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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Fish 4 Ltd -v- Clickandstay [2003] DRS 1097 (6 October 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1097.html Cite as: [2003] DRS 1097 |
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Nominet UK Dispute Resolution Service
DRS 001097
Fish 4 Limited –v- Clickandstay
Decision of Independent Expert
1. Parties
Complainant: Fish 4 Limited
Respondent: Clickandstay
2. Domain Names
fish4this.co.uk and fish4holidaydeals.co.uk (the Domain Names)
3. Procedural Background
The Complaint was lodged with Nominet on 7 July 2003. Nominet validated the Complaint and informed the Respondent on 10 July 2003 that the Dispute Resolution Service (“DRS”) had been invoked and that the Respondent had 15 working days (until 1 August 2003) to submit a Response.
The Response was received by Nominet on 29 July 2003 and sent to the Complainant on 30 July 2003. The Complainant did not file a Reply. The Informal Mediation stage of the DRS took place but no resolution of the dispute was achieved. The parties were informed accordingly, and on 15 September 2003 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to Paragraph 6 of the Nominet DRS policy (the “Policy”). On 17 September 2003 Nominet appointed Andrew Clinton (“the Expert”). On the same day the Expert confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case, and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. The Facts
The Domain Names were both registered on 5 February 2003 in the name of the Respondent.
5. The Parties’ Contentions
5.1. Complaint
The Complaint, so far as is material, reads as follows:-
1. The Complainant Company was incorporated on 22 September 1995 in the United Kingdom. Copies of the Complainant’s website are at annex 1(a). The Complainant launched as an Internet brand in October 1999. Copies of some of the press reports detailing the launch and the new brand are at annex 1(c). Fish4 combines six consumer information websites, which are among the United Kingdom’s leading sources to find homes, lettings, cars, jobs, a directory service and local news. In the first three months after its launch, the Complainant spent over £960,000 on marketing and advertising. Between October 2001 and September 2002, the Complainant spent approximately £12,000,000 on marketing and advertising. Copies of the Complainant’s marketing reports and visitor surveys are at annex 1(b). The Complainant’s revenue for the year ending 30 September 2002 was approximately £2,400,000. The number of hits to its websites in the month of December 2002 was just over 2 million. The Complainant’s traffic report for the months January to December 2002 are at annex 1(d). The Complainant is regularly featured in both the regional and national press. Copies of press articles are at annex 1(c). The Daily Telegraph has reported the Complainant as being in the top 10 of all websites. Indeed, given the problems that other online brands have experienced in the last couple of years, the Complainant’s business is one of only a handful of successful online businesses.
2. The Complainant has registered the following seven trade marks: fish4it, fish4jobs, fish4homes, fish4cars, fish4news, fish4money and fish4me. The Complainant also has registered two “fish4” trade marks. Copies of the Trade Mark Certificates are at annex 2. The Complainant has been using all of the above Trade Marks since its launch in October 1999 and uses all the Trade Marks in respect of its online business activities, promotional material, printed material and in particular, information services relating to transport and travel arrangements. The Complainant has also registered and uses over 140 domain names where the prefix is “Fish4” used with another word. Copies of the domain name details are at annex 3. For example, the Complainant has registered and uses fish4holidays.co.uk and fish4it.co.uk.
3. The Complainant considers that the Respondent registered the Domain Names for the following purposes :
(a) To sell to the Complainant or its competitors, for valuable consideration in excess of the Respondent’s documented out of pocket costs directly associated with acquiring or using the Domain Names.
The Complainant’s representative first wrote to the Respondent on 10 June 2003 after the Complainant became aware of the Respondent registering the fish4this.co.uk domain name and using it to point to a website, which was offering similar services to the Complainant, namely an online directory service. Following this letter, the Respondent telephoned the Complainant’s representative to argue that he was being “bullied” and had a right to the domain name. During that conversation, the Respondent stated that he would be amenable to negotiate selling the domain name. The Complainant then became aware that the Respondent had registered a further domain name which incorporated “Fish4”, namely fish4holidaydeals.co.uk. The Complainant’s representative wrote a further letter on 18 June 2003. On 24 June 2003, the Respondent telephoned the Complainant’s representatives again to inform them that he was selling the Domain Name on the online auction website, Ebay (www.ebay.co.uk). The Complainant noted that fish4holidaydeals.co.uk was indeed for sale on Ebay with a very small amount of time in which to bid for it. The Complainant attempted to purchase the domain name from Ebay, but was unsuccessful. The Complainant’s representative then telephoned the Respondent and was told that the fish4holidaydeals.co.uk domain name had been sold on Ebay, but that the Respondent was in the process of selling the fish4this.co.uk domain name to a private buyer, who might be a competitor of Fish4. Copies of all correspondence are at annex 4.
(b) For the purpose of unfairly disrupting the business of the Complainant.
According to the WHOIS listing, the Respondent registered the Domain Names on 5 February 2003. The Complainant believes that, given that the Complainant’s business launched in October 1999 and since then, the Complainant has established extensive goodwill in its Trade Marks, the Respondent was aware of the existence of the Complainant’s brand and Trade Marks at the time he registered the Domain Names. The Domain Names do not reflect the name that the Respondent’s business is commonly known by. The Respondent’s business is known as “Click and Stay”. The Complainant therefore asserts that the primary purpose for registering the Domain Names was to attract Internet traffic away from the Complainant’s websites and to the Respondent’s website. The Respondent’s intention to disrupt the Complainant’s business is further highlighted by his threats to sell fish4this.co.uk to a competitor of the Complainant. Copies of the WHOIS listing and the Respondent’s website are at annex 5.
4. The Complainant considers that the Respondent is using the Domain Names in a way that has confused people or businesses into believing that the Domain Names are registered to, operated by, or otherwise connected with the Complainant.
The Domain Names are confusingly similar to the Complainant’s registered Trade Marks in annex 2, in particular its “Fish4” Trade Marks. The Respondent has simply added the word “this” and holidaydeals” at the end of “fish4”. The Complainant contends that “fish4” is a highly distinctive term to use as a prefix for a Domain Name. In respect of the addition of “this”, the Complainant contends that this does not make the domain name any different from say, its “fish4it” or “fish4me” Trade Marks. In respect of the addition of the “holidaydeals”, because the Complainant offers a directory service, which includes a search for hotels and travel companies, and because the Complainant’s Trade Marks are registered for use with the provision of online travel information, the use of this word in conjunction with Fish4 adds to the confusion. The Complainant further believes that in using the Domain Names to point to a website offering similar services to the Complainant, namely, online directory services, the Respondent is disrupting the Complainant’s business by creating a likelihood of confusion with the Complainant’s business. People visiting the Respondent’s site will believe the Complainant is in some way connected with the Respondent.
5. As a result of the circumstances outlined above, the Complainant considers that the Domain Names, in the hands of the Respondent are abusive registrations.
The Complainant seeks a transfer of the Domain Names.
5.2. Response
The Respondent’s Response, so far as is material, reads as follows:-
“Re fish4this.co.uk We at clickandstay.com have for the last 3 years offered a fair and easy way firstly for customers looking to book hotels, campsites etc to find what they are looking for without being bombarded with offers to sell them things that they more often than not do not need or want. We have also provided low cost and unrestricted advertising to the hospitality industry. Fish4this.co.uk was created as a user friendly search portal. It is in no way a copy of the fish4 group site. The main difference being that we only allow one site per subject. Another major difference is that we actually vet each site before we will even consider allowing them onto our portal. You are guaranteed, when using our portal, that it will be free from any pornography or confidence tricksters. This is because we put the principal before the money. If fish4 truly believe that we are trying to trade on their name they could not be more mistaken. For a start, the traffic that fish4this.co.uk enjoys comes mainly from clickandstay.com. This is fact. We did not buy the domain names fish4this.co.uk and fish4holidaydeals.co.uk with anything more in mind than finding a more catchy name for our general portal and a return link to clickandstay.co.uk without deviating from the theme, which just happens to be fish4this and could quite easily have been search4this or click4this if it had been available at the time. It took us by surprise when we received the nasty letter from Sarah Monk attempting to bully us into giving up a business that we have spent time and money creating and growing. The mere suggestion that we would go to all the trouble of building up a client base, I might ad, using the established and trusted name of clickandstay.co.uk to support the campaign simply to try to then sell the name at a premium to the fish4 group. How much would they want to jeopardise their business. There are no words to describe how absurd Sarah Monk’s suggestions are. We had no idea when we bought these domains that any one could be so precious about them but if it made them feel so bad not to have them, why don’t they ask nicely if an arrangement can be made and excuse me please Mr or Mrs Person who has paid for this domain name. However, being understanding people, we did attempt to come to an arrangement with the fish4group. We offered them the name fish4this.co.uk on the understanding that we will obviously have to refund monies to some clients who may not appreciate a sudden name change. Also, money, time and effort spent by ourselves creating and building this worthy project. They were offered fish4this.co.uk for just £2500 (we even went as far as to set up their own special URL with a facility to pay by credit/debit card so that if they really were so desperately upset, they would not have to meet us to pay us) and as for fish4holidaydeals.co.uk. We considered the most fair thing to do all round was to put it on Ebay and start it at £1, they could have bought for £51. The problem we have now is that the winning bidder is expecting to have his domain name transferred to him and he can not have it due to this ridiculous situation. We are, and always have been prepared to come to an arrangement with the fish4 group. We have read a lot of these cases where they are bullying people into handing over their domain names, which in our case would mean a part of our livelihood and then they spread it all over the news like a supermarket giant closing down corner shops than laughing as hard working people lose out. I ask for fairness when you make your consideration. We have worked very hard to build an Internet business and probably at the worst time in Internet history. Please allow us to carry on in our belief that all are equal on the World Wide Web. We believe this and do not want to find place for monopolisation or bullying. Please contact me anytime day or night with regard to this matter. Kind regards. Phil Powell”.
6. Discussions and findings
Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities: first, that it has Rights in respect of a name or mark which is identical or similar to the Domain Names; and secondly, that the Domain Names, in the hands of the Respondent, are Abusive Registrations.
6.1. Complainant’s Rights
The Complainant has provided evidence of its rights in the well-known trade mark “fish4” together with the trade marks “fish4jobs” “fish4cars”, “fish4homes”, “fish4me”, fish4it”, “fish4money”, and “fish4news”. The Complainant is the registered proprietor of the aforementioned trade marks under registration numbers 2209820A-H inclusive, all of which were issued on 27 September 1999. In addition, the Complainant has registered a large number of domain names where the prefix “fish4” is used with another word. One example of which is the domain name “fish4holidays.co.uk” which was registered on 15 October 1999.
It is clear to the Expert that the Complainant has rights in the mark “fish4” which it habitually uses in conjunction with another word, usually descriptive of the services offered. The Domain Names both use the identical prefix with another word or words added. The distinctive element is clearly “fish4” and the Expert finds that the Complainant has rights in marks which are similar to the Domain Names.
6.2. Abusive Registration
Abusive Registration is defined in paragraph 1 of the Policy to mean a Domain Name 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 took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
Non-Exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy as follows:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. It is independently verified that the Respondent has given false contact details.
The Complainant relies upon paragraphs 3aiA, 3aiC and 3aii which, for the sake of convenience, I will refer to as follows:-
3aiA – Sale for Excess Consideration
3aiC – Unfair Disruption
3aii – Confusion
I consider each factor in turn.
Sale for Excess Consideration – para 3aiA
The Complainant refers to telephone conversations between its solicitors and Philip Powell from the Respondent on 11 and 25 June 2003. The Complainant has attached attendance notes of those telephone conversations to its Complaint. The conversations took place after the Complainant’s solicitors had sent letters demanding that the Respondent transfer the Domain Names to the Complainant.
The Complainant says that the conversations establish that the Respondent was amenable to negotiating the sale of fish4this.co.uk, that fish4holidaydeals.co.uk was being sold on ebay and that the Respondent was intending to sell fish4this.co.uk to a third party that might be a competitor of the Complainant.
The Respondent does not seek to deny that the conversations took place. Indeed, the Respondent accepts that it was willing to come to some arrangement with the fish4group, that if the Complainant wanted fish4this.co.uk it should put in a bid and that it offered fish4this.co.uk to the Complainant for £2,500.
In relation to fish4this.co.uk there is clear evidence that, after being challenged, the Respondent intended to sell the domain name for a sum in excess of its documented out-of-pocket expenses. The Respondent says that a sale would need to be on the understanding that it would need to refund some of its clients and contribute towards the money, time and effort it put in, ie it would be at a sum in excess of its acquisition costs. The position in relation to fish4holidaydeals.co.uk is less clear. The Respondent clearly wanted to sell it and says it did sell it through ebay for £51 although it remains registered to the Respondent and points to the Respondent’s web-site. However, the Respondent did tell the Complainant that it was to be sold on ebay, presumably to give the Complainant the opportunity of trying to buy it at auction. The Expert does not need to come to a final view on this ground as, for the reasons set out below, he is satisfied on other grounds that the Domain Names are, in the hands of the Respondent, Abusive Registrations.
Unfair Disruption – para 3aiC
The explanation offered by the Respondent for registering the Domain Names is that it wanted a more catchy name for its general portal and a return link to clickandstay.co.uk without deviating from the general theme, which just happens to be fish4this and could quite easily have been search4this or click4this if it had been available at the time.
In the telephone attendance note dated 11 June 2003 Mr Powell is said to have explained that the reason the Respondent registered fish4this.co.uk was because it rhymes. The Respondent is a competitor of the Complainant in that it offers similar services, namely an on-line directory. The Respondent has failed to provide any evidence that it has a legitimate connection to the highly distinctive mark “fish4”. The explanations for its choice of the Domain Names, such as they are, lack credibility when viewed against the Respondent’s actions.
The Respondent seeks to suggest that the Domain Names were to be a part of its portal. However, when challenged by the Complainant’s solicitors it lost no time in attempting to sell the Domain Names. The reason given by the Respondent for offering fish4holidaydeals.co.uk for sale on ebay (according to the print-out from ebay attached to the Complaint) is that fish4holidaydeals.co.uk was bought for a part of the business which had been written out of the clickandstay plan due to the ever increasing workload.
The Respondent made a point of informing the Complainant that the Domain Names were to be sold on ebay but refused to inform the Complainant who had purchased fish4holidaydeals.co.uk. The Respondent was also quite happy to tell the Complainant that it was intending to sell fish4this.co.uk to a third party which might be a competitor to the Complainant.
The Expert finds on the balance of probabilities that the Domain Names are, in the hands of the Respondent, Abusive Registrations because there are circumstances (described above) that indicate the Respondent acquired the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant.
The Expert is also of the view that the Domain Names are Abusive Registrations in that they have been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights within the meaning of paragraph 1ii of the Policy.
Confusion – para 3aii
The Complainant refers to the potential for confusion but, in the Expert’s view, paragraph 3aii requires evidence of actual confusion, so the challenge under this ground fails.
Non-exhaustive factors – paragraph 4 of the Policy
The Expert does not find that any of the factors set out in paragraph 4 of the Policy (which consist of a non-exclusive list of factors that may be evidence that the Domain Names are not Abusive Registrations) are present in this case.
Decision
The Expert finds that on the balance of probabilities the Complainant has rights in a mark which is similar to the Domain Names and that the Domain Names are, in the hands of the Respondent, Abusive Registrations. The Expert directs that the Domain Names be transferred to the Complainant.
Andrew Clinton
Date: 6 October 2003