1. The Parties:
Complainant: Begetube (UK) Ltd
Country: GB
Respondent: Damian Baker
Country: GB
begatube.co.uk
This complaint was received and validated by Nominet on 15 December 2008 and the Respondent notified on 18 December 2008. A Response was received on 14 January 2009, and Complainant's reply to the Response was received and a mediator appointed on 16 January 2009. On 4 February 2009 the status of the dispute changed from Mediation to a request under Nominet's DRS Procedure. After confirmation that he was independent of the Parties and knew of no reason why he could not accept appointment as Expert, the undersigned, Peter Davies, was appointed Expert on 5 February 2009 and confirmed as Expert on the same date.
The Complainant has acted since March 1999 as a UK agent for Begetube NV a Belgian manufacturer of under floor heating systems. Acting under its agency agreement, Complainant made authorised use of the brand name Begetube and registered begetube.co.uk in December 1999.
The Respondent is a former customer for Begetube products supplied by the Complainant, operating as an "approved installer" of Begetube systems.
In February 2003 the commercial relationship between the Parties terminated. The Respondent continues in business as an installer of under floor heating systems.
The Domain Name was registered by the Respondent in April 2008.
5.1 Complainant
The Complainant is the UK agent for Begetube NV, a Belgian company supplying under floor heating systems, operating under an agency agreement dated 22 March 1999. This agreement contains a clause which sets out the Complainant's right to use the Begetube name and logo. The Complainant is the registrant, since December 1999 of the begetube.co.uk domain name.
The Complainant's trading name is frequently misspelled as "Begatube", causing problems for customers, suppliers and others wishing to contact the company or access its website. To avoid this confusion, the Complainant intended to register the Domain Name and set up a re-direct service to its website and email address. They discovered that the Domain Name, together with the domain name begatube.com had already been registered by the Respondent.
The Respondent is a former customer of the Complainant, purchasing heating systems and operating as an approved installer of Begetube products. This relationship came to an end in February 2008. Legal proceedings were subsequently commenced by the Complainant against the Respondent in respect of unpaid invoices. Full payment was received on the eve of the first court hearing.
The Respondent's current supplier of heating systems is a former employee of the Complainant. It is the Complainant's view that both the Respondent and his supplier must be aware of the spelling confusion and of the harmful consequences for the Complainant of the Domain Name being in the Respondent's hands. A test email confirmed that messages were re-directed to the Respondent, causing confusion to existing and potential customers and exposing the Complainant to the risk of sensitive customer information ending up in the Respondent's hands.
The Respondent has registered the Domain Name firstly to direct current and potential customers away from the Complainant, intending to harm the Complainant's business and unfairly benefit his own business. The actions of the Respondent are maliciously motivated, arising out of the breakdown of the commercial relationship with the Complainant and the subsequent legal proceedings.
5.2 Respondent
The Respondent set up his company in 2003 and has invested in the Begetube brand name since that time. In 2008 The Complainant's company split, with one member of the family proprietors leaving to set up another company, Optimum UFH. Respondent wished to source products from both companies against the wishes of the Complainant and was the victim of unfair competitive activity as the Complainant attempted to poach the Respondent's customers and business contacts.
The Respondent registered the Domain Name, and re-directs email and website contacts to his own company site. The Respondent takes such commercial advantage as this affords, as compensation for several years of investment in the Begetube brand and loss of customers and other business contacts arising out of the Complainant's unfair competitive activity.
The Respondent currently sources all his products from Begetube NV in Belgium via Optimum UFH. This company is therefore getting the benefit from the re-directed traffic.
Complainant's Reply
The Complainant alleges many factual inaccuracies in the Respondent's submission. Having severed his ties with the Complainant he now has no rights in the company name or brand. The Respondent now obtains other products from other suppliers and any investment he made in support of the brand in the past is irrelevant to the issue under consideration. Similarly, the Respondent's claim that Begetube NV still benefits from business re-directed from The Complainant to the Respondent is neither accurate nor relevant to these DRS proceedings.
This Dispute is part of a broader and more complicated breakdown in commercial relations between the Parties. Each Party has made submissions, for the most part supported by evidence of some sort, which concern aspects of the case which fall outside the scope of the DRS Procedure.
Paragraph 2 a. of the Policy requires the Complainant to prove, on the balance of probabilities, that:
i. The Complainant has Rights in respect of a name or mark which is identical to the Domain Name; and
ii The Domain Name, in the hands of the Respondent, is an Abusive Registration.
This Decision will accordingly confine itself to consideration of those submissions of the Parties which directly address these issues of the Complainant's Rights and whether or not the Registration is an Abusive Registration.
The Complainant's Rights
The Complainant has submitted evidence of its contractual right to use the Begetube company name and logo, and of goodwill generated by its investment in this brand. The DRS Policy defines Rights as
"…..rights enforceable by the Complainant, whether in English law or otherwise…"
With respect to the company name Begetube, The Complainant's contractual rights under its agreement with Begetube NV appear to fall squarely within this definition. It is also probable that the Complainant would benefit from other common law rights in the name.
Paragraph 3 a i of the Policy, quoted above, requires that the Complainant's rights be in a name which is identical or similar to the Domain Name. The difference between the name in which the Complainant has rights and the Domain Name is a single changed vowel. Complainant claims that there are frequent misspellings by customers and others, although only one statement from a third party was included as evidence of such confusion. However the similarity is sufficiently close to justify the conclusion that the Complainant has rights in a name similar to the Domain Name, sufficient to satisfy the test in paragraph 3 a i of the Policy.
Evidence of an Abusive Registration
Paragraph 3 a ii of the Policy requires the Complainant to show on the balance of probabilities that the registration, in the hands of the Respondent, is an Abusive Registration. The DRS Policy defines an Abusive Registration as one 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 has taken unfair advantage of or has been unfairly detrimental to the Complainant's rights.
Paragraph 3 of The Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. Included in this list are:
3 a. i.C for the purpose of unfairly disrupting the business of the Complainant, and
3 a. ii Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which as confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with The Complainant.
It is not difficult to find, on the balance of probabilities, that the Complainant's business has been, or could be, disrupted in the ways described in the Complainant's submissions. However, the Respondent's case appears to be that any disruption to Complainant's business would not be unfair, as it would correct the detrimental effect of the Complainant's unfair competitive activities and provide the Respondent with the compensation to which he feels entitled. Consideration of the merits of these arguments falls outside the scope of the DRS Procedure and must be left to the courts. It is perhaps sufficient to say that while the Respondent has a view on his entitlement to compensation, his registration of the Domain Name and attempts to re-direct online traffic away from the Complainant to his own business site are inappropriate means of asserting his rights. Within the more limited terms of the DRS Policy, the balance of probabilities appears to the Expert to favour the Complainant. The risk of disruption to the Complainant's business is real, and the Respondent's unilateral actions in causing and taking advantage of the disruption appear unfair.
The issue of actual or possible confusion is more straightforward. The Complainant has submitted only limited evidence of confusion, but the Respondent does not offer any counter-argument on this point. It can reasonably be inferred from the Respondent's submission that attracting interested parties away from Complainant's site and towards his own was his objective. Accordingly, I find that there is actual or possible confusion of the kind contemplated by Paragraph 3.a.ii above, and that the Registration is therefore an Abusive Registration.
I find that the Complainant has Rights in a name identical or similar to the Domain Name and that the Registration is an Abusive Registration in the hands of the Respondent. I direct that the Domain Name be transferred to the Complainant accordingly.
Signed: Peter Davies Dated 23 February 2009