Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 05522
Location Motorhomes Limited v. International Travel Extras Limited
Decision of Independent Expert
1. Parties

Complainant: Location Motorhomes Limited

Country: GB

Respondent: International Travel Extras Limited

Country: UK

2. Domain Name

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

3. Procedural Background

Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively).

Nominet received the hardcopy Complaint, on 10 March 2008, validated it and sent it to the Respondent the next day, advising the Respondent it had 15 working days to submit a Response. The Complainant was also sent the standard Chairman's letter warning about short or unsupported Complaints.

The Response was due on 4 April 2008. On 2 April 2008, a company called Motorhome Rentals Ltd wrote to Nominet seeking an extension of time on the basis that it was taking over the Respondent. Nominet granted a 5 day extension.

No Response was submitted then or thereafter. In accordance with paragraph 5(d) of the Procedure, on 14 April 2008, both parties were advised the dispute would be referred to an independent expert on payment of the requisite fee within the specified period. Nominet duly received the fee.

Confirming there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I was appointed as independent expert in this dispute on 2 May 2008.

4. Outstanding Formal/Procedural Issues

Default

Although the Respondent has failed to submit a Response, the Procedure does not provide for a default decision in favour of the Complainant. The Complainant must still prove its case to the requisite standard, see §15(b) of the Procedure. However, an expert may draw such inferences from a party's default as appropriate.

Non Standard Submission

The Complainant submitted a paragraph in explanation of its request to make a non-standard submission on 23 April 2008, pursuant to §13(b) of the Procedure. After reviewing the explanation, I agreed to see the non-standard submission which comprised 2 witness statements. In the exercise of my discretion, I admit them.

5. The Facts

These are in short supply I'm afraid.

The Complainant says it incorporated under the company name, Location Motorhomes Ltd, at Companies House on 3 December 2007, and has traded under that name.

The Respondent registered the Domain Name on 11 December 2007.

On 10 March 2008, based on the screenshots provided to me by Nominet, the Domain Name was pointed at a site advertising American Motorhome Rentals.com under the slogan "UK Number 1 for American Motorhome Rentals and Hospitality Units."

6. The Parties' Contentions

Complainant

The Complainant says it has rights in a name or mark identical or similar to the Domain Name and in the hands of the Respondent, the Domain Name is an Abusive Registration.

As to Rights; the Complainant relies on its registration of the company name, Location Motorhome Limited, on 3 December 2007, and submitted the Certificate of Incorporation and its letterhead displaying that company name and a logo "LocationMotorhomes."

As to Abusive Registration; the Complainant relies on 4 grounds:

1. The Domain Name was primarily registered to prevent the Complainant from registering it. In support, the Complainant says that when it went to register the Domain Name, it discovered the Respondent had already taken it "obviously realising that we would be a direct and local business competitor of theirs."

2. The Domain Name was primarily registered for the purpose of selling or transferring it to the Complainant for valuable consideration in excess of the Respondent's out of pocket costs and the Complainant relies on the 2 witness statements from its non-standard submission, which evidence an offer by the Respondent on 14 April 2008, to sell the Domain Name to the Complainant for £2,000.

3. The Domain Name is being used to unfairly disrupt the Complainant's business. The Complainant says the Respondent made no use of the Domain Name "until recently and after the Complainant launched its own website and was obviously trading under the name."

4. By linking the Domain Name to the Respondent's website, the Respondent is causing confusion. In support, the Complainant alleges a customer mistyped their web address and was led to the Respondent's site. No evidence from the customer is submitted.

Respondent

No Response was submitted.

7. Discussion and Findings

General

The DRS is designed as a fast, simple alternative to litigation. Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy.

Paragraph 2(a) of the Policy requires the Complainant to prove 2 elements:

"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 bears the onus of proof and must prove both elements on the balance of probabilities. As mentioned above, even where no Response is submitted, the Complainant must meet this burden.

The DRS's jurisdiction is limited to these issues and the remedies of cancellation, suspension, transfer or amendment of the Domain Name.

Complainant's Rights

Rights under the Policy include rights to registered marks and unregistered trade marks, protected by the law of passing-off. It includes, but is not limited to, Rights enforceable under English law.

While the Secretary of State may direct a change of a company name where identical or similar to a pre-existing company name (§28(2) 1985 Companies Act and §§66 & 67, 2006 Companies Act) this does not, in my view, create Rights for our purposes. See DRS 00228 Active Web Solutions Ltd v Shaw ("the incorporation of a company under a particular name does not of itself give rise to the right to prevent others using that name—the most that can be achieved by that registration alone is that it will block anybody else attempting to register exactly the same name with Companies House). The Complainant cannot therefore establish Rights from the company name registration alone.

Actual use of a name in trade can create common law rights enforceable in passing-off. It is not clear from the Complaint, but it appears the Complainant may not have commenced trading until 3 December 2007, when it registered the company name. Thus the Rights it seeks to rely on would have arisen between 3 and 11 December 2007, when the Domain Name was registered –some 9 days. However the Complainant has failed to submit any evidence of use. There are no copies of advertisements, sales materials, press cuttings or accounts showing sales. There is no evidence as to when its website went live.

I would also note that Rights cannot arise from terms that are wholly descriptive under the definition in the Policy, and the law of passing-off also discriminates against names which are very descriptive. Businesses that select very descriptive names do not acquire a monopoly in the name and small differences will usually be considered sufficient to avoid confusion, see Office Cleaning Services Ltd v Westminster and Windows (trading as Office Cleaners Association) (1946) 63 RPC 39 HL. It is a question of degree, see Smith v Beds Direct EWHC (Ch) Unreported, Bristol Registry, 14 December 2001 ("at one end of the spectrum would be selling soap under the name "soap;" the other end of the spectrum would be selling [it] under some wholly fancy name such as "Flash"). However even names at the soap end can be protected where, through use, the name has acquired a secondary meaning and become associated with one trader.

Motorhomes is entirely descriptive in my view –that is, at the soap end of the spectrum. The addition of Location –itself a descriptive word, does not rescue it. I find the name is descriptive and no evidence of use giving rise to a secondary meaning has been submitted.

I therefore find the Complainant has not made out its burden of proving it has Rights in a name identical or similar to the Domain Name. However, I will go on and deal with Abusive Registration.

Abusive Registration

The second element the Complainant must prove under §2(a) of the Policy, is the Domain Name is an Abusive Registration, as defined in §1 thereof. §3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration. Conversely, §4a of the Policy provides a non-exhaustive list of factors which may evidence that a registration is not an Abusive Registration. The DRS is not a forum for determining allegations of trade mark infringement or passing-off per se and we are concerned with Abusive Registrations.

A. Blocking Registration

Similarly as above in relation to Rights, there is no evidence whatsoever to suggest the Domain Name was registered for the primary purpose of blocking the Complainant. Indeed no evidence has been submitted that suggests the Respondent had any knowledge of the Complainant before service of the Complaint. Some knowledge of the Complainant or its Rights is a pre-requisite for success under all heads of the Policy (other than 3(a)(iv) (false details)), because the Domain Name System is first come –first served. See, DRS Appeal Panel, DRS 4331 Verbatim Ltd v Toth.

If the Complainant had only been in business for some 9 days –how would it have come to the Respondent's notice? There is simply no evidence that the Complainant is likely to have been known to the Respondent as of 11 December 2007. While the Respondent has not come forward with any explanation, the fact it is in the Motorhome business is an explanation for its innocent selection of the Domain Name. The Complainant has the burden of proof and not made this out.

B. Offer over cost

The fact of the offer by the Respondent to resolve the DRS proceedings, which looks fairly reasonable to me, does not evidence any abusive intent at the point of registration.

C. Confusion or Disruption

No evidence has been submitted to support either unfair disruption or confusion, and bare assertions are not sufficient. I am not prepared to infer either in the case of a descriptive name without evidence. The Complainant was warned on filing, by the standard Chairman's letter on short and unsupported Complaints, that it might face these problems and could have re-filed. Complainants must meet the burden of proof.

8. Decision

I find that the Complainant has not proved Rights in marks or names similar to the Domain Name, which is not an Abusive Registration in the hands of the Respondent. Accordingly, the Domain Name should not be transferred to the Complainant.

Victoria McEvedy

19 May 2008