104
Nominet UK Dispute Resolution Service
DRS 00104
BRITISH BOARD OF FILM CLASSIFICATION v. BULLETIN BOARD FOR FILM CENSORSHIP (represented by JAMIE DURRANT)
Decision of Independent Expert
Complainant: | British Board of Film Classification |
Country: | GB |
Respondent: | The Bulletin Board for Film Censorship (represented by Mr. Jamie Durrant) |
Country: | GB |
bbfc.org.uk ("the Domain Name")
The complaint was received by Nominet on 14 November 2001. Nominet validated the complaint and informed the Respondent, by both letter and by e-mail on 16 November 2001, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 working days (until 10 December 2001) to submit a Response. A Response was received on 7 December 2001 and forwarded to the Complainant on the same day with an invitation to the Complainant to make any further submission in reply to the Response by 18 December 2001. The Complainant duly filed a Reply on 17 December 2001, which was forwarded on to the Respondent on the same day. In accordance with Nominet's practice I have not been provided with any of the materials, records or correspondence generated during the Informal Mediation stage which followed, though I infer that it did not result in a mediated compromise agreement. On 8 January 2002 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly paid on 9 January 2002.
On 15 January 2002 Nominet invited the undersigned, Philip Roberts ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as Expert with effect from 18 January 2002.
The Registrant of the Domain Name is recorded on the Whois database as "Bulletin Board for Film Censorship", with Mr. Jamie Durrant's name given as administrative contact. As it does not appear that the "Bulletin Board for Film Censorship" is a firm or corporation with separate legal personality from Mr Durrant, I have been content to treat this Complaint as being properly constituted against Mr Durrant either in a representative capacity on behalf of all members of the "Bulletin Board for Film Censorship" or alternatively in his own personal capacity. This Decision is binding upon the proper Respondent and registrant of the Domain Name, whoever that may be as a matter of law.
The Complainant, the British Board of Film Classification, is a private company limited by guarantee with no share capital. It was incorporated in England and Wales on 17 August 1911 under company number 117289 as "The Incorporated Association Of Kinematograph Manufacturers Limited". Its name was changed to the present designation on 31 May 1985. It is an independent, non-governmental body, which has exercised responsibilities over the classification of films in cinemas since 1913, and over videos since 1985 (as a result of de facto delegation by local government and de jure delegation by central government respectively).
The Complainant is the proprietor of UK trade mark registration number 2234541 ('BBFC'), and a number of others which do not feature those initials, all registered as of 1 June 2000.
The Nominet WHOIS search with which I have been provided shows that the Domain Name, bbfc.org.uk, was registered on behalf of the Respondent on 4 December 1999, through the agency of Tag Holder UK2NET.
I have been supplied with and have reviewed various printouts of the website - styled 'Ban the Board of Film Censors' - which has been published under the URL http://www.bbfc.org.uk. The site contains sustained criticism of the Complainant (which is referred to consistently as 'the BBFC'), principally on the basis of allegedly arbitrary classification and allegedly over-zealous redaction of films.
Complainant:
The Complainant claims that:
The Complainant has for many years used the mark BBFC and is the registered owner of the trade mark BBFC. Examples of the use of the mark BBFC by the Complainant are:
(a) The use of the mark BBFC in the 1985 Annual Report of the Complainant which was the first annual report to the Home Secretary as required by s.6 of the Video Recordings Act 1984. A copy of the cover of this report is attached, together with examples of the use of the mark BBFC in subsequent annual reports.
(b) The use of the mark BBFC on the Complainant's stationary and publications of the Complainant, such as: letterheads, fax lead sheets, and video submission forms; the Classification Guidelines, Sense and Sensibilities: Public Opinion and the BBFC Guidelines and Classification of Digital Works.
(c) The use of the mark BBFC in the classification symbols used by the Complainant from 1985.
As stated above, the Complainant is the owner of the trade mark BBFC and the classification symbols in which the mark BBFC appears. Details of the trade mark registration are attached. The Complainant is the owner of the domain name bbfc.co.uk which was registered with Nominet.uk on 12 January 1998. It is clear from the above that the Complainant has substantial and long-standing rights in the mark BBFC.
The registration of the domain name bbfc.org.uk by Bulletin Board for Film Censorship occurred on 4th December 1999. The site of the domain bbfc.org.uk is identified on the home page as "ban the board of film censors". The site does not identify the authors of any material on the site or the true ownership of the site and its contents.
It is clear on the face of it that the disputed domain name is confusing with the Complainant's mark BBFC. The mark BBFC has been used by the Complainant for many years in its publications, letterhead and other materials. People could easily, at least initially, go to the Respondent's site thinking they were going to the Complainant's site.
The Respondent has no right or legitimate rights in the domain name. It was adopted by the Respondent at a time when it was well known that the Complainant had for many years used the mark BBFC. The Complainant submits that the most likely reason the domain name bbfc.org.uk was chosen by the Respondent was because of the recognition and association it has with the Complainant. The Respondent clearly wanted to take advantage of the reputation developed by the Complainant in the mark BBFC.
No fair use of the domain name is made by the Respondent. The sole purpose of the use of the domain name by the Respondent is in relation to a site used for the purposes of criticising the Complainant and causing it damage by, among other things, encouraging employees to disclose confidential information concerning the Complainant. It is clear from the contents of the site that the primary purpose of the Respondent's site bbfc.org.uk is as part of a campaign criticising the policies and activities of the Complainant and causing it damage. Although criticism of the Complainant is quite proper, the registration and use of an identical or confusingly similar domain name for the purpose of criticising and/or damaging the owner of the mark to which it is confusingly similar or identical, constitutes bad faith and unfair use.
It is clear, from all the circumstances of this case, that the use of the domain name by the Respondent is improper and unjustified.
The Complainant asserts that: (a) The Complainant has long-standing rights in the mark BBFC (b) The disputed domain name is confusingly similar and/or identical to the Complainant's mark; (c) The Respondent has no rights or legitimate interest in the domain name; and (d) The domain name was registered and is being used in bad faith and unfairly The Complainant requests that the domain name bbfc.org.uk should be transferred to the Complainant.
Respondent:
In response, the Respondent claims as follows:
In Reply to the what the Complainant perceived to be the three main substantive points made in the Respondent's Response, the Complainant contended as follows:
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is 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
From the evidence before me, it appears that the Complainant has used the acronym BBFC in the United Kingdom continuously since 1985. I have seen no evidence to substantiate the Complainant's assertion in its Reply that the designation was used between 1913 and 1985. Indeed, a commencement date of 1985 sits more easily with the records held at Companies House and the assertions made in the Complaint.
I am not satisfied that the Complainant's cited trade mark registrations (only one of which contains the letters 'BBFC') are of direct relevance to the question of ownership of rights. This is because the Domain Name was registered on 4 December 1999 and none of the trade mark registrations to which I have been referred were applied for until 1 June 2000. It is implicit in the definition of Abusive Registration ("at the time when the registration ... took place") that the question of the ownership of Rights must be determined as of the date of the allegedly abusive registration, not at the date of the Complaint or the date of the Decision. The registrations may have some residual relevance in so far as they constitute circumstantial evidence of the distinctiveness of the initials BBFC built up and acquired by the Complainant as a result of use prior to 1 June 2000, but I do not attach any significant weight to such evidence.
Notwithstanding these evidential shortcomings, I am satisfied that for present purposes the designation BBFC is synonymous with the Complainant. In any event it does not lie in the Respondent's mouth to claim that the "4 letter acronym is generic and since it represents the initial letters of our organization, we are equally entitled to it" in circumstances where both the editorial and externally-submitted content on the Respondent's web pages consistently uses the acronym as a shorthand for the Complainant (e.g. "Goodbye BBFC. Your time is up ... secretary of the BBFC ... Ads earn money for BBFC ... Are you a disgruntled BBFC employee"). In combination with the evidence of use put forward by the Complainant, this is in my view compelling evidence of the Complainant's common law rights in the designation BBFC.
For these reasons I am satisfied that the Complainant owns Rights in the designation BBFC. I am further satisfied that this name is identical to the Domain Name (ignoring, as I am required to do, the first and second level suffixes).
Abusive Registration
As stated above, the usual rule under paragraph 2(b) of the Policy is that the Complainant is required to prove on the balance of probabilities that the Domain Name is an Abusive Registration. However, the easily-overlooked proviso to paragraph 4(b) of the Policy is of particular relevance to this Complaint. The proviso reverses the burden of proof where:
i. the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts Rights, without any addition; and
ii. the Respondent is using or intends to use the Domain Name for the purposes of a tribute or criticism site without the Complainant's authorisation.
In my view these requirements for identity of names and unauthorised criticism are both satisfied on the facts of the present Complaint. Therefore the burden of proof of establishing whether or not the Domain Name is an Abusive Registration shifts to the Respondent and I will determine below whether or not he has discharged that burden.
Paragraph 1 of the Policy defines "Abusive Registration" 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 that the Domain Name is an Abusive Registration are set out in Paragraph 3(a) of the Policy. A non-exhaustive list of countervailing factors are set out in Paragraph 4(a) of the Policy.
Firstly the Respondent contends that he (or the organisation he represents) did not register the Domain Name in order to sell it to the Complainant or to a competitor of the Complainant; and that he has never offered it for sale to the Complainant or to any party connected with the Complainant. I accept the Respondent's evidence on this point.
Secondly the Respondent contends that he has made no attempt to disrupt the business of the Complainant. I regard this as a surprising submission in the light of the content of the present bbfc.org.uk web site. The Respondent's stated "ultimate aim" is for the Complainant to be disbanded (surely the ultimate disruption), and the methods adopted for bringing this about include the publication of "scurrilous tittle-tattle" and the incitement of "disgruntled employees" of the Complainant to breach their duties of good faith and fidelity owed to their employer. The Complainant concedes that it is not above criticism but asserts that the primary purpose of the Respondent's site is as part of a campaign criticising the policies and activities of the Complainant and unfairly causing it damage. On the evidence before me I accept this assertion and I find that the Respondent has failed to discharge his burden of demonstrating that he did not register the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
Thirdly the Respondent contends that there is no confusion of any kind between the parties to this Complaint. I accept his evidence that one would not have to read far into the material on the website to dispel any belief that one had found the Complainant's site and that he has never received any misdirected e-mails or communications intended for the Complainant. Nevertheless I accept the Complainant's uncontroverted submission that the most likely reason the Domain Name was chosen by the Respondent was because of the recognition and association it has with the Complainant. I have little doubt that the Respondent wanted to take advantage of the reputation developed by the Complainant in the mark BBFC - the fact that the Respondent's organisation uses the initials BBFC to stand for several different things supports the inference that the titles Bulletin Board for Film Censorship and Ban the Board of Film Censors were contrived to justify the use the of the acronym ex post facto. In circumstances where I take the view that the Domain Name was selected precisely because of its potential for diverting would-be visitors to the Complainant's site to the Respondent's site, I am not satisfied that the Respondent has discharged the burden of demonstrating lack of confusion.
Fourthly the Respondent submits that before he was made aware of the Complaint his organisation had been commonly known by the designation BBFC and that this was evidence of non-abusive registration under paragraph 4(a)(i)(B) of the Policy. In the light of the Respondent's consistent use of the acronym BBFC to refer to the Complainant (see above) I am unable to accept this submission. I further reject his submission under paragraph 4(a)(ii) of the Policy on the grounds that the Domain Name is not generic for the same reasons.
Fifthly the Respondent urges Nominet to dismiss the Complaint on the grounds that it is motivated by a desire to stifle criticism and debate, and that to order the transfer of the Domain Name would be "to deprive the thousands of regular visitors to our site of their freedom of speech and association". In the UK the Respondent undoubtedly enjoys the right of freedom of expression, safeguarded under Article 10 of the European Convention of Human Rights and the Human Rights Act 1998. Of course, that right is not unqualified and is subject to legitimate and proportionate legal restraints including the UK laws of intellectual property infringement and defamation. The Respondent seeks for obvious reasons to portray this Complaint as an attempt by the Complainant to "censor" the Respondent's criticism of censorship, but that is not in my view an accurate characterisation. As the Complainant rightly points out, the requested transfer of the Domain Name would not "stifle or censor criticism. That criticism can and will, no doubt, continue but under another non-abusive domain name reference". I reject the Respondent's claims accordingly.
Sixthly the Respondent alleges acquiescence or waiver by the Complainant, in that the Complainant failed to register the Domain Name for itself for two years after it registered bbfc.co.uk and delayed complaining about the Respondent's registration of the Domain Name for a further period of two years. I do not regard either of these factors as fatal to the Complaint - the fact that a Complainant has failed to secure a domain name for itself is axiomatic to the initiation of a DRS Complaint, rather than being a relevant consideration in the decision of that Complaint; and there are no time bars or limitation periods stipulated in the Policy. I would however have regarded these factors as material to the rebuttal of any allegation that the Domain Name was a "blocking registration" under paragraph 3(a)(i)(B) of the Policy, had such an allegation been made in the first place by the Complainant.
Finally the Respondent has challenged the Complainant's entitlement to registration of an ".org.uk" domain name on the basis that it "is a private limited company which operates on a commercial basis ... is not a statutory body, has no legal powers of any kind, is not referred to in any Act of Parliament and has no status whatsoever as a public body ... is secretive about its membership and resists attempts to make it open and accountable for its activities". The Respondent contrasts the Complainant with "Legitimate public bodies such as the ITC (INDEPENDENT TELEVISION COMMISSION) and the BSC (BROADCASTING STANDARDS COMMISSION) [which] are entitled to use an 'org.uk' domain name". I am not aware of any restriction to this effect imposed on the registration of ".org.uk" domain names. Indeed, I note that Nominet itself is a private company limited by guarantee with no share capital and yet is registrant of the domain name nominet.org.uk. I do not therefore regard this ground of complaint as a bar to the requested transfer of the Domain Name.
The considerations set out above and in paragraphs 3 and 4 of the Policy are illustrative and non-exhaustive. The ultimate question for my consideration is whether, on the evidence as a whole, the Respondent has discharged the burden of proving that the Domain Name (i) was not registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and (ii) has not been used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights. My overall impression - informed but not dictated by the considerations set out above - is that the Respondent has failed to discharge that burden. I conclude that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Having concluded that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert determines that the Domain Name, bbfc.org.uk, should be transferred to the Complainant.
Philip Roberts
Date: 28 January 2002