NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 3823
Willearn Ltd v G4 Security Ltd
Decision of Independent Expert

1.	Parties: 

Complainant:		Willearn Ltd
Country:		GB 

Respondent:		G4 Security Ltd
Postcode:		B60 3DR 

Disputed Domain Name

doordefender.co.uk (“the Domain Name”)

2.	Procedural Background:

The Complaint was lodged with Nominet in full on 21 July 2006.  Nominet validated the Complaint.  The Respondent did not file a Response.  On 25 August 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

Cerryg Jones, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as 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. 

3.	Outstanding Formal/Procedural Issues (if any):
There are no other outstanding procedural issues that arise. 

4.	Background and the Complainant’s Contentions:

The Complaint, which I have set out in full below, consists of the following, (grammatical mistakes included), namely:

“I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

I wish to complain about the use of www.doordefender.co.uk/ our company Willearn Ltd is the registered owner of the trademarks and patent on the products this company is illegally advertising, They assigned all rights to Willearn Ltd on 13 July 2005 after we took legal action to revoke there contract, G4 Security Ltd assured us all sites had been cancelled See attach copy. Please find enclosed a copy of our trademark. Patent and (signed papers from G4 Security Ltd) we hope these will show Willearn are the rightful owners of this domain name. We developed a security devoice known as DoorDefender in 2001 and were introduced to a company called Vallard Engineering Ltd by Birmingham Chamber of Commerce early in 2002. Where we negotiated a contract for them to manufacture market and sell our product, they told us to make payment to us easier the contract would be drawn up in the name of G4 Security Ltd. Shortly after contract was singed Vallard went in to liquidation. After two years of constantly been misinformed and lied to and with over £120.000 owed in royalties we had no choice but to take legal action to terminate the contract with G4 Security Ltd.”

The Domain Name resolves to a website operated by the Respondent which contains information about DOORDEFENDER products and how to purchase them. 

5.	Discussion and Findings:

Paragraph 2 of the Policy requires that for the Complainant to succeed it has to prove to the Expert on a balance of probabilities, that it has rights in respect of a name or mark identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an abusive registration (as defined in paragraph 1 of the Policy).

Complainant’s Rights

The Complainant has filed with its complaint a copy of an assignment, which establishes that the Respondent assigned a stylised trade mark registered in respect of mechanical security goods consisting of the words DOORDEFENDER on 13 July 2005 to the Complainant. Under the assignment the Respondent agreed to assign with full title guarantee all right, title and interest to the trade mark to the Complainant together with all statutory and common law rights, including the goodwill attaching to the trade mark.

The complaint also consists of evidence, in the form of a letter from the Respondent to the Complainant’s solicitors dated 4 July 2005.  In this letter the Respondent refers to several “items” as comprising a “…full and final settlement,” which include the assignment and the cancellation of websites, though which websites were cancelled is not clear from the contents of the letter. The complaint also includes an extract from the UK Trade Marks Registry database which shows that the Complainant is the proprietor of the trade mark identified in the assignment

The evidence establishes that the Complainant has rights in a name that is at the very least similar to the Domain Name, given that that the word mark element is the most dominant and distinctive part of the overall trade mark.  

Abusive Registration

The Complainant also has to show that the domain name is an abusive registration. Paragraph 1 of the Policy defines this 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." 
A non-exhaustive list of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration. 
The Complainant’s submissions are poorly formulated but in my view, in the absence of a Response, they raise a prima facie case in respect of the following facts and matters:

1	That the Complainant developed a security device known as the DoorDefender.

2	That the Complainant entered into a contract with the Respondent in which the Respondent contracted to manufacture, market and sell products sold under the DoorDefender trade mark, for which the Complainant would receive royalties.

3	That the contract was terminated because the Respondent failed to pay the Complainant royalties due under the contract.

4	That a settlement was reached between the parties, the terms of which required the Respondent to assign the trade mark to the Complainant and to cancel its then website(s).

The Complainant has not made it clear why the Respondent’s use of the Domain Name is abusive; nor has it alleged that the Respondent’s use falls within any of the non-exhaustive list of factors which may be evidence of an abusive registration. However, as the Appeal Panel has made clear in DRS 3316, if the evidence establishes that the Domain Name in the hands of a Respondent constitutes an abusive registration, then the expert is entitled to make such a finding, irrespective of whether this is the basis upon which the Complainant has put its case.

Had the evidence established that the website which should have been cancelled comprised the address www.doordefender.co.uk then the continued use of the Domain Name by the Respondent in these circumstances would have been abusive. The evidence does not establish this; however, in my view the Domain Name constitutes an abusive registration because the Respondent is using it in a way that is likely to confuse people or businesses into believing that the Respondent is the owner of the trade mark reflected in the Domain Name, and that it, rather than the Complainant, is the source of products sold under the DOORDEFENDER trade mark.  For this reason I also believe that the Respondent is using the Domain Name in a way which is likely to confuse those accessing the site that the Domain Name is registered to, operated or authorised by, or otherwise connected to the Complainant. This is also a factor which is evidence of an abusive registration

Accordingly, I find that the Domain Name is an abusive registration.

6.	Decision:

In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an abusive registration, I direct that it be transferred. 

Cerryg Jones                                    18 September 2006