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URL: http://www.bailii.org/uk/cases/DRS/2004/1508.html
Cite as: [2004] DRS 1508

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Nominet UK Dispute Resolution Service

DRS 1508

The Institute of Groundsmanship -v- Pitchcare.com Limited

Decision of Independent Expert

1. Parties:

Complainant: The Institute of Groundsmanship
Country: GB

Respondent: Pitchcare.com Limited
Country: GB

2. Domain Name:

groundsman-magazine.co.uk ("the Domain Name")

3. Procedural Background:

The Complaint was received in full by Nominet on 21 January 2004. Nominet validated the Complaint and sent a copy to the Respondent on 26 January 2004.

A Response was filed by the Respondent on 13 February 2004 and a copy sent to the Complainant on the same day.

No Reply was filed by the Complainant.

On 22 March 2004 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as the Expert with effect from 29 March 2004.

4. The Facts:

The Complainant has published a monthly magazine called "The Groundsman" since 1952.

The Respondent registered the Domain Name on 20 July 2001.

5. The Parties' Contentions:

Complainant:

In summary, the Complainant's submissions are as follows:

1. The Complainant has rights in a name and trade mark which is identical or similar to the Domain Name:

(1) The Complainant has published a monthly magazine since 1948, and from March 1952 to the present day this has been called "The Groundsman".

(2) The members of the Institute of Groundsmanship ("IOG") are professional groundsmen working for sports clubs, local authorities and the like. Around 50% of them are believed to be members of the IOG. The Groundsman is sent to all members of the IOG each month and is also sold to subscribers, such as local authorities. Additional copies are distributed for publicity purposes. The average circulation is 5,700 copies per month.

(3) Over a period of more than 50 years, the Complainant has built up a reputation in The Groundsman, which is known universally through the industry as the magazine of the IOG.

(4) The Domain Name is similar to the name "The Groundsman".

2. The Domain Name is an Abusive Registration in the hands of the Respondent:

(1) As well as the Domain Name, the Respondent has also registered a number of other domain names, including bigga.info, stri.info and iog.info. BIGGA is an acronym for the British and International Golf Greenkeepers Association, which has its own website at www.bigga.org.uk. STRI is an acronym for the Sports Turf Research Institute which has its own website at www.stri.co.uk. IOG is an acronym for the Institute of Groundsmanship (i.e. the Complainant). The Complainant has a website at iog.org.uk, which includes a section for its magazine, The Groundsman.

(2) The Respondent uses the Domain Name to direct enquiries to its own website at www.pitchcare.com. It does not maintain a website at www.groundsman-magazine.co.uk, or at any of the other domain names mentioned above. The Respondent's website at www.pitchcare.com contains a members' section and a magazine section as well as advertising. The magazine section is not called "Groundsman", but "Pitchcare". In an article in its members' section, the Respondent refers to The Groundsman as the magazine of the Complainant.

(3) The Respondent only makes use of the Domain Name in order to re-direct enquiries to the magazine section of its own website. At that point enquirers are told that in order to read the magazine they have to become a member of Pitchcare. This is taking unfair advantage of the name The Groundsman, as it suggests that in order to read The Groundsman one has to be a member of Pitchcare. It is also unfairly detrimental to the Complainant which is not able to use a name closely connected with its activities to direct enquiries to its own website. The Respondent is not making fair commercial use of the Domain Name.

Respondent:

A summary of the Respondent's submissions is as follows:
(1) Pitchcare is an online magazine for groundsmen and greenkeepers. It is aimed at providing an online information and resource service for the sports turf industry. The magazine offers free subscription to groundsmen, greenkeepers and other persons interested in sports turf maintenance, and carries relevant articles, advice and press releases relating to the industry, including those supplied by the Complainant.

(2) The Respondent registered the Domain Name along with about 30 other domain names made up of key generic words relating to the sports turf industry. The Domain Name was registered because it is entirely descriptive of both the content and nature of the website as indicated above.

(3) The Complainant has no exclusive entitlement to either the individual words "groundsman" or "magazine" or to the conjoined words "groundsman magazine". These are merely generic words and, therefore, free to be used.

(4) In their submission the Complainant states that, since March 1952, its magazine has been known as "The Groundsman". The magazine is not known as "Groundsman" or "Groundsman Magazine".

(5) The Complainant's claim that use of the Domain Name suggests that one has to be a member of Pitchcare to be able to read The Groundsman is denied categorically. There is no such suggestion anywhere on the Respondent's website.

(6) The domain name thegroundsman-magazine.co.uk is available to be registered, but the Complainant has not done so. It therefore does not appear to have any desire to obtain a domain name which aptly fits its published magazine.

(7) The Respondent refutes the claim that the Domain Name is an Abusive Registration.

6. Discussion and Findings:

General
Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
i it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

Since 1952 the Complainant has published a monthly magazine under the title of "The Groundsman". The magazine is sent to all of its members each month and around 50% of professional groundsman are estimated to be members (no accurate census of groundsmen having been carried out). Whether or not the 50% figure is accurate, it is clear that a good proportion of professional groundsmen receive "The Groundsman". Given how long the magazine has been published, it is also likely that many other groundsmen will know of it, even if they are not actually members of the IOG.

In the light of the above, although the words "the groundsman" are descriptive in nature, the use which the Complainant has made of them as the title of its magazine for over 50 years means that, at least in the context of magazines (whether hard copy or online), those words have acquired a secondary meaning (beyond the purely descriptive) associating them with the Complainant.

I therefore find that the Complainant has Rights in the name "The Groundsman".

Although the Domain Name does not include the word "the" before "groundsman" and it also has the additional word "magazine" in it, these differences are not enough to render the Domain Name dissimilar. This is especially the case since the word "magazine" is purely descriptive. I therefore find that the Domain Name is similar to the name in which the Complainant has Rights.

The Complainant has therefore proved what is required under the first part of paragraph 2 of the Policy.

Abusive Registration

Paragraph 1 of the Policy defines an "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."

Paragraphs 3 and 4 of the Policy set out a non-exhaustive list of factors which may be evidence that the Domain Name is or is not an Abusive Registration. Paragraph 4aii provides that the fact that a domain name is generic or descriptive, and the Respondent is making fair use of it, may be evidence that it is not Abusive Registration. This is the crux of the Respondent's case in this dispute.

As mentioned above, the use by the Complainant of the "The Groundsman" as the title for its magazine has in my view led to those words acquiring a secondary meaning so that, at least in the field of magazines (whether hard copy or online), those words are associated with the Complainant and its publication. In other words, at least within the context of magazines and other publications, the words "The Groundsman" are not generic or descriptive.

One then has to consider the fact that the Domain Name is not thegroundsman.co.uk, but groundsman-magazine.co.uk. Is "groundsman magazine" descriptive even if "the groundsman" is not? In my opinion, it is not. If the domain name in question were, for example, groundsman-equipment.co.uk, there is little doubt that it would be correctly characterised as purely descriptive. However, the fact that The Groundsman is a magazine means that the word "magazine" in the domain name draws a connection with it, rather than serving as a distinction. I also do not believe that the absence of the word "the" makes any significant difference. The key element of the magazine title "The Groundsman" is "Groundsman", not the "The" which precedes it. The "The" element of a name of a publication or organisation often tends to get lost when it is being referred to in contexts such as "Have you read that article in The Groundsman?" which, in conversation, is indistinguishable from "Have you read that article in the Groundsman?". As another way of looking at it, it is unlikely that another organisation would be able to publish a magazine called "Groundsman" without the Complainant being able to succeed with a passing off action.

Turning to the use which the Respondent has made of the Domain Name, the Respondent does not operate a full website at www.groundsman-magazine.co.uk. Instead, one is met with the message "Pitchcare is the interactive online magazine for Groundsmen and Greenkeepers" together with a link which one can click onto and which then takes one to the www.pitchcare.com website. If the words "groundsman magazine" were purely descriptive, this would not be objectionable. However, for the reasons set out above, I have decided that they are not. In the context of magazines and other publications, including those which are online, the Complainant has rights in the word "Groundsman", as well as the words "The Groundsman", in both cases with or without the addition of the descriptive word "magazine".

Because of this, it is likely that a number of people with an interest in groundsmanship would believe the domain name to be owned by the Complainant or connected with it. It is also quite possible that some people will use the Domain Name to try to find an online version of The Groundsman or at least information relating to it. Put another way, the Respondent's use of the Domain Name serves to attract additional users to click through to its main website at www.pitchcare.com. This is an obvious advantage to the Respondent, which is of course why it would have chosen to register the Domain Name and use it in this way. If the Domain Name had been purely descriptive, as in my example of groundsman-equipment.co.uk, that advantage would have been unobjectionable. However, the fact that the Complainant has established rights in the name "The Groundsman", extending as I have said to "Groundsman", and that the Domain Name is not therefore purely descriptive, renders the advantage to the Respondent unfair.

In other words, I find that the Domain Name is an Abusive Registration under paragraph 1ii of the Policy.

7. Decision:

Having found that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, groundsman-magazine.co.uk, be transferred to the Complainant.

Jason Rawkins

Date: 2 April 2004