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Nominet UK Dispute Resolution Service
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First Strokes Swim Schools Ltd v Lancaster [2008] DRS 6267 (28 November 2008)
URL: http://www.bailii.org/uk/cases/DRS/2008/6267.html
Cite as:
[2008] DRS 6267
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DISPUTE RESOLUTION SERVICE
DRS 6267
Decision of Independent Expert
First Strokes Swim Schools Limited
and
Kate Lancaster
- The Parties:
Complainant: First Strokes Swim Schools Limited
Country: England
Respondent: Kate Lancaster
Country: England
- The Domain Name:
firststrokes.co.uk
- Procedural History:
- The Complaint was made on 9 September 2008, a Response was served on 16 September 2008 and a Reply was served on 23 September 2008. I was appointed as Expert on 4 November 2008. Subsequently, the Respondent ("Ms Lancaster") wrote to Nominet seeking to supplement her response pursuant to paragraph 13b of the DRS Procedure by reference to a non-standard submission and the Complainant ("FSSSL") did likewise. On 13 November 2008 I asked to see the entirety of each submission pursuant to paragraph 13b of the Procedure and was provided with those documents by Nominet, which sent the full non-standard submission of each party to the other pursuant to paragraph 13c. On 14 November 2008 I directed that each party be allowed to rely on the content of its non-standard submission and on 17 November 2008 each party was given until 9.30 am on 19 November 2008 to make any response it wished to the non-standard submission of the other. Each party took advantage of that opportunity, as set out below.
- Factual Background
- FSSSL was incorporated on 27 June 2001. It was the previous registrant of the Domain Name until the most recent renewal of the registration. FSSSL failed to renew it due to 'renewal details being sent to a previous employee' (Complaint, second paragraph). Ms Lancaster paid for the renewal and wants to use the Domain Name to promote her business, which trades as 'First Strokes'.
- Parties' Contentions
- FSSSL says it has Rights, on that grounds that -
i. The words 'First Strokes' are identical to its corporate name and trading style.
ii. It already owns a number of domain names, namely firststrokes.com, firststrokespools.co.uk and -.com, firststrokesaward.com, firststrokesinternational.co.uk and -.com and paddockwoodpool.co.uk.
iii. It was using the Domain Name until it recently expired.
iv. The services it offers are swimming lessons.
- FSSSL says that registration of the Domain Name is abusive, on the grounds that –
i. First Strokes is the name of its company and its trading style. The registration is unfair and stops FSSSL from using it, First Strokes being its trading name, which it has used in all prior registrations of the Domain Name.
ii. The registration 'is purely to confuse and mislead internet users' trying to access its website and business. Ms Lancaster's motivation for taking the registration is unfair.
iii. Ms Lancaster is trading on the goodwill and name of FSSSL, using its trading name without its permission and passing off.
iv. She trades as 'Little Floaters', a further reason for saying that use of the Domain Name is an attempt to pass of her business as that of FSSSL.
v. Ms Lancaster is only 8 miles away from a planned swimming pool facility at Paddock Wood.
- In her Response, Ms Lancaster says, -
i. She was unaware that the Domain Name was registered to FSSSL before it expired and FSSSL had plenty of time in which to renew the registration.
ii. The trading name of her business is 'First Strokes', that of their company, namely 'First Strokes Swim Schools', is different. She was not aware of FSSSL's prior registration. Her invoices and receipts are all in the name of First Strokes.
iii. Her business offers underwater photography of babies, toddlers and children.
iv. Owning other similar domains does not entitle FSSSL to own the Domain Name. She chose the domain for her new business, because it was not required by them.
v. There is no current website, one is being designed at the moment, and will be live in a couple of weeks.
vi. The registration is for a legitimate business and is not designed to confuse or mislead. She is not trading on the name of FSSSL.
vii. She does not trade as Little Floaters any more.
- In its Reply FSSSL states, -
i. Its trading style is First Strokes, as set out on company letterheads, corporate literature, and on its website, advertising materials and other sources.
ii. Ms Lancaster is advertising 'First Strokes' as offering swimming lessons on the website www.forparentsbyparents.com.
iii. Ms Lancaster is still registered as the registrant for 'littlefloaters.co.uk'.
- The explanatory paragraph for Ms Lancaster's non-standard submission states, -
"I began teaching baby and toddler swimming in 2004 and set up a partnership with Cerys Lister, which was named Little Floaters. I later expanded that business to provide specialist underwater photography in 2006. My involvement with Little Floaters ended at the end of 2007 where upon I started trading on my own teaching baby and toddler swimming and taking underwater photos as part of the 12 week course.
After a long search for names 'First Strokes' was suggested by a friend. I looked to see if the website was available and as it was, chose to proceed with .. that name after legitimately purchasing the web domain. The first time I became aware of First Strokes Swim School Ltd was when I received a Dispute from Nominet."
- Ms Lancaster's non-standard submission contained the following further statements. Again, I quote the entire submission in view of its brevity, -
"After investigating further I notice[d] that First Strokes Swim School Ltd had a domain name paddockwoodpool.co.uk and have had this for 4 years, but to my knowledge they have not pursued any business interest in that, or any other area in Kent to date. In fact, all their current teaching locations appear to be contained within Essex, which is quite some geographical distance from Kent.
News that there is a chance that I may loose the firststrokes.co.uk domain is something that I am greatly concerned by. I have been advertising as First Strokes and advertising my website which if First Strokes Swim Schools Ltd get the website back then I have been doing a huge amount of free advertising for them. My leaflets have gone out to 1000's of families through Kent and East Sussex with the firststrokes.co.uk web address, so anyone trying to contact me could go through to First Strokes Swim School and take that business away from me.
I operate my business from home in a small area of East Sussex and South West Kent using a small number of privately owned pools. I am not a huge company but I am a legitimate business which is trying to teach babies and toddlers water confidence, safety, and progressing on to swimming all with the hope of expanding to more pools in the Kent area."
- The explanatory paragraph for FSSSL's non-standard submission was as follows, -
"We feel that there is a need for this non-standard submission to enable the Expert to see our usage of 'First Strokes', and to also demonstrate the statement by the Respondent as being incorrect. In her Response Item Numbered 3, she states "I offer underwater photography of babies, toddlers and children" - this is not actually mentioned on her website, and is therefore misleading and incorrect. The website actually demonstrates she is offering swimming lessons, and using our trading name/style."
- The non-standard submission itself consisted of 6 annexes, which included a web-page from the web-site at firststrokes.co.uk advertising swimming lessons for babies and toddlers at 2 locations in East Sussex, and the following documents of FSSSL bearing the name 'First Strokes', namely:-
i. The home page of FSSSL's web-site at firststrokes.com advertising swimming lessons for parents and children,
ii. A draft advertising brochure (including a discount voucher) dated 3 October 2008 offering swimming lessons for children with or without their parents, and beginners
iii. An undated document stating, 'Welcome to First Strokes[,] Billericay',
iv. A letterhead in the name of First Strokes with details of the company at the foot of the page,
v. A compliment slip.
- In response to Ms Lancaster's non-standard submission, FSSSL alleged the following further facts (in addition to various points of argument), -
i It has secured planning permission for the building of a purpose-built teaching pool in Paddock Wood, Tonbridge, Kent. This has been in the planning stages for over 3 years and has been covered extensively in the local press.
ii. FSSSL will start trading from Maidstone in Kent and New Malden in Surrey from 1 January 2009.
- Ms Lancaster's response consisted of an unidentified document, which bears a logo of 'First Strokes' in characters in the shape of coloured cubes, which are the same as the logo on the web-site of Ms Lancaster's business at firststrokes.co.uk.
- Discussions and Findings
Introduction
- In making the findings set out below, I have taken into account the entirety of the material relied on by the parties and the contents of their respective written cases and non-standard submissions (including explanatory paragraphs) and also accessed firststrokes.co.uk and firststrokes.com between 13 and 20 November2008.
- I have also taken into account the contents of a WHOIS search I made of the Domain Name. This showed that Ms Lancaster had registered the Domain Name on 10 June 2008 and that she had opted out of giving her address on the basis that she was a non-trading individual.
- Before making my findings, it is appropriate to make a few points on the evidence. Although the print-out from firststrokes.com post-dates the Complaint, I accept it as genuine in the sense that it refers to activities of the business of FSSSL. Although the screen-shots of the .com site were not annexed to the Reply (which relies on the contents of the site), there is no reason to believe that the web-site in the form in which I visited it differed significantly from the site on 23 September 2008, the date of service of the Reply. I also accept the documents annexed to the non-standard submission of FSSSL as being genuine documents in the same sense. Save where otherwise indicated, I have accepted the assertions of fact made in the written cases of the parties. Where there is a conflict, I have resolved that conflict on the basis of the reasons given.
Does FSSSL Have Rights in relation to the Domain Name?
- The first issue is whether FSSSL has 'Rights' in a name which is the same or similar to the Domain Name 'firststrokes'? By paragraph 1 of the Policy, -
'Rights means rights enforceable by the Complainant, whether under English law or otherwise, and may include rights in descriptive terms that have acquired a secondary meaning.'
- I find that 'First Strokes' is the trading name of FSSSL and am satisfied that the business started trading in 2000 (see the contents of the .com site) under that name and has traded under it since formation of the company on 27 June 2001. The services offered and supplied by FSSSL under its trading name have consisted of swimming lessons aimed at beginners, with some emphasis on young children. It is not necessary to make findings as to the entire history of the registration of the Domain Name. In the circumstances of this case, I need make no findings beyond the facts, as I find them to be, that FSSSL was the previous registrant of the Domain Name and had been using it before Ms Lancaster registered it in her name.
- Though descriptive to an extent, the words 'first strokes' are not wholly descriptive of the services in question. Compare, say, 'office cleaning'.
- It is not enough for FSSSL to establish that there would likely be confusion if Ms Lancaster were to continue to use the Domain Name, even though any such confusion might be caused by the fact that FSSSL has traded as 'First Strokes' for some years.
- FSSSL must show that the words First Strokes are sufficiently distinctive of its business. Despite the element of descriptiveness, those words are capable of being distinctive of services offered by a trader, provided that there is sufficient evidence of distinctiveness.
- There is no evidence of the turnover of the business and little evidence of the extent to which advertising has been conducted. To an extent, the business relies on visibility through the firststrokes.com web-site. Prior to suspension of the Domain Name for non-renewal, it was used by FSSSL to promote the business by means of the web-site, the contents of which are also at firststrokes.com. Although there are 5 other domain name registrations owned by FSSSL containing the word 'firststrokes', it is not clear to what extent they have contributed to the visibility of the business. FSSSL does own the domain name www.paddockwoodpool.co.uk, which at the date of the Complaint resolved to the .com site.
- The business is carried on in a relatively substantial way, mostly in Essex. The print-out from firststrokes.com shows that FSSSL has 7 locations with swimming pool facilities, 6 in Essex and one in Cambridgeshire, and further information on the web-site states that 4 new sites have been identified and are 'in the pipeline': 2 in Essex, one in Suffolk (Ipswich) and one in Kent, at Paddock Wood.
- The pool at Paddock Wood has been the subject of planning permission and FSSSL intends to open a new site there at some stage. I also accept that there is an intention to trade from Maidstone and New Malden from 1 January 2009, though it is not clear whether this involves pool premises in either or both cases. The web-site suggests not: see the findings in the previous paragraph.
- Further information from the .com site, which I also accept, is to the following effect. Swimming classes are given at each of the 7 premises. The business has grown since 1970 from 70 swimmers in its first 'term', to 4000 swimmers a week. The 'terms' run consecutively, throughout the year, with the exception of a few days. The parent and child classes are for children from 4 months to 2 and a half years.
- Further information from the .com site shows that in November 2007 a new extension to the premises at Stanway was opened, having cost £100,000 to build. In the Testimonials section of the web-site, there is a tribute from a local Montessori school. There are also photographs on the site showing attractive and apparently well-provisioned swimming pools, which, as I find, are pictures of one or more of the 7 locations.
- These findings are sufficient to establish that FSSSL's use of the trading name First Strokes since 2001 has been such as to render those words distinctive of the services it provides in connection with swimming lessons and to establish a sufficient goodwill as to sustain a claim in the tort of passing off. Hence, FSSSL has Rights, namely unregistered rights recognised by law, which are sufficient to satisfy the definition of Rights under the Policy. These Rights are in a name, First Strokes, which is similar to the Domain Name.
- It is right to ask whether the goodwill is limited to the locations where FSSSL is actually carrying on business. At the very least, the goodwill would be in and around the 7 locations in Essex and Cambridgeshire. The likelihood is that the business has goodwill in Essex generally, and to an extent beyond. It is not possible to plot of the geographical extent of the goodwill, nor is it necessary to do so. The likelihood is that there will be goodwill beyond the specific locations, becoming weaker the further away one proceeds. That said, it is not possible to proceed on a wholly geographical basis in view of the movements of people in their daily lives and modern communications, especially the internet.
- The real relevance of the geographical differences between the 2 businesses relates to the issue of Abusive Registration, to which I now turn.
Is the Domain Name in the hands of Ms Lancaster an Abusive Registration?
- By paragraph 1 of the Policy, -
'Abusive Registration means a Domain Name which either
i. was registered or otherwise acquired in a manner which, at the time 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 has taken unfair advantage of, or has been unfairly detrimental to, the Complainant's Rights.'
Paragraph 3a. of the Policy specifies a non-exhaustive list of factors, which may be evidence of Abusive Registration. Subparagraphs i. and ii are in point. They refer to, -
'i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
A. ..
B. …
C. for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated by or otherwise connected to the Complainant.'
Paragraph 4 of the Policy contains a non-exhaustive list of factors that may contra-indicate Abusive Registration. Subparagraphs 4a.i. and ii. are relevant. These refer to the following circumstances –
'i. Before being aware of the Complainant's cause for complaint (not necessarily 'the complaint' under the DRS), the Respondent has:
A. used or made demonstrable preparations to use the Domain Name … in connection with a genuine offering of … services;
B. been commonly known by the name or legitimately connected with a mark, which is identical or similar to the . Domain Name;
C. made …. fair use of the Domain Name; or
ii. The Domain Name is generic or descriptive and the Respondent has been making fair use of it.'
It might be said that the issues under paragraph 4(i)C and (ii) are not relevant, because the complaint is one relating to registration. However, to ignore the wider questions of fairness would be unreal in the circumstances, and inappropriate.
- The definition of Abusive Registration in paragraph 1 of the Policy refers to 2 situations, namely registration or other acquisition of the Domain Name, and secondly, past use. In Verbatim DRS 04331, the Appeal Panel considered the issues of knowledge and intention under the previous version of the Policy in which Abusive Registration and the non-exhaustive list of factors indicating or contra-indicating abuse were defined in very similar terms to the current Policy. The Panel stated (at paragraph 8.13), -
'In this panel's view the following should be the approach to the issues of knowledge and intent in relation to factors listed under paragraph 3 of the Policy:
(1) First, some knowledge of the Complainant and/or its brand/rights is a prerequisite for a successful complaint under all heads of the DRS policy other than …. The DNS is a first-come-first-served system. The Panel cannot at present conceive of any circumstances under which a domain name registrant, wholly unaware of the Complainant and its rights, can be said to be taking unfair advantage of or causing unfair detriment to the Complainant's Rights.
(2) Second, 'knowledge' and 'intention' are pre-requisites for a successful complaint under all heads of paragraph 3(a)(i) of the Policy.
(3) Thirdly, 'intention' is not a necessary ingredient for a complaint under paragraph 3(a)(ii) of the DRS Policy. The test is more objective than that. However, some knowledge of the Complainant or its name/brand is a prerequisite.
(4) ……
(5) Fifthly, when a Respondent denies all knowledge of the Complainant and/or its Rights at the relevant time, that denial is not necessarily an end of the matter. The credibility of that denial will be scrutinised carefully in order to discern whether, on the balance of probabilities, the relevant degree of knowledge or awareness was present.'
- Paragraphs 3(a)(i) and (ii) of the former Policy broadly correspond to the same subparagraphs in the current Policy, but with one difference in particular. Subparagraph (ii) has introduced the words, 'is using or threatening to use the Domain Name in a way which … is likely to confuse ….'. (That is not to say that threatened use would have been irrelevant under the former policy, the factors in paragraph 3 being non-exhaustive.) In view of the wording of paragraph 3a.ii. of the current Policy, a complaint in connection with registration (i.e. under the first limb of the definition of Abusive Registration') can refer to threatened use of a Domain Name.
- FSSSL's complaint was directed at the registration itself, on 10 June 2008. Although no complaint is made as to the contents of any web-site, whether under construction or not, one of the aspects of the complaint is the likely uses of the Domain Name in connection with Ms Lancaster's business. The relevance of the establishment and contents of Ms Lancaster's web-site after the date of the Complaint is that it offers an insight, a very clear one, into those uses.
- FSSSL also complains that the registration will have an unfair effect, because it will be unable to use the Domain Name itself. That is not unfair, because Nominet operates a 'first-come-first-served' policy. Moreover, FSSSL should not have let the registration lapse.
- The issue of Abusive Registration requires a consideration of the business carried on by Ms Lancaster and the actual or likely effects of both a continued use of the Domain Name in connection with that business and a cessation of such use, were an order for transfer to be made. I shall deal with the issues of knowledge and intention later.
- The web-site now operating from the Domain Name is a simple one-page site advertising Ms Lancaster's First Strokes business, carried on from 2 locations in East Sussex, giving a telephone number.
- The main business now carried on by Ms Lancaster offers swimming lessons for babies, toddlers and other children at those 2 locations in East Sussex, being Staplecross and Crowhurst Park, near Battle. Photography is not mentioned on the web-site and I find that it is a peripheral part of the business.
- Ms Lancaster had traded as 'Little Floaters' with Cerys Lister from 2004 until the end of 2007. From January 2008, she began to trade on her own account as First Strokes. Her web-site was launched at about the beginning of October 2008 and in the meantime, she has sent out leaflets to 1000's of families in Kent and East Sussex promoting her business and the firststrokes.co.uk web address.
- It is appropriate to take into account the likely effects of any planned expansion of the two businesses. As indicated, FSSSL has concrete expansion plans with respect to Paddock Wood. FSSSL has not put forward a date when the construction is due to be complete, let alone to start. The reality, as I infer it to be, is that FSSSL does have plans to build in Paddock Wood, but the realisation of those plans may be some time away. Ms Lancaster also hopes to expand, with more pools in Kent.
- A central question is whether the web-site at firststrokes.co.uk is likely to cause any relevant confusion. Actual or potential customers of FSSSL will know its business by the name of 'First Strokes'. That is the exact name of Ms Lancaster's business. There is also a very substantial degree of overlap in the nature of the services offered and supplied by each business.
- In view of the fact that Ms Lancaster's web-site only went 'live' after the date of the Complaint, it is not surprising that there is no evidence of actual confusion. True it is that FSSSL has produced no evidence of actual confusion between the 2 businesses, even though Ms. Lancaster has been trading as 'First Strokes' since January 2008. At first sight, this might lend some support to Ms Lancaster's case that no confusion is likely in view of the differing geographical locations of the businesses.
- Evidence of actual confusion is often difficult to establish. However, the confusion under consideration is different in the present context, because it relates to foreseeable uses of the Domain Name.
- So, what are actual or potential customers of FSSSL's First Strokes business likely to do when they wish to find out or check information about the services offered by that business? For example, by looking up the phone number to book a course of lessons at one of the existing pools?
- A significant number of those customers are likely to type in the address 'firststrokes.co.uk'. When they see Ms Lancaster's web-site, what are they likely to conclude? It is fair to say that the 'look and feel' of the web-sites at www.firststrokes.co.uk and www.firststrokes.com are different. The logos of the 2 businesses are also different. However, these differences are not such as to prevent the almost inevitable conclusion that the customers are likely to reach: that the First Strokes business operating in Essex has opened up 2 branches in East Sussex, or that the pools at the 2 sites in East Sussex are in some way connected to that business, for example by way of a franchise.
- Therefore, on visiting the web-site at www.firststrokes.co.uk, these customers will likely be confused in a manner within paragraph 3ii of the Policy.
- This confusion is likely to increase as a result of any development of FSSSL's business in Surrey and Kent, in particular, given the proximity of East Sussex to Kent. Also, Ms Lancaster carries on the business from her home in Marden, Tonbridge, which 8 miles from Paddock Wood.
- Ms Lancaster has distributed several thousand leaflets advertising her business in Kent and East Sussex. This distribution is unlikely to have been confined to locations in and around Tonbridge, Staplecross and Crowhurst Park, and probably extended into substantial parts of Kent and East Sussex. I also take into account Ms Lancaster's hopes to expand her business in Kent. Any such expansion would be likely to aggravate the confusion.
- Turning to paragraph 4(i)A, Ms Lancaster has not established when she started her leaflet campaign to promote the web-site, or (if relevant) when she had the leaflets printed. It is likely that the leaflets were distributed not that long before launch of the web-site, which we know happened in about the beginning of October 2008. I am prepared to find that she has made 'demonstrable preparations' to use the Domain Name, but I am unable to make any finding about the extent of the distribution on 9 September 2008, there being no evidence of a prior letter of complaint.
- I now refer to paragraph 4(i)B. of the Policy. In view of the fact that Ms Lancaster began trading as First Strokes in January 2008, was she commonly known by or legitimately connected with the name First Strokes by 9 September 2008? Evidence as to the trading and advertising activity before then is very thin, but I am prepared to find that her business was 'commonly known' among her customers and to recipients of her leaflets, as First Strokes.
- Was she 'legitimately' (in the sense of 'lawfully') connected with the trading style First Strokes before 9 September 2008? There is no doubt that she was connected with that name. But I am not satisfied that she was legitimately connected with it. A claim for passing off on the present facts would have been likely to succeed. Thus, Ms Lancaster has not made out this factor.
- I therefore turn to paragraph 4(i)C. and (ii), which I shall address first. I find that the use of the Domain Name is descriptive. The words 'firststrokes' are not normally associated in the English language. However, use of the words 'first' and strokes' in combination is sufficiently descriptive to fall within the subparagraph. The final issue under subparagraph ii is whether the use is 'fair' and the sole issue under paragraph 4(i)C is that of fair use. These issues of fairness are bound up with the issues of intention and knowledge, to which I now turn. My findings on the fairness issues are in the concluding paragraphs of this Decision.
- What were the circumstances in which Ms Lancaster chose the trading name First Strokes? Before looking at Ms Lancaster's evidence on this, there are a couple of points to be made on the credibility of Ms Lancaster's evidence. Her assertion in the Defence that she offered photography services was very misleading. The fact is that her core business is teaching toddlers how to swim and she knew that FSSSL was complaining that her activities would lead to her trading on the back of FSSSL's goodwill. The Response was served shortly before the web-site went live. The web-site makes no mention of photography. Therefore, to suggest that her business offers photography when the complaint is about swimming is deliberately misleading.
- I also take into account Ms Lancaster's choice to exclude her address from the Nominet registry. Her non-standard submission states that she trades from her home address. However, her contract with Nominet makes it plain that this option is only available to non-traders: see clause 11.2 of the Terms and Conditions of Domain Name Registration. The WHOIS search contains a statement that Ms Lancaster is a 'non-trading individual who has opted to have their address omitted from the WHOIS service'. That statement is untrue and, as I find, must have been made by her or with her consent.
- I therefore approach her evidence on this central issue with a high degree of caution. Turning now to her account of how the name First Strokes came to be chosen, she says that a friend suggested the name to her after a 'long search'. What else does she say on the point? She states, "The first time I became aware of First Strokes Swim School[s] Ltd [i.e. the company] was when I received a Dispute from Nominet." In the Response, she says, "The trading name of my business is First Strokes. The trading name of their company is 'First Strokes Swim Schools' – which is different." She also says that she did not know that the Domain Name was registered to FSSSL prior to expiry of its registration. It might be said that all this adds up to a position that she had never heard of First Strokes before she made the choice of name. However, I bear in mind that she makes no direct and unequivocal assertion that she had not. She does not say that neither she nor her friend came across another swimming business trading as First Strokes in the course of the long search. I would have expected an unequivocal statement to that effect to have been made, had that been the case.
- Her evidence as to the 'long search' is very unsatisfactory. No mention is made of what that 'long search' consisted of. It is likely to have embraced a Google or like search. She does not say that an internet search produced no evidence of a similar business trading as First Strokes. Further, the existence of another business in another part of the south-east of England is unlikely to have remained hidden from an extensive search, however made. There is no reason to suppose that firststrokes.com was not active at the time Ms Lancaster chose the name First Strokes and I infer that it was. It is likely that she saw the content of FSSSL's web-site at firststrokes.com in similar or substantially the same form as it recently appeared to me.
- In all the circumstances, I find it likely that her research unearthed the business of FSSSL trading as First Strokes, though I am quite prepared to believe that it did not reveal FSSSL as the company behind it. I therefore find that Ms Lancaster did have the requisite knowledge. Did she have the necessary intent?
- The position is that when Ms Lancaster chose the name First Strokes, she was aware of the other business carried on in the south-east of England and knew that it provided swimming lessons for starters. I have found that customers of FSSSL would be likely to access Ms Lancaster's site in order to find out about the business in fact carried on by FSSSL and that they would be confused into thinking that it had opened up pools in East Sussex. I find that Ms Lancaster would have been and was alive to the likely reactions of these customers when they saw her web-site. However, the proper inference to be drawn from her non-standard submission is that she decided that she could legitimately use the same trade name, because the other business was not trading in East Sussex or Kent. In those circumstances, did she have the necessary intention as required by paragraph 1 of the Policy? I find that on those facts she did have that intention.
- In view of the fact that she had both the knowledge and intention to confuse customers of the business run by FSSSL, her use of the Domain Name is and is likely to remain, unfair. No doubt there will be visitors to her web-site who are unaware of the other business. However, her use of the Domain Name will lead to, what I find to be, deliberate confusion and, as a result, deliberate disruption of the business of FSSSL.
- Weighing up all the relevant factors, I find that the registration firststrokes.co.uk is an Abusive Registration.
- Decision
- In the light of the foregoing findings, namely that the Complainant has Rights in respect of names that are similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration, the Expert directs that the Domain Name be transferred to the Complainant.
Signed: Stephen Bate Dated: 28 November 2008