Nominet UK Dispute Resolution Service

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URL: http://www.bailii.org/uk/cases/DRS/2004/1908.html
Cite as: [2004] DRS 1908

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Nominet UK Dispute Resolution Service
DRS 01908
Buckinghamshire Railway Centre v Philip Marsh
Decision of Independent Expert

1. Parties
Complainant: Quainton Railway Society Limited trading as
Buckinghamshire Railway Centre
Country: GB

Respondent: Philip Marsh
Country: GB

2. Domain Name
bucksrailcentre.org.uk
(“the domain name”)

3. Procedural Background
Nominet received the complaint on 16 July 2004 and checked that it complied with the Nominet UK Dispute Resolution Service Policy (“the Policy”) and the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”). Nominet notified the Respondent of the Complaint on 21 July and informed him that he had 15 working days within which to lodge a response. The response was received by Nominet on 11 August. The Complainant filed a reply, which was received by Nominet on 17 August. Informal mediation followed. When that did not resolve the dispute, Nominet notified the parties that an Expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 23 September.

On 29 September I, Mark de Brunner, agreed to serve as an Expert under Nominet’s Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.

4. Outstanding Formal/Procedural Issues
There are no outstanding formal or procedural issues.

5. The Facts
I accept the following as facts.
The Complainant is a charitable society (‘Quainton Railway Society’) which runs Buckinghamshire Railway Centre, a working railway museum staffed mainly by volunteers. In 2003, the Society had some 975 members and net assets of around £4.5m. The Centre has thousands of visitors a year.
The Respondent is a former member of the Society’s Executive Committee. He registered the domain name in September 2000, using it for a website to promote the Society’s activities. The website contained the Centre’s logo (the words ‘Buckinghamshire Railway Centre’ in a distinctive style and format), a schedule of events at the Centre and bookings information.
The costs of hosting the website were met initially by the Respondent but reimbursed by the Complainant. On at least some occasions, the Respondent then donated the reimbursed expenses back to the Society.
The website was a useful source of information for potential visitors to the Centre and an increasingly important part of the Centre’s marketing effort. The Society’s promotional leaflet contained a prominent signpost to the web address.
During the course of 2003 the Respondent fell out with some other members of the Society. From April 2003, he was no longer a member of the Society’s Executive Committee. In January 2004, he was told that his services were no longer required as Chair of the Society’s Board of Management. From around then, the use to which the Respondent put the website began to change:
(i) In March 2004, the website continued to show the Centre’s logo and to indicate that the web pages were ‘maintained by Phil Marsh on behalf of the Buckinghamshire Railway Centre’. But the description had been altered to indicate that this was now the ‘unofficial’ rather than the ‘official’ website of the Buckinghamshire Railway Centre.
(ii) By April 2004, basic information about the society and some key links had been taken down from the website.
(iii) In June 2004, the website was being used to carry material that was critical of Buckinghamshire Railway Centre. The site carried the BRC logo but described itself as the ‘BRC unofficial website’.
(iv) By July 2004, the website was describing itself as ‘the temporary website for Cleek Railway Solutions Ltd’ and ‘NOT the BRC website’. Cleek Railway Solutions is a business owned by the Respondent.
In June 2004 the Complainant established a new website for Buckinghamshire Railway Centre using the domain name bucksrailcentre.org.
During 2004, the number of people visiting the centre fell. (The Complainant and the Respondent agree on this, though they disagree about the cause.)

6. The Parties’ Contentions
Complainant
The Complainant’s contentions can be summarised as follows.
(i) Though the domain name was formally registered by the Respondent, the website was established by the Respondent for the Complainant. The registration of the domain name was therefore effectively on the Complainant’s behalf.
(ii) The Respondent’s use of the domain name during 2004 confused people into believing wrongly that the name was being operated by the Complainant.
(iii) The Respondent’s use of the domain name during 2004 disrupted the Complainant’s business, causing visitor numbers to fall.
Respondent
The Respondent’s case is as follows.
(i) He did not register the domain name exclusively on the Complainant’s behalf, but rather on behalf of ‘five or six’ railway-related organisations. While some of the costs of hosting the website using the domain name were reimbursed by the Complainant, other costs (for example telephone line installation and rental) were not. In any event, the Respondent donated his reimbursed expenses back to the Society, so he finally bore the whole of the cost of registering the domain name and operating the website.
(ii) The Buckinghamshire Railway Centre logo was removed from the website not long after the falling out, and for some time the web pages have been clear that the domain name is no longer connected with the Complainant.
(iii) In any event, visitor numbers at the Centre fell not because of confusion over the website but for other reasons (in particular: the length of time before Buckinghamshire Railway Centre got another site up and running; and operating restrictions imposed by the Health and Safety Executive).
Complainant’s reply
The Complainant says that the Respondent’s donation of his reimbursed expenses back to the Society was a matter of personal choice, and that it does not alter the essential character of the registration (which, the Complainant suggests, was on the Complainant’s behalf).

7. Discussion and Findings
General
To succeed in complaints like this the Complainant must normally prove, on the balance of probabilities, that
(i) he or she 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.
But if
(i) the domain name is identical to the name in which the Complainant asserts rights; and
(ii) the Respondent is using the domain name for the purposes of a criticism site without the Complainant’s authorisation
the burden shifts to the Respondent to show that the domain name is not an abusive registration.
So the first question is: in what name does the Complainant assert rights?
Complainant’s Rights
The Complainant, Quainton Railway Society, trades as Buckinghamshire Railway Centre. The Society has a large number of members and significant assets. The Centre attracts thousands of visitors. It draws in custom in part using a promotional leaflet with a distinctive Buckinghamshire Railway Centre logo. The Complainant evidently believes it has rights in the name Buckinghamshire Railway Centre. But the leaflet also refers to the website at the domain name. Given its reimbursement of the costs of operating the website and its promotion of the domain name in its advertising, the Complainant could be said to be asserting rights in the name bucksrailcentre too. But the Complainant does not make this claim (at least not explicitly) and I am proceeding on the basis that the Complainant asserts rights in the name Buckinghamshire Railway Centre only.
The domain name is bucksrailcentre.org.uk. It is therefore not identical to the name in which the Complainant asserts rights. It follows that the burden of proof rests with the Complainant, who must show that the domain name in the hands of the Respondent is an abusive registration.
Given its promotional investment, I infer that the Complainant has built up goodwill and rights in the name Buckinghamshire Railway Centre. I conclude that the Complainant has rights in a name which is similar to the domain name.

Abusive Registration
The Dispute Resolution Service rules define 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.
The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. The only factors that might be relevant here are
(i) circumstances indicating that the Respondent registered the domain name primarily for the purpose of unfairly disrupting the business of the Complainant; and
(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
There is no evidence that the Respondent registered the domain name in order unfairly to disrupt the Complainant’s business. On the contrary, the registration was intended at least in part to help promote the Complainant’s business – and indeed, over time, the domain name became an increasingly important part of the Society’s marketing effort.
The question of confusion is only slightly more complicated. The Respondent says that no-one can have been confused into believing wrongly that the domain name was operated by the Complainant because the web page said plainly either that the site was ‘unofficial’ (albeit that for some of the time it carried the Buckinghamshire Railway Centre logo) or – even more explicitly – that it was ‘NOT the BRC website’. The Complainant says that visitors to the website were confused, presumably because when they saw the domain name they were expecting to arrive at Buckinghamshire Railway Centre’s official website, only to arrive somewhere else. Similar arguments occur regularly in the context of domain name disputes, and I think the approach to be taken by experts in forming a view based on the Policy is fairly well established. In my judgement the web address will have led people to think that they would be taken to a site run by the Buckinghamshire Railway Centre. If that is right, the use of the domain name must have confused people into believing that it was operated by the Complainant. They may have been put straight when they arrived, but that is too late. The confusion will already have arisen.
The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. The only factor potentially relevant here is where the domain name is generic or descriptive and the Respondent is making fair use of it. The Respondent says that he registered the domain name on behalf of a number of railway-related organisations. Conceivably, he had in mind that the domain name would signal a website acting as a ‘centre’ for anything to do with ‘rail’ in ‘Bucks’. But that sounds a little far-fetched, and it is not consistent with the fact that the domain name was used primarily to promote one particular organisation – Buckinghamshire Railway Centre. I do not accept that the domain name is generic. Even if it is descriptive, whether the Respondent is making ‘fair’ use of it seems to me to beg the question whether the registration was abusive.
Looking at the factors listed in the Policy, the evidence of confusion seems to me to weigh fairly heavily. Neither list of factors is exhaustive, though, and the underlying question remains whether the domain name was registered or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights. In answering that question, it seems to me helpful to consider the alternative ways in which the registration of the domain name is viewed by the parties – in other words whether the registration was on behalf of the Complainant, or for the Respondent in his own right.
The Respondent says that he registered the domain name on behalf of ‘five or six’ railway-related organisations, including the Complainant. As far as I can tell, however, the Respondent claimed reimbursement of the costs of operating the website from the Complainant alone (which is hardly surprising, given the similarity between the domain name and the Complainant’s trading name). The Respondent says he subsequently donated the re-claimed expenses back to the Complainant, but I agree with the Complainant that this is irrelevant. The Respondent also says that there were other costs associated with using the domain name which he did not claim back. That does not seem to me to outweigh the clear impression that the registration was on behalf of the Complainant.
I note that the Respondent says he originally made the password to the website available to other officers of the Society. I also note that as late as March 2004 the website at the domain name refers to ‘pages maintained by Phil Marsh on behalf of the Buckinghamshire Railway Society’ – that is, the web pages were maintained by the Respondent on behalf of the Complainant. I conclude that the domain name was registered on behalf of the Complainant.
If that is a fair view, it is not open to the Respondent to exploit the asset for himself. It seems reasonable to me to infer that the Society’s marketing efforts would have been hampered by the changes to the website during 2004, and that that is likely to have had a negative effect on the Centre’s business. The Respondent himself appears to confirm this when he argues that the drop in visitor to the Centre is partly due to the length of time taken by the Complainant to establish an alternative website. On that basis, the Respondent’s changes to the website in the course of 2004 amount to use of the domain name in a manner that takes unfair advantage of the Complainant’s rights.
But I think the answer to the underlying question is the same even on the alternative view that the Respondent registered the domain name in his own right. If that is correct, he registered a domain name similar to a name in which the Society had rights, knowing that the domain name was to be used for the Complainant. Had the Complainant known that the registration was for the Respondent in his own right, it would surely not have reimbursed any costs or set such store by the operation of the website as part of its marketing effort. At any time, the domain name could have been put beyond its control and use, leaving its promotional ability and ultimately its goodwill in jeopardy. If that is a fair view, registration of the domain name by the Respondent could only have been unfairly detrimental to the Complainant’s rights in the name Buckinghamshire Railway Centre.
Either reading leads to the conclusion that the domain name was registered or has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.
I conclude that the domain name is an abusive registration.

8. Decision
I find that the Complainant has rights in respect of a name which is similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.
In the light of that, I direct that the domain name be transferred to the Complainant.

Mark de Brunner
13 October 2004