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Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Simply Energy Ltd -v- Uswitch Ltd [2003] DRS 1057 (30 September 2003)
URL: http://www.bailii.org/uk/cases/DRS/2003/1057.html
Cite as: [2003] DRS 1057
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Nominet UK Dispute Resolution Service
DRS 01057
SIMPLY ENERGY LTD -v- USWITCH LTD
Decision of Independent Expert
1. Parties:
Complainant: Simply Energy Ltd
Country: GB
Respondent: uSwitch Ltd
Country: GB
2. Domain Name:
simply-energy.co.uk (“the Domain Name”)
3. Procedural Background:
3.1 The complaint was entered into Nominet’s system on 16 June 2003. Nominet validated the complaint and sent notification to the Respondent on 19 June 2003, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 working days (until 10 July 2003) to submit a Response. The Response was received on 9 July 2003. On 15 July 2003 a Reply was filed by the Complainant. Informal mediation did not result in an agreed settlement in this dispute and on 29 August 2003 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 10 September 2003.
3.2 On 10 September 2003 Nominet invited me to provide a decision in this case. When I received the invitation on 15 September 2003 I informed Nominet that although I was able and willing to provide an expert decision in this dispute, I had used the services of the Respondent to 'shop around' for domestic gas/electricity suppliers. Whilst I did not and do not consider that this would give rise to any conflict of interest or partiality on my part, I asked that the parties be informed of this fact and be given an opportunity to request an alternative expert. Neither party raised an objection and I was appointed with effect from 17 September 2003.
4. Outstanding Formal/Procedural Issues:
None.
5. The Facts:
5.1 From the one page Company Information sheet with which I have been provided, I note that the Complainant is a UK registered private limited company (Company No. 04430068) which was incorporated on 2nd May 2002.
5.2 From its web site at www.simplyenergy.com, referred to in the complaint, the Complainant operates a fuel price comparison web site which allows consumers to ‘shop around’ for the best gas and electricity prices. I have not been told how long the Complainant has traded.
5.3 From the one page Company Information sheet with which I have been provided, I note that the Respondent is a UK registered private limited company (Company No. 03612689) which was incorporated on 10th August 1998.
5.4 From its web site at www.uswitch.com the Respondent also operates (amongst other services) a fuel price comparison web site which allows consumers to ‘shop around’ for the best gas and electricity prices. Again, I have not been told how long the Respondent’s site has been up and running.
5.5 The Nominet WHOIS search with which I have been provided shows that the Domain Name was registered by the Respondent on 9th April 2003.
5.6 The web site accessible by reference to the URL http://www.simply-energy.co.uk is rudimentary. It is a single page (none of the hyperlinks on the page are linked to other pages stored by reference to the Domain Name) with a green-and-orange-on-grey colour scheme. Prominent features include the heading “Simply-energy.co.uk”, the text “Simply here to provide you with up-to-date information on gas & electricity at home. Simply-energy will help you to switch gas & electricity providers – simply and easily...” and two instances of the following logo:
5.7 Although this is not immediately apparent from the text appearing on the page, 5 out of the 9 hyperlinks on the page are to pages on the Respondent’s uswitch.com domain, and 2 are to businesses associated with the Respondent. The remaining 2 are to Energywatch and Friends of the Earth.
6. The Parties’ Contentions:
6.1 The parties’ submissions are terse and diametrically opposed.
The Complaint:
6.2 The Complainant requests that the Domain Name be transferred to it on the basis of the following submissions:
“I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.
I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.
Simply Energy and Uswitch are competing businesses offering very similar products in the UK. Uswitch have registered the domain name Simply-Energy.co.uk and anyone looking to use that link is directed straight to a Uswitch web page. We have been aware of this only in the last few days. The names simplyenergy.co.uk and simplyenergy.com are registered to us at Simply Energy Ltd”
The Response:
6.3 The Response was as follows:
“uSwitch Ltd believes that the use of the domain name simply-energy.co.uk is not an Abusive Registration for the reasons set out below:
1. The domain name is being used to offer customers a service that provides information about gas and electricity and provides links to relevant websites.
2. The domain name is a descriptive and generic one, which describes fairly and accurately the service provided on the site.”
The Reply:
6.4 The Reply was as follows:
“1. The domain name has been registered solely to re route potential customers of Simply Energy Ltd to a competitor Uswitch. It is therefore clearly a case of using the domain name to enable Uswitch to pass off as Simply Energy.
2. The domain name is not generic as there is a competitor business called Simply Energy Ltd and the domain name simplyenergy.com is owned by it.”
7. Discussion and Findings:
What the Complainant must establish
7.1 Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove 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
7.2 “Rights” are defined in paragraph 1 of the Policy as including, but not being limited to, “rights enforceable under English law”. The Complainant does not rely on registered trade mark rights in the designation “simply energy”; the Complaint and Reply suggest that the Rights relied upon are the goodwill generated through the registration and use of the domain names simplyenergy.com and simplyenergy.co.uk.
7.3 The web page currently accessible under the URL http://www.simplyenergy.co.uk is blank and the domain name simplyenergy.co.uk is not presently registered in the name of the Complainant. I am accordingly unable to place any reliance upon the asserted use of the .co.uk domain name.
7.4 By contrast, the domain name simplyenergy.com is in use by the Complainant and has been registered in the name of the Complainant since 15th August 2002. But how long has the Complainant operated the relevant web site? Rather than require the Complainant to file further evidence, I have looked at the website in question and drawn such inferences as seem reasonable, bearing in mind that the Complainant bears the burden of proof, has chosen not to adduce evidence on this point and is therefore not entitled to the benefit of the doubt. The mere fact that the company was registered in May 2002 and the domain name simplyenergy.com was registered in August 2002 does not mean that trading started from either of those dates. The copyright notice on the web site is dated 2002 and Press Releases on the site date from 6th January 2003 (http://www.simplyenergy.com/newstopic.asp?id=11). In the circumstances I am only prepared to infer that that the web site has been in operation since the end of the year 2002.
7.5 I have been guided by the following considerations in determining whether or not this period of use is sufficient to have given rise to the “Rights” required under the Policy:
· The observation of the Nominet DRS appeal panel in Case DRS 00248 SEIKO UK LIMITED -v- DESIGNER TIME/WANDERWEB that “the requirement to demonstrate ‘rights’ is not a particularly high threshold test”;
· The fact that in a fast-moving online market with a small number of players it is possible to build up significant reputation and goodwill in a relatively short period of time;
· That the term “simply energy” is not “wholly descriptive of the Complainant's business” (such terms are excluded from the ambit of “Rights” in paragraph 1 of the Policy) as the Complainant does not supply energy itself and any allusion to the fact that the Complainant’s business is concerned simply with comparing energy suppliers’ prices is too oblique in my view to be considered wholly descriptive;
· The Respondent’s failure to challenge the Complainant’s asserted ownership of “Rights” (when the Response refers to the Domain Name being “descriptive and generic” that is in the context of Abusive Registration and paragraph 4(a)(ii) of the Policy which will be considered below);
· The Respondent’s failure to challenge the Complainant’s allegation that the latter has operated and continues to operate a business in competition with the Respondent’s business under and by reference to the term SIMPLY ENERGY.
7.6 On balance I have concluded that the threshold requirement for “Rights” is satisfied on the basis of the Complainant’s use on the simplyenergy.com web site in the first half of the year 2003.
7.7 I am further satisfied that the name SIMPLY ENERGY is identical to the Domain Name, aside from the hyphenation and the first and second level suffixes.
Abusive Registration
7.8 Neither party has explicitly referred to any paragraph of the Policy in its Complaint, but I consider that paragraphs 3(a)(i)(B), 3(a)(i)(C), 3(a)(iii), 4(a)(i)(A) and 4(a)(ii) of the Policy are potentially engaged in this case:
· Under paragraph 3(a)(i)(B), it is indicative of Abusive Registration if the Respondent has registered or otherwise acquired the Domain Name as a blocking registration against a name or mark in which the Complainant has Rights.
· Under paragraph 3(a)(i)(C), it is indicative of Abusive Registration if the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
· Under paragraph 3(a)(iii) of the Policy, it is indicative of Abusive Registration if, 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.
· Under paragraph 4(a)(i)(A) of the Policy, it is indicative of non-Abusive Registration if, before being informed of the Complainant’s dispute, the Respondent has used or made demonstrable preparations to use the Domain Name … in connection with a genuine offering of goods or services.
· Under paragraph 4(a)(ii) of the Policy, it is indicative of non-Abusive Registration if the Domain Name is generic or descriptive and the Respondent is making fair use of it.
7.9 On the materials before me I can find no alternative explanation for the Respondent’s registration and use of the Domain Name, other than to provide a ‘blocking’ registration or a means of diverting potential business away from the Complainant to the Respondent. This conclusion is consistent with all observable facts:
· The Domain Name was registered several months after the Complainant commenced business in competition with the Respondent, and it is improbable that the Respondent was unaware of the Complainant’s existence;
· At that time the Respondent already had a very popular brand ‘uSwitch’ with its own well-established web site. There was no obvious need for the creation of a spin-off site under separate branding;
· I do not know when the Respondent’s “Simply-Energy” site was first created or published, but the Complainant’s contention that at the date of the Complaint in June 2003 the Domain Name was “directed straight to a Uswitch web page” suggests to me that the site may have been added relatively recently;
· The site published under the Domain Name is a token ‘fig leaf’ – a single page offering little more than a general endorsement of the uSwitch site and various links to pages on the uswitch.com website;
· Despite being wholly owned and operated by the Respondent the site http://www.simply-energy.co.uk seeks to give the impression that it is run by an independent entity, through the use of a separate (though fairly basic) “Simply-Energy” logo and branding;
· The most prominent text on the site reads as follows: “Simply here to provide you with up-to-date information on gas & electricity at home. Simply-energy will help you to switch gas & electricity providers – simply and easily...”. Not only is this potentially misleading (uSwitch.com will help you switch gas & electricity providers, Simply-energy will do no more than forward you to that site), but I found it difficult to read this text as anything other than an over-zealous attempt by the Respondent to ‘genericise’ the trading name of its competitor, the Complainant;
· In the circumstances I am not satisfied that the Respondent’s http://www.simply-energy.co.uk site is a genuine offering of goods or services or fair use of the Domain Name;
· In the latter stages of writing this Decision I came across another Nominet DRS Decision involving the Respondent, DRS 01055 Saveonyourbills Ltd –v- Uswitch Ltd. Whilst not necessarily demonstrating that “the Respondent is engaged in a pattern of making Abusive Registrations” [para 3(a)(iii) of the Policy], it is relevant in my view that in that earlier DRS Decision it was adjudged that the Respondent had knowingly and abusively registered a domain name corresponding to the name of one of its close competitors, which it had set up to forward to the uSwitch website.
7.10 On the basis of my conclusions above I consider that, on the balance of probabilities, the Domain Name was registered and has been used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights. Accordingly I conclude that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
8. Decision:
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, simply-energy.co.uk, should be transferred to the Complainant.
Philip Roberts
Date: 30 September 2003