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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> University of Strathclyde v Hastie & Anor [2005] DRS 02119 (12 January 2004)
URL: http://www.bailii.org/uk/cases/DRS/2005/02119.html
Cite as: [2005] DRS 02119, [2005] DRS 2119

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    University of Strathclyde v Hastie & Anor [2005] DRS 02119 (12 January 2004)

    Nominet UK Dispute Resolution Service

    DRS 2119

    The University of Strathclyde v David Hastie and Clydeside Promotions Ltd.
    Decision of Independent Expert

  1. Parties:

    2. Complainant

    Complainant: The University of Strathclyde

    Country: GB

    Respondent

    Respondent: Mr David Hastie

    Country: GB

  2. Disputed Domain Name:

    3. universityofstrathclyde.co.uk (the "Domain Name")

  3. Procedural Background:

    4. The Complaint was initially lodged with Nominet on the 11th of October 2004, papers were filed with Nominet on the 15th of October 2004 and validated by Nominet on the 20th of October 2004. The Respondent was informed by letter on that same day. The Respondent entered a Response which was received by Nominet on the 10th of November 2004. The Complainant was advised by Nominet of this Response on the 11th of November 2004 and on the 22nd of November 2004 a Reply was received from the Complainant.

    Nominet initiated its mediation procedure on the 25th of November 2004.  The mediation procedure proved unsuccessful and on the 14th of December 2004 Nominet wrote to the Complainant informing them that the matter could be referred to an independent expert for decision. On the 30th of December 2004, the Complainant paid Nominet the required fees for a decision of an expert in accord with Paragraph 6 of the Nominet (UK) Dispute Resolution Service Policy ("the Policy").

    On the same date Nominet contacted the myself (Andrew Murray) to inquire whether I might provide an independent decision in this dispute. I disclosed to Nominet, and both parties, that I had a previous employment relationship with the Complainant but that this had terminated in January 2004 and that I had no current links with either party. Neither party objected to my appointment based upon this information and on the 31st of January 2004, I was appointed as Independent Expert for this dispute.

  4. Outstanding Formal/Procedural Issues (if any):

    5. There are no outstanding formal/procedural issues.

  5. The Facts

    6. The Complainant is The University of Strathclyde (the University), an educational establishment incorporated by Royal Charter in 1964, but founded in 1796 as a "place of useful learning". The University is an internationally recognised institute with an excellent reputation for first class academic research and teaching. The Complainant holds United Kingdom Registered Trade Marks in the term "University of Strathclyde", registered in classes 16 (No. 1477019), 25 (No. 1477020) and 21 (No. 2101491) which the University uses on a vast range of items ranging from stationary to glassware and clothing.

    The Respondents are Mr David Hastie, an alumnus of the University of Strathclyde and Clydeside Promotions Ltd, 24 Beresford Terrace. Ayr, Ayrshire, KA7 2EG, a Company incorporated the 28th of August 2003 of which Mr Hastie is one of two directors, along with a Mr. William Hastie.

    The Domain Name was registered on the 26th of February 2003 by Mr Hastie through Schlund & Partner AG. The Domain Name was later transferred to Clydeside Promotions Ltd. The Domain Name is currently being used by another of Mr. Hastie's companies Unishepherd Ltd. of 24 Beresford Terrace, Ayr, Ayrshire, KA7 2EG, and currently redirects users to that company's primary webpage at http://www.unishepherd.com

  6. The Parties' Contentions

    7. Complainant:

    The Complainant contends that:

  7. The Respondent's registration and use of the Domain Name is in breach of the Complainant's registered trade mark rights.

  8. The Respondent's registration and use of the Domain Name is misleading the public into believing that his business (Unishepherd Ltd.) is associated or endorsed in some way by the University. It is contended that this is evidence of an Abusive Registration under paragraph 3(a)(ii) of the DRS Policy.

  9. In a letter to the University Secretary dated 13th August 2003 Mr. Hastie offered to transfer the Domain Name to the Complainant in return for payment to him of a "substantial sum". It is contended that this is evidence of an Abusive Registration under paragraph 3(a)(i)(A) of the DRS Policy.

    10. Respondent:

    The Respondent contends that:

  10. The Domain Name is not in breach of the Complainant's Trade Mark rights. The Respondent surveyed one hundred people in Buchanan Street, Glasgow, asking the question "Were they aware the University of Strathclyde sold goods and retail articles?" Not one person replied in the affirmative. The Domain Name therefore cannot effect the University.

  11. The Complainant's Trade Marks cover three classes of goods. The site operated at the Domain Name sells no goods, only offering services. In these circumstances we cannot see how the trade mark rights have been breached.

  12. The Respondents do not agree that the use of the of the Domain Name infers the Complainant is connected with Mr. Hastie's business or is an Abusive Registration. The Complainant is vague in that is states "associated in some way". What way? It does not say. The Complainant describes itself as "a dynamic, top-ranking European University dedicated to excellence through its core mission of promoting useful learning". If it is achieving this mission, how could anyone be confused into believing it had anything to do with providing this Website's services to students?

  13. The Domain Name is generic in nature or descriptive in nature. This is evidence the Domain Name is not abusive in nature in accordance with paragraph 4(a)(ii) of the DRS Policy.

  14. The Complainant has taken no steps to protect its interests in its Trade Mark and other related rights. Several univerityofstrathclyde domain names remain unregistered. The Complainant has taken no steps to defend its position.

  15. In the spirit of compromise, the Respondent is prepared to arrange that the front page of the Unishepherd site contains the phrase "This site is not associated to or endorsed by any University".

  16. In the eighteen months since the Domain Name was registered, the Respondent is not aware of any loss or damage to the name or reputation of the Complainant caused by the Respondent's use of the Domain Name. The Complainant's case is invalid and should be rejected.

    17. Reply:

    The Complainant was offered the opportunity to reply to the response and on the 22nd of November 2004 these further replies were entered on behalf of the Complainant:

  17. In the response it was alleged that: "upon discovering that this Domain Name had not been registered, and since he [David Hastie] had a website dedicated to University students, he believed that this could attract students to his site out of curiosity". The Complainant views this as an admission that Mr. Hastie's intention was to pass off his business as being associated with the Complainant and the goodwill that the Complainant has developed.

  18. The Complainant asserts that the Domain Name is being used in such a way as to confuse people into believing that it is in some way connected, operated or authorised by the Complainant and is evidence of an Abusive Registration in accordance with paragraph 3(a)(ii) of the Dispute Resolution Service policy. The University asserts that the Respondent's statement confirms this: "he [David Hastie] also used it [the Domain Name] to promote the 'opportunity' leaflets but this was stopped as soon as the University expressed concern". The University asserts that the action of David Hastie in this instance is evidence that he accepted that his use of the Domain Name could cause confusion.

  19. The Domain Name takes the user to the home page of Unishepherd Ltd. The Complainant highlights that the Domain Name refers to the Complainant and takes the user directly to a web site specifically for students, particularly in those based in Glasgow. This could be misleading and is further evidence of the confusion it can cause and the likelihood that individuals associate the web site with the Complainant and/or that the Complainant condones it.

  20. In reply to the Respondent's claim that the Complainant's argument that the use of the Domain Name is a breach of its Trade Mark is "spurious". This is untrue. A University by its very nature is a business (charitable status is irrelevant), the primary role of which is to provide education, i.e. a "service". The reputation, and therefore name and Trade Marks are of paramount importance to the ongoing success of any University, consequently any action which threatens to damage this reputation or confuse potential customers must be taken seriously.

  21. In reply to the Respondent's claim that the Complainant's Trade Mark rights have not been breached. This is untrue. The University as the owner of a registered Trade Mark "University of Strathclyde" is granted exclusive rights in this mark in the relevant classes of goods under the Trade Marks Act 1994. The University also has unregistered rights in its Trade Mark as evidenced by the facts that it has been known by the name University of Strathclyde since 1964 and its function as a service provider to students (the same group to which the Respondent trades) has been ongoing since its foundation in 1796. The University therefore maintains that the Respondent's use of the Domain Name at the centre of this dispute is an example of passing off.

  22. In reply to the Respondent's claim that the use by the Respondent of the Domain Name does not infer a connection with the Complainant and is therefore not an abusive registration. This is untrue. The Domain Name contains, in whole, the Complainant's name. It is clearly misleading to use the name of our institution to direct students, for whom we primarily exist, to a site which sells services. The site states that it is "designed for students by students", which implies a direct connection with the Complainant's student body.

  23. In reply to the Respondent's claim that the complaint is vague in that it states "associated or endorsed in some way". This is untrue. The Complainant submits that it is clear to the average person that a domain name registered with a similar or identical name as another organisation, particularly when the same group of people are its target, is clearly seeking to mislead those people into believing the two are associated. The intent in this case is clearly evident by the Respondent's earlier claim that Mr. Hastie "thought this could attract students out of curiosity" (see point 1 of this reply).

  24. The Respondent states that the name "University of Strathclyde" is "effectively generic". This is untrue, the Domain Name is not generic. The Complainant would like to point out that a vast number of Trade Marks (e.g. 'Coca Cola') are well known globally, this does not make them generic, nor does it imply that "fair use" may be made of them. The cases cited by the Respondent are irrelevant as they refer solely to geographical names where no rights, registered or unregistered may be granted under the current Trade Marks Act. The Complainant's Trade Marks are distinctive in respect of the services it provides and cannot be viewed as deceptive or similar to any other Marks.

  25. The Respondent is prepared to arrange for a disclaimer to appear on its website. The Complainant does not accept this as a resolution to the dispute; by the time an individual has read the disclaimer they have already been misled. More over the fact remains that this Domain Name is in breach of the Complainant's Trade Mark rights.

  26. In reply to the Respondent's claim that the Complainant has taken no steps to defend its position. This is untrue. The Complainant has several registered domain names but is also aware that there remain other unregistered variants of universityofstrathclyde. The Complainant maintains that this is irrelevant to the current dispute; unregistered or unused domain names do not constitute a breach of the Complainant's rights. The Complainant sees no sense in registering every possible variation purely to prevent people from using its name which is already adequately protected by Trade Mark. The Complainant is also aware that the .com domain name is offered for sale; since this domain name has not been purchased and is not used it does not constitute an immediate threat to the Complainant's rights and reputation.

  27. The Respondent states, Mr. Hastie was "perfectly willing" to negotiate. The Complainant reiterates that Mr. Hastie insisted that in return for agreeing to transfer the Domain Name to the Complainant he should receive "a substantial sum". The Complainant submits that Mr. Hastie was seeking some form of financial recompense. The Complainant would suggest that this was in bad faith and is evidence of an Abusive Registration under paragraph 3(a)(i)(A) of the DRS Policy.

  28. Discussion and Findings:

    29. General

    The Complainant has to establish under paragraph 2(a)(i) of the Policy 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 under paragraph 2(a)(ii) of the Policy that the Domain Name, in the hands of the Respondent, is an Abusive Registration, again as defined in paragraph 1 of the Policy. Rights. The Complainant has the burden to prove on the balance of probabilities both that it has the rights and also that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

    Rights in the Domain Name

    The Complainant relies upon their three Registered Trade Marks and upon an established goodwill which they claim to possess in the name University of Strathclyde. The Complainant possesses three UK Trade Marks in the Term "University of Strathclyde" (Nos. 1477019,1477020 and 2101491). When comparing any name or mark in which the Complainant has Rights with the Domain Name the first and second level suffixes of the Domain Name, being generic in nature, are to be discounted, when we compare the name "universityofstrathclyde" with the Complainant's Registered Trade Marks "University of Strathclyde" we find the two are identical, the only immaterial difference is that the Domain Name does not contain the necessary spaces between words, an element which in any case it is impossible to include in a domain name. It has been held on several occasions that possession of a trade mark right enforceable under English Law is sufficient to establish rights in a name or mark (see e.g. Nokia Corporation v Andrew Stone DRS 00068; Cheltenham & Gloucester plc v James Ryder DRS 00203).

    The Respondent has replied that the Complainant's Rights and the Domain Name are not identical as the Complainant's Trade Marks are in classes 16 (Paper, cardboard and goods made from these materials), 21 (glassware, porcelain and earthenware) and 25 (Clothing, footwear, headgear), whereas the Respondent's business does not trade in any of these areas. The Complainant does not, though, seek merely to rely upon their Registered Trade Marks. In their complaint they also refer to their reputation (or goodwill) as a leading centre of academic excellence; a point extended further in their reply where they state: "The University also has unregistered rights in its Trade Mark as evidenced by the facts that it has been known by the name University of Strathclyde since 1964 and its function as a service provider to students (the same group to which the respondent trades) has been ongoing since its foundation in 1796. The University therefore maintains that the Respondent's use of the Domain Name at the centre of this dispute is an example of passing off". It has been held on several occasions previously that demonstrating goodwill in a name or mark enforceable under English Law is sufficient to establish rights in a name or mark (see e.g. Delamar Academy v Go-Catch Media Limited DRS 01543).

    On the basis of the above the Expert finds that the Complainant has rights in respect of a name which identical or similar to the Domain Name.

    Abusive Registration

    To be an Abusive Registration the Domain Name must be one which either "...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 has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights" (Paragraph 1, Nominet UK Dispute Resolution Service Policy version 2 "the Policy".)

    Paragraph 3(a) of the Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. These are as follows:

    "Evidence of Abusive Registration

    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. The Complainant can demonstrate that the Respondent is engaged in a pattern registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;
    iv. It is independently verified that the Respondent has given false contact details to us; or
    v. The Domain Name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
    A. Has been using the Domain Name registration exclusively, and
    B. Paid for the registration and/or renewal of the Domain Name Registration.

    In their complaint, the Complainant relies upon paragraphs 3(a)(i)(A) and 3(a)ii.

    Paragraph 3(a)(i)(A)

    The Complainant bases their claim under this sub-paragraph on their assertion that "In a letter to the University Secretary dated 13th August 2003 Mr. Hastie offered to transfer the Domain Name to the Complainant in return for payment to him of a 'substantial sum'". This letter was entered in support of the Complainant's claim, and has been seen by the Expert. It seems from the language and tenor of the letter to support the Complainant's assertion. In reply, the Respondent makes little defence, simply stating that they "were perfectly willing to negotiate". The question in essence is: did the Respondent primarily register the Domain Name for the purpose of selling or transferring it for valuable consideration? Although it is not certain that this was the primary purpose at the outset of the Respondent's business plan, the evidence provided by the Complainant, which importantly has not been challenged by the Respondent, suggests strongly that this may have been a primary motivation of the Respondent. The Complainant only requires to prove the "elements are present on the balance of probabilities" (Policy, paragraph 2(b)). It seems to the Expert that the Complainant has provided sufficient evidence to prove this claim on the balance of probabilities, and that the Respondent has failed, in their Response to adequately rebut this evidence. On the balance of probabilities therefore I find that the Complainant has proven their claim under paragraph 3(a)(i)(A) of the Policy.

    Paragraph 3(a)(ii)

    The Complainant further contends that "[t]he Respondent's registration and use of the Domain Name is misleading the public into believing that his business (Unishepherd Ltd.) is associated or endorsed in some way by the University. The Complainant further contends that shortly after registration "the Domain Name took the user to a webpage amounting to a clone of the University's own homepage."

    The Respondent refutes this allegation contending that "[t]he Respondent surveyed one hundred people in Buchanan Street, Glasgow, asking the question "Were they aware the University of Strathclyde sold goods and retail articles?" Not one person replied in the affirmative. The Domain Name therefore cannot effect the University." Further, the Respondent contends that "The Complainant is vague in that is states 'associated in some way'" and that the University home page was never cloned, but rather early incarnations of the site actually forwarded the user to the Complainant's home page.

    In their Reply, the Complainant responded that "the Respondent's statement confirms [that the Respondent was aware his use of the Domain Name could cause confusion] : "he [David Hastie] also used it [the Domain Name] to promote the 'opportunity' leaflets but this was stopped as soon as the University expressed concern". Further, the Complainant claimed a likelihood confusion may be caused by the current use of the Domain Name. "The Domain Name takes the user to the home page of Unishepherd Ltd. The Complainant highlights that the Domain Name refers to the Complainant and takes the user directly to a web site specifically for students, particularly in those based in Glasgow. This could be misleading and is further evidence of the confusion it can cause and the likelihood that individuals associate the web site with the Complainant and/or that the Complainant condones it."

    Paragraph 3(a)(ii) requires 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." Having examined the contentions of both parties and the website operated by Unishepherd Ltd. at the Domain Name, I find that there is a likelihood of confusion. Firstly, the Domain Name itself it rather specialised, reflecting the name of a well-known educational establishment. It is hard to imagine another, descriptive, use of the term "University of Strathclyde", other than to describe the Complainant. Secondly, the particular current use of the Domain Name, to direct users to the website of Unishepherd Ltd., a company which specialises in providing services to students in Glasgow, seems likely to heighten any confusion. Thirdly, the use by the Respondent, Mr. Hastie, of the Domain Name suggests he was using it to create the illusion of an association between his company and the Complainant. The Responses, given by the Respondents, do not overcome the balance of probabilities. I do not find the Complainant's assertions to be vague, as is made clear in the Complainant's Reply "it is clear to the average person that a domain name registered with a similar or identical name as another organisation, particularly when the same group of people are its target, is clearly seeking to mislead those people into believing the two are associated. The intent in this case is clearly evident by the Respondent's earlier claim that Mr. Hastie 'thought this could attract students out of curiosity'". Finally, with regard to the results of the survey carried out by the Respondents, without any evidence of the methodology of this survey, I am afraid it cannot be accepted "on face value", and in any event would have been unable to rebut the claim of a likelihood of confusion existing in any event. On the balance of probabilities therefore I find that the Complainant has proven their claim under paragraph 3(a)(ii) of the Policy, and that the Respondent has failed to rebut the claim.

  29. Decision:

    30. For the reasons set out above, namely that the Complainant has Rights in respect of the name or mark which is similar or 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 be transferred to the Complainant.

    Andrew D. Murray 12 January 2005

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URL: http://www.bailii.org/uk/cases/DRS/2005/02119.html