DISPUTE RESOLUTION SERVICE

DRS 06284

Decision of Independent Expert

Rayden Engineering Ltd

and

Dianne Charlton

1.	The Parties:

Complainant:		Rayden Engineering Ltd
Country:		Derbyshire 

Respondent:		Dianne Charlton
Country:		Derbyshire 

2.	The Domain Names:

www.rayden-engineering.co.uk and www.rayden-engineering.org.uk 

3.	Procedural History:

05/11/2008 Complaint received and validated 

06/11/2008 Complaint forwarded to Respondent 

21/11/2008 Response received and entered into system 

21/11/2008 Response forwarded to Complainant 

01/12/2008 Reply received and entered into system 

01/12/2008 Commencement of mediation phase 

13/01/2008 End of mediation phase (no mediated settlement) 

19/01/2008 Fees for Expert Decision received from Complainant 

22/01/2009 Appointment of Expert 

4.	Factual Background

The Complainant has been trading nationally and internationally for some 30 years under the name Rayden Engineering Limited and has an online presence at www.raydenengineering.com which has been in use since 2000. 
   
The parties are neighbours locked in an intense and bitter dispute over a piece of adjoining land.  

The Respondent registered the Domain Names in March 2008 for use in connection with a site at which it publishes information on the parties’ dispute-- www.councilanddeveloper.net.    

The Complainant has asked the Respondent to surrender the Domain Names and it has refused. 

5.	Parties’ Contentions

The Complainant

The Complainant says it has rights in a name or mark identical or similar to the Domain Names and that in the hands of the Respondent, the Domain Names are an Abusive Registration.  

Rights

The Complainant says it has rights in the name Rayden Engineering and relies on its common law trade mark rights arising from its use of the name Rayden Engineering in trade over some 30 years.  Rayden is a composite word derived from the first initial and last name of the founder of the Complainant, Mr. Richard Hayden.  The Complainant has traded under the name Rayden Engineering since 1979, in unincorporated form, and since 1996, as Rayden Engineering Limited.  
The Complaint has provided evidence of its prestigious customer base, of national and international firms; its turnover of around 10 million pounds per annum; its accreditation with various trade bodies; coverage in the trade press; listings in various directories and its advertisement on various websites. It further relies on its local reputation both as an employer, of some 100 staff, and as a corporate citizen. Finally, the Complainant relies on its own online usage by its website at www.raydenengineering.com which has been in use since 2000, and its alternate domain name www.raydenengineering.co.uk.
 
Abusive Registration

The Complainant says the Domain Names in the hands of the Respondent are inherently abusive as an attempt to harm the Complainant’s reputation and unfairly disrupt its business and are part of a long and concerted campaign of harassment. 

The Complainant says the Respondent registered the Domain Names in March 2008, therefore after the Complainant had established its substantial goodwill in the name Rayden Engineering, and that the Respondent has no legitimate rights in or to that name as she has no connection to the Complainant, has never worked for it, does not own a business with the name or have it as a surname.      

The Complainant says the Respondent is a neighbour with an axe to grind who is using the Domain Names to engage in a malicious negative publicity campaign against the Complainant.  The Complainant itemises various allegedly defamatory allegations made by the Respondent on various websites and in the press and at www.councilanddeveloper.net –to which the Domain Names resolve.  

The Complainant says the Respondent’s site is “maintained for the sole purpose of airing the Respondent’s grievances and unsubstantiated allegations against the [Complainant] and the local Council.”  

The Complainant says the Respondent registered the Domain Names in order to divert traffic from the Complainant’s website and cause damage to its reputation and business disruption. It relies on §3(a)(i)(C) of the DRS Policy.  

The Complainant identifies 6 customers who have expressed confusion and negative reactions to the Respondent’s website but believes there may be many more and it may have lost business. The Domain Names are appearing in the top 15 hits on a Google search of the Complainant’s name and the Complainant says parties seeking the Complainant’s authentic site are diverted.  The Complainant says that the disclaimer on the Respondent’s site acknowledges this, saying: “...if you are looking for Rayden Engineering Ltd and have come to this site instead then please try again!” 

The Complainant’s solicitors made a formal request for the surrender of the Domain Names which was ignored, although publicised on the Respondent’s site.  The Complainant seeks the transfer of the Domain Names. 

The Respondent 

The Respondent says she has a dispute with the Complainant and acquired the Domain Names solely for use with her non-profit criticism or gripe site about the dispute on which she “airs..[her].. grievances” and that this is legitimate, non-commercial, fair use of the Domain Names under §4 of the Policy. 

The Respondent says the Complainant has exaggerated its turnover and employees.  Further she says her site is highly unlikely to confuse anyone, even initially, as it opens with the statement:  

“Welcome to this website which has been created to highlight the damage Rayden Engineering was knowingly allowed to inflict on his residential neighbours without any form of planning consent....” 

It also has a bold red title “the Council and the Developer” and a disclaimer. She further says the search engine descriptions also make it abundantly clear the site is not connected to, authorised by or owned by the Complainant and the Complainant is now motivated by the Google rankings of her site –having delayed for 8 months. 

The Respondent gives an overview of the underlying dispute and says that it is the Complainant that has engaged in a shocking campaign of harassment and that it is the Complainant’s actions which damage its reputation –not her publication of them.    
She says the Complainant’s real issue is with the content of the site and this is not within the jurisdiction of the DRS.  She says her allegations were first published some 27 months ago, yet the Complainant has not sued for defamation—because the Respondent can prove her allegations and the Complainant does not want the judicial or media scrutiny.   

The Respondent relies on DRS 05122 joiedevivreholidays.co.uk and also DRS 4285 Knights Lettings Ltd v Watkins and WIPO Case D2007-0731; Cleeve. 

The Reply 

The Complainant says use of a trade name without any additions will not usually be fair use and may be impersonation. It relies on: DRS 04198 Moss and Coleman v Kordowski; DRS 02193 Guidestar; DRS 3161 Clydesdale v Lawton and DRS 00193 Harmonkardon. 

The Complainant says use will not be fair use when the criticism is untrue or goes beyond “reasonable critical comment.”  It says joiedevivreholidays.co.uk should be distinguished. 

The Complainant says taking unfair advantage of rights by business disruption cannot be fair use and this includes initial interest confusion, per DRS 4113; Forsey v Xi Software.  

6.	Discussions and Findings

General 

The DRS is designed as a fast, simple alternative to litigation.  Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration. 

§ 2(a) of the Policy requires the Complainant to prove 2 elements: 

  	  “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.”

The Complainant bears the onus of proof and must prove both elements on the balance of probabilities.

The DRS’s jurisdiction is limited to these issues and the remedies of cancellation, suspension, transfer or amendment of the Domain Name.  

Rights 

The Complainant clearly has common law trade mark rights enforceable at law in a name or mark identical or similar to the Domain Names arising from its extensive use of the name in trade over some 30 years. 

Even if the Respondent is correct when it says the Complainant has overstated its turnover and employees, and no findings are made as to this, the Complainant has more than adequately met its burden of proof as to its common law rights. 

Hyphens are generally regarded as irrelevant for the purpose of assessing similarity and the Domain Names are in this case identical to the Complainant’s common law trade mark.   

Abusive Registration

The second element the Complainant must prove under §2(a) of the Policy, is the Domain Name is an Abusive Registration, as defined in §1 thereof.  

§3 of the Policy is an illustrative list of factors, which may evidence an Abusive Registration.  Conversely, §4a of the Policy provides a list of factors which may evidence that a registration is not an Abusive Registration. Both lists are non-exhaustive.    

The DRS is not a forum for determining allegations of defamation or trade mark infringement or passing-off and is concerned only with Abusive Registrations, defined in §1 of the Policy, 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 has taken unfair advantage of or has been unfairly detrimental to the Complainant’s Rights.”

The Complainant relies on two heads under §3 of the Policy as evidencing an Abusive Registration; §3(a)i C (unfair disruption of business) and §3(a) ii (confusion). 
The Respondent relies on §4(a)i C (legitimate non-commercial or fair use) as evidencing the Domain Names are not Abusive Registrations. 

Fair Use 

While the DRS is not concerned with trade mark law, the Policy is derived from and based loosely on concepts from the law of registered marks and it is important to occasionally test interpretations of the Policy against it.  

The fair use factor in the Policy is intended to borrow from the law of trade marks, uses which are allowed or permitted because they are not “use in trade” or “use in commerce” or use “in a trade mark sense.” 

This includes the right to use a trade name in a nominative (noun or name) sense; to call someone by their name and say something about them, rather than to compete with them in business. If a newspaper names the subject of an article, it is not infringing their trade mark and this is purely a nominative use and not a trade mark use. This concept of fair use also reflects the policy of the law that language and words cannot be so entirely exclusively monopolised so that no-one can call you by your name without your permission.   

The Respondent’s use is not a use in trade or use in a trade mark sense. It is non commercial and it is nominative.  The Respondent is not earning money from the Domain Names. She is using them to name and describe and then complain about the Complainant.

The Policy says at §4 b that fair use may include sites operated solely in tribute (e.g. fan sites) or in criticism of a person (gripe sites). This is intended to enshrine the right to use domain names for nominative purposes in these ways.         

There are WIPO and DRS authorities that suggest you cannot rely on fair use if you register another’s name ‘unadorned’ –without adding “sucks” or something else to distinguish it immediately as a gripe site.  These should be treated with caution as likely entering the UDRP jurisprudence from US panellists and parties with expectations informed by the US right of Publicity –a right to control the public use of your own name and image.  English law does not recognise such a right and the Policy should resist the doctrine of ‘impersonation’. This line of authorities offends the right to nominative use and the express language of the Policy. 

In any event, in this case, the Respondent, by her disclaimers and other express statements on her site, actively avoids any impersonation and makes clear to visitors that the site is not that of the Complainant.  As to any use prior to entry, see below as to initial interest confusion.     

The Complainant says the Respondent’s use is not fair as it goes beyond “reasonable critical comment.” This is a concept unknown to the Policy or the law. The right to free speech does not include any such limit. In so far as the Complainant says the use cannot be fair because the allegations are defamatory, that is a matter for the Courts.  The Respondent, like every other citizen has the right to publish statements about the Complainant, subject to the law of defamation.  The Complaint has chosen not to sue for libel and I regard this as highly significant.   

I find the Respondent’s use is paradigm fair use and that she has made out this factor under §4(a)i of the Policy.    

Disruption and Confusion 

The Complainant says the site was registered to disrupt its business. I find the primary purpose of the registration was not disruption but legitimate non-commercial fair use and I find any disruption is incidental to and trumped by it. 

As to confusion, I find the Complainant has not met the standard of proof on actual confusion.  I note its carefully drafted statement referred to 6 people who were either confused or expressed negative reactions. These are not the same thing. §3(a) ii of the Policy encompasses likelihood of confusion as well as actual confusion.  As to likelihood, the Complainant relies on initial interest confusion.  This is another doctrine from US law and is widely regarded in trade mark law as overreaching and wrong.  The Policy expressly requires more than initial interest –namely that people are confused “into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.”  English law expressly permits for example comparative advertising –the use of another’s trade mark to compare their goods and service and prices with another’s – yet this would conflict with initial interest confusion, as would purely nominative use, as discussed above.   
      
Even if I had found a case made out on confusion, it would be trumped by the Respondent’s fair use. 

7.	Decision

I find that although the Complainant has Rights in marks and names similar and identical to the Domain Name, it is not an Abusive Registration in the hands of the Respondent who is making legitimate, non-commercial fair use of it.  Accordingly, the Domain Name should not be transferred to the Complainant.    

Transfer denied. 

Signed: Victoria McEvedy			Dated: 12 February 2009