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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Quest Search & Selection Ltd v Edmonds [2005] DRS 2989 (16 November 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2989.html Cite as: [2005] DRS 2989

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Nominet UK Dispute Resolution Service

DRS Number 2989

Quest Search & Selection Ltd

and

Mr J S Edmonds

Decision of Independent Expert

1. Parties:

Complainant: Quest Search & Selection Ltd

Country: GB

Respondent: Mr J S Edmonds

Country: GB

2. Domain Name:

retailmoves.co.uk

3. Procedural Background:

22/09/2005 Dispute entered into system

23/09/2005 Hardcopies received in full on: 23/09/2005

23/09/2005 Complaint validated

23/09/2005 Complaint documents generated

19/10/2005 No Response received

19/10/2005 No response to complainant documents generated

26/10/2005 Fees received from complainant on 26/10/2005

28/10/2005 Mr Chris Tulley selected as Expert

08/11/2005 Further information requested by Expert pursuant to paragraph 13 DRS

Procedure

09/11/2005 Further information received from Complainant

09/11/2005 Complainant's further information forwarded to Respondent

12/11/2005 No response received from Respondent

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

None

5. The Facts:

The following facts are taken from WHOIS searches and information supplied by the Complainant which has not been challenged or otherwise responded to by the Respondent.

•    The Domain Name was registered on 23 March 2000 by the Respondent but not used in any way until 2004.

•    The Respondent's agent for the registration of the Domain Name is stated to be Designer Servers Limited/DSVR.

•    The Complainant started trading as Retailmoves in October 2000 as a website based recruitment business specialising in the retail sector using the domain name and website retailmoves.com. At that time there was no other business trading under the same or a similar name.

•    In 2004 the Complainant wanted to acquire the Domain Name to go with their existing retailmoves.com domain name and website. At that time the Domain Name was not being used. The Complainant subsequently received an email from DSVR (the Respondent's agent for the registration of the Domain Name) stating that the Domain Name "was hosted on the Retailmoves server" and asking the Complainant if they wanted to renew the registration of the Domain Name. The Complainant paid the renewal fee, believing that in doing so they were acquiring the Domain Name but in reality only succeeded in renewing it for the Respondent.

•    The Complainant then found out that the Domain Name was being used to resolve to www.r-three.co.uk, which was a retail recruitment businesses website operated by the Respondent's son. However, the Domain Name has never been used as part of a stand alone "retailmoves" trading name.

•    The Complainant was again contacted by DSVR to say that the Respondent's son wanted the Complainant to contact him to discuss the Domain Name.

•    There then followed an exchange of emails on 21 April and 22 April 2004 between the Complainant and the Respondent's son regarding the possible purchase of the Domain Name. The Respondent's son confirmed that he was "looking after this as my father is living abroad" . The amount offered by the Complainant (£150) was insufficient for the Respondent.

•    The Domain Name no longer resolves to www.r-three.co.uk and is not currently being used.

6. The Parties' Contentions:

Complainant:

In summary the Complainant says that the use of the Domain Name in relation to the competing business of the Respondent's son was passing off with the intent of "cashing in" on the Complainant's long established website and good name. As such the Complainant says that the Domain Name is an Abusive Registration in the hands of the Respondent.

Respondent:

The Respondent has not responded to the complaint at all.

7. Discussion and Findings:

General

In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:

1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

2. The Domain Name, in the hands of the Respondent, is an Abusive Registration.

These terms are defined in the Nominet UK DRS Policy as follows:

•    Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.

•    Abusive Registration means 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.

Complainant's Rights

The Complainant has been trading under the Retailmoves name for over 5 years via www.retailmoves.com. Whilst the name may allude to the type of business conducted by the Complainant I do not believe that it is wholly descriptive of the Complainant's business. Whilst the Complainant does not have any registered trade marks to protect the Retailmoves name there is nothing to indicate that any other recruitment business uses the same or a similar name. Therefore, the Complainant's use of the name over a 5 year period is likely to have built up sufficient goodwill and reputation in the name for it to be protected by passing off rights. On the basis of the unchallenged evidence before me I find that the Complainant does have Rights in the name "retailmoves", being a name or mark which is identical to the Domain Name.

Abusive Registration

From the matters relied on by the Complainant in its submissions the following parts of paragraph 3 of the Policy (being factors which may be evidence that the Domain Name is an Abusive Registration) and paragraph 4 of the Policy (being factors which may be evidence that the Domain Name is not an Abusive Registration) are potentially relevant:

Paragraph 3 a. 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."

Paragraph 4 a i A "Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;"

The Respondent registered the Domain Name before the Complainant commenced business under the Retailmoves name so there is nothing to suggest that it was originally registered as an Abusive Registration.

However, it has subsequently been used, albeit temporarily, in relation to a competing business operated by the Respondent's son but the precise dates of that use are unclear. The Complainant's unchallenged evidence suggests that the use of the Domain Name did not commence until after the Complainant was considering acquiring the Domain Name in 2004. The Complainant was then contacted by the Respondent's agent for the Domain Name, DSVR, initially about renewing it. I have not been told how that initial contact came about. However, it seems from the evidence before me that the contact by DSVR is likely to have been for one of two reasons, either:

a) as a result of the Complainant's enquires about acquiring the Domain Name in which case the Respondent would not be likely to be able to claim that the subsequent use of the Domain Name was "before being aware of the Complainant's cause for complaint …... in connection with a genuine offering of goods or services"; or

b) the contact by DSVR about renewing the Domain Name was coincidental, in which case it would seem to suggest that DSVR had been confused as to whom the Domain Name was registered and in a position to renew it.

In any event, I believe one of the emails in particular from the Respondent's son is very telling. The email was sent on 22 April 2004 during the discussions about acquiring the Domain Name and in which the Complainant's offer of £150 was rejected. The email from the Respondent's son stated "Thanks for your MD's offer - I am really sorry but the amount indicated is not a sum my father would consider, after discussing it with him. As you may be aware, I am now running my own retail recruitment company, and to that end we would probably want to re-direct the URL to our own site if you guys do not want to purchase the domain, as we could benefit considerably from CVs directed to us. Clearly, if retailmoves wanted to come back with a commercially acceptable offer we would definitely consider this, but at the rate indicated, it would be worth more to us to re-direct traffic to our own site, as I am sure you will appreciate. Secondly, another retail recruitment business has indicated a considerable interest in the URL to complement their current high profile site."

Even the Respondent's son, who operates a competing business, refers to the Complainant by the name "retailmoves". He was then suggesting that his competing business "could benefit considerably from CVs directed to us" if he were to use the Domain Name to resolve to his website at www.r-three.co.uk (which was in fact done for a period of time), or that another competing retail recruitment business wanted to acquire and use the Domain Name to resolve to their competing website. When competitors, such as the Respondent's son, refer to the Complainant by the name of "retailmoves" then that clearly suggests that the Complainant is known in the industry by that name and accordingly that use of the Domain Name by a competing business would inevitably confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

8. Decision:

For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the name Retailmoves, being a name or mark which is identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

In the circumstances I order that the Domain Name be transferred to the Complainant.

Chris Tulley

16 November 2005