Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2003/1041.html
Cite as: [2003] DRS 1041

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Nominet UK Dispute Resolution Service

DRS 01041

Rubaroc v Barry Meakings

Decision of Independent Expert

1. Parties

Complainant: Rubaroc
Country: GB

Respondent: Barry Meakings
Country: Canada

2. Domain Name

rubaroc.co.uk
(“the domain name”)

3. Procedural Background

Nominet received the complaint on 25 July 2003 and 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 30 July and informed him that he had 15 working days within which to lodge a response. The response was received by Nominet on 20 August. The Complainant filed a reply, which was received by Nominet on 2 September. 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 7 October.
On 11 October 2003 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.

4. Outstanding Formal/Procedural Issues

It is not clear from the complaint who the Complainant is. That is important, because proceedings under the Dispute Resolution Service begin with a Complainant asserting rights in a name or mark which is identical or similar to the domain name. Establishing whether a Complainant has rights involves, first of all, identifying the Complainant.
The complaint form is signed by a partner in the firm representing the Complainant. It shows the Complainant as RUBAROC. There is no evidence that RUBAROC is incorporated. It might be a partnership, though there is no evidence of that either. The three people connected with the business with an apparent interest in the claim, any one of whom might be regarded as the Complainant, are Adrian Ayscough, Joyce Matthews and Wayne Matthews. (Joyce Matthews is described as the ‘partner’ of Adrian Ayscough, but in a context that suggests a social rather than a business relationship.) Adrian Ayscough signed a confidentiality agreement with the Respondent, Joyce Matthews signed a franchise agreement with the Respondent, and Wayne Matthews is shown as the ‘owner’ of a trade mark RUBAROC registered with the Office for Harmonisation in the Internal Market. In discussing rights, I have had to consider the possibility that any of these people – individually or in combination - might be the Complainant.

5. The Facts

From the little evidence before me, I accept the following as facts.
The Respondent set up a business supplying and installing rubber flooring some years ago. Rubaroc International (‘RI’) was incorporated on 26 October 1998. The Respondent registered the domain name on 2 March 2000. The Respondent has also registered the domain names rubaroc.ca, rubaroc.com and rubaroc.com.au.
In late 2000, Adrian Ayscough (a friend of an employee of RI) approached RI to enquire about the possibility of becoming RI’s UK dealer. Mr Ayscough signed a confidentiality agreement with RI in September 2000, so that commercially sensitive discussions could take place. In the event, a franchise agreement was made between RI and Mr Ayscough’s partner, Joyce Matthews.
The franchise agreement gave Ms Matthews exclusive rights to market and install RUBAROC surfacing in the UK, for the initial sum of £25,000. RI refocused its business activities on Spain and North America.
Wayne Matthews, Joyce Matthews’ son, worked in the UK franchise owned by his mother.
Subsequently, those involved in the UK franchise decided they wanted to end their relationship with RI and recover the money that had been laid out.

6. The Parties’ Contentions

Complainant

The Complainant’s contentions can be summarised as follows.
(i) The Complainant has rights in the name RUBAROC.
(ii) Visitors to the website to which the domain name leads (the website for RI) would be led to conclude that the Complainant was supplying the Respondent’s goods illegitimately.
(iii) The Respondent has no rights in the name RUBAROC.
(iv) The Complainant has the right to the domain name because the Respondent did not stick to the terms of the franchise agreement that was made.
(v) The quality of the Respondent’s work before and after the franchise was granted led to complaints. These, and the Respondent’s financial dealings, would damage the name RUBAROC and therefore the Complainant’s interest in the name.
Respondent
I am left to infer from the documentation before me that the Respondent believes he owns exclusive rights in the name RUBAROC, and that the Complainant’s use of the name was only ever to have been on the restricted terms set out in the franchise agreement between RI and Joyce Matthews.

7. Discussion and Findings

General

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
(i) he or she 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.

Complainant’s Rights

Adrian Ayscough seems to have no relevant rights independent of any that may be enjoyed by Joyce Matthews.
Ms Matthews signed a franchise agreement with RI (‘Company’). The agreement provides, among other things, that:
Franchisee shall have no authority to use the ‘marks’ owned by Company except as expressly set forth in this agreement. ‘Marks’ under this agreement shall be defined as any and all trademarkes, service marks, logos, trade dress or other indicea owned or franchised by Company or any of its affiliates or related companies…
The form and manner of use of each mark shall be determined by Company and Franchisee shall submit to Company for approval all proposed uses of the marks including, but not limited to, advertising labels, notices and publicity materials. Franchisee agrees not to use any of the marks for any purpose or in any published or unpublished context without the express written consent of the Company.
The terms of that agreement therefore make it clear that Ms Matthews has no rights in the name RUBAROC itself: she is simply able to use the name in ways prescribed by RI. Of course the terms of the written agreement may not reflect the facts. But there is no other significant evidence of Ms Matthews’ rights being offered.
There is evidence that Wayne Mattthews registered RUBAROC as a community trade mark. But RI contests that registration, and there is no evidence that the recording of Mr Matthews’ ownership of the mark reflects any underlying rights.
The Complainant asserts rights in the name RUBAROC, which (ignoring the domain name suffixes) is identical to the domain name. 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. But it is not clear to me that the Complainant here (whoever that is) has established even that foothold.
If the Complainant cannot establish relevant rights, it is not strictly necessary to consider whether the domain name is an abusive registration (because under the Policy the Complainant is required to prove that both elements are present). But for completeness I have considered that second element.
What I am required to do (under paragraph 16 d of the Procedure), however, is make clear my finding that this dispute is not within the scope of paragraph 2 of the Policy. Having decided that the Complainant does not have the rights that bring the dispute within the scope of the Policy, I must consider whether the complaint has been brought in bad faith. From the evidence before me, I see a business relationship that has turned sour, a Complainant seeking redress for perceived wrongs and a degree of confusion about the basis for proceedings under the Policy. I do not conclude that the Complainant has acted in bad faith in bringing this complaint.

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. The only factor relevant here is where circumstances indicate 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.
The Complainant’s position is essentially that the Respondent’s use of the domain name will lead people to think there is no legitimate connection between the domain name and the Complainant. But that is the reverse of the kind of confusion envisaged in this part of the Policy.
I can take the Complainant’s other arguments in turn.

Respondent’s rights

The Complainant says that the Respondent has no rights in the name RUBAROC. In fact, though, what evidence there is in the papers before me attests to the Respondent’s rights in the name: he has been trading using the name for a number of years, and incorporated a business trading as Rubaroc International. The Respondent evidently does have rights in the name RUBAROC.

Franchise agreement
The Complainant says that the Respondent did not stick to the terms of the franchise agreement that was signed with Joyce Matthews. But there is no material evidence of that and, even if there were, it is not immediately obvious how that is relevant to the question whether the registration of the domain name was abusive.
Damage to the Complainant’s interest in RUBAROC

The Complainant attempts to show that the quality of the Respondent’s work, through RI, and his business and financial history, would damage the name RUBAROC. Conceivably, that might be said to have some bearing on the use of the demain name, and the character of its registration. But the link is tenuous, and has not been established to my satisfaction. In any event, inferring detriment to the Complainant’s rights (caused by damage to the name RUBAROC) assumes the Complainant has relevant rights – and the Complainant has failed to prove that.
In fact both Complainant and Respondent set out to suggest that the business and financial dealings of the other are exceptionable, and that this colours either the character of the Respondent’s registration, or the Complainant’s ability to challenge that registration. The parties have evidently fallen out. But little of the evidence of that falling out bears on the nature of the registration of the domain name.

The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. This includes where, before being informed of the Complainant’s dispute, the Respondent has
(i) used the domain name in connection with a genuine offering of goods or services
(ii) been commonly known by the name…which is identical or similar to the domain name
These appear to fit the present facts perfectly. The Respondent did use the domain name in connection with a genuine offering of goods or services, and traded as Rubaroc International – which is similar to the domain name.
The underlying question remains 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. The Respondent registered the domain name before his commercial relationship with the Complainant began. He used the domain name as part of his business throughout. Even if the Complainant subsequently acquired rights in the name RUBAROC, I conclude that the Respondent’s registration and use of the domain name cannot be said to have taken advantage of or been unfairly detrimental to those rights.

8. Decision

I find that
(i) the Complainant does not have rights in respect of a name which is identical or similar to the domain name (though I do not find that the complaint was brought in bad faith); and that
(ii) even if the Complainant did have such rights, the domain name, in the hands of the Respondent, would not be an abusive registration.
In the light of that, I direct that the registration of the domain name rubaroc.co.uk be left undisturbed.

Mark de Brunner

Date: 20 October 2003