Nominet UK Dispute Resolution Service

 


PJ Hayward & Company Limited -v- EDOCO Limited

Nominet UK Dispute Resolution Service

DRS 04522

Decision of Independent Expert

1. PARTIES:

Complainant: PJ Hayman & Company Limited

Country: GB

Respondent: EDOCO Limited

Country: GB

2. DOMAIN NAME:

pjhayman.co.uk (the "Domain Name")

3. PROCEDURAL BACKGROUND:

3.1      On 6 March 2007 the dispute was entered into the Nominet Dispute Resolution Service (DRS). Hard copies of the Complaint were received in full by Nominet on 8 March 2007. The Complaint was validated by Nominet on 9 March 2007 and sent to the Respondent on the same day.

3.2      No Response was received from the Respondent and therefore informal mediation was not possible. On 10 April 2007 the Complainant paid the fee to obtain the expert's decision pursuant to paragraph 21 of the Procedure for the conduct of proceedings under the DRS.

3.3      On 17 April 2007, Veronica Bailey, having confirmed to Nominet that she was independent of each of the parties and 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/or impartiality, was appointed expert (the "Expert").

4. OUTSTANDING FORMAL/PROCEDURAL ISSUES:

4.1      The Respondent has not submitted a Response to Nominet in time or at all (in compliance with paragraph 5a of the Procedure).

4.2      Paragraph 15(b) of the Procedure provides that "If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint".

4.3      Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent's attention. Consequently, there do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a decision on the Complaint notwithstanding the absence of a Response.

5. THE FACTS:

5.1      The Complainant, PJ Hayman & Company Limited (company number 02534965), was incorporated on 28 August 1990. Peter John Hayman is the name of one the Complainant's directors.

5.2      The Complainant provides Travel Insurance Policies under the name PJ Hayman & Company Limited. The Complainant's domain name pjhayman.com was registered on 22 March 1999 and remains registered to the Complainant. That domain name is used in connection with the Complainants website at www.pjhayman.com.

5.3      The Respondent, EDOCO Limited (company number 05498389) was incorporated on 4 July 2005.

5.4      The Respondent registered the Domain name pjhayman.co.uk on 2 March 2007.

5.5      The website pjhayman.co.uk currently offers a variety of insurance products including travel insurance links to other sites offering travel and holidays.

6. THE PARTIES' CONTENTIONS:

Complainant

6.1      In summary the Complainant makes the following submissions:

6.1     .1 The Complainant has rights in a name or mark which is similar to the Domain Name because:

(a) it is registered at Companies House under the name PJ Hayman & Company Limited;

(b) it is the name of the Complainant's founder and present managing director Peter John Hayman;

(c) it has traded under the name PJ Hayman & Company Limited since 26 May 1992;

(d) it has advertised under the name PJ Hayman & Company Limited and has spent considerable sums on advertising;

(e) it provides travel insurance policies under the name PJ Hayman & Company Limited;

(f) its products have been recognised by the insurance industry for their innovation;

6.1     .2 There is no relationship between the parties and the Complainant has never had any dealings with the Respondent.

6.1     .3 The Domain Name in the hands of the Respondent is an Abusive Registration because:

(a) it is used by the Respondent in a way which has confused people into thinking that the Domain Name is controlled by the Complainant. The Complainant's domain name is pjhayman.com and its primary website is at www.pjhayman.com. The www.pjhayman.co.uk website currently offers insurance products and specifically travel insurance by the Complainant's direct competitors;

(b) the Respondent is offering travel and other related insurance products to the public illegally in contravention of the Financial Service Markets Act 2000 and the Financial Service Authority (FSA Rules and Regulations) because the Respondent is not registered or authorised to conduct business by the FS;

(c) it is one of a series of registrations that the Respondent has made which, because of their type and pattern, prove that the Respondent is in the habit of making registrations of domain names which correspond to trade marks or other well know names in which the Respondent has no apparent interest:

(i) the Respondent is the same Respondent as in DRS 4325 - Royal Bank of Scotland v Easy Domain Connect Limited Company. EDOCO Limited and Easy Domain Connect Limited are run by a Jens Menzenbach and have the same registered office and the same secretary.

(ii) the Respondent is also responsible for eclark.net in DRS 3269 Kurt Geiger Limited v eclark.net. eclark.net had previously registered a large number of domain names including pjhayman.co.uk using Key Systems GmbH a German based registration company. Key-Systems GmbH is EDOCO/Easy Domain Connect Ltd's preferred registrar of choice.

(iii) Nominet has previously suspended a number of domain names held by eclark.net due to the false registration details.

(iv) the Respondent controls the following domain names:

Ccis.org.uk

Edoco.org

Free6.co.uk

Kaysaretrocomputers.co.uk

Kolzo.ru

Teachme.com.tw; and

Texttv.nl

(d) The Respondent has made an application to Companies House for the Respondent to be struck off the Companies House Register which invalidates the registration details.

Respondent

6.2      The Respondent has not responded to communications from Nominet and so has not provided a Response.

1. DISCUSSIONS AND FINDINGS

General

7.1      Under paragraph 2 of the Dispute Resolution Service Policy ("The Policy") the Complainant is required to show on the balance of probabilities, that:

(i) it has Rights in a name or mark that 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

7.2      The first question that must be answered is therefore whether the Complainant has proved on the balance of probabilities that it owns rights in a name or mark that is identical or similar to the Domain Name.

7.3      The Policy defines rights as including, but "not limited to, rights enforceable under English law". This has generally been treated in decisions under Nominet's DRS as a test with a low threshold to overcome and this will be the approach taken.

7.4      The Complainant has provided evidence of its use of the name PJ Hayman. The name "PJ Hayman" forms part of the Complainant's corporate name PJ Hayman & Company Limited; is also the initials and surname of the Complainant's director Peter John Hayman and is used in its trading name PJ Hayman. The Complainant has further provided evidence of advertising of the brand PJ Hayman & Company.

7.5      The Complainant registered the domain name pjhayman.com on 22 March 1999 which it uses for its website at www.pjhayman.com The Complainant has also provided evidence of an insurance industry award received in 2004 as recognition of its innovation in this sector.

7.6      Ignoring the .co.uk suffix and spacing between the initials "PJ" and the last name "Hayman", the name, PJ Hayman is identical or similar to the Domain Name. For the reason set out above, I find that the Complainant has rights in a name or mark which is the same or similar to the Domain Name and that the requirements of paragraph 2i of the Policy have been met.

Abusive Registration

7.7      Having concluded that the Complainant has rights in a name which is identical or similar to the Domain Name, it is necessary to consider whether the Domain Name constitutes an abusive registration. An abusive registration is defined in the Policy 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.

7.8      Paragraph 3 of the Policy provides a non-exhaustive list of factors that may evidence the fact that a domain name is an abusive registration. In the present case most relevant of those factors are those set out in paragraphs 3 a I C, 3 a ii and 3 a iii and 3 a iv of the Policy.

7.9      The Domain Name not only incorporates the Complainant's name but it is similar to the Complainant's domain name pjhayman.com which is used by the Complainant's in connection with its website at www.pjhayman.com. The website to which the disputed Domain Name resolves provides links to insurance products in direct competition with the Complainant. There is no relationship between the Complainant and the Respondent. The Respondent has not filed a Response and has not provided any reason why it has chosen for its domain name a name in which the Complainant has rights, nor has the Respondent given any reason why it is using the Domain Name in connection with a website which offers products in direct competition with the Complainant. The Complainant has not provided specific evidence that people have been confused but there is clear potential for such confusion and the Respondent in not filing a response has not denied that confusion exists.

7.10      Under Paragraph 15 c of the Procedure, if a party does not comply with any if a party does not comply with any provision o the Policy or the Procedure the expert is to draw such inference from the party's non-compliance as he or she considers appropriate. In the circumstances I find on the balance of probabilities that the likelihood is that the Respondent is using the Domain Name in a way which is likely to confuse people or businesses into believing that the Domain Name is registered to, or operated or authorised by, or in some other way connected with, the Complainant and the requirement of Paragraph 3 a ii have been met.

7.11      The Complainant alleges that the Respondent is offering insurance products in contravention of the Financial Services and Markets Act 2000 and Financial Services Authority (FSA) Rules and Regulations. However, the Complainant has provided no evidence to support this allegation and it is not for the Expert to conduct a separate investigation. In the absence of supporting of evidence this submission must be rejected.

7.12      The Complainant asserts that the Domain Name is one of a series of registrations that the Respondent has made which because of there type and pattern prove that the Respondent is in the habit of making registrations of domain names that correspond to trade marks or other well known names in which the Respondent has no apparent interest. In support of this contention, the Complainant asserts that the Respondent is the same as the respondent in DRS 4325 - The Royal Bank of Scotland Group Plc v Easy Domain Connect Ltd.

7.13      Evidence submitted with the Complaint shows that that the director of the Respondent is a Jens Menzenbach. Jens Mezenbach is also a director of Easy Domain Connect Limited, the respondent in DRS 4325 -The Royal Bank of Scotland Group Plc v Easy Domain Connect Ltd. Jen Mezenbach is also a director of Freak Internet Services Ltd which is the company secretary for both the Respondent in this case and the respondent in DRS 4325 -The Royal Bank of Scotland Group Plc v Easy Domain Connect Ltd. Further, the Respondent in this case, EDOCO Limited, as well as Easy Domain Connect Limited and Freak International Services Limited all have the same registered offices at Carpenter Court, 1 Maple Road, Bramhall, Stockport, Cheshire, SK7 2DH.

7.14      Companies EDOCO Limited and Easy Domain Connect Limited are on the face of it separate legal entities. It is clear that there is a very close connection between the Respondent and Easy Domain Connect Limited in that they share the same director, registered office and secretary. However there is no evidence that the Respondent and Easy Domain Connect Limited have common shareholding, form part of the same economic grouping, or carry on the same business. Whilst the evidence shows that the is a connection between the companies this is not enough to pierce the corporate structure and find that the companies are a pretence or sham and that EDOCO and Easy Domain Connect Limited are the same.

7.15      The Complainant also contends that the Respondent is responsible for eclark.net due to a previous registration of pjhayman.co.uk by eclark.net on 28 January 2005. The Complainant has submitted in evidence DRS 3269 - Kurt Geiger Limited v eclark.net in which it was found that the respondent in that case was engaged in a pattern of registrations of well known names or trade marks. On the evidence submitted, the connection between eclark.net and the Respondent is that eclark.net has previously registered the domain name pjhayman.co.uk and the that the fact Key-Systems GmbH registrations appears to be registrant of choice for the Respondent, Easy Domain Connect Limited and well as eclark.net. This is not sufficient to prove that the Respondent is also responsible for eclark.net.

7.16      Further, the fact that eclark.net has previously been suspended from Nominet due to false registration details is not relevant to the current decision as it has not been established that the Respondent is the same as, or responsible for eclark.net as discussed above.

7.17      The Complainant refers to the Respondent's registration of the domain names ccis.org.uk; edoco.org; free6.co.uk; kaysaretrocomputers.co.uk; kolzo.ru; teachme.com.tw and texttv.nl. These names are not so well known that they are instantly recognisable and the Complainant has provided no evidence that these are linked to well known names or trade marks. In the circumstances the Complainant has not demonstrated that the Respondent is engaged in a pattern of registrations of well known names or trade marks in which the Respondent has no apparent rights, and that the Domain name is part of that pattern.

7.18      The Complainant further contends that an application has been made to have the Respondent struck off the companies' register which would invalidate the registration details. The application to strike off is still pending and it is not clear from the evidence provided whether the application is made by the Registrar of Companies or the Respondent. If the company is struck off and the company no longer exists, the contract between the Respondent and Nominet will end and registration of the Domain Name will be cancelled. This of itself is not evidence that the that Domain Name is an abusive registration.

7.19      The Complainant has been trading under the name PJ Hayman since incorporation in 1992 and the name is that of the Company's director Peter James Hayman. On assessing the evidence provided by the Complainant of its business of selling travel insurance policies combined with advertising and promoting the "P J Hayman & Company" name as travel industry specialists as well as the winning of an industry award it is clear that goodwill and reputation has been generated in the name. The Respondent by offering links to insurance companies and products and more specifically travel insurance products by the Complainant's direct competitors as well as links to other discount sites is clearly looking to benefit from attracting additional traffic to the website using the Domain Name from those looking for the Complainant's website. It follows from this, that on the balance of probabilities, the Respondent must have intended to gain an advantage of some kind and it must follow that this advantage would be "unfair" if only for the reason that it is simply not possible to think of a use which would have been "fair".

2. DECISION

For the reasons set out above, the Expert finds that, on the balance of probabilities, the Complainant has rights in the name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an abusive registration. The Expert therefore directs that the Domain Name be transferred to the Complainant.

Veronica M Bailey

Date: 1 May 2007