Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS 4757

MJM Hairdesign Ltd & Oojufink v Hackersons

Decision of Independent Expert

1. Parties

Complainant: MJM Hairdesign Ltd & Oojufink

Nottinghamshire

Respondent: Hackersons

Monmouthshire

2. Domain Name

oojufink.co.uk

3. Procedural Background

On 4 June 2007 the Complaint was lodged with Nominet. In accordance with the Dispute Resolution Service Policy hard copies of the Complaint were received in full on 5 June 2007.

On 5 June 2007 the Complaint documents were generated for service upon the Respondent. A Response was received from the Respondent by the due date of 25 June 2007.

On 2 July 2007 the Complainant filed a Response with Nominet. Mediation documents were generated by Nominet on the same day. The mediation appears to have failed to resolve the dispute.

Mr Clive Thorne was selected as Expert on 10 August 2007. He has completed the necessary Declaration of Impartiality and Independence.

4. Facts

The facts in this Complaint are complicated. The Complainant and Respondent differ in their assertion of the facts in numerous respects. The Expert is not easily in a position to resolve the conflicts of evidence under the Nominet procedure. Indeed, it appears to the Expert that many of the issues raised by the parties in the Complaint, Response and Reply are outside the scope of the Expert's jurisdiction and would be better dealt with in Civil Court proceedings.

Nevertheless, taking into account what the Expert considers are the relevant facts the factual background is as follows:-

(i) The Complainant trades as a hairdressing business in Newark. There is evidence that it trades under the name "Oojufink" and has done so since 13 May 2005. A good deal of evidence has been adduced by the Complainant relating to the setting up of the hairdressing business. In particular, the Complainant refers to a full page article/advertisement appearing in the Newark local paper for 13 May 2005 and setting out details of the Barbers shop trading at Queens' Head Court, Newark under the trading name "Oojufink". (Exhibit 23).

(ii) A Mr Jay Bura and his partner Ms Esther Gaskell were employed by the Complainant as a barber and hair stylist respectively.

(iii) Mr Jay Bura is the brother of Mr Tan Bura who is the co-owner of the Respondent Hackersons.

(iv) Hackersons are in the business of domain name registration and maintenance. The Claimant instructed Hackersons in early 2005 (i.e. before the Claimant's business commenced trading) to register the domain names "oojufink.co.uk" and "oojufink.com". The Respondent rendered an invoice dated 31 March 2005 to the Complainant for a total amount of £395.00 for this service (Exhibit 17).

(v) At the beginning of 2006, the relationship between the Claimant and Mr Jay Bura began to deteriorate. Mr Jay Bura offered to purchase Oojufink (it is not clear whether this refers to a purchase of the trading goodwill or the domain names) for a "fair price" (the Complainant's phrase) of £40,000.00. The purchase in the event appears not to have proceeded and Mr Jay Bura left the Complainant's employment at some stage.

(vi) What subsequently seems to have happened is that the Respondent has advertised the opening of a new barber's shop based in Cardigan, Wales, using the websites for oojufink and a company called Oojudoo Oojufink Ltd. This is confirmed by Mr Jay Bura in a statement at Exhibit 93. The Claimant contends that this is contrary to the terms of employment of Mr Jay Bura.

(vii) The current position appears to be from searches undertaken on 5 June 2007 (see Exhibits 57 and 58 to the Complaint) that the domain name oojufink.co.uk was registered by Hackersons (the Respondent) with the address given as 1 Queens Head Court, Newark, Nottinghamshire, (i.e. the Complainants address). The Claimant asserts that it was assured (presumably by the Respondent) that it was normal for the web designers to be listed as Registrars of the websites and saw no reason to question this action.

(viii) There appears to be a dispute as to payment for the registration of the domain names by Hackersons. There is clear evidence consisting of a cheque stub for £250.00 (Exhibit 18) of payment by the Claimant to the Respondent. However, in the Response the Respondent asserts that the invoice, which was for £395.00, was never paid in full and the Respondent only received £250 to cover the graphic design and web development so that the domain names were never paid for by or on behalf of the Complainant. In its Reply, the Complainant disputes this and asserts that the full amount was paid for the domain name in dispute. The suggestion is that the Complainant has paid half the amount for the graphic design i.e. £120.00 but this was for the domain name "oojufink.co.uk" and therefore contends that the invoice was paid in full in respect of "oojufink.co.uk".

(ix) The Respondent contends in the Response that Mr Jay Bura first started using the name Oojufink in 2000 as his professional DJ name for public performances. As evidence of this, he produces an extract from a website (exhibit 82) as well as his statement where he states that in 2001 he and Mr Tan Bura who was also then trading as Hackersons created a website to promote himself as a DJ. The website address is http://pages.zoom.co.uk/oojufink. Mr Jay Bura asserts that he has been publicly associated with the name Oojufink since 2000 and has been using it in a personal and professional capacity ever since.

(x) The Respondent accepts that there was an agreement that the Complainant's business would be known as "Oojufink", but asserts throughout the period in which the Claimant traded as Oojufink Mr Jay Bura has continued to use the name personally. In particularly he asserts that Mr Jay Bura has used the email address "oojufink@oojufink.co.uk" for personal emails.

In the Response, which appears to have been written by Mr Tan Bura, the Respondent states that:-

"I, (Mr Tan Bura) was a sole trader and as such was commissioned by Jay Bura to design a website for Oojufink and to purchase the domain name "oojufink.co.uk" on his behalf. I did this on 17 April 2005. It was paid for by myself and has been renewed by myself ever since…. I then invoiced Jay Bura (oojufink) for the work and the domain name costs….. This invoice was never paid in full and as I only received £250 to cover the graphic design and web development the domain names were never paid for by Jay Bura and Michael Marshall and therefore have been my property ever since I purchased them. Neither Jay Bura nor Michael Marshall have ever paid the outstanding invoices so they have no legitimate claim to the names."

(xi) Mr Tan Bura in his statement (exhibit 93) states that the domain names are being used "in good faith" to promote Mr Jay Bura's business ventures.

5. Discussion and Findings

Under paragraph 2(a) of the DRS Policy a Complainant must show that:

1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

2. 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. The Expert therefore proceeds to deal with each element in turn.

(i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name

In this case and in the absence of registered trade marks it is necessary to consider whether the Complainant has unregistered trade mark rights in the mark "Oojufink".

Having considered the evidence adduced by the Complainant the Expert is satisfied that there is a significant body of evidence demonstrating that the Complainant traded from the barbers shop at Queens Head Court, Newark under the trading name "Oojufink". This includes:-

(i) The full page newspaper advertisement on 13 May 2005 (Exhibit 23).

(ii) The use of the trading name for the purposes of the bank account operated by the Complainant (Exhibits 24, 25 and 26).

(iii) The use of the trading name for the purposes of contracts concluded by the Complainant (Exhibits 28, 29 and 30).

(iv) The business card showing the name prominently as Oojufink (Exhibit 47).

(v) The Complainant's website (Exhibit 59).

(vi) The Respondent's invoice for registration of the domain names is addressed to Oojufink (Exhibit 17).

Having considered this evidence the Expert is satisfied that the Complainant has unregistered trade mark rights in respect of the name Oojufink. The only difference between the trading name Oojufink and "oojufink.co.uk" is the use of the top level domain name .co.uk.

Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark which is similar to the domain name in dispute.

(ii) 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 meaning a domain name which either:

(1) 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

(2) Has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.

The Respondent states in the Response that following the breakdown of the negotiations to acquire the (Complainant's) barbers shop Mr Jay Bura and his investor have proceeded to find new premises on the other side of the country so as not to compete with the Complainant. Apparently, since August 2006 Mr Bura and his partner Esther Gaskell and the investor have been renovating the premises, creating marketing materials and preparing for the launch of the new shops. This is presumably the new barbers shop referred to in the Complaint as having been opened by the Respondent in Cardigan and which has been advertised by the Respondent. Evidence of this is shown at Exhibit 63 where the Respondent is using both "Oojufink" and "Oojudoo" for a cyber barber and cyber salon respectively and due to be opened soon. The contact is given as "oojufink@oojufink.com". The Expert takes the view that the use by the Respondent of "oojufink" and the domain name in dispute has taken unfair advantage of or was alternatively unfairly detrimental to the Complainant's rights since the domain name is used for the purpose of a similar business to that of the Complainant. Mr Jay Bura was at liberty to choose a trading name different to that used by his former employer i.e., the Complainant, but has failed to do so.

In reaching this view the Expert also takes into account the evidence of the use of "Oojufink" by Mr Jay Bura from 2000 onwards. However that appears to have been use as "D J Oojufink" (see exhibit 82). This in the Expert's view does not detract from the Complainant's acquisition of unregistered rights in "Oojufink", as referred to above, with the knowledge and acquiescence of Mr Jay Bura.

The Expert notes that the Respondent intended and purported to sell the domain name in dispute to the Claimant and permitted the Claimant to use the domain name. That is inconsistent with any continued use of the domain name by Mr Jay Bura or the Respondent.

Accordingly, the Expert finds that the use of the domain name in dispute by the Respondent takes unfair advantage of or, alternatively, is unfairly detrimental to the Complainant's rights.

It follows that the Complainant has succeeded in proving its case.

6. Decision

The Complainant has requested that the disputed Domain Name should be transferred from the Respondent to the Complainant. Accordingly, the Expert orders that the Domain Name "oojufink.co.uk" be transferred from the Respondent to the Complainant.

Clive Duncan Thorne

Expert

29 August 2007