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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Asia Pacific Breweries Ltd -v- Treasury Solicitor (BV) [2004] DRS 1409 (19 January 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1409.html Cite as: [2004] DRS 1409 |
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Nominet UK Dispute Resolution Service
DRS 01409
Asia Pacific Breweries Limited v Treasury Solicitor
Decision of Independent Expert
1.Parties
Complainant: Asia Pacific Breweries Limited
Country: SG
Respondent: Treasury Solicitor
Country: GB
2.Domain Name
tigerbeer.co.uk ("the domain name")
3.Procedural Background
Nominet was notified of the complaint on 17 November 2003 and received a hard copy submission on 20 November. It checked that the complaint complied with the Nominet UK Dispute Resolution Service Policy ("the Policy") and the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure"). The Respondent was named as the Treasury Solicitor. Nominet notified him of the complaint on 25 November. On the same day, the Treasury Solicitor replied to say that he did not think he was correctly to be regarded as the Respondent. The Complainant nonetheless filed a reply, hard copy of which was received by Nominet on 4 December. Informal mediation followed. When that did not resolve the dispute, Nominet notified the parties that an Expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 24 December.
On 7 January 2004 I, Mark de Brunner, agreed to serve as an Expert under Nominet's Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties, and that there are no facts or circumstances that might call into question my independence.
4.Outstanding Formal/Procedural Issues
There is a fundamental issue of procedure. The parties do not agree who the Respondent should be. That is an important question, because it is the Respondent who must submit to proceedings under the Dispute Resolution Service, and it is the character of the domain name in the hands of the Respondent that determines whether a registration is abusive (paragraph 2 of the Policy).
5.The Facts
From the original complaint I accept the following as facts.
The Complainant is the brewer of Tiger Beer and is and has for very many years been the proprietor of a number of UK registered trade marks incorporating the words "Tiger" and "Tiger Beer".
The Complainant is also the proprietor of a considerable number of Internet Domain Names incorporating the words Tiger Beer including the following domain names registered with Nominet under the .uk top level domain: viz. tiger-beer.co.uk, tiger-beer.org.uk, and tigerbeer.org.uk. The Complainant is also the proprietor of the tigerbeer.com domain name as well as a large number of other similar domain names worldwide.
On 4th November 1999 the domain name tigerbeer.co.uk which forms the subject of the present dispute was first registered by Fishtank (UK) Limited ("Fishtank"). No actual use was then, or ever has been, made of the disputed domain name.
Fishtank was in November 1999 acting as an events and design agency for and on behalf of the Complainant and its UK distributor...[From correspondence it appears that the domain name was originally secured by Fishtank on behalf of Tiger Export UK, the Complainant's appointed UK distributors.]
In October 2001 the Complainant first became aware that Fishtank had registered the disputed domain name in its own name and not in the name of the Complainant and asked Fishtank to transfer the domain name to the Complainant. The directors of Fishtank were willing to transfer the name, but could not effectively do so as (unknown to the Complainant) Fishtank had gone into creditors voluntary liquidation on 14th June 2001. By the time it was appreciated by the Complainant that the directors of Fishtank could not assist further an approach was made to its Liquidator; it transpired that Fishtank had been dissolved on 10th April 2003.
In the light of the dissolution, correspondence followed with the Treasury Solicitor, who declined to transfer the domain name to the Complainant in exchange for reimbursement of out-of-pocket costs.
6.The Parties' Contentions
Complainant
The Complainant's contentions can be summarised as follows.
(i) The disputed domain name was registered by Fishtank on behalf of the Complainant's appointed UK distributors and, under that arrangement, on behalf of the Complainant.
(ii) Whether or not that is the case, the legal interest in the domain name now lies with the Crown, because at Fishtank's dissolution either
(iii) Either way, the Treasury Solicitor should be regarded as the Crown's nominee and therefore as the Respondent:
(iv) If the domain name was held on trust for the Complainant, the Complainant should not have to go to the expense of applying to the court to have its interest in the domain name reflected formally in the registration.
(v) If the domain name is to be treated as bona vacantia, the Treasury Solicitor is obliged to sell it for the best possible price (and has explicitly declined to transfer it to the Complainant in exchange for reimbursement of his out-of-pocket costs). That could mean selling the domain name to a third party- effectively using the domain name in a manner which was unfairly detrimental to the Complainant's rights, rendering the registration abusive. Indeed the fact that the Treasury Solicitor would be constrained to act in this way means that the registration should be regarded as abusive from the moment he acquired the domain name.
'Respondent'
(i) The Treasury Solicitor argues that he should not be treated as the Respondent because
(a) domain names in cases such as this are normally regarded as having been held on trust by the dissolved company. Here the beneficiary of the trust would be the Complainant. Section 654 of the Companies Act 1985 explicitly says that assets deemed bona vacantia do not include property held by the company on trust. If the domain name were not treated as bona vacantia there would be no basis for the Treasury Solicitor's involvement.
(b) The right way to sort things out would be for the Complainant, as beneficiary of the trust, to make an application to the court for a vesting order under section 44 of the Trustee Act 1925 - or for Nominet to change its register on receipt of evidence that the domain name was held on trust for the Complainant
(ii) The Treasury Solicitor then considers the possibility that the domain name here was not held on trust for the Complainant, but instead was legally and beneficially owned by Fishtank. By implication, the Treasury Solicitor would then be the Respondent (having acquired Fishtank's interest in the domain name on the company's dissolution). Were that the true construction, the Treasury Solicitor says he would not sell the domain name on the open market because that would infringe the Complainant's trade marks.
Complainant's reply
The Complainant replies that, being held on trust, the domain name might not pass to the Crown as bona vacantia, but title does nonetheless pass to the Crown (subject to the trust). So even if the domain name were only ever held on trust by Fishtank, the Treasury Solicitor should be regarded as the Respondent.
7.Discussion and Findings
Ambit of the Dispute Resolution Service
The starting point for proceedings under the Dispute Resolution Service (DRS) is the existence of two parties - a Complainant and a Respondent. The Respondent is defined as the person in whose name or on whose behalf the domain name is registered and against whom the Complainant makes a complaint.
It is clear here that the domain name was registered in the name of Fishtank, but there is a factual question whether it was registered on behalf of the Complainant.
If on the facts the domain name was registered on behalf of the Complainant, and the dissolved company only ever held the domain name on trust for the Complainant, that would seem to me to leave this matter outside the terms of the DRS: the person on whose behalf the domain name was registered would be the Complainant. A remedy would not be available through the DRS because the Respondent and the Complainant would be the same person in the same capacity. There would be no need for a DRS because the Complainant's and the Respondent's interests would co-incide perfectly: there would be, in the final analysis, no dispute to resolve. Without a dispute there would be no Respondent. Of course if there were no dispute, there would be nothing to stop Nominet from amending the registration details to reflect the Complainant's underlying interest in the domain name.
If on the facts the domain name was not registered on behalf of the Complainant - in other words Fishtank had both legal and beneficial interest in the domain name - that would seem to me to be a matter falling within the terms of the DRS: on that basis there would be a genuine dispute in which the Treasury Solicitor was properly the Respondent - on behalf of the Crown which has acquired the rights to the domain name formally belonging to the dissolved company.
So was the domain name registered on behalf of the Complainant or not? The Complainant says it was. The Treasury Solicitor says there is not much evidence to support the assertion, but it is the reason why he argues that the domain name does not fall to him to deal with on the company's dissolution and that he should not be regarded as the Respondent. There is one complication. The Complainant says that Fishtank registered the domain name on behalf of its distributor, and only indirectly on behalf of the Complainant itself. I note, however, that the managing director of Fishtank was willing to effect the formal transfer of the domain name to the Complainant. It therefore seems to me that the Complainant's assertion - that the domain name was registered on the Complainant's behalf - is correct. But if that is right, there is no dispute needing resolution within the terms of the Policy and Procedure.
What follows therefore assumes, as an alternative, that there is a dispute to resolve between the Complainant and the party the Complainant identifies as the Respondent.
General
To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
(i) he or she has rights in respect of a name or mark which is identical or similar to the domain name; and
(ii) the domain name, in the hands of the Respondent, is an abusive registration.
Complainant's Rights
The complainant lists its registered rights in a series of names identical or similar to the domain name. I accept that the Complainant has rights in respect of a name which is identical to the domain name.
Abusive Registration
The Dispute Resolution Service rules define an abusive registration 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.
The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. The only factor that might be thought to have a bearing here is where circumstances indicate that the Respondent acquired the domain name 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 expenses directly associated with acquiring or using the domain name. But there was no evident motive in the Respondent's acquisition: the domain name simply fell the Crown's way in the absence of another clear owner.
The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. But none of these applies satisfactorily here.
The underlying question remains whether the domain name was acquired in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights. If the Crown acquired the domain name such that it could then sell it on to the highest bidder, I fail to see how that could be other than unfairly detrimental to the Complainant's rights. Even if a decision was made not to sell in that way, the fact that it falls to the Crown to decide looks on the face of it to be unfairly detrimental. I conclude that if the Crown had the beneficial interest in the domain name, that domain name was acquired in a manner which is properly to be regarded as unfairly detrimental to the Complainant's rights. Within the terms of the Policy and Procedure, that renders the registration abusive.
8.Decision
If there is no dispute to resolve, there is nothing to stop Nominet from amending the registration details to reflect the Complainant's underlying interest in the domain name.
On the basis that there is a dispute to resolve, however, I find that
(i) the Complainant has rights in 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.
Only this second course lies through the Dispute Resolution Service. Within the terms of the DRS Procedure I therefore direct that the register be amended to show the domain name as belonging to the Complainant.
Mark de Brunner
19 January 2004