HM Land Registry v Timewell Estates Plc [2003] DRS 652 (8 January 2003)

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The Complaint was lodged with Nominet on October 10, 2002. Nominet validated the Complaint and notified the Respondent of the Complaint on October 14, 2002 and informed the Respondent that he had 15 days within which to lodge a Response. The Respondent provided a Response on October 30, 2002 which was communicated to the Complainant the next day. Complainant's Reply was received on 11 November, 2002 and communicated to the Respondent the same day. The Respondent filed an informal Response subsequent to the Reply. Since the Response contained relevant information, was in answer to points made in the Complainant's Reply and was received by the Expert at the same time as the other papers the Respondent's informal Response subsequent to the Reply has been taken into account.

Mediation not succeeding, on December 13, 2002 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

Dawn Osborne, the undersigned, ("the Expert") confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.

The Complainant, established in 1862, is an Executive Agency, the government department with statutory responsibility for registration of title and interest in land in England and Wales. It is the owner of UK trade mark no. 2235007 LAND REGISTRY DIRECT in classes 9 and 42 for inter alia "land registry services" and "on line access to land registry data".

The Defendant is a private company offering services involving Land Registry searches. It has been trading for more than two years, at first under the domain timewell.co.uk, and since February 2002 using the Domain Name.

1. The Complainant, established in 1862 is an executive agency and government department with sole statutory responsibility for the registration and custodianship of title to and interests in land in England and Wales. On behalf of the Crown it guarantees title to the registered estates and interests in land. It provides a stable land registration system and provides ready access to up to date and guaranteed land information enabling confident dealings in property. There are about 18 million registered titles to land in England and Wales. On average the Complainant receives about 105,000 searches a day.
2. The Complainant is the owner of the domain name landreg.gov.uk. It has had a web site since 1996 which currently attracts about 4,000 visitors daily. Most people visit the web site to get information about the Land Registry or to obtain application forms for use in obtaining official data or in respect of our published property price reports. About 65 queries a day are received via the web site. The Complainant also owns the following domain names which are inoperative landregistry.uk.net, landregistry.tv, landregistry.gb.com, landregistry.eu.com, landreg.org.uk.
3. The Complainant is the registered proprietor of UK trade mark registration no 2235007 for LAND REGISTRY DIRECT in class 9 and 42 for inter alia "land registry services" and "on line access to land registry data".
4. The Complainant has both registered and unregistered rights in a name which is identical or similar to the Domain Name.
5. For most of the time it has been trading the Respondent has used the domain name "timewell.co.uk". In February 2002, it switched to using the Domain Name, but has offered no explanation for the switch or for the choice of the Domain Name. There is no evidence that the Respondent has been known by an identical or even remotely similar name to the Domain Name.    By its choice of domain name the Respondent was attempting and continues to attempt to exploit the reputation of and goodwill associated with the Complainant and the services it provides.
6. The Domain Name is an abusive registration because it is being used by the Respondent in a confusing way. The disclaimer on the Respondent's site is not enough, it is in small italicised font at the bottom left hand page of the site, whereas the visitor is encouraged to proceed quickly by bold red type in the centre of the page "ENTER MAIN WEB SITE" and is unlikely to linger long enough to read the small print disclaimer. After the visitor goes beyond the home page of the site, the disclaimer is no longer visible. The Respondent's on line search order form bears the mark "LAND REGISTRY UK". The Land Registry has been contacted many times both by e mail and telephone by people complaining about the Respondent's web site because they thought it was the Complainant's site.
7. The Complaint details fifteen alleged instances of confusion and appends e mails from an individual Mr Burton in which this member of the public complains to the Complainant that despite the disclaimer on the web site the Respondent appears to be part of the Complainant, that "They are not a .org - they trade for profit. They mislead with their domain name." He complains that "The URL signals close association" and that the confirmation he received for his money ordering a search of the Land Registry from the Respondent suggested to him that he had done business with the Complainant directly.
8. The Respondent is engaged in a pattern of making abusive registrations with the aim of taking advantage of the Complainant's name. A company UK Web Designs and Internet Services Limited based at the same registered office and having a director in common with the Respondent has subsequently registered "landregistrysearches.co.uk" and "landregistrysearches.org.uk".

Respondent:

1. The Respondent has a legal right to the Domain Name and denies it is an abuse. The Domain Name was purchased in good faith for a legitimate purpose namely the sale of Land Registry searches.

2. The Respondent has a considerable clientele and offers a professional speedy and efficient service that goes beyond carrying out searches. The Respondent's clients prefer to use its services rather than the Land Registry as the Respondent assist with difficulties of knowing which search and which form to use, helps to identify the address and title number of the property and helps with how to proceed and what to do after the search is received and can speed matters up. The Respondent is merely offering the customer a choice. As a result of the work carried out the clients are aware that they are dealing with the Respondent and not the Land Registry and the web site and Respondent's stationery tells them this. The Respondent has hundred of testimonials expressing gratitude for his service and has appended examples to his Response. These customers were not confused.

3. It is possible that a small percentage of the Respondent's clients believed they were visiting the Complainant's site, but if this is the case the Respondent has never been advised of it, has not received any complaints and has seen no evidence of this. The statements contained on the home page and entry page are sufficiently informative to anyone with the intelligence to use the Internet. Indeed, the Respondent has recently since the Complaint made further alterations to the web site to make it clear it does not belong to the Complainant and to avoid further confusion.

4. The Complainant does not own landregistry.com owned by a real estate company in Santa Fe, landregistry.net owned by Vertical Axis, landregistry.org a blank page with the domain for sale, landregistry.co.uk advertising hotels and internet directories and landregistry.info owned by Hortensia Plantscapes. The Complainant does not have the exclusive right to these domain names or the Domain Name. The Complainant does not have a trade mark registration for LAND REGISTRY.

5. When searching on search engines using the words "land registry" the Complainant's have multiple listings on every page with most of the major search engines. The Complainant has more than their fair share of publicity and hits with landregistry.gov.uk. It is improbable that anyone seeking the Complainant's site would mistakenly enter the Respondent's site and employ the Respondent's services.

6. On the front page of the Respondent's site is the statement "Timewell Estates plc - (Land Registry Searches Department)", a further statement "our company Timewell Estates Plc obtains copies of records held by the Land Registry on behalf of its clients" and the disclaimer "Note:This web site is not affiliated or connected in any way with HM Land Registry. We are an independent company utilising a direct access link into the Land Registry's database." The disclaimer appears in the same size font as the rest of the wording on the site except the title "Land Registry Searches" and "Enter Main Web Site". The disclaimer is visible when using standard resolution and also on the first page of the main site. Having the title and main instructions in larger font on the initial page is a perfectly normal and legitimate way to design a web page. The Respondent denies that the e mailed confirmation of search instructions is misleading. On all e mail confirmations the customer is advised 3 times that he has done business with the Respondent. The order form does contain the words "Land Registry UK" at the foot of the lengthy form in small print for search engine listing purposes. The Complainant is not the Land Registry for the entire UK only England and Wales and the Respondent will shortly offer Land Registry searches in Scotland and Ireland.

7. The Respondent has been trading for more than 2 years, first under the domain name "timewell.co.uk" and later (February 2002) under the Domain Name and has built a considerable trading business over this time. Timewell.co.uk is used to support the property investment, management and consultancy aspect. In February 2002 the Respondent decided to expand its Land Registry searches department and created a new web site. The Domain Name was available and was an obvious choice for the sale of Land Registry searches. Having the same domain name as the keyword in the site will achieve higher search engine listings which are vital to an Internet based business. This was the sole motive for selecting the name. There was never an intention to exploit the reputation of the Complainant. The Respondent has recently contracted to offer land registry searches in Scotland and intend to do so shortly in Ireland. These areas are outside the jurisdiction of the Complainant, but it will be vital for us to use the same search terms and the same domain name to achieve useful search engine listings.

8. The Domain Name is descriptive of the business which it is used for and the Respondent is making fair use of it.

9. The domain names landregistrysearches.co.uk and landregistrysearches.org.uk were purchased because two separate web sites are to be created to deal with the Scottish and Irish searches. The names have no relevance to this case. The Respondent is not entitled to every name that bears the words "Land Registry".

10. There was never any intention of the Respondent to capitalise on the Complainant's goodwill. The Complainant benefits from a substantial amount of money from the Respondent's business as it has to pay the Complainant's fee for every search it conducts. The Customer can make an informed decision having shopped around.

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

The Complainant is known as "HM Land Registry" or more colloquially as "the Land Registry" in England and Wales. Indeed the Respondent refers to it throughout its Reply and Response as simply "the Land Registry". The equivalent bodies in Scotland and Northern Ireland are known as The Land Registers of Scotland and The Land Registers of Northern Ireland respectively. If an organisation were to call itself The Land Registry and offer services relating to the registration of real estate in the United Kingdom, the Complainant would be able to restrain use of the name by means of passing off proceedings as the name is not purely descriptive and has acquired secondary meaning indicating only the Complainant in the UK for land registration services. These unregistered rights have been recognised by the granting of a UK trade mark for LAND REGISTRY DIRECT for inter alia "land registry services" and "on line access to land registry data". Accordingly, I hold that the Complainant has unregistered rights in the names HM LAND REGISTRY and THE LAND REGISTRY in the United Kingdom and registered rights in LAND REGISTRY DIRECT.

The Domain Name consists of the term LAND REGISTRY and the suffix <.org.uk>. The suffix ".org.uk" might be taken to indicate an official organisation more than a private company to members of the public. There is evidence that one member of the public thought this meant a not for profit organisation. However, even without this consideration and treating the domain name suffix as an entirely neutral descriptive element, I consider that the Complainant has rights in respect of the names or marks HM LAND REGISTRY, THE LAND REGISTRY and LAND REGISTRY DIRECT which are similar to the Domain Name.

"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."

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. The factors relevant to the Complainant's allegations are in (ii) and (iii):

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."

The Expert is of the opinion that the Respondent's conduct and use of the Domain Name is indicative of relevant abusive conduct. The Domain Name is similar to the name of the Complainant and the Respondent, offering services relating to Land Registry searches, must have been aware of the Complainant and its goodwill in the LAND REGISTRY name at the time it commenced use of the Domain Name in February 2002 and must have been aware that its planned use of the Domain Name involved a likelihood of confusion. There is evidence that members of the public have been confused by the use of the Domain Name by the Respondent including a highly persuasive set of e mails direct from one such confused member of the public to the Complainant. That member of the public particularly commented that he thought the Domain Name was misleading as used by the Respondent. Even the altered site currently as at the date of this decision pointing to the Domain Name is, in the opinion of the Expert, confusing to the uninitiated. The heading Land Registry Searches remains in far bigger type than the Respondent's name and the disclaimer appears in very small type. The Expert agrees with the Complainant that the temptation will be to click on the red text "Enter Main Web Site" immediately without reading the small print and once there to start clicking on options in the menu bar for services offered rather than read the small print. The similarity of the Domain Name to the Complainant's name which led at least one member of the public to believe that there was a very close association between the Respondent's site and the Complainant may give members of the public false impressions and confidence as to the origins of the site which may override innate caution to read small print.

In the light of this finding the expert does not need to decide the question of whether the Respondent has engaged in a pattern of Abusive Registrations.

In the view of the Expert the registration and use of the Domain Name by the Respondent took unfair advantage of the Complainant's rights.

Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical 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, landregistry.org.uk be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> HM Land Registry v Timewell Estates Plc [2003] DRS 652 (8 January 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/652.html Cite as: [2003] DRS 652