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Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> FTSE International Ltd -v- Brann [2004] DRS 1384 (6 March 2004)
URL: http://www.bailii.org/uk/cases/DRS/2004/1384.html
Cite as: [2004] DRS 1384
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Nominet UK Dispute Resolution Service
DRS 1384
FTSE International Limited -v- Stephen Richard Brann
Decision of Independent Expert
1. Parties:
Complainant: FTSE International Limited
Country: GB
Respondent: Stephen Richard Brann
Country: GB
2. Domain Name:
FTSE.CO.UK
3. Procedural Background:
The Complaint was lodged with Nominet on 11th November 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 14th November 2003 and informed the Respondent that it had 15 days within which to lodge a Response. This date was extended to 15th December 2003, on which date a Response was received. The period for the Complainant to lodge a reply to the Response was, on request from the Complainant, fixed at 5 January 2004, on which date the reply was received.
Mediation was unsuccessful and, on 25th February 2004, the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
David Flint, 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.
4. Outstanding Formal/Procedural Issues (if any):
None
5. The Facts:
Complainant:
The Domain Name in issue is FTSE.CO.UK.
“During the course of 2002, it was discovered that the domain name “ftse.co.uk” had been registered and a website set up at ftse.co.uk. This site was headed “Full Time Self Employed” and “ftse.co.uk.” Below the heading there was a disclaimer and a link to the website www.marketwatch.co.uk (“the Marketwatch Website”) with the comment “For independent information on UK Stocks you can visit Marketwatch.” The Marketwatch Website was marketed as “a new financial service covering UK stocks in exchange traded instruments such as financial futures and currencies” and claimed to “offer in depth commentaries including definitive buy and sell recommendations”, including in relation to “FTSE 350 shares”. Unfortunately no action could be taken via Nominet at that time, as it was a pre-Nominet domain name. The registrant [….] has now acceded to Nominet’s terms and conditions and as a result, [the Complainant is] now in a position to utilise Nominet’s DRS procedure in respect of the domain name.
The Domain Name used by [the Registrant] is identical to the Complainant’s “FTSE” trade mark.
The trade mark “FTSE” is registered in the United Kingdom under Trade Mark No. 2253604 in Classes 16, 35, 36 and 42. The London Stock Exchange plc and the Financial Times plc own the FTSE mark and have licensed it to the Complainant. The Complainant uses the “FTSE” mark in relation to its stock exchange index calculation business. In addition the Complainant is the proprietor, or licensee, of numerous Community and Worldwide Trademark applications and registrations for the identical FTSE mark, which date back to 1995. The Complainant is the owner of the FTSE.com domain name registration which is an active website, the homepage of ftse.com. The Complainant has used the FTSE mark since 1995. The FTSE mark has been used in numerous territories worldwide including, Spain, Germany, France, United States, Hong Kong, Canada and the United Kingdom and as a result, a substantial reputation has been built up. Anyone involved in financial or other services will be aware of the FTSE mark owing primarily to the FTSE 100, FTSE All-Share and FTSE All-World Indexes; all of which are major headline indexes used worldwide by major institutions and are listed daily in the media.”
Respondent:
“The purpose of my registration was and continues to be the lawful use of the domain name in conjunction with other domain names that I have registered and control, to provide a free service relating to the provision of information associated with the financial services industry. My plans to provide this free service, however, have been stymied by FTSE International Limited (hereinafter “the Complainant”); through their on again-off again allegations and their unlawful intimidation, directed at my Internet Service Provider (hereinafter “my ISP”). In the course of these proceedings, the Complainant has failed to make a full and frank disclosure of the evidence, and the Complainant has misstated and otherwise misrepresented the material facts of the case in their attempt to support a frivolous claim. My registration of the domain name pre-dated the Complainants application for UK trademark, No. 2194158 (hereinafter “the trademark”) by nearly 5 years. The Complainant claims intellectual property rights in territories outside the UK, in 1995 (reference USA) and in 1996 (reference Norway), but that trademark is “FT-SE”, which is unlike the domain name and distinct because it refers to the partnership of the “Financial Times”, a Pearson Publication and the London Stock Exchange”, reference the proprietors of the Mark. I would add that I have now taken the decision to pursue an application to invalidate the Complainant’s registered trademark on the grounds that my own use predates theirs and that their application is therefore made in bad faith and should be struck from the record. The trademark [ ], “FTSE”, was applied for on 22 November 2000. However, the Complainant was fully aware of my registration of the domain name and my use of it prior to that date. When I applied for the registration of the domain name, I did so lawfully and in accordance with the rules and procedures in force at the time. The Complainant, if they had been using the Mark as they claim, could have registered the domain name had they chosen to do so, at that time. The domain name was registered and has been held by me for non-commercial purposes. No evidence to the contrary exists. I registered the domain name in good faith. At the time of registration I was unaware of the Complainant’s alleged use of the acronym “FTSE”. In fact the Complainant was not using that acronym at the time of registration of the domain. There evidence indicates they were using it in 2000. No email addresses have been collected from the domain name or from marketwatch.co.uk. The Complainant has provided no evidence to support their untrue claim that email addresses are collected from either. The Complainant alleges that they, along with Pearson plc have formed a joint venture with Marketwatch Limited. The Complainant fails however to provide complete information so that the reader is aware of the fact that the “Marketwatch Limited company” to which they refer is not a UK company. In fact, Marketwatch Limited (company number 03220126), a UK corporation, is the company in which I am the controlling shareholder and responsible director and I can confirm that this corporation is not involved in any joint venture with the Complainant. It is this type of deceptive manipulation of the facts that I will refer to later on, which should disabuse anyone of the legitimacy of the Complainant’s case. These proceedings are the third attempt by the Complainant to obtain the domain name. Their first attempt was in 1996 via their solicitor. In early July 1996 I received a letter from solicitors acting for the Complainant, or its predecessor, in which they alleged that my registration of the domain name was an infringement of their client’s registered trademark; “FT-SE”. In this case, I instructed a solicitor who contacted the Complainant’s solicitor and an agreement was made that allowed my continued lawful use of the domain name, because my use was not and is not an infringement of their registered trademark at that time. In point of fact, the Complainant registered “ftse.com” on 11 July 1996, and my lawful use within the UK of the domain name predated their own use by nearly one year. The distinction must therefore be made that the registered trademark owned by either the Complainant and or its predecessor and or one or more of its associated and or affiliated companies and or partners, at that time was and continues to be “FT-SE”. It is my contention that there exists sufficient distinction between that mark and my use of the domain name. Their trademark at that time is a representation, through an acronym, of the partnership that exists between the London Stock Exchange and the Financial Times. Subsequent to this, the Complainant has removed the hyphen from its registered trademark and endeavoured to establish a new trademark, “FTSE”, which it has done in its own name, without the partnership. This act alone, is a clear attempt by the Complainant to ‘muscle in’ on my own use of the domain name. When added to their continued and regular threats and acts of intimidation (see below), it becomes clear that the Complainant is attempting to re-write history in respect of the original trademark and to establish the new trademark as one-in-the-same, when in fact, my own lawful use of the domain name predated their own use of the new trademark. The second attempt by the Complainant was in early February 2002 through their agent Anna-Maria Moseley ([ ]). On or about 7 February 2002 the Complainant perpetrated a series of unlawful threats and intimidation directed toward my ISP which quickly resulted in all of my domain names being deactivated. This extraordinary and draconian act had the effect of cutting off my ability to send and or receive email from any of my more than 30 accounts. On or about 12 February 2002, through communications with my ISP and the Complainant, I was able to have service to my account restored. In an effort to get service restored to my account, which was having a detrimental effect to my work, and therefore my income, I offered the Complainant free use of the domain name providing it was for non commercial purposes. They declined yet Anna-Maria Moseley specifically requested a disclaimer and link to their own domain name; ftse.com. The Complainant has conveniently failed to mention these prior acts or subsequent agreements and would have us to believe that they only by accident discovered my use of the domain name in 2002—they wrote “During the course of 2002…”. They would have us believe that, as a large UK company, they registered ftse.com in 1996 yet did not check the availability of the .co.uk domain name? They of course did and it was at that time that they began their first attempt at obtaining the domain name. This obvious, though feeble attempt at deception merits sanction in itself. “FT-SE” and or “FTSE” is not a famous name yet the Complainant quotes famous name cases in order to lend support to their complaint. In a recent online Poll, more than 1,000 Internet users were asked whether or not they had ever heard of “footsie” and an overwhelming 72% said they thought it had something to do with the footwear giant Nike. Whilst I do admit that the Complainant has now established their trademark as it relates to financial services, they did so after my own lawful use of the domain name. “
The Respondent continues in this vein for some time but the remainder of the response is not reproduced here.
Complainant – Reply
“The Respondent contends that the purpose of his registration is the lawful use of the domain name to provide a free service relating to the provision of information associated with the financial services industry. The Complainant is not disputing the fact that the Respondent’s Marketwatch Website may be a genuine offering of goods and services. However, as discussed in the complaint, the use of the domain name in question is not connected to the goods and services offered, as is demonstrated by the fact that the name fails to appear in any content on the website, which is predominantly blank page and acts mainly as a link to the Respondent’s Marketwatch Website. The Respondent suggests that he registered the domain name in good faith, as he was unaware of the use of the acronym FTSE at the time of the registration. Indeed he goes onto fortify his claim by stating that the acronym was not in fact being used at the time of the registration. The domain name “ftse.co.uk” was a pre-Nominet registration and as a result, it is not possible for us to determine the effective date of registration. Discussions with Nominet have suggested an approximate registration date of April 1995. Whereas the Respondent himself states that registration occurred in the later part of 1995. In any event, the FTSE All-Share index was first calculated in 1962, the FTSE 100 index has been operating since 1984 and people have been referring to these indices for years. In addition, a list of some of the relevant CTM and worldwide marks either owned by or licensed to the Complainant dating back to 1995 was set out in the complaint. Two of the marks quoted were UK registration Nos. 1525255 and 1536830 for FT-SE. The first of these marks was filed on 27 January 1993 and the latter was filed on 28 May 1993 [ ]. The Respondent contends that the FT-SE marks referred to are distinct and unlike the domain name in question. The Complainant is compelled to disagree. The hyphen is a minor and insignificant differentiation. In any event, the Nominet procedure itself states that a Respondent must submit to proceedings where the Complainant has rights in respect of a name or mark, which is identical or similar to the domain name (paragraph 2(a)(i)). The relevant trade mark rights at the time of the registration and the burgeoning reputation linked to the word show the claim to a good faith registration is flawed. It is also stated by the Respondent that his domain name registration predated the Complainant’s application for UK trade mark No. 2194158 by five years [ ]. We are unsure why the Respondent chose to refer to this mark. The main UK mark referred to in the complaint was registration No. 2253604 “FTSE”. This was registered on 19 October 2001. We made no effort to disguise this and in fact, annexed a Marquesa Search Report to the complaint setting out details of the mark and its relevance is set out below. [ ] The Complainant claimed abusive registration under both paragraphs 1(i) and 1(ii) of the DRS Policy. The Complainant submits that the Respondent was shrewd, noted the established and growing presence of the word and associated companies and completed the registration principally for the purpose of unfairly disrupting the business of the Complainant.”
6. The Parties’ Contentions:
Complainant:
The substance of the Complaint is short and reads as follows: -
The Domain Name used by Mr Brann is identical to the Complainant’s “FTSE” trade mark. The Complainant uses the “FTSE” mark in relation to its stock exchange index calculation business. The Domain Name registration is an abusive registration under the definition of “Abusive Registration” as set out in: • paragraph 1(i) of the DRS Policy because Mr Brann has registered the Domain Name which at the time of registration took unfair advantage and was unfairly detrimental to the Complainant’s rights, and • paragraph 1(ii) of the DRS Policy because Mr Brann is using the Domain Name in a manner, which takes unfair advantage of and is unfairly detrimental to the Complainant’s rights.
Respondent:
“It seems to me that the Complainant is merely attempting to convert any rights that might exist with the old hyphenated trademark, for use in their new trademark, which was created after my lawful use of the domain name. I therefore request that Nominet’s DRS dismiss this complaint.”
7. Discussion and Findings:
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, 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
In this case the first limb of that task is straightforward. The Complainant is the proprietor of rights in the name FTSE. The Domain Names comprise the name FTSE combined with the suffix <.co.uk>.
In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic.
In the opinion of the expert, the word FTSE and FT-SE are to be treated as interchangeable for the purpose of identifying rights. Indeed, although the Respondent makes great play in his response of hyphenated use of the word, the Expert does not consider this to be relevant.
Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark, which is identical or similar to the Domain Name.
Abusive Registration
This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “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.”
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy.
The only potentially relevant ‘factors’ in paragraph 3 a are to be found in subparagraphs i and ii, which read 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.”
The Expert interprets “as” in sub-paragraph i. B as being synonymous with “for the purpose of”. Were it to be interpreted otherwise all domain name registrations would inevitably constitute “blocking registrations” for any later arrival wishing to use the name in question.
The Respondent is in the financial services industry and the Expert does not consider that a participant in such a sector could realistically feign ignorance of the FTSE indices which predated the name in dispute. The reference to an identified online Poll suggesting that “footsie” related to Nike Footwear is not credible. The relevant target would be people in the financial services sector for whom “footsie” could only relate to the Complainant’s indices. Presumably those taking part in the Poll misread “footsie” for “footie”!
The Respondent has offered no explanation (plausible or otherwise) of why he settled on the domain name in dispute rather than any other letter combination. The Expert therefore considers that it must have been in the knowledge of the Complainant’s rights.
The Domain Name is, in the opinion of the expert, not one in which the respondent has Rights, within the meaning of the Policy.
The Expert considers that the registration falls within the provisions of either paragraph (i)(B) or (i)(C) and of (ii) of paragraph 3(a) of the Policy.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered (or re-registered) in a manner which, at the time when the relevant registration or re-registration took place, took unfair advantage of the Complainant’s rights.
8. Decision:
In light of the foregoing findings, the Expert orders the transfer of the Domain Names FTSE.co.uk to the Complainant.
David Flint
Date: 06 March 2004