Complainant: Property Compliance Limited
GB
Respondent: Brett Donovan
Country: GB
The domain name in dispute is
On 27 March 2007 the Complaint was lodged with Nominet UK in accordance with the Nominet UK DRS Policy and hard copies of the Complaint were received in full on 30 March 2007.
On 2 April 2007, Nominet UK validated the Complaint and on the same day Nominet UK 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 had been invoked and allowed the Respondent 15 working days to respond to the Complaint (i.e. on or before 26 April 2007) to file a Response to the Complaint.
On 20 April 2007 a timely Response was received from the Respondent by Nominet UK.
On 30 April 2007 the Reply was received from the Complainant by Nominet UK.
On 30 May 2007 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.
On 7 June 2007 James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure.
The Claimant is a limited company carrying on an advisory business in the field of compliance with statutory regulation of real property.
The Complainant registered the Internet domain name
The Respondent is a businessman engaged inter alia in the business of trading in Internet domain names.
The domain name in dispute,
The registration was last updated on 22 January 2007.
Complainant's Submissions
The Complainant requests that this Expert determine that the domain name in dispute be transferred to the Complainant and submits that it has rights to the domain name
a. The Complaint is registered at Companies House under the name Property Compliance Limited and has been since 21 October 2004.
b. The domain name
c. The Complainant trades under the name PROPERTY COMPLIANCE and the name is an important part of the Complainant's marketing mix as it relates directly to the type of services offered by the Complainant and the Complainant is known by that name. All correspondence from the Complainant carry its name and logo
d. The PROPERTY COMPLIANCE logo, name and brand have been in regular use by the Complainant since incorporation. As with any growing business, the Complainant has plans for market development in which the name and brand play an important role.
e. The Complainant's business activities include the review of certification sent by applicants to Winchester City Council (WCC) and the Complainant's reports bear the PROPERTY COMPLIANCE name and logo. These reports may be sent onto these applicants by WCC. Applicants and their agents (whom the Complainants may have never met) know the Complainant by this name and brand. A proforma document used to create the reports is included in evidence.
f. The Complainant has trades with suppliers under the name PROPERTY COMPLIANCE and this is reflected in the names of the accounts.
g. The Complainant's logo (which is based on the name PROPERTY COMPLIANCE) has been available on the Complainant's website at the
h. The domain name in dispute,
i. The Complainant refers to case eharmony v. Brett Donovan, DRS 04202 (12 February 2007), taken against the same Respondent as in the present case, and notes that in DRS 04202 the Complainant did not provide as much evidence as above and yet its rights were confirmed and it succeeded in its claim against the same Respondent.
j. Since the Respondent tried to sell the domain name in dispute to the Complainant it follows that the Respondent recognises that the Complainant attaches value and rights to the said domain name.
2. The Complainant submits that the domain name in dispute
a. The domain name in dispute, was primarily registered for the purposes of selling it to the Complainant or a third party. The domain name was registered by the Respondent on 16 August 2006 and the Complainant received a letter from the Respondent, dated 4 November 2006 inviting offers for the purchase of the domain name. This is a specific example of abuse in the Nominet UK DRS Policy clause 3(a)i(A). In an annex to the Complaint, the Complainant has furnished copies of the website used by the Respondent that clearly indicates a minimum bid price of $1000 indicating that the Respondent is seeking recompense well in excess of his reasonable costs.
b. The Complainant believes that abuse is also evident by the timing of the sales offer to the Complainant within 3 months of registration of the domain name by the Respondent. This indicates that in registering the domain name, the Respondent had no intention other than a quick resale 'encouraged' by the presence of the Complainant's own website.
c. The Complainant offers services to people who have regulatory responsibility, such as landlords, owners and local authorities. Currently Winchester City Council uses the services in support of Part P validation under the building regulations throughout Winchester district on a regular basis. The domain name in dispute,as used by the Respondent, brings the independence of the Complainant's legitimate service into question as clients may believe that the Respondent is trading in property and associated services while also operating in its real market of compliance management.
d. Potential clients may naturally seek to find out about the Complainant via the web. The presence of the Respondent's site at an address made up of the Complainant's trading name may only serve to confuse and prevent people from finding the Complainant's site. The presence of an alternative site not controlled or managed by the Complainant, will result in confusion amounting to abuse under clause 3(a)(i)(c) of the Nominet UK DRS Policy and passing off. The Complainant refers to the case Mont Blanc Simplo GmbH v Sepia Products Inc Times 2 Feb 2000 which established that in the case of 'Passing Off' the judge will usually be able to decide if confusion has taken place without recourse to evidence to that effect.
e. The Respondent is engaged in the trading of domains rather than legitimate property management. This would be abuse under 3(a)(iii) as the Complainant can show that there is a pattern of abusive registration by the Respondent.
f. The Respondent's site is nothing more than a link repository and not a legitimate attempt to conduct a business with depth. This is supported by the evidence found in the DRS 04202 (supra) where the same Respondent had registered other domain names similar to well known brands such as, , some of which carry similar 'link page' content. In said case of DRS 04202 the expert did not take the pattern of registrations into consideration as the organisations had not complained. The Complainant submits that this was not the correct approach by the expert in that case as the requirement is to demonstrate a pattern and there is no requirement for the other organisations to have lodged a compliant. In the present case. The Respondents intent is clear as the Respondent went on to contact the Complainant with an offer to sell the domain name and he has also placed the domain name with an auction site.
g. As contextual evidence, given that the Expert must decide this case on the balance of probabilities, the Complainant again refers to DRS 04202 (supra) in full and the documents lodged in the case DRS 4417 against the Respondent, which was withdrawn by the Complainant prior to decision, so that the further evidence of said case DRS 04202 could be included with certainty that it would be available to the expert appointed to determine the Complainant's case against the Respondent. The Complainan explains that. DRS 04202 was published after DRS 4417 had been lodged. While the non standard procedure could have been used to submit the additional evidence the Complainant wished to ensure that the extra document would be seen by the expert.
h. The Complainant furthermore requests this Expert to take into consideration that the procedure under the DRS Policy requires that all of the paperwork submitted must be made available to the Respondent and that the decision is later published on the Nominet website. In the Complainant's dealings with the Respondent, the Respondent has shown bad faith and has made some unsupported allegations. So, while the process may be fair to the Respondent, it does raise for the Complainant questions on how much information about the Complainant's business should be disclosed. Consequently, should the Complainant requests that should the evidence it has submitted in the Complaint, be seen as weak in any area, the Complainant would be pleased to provide further evidence in confidence.
Respondent's Submissions
The Respondent states that this is the second Complaint that is being made by the Complainant against the Respondent relating to the same domain name
The Respondent submits that the name "property compliance" is a generic term by which is meant that it does not relate to any specific trading business . For example the word "carsales" refers to the sale of cars and not merely "Johns car sales". There are positions of employment advertised as illustrated in the evidence which refer to the term "property compliance officer". It follows that the term property compliance is a generic term in common usage.
The Complainant has no copyright, patent or other legal protection. The Complaint's use of a logo has nothing whatsoever to do with the use of a name. The Complainant has no trademark rights in the mark PROPERTYCOMPLIANCE and there is no copyright associated with that name. The establishment of a logo does not constitute rights over a name.
The Complainant is not trading and not using the website for business purpose but merely as a holding page. Before the latest procedure against the Respondent under the Nominet UK DRS Policy, the Complainant's website contained nothing whatsoever to do with the Complainants business. The Complainant is not trading with any depth and merely sees the opportunity of acquiring the
The timing of the Respondent's "so called attempted sale" has nothing whatsoever to do with the Respondent having recently acquired the name. The Respondent has a human right to sell assets as the Respondent sees fit.
Naming a company does not give one rights to use the company name. In fact the name of the Complainant company is Property Compliance Ltd. The domain name
The Respondent submits that the Complainant is not in fact worried about passing off, but instead sees the Respondent's domain name as being more attractive than its own and as a result is unfairly trying to use the Nominet UK DRS Policy procedures to gain control of a generic name.
The Complainant has not provided adequate proof that it is carrying on business. A receipt for £100 does not constitute being in business.
The Complainant has not provided any proof that the domain name is currently for sale at auction.
The Respondent has a legitimate use for the domain name. At the time of registration of the domain name in dispute, the Respondent intended to start a business and has now decided to proceed with the original plan to base its business around property compliance.
The Respondent denies that he is engaged in a pattern of abusive registration. The Aston Martin domain name that he registered were used for a specific reason namely to sell a car of that make and "cahoots" is not a trademarked name. The Respondent has received no complaints relating to the abovementioned domain names and nor are any complaints expected. If the Complainant can provide just a few examples from hundreds it does not constitute a pattern of abusive registrations.
The Respondent is entitled to park his domain names.
Complainant's Reply
The withdrawal of complaint DRS 4417 and resubmission of the dispute in the present Complaint, far from being an abuse of process was taken after discussions with Nominet on how to handle a new significant piece of information.
The Complainant denied any fishing for information during the mediation process.
While many companies trade under names that are unique words such as DULUX, the famous paint brand, many others do not. The use of names made from words in common usage such as 'British Broadcast Corporation' is common where it speaks out about the company's business. The Complainant's choice of name is relevant to the Complainant's business activities and it was right for us to choose and register our company under this name.
Furthermore, the name PROPERTY COMPLIANCE is used for trading purposes and therefore it is part of the Complainant's branding. The Complainant refutes the Respondent's suggestion that its choice of company name justifies his actions of abuse and passing off. Furthermore, the choice of name by the Complainant does not confer any rights on the Respondent; the Respondent must demonstrate his claim independently by providing evidence that he has rights to the name. There is no such evidence in the Respondents submission.
With regard to copyright and registered protection, the Respondent fails to understand, or simply chooses to ignore the fact that such formal registration is optional. Formal registration is not necessary to establish rights under the Nominet UK DRS Policy.
Because the Complainant has not developed its web site yet, the Respondent has argued that it is not in business at all. A web presence has become part of business life, but it is only one part of the marketing mix and not the whole business and it remains the right of the Respondent company to decide its own market mix including the timing and development of its web presence.
The Respondent tries to play down the important issue of timing. If, as he records in his Response, he has serious plans about a long term business in property compliance, then why did he write to the Complainant offering to sell the domain name within weeks of making the registration? And why is the domain name still up for sale to the highest bidder now? And finally how does this square with all the other brand names and web addresses he holds? The contradiction is clear, the Respondent's claim has no credibility, just as his credibility for a music business in DRS 4202 was destroyed by evidence that he has other such links pages in a variety of business sectors.
In order to succeed in these proceedings, paragraph 2(b) of the Nominet UK DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. 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.
Complainant's Rights
Paragraph 1 of the Nominet UK DRS Policy provides the following definition:
"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…"
In its submissions the Complainant has accepted that the words "property compliance" relate directly to the type of services offered by the Complainant. The Respondent has argued that the domain name consists of a generic, descriptive term.
In the view of this Expert the term "property compliance" is wholly descriptive of the Complainants business.
It follows that, in view of the limitation in the definition of the word "Rights" in paragraph 1 of the Nominet UK DRS Policy, the Complainant cannot rely on any rights it may claim to have in the words "property compliance".
The Complainant has therefore failed to establish the first element of the test sot out in paragraph 2(a) of the Nominet UK DRS Policy.
As the Complainant is required to establish both elements of the test in paragraph 2(a) of the Nominet UK DRS Policy it follows that the Complainant's application must fail.
Abusive Registration
As the onus rests on the Complainant to prove both elements of the test set out in paragraph 2 of the Nominet UK DRS Policy and as the Complainant has failed to demonstrate that it has any Rights in the domain name as defined in the Nominet UK DRS Policy, it is not necessary to consider whether the registration in the hands of the Respondent is an Abusive Registration.
In conclusion, as the Complainant has failed to prove that it has Rights in respect of a name or mark which is identical or similar to the domain name
This Expert therefore directs that because the Complainant has failed to establish the first element of the test sot out in paragraph 2(a) of the Nominet UK DRS Policy, the application is refused.
______________________ ______________________
James Bridgeman Date: 26 June 2007