Nominet UK Dispute Resolution Service
DRS 03117
E.Christian & Company Limited (t/a EC Group) v. Simon Burch
Decision of Independent Expert
Complainant: E.Christian & Company Limited t/a EC Group
Country: UK
Respondent: Simon Burch
Country: UK
The domain name in dispute is ecgroup.co.uk ("the Domain Name")
On 8 February, 2006 the Complaint was lodged with Nominet UK in accordance with the Dispute Resolution Service Policy ("the DRS Policy").
On 8 February, 2006 Nominet UK validated the Complaint and sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the procedure for the conduct of proceedings under the Dispute Resolution Service ("the DRS Procedure") had been invoked and allowed the Respondent 15 working days (i.e. until 2 March, 2006) within which to respond to the Complaint.
The Respondent failed to respond to the Complaint. .
On 15 March, 2006 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.
On 17 March, 2006 Tony Willoughby, the undersigned, ("the Expert") confirmed to Nominet UK 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 nothing which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality.
On 13 March, 2006 the Complainant's representatives wrote to Nominet UK seeking to submit a non-standard submission under paragraph 13b of the DRS Procedure. The reason given by the Complainant's representatives why the Expert should accept the non-standard submission is that they claim to have further evidence post-dating the Complaint and supporting their client's contentions as set out in the Complaint.
As will be seen below, the Expert has ample evidence before him from the Complainant to determine this dispute without further evidence. The Expert declines to accept the non-standard submission.
The facts evident from the material before the Panel (including those of the unchallenged factual assertions of the Complainant, which the Panel is prepared to treat as 'facts') are as follows:
1. The Complainant's business under the name of E.Christian & Company dates back to the early 19th century. Originally it was engaged in the packing of chemist's chalk into hessian sacks.
2. The Complainant was incorporated under the name E. Christian & Company Limited to take over the business of E.Christian & Company in 1949. The business had by then extended into the handling of point-of-sale storage and distribution.
3. On 18 April, 1995 the Respondent commenced employment with the Complainant as IT director.
4. In 2000 the Complainant adopted the trading name 'EC Logistics'.
5. On 30 June, 2004 the Respondent's contract of employment with the Complainant was terminated by mutual agreement.
6. On 12 November, 2004 the Complainant registered the domain name, ecgroup.uk.com, through an associated company.
7. In December, 2004 the Complainant re-branded as 'EC Group'.
8. Since then the Complainant has operated its main website at www.ecgroup.uk.com.
9. On 17 December, 2005 the Respondent registered the Domain Name. In registering the Domain Name the Respondent applied to have his address omitted from the Nominet WHOIS service on the grounds that he is a non-trading individual.
10. On 20 January, 2006 the Respondent sent to the Managing Director of the Complainant, Mr Chris Long, an email in the following terms:
"I thought I would bring to your attention that you appear to be losing a fair amount of misrouted email traffic through the domain name that I own above.
Unfortunately it's a common issue with the (.uk.com) suffix that is not widely recognised in this country as yet and therefore many people will automatically assume the (.co.uk) which is the Nominet recognised standard UK suffix for business.
So far my IT guy has simply followed confidential protocol and deleted the traffic from our server, however we have noted volumes in excess of between 50 to 100 emails this week. The vast majority being specifically addressed to individuals within your Company, and headers with attachments appearing to be of a valid business nature.
I am more than happy to assign ownership of www.ecgroup.co.uk over to you (subject to an acceptable proposal), as we currently don't have a specific use for the site. Therefore giving you direct control to relay emails into your (.uk.com) domain. Alternatively we could set-up a relay on our server to send your email traffic on to a named address.
Anyway I thought it was best you were aware, as you could possibly have some associates wondering why their emails aren't being dealt with. In the meantime, we will continue to delete any unread traffic on your behalf in a confidential matter. "
11. Mr Long replied the same day as follows:
"Further to your email, we had been aware of some traffic going astray and in the circumstances it would be desirable for EC Group to have direct control over the domain.
I understand that there is an established process for the assignment of domains and I will therefore obtain the required forms etc. to achieve a quick and easy transfer. I trust this will be acceptable and look forward to receiving confirmation from you by return."
12. The Respondent responded on 24 January, 2006 as follows:
"Since my email of 20.01, I have received a written proposal and bid offer dated 19.01 from another party with a view to securing legal ownership of the domain. The third party in question having a similar published commercial acronym to the domain name, and therefore showing a genuine and valid interest of ownership.
In view of this situation and given the fact that this is a UK recognised 'TLD', I have looked at the implications of ownership between parties including yourself plus other similar commercial organisations either with an acronym or exact name (currently trading) of which there are 6 such potential organisations. I have therefore decided to invite any other party to put forward a formal proposal with a view to securing ownership of the domain, if they wish to do so.
Please refer to the site www.ecgroup.co.uk, if you wish to put forward a formal interest by Friday 10th February 2006."
13. As at 25 January, 2006 the homepage of the website to which the Domain Name was connected read as follows:
"WWW.ECGROUP.CO.UK
This TLD is currently owned and managed by S J Burch as a private entity.
No other third party or organisation has any rights or claim to the use or operation of this domain, without express written permission. The current use of this domain does not represent and is not intended to represent any other individual, corporation, private or public body either within the UK or Worldwide.
24th January 2006
I am currently in receipt of a written proposal and bid offer dated 19.01.06 to acquire this TLD along with all existing rights of use by way of a legal transfer.
It is therefore my intention through this notice to invite any other parties with a genuine interest who may wish to secure this TLD with full legal rights of ownership and use, by way of a bid offer and proposal in writing to the following address.
S J Burch
36 Ascot Road
Horton Heath
Eastleigh
Hampshire
SO50 7JQ
United Kingdom
Proposals and bids must be received in writing by Friday 10th February 2006. I will notify the successful bidder (subject to acceptable terms) within 7 days of this date.
Any general email enquiry about this site may be made to jsbtech@onetel.net
The current registration, ownership and future assignment of this domain does not include any specific intellectual rights or trademark ownership as at the time of this notice."
14. On 30 January, 2006 the Complainant's representatives wrote to the Respondent drawing his attention to the Complainant's rights in respect of the name 'EC Group', making reference to the above email exchanges, asserting that in the hands of the Respondent the Domain Name is an Abusive Registration and seeking inter alia transfer of the Domain Name to the Complainant.
15. On 1 February 2006 the Respondent responded by way of an email to Mr Long. This email is set out in full under 'Respondent's Contentions' (below), this being the only indication before the Panel as to the Respondent's position in the matter.
Complainant
The Complainant contends that the Domain Name is identical or similar to its EC Group trading name, in which it has acquired rights by virtue of its use of that name since December, 2004.
The Complainant contends that in the hands of the Respondent the Domain Name is an Abusive Registration for the following reasons:
a) The Respondent being a former IT director of the Complainant knew of the domain names which the Complainant had registered
b) The Respondent has no rights in respect of the Domain Name
c) The Respondent registered the Domain Name in order to disrupt the Complainant's business and in order to prevent the Complainant registering the Domain Name other than by acquiring it from the Respondent for a large sum of money
d) The Respondent's intention has been to cause damage to the Complainant "as a consequence of the Respondent's previous relationship with the Complainant".
e) The Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant or to one of the Complainant's customers for a sum greater than the Respondent's out-of-pocket expenses incurred in registering the Domain Name
f) The Respondent has not used the Domain Name for the purposes of email or a website and, within a matter of weeks of registering it, has put it up for sale
g) "Registration of the Domain Name is clearly confusing the Complainant's clients into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant. The Complainant has himself admitted in his email to the Complainant dated 20 January, 2006 that a large number of emails intended for the Complainant are being misrouted to him."
Respondent
The Respondent has not responded to the Complaint. The only document before the Panel providing any indication of the Respondent's position in the matter is his email of 1 February, 2006 to Mr Long in response to the Complainant's representatives' letter of demand. The email reads as follows:
"I am receipt of an 'unsigned' letter dated 30.01.06, from your representatives 'Boyes Turner'. Therefore I am responding to you directly.
Comments noted, but your representatives 'forced' proposal is unacceptable I'm afraid. They have failed to recognise a number of questionable points as follows:
(1) You have been trading using the domain name .uk.com since 2004, this does not legally automatically entitle you to gain rights over every other domain suffix or any other organisation trading as 'ec group'
(2) Your official company name as published states E Christian & Co Limited not 'EC Group' which is an acronym. Any number of companies may trade as an acronym, in fact there are many others int eh UK stated t/a 'ec group'
(3) I have already clearly stated that I am more than happy to relay any potential email relating to your business on to you. You have not asked me to do so.
(4) If the .co.uk is causing confusion in your business, that is an issue for you to resolve internally. You clearly advertise your site and company as .uk.com not .co.uk. And I have clearly given you an opportunity to do so.
(5) With reference to Nominet action, I am already in receipt of a third party proposal to take over the domain dated 19.01.06 from another commercial organisation (to note who have been trading for more than 10 years as ec group)
(6) Your representative suggests I am a former employee of 'ec group'. I am not?
(7) Your representative suggest my domain is advertised for sale, it does not suggest anywhere on the holding page that it is for sale and I have not asked you for any sum of money in respect of this?
In summary, I already have a third party who is interested in acquiring the domain with an acceptable proposal. I have already made it clear as regards my intent to transfer ownership of the site by 9th February 2006 prior to your representatives letter dated 30.01.06. The other party are well aware of this situation and they acknowledge my terms as being acceptable.
After 9th February 2006, ownership will be passed by me to another party. if you have no wish to put forward an acceptable proposal by this date to take over 'ecgroup.co.uk', then you may have to pursue any claim to the site from the new owners, details of which will be available through Nominet in due course."
General
This section of the decision needs to be read in conjunction with the facts as set out in section 5 above.
To succeed in a complaint under the DRS Policy, the Complainant must first prove that it "has rights in respect of a name or mark which is identical or similar to the domain name" (paragraph 2(a)(i) in the DRS Policy). Rights are defined in paragraph 1 of the DRS Policy as follows:-
""Rights" includes but is not limited to rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."
Having established that the Complainant has rights in respect a name identical or similar to the Domain Name, the Complainant must demonstrate that the Domain Name, in the hands of the Respondent, is an abusive registration.
Abusive registration is defined in paragraph 1 of the DRS Policy as follows:-
"Abusive registration means a domain name which either:
(i) was registered or otherwise acquired in a manner which, at the time 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."
Complainant's Rights
The Complainant makes no claim to registered rights in respect of the name EC Group. For its rights in respect of the name the Complainant relies solely upon the use that the Complainant has made of the name as a trading name. The Complainant does not argue for any other type of right in respect of the name.
The Complainant has traded under the name EC Group since at least December 2004. By then it had registered the domain name, ecgroup.com.uk, which it has since been using for its operational website.
Ordinarily, in order to demonstrate the existence of common law rights in respect of a name, one has to show that a goodwill exists under and by reference to the name. Commonly, this is done by showing sales figures and advertising expenditure and by exhibiting business documentation and unsolicited editorial material from trade and other press featuring the name.
The Complaint contains no such material. However:
a) in his email dated 1 February, 2006 the Respondent acknowledges that the Complainant has been trading using the ecgroup.uk.com domain name since 2004
b) in his email of 24 January, 2006 the Respondent acknowledges that the Complainant is one of several organisations currently trading as EC Group
c) in his email of 20 January, 2006, the Respondent indicates that each week between 50 and 100 emails "of a valid business nature" intended for the Complainant are being misdirected to the Respondent by way of the Domain Name
d) thus the Respondent cannot deny that significant numbers of those with whom the Complainant does business know and recognise the Complainant under and by reference to the name EC Group
e) This, the first hurdle for a Complainant under the DRS Policy, was never intended to be a high hurdle.
The Expert is satisfied on the balance of probabilities that the Complainant has rights in respect of the name EC Group, which is identical or similar to the Domain Name. The Respondent correctly observes that the Complainant is not alone in having rights in respect of the name EC Group, but that is of no consequence here. The Complainant has relevant rights for the purposes of the DRS Policy.
Accordingly, the Complainant has succeeded in proving the first element required to be proved under paragraph 2(a)(i) of the Policy
Abusive Registration
The essence of the Complainant's allegation as to Abusive Registration is that the Respondent registered the Domain Name primarily for the purpose of selling it at a profit to the Complainant or a competitor of the Complainant. If that was indeed the motivation of the Respondent when registering the Domain Name, knowing the name EC Group to be the Complainant's trading name, the Respondent is a cybersquatter, the prime target of all domain name dispute resolution policies. If that is so, there can be no question but that the Complaint must succeed. .
What are the factors put forward by the Complainant to support the Complainant's allegation of Abusive Registration?
First, the Respondent was a former IT director of the Complainant. This does not appear to be in dispute. True, the Respondent denies having been employed by EC Group (see his email of 1 February, 2006), but the Expert takes this to be a reference to the fact that the EC Group trading name was not in use while the Respondent was a director of the company. The Complainant claims that the Respondent will have been familiar with the Complainant's domain name registrations in his capacity as the Complainant's IT director, but there is no evidence before the Expert to show that EC Group was ever in contemplation as a name while the Respondent was with the company.
Secondly, as will be seen from the Complainant's contentions set out above, the Complainant seems to be suggesting that the circumstances surrounding the termination of the Respondent's contract of employment somehow motivated the Respondent to cause damage to the Complainant. The suggestion is indirect and the Expert has no information before him as to why the Respondent should feel motivated to cause damage to the Complainant.
Thirdly, on 20 January, 2006 (just under 5 weeks after having registered the Domain Name) the Respondent emailed the Complainant's Managing Director informing him that (a) as at that date he had no specific use for the site connected to the Domain Name and (b) he was ready to transfer the Domain Name "subject to an acceptable proposal". The Complainant contends that this is consistent with the Respondent having registered the Domain Name with the intention of selling it at a profit to the Complainant.
Fourthly, the Respondent has no rights or legitimate interests in respect of the Domain Name or indeed the name, EC Group. Certainly, there is nothing before the Expert to suggest that the Respondent has any such rights or interests. The Respondent had no use in mind for the Domain Name within a few weeks of having acquired it (see his email of 20 January, 2006). In his emails the Respondent mentions other organisations using the EC Group name, but not in a context suggesting that he himself has any particular interest in the name.
The fact that the Respondent is receiving misdirected emails intended for the Complainant, while plainly damaging to the Complainant, is not necessarily indicative of an Abusive Registration. It could just be the natural consequence of the parties adopting identical/similar trading styles. The key question is whether the Respondent's adoption of the name was fair.
The Expert is in no doubt that although the Respondent may not have been with the Complainant when the EC Group trading name was adopted by the Complainant, he would certainly have been aware that that was the Complainant's trading name when he registered the Domain Name. The Complainant's trading style when the Respondent left the Complainant's employ was 'EC Logistics'. The 'EC' acronym will have been very familiar to him.
Why did the Respondent adopt the name EC Group? A name such as EC Group is a commercial name, not a personal name or a type of name which an individual might adopt for non-trading purposes, yet when registering the Domain Name the Respondent sought to have his address omitted from the Nominet WHOIS service on the grounds that he is a non-trading individual.
What sensible use could a non-trading individual have in mind for such a name?
When one then notes that the individual in question is an ex-employee of a company, which had adopted the name 12 months prior to registration of the Domain Name, it becomes difficult to imagine that the choice of name was coincidental. Moreover, someone in the position of the Respondent (an IT expert) must be taken to have known of the very real risk (borne out by the facts) that the adoption of such a name would result in the diversion of email traffic intended for his ex-employer. He then sought to exploit the situation by seeking bids for the Domain Name. The email exchanges quoted in full in section 5 above are instructive. The Respondent's home page (also quoted in full at section 5 above) is unambiguous.
The Respondent had an opportunity to respond to the Complainant's allegations, but declined to do so. The Complainant has made out a prima facie case calling for an answer, but there is no answer.
In the result, the Expert finds that the Respondent registered the Domain Name in a manner which, at the time the registration took place, took unfair advantage of and was unfairly detrimental to the Complainant's rights.
The Expert finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Expert directs that the Domain Name, ecgroup.co.uk, be transferred to the Complainant.
Tony Willoughby
4 April 2006