Nominet UK Dispute Resolution Service
DRS Number 03975
Parties Ocean View Diving Services Limited v Frank Bruce
Decision of Independent Expert
Complainant: Ocean View Diving Services Limited
Country: UK
Respondent: Mr. Frank Bruce
UK
Oceanviewdivingservices.me.uk
Oceanviewdivingservices.co.uk
These domain names are referred to below as the "Domain Names".
The Complaint was lodged with Nominet on 7 September 2006. Nominet validated the Complaint on 8 September and notified the Respondent on the same date. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 12 October 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").
Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
Under Paragraph 5a of the Dispute Resolution Service Procedure ("the Procedure") the Respondent was required to submit a Response to the Complaint to Nominet by 2 October 2006. The Respondent failed to do so.
When the Expert reviewed the Complaint she noted that the Complainant had limited its formal submissions on Abusive Registration (see section 7 of this decision for an explanation of this term) to an allegation that the registration of the Domain Names by the Respondent was Abusive at the time of registration. Yet the supporting evidence accompanying the Complaint suggested that the Complainant also objected to the Respondent's use of the Domain Names. There was accordingly an inconsistency between the formal grounds on which the Complainant was apparently making the Complaint and the substance of the matter as indicated by the underlying evidence.
The Expert notes that the Complainant did not appear to have had any professional assistance in formulating the Complaint e.g. there was no indication that a lawyer or other adviser had been consulted. It is important that the Policy and Procedure operate in an accessible manner for all Complainants and Respondents whether or not they choose to seek professional advice before making a Complaint or submitting a Response and that parties to a dispute who have not sought professional advice are not penalised on technical grounds.
On the other hand it is clearly important that the Respondent in this matter was informed of the precise case against him. If the Expert had proceeded to decide the case on inferences drawn from the Complainant's evidence, but not mentioned as a formal ground on which the Complainant were based, the Respondent could have been prejudiced by not having received notice of the case to which it had to respond.
In order to be fair to both parties the Expert requested further information from the Complainant in accordance with clause 13a of the Procedure. This request was in the following terms:
The Complainant has formally based its case on Abusive Registration on the original registration of the Domain Names (1.i of the Policy). The Complainant does not appear to have had any professional advice in formulating the Complaint. In these circumstances I think it is appropriate to ask the Complainant whether it wishes to make a submission based on whether the Respondent's use of the Domain Names amounts to an Abusive Registration (1.ii of the Policy).
It should be noted that had the Complainant been professionally represented when making this Complaint the Expert would have been less likely to seek clarification of the grounds under the Policy on which the Complaint was based.
The 13a request for further information was made on 30 October 2006. The Complainant was originally given until 2 November to respond and the Respondent was given until 7 November to make an additional Response to any new matters raised by the Complainant. No submissions were received from either party. On 9 November Nominet received a telephone call from the Complainant seeking an update on progress with the Complaint. It transpired that the 13a request had not been received by the Complainant. It was re-sent by Nominet on 9 November. The Complaint promptly made an additional submission in answer to the13a request on the following day, 10 November. The Respondent was given until 15 November to respond to the additional submission. No response was received from the Respondent within the deadline or at all.
Paragraph 15b of the Procedure provides as follows:
If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.
It is the view of the Expert that there are no exceptional circumstances relevant to this matter. The Expert's decision will be based on the Complaint, the 13a submission from the Complainant and the Policy and Procedure.
The Complainant
The Complainant was incorporated on 18 August 2004. Susan Tennant and Dennis Tennant are 2 of the Complainant's directors. Before the Complainant was incorporated the Tennants had traded as Ocean View Diving Services from July 2001. Appendix 1 to the Complaint is a bank statement addressed to the Tennants for the period 27 July- 24 August 2001 providing evidence of trading activity under the Ocean Diving Services name during that period. Appendix 3 and 4 to the Complaint consist of letter headed business stationery for the unincorporated business and for the Complainant Company. The Tennants are shown as proprietors of the unincorporated business on the earlier stationery and as directors of the company on the more recent version.
In this Decision the term "Complainant" refers to the Complainant Company and to its unincorporated business predecessor, the Expert being satisfied from the continuity of personnel and trading name that the company is effectively a continuation of the unincorporated business.
The Complainant provides all aspects of diving services including retail sales, courses, equipment servicing and holidays under the name Ocean View Diving Services. Appended to the Complaint at Appendix 8 is an undated brochure for the Complainant's services which shows use of the Ocean View Diving Services name. The brochure at Appendix 8 indicates that a wide range of courses are provided and that the Complainant has a purpose built school with at least 1 pool, 2 classrooms and a clubroom and bar. Activities do not appear to be confined to the Complainant's school. The brochure states that the Complainant has its own dive club. Regular diving trips abroad are organised and the dive club organises local dives all year round.
There is no evidence provided about the financial performance of the Complainant.
The Complaint states that the Complainant has advertised its business over the Internet since June 2002. Appendix 10 to the Complaint is a printout of a WHOIS query result showing that the domain name o-view.co.uk was registered by the Complainant on 2 August 2001. Appendix 9 to the Complaint is a letter dated 19 February 2003 to Dennis Tennant of the Complainant from a business called OceanWeb confirming that OceanWeb had as of that date been instructed by the Complainant to provide hosting, email and website services. The letter confirms that the domain name Oceanviewdiving.co.uk had been registered to the Complainant and also states "we have also added the o-view.co.uk URL under the oceanviewdiving.co.uk host readers which means that both URL's point to the same web site". An invoice from Oceanweb also dated 19 February 2003 confirms that these services had been carried out. Appendix 15 to the Complaint is a Nominet registration Certificate confirming that the domain name oceanviewdiving.co.uk was registered in the name of the Complainant and that the registration was due to expire on 18 February 2005.
Also appended to the Complaint are more recent documents relating to the Complainant's website, namely an invoice from Oceanweb to the Complainant for "redesign in implement (sic) an ecommerce website system".dated 19 May 2005 and for completion of the redesign (dated 15 August 2005) (Appendix 5 to the Complaint). The brochure for the Complainant's business at Appendix 8 gives a website address at www.oceanviewdiving.co.uk.
The Complaint states that before Oceanweb were instructed by the Complainant, the Complainant's website (presumably at o-view .co.uk) had been hosted by the Respondent. No further information is provided about the business relationship between the Complainant and the Respondent. The business stationery appended to the Complaint at Appendix 3 (referred to earlier in this section of the decision) suggests that the Respondent was not a proprietor of the Complainant (the Tennants are the only named proprietors).
The Complaint states that on the appointment of Oceanweb it was discovered that the domain name o-view.co.uk was incorrectly registered to the Respondent's address (the name of the registrant being the Complainant- Ocean View Diving Services as stated above). The identity of the registrant and the address are confirmed at Appendix 10 to the Complaint. In February 2003 the Complainant made a request to Nominet to change the address for the registrant of the o-view.co.uk domain name from the Respondent's address to the Complainant's address and this change to the registration records was duly made (Appendices 12 and 14). There is nothing to indicate that the Respondent objected to the change of address nor that he had exercised any bad faith in relation to this earlier registration.
The Respondent
A Nominet WHOIS search shows that the Domain Names were registered by the Respondent on 8 November 2002. The search states for each of the Domain Names that the Registrant is a non-trading individual.
The Respondent also registered the following domain names on 8 November 2002 (which fall outside the scope of the Nominet Policy and which are not the subject of this Complaint):
Oceanviewdivingservices.com
Oceanviewdivingservices.net
Oceanviewdivingservices.org
Oceanviewdivingservices.info
Oceanviewdivingservices.biz
These registrations are evidenced by Appendices 17-21 of the Complaint.
At some point in time after registering the Domain Names (there is no evidence of when the use began) the Respondent began to use them to point to a website for a business offering diving training. This business trades as "e-aquanauts". A printout of the website is appended to the Complaint and is confirmed by a printout provided by Nominet for both of the Domain Names with which this Complaint is concerned. The printout states that e-aquanauts offers technical diving training which the text suggests is through third party diving centres. It states "the centers we work with, cater for all levels of diving with a strong emphasis on advanced diving….. We use the best local hard boats for our training and dive on actual wrecks sites to make technical level open water training relevant". The text goes on to provide further information about the services provided.
The Complaint states that e-aquanauts is the technical training arm of a company called Wittering Divers Limited.
There is nothing before the Expert to indicate that the Respondent disputes any of the above matters. The Respondent has not made any Response to the Complaint. In particular there is no indication that any past business relationship between the Complainant and the Respondent has given the Respondent any interest in the Ocean View Diving Services name.
Although not directly relevant to the Complainant before her the Expert notes that the Respondent's use of the www.oceanviewdivingservices.me.uk domain appears to be contrary to the purposes for which this second level domain was introduced (personal use).
Complainant
In the Complaint the Complainant made the following brief submissions:
Rights
The Complainant states that it has Rights in the Ocean View Diving Services name because (a) it has registered the name at Companies House and (b) it has traded under the name since 2001. There is no evidence of any trade mark registrations.
Abusive Registration
The Complainant states that the Respondent primarily registered the Domain Names to unfairly disrupt the business of the Complainant as the Respondent operates in the same business sector and is using the Domain Names to "open" his own website, e-aquanauts.
In its additional submission made in response to the Expert's clause 13a Request the Complainant formally makes out its case based on the Respondent's use of the Domain Names in the following terms:
[The Domain Names] has (sic) been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
1.The Respondent is known to our business as a competitor local in area to Ocean View Diving Services.
2. The Respondent was the original host to our web site.
3. The Respondent is using the domain name (sic) to confuse Internet users- by registering our full business name.
a. Our customers are doing searches for Ocean View Diving Services and being directed to the Respondent's own website E-aquanauts
b. They are not sure weather (sic) it is our website or part of our business.
c. As the service provided by Ocean View Diving Services and E-Aquanauts/Wittering Divers is predominantly the same the customers are being confused into using the services of our competitor.
d. We have been contacted by customers who have been confused by being directed to another website other than ours.
4. The Respondent has registered 5 other domain names also being used and being detrimental to our business (see evidence 17,18,19,20,21) that he has no rights to.
Respondent
The Respondent has made no submissions.
General
Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts 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.
The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (clause 2b of the Policy). In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure). There are no exceptional circumstances to justify the Respondent's failure to submit a Response and the Expert is accordingly able to draw such inferences as may be appropriate.
Complainant's Rights
Rights are defined in clause 1 of the Policy as including but not limited to "rights enforceable under English law.
The Complainant's Rights
The Complainant asserts that it has rights in the OCEAN VIEW DIVING SERVICES mark and that the mark is identical or similar to the Domain Names.
In the expert's view the Complainant's reliance on the registration of its corporate name (Ocean Diving Services Limited) is insufficient in itself to discharge its evidential burden to show that it has Rights in the name. A registration of a corporate name operates at a formal level to preclude the registration of an identical corporate name at Companies House but this does not equate to the creation of enforceable rights precluding the use of the name in other contexts. Many companies do not trade under the registered name (e.g. because they are dormant or have a separate trading name). As such it is not uncommon for a corporate name to have no real relevance to a company's trading identity, brands or goodwill.
However the Complainant also refers to its trade under the Ocean View Diving Services name since 2001. The Expert finds that this duration of trade under the Ocean Diving Services name in what is quite a specialised marketplace for diving services would inevitably give rise to a trading reputation associated with the name. This view is strengthened by the evidence of the Complainant's marketing activity e.g. the brochure at Appendix 8 and its use of the oceanviewdiving.co.uk domain name for its business. This kind of reputation or goodwill confers Rights on the Complainant for the purposes of the Policy.
The Complainant's name is identical to the Domain Names, it being customary to ignore the suffic ".co.uk" or ".me.uk".
The Complainant has therefore demonstrated that it has Rights in the OCEAN VIEW DIVING SERVICES marks and that these marks are identical or similar to the Domain Names for the purposes of the Policy. The first criterion under the Policy has therefore been satisfied.
Abusive Registration
Abusive Registration is defined in clause 1 of the Policy as follows:
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 [italics for emphasis],
OR
ii has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
Registration
The Complainant submits that the Domain Names were primarily registered to disrupt the Complainant's business.
Clause 3 of the Policy sets out a list of non exhaustive factors which may be evidence that the Domain Name is an Abusive Registration. In relation to registration of the Domain Name clause 3(a) (i) (C) states that an Abusive Registration may be found where there are circumstances indicating that the Respondent has registered or acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
The Domain Names were registered by the Respondent as long ago as November 2002. There is nothing to indicate when the Respondent began to use Domain Names in the course of trade. As is usual there is no direct evidence before the Expert about the Respondent's motivation for registering the Domain Names. The Expert must therefore review the surrounding evidence to ascertain whether it gives rise to an inference on the balance of probabilities that the registration of the Domain Names was made primarily to cause disruption to the Complainant.
The Expert finds that there is insufficient evidence before her to give rise to any such inference. The apparent relationship between the Complainant and the Respondent (the Respondent having originally provided some kind of website service for the Complainant before February 2003) might well have provided the Respondent with a legitimate reason for registering the Domain Names. In addition in November 2002 the Complainant had traded for a shorter period and it may well have been the case that its business at that time was insufficiently established to give rise to any rights in the Ocean View Diving Services name.
The Expert therefore finds that there is no evidence to suggest that the initial registration of the Domain Names amounted to an Abusive Registration.
Use of the Domain Names
Clause 3(a) of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name has been used in a manner which took unfair advantage of or was wholly detrimental to the Complainant's Rights. These include the following ground which is most relevant to the Complaint:
(ii) Circumstances indicating that the Respondent is using the Domain Name in a way that has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with The Complainant.
In its 13a submission the Complainant has confirmed that it wishes to make a submission based on the Respondent's use of the Domain Names. In that submission the Complainant refers to the fact that it has been contacted by customers who have been confused by being directed to the e-aquanauts website rather than to the Complainant's own website. No further information is given about this apparent confusion and the lack of detail accordingly reduces the evidential weight that can be attached to it. Nevertheless the Expert finds that the manner in which the Respondent has used the Domain Name has directed customers who are searching for the Complainant to the site of a business competitor. This will inevitably have given rise to a substantial likelihood of confusion. Both the Complainant and the Respondent operate in a relatively small industry. As stated above the length of time that the Complainant has traded under the Ocean View Diving Services name has generated goodwill belonging to the Complainant with the result that the Domain Names will be associated with the Complainant. A customer searching for the Complainant's website is likely to be directed to the e-aquanauts site and to assume that the Respondent's site is linked to the Complainant because of the similarity in diving services that are apparently offered on the Respondent's site under the Complainant's name. Even if they realise that the Respondent's website has no connection with the Complainant a customer may nevertheless decide to do business with the Respondent, whose site they have come across inadvertently as a result of the Respondent exploiting the brand recognition attached to the Complainant's name. This would unfairly divert business from the Complainant. In either of these cases the Respondent's use of the Domain Names amounts to Abusive Registration for the purposes of the Policy.
For the avoidance of doubt the Expert's finding in this regard is not based on the previous relationship between the Respondent and the Complainant. As stated above the nature of this relationship is unclear on the evidence before her.
The use of the Domain Names therefore amounts to an Abusive Registration.
The Complainant's additional submission under clause 13a refers to other domain names which the Respondent has registered which are not the subject of this dispute (set out in section 5 of the decision). The Expert makes no finding on this submission. For the reasons given above there is no evidence before the Expert to support an assertion that the actual registration of any of the domain names was abusive at the time of registration.
The Expert finds that the Complainant has proved on the balance of probabilities that it owns Rights in respect of names or marks which are identical or similar to the Domain Names and that the Domain Names in the hands of the Respondent are Abusive Registrations.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Names are transferred to the Complainant.
Sallie Spilsbury
22 November 2006