1498
Nominet UK Dispute Resolution Service
DRS 1498
Farming Online Limited –v- Pipemedia Limited
Decision of Independent Expert
1. Parties
Complainant: Farming Online Limited
Respondent: Pipemedia Limited
2. Domain Names
farming.me.uk (the Domain Name)
3. Procedural Background
The Complaint was lodged with Nominet on 15 January 2004. Nominet validated the Complaint and informed the Respondent on 20 January 2004 that the Dispute Resolution Service (“DRS”) had been invoked and that the Respondent had 15 working days (until 11 February 2004) to submit a Response.
The Response was received by Nominet on 26 January 2004 and sent to the Complainant on 27 January 2004. The Complainant filed a Reply on 2 February 2004, a copy of which was sent to the Respondent the same day. The Informal Mediation stage of the DRS took place but no resolution of the dispute was achieved. The parties were informed accordingly and on 20 February 2004 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to Paragraph 6 of the Nominet DRS Policy ("the Policy”).
On 27 February 2004 Nominet appointed Andrew Clinton (“the Expert”). On 1 March 2004 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 Expert raised a request for documents pursuant to paragraph 13 of the DRS Procedure. Nominet forwarded the request to both parties. On 15 March 2004 the Complainant supplied the documents requested, being a copy of the Contract of Sale of FOL Networks Limited to Fieldstock Limited dated 21 November 2001 and the Certificate of Name Change to Farming Online Limited.
4. The Facts
The Domain Name was registered on 14 February 2002 in the name of the Respondent. The registration was renewed on 11 February 2004.
5. The Parties’ Contentions
5.1. Complaint
The Complaint, so far as is material, reads as follows:-
Until 21 November 2001 the domain name www.farming.co.uk was operated by FOL Networks Limited and hosting services were provided by Pipemedia (Limited?) from September or October 2001. On 21 November 2001 the URLs (including www.farming.co.uk), goodwill, fixed assets, contracts, business information and records that comprised the business of the brand Farming Online were purchase by Fieldstock Limited (later renamed Farming Online Limited on 6 February 2002 - copy of certificate of name change enclosed)). This contract is available for inspection by Nominet if required. At the time of the transfer hosting had been provided by Pipemedia for a few weeks and after some discussions the commercial decision by Farming Online Limited was taken in February 2002 to transfer the domains to another company. At no time did a contract exist between Farming Online Limited and Pipemedia Limited. It should also be noted that Pipemedia did not bid for the business when it was for sale. On 13 February 2002 Farming Online Limited transferred the domain www.farming.co.uk away from Pipemedia. At that time Pipemedia took a number of actions relating to the registration of www.farming.me.uk which we believe to be abusive and were and continue to be an unfair use of a name designed to take business from Farming Online Limited by the use of a similar name:
(a) On 13/14 February Pipemedia Limited registered the domain www.farming.me.uk and proceeded to use this domain to disrupt the business of Farming Online Limited and in a way which has confused customers of Farming Online Limited into believing that the domain name was connected to Farming Online Limited. * On 13/14 February 2002 during the 2 days is took to transfer the domain Pipemedia inserted a message on the site that indicated that FOL Networks had gone into receivership, advising customers to switch to farmin.me.uk, but not mentioning that farming.co.uk still existed (copy enclosed) and as a consequence of this Farming Online Limited issued a legal letter asking for them to take this message down. It should be noted that this message was headed www.farmline.com, which is another URL purchased by Farming Online Limited from FOL Networks on 21 November 2001. * Farming Online Limited requested the transfer of two technical support numbers which was blocked by Pipemedia who continued to use the Farming Online welcome message until Farming Online issues a solicitors letter.
(b) Pipemedia retained the www.farming.co.uk and www.farmline.com domains on their server until instructed to delete them by solicitors’ letter.
(c) During a period of 2 weeks after 13/14 February Pipemedia exacerbated the problem by restricting access to the Farming Online website to customers on the 0845 6020106 dial up number which Pipemedia had blocked the transfer of.
(d) On 14 February 2002 Pipemedia issued an email (copy attached) to all Farming Online customers instructing them to switch emails from farming.co.uk to farming.me.uk. The nature of this email is to appear as though it comes from the owner of the farming.co.uk domain. We have reported the abuse of our database to the Data Protection Registrar (include whatever correspondence we have here). We believe that Pipemedia set up the www.farming.me.uk domain deliberately to unfairly disrupt the business of Farming Online Limited and that many of our customers transferred to farming.me.uk believing that this was part of the Farming Online business. Farming Online Limited have had a great number of customers transfer back once they realised that farming.me.uk bore no relationship to farming.co.uk. Over time it has become clear that this problem continues to do damage to the Farming Online business and we believe it should now be corrected.
5.2. Response
The Response, so far as is material, reads as follows:-
Pipemedia Ltd disputes the complainant's case. Pipemedia was contracted to look after the customers and interests of FOL Networks Ltd. Pipemedia did not contract to Fieldstock Ltd who allegedly purchased the assets of FOL Networks Ltd from the receiver. Fieldstock has never supplied Pipemedia with sales contract or any evidence this exists. Fieldstock Ltd did not pursue the case legally because their company would face huge costs in damages caused by their employees removing servers without permission from the Pipemedia network not to mention the disruption to the customer base. Pipemedia registered farming.me.uk as a generic name that could be used by Farmers and Farming related companies because many Farming customers did not want to use Fieldstock as their ISP. Pipemedia is a well established business ISP who has been trading for over 7 years and many Farmers contacted us concerned that they would be forced to use the new "owners" of FOL. Pipemedia registered the domain name farming.me.uk so that these customers could use Pipemedia's ISP services under a generic name that gave their customers indication to their business type. Therefore, we believe that Pipemedia's registration and ownership of farming.me.uk is not abusive because: 1) The word farming is completely generic. 2) Just because Fieldstock Ltd changed their name to Farming Online Limited, they do not have exclusive rights to the word "Farming". 3) Pipemedia is an ISP and has had farming customers since 1996, much longer than Farming Online Ltd (Fieldstock) 4) There are over 30 other generic names linked with farming on the internet. For example: farming.com (farmers exchange network) farmers.co.uk (search engine operated by the ISP UKIP Ltd) farming.uk.com (The Portal Corporation) 5) There is no customer confusion over this domain. 6) Customers who use farming.me.uk know that Pipemedia Ltd operates this domain, they do so out of choice, they know who Farming Online Limited are and do not wish to move their service over. 7) Most of the time, registrants company names are not the same names as the generic portal names. This is clearly an attempt of Farming Online Limited to acquire another domain name they have absolutely no rights over.
5.3. Reply
The Reply, so far as is material, reads as follows:-
Pipemedia were informed both informally and formally (see Farming Online Limited solicitors letter to Pipemedia) that Farming Online Limited owned the farming.co.uk URL. At no stage did Pipemedia ask for contractual evidence of this.
The key issue is that www.farming.me.uk was deliberately set up to replace farming.co.uk and was marketed to the farming.co.uk database in contravention of data protection legislation. At this stage Pipemedia still had access to the Farming Online Database as they had been providing ISP services to Farming Online Limited since the purchase of the FOL Networks Limited assets.
There has been and remains considerable customer confusion with customers transferring back from farming.me.uk to their original farming.co.uk address confirming that they believed that in transferring to farming.me.uk that they thought they were continuing to deal with Farming Online Limited or were led to believe that Farming Online ceased to exist.
We note that the www.farming.me.uk website is no longer available (copy of latest site content available if required).
We continue to believe that Pipemedia set up the www.farming.me.uk domain deliberately to unfairly disrupt the business of Farming Online Limited.
6. Discussions and findings
Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities: firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
6.1. Complainant’s Rights
The Complainant has supplied a copy of the Agreement for the Sale of a Business dated 21 November 2001 ("the Sale Agreement") between FOL Networks Limited (as Vendor) and Fieldstock Limited (as Purchaser). The Business is defined as the business of a subscription based internet connection and electronic publishing service providing independent management and market information together with internet access to subscribers targeted at professional farmers and larger agribusiness trading under the name "Farming Online". The Assets of the Business purchased by Fieldstock Limited included the domain names www.farming.co.uk and www.farmline.com together with the Customer Database which was defined as the lists (in whatever form held) held by FOL Networks Limited detailing the names and registration details of the users of the two domain names.
The Expert is satisfied that the rights in the domain names www.farming.co.uk and www.farmline.com, the Customer Database and the rights in the name "Farming Online" were all transferred to Fieldstock Limited pursuant to the Agreement. Fieldstock Limited paid consideration for the goodwill and Assets of FOL Networks Limited.
Fieldstock Limited changed its name to Farming Online Limited on 6 February 2002, as is clear from the Certificate from Companies House.
Rights are defined in the Policy as including, but not limited to, rights enforceable under English law.
The Expert is satisfied that the Complainant (Farming Online Limited) has rights in respect of the name "Farming Online" which is similar to the Domain Name.
6.2. Abusive Registration
Abusive Registration is defined in paragraph 1 of the Policy to mean 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.
Non-Exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy 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.
Non-exhaustive factors – paragraph 4 of the Policy
A non-exhaustive list of factors which may be evidence that a Domain Name is not an Abusive Registration is set out in paragraph 4(a) of the Policy as follows:
(i) Before being informed of the Complainant’s dispute the Respondent has:
A. used or made demonstrable 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 or services;
B. been commonly known by the 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.
Discussion
It is common ground that the Respondent provided hosting services to FOL Networks Limited. As stated above, the Expert is satisfied that FOL Networks Limited transferred the rights in the domain names www.farming.co.uk and www.farmline.com to the Complainant (albeit the Agreement was entered into by the Complainant under its previous name of Fieldstock Limited). The Complainant also owns the rights in the name "Farming Online" and the Customer Database which includes the names and registration details of users of the URLs farming.co.uk and farmline.com.
The Complainant's case is that on 13 February 2002 it transferred the domain name www.farming.co.uk away from the Respondent who had, up to that point, continued to provide hosting services in relation to www.farming.co.uk. The Complainant points to a number of actions of the Respondent taken following that transfer, which it says demonstrate that the Domain Name is an Abusive Registration. The main points relied upon are as follows:-
1. The Respondent registered the Domain Name (www.farming.me.uk) on 14 February 2002, one day after the Complainant transferred www.farming.co.uk away from the Respondent.
2. The Respondent had access to the database of customers of FOL Networks Limited ("FOL customers") as it had been providing ISP services to the Complainant after the purchase of the Assets of FOL Networks Limited. That database included the names and registration details of users of the URL farming.co.uk. On 14 February 2002 the Respondent sent an e-mail to the FOL customers (a copy of which is attached to the Complaint).
The e-mail has as it subject header "FOL Networks" and introduces the Respondent as the company that took over Technical Support from FOL Networks Ltd when that company went into receivership.
The e-mail states as follows:-
"To improve the service for this year Pipemedia are pleased to announce:
1) the new Support Number is 0871-575-7575 so technical support is now free for everybody.
2) A new Dial Up number is now in place – 0845-009-1442 – Pipemedia are putting an extra 500 modems in place just for FOL Networks customers. (If you have any problems please call the free Support number 0871-575-7575).
3) Email addresses need to be changed from farming.co.uk to farming.me.uk.
If you have problems please call the free support line 0871-575-7575".
The final paragraph of the e-mail says that "Pipemedia are pleased to support all the FOL Networks customers …."
The Complainant claims this shows that the Domain Name was to replace farming.co.uk and was marketed to the farming.co.uk database, in contravention of data protection legislation.
3. On 19 February 2002 the Respondent sent an e-mail to all farming.me.uk users in the following terms:-
"Dear farming.me.uk user,
Pipemedia are seeking to help the farming community after recent events. Please take a little time to complete the form on our farming.me.uk web site by clicking onto the link below.
This will help us to offer you a more reliable support service until the current situation is resolved.
Regards
farming.me.uk support team"
4. On 12 February 2002 the Respondent put a message up on the website at www.farmline.com (the rights to which were owned by the Complainant) which is headed "Important FOL customer announcement". The message says that FOL Networks has gone into receivership and as such Pipemedia is no longer being paid to provide internet infrastructure services to FOL customers.
The message continues that Pipemedia is prepared to offer full internet services free of charge and invites customers to call a customer care line if they wish to stay with Pipemedia.
5. On 18 February 2002 the Complainant's solicitors wrote to the Respondent pointing out the Complainant was the owner of the domain names www.farming.co.uk and www.farmline.com, certain telephone numbers and customer databases.
The letter complained about the fact that the Respondent had sent e-mails to farmline.com members offering the Respondent's services without consent, the use of a "Farming Online" welcome message on certain telephone numbers, the blocking of other telephone numbers and the fact that the domain names www.farmline.com and www.farming.co.uk remained on the Respondent's server. There is no record of any reply to this letter by the Respondent.
The Respondent says that it did not have a contract with the Complainant, it has not seen evidence that the Complainant (under its previous name of Fieldstock Limited) purchased the assets of FOL Networks Limited and the Complainant did not pursue its case because of the potential of huge damages. The Respondent does not appear to have responded to the letter from the Complainant's Solicitors dated 18 February 2002, challenging the Complainant's title to the assets of FOL Networks Limited. The Respondent does not dispute that it provided hosting services to the Complainant after the date of the Agreement (21 November 2002) until the transfer of www.farming.co.uk to a third party on 13 February 2004, albeit it says there was no contract.
The Respondent says the Domain Name is generic and that it registered the Domain Name as a generic name that could be used by farmers and farming related companies because many farming customers did not want to use Fieldstock as their ISP. It is also said that Pipemedia has had farming customers since 1996, much longer than the Complainant, although no evidence of that has been provided.
The Respondent also says that customers who use the Domain Name know that Pipemedia operate this domain, they do so out of choice, they know who the Complainant is and do not wish to move their service over, i.e. to www.farming.co.uk.
The Complainant, on the other hand, says its customers are confused into believing the Domain Name is connected to the Complainant, many customers did transfer to the Domain Name and a great many have transferred back once they realised the Domain Name bore no relationship to www.farming.co.uk. There is no actual evidence of confusion supplied by the Complainant so the Expert is not able to conclude that the factor set out at paragraph 3aii of the Policy is made out.
An expert under the DRS needs to ensure that he considers the evidence objectively and impartially at all times. It is often a difficult balancing act to weigh up two disputed sets of facts when there is not a huge amount of supporting documentation. However, the DRS is designed to be a relatively quick and cheap alternative to full blown litigation.
On the basis of the submissions and the available evidence the Expert concludes, on the balance of probabilities, that the Domain Name is, in the hands of the Respondent, an Abusive Registration. The Expert has reached this conclusion having had regard, in particular, to the following:-
1. The day after the transfer of the domain name www.farming.co.uk away from the Respondent the Respondent registered the Domain Name.
2. On the day of registration of the Domain Name the Respondent sent an e-mail to the FOL customers which introduces the Respondent as the company who took over Technical Support from FOL Networks Ltd when they went into receivership.
3. The e-mail sent on 14 February 2002 is worded in such a way as to lead FOL Customers to believe that in order to continue with the service e-mail addresses needed to be changed from farming.co.uk to farming.me.uk. There was no attempt to explain in clear language that www.farming.me.uk was a new domain name registered by the Respondent and was unconnected to www.farming.co.uk.
4. The Respondent had access to the database of FOL customers for the purposes of hosting the domain name www.farming.co.uk and, without consent, it has used that database for a different (and arguably inconsistent) purpose, i.e. to market its own services through the Domain Name www.farming.me.uk.
5. The website at the Domain Name is no longer in operation.
6. The actions of the Respondent appear, by reason of their timing, to be more closely connected to the transfer away from the Respondent of the domain name www.farming.co.uk on 13 February 2002 as opposed to the receivership of FOL Networks Limited which happened in November of the previous year. The e-mail of 14 February 2002 and the website announcement refer to the receivership (in fact it was in liquidation) but are silent on the fact that www.farming.co.uk has been transferred away from the Respondent.
7. The print out of the website at www.farming.me.uk as at 20 January 2004 provided by Nominet shows a welcome message addressed to "Dear FOL Users". The message is clearly aimed at customers of FOL Networks Limited, who had become customers of the Complainant following the Agreement.
The Expert finds on the balance of probability that the Domain Name is, in the hands of the Respondent, an Abusive Registration on the grounds that the Respondent acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
The Expert is also of the view that the Domain Name is an Abusive Registration in that it has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights within the meaning of paragraph 1(ii) of the Policy.
The .me.uk Second Level Domain
The Domain Name is a .me.uk Second Level Domain ("SLD") and particular issues arise in that regard as there are specific rules for.me.uk SLDs. The SLD Charter published by Nominet sets out certain intentions. It states that the .me.uk SLD is intended to provide a personal namespace and it is anticipated that the registrants will be natural persons.
However, Nominet operates a first come first served policy in relation to applications to register domain names and they do not vet the applications so as to restrict who may apply for domain names. Nominet does not impose restrictions on the status of the applicant for registration of a .me.uk SLD and it is therefore entirely possible, as in this case, for a limited company to register a .me.uk domain name.
Rule 9.3 states as follows:-
“There shall, without exclusion, be a sufficient demonstration of an abusive registration if the registrant is not a natural person and cannot demonstrate that they registered the domain name with the agreement at the time of a specific natural person, and that the domain name was a reasonably faithful representation of that person's legal name.”
This clearly supports the finding of the Expert that the registration of the Domain Name in this case is an Abusive Registration as the requirements of rule 9.3 are made out and that is sufficient demonstration of Abusive Registration.
The issue that arises for determination is the nature of the relief to grant on the Complaint. The Complainant seeks a transfer of the Domain Name. The Policy allows Experts to cancel, transfer, suspend or otherwise amend a domain name registration.
The Expert in the case of Guinness United Distillers v Vintners BV (DRS 669) felt that to order a transfer of .me.uk SLD to a limited company, without the agreement of a natural person (whose name was a reasonably faithful representation of the domain name) would be ultra vires as it would create an Abusive Registration. The Expert ordered suspension of the domain name in that case.
In the case of DatingDirect.com Limited v Keepmajor Limited (DRS 1022/23/24) the Expert did order a transfer of a .me.uk SLD to a Complainant that was a limited company. The Expert commented that should some natural person emerge with the same name as the domain name that person could secure the transfer of the Domain name to him. The Expert took the view that for a registration to be abusive there must be some party who is able to claim that his rights are being infringed; the abuse cannot exist in abstract.
If the Expert orders suspension of the Domain Name in the present case then the Domain Name will remain suspended for the period of the current registration.
The Expert has come to the view that he should direct a transfer of the Domain Name to the Complainant. This is the remedy sought. This may lead to the Complainant facing a challenge later on that under the rules that relate to .me.uk SLDs the registration is abusive but that is not the case currently before the Expert.
Nominet makes it clear that they do not forbid applications that do not comply with the SLD Charters and they do not impose restrictions on the status of the applicant. The Expert is reluctant to attempt to do so in the context of the DRS.
Decision
The Expert finds that, on the balance of probabilities, the Complainant has rights in a name which is similar to the Domain Name, and that the Domain Name is, in the hands of the Respondent, an Abusive Registration. The Expert directs that the Domain Name be transferred to the Complainant.
Andrew Clinton
Date: 26 March 2004