Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 2865 Pendragon PLC – v – Accomodata Ltd Decision of Independent Expert
1. Parties

Complainant:

UK

Respondent:

Accomodata Limited

UK

2. Domain Name
3. Procedural Background

A Complaint in respect of (the "Domain Name") under Nominet UK's Dispute Resolution Service Policy ("the Policy") was received from the Complainant and forwarded to the Respondent by Nominet on 9 August 2005. At the request of the Respondent, the time for a response was extended and a complete Response with annexures was received from the Respondent on 5 October 2005. The Complainant initially lodged a reply that was longer than permitted under the Policy but a revised, compliant Reply was lodged on 13 October 2005.

The dispute was not resolved by mediation and was referred for a decision by an Independent Expert following payment by the Complainant of the required fee on 14 November 2005. I was invited to act as Independent Expert. I was appointed as Independent Expert as of 21 November 2005 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.

4. Outstanding Formal/Procedural Issues (if any)

The Respondent lodged a further, non-standard submission with Nominet in response to the Complainant's Reply. This in turn provoked a non-standard submission from the Complainant in answer.

Paragraph 13 of the Procedure provides (a) "…The Expert will not be obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or this Procedure or which he or she has not requested" and (b) "…Any non-standard submission must contain as a separate, first paragraph a brief explanation of why there is an exceptional need for the non-standard submission. We will pass this explanation to the Expert, and the remainder will only be passed to the Expert at his or her sole discretion…"

Nothing in the brief explanation provided on behalf of the Respondent indicates any exceptional need for a further submission and I have therefore declined to ask for either additional non-standard submission to be passed to me.

The Respondent has also questioned whether the Reply was in fact submitted by the Complainant on the basis that it was not sent to Nominet under a covering letter from the Complainant and that it has not been signed. I have seen the email sent to Nominet with the Reply annexed and I have no reason to doubt that it was filed on behalf of the Complainant. I also note that paragraph 6 of the Procedure does not require the Reply to be signed, unlike Paragraphs 3 and 5 which require the Complaint and the Response to conclude with signatures on behalf of the respective Party. I have therefore given the Reply appropriate weight.

5. The Facts

The Complainant is the UK's largest motor dealer group. It owns and operates some 244 dealerships in the UK including Surrey Harley-Davidson of Dorking, Surrey which sells new and second-hand Harley-Davidson motorcycles. The Respondent is a company registered in England. One of the directors of the Respondent is Jeffrey Peter Fallon. According to the WhoIs database of Nominet UK: the domain name was registered on 30 January 2002; the contact name for the Respondent is Jeffrey Fallon; and the registrant is an individual who has elected to have their address omitted from the WhoIs database.

6. The Parties' Contentions

Complainant

In summary, the submissions on the part of the Complainant are as follows:

- The Domain Name was acquired in January 2002 for the exclusive purpose of promoting the official activities of Surrey Chapter UK, Surrey HOG, the Official Surrey Harley Owners Group. For three years it has been used to provide the Chapter members with access to news, pictures, membership forms and social event information under the Surrey HOG name. Surrey HOG and Surrey Chapter UK are the Chapter's official names registered with the national HOG UK organisation at Harley-Davidson UK.

- Jeff Fallon registered the Domain Name in January 2002 on behalf of Surrey HOG for the purpose of promoting it through an official website. Mr Fallon was dismissed, however, as Director of Surrey HOG in April 2005. Since then he has used the website at www.surreyhog.co.uk as though it were still an official site for the Surrey Chapter when in fact he has used it to confuse the existing membership and to promote his own breakaway activities.

- Surrey HOG has been forced to promote its officially sanctioned activities through a re-implementation of its website using the domain name registered by the Complainant for that purpose. Considerable confusion continues to exist among the several hundred members of Surrey HOG due to Mr Fallon's parallel operation of the www.surreyhog.co.uk website.

- The Domain Name in the hands of the Respondent is abusive because through its use of "Surreyhog", "Surrey Chapter UK" and other content it attempts to continue its previous existence as the officially sanctioned website of the Chapter which is fundamentally confusing to old and new members of the official chapter. New members have been confused as to which events and which officers are the official ones. The home page refers to "European Chapter Winners" which is a distinction earned exclusively by the official Surrey HOG Chapter and carries a photograph of a number of Official Chapter members together with the Official Chapter Flag, which is a mark of the Official Chapter. The website carries photographs of members taken at Official Chapter events and the News page welcomes readers to "Surrey Chapter UK website" and states that "since the early 1990's we have grown to become a 500+ Harley Members Chapter (arguably the largest in the UK, if not Europe)." This history belongs to the official Chapter.

- The membership form available from the website would not result in membership of the official chapter but would result in potentially mistaken payment of annual dues to Mr Fallon.

Respondent

The Respondent submitted in summary that:

- Since 1994 Jeff Fallon has been a member of the private motorcycle club which has used the names Surrey Chapter UK and Surrey HOG and he has been Chapter Director since July 2002. Contrary to the assertions of the Complainant, he remains the Chapter Director and has not been removed from that position.

- For 15 years the Surrey Chapter UK (SHOG) has held an annual management meeting to decide whether or not to renew the sponsoring relationship with an authorised Harley Davidson dealership for a further term of 12 months which runs from January to December each year. The relationship expired in December 2004 and was not renewed in 2005 due to a very poor support level from Surrey Harley Davidson. Sponsorship does not mean ownership and Surrey Chapter UK (SHOG) has at all times been an independent club managing its own finances and structure entirely from within its own management team of officers. There is no requirement that a Harley Davidson Owners Group be affiliated to Harley Davidson UK in order to operate or that it must be in any way connected to or sponsored by a Harley Davidson dealer.

- The Domain Name was acquired on behalf of the Surrey Chapter UK by the Respondent, acting through Mr Fallon in January 2002 with the intention that Surrey Chapter UK would use it for promoting its activities. It continues to be used by it.

- In about March 2005, a section of eight members of Surrey Chapter UK broke away and formed a separate and new Chapter under the name "Surrey Chapter UK, Surrey HOG, the Official Surrey Harley Owners Group". It became affiliated with Harley Davidson UK and registered the names "Surrey HOG" and "Surrey Chapter UK" with Harley Davidson UK. The Claimant became the regional Harley Davidson dealer sponsor of the new Chapter.

- The registration is not abusive because it continues to be used to promote the activities of the Surrey Chapter UK as it has since it was first registered. A letter apparently signed by four other officers of Surrey Chapter UK (SurreyHog) confirms that the club has continued in an uninterrupted state since 1990 and that Jeff Fallon continues to be the Director. The members who have formed an alliance with Surrey Harley Davidson are the imposters. The Chapter continues to use a specially designed logo of an eagle plus the name Surrey HOG; its bank statements are still in the name SHOG (Surrey HOG).

Complainant's Reply

In reply, the Complainant made the following submissions:

- It is not the case that the Claimant represents a "breakaway" Chapter. The relationship between HOG Chapters and dealerships is governed by the Harley-Davidson Owners Group (HOG) Charter. This is published by HOG UK, a division of Harley-Davidson UK. Surrey HOG, also known as Surrey Chapter UK, was formed by Surrey Harley-Davidson ("the Sponsoring Dealership") in 1991. At that time, HOG UK assigned Surrey HOG a unique Chapter Number (#9084).

- The Sponsoring Dealership appointed Jeff Fallon Director of Chapter #9084 in 2002 and, in accordance with the HOG Charter, removed him as Director in April 2005.

- Chapter #9084 continues to be recognised by HOG UK as it has since its formation in 1991. This is confirmed by a statement by the HOG UK Manager, Marjorie Ragg, and is apparent from the directory of HOG Chapters in the latest issue of HOG News UK as at October 2005, which cites David Deverell of the Sponsoring Dealer as the Director. The private motorcycling club that Mr Fallon is now running is not recognised by HOG UK.

- It is not true that annual meetings of Chapter #9084 took place up to January 2005 to renew the sponsoring relationship with the authorised Harley-Davidson dealership for a further 12 months. The HOG Charter makes it clear that a HOG Chapter cannot exist without the support of a Sponsoring Dealership. The decision to sponsor a Chapter is a matter for the dealership's discretion and chapter affiliation with HOG is for a one-year term and subject to annual application and acceptance by HOG.

- The registration of the Domain Name became abusive in April 2005 when Mr Fallon refused to recognise his dismissal from Chapter #9084 and started using the Domain Name for a different purpose. The Respondent is using the Domain Name as a false credential and the officers of Chapter #9084 are not able to communicate effectively with many of its genuine members.

7. Discussion and Findings:

General

The Complainant is required under clause 2b of the Policy to prove to the Expert on the balance of probabilities that:

i the Complainant 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.

Complainant's Rights

"Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law". The Complainant has not made specific, focussed submissions in relation to its Rights but the extract from the Annual Charter for H.O.G. Chapters (the "HOG Charter") attached to the Reply includes a section dealing with trademarks with the assertion that HOG and HARLEY OWNERS GROUP are registered trade marks of Harley-Davidson Motor Company. A search of the publicly available trade mark database of the UK Patent Office confirms that HOG is a registered UK and Community trade mark in respect of a range of goods and services relating to motorcycles and motorcycle clubs. The registered proprietor is H-D Michigan, Inc of Ann Arbor, Michigan, USA which I am satisfied is a Harley-Davidson company.

As the Respondent readily acknowledges in its response, Chapter #9084 is affiliated to Harley-Davidson UK and sponsored by the regional Harley Davidson dealer, Surrey Harley-Davidson. By Article II.2 of the HOG Charter, each HOG Chapter must be sponsored by an authorized Harley-Davidson dealer and shall be named after the respective city or locale of the sponsoring dealer. Under Article X, Chapters have a limited licence to use the HOG trademarks in conjunction with the official chapter name and material relating to chapter activities.

It follows that in this context Surrey HOG refers uniquely to the Harley Owners Group chapter sponsored by the regional Harley-Davidson dealer in Surrey and which can only operate under the HOG name through affiliation with Harley Owners Group with the benefit of dealer sponsorship. Surrey HOG is therefore a name in which the Complainant, as the Surrey Harley-Davidson dealer, does have rights.

Ignoring the ".co.uk" suffix, the Domain Name is identical to Surrey HOG. Accordingly, I consider that the Complainant does have Rights in a name which is identical or similar to the Domain Name for the purposes of the Policy.

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 3 of the Policy. These include:

3aii 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.

It is common ground between the Complainant and the Respondent that Mr Fallon registered the Domain Name in the name of the Respondent for the use of the then official Surrey Harley Owners Group in January 2002. The dispute between them is what the consequences are of a parting of the ways in about March 2005. Mr Fallon's case is that he remains Director of the same motorcycle club, with a substantial number of the same members, but that it has chosen no longer to be affiliated with Harley-Davidson UK or to be sponsored by or associated with the Complainant which is the regional Harley-Davidson dealer. He characterises those former members of the club who now benefit from such affiliation and sponsorship as a "Break-Away Chapter" who have chosen to use the same names Surrey HOG and Surrey Chapter UK when they had no need to do so.

In contrast, the Claimant characterises the club now run by Mr Fallon as a break-away club. It is also clear from the party's submissions that there is a dispute as to the events of March/April 2005 and whether, for example, Mr Fallon was dismissed as Director of the then Surrey Chapter and whether his membership of HOG UK has been suspended.

It does not seem to me, however, that I need to resolve these disputes in order to reach a decision in this case. The Respondent accepts and indeed asserts in its Response that SHOG (the motorcycle club of which Jeff Fallon is the Director) is no longer affiliated with HOG UK or sponsored by Surrey Harley-Davidson. The Respondent attached to its Response two copies of a magazine called "Torque" with a view to demonstrating continuity. The September 2004 edition describes itself in its strap line as "Surrey Harley Owners Group Newsletter" whereas the September 2005 edition, also identifying Mr Fallon as Director, has the revised heading "Newsletter Surrey Chapter UK". On the back page of the September 2005 edition, there is a disclaimer stating: "This publication is not connected in any way with, or endorsed by, The Harley-Davidson Motor Company® or The Harley-Davidson Owners Group®."

The Respondent appears to rely in its Response on provisions of paragraph 4 of the Policy which sets out a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. This includes at paragraph 4ai that "Before being aware of the Complainant's cause for complaint (not necessarily the "complaint" under the DRS), 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.

The Complainant's position is that the Respondent's use of the Domain Name only became abusive after the events of March/April 2005 and it is in respect of the period since that date that I must consider the factors that may point towards or away from the Domain Name being an Abusive Registration.

HOG and Harley Owners Group are registered trade marks of Harley-Davidson. The HOG Charter makes it clear, quite contrary to the submission of the Respondent, that a Harley-Davidson Owners Group does require to be affiliated to Harley-Davidson UK and to be sponsored by an appropriate Harley-Davidson dealer. If it is not then it can have no licence to use the HOG trademarks. It follows that since SHOG by its own admission and assertion is not so affiliated or sponsored it has no right to use the name HOG or Surrey HOG whereas Chapter #9084, as the officially recognised Surrey Chapter does have such rights.

I consider that the effect of the Respondent's continued use of the Domain Name since March/April 2005, by the hand of Mr Fallon, to promote an alternative motorcycle club not affiliated to HOG UK has been to confuse people into believing that the Domain Name is registered to, or operated or authorised by Harley-Davidson or, more particularly, by the Surrey Harley-Davidson dealer (the Complainant) who, under the HOG Charter, has the power and authority to sponsor a HOG Chapter.

The Respondent could only claim to have used the Domain Name in connection with a genuine offering of goods or services or to have been commonly known by Surrey HOG, a name identical to the Domain Name, if it had had any right to use that name since March/April 2005. That is not the case and I consider that it is inevitable that there will have been significant likelihood of confusion amongst existing and potential members of the official Surrey HOG and others dealing with it that the website under the Domain Name was promoting Chapter #9084, that the membership form available from the website related to Chapter #9084 and that membership fees paid as directed by the form would give rise to membership of Chapter #9084 when that is not in fact the case.

In the circumstances, I find that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.

8. Decision

Accordingly, I find, on the balance of probabilities, that the Complainant has Rights in a name which is identical to the Domain Name and that in the hands of the Respondent the Domain Name is an Abusive Registration. I therefore determine that the Domain Name be transferred to the Complainant Pendragon PLC.

Ian Lowe

6 December 2005