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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Legal Surfing Ltd -v- Millennium Internet Know-How [2003] DRS 1113 (3 September 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1113.html Cite as: [2003] DRS 1113 |
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NOMINET UK DISPUTE RESOLUTION SERVICE
DRS 01113
LEGAL SURFING LIMITED
- AND -
MILLENNIUM INTERNET KNOW-HOW
RE: LEGAL SURFING.CO.UK
Decision of Independent Expert
Parties:
Complainant: Legal Surfing Limited.
Represented by: Ms. Susan Dixon
Respondent: Mr. Colin Ward
Represented by: Unrepresented.
Disputed Domain Name: legalsurfing.co.uk
Abbreviations used in this decision:
Abbreviation Definition
The Domain Name Legalsurfing.co.uk
Legal Surfing The Complainant
DRS Nominet UK's Dispute Resolution Service
DRS Policy Nominet UK's Dispute Resolution Service Policy
DRS Procedures Nominet UK's Dispute Resolution Service Procedures
The Expert Kirsten Houghton
Procedural Background:
1. The Complaint was lodged with Nominet on 17th July 2003 and hard copies were received on the same day.
2. Nominet validated the Complaint on 18th July 2003.
3. Nominet sent the complaint to
(a) The Respondent’s address by post on 18th July 2003; this letter was returned marked “Not known at this address” and
(b) By e-mail to milfac@dial.pipex.com on 18th July 2003, an e-mail address provided by Legal Surfing. The e-mail was returned stating “user unknown” and
(c) postmaster@legalsurfing.co.uk by e-mail on 18th July 2003.
4. There is no evidence in the file that the complaint was received by or on behalf of the Respondent. Mediation was not attempted.
5. On 13th August 2003, the Respondent paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the DRS Policy.
6. On 13th August 2003, I confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.
Service of the Complaint
7. On receipt of the complaint file, it became apparent that Legal Surfing had, unfortunately, consistently misspelled the word “Millennium”, using only one “n”, and that the contact details held against the domain name by Nominet were incorrect.
8. Accordingly, I requested Legal Surfing under Rule 13 of the DRS Procedures to identify all the steps which it had taken to trace the Respondent, who was said in the complaint to be untraceable. Legal Surfing replied:
“The initial query was to contact a former employee of Millennium (i.e. Colin Ward), Sonja Hardy, to establish his whereabouts. She gave a contact e-mail but had no further information. She stated that she believed Mr Ward now resides in the Birmingham area.
A search was also conducted at Companies House without success.
Post Script:
A further search has been conducted at Companies House after it was realised that the original search misspelled Millennium, for which I thank Ms Houghton. Colin Ward has been traced and has agreed to arrange the transfer of the domain name on behalf of Millennium Facilities Limited trading as Millennium Know–How. The form has been posted to him tonight and it is hoped to arrange for the completed form to be received by Nominet UK by Friday 29 August 2003.”
9. Legal Surfing also provided a copy of the original invoice, which showed that it was submitted by Millennium Facilities Limited trading as Millennium Internet Know-How.
10. Despite the apparent agreement of the Respondent to effect a transfer, I have nevertheless been requested by Legal Surfing to proceed to make a decision. I do not know whether Nominet have in fact received the transfer application.
11. I am satisfied on the materials I have seen that Nominet complied with the provisions of the DRS Procedures regarding the service of documents on the Respondent.
12. However, it is very unfortunate that a simple spelling mistake on the part of Legal Surfing has resulted in what appears to have been unnecessary expenditure. This Complaint highlights the need for future complainants to be extremely careful when making assertions that efforts to trace respondents have failed, since Nominet is not required under the terms of the DRS Policy to undertake any independent verification of the contact details supplied by Legal Surfing, or those held in its database, when serving documents on respondents.
13. No response has been forthcoming from or on behalf of the Respondent other than its apparent willingness, communicated to Nominet by Legal Surfing, to make the transfer, apparently free of charge to Legal Surfing.
Outstanding Formal/Procedural Issues (if any):
14. None. I consider that Nominet has taken adequate steps to ensure that the Respondent has been made aware of the Complaint.
The Facts:
(1) The Parties – Legal Surfing
15. Legal Surfing is an English company which provides company secretarial and associated services to limited companies from premises in Cambridge. Ms. Susan Dixon is a director of Legal Surfing.
(2) Legal Surfing’s rights
16. Legal Surfing does not have the benefit of any registered marks to protect its name. However, I am told that:
(a) it has consistently traded under this name since the date of its incorporation in January 1998,
(b) that it owns the domain name legalsurfing.com as well as having a website at the URL www.legalsurfing.co.uk and
(c) that it is the sole user of the name “Legal Surfing”.
17. I have not been provided with any details of Legal Surfing’s turnover or penetration into its market. However, I have seen:
(a) copies of a number of newspaper cuttings advertising and referring to Legal Surfing in 1998 and 2001,
(b) a copy of an invoice for stationery dated 27th April 1999 for business stationery incorporating the URL www.legalsurfing.co.uk, which Legal Surfing appears to use as its primary web page address and
(c) a copy of a page of the website.
(3) Legal Surfing’s rights in the Domain Name
18. In the light of the above, I accept that Legal Surfing has common law rights in the name “Legal Surfing” which are capable of protection by way of an action for passing off.
(4) The Parties - the Respondent
19. The Complaint tells me very little about the Respondent, other than Mr. Ward was Legal Surfing’s primary contact and “that he was an agent for the organisation which registered domain names.”
20. I have now been provided with a copy of the invoice submitted by the Respondent to Legal Surfing. It appears that Millennium Internet Know-How was a trading name for a company called Millennium Facilities Limited. A free company search conducted through the Companies House website showed that this company is now based in Telford in Shropshire and that a proposal has been made to strike off the company.
21. The invoice indicates that the Respondent was to provide the following services to Legal Surfing:
“Register Domain Name Only (legalsurfing.co.uk) includes 2 years Name Registration Fees”
and that a fee of £100 plus VAT was charged for this service.
22. I have been told by Legal Surfing that, after the initial registration, the Respondent did not contact it again, and did not request further payment for renewal fees. I am also told that Legal Surfing’s current website host arranged for the payment of the renewal fees, when it became apparent that the registration had lapsed after Legal Surfing’s e-mail address ceased working. Fortunately, Nominet accepted the payment and it does not appear that Legal Surfing has suffered any significant interruption of use of the Domain Name.
(5) The Complaint
23. The Complaint is very sparse:
“Mr Ward informed me that he (Millenium Internet Know-How) was an agent for the organisation which registered domain names and offered to register the name www.legalsurfing.co.uk on behalf of Legal Surfing Limited, to which I agreed. I was given to understand at the time that registration would be granted to Legal Surfing Limited, and not to the agent.
Registration of the name continued until it was discovered that Legal Surfing was not receiving emails and the Company's website provider looked into the matter to discover that the registration would expire shortly. In order to protect the business interests of Legal Surfing Ltd, Legal Surfing Ltd immediately paid the continuation fee (via my personal expense account).
Legal Surfing Limited has consistently used the domain name since it was registered. This can be confirmed by Virtual Business Network Limited and Analysys Limited, Legal Surfing's current and former website hosts. Furthermore, Legal Surfing owns www.legalsurfing.com. The Company was incorporated as Legal Surfing Limited on 06 January 1998 (no 3489174).
I believe that the matter may be further complicated as I understand that Analysys Ltd paid the subscription on behalf of Legal Surfing Ltd, without realising who the registrant was (they n then recharged Legal Surfing). Certainly Millenium have not invoiced Legal Surfing Ltd since the original registration.
Registration of the name by Millenium Internet Know-How is an abusive registration:
1 Legal Surfing was falsely given to understand that the domain name was in Legal Surfing's name and that Millenium was an agent. Had Millenium been an agent the name would be in Legal Surfing's name.
2 Millenium failed to maintain registration on Legal Surfing's behalf.
3 Although there is no regsitered (sic) trademark, Legal Surfing Ltd is the sole user of the mark and name, and has been since 06 Janary (sic) 1998.
4 Legal Surfing Ltd has had a website in the name of www.legalsurfing.co.uk since early 1999.
Legal Surfing tried to sort out this matter directly with Mr Ward but he cannot be traced. Legal Surfing seeks to have the domain name www.legalsurfing.co.uk transferred into its name.”
(6) Discussion and findings:
24. Abusive Registration: Legal Surfing must establish, on the balance of probabilities, that the Domain Name, in the hands of the Respondent, is an abusive registration. Abusive Registration is defined in the DRS Policy as:
"… 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."
25. Clause 3 of the DRS Policy sets out a non-exhaustive list of factors to which I may have regard in determining whether the registration of the Domain Name is abusive in the hands of the Respondent. They include:
(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…"
26. The Complaint does not specifically refer to any of these grounds of complaint. It simply relies upon the fact that Mrs. Dixon, for Legal Surfing, believed that the respondent was acting as an agent in effecting the registration and that, in those circumstances, registration in its own name was an abuse.
27. Mrs. Dixon was unable to provide any documentation to support her assertions, other than the invoice referred to above. She did, of course, sign the declaration of truth.
28. This complaint is similar to a number of other complaints which have reached the decision stage of the DRS Procedure. It seems to be fairly common that complainants who have paid “agents” to register domain names for them have subsequently discovered, after the initial registration period, and normally when the “agent” has disappeared or been dissolved or struck off, that “their” domain name was registered in the name of the “agent” not the client. This is often in circumstances where the original arrangements for the provision of the services by the agent are not very well defined, and, in particular, where the parties do not appear to have considered in whose name the domain name is to be registered.
29. Two examples are:
(a) DRS 000692 – Cityid.co.uk and
(b) DRS 000984 – trghotpress.co.uk.
30. In both these cases, the evidence submitted to support the case was also very limited and the experts reached different views.
31. In cityid.co.uk the expert decided that an “error” on registration which caused the name to be registered in the name of the agent not the client did not amount to an abusive registration, saying:
“The problem for the Complainant is that the registration appears more accurately to be characterised as a simple mistake rather than an abuse. The Complainant itself refers to the registration as being “an error that only came to our attention in August 2001”, and as “an error on the part of Meta Union Design” [Expert’s emphasis].
In the Expert’s view, it would go beyond the intent and the wording of the Dispute Resolution Policy to stretch the meaning of “Abusive” to encompass the result of what appears to be no more than an unintended, albeit unfortunate (for the Complainant), error. For a registration to be “Abusive”, there surely must of necessity be an element of intentional wrong or a manifest deceit. This does not mean that an enquiry into the original intent, or state of mind, of the registrant is required. In some cases, that a registration is abusive will be apparent simply from the facts, for example, where a famous mark is registered by a party with no connection with the rightful owner of the mark concerned.
However, that is not the situation in the present case. The Complainant acknowledges that it instructed Meta Union design to register the Domain Name. The evidence shows that Meta Union Design did so and provided the Complainant’s details as the relevant contact details for the Registrant. Unfortunately, through an “error” (and, owing to lack of any supporting documentary or other evidence, it is not entirely clear whether the “error” was actually made by Meta Union Design in the instructions to Nildram, or perhaps by Nildram in its interpretation of those instructions) the Domain Name Registrant was recorded as Meta Union Design instead of City ID Limited.
It is conceivable, of course, that Meta Union Design might have deliberately misrepresented the position to have itself recorded as Registrant so as to maintain some unfair leverage over City ID Limited as its client. That might have sufficed to qualify the registration as “Abusive”. However, there is no evidence of any such malign intent and no suggestion to that effect. Rather, the Complainant asserts that Mr. Fendley, who appears to have been the Director responsible for the work done by Meta Union Design at the time, would support the Complainant’s claim that the mis-registration was due to “an error”. It seems improbable, however, that Mr. Fendley would be willing to go so far as to characterise that mistake as an “Abusive” registration, particularly when the Complainant is apparently itself uncertain about what contractual terms were express or implied between the parties at the time the relevant work was commissioned.
However, as the Complainant did not submit any supporting documentation, whether by way of a witness statement from Mr. Fendley or otherwise, what might or might not have been said remains mere speculation.
Unfortunately, the Complainant also appears not to have understood that the basic legal maxim “he who asserts must prove” applies to the DRS, so that it is the Complainant’s responsibility, and not Nominet’s or the Expert’s to provide supporting evidence or conduct any further investigations that may be needed to verify its claims.
As it stands, therefore, the Expert can only conclude that the registration in the name of Meta Union Design was the result of an essentially inadvertent oversight at the time.
Thus it cannot reasonably be said that the Domain Name “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”; at that time there is no evidence that there was any unfair advantage or detriment. MetaUnion Design was evidently working on the Complainant’s behalf and, had the parties been aware of the “error”, the expectation would no doubt have been that MetaUnion Design would have corrected any mistake in due course in completing its contractual obligations, such as they may have been. Nor is there any claim or evidence that the Domain Name “has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”
Consequently, the Expert is unable to find that the registration qualifies as an “Abusive Registration” for the purposes of the Policy.
The Expert does not reach this view without some reluctance and some sympathy with the Complainant, as it appears to have been the victim both of incompetence and an apparent contractual default on the part of Meta Union Design, which have subsequently been compounded by a rude lack of any remedial effort whatever by Icon MediaLab Limited as successors in business. However, having regard to all the circumstances, in this case the Expert would suggest that it would appear more appropriate for a remedy to be sought in ordinary contract law rather than through the DRS.”
32. In trghotpress.co.uk (a case in which a response was received), the expert reached a different conclusion:
Abusive Registration
“Abusive Registration” is defined in §1 of the Policy as a domain name which was registered or acquired or which has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights.
If, as the Complainant says, the Domain Name should have been registered in the Complainant’s name and remained under its control, it seems to follow that the Respondent’s registration of it in the Respondent’s own name was unfairly detrimental to the Complainant’s rights; and that the Respondent’s assertion that it is entitled to suspend the Complainant’s use of the Domain Name unless the Complainant retains its services is a use which takes unfair advantage of the Complainant’s rights. This is so whether the Complainant’s rights are those in its company name under the Companies Act, or in its trading name or the Domain Name at common law by virtue of their use, or in the Domain Name by contract.
If, on the other hand, as the Respondent says, the parties agreed that the Respondent would retain control of the Domain Name and would only make it available to the Complainant as long as the Complainant was using its services, it seems to follow that the registration in the Respondent’s name was not unfair, and that the Respondent’s assertion of its entitlement to suspend the Complainant’s use once the Complainant ceased to retain its services did not constitute unfair use.
The critical issue is which party is right as to the nature of the arrangement between them regarding the registration of the Domain Name. There is no clear documentary evidence confirming either of the rival contentions. However, the charge of £100 made by the Respondent specifically for the registration of the Domain Name allows a very substantial margin over the cost of effecting it. On the balance of probabilities, the Expert considers that this is more likely than not to reflect an agreement that the Domain Name would be registered in the name, and remain at the disposition, of the Complainant.
Accordingly the Expert concludes that the second requirement of the Policy (and the third basis of the first requirement) are met.
Given these findings, it is clearly appropriate that the Domain Name should be transferred to the Complainant.
33. In trghotpress.co.uk the expert also pointed out, I believe correctly, that the “rights” referred to in the DRS Policy are not limited to rights of a trade mark nature, but can include contractual rights. However, for reasons set out below, I believe that his construction of the word “Rights” in trghotpress.co.uk and also DRS 000442 (1and1.co.uk) upon which he relies, is too wide.
34. In this case, if Ms. Dixon’s assertion “she was given to understand at the time that registration would be granted to Legal Surfing Limited and not the agent” was a term of the contract between Legal Surfing and the Respondent, then registration in the name of the agent, whether deliberate or accidental, would be a breach of the terms of the contract. Whether such a breach, particularly if innocent, would amount to “unfairness” as required by the DRS Policy is more difficult. The expert in the cityid.co.uk case plainly thought that it would not.
35. Further, and more fundamentally, in my view, on its true construction the DRS Policy definition of “Rights” requires the rights asserted by the complainant to have been unfairly affected must be rights “in a name” (Definitions s. 1, and Rule 3(iv)). This, in my view, means that the rights referred to must be more than “relating to” or “connected with” a name, and should, in my view, involve some kind of ownership or usage rights, whether they are at first hand (i.e. clear ownership) or second hand (by licence or consent of the actual owner).
36. It is difficult in my view to categorise the behaviour complained of in these cases as infringements of rights “in a name” since the right alleged is effectively a right to sue for breach of contract relating to the standard of performance of the agency services. I respectfully agree with the expert in cityid.co.uk that such contractual disputes are better suited to the ordinary civil forum.
37. There is no evidence in this case that anything other than a simple error or misunderstanding may have occurred in the registration process. I gain some support from this view from the fact that, immediately he was traced, Mr. Ward for the Respondent agreed to transfer the Domain Name, apparently without charge to the Defendant.
38. I am not prepared to infer from Ms. Dixon’s statement that Mr. Ward made any positively deceitful or negligent statement to her from which she gained her understanding, although I have no doubt that she gained that understanding from their conversation.
39. I do not consider that payment of a relatively modest fee of £100 to an agent providing registration services is a pointer in either direction to the nature of the contractual agreement between the parties to the contract. In my view, this would be a neutral factor.
40. Further, I do not consider that there is anything inherently abusive in an agent registering a Domain Name in its own name, rather than its principal’s name, from the outset unless there is a clear wilful breach of contract on the part of the agent, with a view to securing some further advantage for the agent in breach of the agent’s duty of utmost good faith. There is no suggestion at all that any further conduct on the Respondent’s part (such as that described in trghotpress.co.uk) has occurred which would imply a sinister motive on the Respondent’s part from which the required degree of unfairness relating to rights in a name could be inferred.
Decision
41. In the circumstances, whilst I find that that Legal Surfing has Rights in respect of a name or mark which is similar to the Domain Name, in my opinion the Domain Name, in the hands of the Respondent, is not an Abusive Registration and no action should be taken as a result of this decision. In these circumstances, I am very pleased to learn that Legal Surfing will obtain a transfer voluntarily.
Kirsten Houghton
Date: 3 September 2003