859
Nominet UK Dispute Resolution Service
DRS 00859
Supply Desk Limited v "Capstan" / Capita Business Services Limited
Decision of Independent Expert
1. PARTIES
Complainant: Supply Desk Limited
Country: GB
Respondent: Capstan / Capita Business Services Limited
Country: GB
2. DOMAIN NAME
supplydesk.co.uk (the "Domain Name")
3. PROCEDURAL BACKGROUND
The complaint was entered on to the Nominet system on 13 February 2003. Nominet validated the complaint on 17 February 2003 and on the same day despatched a copy of the complaint to the Respondent by post to the address recorded in the register entry for the Domain Name. The Respondent was informed that he had 15 days within which to lodge a Response. The Respondent failed to respond and was informed by a letter dated 13 March 2003 and an email of the same date that if the Complainant paid the requisite fees by 27 March 2003 the matter would be referred to an Expert for a decision under the Dispute Resolution Service. On 24 March 2003 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (the "Policy").
I, Stephen Bennett, the undersigned, (the "Expert") have confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and have further confirmed that I know of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.
4. OUTSTANDING FORMAL/PROCEDURAL ISSUES
The Respondent has not submitted any response to Nominet in compliance with paragraph 5a of the procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure").
Paragraph 15b of the Procedure provides, inter alia, that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint."
There is no evidence before the Expert to indicate the presence of exceptional circumstances. Nominet has attempted to communicate the complaint to the Respondent by e?mail and post. The efforts made by Nominet are in accordance with the Procedure and accordingly, I will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.
Paragraph 15c of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure …, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate." I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.
Attached to the Complaint is an exchange of letters between solicitors acting for the Complainant and the Respondent in which the Complainant's solicitors alleged that the Respondent's use of the Domain Name amounts to passing off. These letters have not been verified in the way that the Complaint itself is verified (by signed statement of truth). Whilst I may not therefore be in a position to rely on the letters as evidence of the matters stated in them, they are of some assistance in setting out the respective parties' positions.
5. THE FACTS
The Domain Name, supplydesk.co.uk, was registered on 7 April 2000 with the registrant being named as "Capstan". There is nothing in the Nominet registrant details to indicate that "Capstan" and Capita Business Services Limited are the same entity. However, attached to the Complaint there is an exchange of correspondence (referred to above) relating to the Domain Name which makes it clear that Capita Business Services Limited (trading as "Capita Education Resourcing") is the entity responsible for the Domain Name.
The Respondent, Capita business Services Limited was incorporated on 26 September 1988. It appears from the exchange of correspondence referred to above that the Respondent company's business involves the provision of supply teachers. The address, www.supplydesk.co.uk resolves to a website apparently operated by the Respondent at the address www.capitaers.co.uk. The site at this address contains content related to the Respondent's business in the provision of supply teachers.
Supply Desk Limited, the Complainant, is a company incorporated in England and Wales on 3 March 1999. Its business is the provision of supply teachers and support staff. The Complainant operates a website in connection with this business at the address, www.thesupplydesk.co.uk.
The chronology of events as set out in the Complaint and the copy records supplied by Nominet is as follows.
Chronology
Date Event
26/9/1988 Respondent, Capita Business Services Limited is incorporated
3/3/1999 Complainant, Supply Desk Limited, is incorporated
February/2000 Complainant started to trade
07/04/2000 The Domain Name (supplydesk.co.uk) is registered by the Respondent
22/6/2000 Complainant registered domain name thesupplydesk.co.uk
February/2002 Complainant discovers Respondent has directed the Domain Name to Respondent's website at www.capitaers.co.uk
May 2002 - Exchange of correspondence-direction to Respondent's site temporarily stops then re-commences.
6. THE PARTIES’ CONTENTIONS
Complainant:
The Complainant contends that it has rights in the name "supply desk". The basis for the claim to rights in this name is the use of the name "supply desk" as a trading name. The Complainant asserts no registered trade mark rights.
In relation to the issue of Abusive Registration, the Complainant puts forward a case that the Respondent is using the Domain Name to damage the Complainant's business. The Complainant says that its business and that of the Respondent are in competition. The Complainant states that the Complainant's business was established by a former employee of the Respondent. The Complainant asserts that the abusive nature of the Respondent's registration of the Domain Name is established by the fact that the Respondent registered the Domain Name so shortly after the Complainant had started to trade. The Complainant also asserts that teachers have been confused into thinking that the Complainant and Respondent are connected. No specific evidence is, however, put forward in support of this.
Respondent:
The Respondent has not responded. However, I have been provided with correspondence between the Parties in relation to an earlier allegation of passing off raised by the Complainant in relation to the Respondent's registration and use of the Domain Name. The content of that correspondence is largely irrelevant to this Complaint. The most salient point which may, however, be taken from it is the Respondent's allegation that the name supplydesk is purely descriptive in respect of the Complainant's business of providing supply teachers and support staff.
7. DISCUSSION AND FINDINGS
General
The complaint refers to no documentary evidence to support any of the Complainant's submissions. The complaint is, however, the subject of a declaration signed on behalf of the Complainant stating that the information in the complaint is true to the best of the Complainant's knowledge. Accordingly, I will treat the complaint itself as the Complainant's evidence. That does not mean that the submissions made in the complaint are to be treated as proof, merely that those statements can be weighed to assess the Complainant's case.
Complainant's Rights
The Complainant relies on use of the name "supply desk" as its trading name to establish its rights in that name. The Complainant asserts use of that name since February 2000. It is clear from the correspondence supplied by Nominet in this dispute that the Complainant uses the name "supply desk" as its trading name on business papers. This is also evident from the Complainant's website at www.thesupplydesk.co.uk. This is the type of use which is capable of establishing goodwill and reputation in a name for the purpose of establishing a case in passing off.
The issue in the current case is whether the name "supplydesk" is so descriptive of a business involved in the provision of supply teachers that it could not be distinctive of the Complainant. There is no denying that there is a descriptive element to the name in the use of the word "supply". The word "desk" does however seem slightly odd in this context. It is not clear to me how that word is descriptive of the Complainant's business. Although it does contain a descriptive element, I consider that name "supply desk" could, with sufficient use, be distinctive of the Complainant's business. No details of the amount of the Complainant's use of the name has been provided. However, the Complainant's evidence is that it has been in use since February 2000. It is also used on the Complainant's website and on the Complainant's business papers. This type of use can be sufficient to establish rights in passing off under English law. In this case I find that the Complainant has Rights in the name "supply desk". In coming to this view I have taken note of the principle set out in the DRS appeal decision Seiko UK Limited v Designer Time/Wanderweb (appealing DRS 00248) which stated that "…the requirement to demonstrate "Rights" is not a particularly high threshold test".
Abusive Registration
To be an Abusive Registration the Domain Name must be one which "…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…".
Section 3 of the Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These are as follows:
"3. EVIDENCE OF ABUSIVE REGISTRATION
(a) A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name;
A primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B as a blocking registration against a name or mark in which the Complainant has Rights; or
C primarily for the purpose of unfairly disrupting the business of the Complainant.
(ii) 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;
(iii) 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; or
(iv) It is independently verified that the Respondent has given false contact details to us.
(b) Failure on the Respondent's part to use the Domain Name for the purposes of email or a web-site is not in itself evidence that the Domain Name is an Abusive Registration."
Although the Complainant does not specifically identify the provisions upon which it relies to establish Abusive Registration, the nature of the Complainant's allegations are that the Respondent has acted so as to interfere with the Complainant's business and, in doing so, to benefit the Respondent's business. The Complainant relies on an allegation that the Respondent's actions are motivated by spite - it is claimed that the former managing director of the Complainant was a former employee of the Respondent. The Complainant asserts that it is not merely coincidence that the Domain Name was registered by the respondent within two months of the Complainant starting to trade under the "supply desk". The Complainant also asserts that that the use of the Domain Name is abusive. The Domain Name resolves to the Complainant's website which also provides services relating to supply teachers.
Whilst there is no need to fit the Abusive Registration allegation under any particular head of the non-exhaustive list of factors under paragraph 3 of the Policy, it appears the Complainant makes it case under paragraphs 3(a)(i)C (registration primarily for the purpose of unfairly disrupting the business of the Complainant) and 3(a)(ii) (circumstances indicating use 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).
There is scant support for either allegation. The complaint is very brief and the only other material supplied is the exchange of letters between the Parties' solicitors. On the issue of the purpose of the Respondent's registration of the Domain Name, the only support is the close timing of the Complainant's launch of its business and the registration of the Domain Name by the respondent (within 2 months). On the issue of the Respondent's use, it is evident that the address www.supplydesk.co.uk resolves to the Respondent's website at www.capitaers.co.uk. It is also evident that the Parties operate in the same field of business. No evidence of confusion is offered other than a statement in the complaint that there has been confusion.
I am not satisfied that the Domain Name was registered primarily for the purpose of unfairly disrupting the Complainant's business. There is nothing in the way of evidence submitted to support this and, given the short period of trading by the Complainant at that stage, the registration could credibly have been for a purpose other than that specified in paragraph 3(a)(i) C.
On the issue of the Respondent's use of the Domain Name, there is a little more evidence. There is a statement, verified by a statement of truth, that there has been confusion. Without supporting material, that evidence is very thin. It is, however, clear that the Respondent has continued to use the Domain Name to direct business to its website after having been informed of the Complainant's prior use of the name in the exchange of correspondence referred to above. Further, it is also clear that the Parties operate in the same field of business so confusion is a possibility. Were this complaint contested, I would, have serious doubts about whether the evidence is sufficient. As there is no response from the Respondent, however, that evidence has not been challenged. I am also allowed to make appropriate inferences from the Respondent's lack of response. On this basis, I find that the Domain Name is an Abusive Registration in the hands of the Respondent.
8. DECISION
The Complainant has Rights in the name supply desk. The Domain Name in the hands of the Respondent is an Abusive Registration.
The Complainant's request for a transfer of the Domain Name is granted.
Stephen Bennett
Date: 14 April 2003