Nominet UK Dispute Resolution Service

 


Nominet.uk Dispute Resolution Service

DRS 03616

Shooting People Limited –v- Andrew Hai

Domain Name:

Decision of Independent Expert

1. The Parties

The Complainant

The Complainant is Shooting People Limited of London.

The Respondent

The Respondent is Mr Andrew Hai of Middlesex.

2. The Domain Name

The disputed domain name is ("the Domain Name").

3. Procedural Background

This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure ("the Procedure") and the Nominet UK Dispute Resolution Service Policy ("the Policy").

The Complaint entered into Nominet's system on 19 April 2006 and was validated on 24 April 2006. Following various extensions, a Response was received on 18 May 2006 and a Reply on 31 May 2006. Mediation not being successful, the Complainant paid the relevant fee on 17 July 2006 and the Complaint was referred to me for a Decision on 18 July 2006.

4. Outstanding Formal/Procedural Issues

Following the referral of this matter for a Decision, the Respondent contacted Nominet to say that he wished to settle the matter. He was informed that the matter had already been referred to an Expert and that the Expert would have to be informed of his approach. He indicated that he was content with this. The Complainant subsequently informed Nominet that it did not wish to discuss settlement and preferred the matter to go forward for a Decision. In view of the Respondent's indication that he was content for the Expert to learn of his approach, there is no reason for me to decline to decide this matter. Indeed I am informed by Nominet that, since the Respondent's approach was made in open communications and not within the protection of any mediation proceedings, any other Expert would be similarly informed.

5. The Facts

The Domain Name was registered by the Respondent on 29 January 2003.

6. The Parties' Contentions

The Complaint

The Complainant's contentions as set out in the Complaint may be summarised as follows:

(1) The Complainant is a limited company and has been incorporated under the name Shooting People Limited since 1997.

(2) The Complainant is the owner of a UK registered trade mark SHOOTING PEOPLE registered on 22 April 2003 in Class 41 for agency services for performing artists and related services.

(3) The Complainant operates a website at www.shootingpeople.org.

(4) The Complainant carries on a subscription-based service for members of the filmmaking community in the UK and US. The Respondent is a former member of the Complainant's service who set up a competing business named Talent Circle in 2002. Initially, the Respondent copied and used the Complainant's website content and subscriber details for his own purposes in breach of the Complainant's website terms and conditions. He subsequently registered the Domain Name in order to disrupt the Complainant's business and mislead the public.

(5) In particular, the Respondent has used the Domain Name on three occasions unfairly to the detriment of the Complainant:

(a) On the first occasion the Domain Name was directed to a website that appeared to be the Complainant's site that was out of order.

(b) On the second occasion it was directed to the Respondent's website at www.talentcircle.co.uk.

(c) On the third occasion it was directed to an anti-gun webpage (www.stoptheguns.org.uk) which has no connection with either the Complainant or the Respondent.

(6) The Domain Name has been used in a way that has confused members of the public into believing it is operated by the Complainant. At least one current subscriber has reported having used the Domain Name by mistake while attempting to access the Complainant's site and having been taken to the Respondent's site without explanation.

(7) The Respondent has also added a page to his own website at www.talentcircle.org.uk/shootingpeople which is intended to divert internet users who enter a search for "shooting people".

The Complainant seeks a transfer of the Domain Name.

The Response

In his Response, the Respondent states that the Complaint contains a number of inaccuracies and is libellous. His particular contentions may be summarised as follows:

(1) The Complainant has only recently started providing services to US based subscribers and has not therefore done so since 1997.

(2) Talent Circle was launched in 2003, not 2002.

(3) The Respondent is not aware of the misuse of the Complainant's website information as alleged by the Complainant and the Complainant has not provided any evidence of this.

(4) Talent Circle Limited is a different entity from the Respondent. While the Respondent may have links to that entity, he is the Respondent and issues relating to the company should be addressed to that company directly.

(5) The Complainant's references to the marketing and business practices of Talent Circle Limited are irrelevant to the Complaint, and simply evidence the competitiveness of the Complainant.

(6) The term "shooting people" is generic. While the Complaint may have a trade mark in Class 41 the Respondent is entitled to use the term to describe actions such as filming people, taking still photos or shooting guns. The Respondent does have links to filming people and taking still photos. While he does not have links to anti-gun organisations he is aware of gun crime, particularly in the NW London area where it is at its highest. As the Respondent's plans for a film/photo website did not materialise, the Respondent is using the Domain Name to link to a useful website at www.stoptheguns.org. The Domain Name linked to that site for many months before the Complainant filed the Complaint.

(7) There have been uses of the Domain Name other than those of which the Complainant complains. Initially there was no website content. Subsequently there was a blank page and for some time users simply received an Error 404 message. The Respondent did correct errors on his website within 24 hours of receiving an angry approach from the Complainant.

(8) Save for one unauthenticated email, the Complainant has failed to supply evidence of redirection of the Domain Name. The Respondent did not set up the name to redirect and cannot be held responsible for errors caused by the Respondent's domain controlling host, third party websites or Talent Circle Ltd's marketing strategy.

(9) It is evident from the complaints that the Complainant has made that it would be unhappy with virtually any usage of the Domain Name. The Complainant is simply attempting to use the DRS to complete its set of "shootingpeople" domains. There are other websites that use the term that are not owned by the Respondent, for example, .

(10) The Respondent has never attempted to sell the Domain Name or make any financial gain from the Complainant or a third party.

(11) Prior to the issue of the Complaint the Complainant has never formally demanded the transfer of the Domain Name. Had it done so the Respondent would have attempted to bring the matter to a satisfactory conclusion.

(12) In summary, the Respondent's use of the Domain Name to link to websites is not evidence of an abusive registration. The Domain Name has a number of possible meanings including ones that relates to the Respondent's business. The Domain Name has not been used for personal gain and its recent use has been fair, legitimate and non-commercial. The Respondent also relies on paragraph 4(b) of the Policy which states that "fair use may include sites operated solely in tribute to or criticism of a person or business." The Domain Name has not been used to damage the Complainant's reputation.

The Reply

The Complainant answers the Response in a lengthy Reply. The Reply addresses a number of issues which I do not consider to be of significance in the case, including the date the Complainant started to provide services to US subscribers, the date on which Talent Circle was launched and the relationship between the Respondent and Talent Circle Limited. It is unnecessary to recite the Complainant's replies to these matters. However, the significant submissions that emerge from the Reply may be summarised as follows:

(1) The Respondent was well aware of the allegation of material being copied from the Complainant's website. He admitted to such conduct in September 2003, stating only that nothing had been copied for the previous two months.

(2) A number of complaints were received from the Complainant's subscribers in about August 2003 stating that they had been approached by the Respondent asking them to resubmit adverts to Talent Circle. The Respondent does not deny contacting the Complainant's subscribers.

(3) It is untrue that the Domain Name had been used to link to the www.stoptheguns.org website for many months prior to the date of the complaint. The Domain Name was linked to www.talentcircle.co.uk when the Complainant wrote to the Respondent in February 2006 complaining about the redirection. The Respondent redirected the Domain Name to the anti-gun website in response to that complaint and in order to disguise the original redirection to the Respondent's own website.

(4) The Complainant maintains that the original words on the website linked to the Domain Name were "site down" and "we are trying to fix the problem", thereby giving the impression that the Complainant's website was down.

(5) The website also adopts keywords including "SP", "Shooting People" and "UK Filmmakers Network" all of which are terms commonly used by the Complainant. The Respondent's use of these keywords is intended to make the website linked to the Domain Name appear to be that of the Complainant.

(6) More than one of the Complainant's subscribers will confirm that they were misleadingly redirected to the Respondent's website.

(7) The Respondent seeks to distance himself from the activities of the limited company Talent Circle Limited. If it is true that he has no control over the Domain Name that is a further reason why it should be transferred to the Complainant. Any misuse of the Domain Name is damaging to the Complainant's professional standing.

(8) The Complainant is not simply attempting to collect a set of domain names and the domain name that the Respondent has cited is evidence of this. The Complaint was prompted by the complaint of a subscriber.

(9) The Respondent has not made fair use of the Domain Name nor used it for a tribute or criticism site. His use of the Domain Name has been an attempt to mislead the Complainant's subscribers. The Complainant has made this Complaint in order to prevent further damage to its good name.

7. Discussion and Findings

Relevant Provisions of the Policy

Under paragraph 2 of the Policy:

"(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the 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.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities."

Under paragraph 1 of the Policy the term "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."

The term "Abusive Registration" is defined in paragraph 1 of the Policy as referring to 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."

Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name in the hands of the Respondent is an Abusive Registration. Those factors include, under paragraph 3(a)(i)(C):

"Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily… for the purpose of unfairly disrupting the business of the Complainant"

A further possible factor, under paragraph 3(a)(ii), relates to:

"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."

Paragraph 4 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name in the hands of the Respondent is not an abusive registration. Those factors include, under paragraph 4(a)(i), 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; … or

        C. made legitimate non-commercial or fair use of the Domain Name."

A further possible factor, under paragraph 4(a)(ii), is that:

       "The Domain Name is generic or descriptive and the Respondent is making fair use of it."

Rights

The Complainant has demonstrated that it is the owner of a UK registered trade mark SHOOTING PEOPLE. That trade mark is identical to the Domain Name, ignoring the space between the words and the formal suffix .org.uk. Accordingly, I find for the purposes of paragraph 2(a)(i) of the Policy that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

Based on the evidence submitted by the parties, I find as facts that:

(1) The Respondent was a subscriber to the Claimant's business who subsequently set up (or was concerned in) a competing business under the name Talent Circle.

(2) Talent Circle was highly competitive with the Complainant. Its tactics included using the Complainant's website content and subscriber details for the purposes of its business.

(3) The Respondent registered the Domain Name in full knowledge of the Complainant's use of, and goodwill in, the name "Shooting People".

(4) The Respondent used the Domain Name to connect to the Talent Circle website, during which time the Complainant's subscribers and potential subscribers were confused (or were highly likely to be confused) as to the ownership of the Domain Name.

(5) The Respondent subsequently diverted the Domain Name to the "stoptheguns" website.

The Respondent is correct to say that the Complainant does not have exclusivity in the name "Shooting People" for all purposes. It is, however, a highly distinctive name and I am satisfied, in the light of the Complainant's use of the name since 1997 and its trade mark, that it is closely associated with the Complainant in the field of agency services in the film industry.

Conversely, the Respondent does not have (and does not claim) any rights of his own in the name, save to say that one of its uses could be to describe activities in which the Respondent is involved, namely, filming people or taking still photos. However I do not accept that this explanation amounts to use of the Domain Name "in connection with a genuine offering of goods or services." The Respondent's business is named, and known as, Talent Circle. He selected the Domain Name not because it described certain of his activities, but because it was the Complainant's name. His use of the Domain Name to connect to his own website at www.talentcircle.co.uk was not a good faith use of the Domain Name and does not give rise to a "genuine offering".

A party who registers another party's trade mark as a domain name, in an unadorned form, is taking a significant risk. In this case, I accept that the term "shooting people" is capable of having a meaning or meanings other than to refer to the Complainant's trade mark. However, in the circumstances of this case, I have no doubt that it was intended to refer to the Complainant's trade mark and that subscribers or potential subscribers of the Complainant would have understood it to do so. It is not of great significance that internet users who accessed the relevant URL would eventually have realised they had not reached the Complainant's site, since they were diverted to the Respondent's site in the expectation of reaching that of the Complainant. Where a respondent creates "initial interest confusion" in this way, this will in most circumstances amount to taking unfair advantage of, or being unfairly detrimental to, the complainant's rights. In this case I find that the Respondent registered and used the Domain Name both (i) in a way which has confused people or businesses into believing that the Domain Name was registered to, operated or authorised by, or otherwise connected with the Complainant, and (ii) primarily for the purpose of unfairly disrupting the business of the Complainant.

The Respondent subsequently diverted the Domain Name to link to the www.stoptheguns.org website rather than his own. I accept the Complainant's evidence that this was done after a complaint about the use of the Domain Name had been made to the Respondent (although before the formal Complaint was filed). In any event, I am not persuaded that the Respondent linked the Domain Name to the "stoptheguns" website because he considered it to be a "useful website" or for any other bona fide reason. Rather, I infer from the circumstances that he did so purely in the hope of avoiding a finding of an abusive registration. In my view, this was neither legitimate non-commercial use of the Domain Name nor fair use of a generic and descriptive name.

In the circumstances I conclude (i) that the Respondent registered the Domain Name in a manner which, at the time when the registration took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights, and (ii) that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

8. Decision

The Complainant has established on the balance of probabilities both that it has Rights in a name or mark that is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Accordingly this Complaint succeeds and I direct that the Domain Name be transferred to the Complainant.

Steven A. Maier

27 July 2006