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Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Flowers Direct Online Ltd -v- Calvert [2003] DRS 610 (20 January 2003)
URL: http://www.bailii.org/uk/cases/DRS/2003/610.html
Cite as: [2003] DRS 610
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Nominet UK Dispute Resolution Services
DRS 00610
Flowers Direct Online Ltd and Peter Calvert
Decision of Independent Expert
1. Parties
Complainant: Flowers Direct Online Ltd
Respondent: Peter Calvert
www.flowersdirectuk.co.uk (the “Domain Name”)
3. Procedural Background
The complaint was lodged by the Complainant on 10 September 2002 and received in full by Nominet on 16 September 2002. On 11 November 2002 Nominet validated and notified the Respondent of the complaint stating that a response was due within 15 days. On 2 December 2002 Nominet received the response from the Respondent which was forwarded to the Complainant on 3 December 2002. Nominet did not receive a reply and initiated mediation procedure. Nominet generated mediation documents on 18 December 2002.
On 27 December 2002 Nominet received the fee for an Expert’s decision pursuant to paragraph 8 of the Nominet Dispute Resolution Service Procedure (the “Procedure”) and a letter of approval to forward the case to the independent expert from the Complainant on 27 December 2002.
On 6 January 2003 Richard Kemp, the undersigned (the “Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew 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. The appointment date for the Expert is 6 January 2003 and the deadline for the decision is set at 20 January 2003.
4. Outstanding Formal/Procedural Issues (if any)
There are no outstanding formal or procedural issues.
5. The Facts
The Domain Name, The Respondent, Flowers Direct and Company Number 3368265 (Flowers Direct Limited)
5.1 The Domain Name is currently registered in the name of the Respondent.
5.2 The Respondent’s solicitor, Mr James A Smith, responded on 28 November 2002 to the complaint. His response enclosed certain documents, from which the Expert understands that the Respondent has traded under the name ‘Flowers Direct’ for a number of years. The Expert has seen a copy of the Certificate of Registration under the Business Names Act 1985 showing that the name ‘Flowers Direct’ is a business name owned by the Respondent and that the Registration was made under Business Name Registration number 2238734 and is expressed to be valid to 12th June 2003.
5.3 The Expert has seen a copy of the Nominet Registration Certificate for the Domain Name in the name of Flowers Direct which is expressed to be valid for two years expiring on 1 July 1999.
5.4 The Expert understands that the Domain Name was one of a number of similar but not identical domain names that were registered in the name of the Respondent or his business Flowers Direct. The Expert is not in this Decision considering domain names other than the Domain Name, but draws attention to the other domain names in order to avoid confusion.
5.5 The Expert understands that the Respondent also had a company called Flowers Direct Limited. From the publicly available records at Companies House, Flowers Direct Limited was incorporated on 9 May 1997 under number 3368265. The most recent annual return of Flowers Direct Limited at Companies House is dated 27 June 2000. It shows the Respondent at that time to have been the majority shareholder and a director of Flowers Direct Limited.
5.6 The Expert has seen a copy of a certified copy of an assets sale agreement dated 24 May 2001 between Flowers Direct Limited (in Administrative Receivership) as vendor and Talking Flowers (UK) Limited trading as Talking Flowers as purchaser. From the recitals to that agreement, it appears that Flowers Direct Limited went into administrative receivership on 5 April 2001.
5.7 Under that agreement, the administrative receiver as vendor was expressed to have sold to the purchaser its right, title and interest in a number of listed domain names. The domain names concerned are listed at Schedule 2. There are eleven of them but they do not include the Domain Name.
The Complainant, Company Number 4249814 and Company Number 4018423 (Talking Flowers (UK) Limited trading as Talking Flowers)
5.8 The Complainant was incorporated under company number 4249814. According to its notepaper, its registered office address is at stated at Section 1 (Parties) of this decision.
5.9 In the complaint, the Complainant states:
‘when … ‘flowers direct ltd’ went into receivership I, as the sole buyer of the assets, should be in possession of all assets’.
The Expert is not clear who the ‘I’ referred to in that statement is.
5.10 The Complaint is made in the name of the Complainant, company number 4249814. From the copy of the certified copy of the agreement referred to at paragraph 5.6 above, it appears that the purchaser was not the Complainant but company number 4018423 and that the agreement was signed on behalf of the purchaser by Mr Ian Rawlins as company director of company number 4018423.
From the publicly available information at Companies House, it appears that company number 4018423 was incorporated on 21 June 2000 and dissolved on 9 April 2002 and that its sole shareholder was Mr Ian Rawlins.
From the public information at Companies House, it also appears that the majority shareholder and a director of the Complainant is Mr Ian Rawlins. We believe that company number 4249814, the Complainant, and company number 4018423 are connected in that the ‘guiding light’ of each is Mr Ian Rawlins.
The Expert believes that in referring to ‘I’ in the Complainant’s complaint, Mr Rawlins, who appears to have signed the complaint for the Complainant, was in fact referring to himself in his personal capacity rather than in his capacity for the Complainant. The Expert believes it is likely that this statement is incorrect and that the purchaser of the assets was not Mr Rawlins personally but company number 4018423.
5.11 The Expert has not independently verified that the copy that we have seen of the agreement referred to in paragraph 5.6 is itself a certified copy. The Expert does not find that the Complainant’s complaint has been presented in bad faith or that the Complainant is in breach of the declaration he made when signing the complaint that the information in it was to the best of the signatory’s knowledge true and complete. The Complainant has not been independently legally represented and the Expert believes he should be reluctant to find the complaint invalid on this ground alone in these circumstances. Accordingly, the Expert does not find the complaint to be invalid. The Expert would invite the Complainant to in any future dealings with Nominet involving this or any similar declaration to consider carefully before making that declaration. However, the Expert believes it is likely that the statement in the Complaint quoted above at paragraph 5.9 is not correct.
5.12 The Expert has seen a copy of a large bible of contractual and related documents headed ‘Flowers Direct Limited’ and ‘Investment and Subscription for Shares in Flowers Direct Limited and marked ‘Date of Exchange 10.11.2000’. This documentation was sent to Nominet under covering letter dated 30 September 2002 by the Administrative Receiver of Flowers Direct Limited, company number 3368265 (the same person who signed the agreement referred to in paragraph 5.6 above for the vendor). The Expert notes that the Administrative Receiver states:
‘I would advise you that this contract was never completed and as such I am unsure as to how useful this information is’.
As a result, we do not find all the information in that bible of documents (which accounts for a large part of Nominet’s file as sent to me) to be particularly persuasive.
6 The Parties Contentions
Complainant:
The Complainant’s contentions are summarised as follows:-
6.1 The Domain Name is identical or similar to a name or mark in which the Complainant has rights.
6.2 The Domain Name in the hands of the Respondent is an abusive registration because it has been used in a manner which was unfairly detrimental to the Complainant’s rights.
6.3 The registration of the Domain Name and the way in which the Respondent used the Domain Name has confused people and businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
6.4 Before it became insolvent, company number 3368265 (Flowers Direct Limited) entered, on 10 November 2000, into a loan agreement which was secured on the Respondent’s assets. The Domain Name was part of the intellectual property assets referred to in the loan agreement.
6.5 The registration of the change of ownership of the domain names was not immediate. However, in due course the registration of the domain names was amended. In summer 2001 registration of the Domain Name was transferred from the name of the Respondent to company number 3368265 (Flowers Direct Limited). Due to an oversight Nominet was not informed that the ownership tag should have changed.
6.6 When company number 3368265 (Flowers Direct Limited) went into receivership the Complainant as the sole purchaser of the Company’s assets expected to receive the Domain Name as part of the intellectual property assets.
6.7 The Complainant submitted a report from an Internet auction on eBay where the Domain Name is include in the assets of company number 3368265 (Flowers Direct Limited).
6.8 The Complainant contends that the Respondent is in direct competition with the Respondent and is using the Domain Name and a patented logo that he has wrongfully re-registered.
6.9 Accordingly the Domain Name registration is without question an abusive registration.
Respondent:
6.10 The Respondent admits using the Domain Name with the consent of the Administrative Receiver of the Company.
6.11 The Respondent contends that the Domain Name belongs to and is the property of the Respondent personally who had licensed its use by the Company.
6.12 The Respondent denies that the Domain Name in dispute is identical or similar to a name or mark in which the Complainant has any rights.
6.13 The Respondent denies having caused or contributed to any confusion by the usage of the Domain Name. The Respondent contends that such confusion has arisen solely by reason of the Complaint changing their trading name from ‘Talking Flowers’ to ‘Flowers Direct’.
6.14 The Respondent has traded as ‘Flowers Direct’ since 1993 and such name was registered with the Registrar of Business names on 21 November 1998 and a copy righted logo was applied for on 5 September 1997 and formal registration without objection made on the 21 November 1999.
6.15 The Respondent contends that there was no requirement to surrender the Domain Name to the Receivers of the Company in receivership as it was his personal property.
6.16 The Respondent contends that if the Domain Name had intended to be transferred from the Respondent to the Company then that transfer would have been registered with Nominet. No such registration took place.
6.17 The Respondent denies that in offering company number 3368265 (Flowers Direct Limited) for sale in January 2000 and in March 2001 that the Respondent was in any way acknowledging that that company was the owner of the Domain Name.
6.18 The Respondent admits that the Complainant is a competitor of the Respondent and is the subject of a passing off claim made on behalf of the Registrar of Business names.
6.19 The Domain Name claimed by the Complainant is not included in the Agreement made between the Administrative Receiver of company number 3368265 (Flowers Direct Limited) and the Complainant.
6.20 The Complainant is not entitled in any event to have the Respondent site suspended thereby denying the Respondent the use of the web for his legitimate business and thereby removing the Respondent as a competitor to the business of the Complainant.
6.21 The Respondent denies that the Complainant is entitled to have the Domain Name suspended and to have any other remedy.
7 Discussion and Findings:
General
Under paragraph 2 of the Nominet UK Dispute Resolution Policy (the “Policy”) the Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts that:-
(i) the Complainant has Rights in respect of a name which is identical or similar to the Domain Name; and
(ii) the Domain Name in the hands of the Respondent, is an Abusive Registration.
“Rights” and “Abusive Registration” are defined in paragraph 1 of the Policy.
The Complainant does make these assertions in the Complaint. The Expert therefore finds that the Respondent must submit to these proceedings.
Burden of Proof
The Complainant must prove both elements (i) and (ii) above on the balance of probabilities to succeed in its complaint.
Complainant’s Rights
“Rights” for the purposes of the Policy, “includes, but is not limited to, rights enforceable under English Law”. The Policy also provides that “a Complaint will unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”.
When assessing whether the Complainant has Rights in an identical or similar name to the Domain Name, the first and second level suffixes of the Domain Name, being generic should be discounted.
The questions are therefore (a) whether the Complainant has Rights in the name “flowersdirectuk” and (b) if so, whether the Complainant can rely on such Rights in these proceedings.
From the flowersdirect.co.uk website, the business of the Complainants is described as selling flowers and gifts to customers over the internet. It follows that the Expert finds that ‘flowersdirectuk’ is not wholly descriptive of the Complainant’s business.
The Complainant appears to be connected through Mr Ian Rawlins to company number 4018423 (Talking Flowers (UK) Limited trading as Talking Flowers), the purchaser under the agreement referred to at paragraph 5.6 above of a number of domain names similar to but not identical with the Domain Name.
The Expert finds that on the balance of probabilities the Complainant has rights in a name similar to the Domain Name which may be relied upon in these proceedings.
Abusive Registration
An “Abusive Registration”, for the purposes of this Policy is “a Domain Name which either:-
(i) was registered or otherwise acquired in 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 provides non-exhaustive lists of factors which may be evidence that a domain name is an Abusive Registration (at paragraph 3 of the Policy) and factors which may be evidence that the Domain Name is not an Abusive Registration (at paragraph 4).
Paragraph 3 (a)(ii) of the Policy sets out one of the non-exhaustive list of factors pointing towards an Abusive Registration as “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”.
Paragraph 4(a)(i) and (ii) sets out the list of non-exhaustive factors point away from an Abusive Registration factors including the following:
“i. Before being informed of the Complainant’s dispute the Respondent has:
A. used or made demonstrated preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods and services;
B. been commonly known by name or legitimately connected with a mark which is identical or similar to the Domain Name;
C. made legitimate non-commercial or fair use of the Domain Name; or
ii. the Domain Name is generic or descriptive and the Respondent is making fair use of it”.
The Expert finds as follows:-
1. On the balance of probabilities the Complainant has rights in a name similar to the Domain Name which may be relied upon in these proceedings.
2. the Complainant must then demonstrate that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
3. The Complainant submitted in his complaint to Nominet that the Respondent ‘is using the Domain Name in a way which has confused people or business into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected to the Complainant’.
4. The Complainant has not shown in its complaint evidence of actual confusion leading to a belief that the Domain Name is operated or authorised by or otherwise connected with the Complainant (within Paragraph 3(a)(ii) of the Policy).
5. The list of factors at Paragraph 3 of the Policy is expressly stated to be non-exhaustive. The Expert believes that reliance on factors not included in the non-exhaustive list of factors should be made sparingly.
6. The Complainant seeks to demonstrate that through a number of agreements and contractual steps the Respondent was under some sort of enforceable duty to transfer the Domain Name to the Complainant.
7. The Expert decides a complaint on the basis of the Parties’ submissions, the Policy and the Procedure (within paragraph 16(a) of the procedure for the conduct of proceedings under the Dispute Resolution Service) and as such does not decide on matters beyond those outlined in the Policy and Procedure.
8. It may be that the Complainant has rights of redress against the Respondent based in contract or on other rights. It is open to the Complainant to pursue any such claims it believes it may have through as it chooses. The Expert expresses no views otherwise than in relation to the Parties’ submissions, the Policy and the Procedure. The Expert is not in a position to adjudicate on the registration, legal of otherwise of a domain name, neither is the expert’s decision the appropriate forum in which to decide issues as to whether or not encumbrances, charges or other interests subsist over domain names.
9. Accordingly, the Expert finds that the Complainant has failed to show on the balance of probabilities that the Domain Name in the hands of the Respondent is an Abusive Registration.
10. The Expert finds that the Respondent has used the Domain Name or a domain name which is similar to the Domain Name in connection with a genuine offering of goods and services (within paragraph 4(a)(i)(A) of the Policy) and that the Respondent has been commonly known by the name which is similar to the Domain Names (within paragraph 4(a)(i)(B) of the Policy).
8. Decision:
The Expert finds on the balance of probabilities that the Complainant has Rights in a name which is similar to the Domain Name but that the Complainant has not shown that in the hands of the Respondent is an Abusive Registration. The Expert therefore denies the Complainant’s requested remedy of the suspension of use of the Domain Name.
Richard Kemp
20 January 2003