Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2002/422.html
Cite as: [2002] DRS 422

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DRS 00422

Daly Systems Limited v Daly Telecommunications Limited

Decision of Independent Expert

Parties:

Complainant: Daly Systems Limited

Country: GB

Respondent: Daly Telecommunications Limited

Country: GB
Domain Name:
dalysystems.co.uk ("the Domain Name")
Procedural Background:
The complaint was notified to Nominet on 29 May 2002 and received in full on 30 May 2002. Nominet checked that it complied with the Nominet UK Dispute Resolution Service Policy ("the Policy") and the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure"). Nominet notified the Respondent of the Complaint on 7 June 2002, and informed the Respondent that it had 15 days within which to lodge a response. Hard copy of the response, dated 25 June 2002, was received by Nominet on 27 June 2002. The Complainant filed a reply to that response on 8 July. Informal mediation followed. When that did not resolve the dispute, Nominet notified the parties that an Expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 12 August.

On 13 August 2002 I, Mark de Brunner, agreed to serve as an Expert under Nominet's Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.
Outstanding Formal/Procedural Issues
There are no outstanding formal or procedural issues.
The Facts
I accept the following as facts.

Both the Complainant and the Respondent provide telephone systems for business.

The Respondent was established in 1986 and was incorporated as Daly Telecommunications Limited in 1988.

The Complainant's representative was Managing Director of the Respondent company until January 1996, when he was dismissed. Soon afterwards, in early 1996, the Complainant began trading as DALY SYSTEMS.

The Respondent challenged the Complainant's rights to the name DALY SYSTEMS. Solicitors' letters were exchanged, but no agreement was reached. In March 1996 the Respondent registered the name DALY SYSTEMS with Business Names Registrations.

The Respondent's business stationery until at least February 1997 shows the company trading as DALY TELECOM. By 19 June 1997 the stationery is showing the Respondent trading as DALY TELECOM/SYSTEMS.

The domain name dalysystems.co.uk was registered for the Respondent on 3 May 2000.
The Parties' Contentions

Complainant
The Complainant's contentions can be summarised as follows.
1. It has rights in the name DALY SYSTEMS.
2. The Respondent began trading as DALY TELECOM/SYSTEMS in 1997 to create confusion with the Complainant.
3. There is no evidence that the Respondent traded as anything other than DALY TELECOM Limited.
4. The Respondent registered the domain name as a blocking registration, unfairly to disrupt the Complainant's business or unfairly to divert business to the Respondent.
5. People have been confused into believing they were dealing with the Complainant, when in fact they were dealing with the Respondent.
6. The Respondent is engaged in a pattern of abusive registrations (because the Complainant was approached by two third parties and was offered other domain names for purchase).
7. The Respondent only registered DALY SYSTEMS as keywords with an internet directory.
Respondent
The Respondent says that its use of the domain name is justified for the following reasons.
1. It too has rights in the name DALY SYSTEMS, having been known by that name (among others) for many years before the Complainant began trading.
2. It is the Complainant - by its choice of trading name - that is confusing the Respondent's customers, and poaching the Respondent's business.
3. The domain name was registered to reflect the Respondent's having evolved from providing telephone systems to providing communication systems.
4. The charge that the Respondent is involved in a pattern of abusive registrations is misplaced, because it neither registered the other domain names referred to by the Complainant nor offered them for sale.
5. The Respondent registered a number of other keywords with the directory (in April 2000).
Discussion and Findings

General
To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
1. it has rights in respect of a name or mark which is identical or similar to the domain name; and
2. the domain name, in the hands of the Respondent, is an abusive registration.
Complainant's Rights
The Complainant trades as DALY SYSTEMS LTD. The Respondent has in the past challenged the Complainant's rights to that name, but inconclusively. In its submission here, the Respondent begins by asserting simply that the domain name is identical or similar to a name or mark in which it also has rights. Given that

(i) the Respondent asserts its own rights rather than denying that the Complainant has rights in DALY SYSTEMS

(ii) in proceedings under the Dispute Resolution Service the threshold in establishing rights is necessarily a low one (the Complainant simply needs a foothold before attempting the longer path to establishing that a domain name is an abusive registration)

I accept that the Complainant has rights in respect of the name DALY SYSTEMS. Ignoring the suffix .co.uk, the name in which the Complainant has rights is identical to the domain name.
Abusive Registration
The Dispute Resolution Service rules define an 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.

The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. Among these are
1. circumstances indicating that the Respondent registered the domain name
  1. as a blocking registration against a name or mark in which the Complainant has rights; or
  2. primarily for the purpose of unfairly disrupting the business of the Complainant
2. circumstances indicating that the Respondent is using the domain name in a way which has confused people or businesses into believing that the domain name is registered to, operated or authorised by, or otherwise connected with the Complainant
3. where, in combination with other circumstances indicating that the domain name in dispute is an abusive registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making abusive registrations.
These are essentially the claims of the Complainant.

The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. One factor that can point in that direction is where, before being informed of the Complainant's dispute, the Respondent has used the domain name in connection with a genuine offering of goods or services. The Respondent relies in part on this in arguing that the registration is not abusive.

I can take each of these factors in turn.
blocking registration
The Complainant asserts that the domain name is a blocking registration. The Respondent says it registered that domain name alongside a number of others to develop its brand, image and market position. From the limited evidence before me, it is impossible to know with any certainty why the Respondent registered the domain name. There has clearly been a long-running business dispute between the Complainant and the Respondent, and while it is possible that the Respondent wanted to stop the Complainant using the domain name, it is possible too that the Respondent was simply registering a name it had begun to use several years earlier.
unfair disruption
The evidence is just as finely balanced on the question whether the Respondent registered the domain name primarily for the purpose of unfairly disrupting the Complainant's business. It is possible that that was the Respondent's motive. Equally, it seems to me possible that the Respondent was simply registering domain names that reflected one of the names by which it was known.
confusion
The Complainant says the Respondent introduced the words SYSTEMS into its trading name (so it became DALY TELECOM/SYSTEMS) in 1997 to create confusion between the two businesses. The Complainant goes on to say there is no evidence that the Respondent traded as anything other than DALY TELECOM LIMITED. On the face of it, those two claims are contradictory. Further, if the second claim has any merit, the first looks to describe a rather half-hearted attempt at confusing people. I accept there has been a degree of confusion between the Complainant's business and the Respondent's business. But that confusion appears to have acted both ways, and there is conflicting evidence about what caused it.

More narrowly, I have not seen any evidence that the Respondent is using the domain name in a way that has confused people or businesses into believing wrongly there is some connection with the Complainant.
pattern of abusive registrations
The Complainant asserts that the Respondent is engaged in a pattern of abusive registrations because it was approached by some third parties and offered other domain names for sale. But no connection has been established between the third parties and the Respondent, so whatever the circumstances surrounding the registrations of those other domain names (and there is no evidence of those circumstances) the Complainant has not established any kind of pattern involving the Respondent.
used in connection with a genuine offering of goods or services
It is undeniable that the domain name has always been used by the Respondent in connection with a genuine offering of goods or services.
other arguments
The Complainant says the Respondent only registered DALY SYSTEMS as keywords in an internet directory. The Respondent, though, has shown to my satisfaction that it registered a number of other keywords too.
conclusion on the nature of the registration
I think the arguments are evenly balanced on the questions whether the domain name is a blocking registration, and whether the registration was primarily for the purpose of unfairly disrupting the Complainant's business. I have not seen any evidence that the Respondent is using the domain name in a way that has confused people or businesses into believing wrongly there is some connection with the Complainant. No pattern of abusive registrations has been established. At the same time, the Respondent - even on the Complainant's submission - did begin trading as DALY TELECOM/SYSTEMS some years before the domain name was registered.

Of course the list of factors in the Policy is not exhaustive. The underlying issue is whether 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. On the evidence before me, I am unconvinced of that.

If the question was simply who has the greater claim to the domain name, the conclusion might be less clear-cut. The point is arguable, but in any event that is not the question. Domain names are offered on a first-come, first-served basis. The Respondent has registered the domain name and the onus here is on the Complainant to prove, on the balance of probabilities, that the registration is abusive. The Complainant has not discharged that obligation. I am not persuaded, on the balance of probabilities, that the domain name is an abusive registration.
Decision
I find that the Complainant has rights in respect of a name which is identical to the domain name, but I do not find that the domain name, in the hands of the Respondent is an abusive registration.

In the light of that, I direct that the registration of the domain name dalysystems.co.uk be left undisturbed.

Mark de Brunner

Date: 2 September 2002