DISPUTE RESOLUTION SERVICE

DRS 6342

Decision of Independent Expert

Hazel Murphy

and

Keith Dutton

1.	The Parties:

Complainant:	 	Hazel Murphy	
Country:		GB

Respondent:		Keith Dutton
Country:		GB

2.	The Domain Name(s):

poldercare.co.uk (“the Domain Name”)

3.	Procedural History:

The Complaint was lodged with Nominet on 29 September 2008.  Nominet validated the Complaint and informed the Respondent that the Dispute Resolution Service (“DRS”) had been invoked and that the Respondent had 15 working days to submit a Response.  The Respondent lodged a Response on 20 October 2008.  The Complainant lodged a Reply on 29 October 2008.  On 24 November 2008 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 7 of the Nominet DRS Policy (“the Policy”) and Nominet appointed Andrew Clinton (“the Expert”).

The Expert has confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as Expert in this case, and further confirmed that he knows of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence.  Philip Roberts was appointed as the Expert Reviewer.

On 22 December 2008 the Expert requested further statements and documents pursuant to paragraph 13a of the Procedure.  The Complainant responded by letter dated 5 January 2009 and the Respondent responded by e-mail dated 8 January 2009.

4.	Factual Background

The above-named Complainant, Hazel Murphy (“Ms Murphy”), is an employee of Polder Care which is in the business of providing residential care to adults with mental health issues.  Ms Murphy is authorised to bring the Complaint on behalf of Polder Care.

The Respondent, Keith Dutton, operated a business called Anderson-Bennett and Company which offered computer related services to third parties.  The Respondent’s partner was an employee of Polder Care and in 2002, upon being made aware of the Respondent’s services, Polder Care retained the Respondent to register the Domain Name.  

By 2004 Polder Care and the Respondent had fallen out and it does not really matter for these purposes what caused the breakdown of the business relationship but, as a consequence of it, the Respondent did not renew the Domain Name and the registration lapsed in 2004.  The Domain Name remained freely available until early 2006 when the Respondent decided to register it again, this time for a completely different purpose.  

The Respondent’s case is that the Domain Name was available and that he was entitled to register it.  He claims no rights in the name Polder Care; indeed his only interest in that name arises because he says he intends to set up a criticism site.

Polder Care claims rights in the name and contends that the registration and intended use of the Domain Name amounts to an Abusive Registration.

5.	Parties’ Contentions

Complainant

The Complaint, so far as is material, is summarised below.

The Complainant claims the right to use the Polder Care name exclusively.  Polder Care is a privately owned company and has been trading under that name for almost twenty years.  The business is owned by H.G. and A. De Rooy.  Polder Care is in the business of providing quality residential care to adults with mental health issues. 

In November 2002 a partner of a Polder Care employee was paid to undertake work on Poldercare’s behalf and the Complainant has produced a copy of invoice number 021118a dated 18th November 2002 for the sum of £141.86.  The objective of the work was to secure the Domain Name.  Polder Care paid the invoice upon completion of the task.  It is only since the employee left Polder Care, after a disciplinary process, that both the employee and the Respondent have been using the Domain Name.  

The Complainant seeks a transfer of the Domain Name to H.G. and A. De Rooy.

Respondent

The Response, so far as is material, is summarised below. 

It is not the Respondent’s policy to register domain names on behalf of other people. If people wish to own a domain name the Respondent asks them to register it themselves.  Mr. de Rooy was fully aware that he was not purchasing the Domain Name.  The invoice referred to in the Complaint was the first year rental of an annual “all-in” agreement. It covered the rental of the Domain Name, hosting the Domain Name, set-up, maintenance and support of e-mail, but for one year only.  It did not include “ownership” of the Domain Name.  Mr. de Rooy only paid the first year of the contract even though the Domain Name was registered for 2 years.  The Respondent allowed the registration to lapse after the initial 2 year period.

In 2003 the business arrangement between the Respondent and Polder Care ended acrimoniously and it became apparent that Mr. de Rooy did not want to proceed with the ongoing maintenance of the Domain Name. He was obviously aware that he was not the registrant of the Domain Name because he did not contact the Respondent about renewal.  He instead went with another provider and changed to a “.com” domain name, poldercare.com.  Mr. de Rooy only uses the poldercare.com domain name for e-mail and he has not developed the “.com” website.  There would be no logical reason for him to need the Domain Name for more e-mail addresses.  He has no plans for constructive use of the Domain Name and his intention is to stop the Respondent from using the Domain Name for his own purposes.

In 2006 the Respondent’s partner was unhappy with the way Polder Care was treating her.  The Respondent discovered that the Domain Name was still available and he re-registered it.  His intention was to use it for employees and former employees to express their feelings about Polder Care.  The Respondent did not go ahead with this project because he felt it was inappropriate to do so whilst his partner was still an employee of Polder Care.  She was an employee until July 2008.  It is still the Respondent’s intention to use the Domain Name for the original project.

The Respondent suggested to his partner that she could use the Domain Name for e-mail correspondence with Polder Care which she did in April 2008 but she stopped using it for that purpose on her resignation from Polder Care.    

The Domain Name was available in January 2006 and the Respondent registered it fairly and squarely at that time and for a legitimate and valid reason.  

Reply

The Reply, so far as is material, is summarised below.

As Polder Care did not have sufficient skills in-house they accepted an offer by the Respondent to help them with their computer systems.  Polder Care paid the Respondent, who trades as Anderson-Bennett and Company, for all aspects of the work undertaken by the Respondent.

The instruction to the Respondent was that he was to undertake the work for and on behalf of Polder Care and he should not have registered the Domain Name in his personal name.  He did not tell Polder Care that he had done so.  It was only when a new manager at Polder Care became involved in the disciplinary procedure involving the Respondent’s partner that it came to light that the Respondent had registered the Domain Name in his own name.

The Complainant has been utilising the company name of Polder Care since 1996 affording it ‘common use’ of the name and is in the process of registering the name through a Trademark and Patent Registration Company.

The Complainant feels that the Respondent’s intended use of the Domain Name is highly inappropriate and clearly an abuse of use.  

It was during the protracted disciplinary process involving the Respondent’s partner that the Domain Name was used, for a short period, for the purposes of e-mail correspondence with the Respondent’s partner.  She had stated in writing that she would not respond to any communication that was not sent to this email address. 

The Complainant intends to set up a website which will form part of a fully integrated marketing communications strategy which has already been initiated.  The marketing communications strategy incorporated use of company communications methods involving newsletters, promotional material and a website.

Request for Further Information

On 22 December 2008 the Expert requested further statements and documents pursuant to paragraph 13a of the Procedure.  The request was in the following terms:-

The Complainant is Hazel Murphy but the Complaint is put on the basis that Polder Care, a privately owned company, has rights in the domain name poldercare.co.uk (“the Domain Name”).  

Request 1 – what rights does Hazel Murphy have in the name or mark Polder Care?  Please provide documentary evidence of any rights that are claimed.

Request 2 – on what basis is Hazel Murphy named as the Complainant rather than Polder Care Limited?  Please provide documentary evidence of any assertions made in response to this request.

The Complaint says that the Domain Name should be transferred to H.G and A. De Rooy.  The Reply says that the Domain Name should be transferred to the company Polder Care.

Request 3 – who should the Domain Name be transferred to if the Complaint is upheld and on what basis?

Further Statement by the Complainant

The Complainant’s response was in the form of a letter dated 5 January 2009 from the General Manager of Polder Care which is summarised below.  

Hazel Murphy is an employee of Polder Care in the capacity of Operations Manager Administration.  It was in this capacity that she was instructed, by the company, to formally lodge a complaint for the return of the Domain Name.  Hazel Murphy was acting for and on behalf of Polder Care and has no rights to the Domain Name.  

The Complainant requests that the Domain Name is transferred to H.G. and A. De Rooy.  The Complainant has established common use of the brand Polder Care over a twenty year period within the care sector.  They also own the limited company name of Polder Care Limited.

Further Statement by the Respondent  

The Respondent’s response was in the form of an e-mail dated 8 January 2009 which is summarised below.

When the Respondent first registered the Domain Name he did so in his personal name as it was easier, and cheaper, to do it that way, rather than set up a new account in the name of Polder Care.  The Respondent registered the Domain Name, and up to 20 other domain names, through an existing provider.  In all cases they were originally registered in his personal name as that was the default method of registering domain names through that provider.  Some of the domain names have been subsequently transferred to a more appropriate user.  Mr de Rooy approved of this approach at that time. It was the Respondent’s long-term intention to transfer the Domain Name to Mr. de Rooy at some future date, when Polder Care was capable of handling the technology.  Before this transfer could be discussed or achieved, the relationship with the Complainant broke down.  Mr de Rooy was aware at that time that the Domain Name was in the Respondent’s name.  He chose not to do anything about it at that time.  Failing further instructions the Respondent left the registration of the Domain Name to expire. 

Subsequently the Domain Name was once again available so the Respondent registered it with the intention of setting up a criticism web site, to support his partner in making legitimate and legal criticism of Polder Care.  The Respondent is not suggesting that he has any rights to the Polder Care name whatsoever but believes that he has the right, on a first come, first served basis, to use any suitable domain name that he wishes.  

The introduction, by Mr. de Rooy, of Polder Care Limited into the discussion, is completely irrelevant. Mr. de Rooy does not trade as Polder Care Limited and Polder Care Limited does not have any employees or assets, it is a dormant company. 

6.	Discussions and Findings

General

Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities; firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  

Complainant’s Rights

Rights are defined in the Policy as meaning rights enforceable by the Complainant, whether under English law or otherwise.  The mark in question in this case is Polder Care which is identical (for these purposes) to the Domain Name. The issue is whether the Complainant can prove that she has rights in that mark.

This case is somewhat unusual in that neither the above-named Complainant nor the Respondent have, or claim to have, any rights in the mark in question.  The Expert raised a request for further statements and documents, pursuant to paragraph 13a of the Procedure, on this point to seek clarification from the parties.  

The letter dated 5 January 2009, lodged on behalf of the Complainant, says that “Hazel Murphy was acting for and on behalf of the company, Polder Care and has no rights to the domain name.”

The Respondent sent an e-mail on 8 January 2009 saying “I am not suggesting that I have any rights to the Polder Care name whatsoever.”

There are references in the papers before the Expert to a limited company registered under the name Polder Care Limited.  The Respondent says that Polder Care Limited has no employees or assets and is, in fact, a dormant company.  He claims it has no relevance to this dispute.  The Complainant uses the expression “the company” on several occasions but it is clear this is actually a reference to the business owned by Mr H.G. and A. De Rooy which trades as Polder Care.  The Complainant says at one point “we also own the limited company name of Polder Care Limited” but, in substance, the case on rights is that the unincorporated business which trades as Polder Care has unregistered rights in the mark Polder Care.  

In the Expert’s view the mere fact of registration of a company name at the Companies Registry does not of itself give rise to a Right within the definition set out in the Policy.  The company does not appear to trade and the Expert intends to disregard the limited company registration for the purposes of deciding whether the Complainant has rights.  

The documents filed by the Complainant contain the following statements:-

•	“We have established common use of the brand Polder Care over this twenty year period within the care sector” (letter dated 5 January 2009).

•	“Polder Care is in the business of providing quality residential care to adults (18-65) with mental health issues” (Complaint). 

•	We have been utilising the company name Polder Care since 1996 affording us “common use” of the name, which we are also in the process of registering through a Trademark and Patent Registration Company” (Reply).

•	“Poldercare is a privately owned company and has been trading under this name for almost twenty years.  The business is owned by H.G and A. De Rooy” (Complaint).

Unfortunately, the Complainant has not filed documentary evidence in support of these statements.  The only documents before the Expert that offer any assistance on the extent of the use of the mark Polder Care are:-

•	The invoice dated 18 November 2002 rendered by the Respondent, through his business Anderson-Bennett and Company, to Polder Care for an annual charge for hosting the Domain Name.

•	The letter dated 5 January 2009 submitted on behalf of the Complainant as part of the DRS process which is on Polder Care letterhead.  There is no reference in the letter to the registered company Polder Care Limited and no clues can be gained from that letter about the ownership of the business that trades as Polder Care.  It is however clear from that letter that Polder Care has 3 separate addresses in the Wirral area and has been awarded the Investor in People (IIP) award, since the IIP logo is reproduced on the letterhead.

There is no indication of the size of the Polder Care business, its turnover or the marketing activities that it has carried out in order to promote its services.  The Complainant says that Polder Care is in the process of setting up a website that will form part of a fully integrated marketing communications strategy, which has already been initiated and the strategy will incorporate use of company communications methods involving newsletters, promotional material and a website.  

The Respondent clearly had a business arrangement with Mr De Rooy trading as Polder Care as he describes how that relationship came into existence in the Response and the invoice that he rendered to Polder Care is in evidence.  In addition, it is common ground that the Respondent’s partner was employed by Polder Care from at least 2002 (and possibly earlier) until she resigned in July 2008.

The Complainant should have provided documentary evidence to support the claim to unregistered rights in the mark Polder Care.  However, a business that trades under that mark has clearly been active since at least 2002 (as that was when the Respondent was retained by that business) and, on the Complainant’s case, since as long ago as 1996.    

Whilst the evidence is far from overwhelming on the issue of rights the DRS is not a formal Court process and, on the available documents, the Expert finds, on the balance of probabilities, that Mr H.G and A. De Rooy trading as Polder Care have rights the mark Polder Care which is identical or similar to the Domain Name.

There remains the somewhat thorny issue that the Complaint was brought in the name of Ms Murphy rather than in the name(s) of Mr H.G. De Rooy, Mr A. De Rooy and/or Polder Care.  Ms Murphy was, according to the letter dated 5 January 2009, instructed by Polder Care to lodge the Complaint.  In effect Ms Murphy was acting as the agent of Polder Care and she should have completed the on-line Complaint form on its behalf and in its name rather than in her own name.  She could then have given her personal details as the appointed representative.  For the purposes of this Complaint the Expert is prepared to accept, based on the evidence before him, that Ms Murphy completed the Complaint form on behalf of Mr H.G. and A. De Rooy trading as Polder Care and was acting as their agent for that purpose.  The Complaint form should thus be read as being brought by Hazel Murphy as agent for Mr H.G and A. De Rooy trading as Polder Care.

Accordingly, the Expert finds that the Complainant has rights in the mark Polder Care which is identical or similar to the Domain Name and therefore the rights test is satisfied.

Abusive Registration

Abusive Registration is defined in paragraph 1 of the Policy to mean 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.

Non-exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy as follows:

(i)	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A.	for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B.	as a blocking registration against a name or mark in which the Complainant has Rights; or

C.	for the purpose of unfairly disrupting the business of the Complainant;

(ii)	Circumstances indicating that the Respondent is using the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

(iii)	The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern; 

(iv)	It is independently verified that the Respondent has given false contact details to Nominet; or

(v)	The Domain Name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

(A)	has been using the Domain Name registration exclusively; and
(B)	paid for the registration and/or renewal of the Domain Name registration.

It is clear from the wording of the Policy that the list of factors at paragraph 3 is non-exhaustive and that a Complainant can succeed in proving Abusive Registration without necessarily being required to prove any of those factors.  However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.  
Non-exhaustive factors – paragraph 4 of Policy
There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy.  

The most relevant one to the circumstances in this case is paragraph 4aiC which is that before being aware of the Complainant’s cause for complaint the Respondent has made legitimate non-commercial or fair use of the Domain Name.  Under paragraph 4b fair use may include sites operated solely in tribute to or in criticism of a person or business.  
Discussion and findings regarding Abusive Registration

The Expert needs to consider the circumstances surrounding both the registration and the use of the Domain Name as the definition of Abusive Registration encompasses both as alternative grounds.  The Respondent registered the Domain Name on two separate occasions; initially in 2002 pursuant to an agreement with Polder Care (although he allowed that registration to lapse in 2004) and subsequently in 2006 for a different purpose altogether.

The documents filed by the parties contain a lot of background information about the circumstances behind the first registration and the dispute between Polder Care and the Respondent’s partner who, until July 2008, was a Polder Care employee.  Whilst this gives some colour to the dispute the Expert does not make any findings in relation to the initial registration, or indeed use, of the Domain Name.  The first registration lapsed in 2004 and the Respondent’s explanation for that is that effectively he had no instructions from Polder Care.  

By 2004 the business relationship had come to an end and the Respondent had no ongoing interest in the Domain Name; nor apparently, at that stage, did Polder Care as they took no steps to register the Domain Name themselves.  In early 2006 the Respondent’s partner was unhappy with Polder Care.  The Respondent decided that he wanted to set up a criticism site and upon finding out that the Domain Name was available he registered it.  The Respondent takes the view that under a first come first served system, such as that operated by Nominet, he has the right to register and use any suitable domain name that he wishes.  It is the very nature of a first come first served system that anyone can register a domain name that is available and they are then able to use that domain name.  That of course is not an end to the matter because when someone registers a domain name they agree to abide by Nominet’s terms and conditions which include a provision that the registrant is bound by the DRS Policy and Procedure.  In effect, the registrant signs up to a process that allows a subsequent challenge by a third party (who has to establish some legitimate interest by satisfying the rights test) to challenge the registration and/or use of the domain name on the basis that it is, in the hands of the registrant, an Abusive Registration.  

The Respondent claims no rights in the mark Polder Care and his motivation for registering the Domain Name in 2006 was that he intended to use it for employees and former employees of Polder Care to express their feelings about that business.  His explanation for not actually setting up the criticism site is that he thought it was inappropriate to do so whilst his partner was still employed by Polder Care.  However, his partner left the employment of Polder Care in July 2008 and he has still not set up the criticism site.  During the period of the second registration the Domain Name has only been used for e-mail correspondence and then only for a short period from 13 April 2006 until the Respondent’s partner resigned from Polder Care.

Paragraph 4aiC of the Policy (legitimate non-commercial or fair use) does not assist the Respondent as he has not actually used the Domain Name for the purpose of a criticism site.  In any event, making use of a domain name for a criticism site that adopts the mark in question without adornment is much less likely to be regarded as fair use than using a domain name that is qualified in some way such as to make it clear that the domain name is not operated or authorised by the mark holder.  An example of the latter on these facts might be the domain name poldercaresucks.co.uk.    

The Respondent clearly had knowledge of Polder Care’s rights in the mark as he had previously registered that mark as a domain name on their behalf.  He says that his long term intention, when he originally registered the Domain Name, was to transfer the Domain Name to Mr De Rooy at some point in the future.  If his intention, at the time of the second registration, was to establish an on-line presence for people to express their feelings about Polder Care then he could have registered a variation on the Polder Care name.  He registered the mark Polder Care without adornment and whilst he may have intended to use the Domain Name as an outlet for his feelings towards the Complainant even if he had set up the criticism site that may not have been fair use.  In the event he did not set up the site and the Domain Name has only been used for e-mail correspondence relating to the disciplinary process involving his partner.  The Respondent was aware that Polder Care had rights in the mark and that if he registered it as a domain name that would block the Respondent from subsequently registering it.  

The Expert finds that the Respondent registered the Domain Name primarily as a blocking registration against a name in which the Complainant has rights, pursuant to paragraph 3aiC of the Policy.  Paragraph 4 of the Policy sets out factors, which if established, can be a satisfactory answer to the Complaint but none of those factors is applicable to the facts of this case.  

The factors set out in paragraph 3 of the Policy are indicative rather than conclusive and the Expert has to be satisfied that the Domain Name was registered, or has been used, in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights within the definition of Abusive Registration as set out in the Policy.  For the reasons set out above, in the Expert’s view the registration of the Domain Name by the Respondent on the second occasion in January 2006 was unfairly detrimental to the Complainant’s Rights.      

The Expert is satisfied, on the balance of probabilities, that the Domain Name is, in the hands of the Respondent, an Abusive Registration in that it was registered in a manner which was unfairly detrimental to the Complainant’s rights.  

7.	Decision

The Expert finds, on the balance of probabilities, that the Complainant (which for these purposes is Mr H.G. and A. De Rooy trading as Polder Care) has Rights in a mark which is identical or similar to the Domain Name and that the Domain Name is, in the hands of the Respondent, an Abusive Registration.  The Expert directs that the Domain Name be transferred to Mr H.G De Rooy.

Signed ……………………..		Dated …………………