuming” and “a lot of effort for a company that doesn’t exist”; and
(viii)	that it is not the Respondent’s “business to know my clients dealings or how they run their affairs nor is it [his] place to comment on such”.

7	Discussion and Findings

What needs to be proved

7.1	To succeed under the Nominet Dispute Resolution Service Policy (the “Policy”), the Complainant must prove on the balance of probabilities, first, that he has Rights in respect of a “name or mark” that is identical or similar to the Domain Name (paragraphs 2(a)(i) of the Policy) and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent (paragraph 2(a)(ii) of the Policy).  
7.2	Abusive Registration is defined in paragraph 1 of the Policy in the following terms:
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:
Complainant’s Rights

7.3	It is apparent from both the Complaint and the Complainant’s submissions pursuant to the Procedural Order that the Complainant does not assert any registered trade mark rights.   Of course, it is not necessary for a Complainant to have a registered UK trade mark for rights under the Policy.  Rights under the law of passing off have been held to be sufficient in a large number of cases. 
7.4	However, in this case the Complainant does not assert rights under the law of passing off.  It may well be that it has such rights, but in this case there is simply insufficient material before me to justify this conclusion.  The Complainant was only incorporated in September 2004 and to date no accounts for the company have been filed.  The only suggestion in the Complaint that the Complainant has traded at all is to be found in the Complainant’s assertion that the Respondent is “a client” of the Complainant.  The Complainant’s submission pursuant to the Procedural Order goes no further than save for the assertion that Mr Graham and Ms Fairfield are directors of “a legitimate trading company”. 
7.5	Instead the Complainant appears solely to rely upon the fact that “J. F. Home Improvements Limited” is the registered company name of the Complainant.  The question therefore arises whether this is sufficient under the Policy.   The “Dispute Resolution Service Complaint Form Help” found on the Nominet website at first glance suggests that this may be so.   Amongst its list of possible Rights is to be found company names and personal names.  However, it also suggests that in the case of a business, evidence should also be given as to the use of the name in question. 
7.6	Previous decisions would suggest that a registered company name is not by itself sufficient.   For example in APC Overnight Limited v. M+J Couriers [2002] DRS 192 the domain name in issue appears to have been identical to the Complainant’s name.  However, after having concluded that there was no evidence of registered trade mark rights or rights under the law of passing off, the expert concluded “I am unaware of any further rights claimed by the Respondent which in my opinion subsist”.  Similarly in Archways Properties v. Diamond Properties [2005] DRS 2817 the expert held there to be no relevant rights where the domain name and registered company name were virtually identical but there was no evidence of trading. 
7.7	The decision in Watermark Group Plc v. Watermark Recruitment Bureau [2002] DRS 657 is also of relevance here.  In that case the domain name in issue was ”watermark.co.uk” and the expert stated (at paragraph 7.11) as follows:   
The Expert accepts that the Complainant [Watermark Group Plc] has been in existence under this name since at least 1988, is listed on the London Stock Exchange, and has a large number of domain names incorporating the name watermark. In the circumstances the Expert takes the view that this filed evidence just satisfies the threshold in establishing that the Respondent has applicable rights in the name watermark.  As a general observation, Complainants in future determinations would be well advised to provide the Expert with somewhat more  detail about their business and activities in order to assist the Expert in forming a better view of what rights the Complainant really has.
7.8	In the three cases I have cited it might be said that the experts did not explicitly address the question whether a company registration provides rights for the purposes of the Policy.  However, in Active Web Solutions v Peter Shaw, [2002] DRS 228 the issue was specifically addressed.  In that case the expert asserted as follows: 
The Complainant's case that it had Rights at the relevant time is not clearly made out. The incorporation of a company under a particular name does not of itself give rise to the right to prevent others using that name - the most that can be achieved by that registration alone is that it will block anybody else attempting to register exactly the same name with Companies House. Use of the name in the course of business, which is what the Complainant appears to allege, may be sufficient to establish rights in passing off. Whilst the Complainant alleges that the name Active Web Solutions is its trading name, no detail is supplied in support of this claim. Although the definition of Rights in the Dispute Resolution Service Policy is not restricted to rights enforceable in English law, the Complainant has not asserted a claim to any other type of rights in the name Active Web Solutions.
Despite the lack of supporting information as to the extent of use of the Active Web Solutions name by the Complainant, I find on balance (although barely) that the Complainant does have Rights in the name Active Web Solutions. I base this on the Complainant's statements verified by the signed declaration in its complaint that Active Web Solutions is its trading name and that use of a trading name can be sufficient, even at low levels, to establish a case of passing off. The Complainant's incorporation under the same name counts as some support to this claim.
7.9	The Active Web Solutions decision was cited with approval in The Rug Company v. Wonderland Rug Company [2002] DRS 370.   Here the expert concluded “there is no right to a name through mere incorporation”.  It was also followed in The Mortgage Point Limited v. Homemakers [2004] DRS 01784 and Real Media v. Stealth Communications Ltd [2005] DRS 02170.
7.10	In the circumstances, it seems reasonably clear that experts in previous cases have been of the view that a registered company name does not per se provide Rights under the Policy.  That said, in cases where the domain name reflects a registered company name very limited evidence of trading may lead an expert that a Complainant has Rights for the purposes of the Policy. 
7.11	There is no formal doctrine of precedent when it comes to Nominet decisions but consistency amongst panel decisions is to be greatly encouraged.  I am therefore very reluctant to come to a conclusion on this issue that differs from the views of the experts already described above. Nevertheless the decisions that I have already referred to contain limited reasoning on this issue and have caused me some difficulty.  I believe that it is worth looking at this issue afresh.
7.12	The starting point here must be the words of the Policy.  The Complainant under paragraph 2(a) of the Policy must be able to show “Rights in respect of a name or a mark”.  Rights are defined in paragraph 1 of the Policy so that it “includes, but is not limited to, rights enforceable under English law”.   
7.13	The definition is to be contrasted with the Uniform Domain Name Dispute Resolution Policy (“UDRP”) that applies, for example, to .com domain names.  The UDRP requires the Complainant to show a “trademark or service mark in which the complainant has rights”.  Essentially, this means registered or unregistered trade mark rights. 
7.14	The Policy consciously differs from the UDRP in this respect and appears on its face to be broader in scope.  Firstly, it provides that Rights in a “name” as well as in a “mark” are sufficient.  Secondly, the reference to rights enforceable under English law is not exhaustive.  The words “includes, but is not limited to” mean that the Policy appears to contemplate rights in a name that are not enforceable under English law.  
7.15	Use of a name used in trade can often be prevented under the law of passing off and it might be said that to use of the word “name” in the Policy is more convenient and intelligible than say a reference to unregistered trade mark rights or rights in passing off.  Secondly the non-inclusive reference to rights enforceable in English law might be intended to make it clear that rights enforceable elsewhere (for example, a non-UK trade mark) are sufficient for the purposes of the Policy.  However, I do not believe that the relevant wording of the Policy requires or lends itself to such a constrained reading.  
7.16	Next, of course I agree with the expert in the Active Web Solutions case that rights in the registered name of a UK registered company are not enforceable against third parties in the sense of founding an action in private law against a third party for using a similar name in trade.  However, this is not the test set out in paragraph 2(a) of the Policy.  What is required is some thing less demanding i.e. rights that include but are not limited to rights enforceable under English law.  A company can be said to have “rights” in a limited sense in its registered name.  Firstly, Section 26(1)(c) of the Companies Act 1985 prevents anybody else attempting to register the same name for a company with Companies House.  Secondly, under section 28 of the Companies Act 1985 the Secretary of State can direct a company to change its name if it appears too like a name that appeared in the index of company names at the time of registration.  These “rights” may be meagre but it is difficult to see why they should be denied the status of Rights as defined in the Policy.
7.17	I also bear in mind the comments of the appeal panel in Seiko UK Limited v. Designer Time/Wanderweb (DRS 00248) that the “requirement to demonstrate 'rights' is not a particularly high threshold test".  In that case the panel held that it was satisfied by the assertion of the complainant in that case that it is duly authorised by the trade mark owner to use the mark and to bring the complaint.  The circumstances in that case were different from those currently before me in that it was clear that trademark rights existed and the question was whether the complainant had a sufficient interest in those marks.  Nevertheless, at the very least this would suggest that legally enforceable rights against a third party are not necessary for Rights under the Policy. 
7.18	In the circumstances and in the absence of argument from the Respondent to the contrary, I find that the Complainant’s registered name provided it with Rights under the Policy.  When one discards the word “limited” from the Complainant’s name and the suffix “.co.uk” from the Domain Name the Complainant’s name and the Domain Name are essentially identical.
7.19	Accordingly, I find that the Complainant has shown that it has Rights of a name or mark which is identical or similar to the Domain Name within the meaning of paragraph 2(a)(i) of the Policy.
Abusive Registration

7.20	Paragraph 3 of the Policy provides a non-exhaustive list of factors which may be evidence that a domain name registration is an Abusive Registration.  It would appear from the Complaint that the Complainant alleges that Paragraph 3(a)(i) B is of application in this case: i.e. circumstances indicating that the Respondent registered or acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights.
7.21	The basis for this is simply the assertions to be found in the Complaint to the effect that (a) the Respondent is a disgruntled customer of the Complainant and is currently in dispute with the Complainant; (b) the Respondent has no other connection to the Complainant and does not have a business by the name of “J F Home Improvements”; and (c) the registration of the Domain Name was spiteful either “in an effort to sully the name” of the Complainant or prevent the Complainant from using its company name as an internet address.  
7.22 	In Blue Martini Software Limited v. Prophesysoft, [2001] DRS 23 and APC Overnight Limited v. M+J Couriers, [2002] DRS 192 experts held that a complaint submitted with a signed statement of truth in accordance with paragraph 3(b)(ix) of the Procedure could be relied on as evidence.  In this case the quality of the evidence is poor and might be given little weight when set against a reasoned Response and supporting material filed by the Respondent.  However, the Complainant’s assertions are not inherently implausible and there is no formal response from the Respondent.  In the circumstances, I hold that the Complainant succeeds (if only just) on the balance of probabilities in showing that the Domain Name is an abusive registration.   
7.23	Even if I were to take the Respondent’s email of 8 December 2005 into account, it would make no difference to my decision.  It is implicit in that email that the Respondent knew of the existence of the Complainant at the time of the registration of the Domain Name and the email confirms the existence of an ongoing dispute.  According to the Respondent the dispute is not with him but with his partner, but even if correct that is not significant.  
7.24	Further the Respondent’s explanation of the reasons for his registration of the Domain Name is inherently implausible.  We are asked to believe that the domain name has been registered by him on behalf of an unidentified client.  We are also asked to believe that it is simply coincidence that this “client” has the same trading name as the Complainant.   The Complainant’s name although in part descriptive is not wholly so and this coincidence is to say the least unlikely.  However, we are then further asked to believe that the “client” coincidentally happened to approach a web designer who knew of the Complainant and whose partner was in dispute with the Respondent.  This stretches the bounds of plausible coincidence too far. Absent further evidence, I am not prepared to believe the Respondent’s assertions in this respect.
7.25	In the circumstances, it appears to me that the registration by the Respondent of the Domain Name was indeed to prevent the Complainant from registering its trade name as a domain name.  I conclude therefore that on the balance of probabilities the Complainant has sufficiently made out its allegations under paragraph 3(a)(i) B of the Policy.   

8	Decision

8.1	I find that the Complainant has Rights in the name J F Home Improvements Limited, which is identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
8.2	I therefore determine that the Domain Name should be transferred to the Complainant.
Matthew Harris
30 December 2005