Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 02908

B E T W E E N:

BRITISH CREDIT TRUST LIMITED

Complainant

- and -

BRAINFIRE GROUP

Respondent

Decision of Independent Expert

1. Parties

Complainant: British Credit Trust Limited

Country: Great Britain

Respondent: Brainfire Group

Country: Canada

2. Domain Name

britishcredittrust.co.uk

3. Procedural Background

3.1.1      The Complaint, which is a complaint of Abusive Registration under the Dispute Resolution Procedure ("the DRS") of Nominet UK ("Nominet"), and is dated 23 August 2005, was posted by Nominet to the Respondent under cover of a letter dated 24 August 2005. The covering letter included the following paragraphs:-

"A copy of the complaint is attached to this letter, which is deemed to have been received by you on 25 August 2005 (please refer to paragraphs 2(a) and 2(e) of the Procedure).

In accordance with the Procedure, you have 15 working days, ie until 16 September 2005 to respond to the complaint. In order to be valid, your response must comply with the Procedure, and must be received by Nominet in both hard copy and electronic form."

3.1.2      The Respondent did not respond by 16 September 2005 or at all. In a letter dated 20 September 2005 Nominet wrote again to the Respondent, referring to the letter dated 24 August 2005 and to the failure of the Respondent to submit a response within the deadline, and communicating that in the circumstances, this dispute would not go through the Informal Mediation stage of the Dispute Resolution Service, but would be referred to an independent expert for a decision if British Credit Trust Ltd paid the appropriate fees by 04 October 2005 - a condition which was fulfilled.

3.1.3      Attempts by Nominet to communicate with the Respondent at postmaster@britishcredittrust.co.uk resulted in a Delivery Failure Report.

3.1.4      By letter dated 4 October 2005 the dispute was referred to me to provide a Decision under Nominet UK's Dispute Resolution Policy ("the P0licy"). I am required to send my decision to Nominet no later than 25 October 2005.

3.1.5      I have been provided with the following materials:-

Dispute History

Complaint

Companies House results for British Credit Trust Limited

Correspondence between Nominet and the parties

Nominet register entries for britishcredittrust.co.uk

WHO IS results for britishcredittrust.co.uk

Printout of website at www.britishcredittrust.co.uk

Copy of Nominet UK's Policy and Procedures.

4. Outstanding Formal Procedural Issues

4.1 There are no outstanding formal or procedural issues.

5. The Facts

5.1 The domain name was registered by the Respondent on 17 February 2005.

6. The Parties' Contentions

Complainant

6.1 The Complaint of Abusive Registration is in the following terms:-

"1. We, British Credit Trust, have rights in the Domain Name because:

(a) British Credit Trust Limited is registered at Companies House with company number 03087393 and has been since 03/08/1995.

(b) Our holding company, British Credit Trust Holdings Ltd, has the following registered UK trade mark(s):

(i) 2200967, "British Credit Trust", 18/2/2000.

(ii) 2359519, "British Credit Trust", 7/1/2005.

(c) British Credit Trust has been trading for over 20 years.

2. We believe that the domain britishcredittrustco.uk may have been previously registered to British Credit Trust but because of an administrative oversight it was not renewed. This oversight was probably the result of personnel changes and an office move. We have no record of this registration but the variants britishcredittrust.com, britishcredittrust.net and britishcredittrust.org were all registered to British Credit Trust in October 2003.

3. The Domain Name in the hands of the Respondent is abusive because:

(a) It was primarily registered to stop British Credit Trust Ltd registering it, despite our rights in the name arising from our trade mark and limited company name.

(b) It was primarily registered to unfairly disrupt our business. This can be shown because the web site associated with the domain points to a page predominantly containing links to car finance and loans web sites. British Credit Trust's main business is the provision of car loans.

(c) By pointing the domain to a page containing links to car loan web sites, the Respondent is trying to confuse potential customers of British Credit Trust who try to find our web site by entering: www.britishcredittrust.co.uk into a browser. The web site contains a link to "Careers at British Credit Trust". This will clearly confuse anyone seeking employment with British Credit Trust Ltd."

6.2 The Complainant requests the transfer of the Domain Name.

Respondent

6.3 As stated above, the Respondent has not submitted any Response.

7. Discussion and Findings:

   General

   7.1 Under paragraph 2a of the Policy the Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure 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."

   7.2 Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

   7.3 Paragraph 1 of the Policy defines "Rights" as including but not being "limited to, rights enforceable under English law". This definition is subject to a qualification which is not material.

   Complainant's Rights

   7.4 The documentation provided by the Complainant supports its assertions as to the registration of its name under the Companies Act 1985 and as to the ownership by its holding company of the UK trademarks in question. The Complainant was incorporated on 3 August 1005 and registered its present name on 30 May 1996.

   Abusive Registration

   7.5 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."

   7.6 The Policy provides:

   "3 Evidence of Abusive Registration

   a A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

   i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

   A 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 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 The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

   iv It is independently verified that the Respondent has given false contact details to us; or

   v The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

   A has been using the domain name registration exclusively; and

   B paid for the registration and/or renewal of the domain name registration.

   b Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.

   c There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

   4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

   a A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

   i 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; or

   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.

   iii In relation to paragraph 3(a)(v); that the Registrant's holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or

   iv In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.

   b Fair use may include sites operated solely in tribute to or criticism of a person or business.

   c If paragraph 3(c) applies to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.

   This Complaint

   7.7      Registration of a name under the Companies Act 1985 provides the registering company with rights enforceable under English law. I am therefore satisfied and find as a fact that the Complainant has rights in its registered name, and that name which is similar to the Domain Name, within the terms of paragraph 2ai of the Policy.

7.8      Although the Complainant has produced no documentary evidence to support its claim to have registered the variants of the Domain Name to which it refers, that claim is not challenged and there is no reason to doubt it. This evidence provides an alternative basis for the conclusion expressed in paragraph 7.7.
7.9      I do not consider that the rights of the Complainant's holding company in relation to its registered trademarks confer any rights on the Complainant - there being no evidence of any assignment to, or licence in favour of, the Complainant. However, in the light of my finding in paragraph 7.7 above, this is immaterial.
7.10      As can be seen from paragraph 6.1 above, the Complainant asserts that its main business is the provision of car loans, and it advances three contentions as to why it should be concluded that this is an Abusive Registration. There is no reason to doubt the Complainant's evidence as to its business or its evidence that "British Credit Trust" has been trading for over 20 years - though plainly not always through the Complainant company itself, which was only incorporated in 1995 - and I accept that evidence. Further , the Complainant's assertions as to the contents of the web site associated with the Domain Name are substantiated.
7.11      The evidence referred to in the last paragraph gives rise to the inference that it is more probable than not that the Respondent was aware of the Complainant's long-standing business and that the Domain Name was registered in the light of that knowledge.
7.12      Further, in the absence of any explanation on the part of the Respondent as to its reasons for registering the Domain Name, I infer that it was registered primarily for the purpose of unfairly disrupting the Complainant's business and as a blocking registration. Further, although there is no evidence of actual confusion, I consider that the Respondent is using the Domain Name in a way which is likely to confuse people or businesses into believing that it is registered to, operated or authorised by, or otherwise connected with the Complainant. The list of factors which may be evidence that a Domain Name is an Abusive Registration is stated to be non-exhaustive, and I am of the view that where a Domain Name is used in a manner likely to cause confusion as described above it may be an Abusive Registration notwithstanding the absence of evidence of actual confusion.
7.13      Accordingly I am satisfied on the balance of probabilities and find as a fact that in this case the terms of paragraph 3aiB and C and 3aii of the Policy are fulfilled and that an Abusive Registration is established.
8. Decision
8.1      For the reasons given above, I find that the Domain Name was acquired in a manner which at the time when the acquisition took place took unfair advantage of and was unfairly detrimental to the Complainants' Rights and, in the hands of the Respondent, is an Abusive Registration.
8.2      The Complainant has requested the transfer of the Domain Name. On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Name should now be transferred to the Complainant as it requests.

Signed …………………………………

David Blunt QC

12 October 2005