Kent Qualified -v- Hewlett [2002] DRS 599 (15 November 2002)

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The complaint was lodged with Nominet on 5 September 2002. Nominet validated the complaint and notified the Respondent of the complaint by email addressed to postmaster@kentqualified.co.uk (the disputed domain name) on 9 September 2002 and by letter to the Respondent at the contact address associated with the Domain Name in Nominet's database on 10 September 2002. Both the email, by way of an attached document file, and the letter informed the Respondent that he had 15 working days (i.e. until 1 October 2002) within which to lodge a Response. No response was received from the Respondent by 3 October 2002. On that date Nominet wrote again to the Respondent by letter and email indicating that the dispute would be referred to an independent expert if the Complainant paid the appropriate fees. Nominet also informed the Complainant accordingly and invited it to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly paid on 4 October 2002.

On 9 October 2002, Andrew Lothian, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. Nominet duly appointed the Expert with effect from 9 October 2002.

Following an initial perusal of the file, the Expert took the view that such steps as had been taken to contact the Respondent regarding the complaint were extremely unlikely to have been successful. The disputed domain name appeared to be under the de facto control of the Complainant notwithstanding the fact that it was registered in the Respondent's name. The Complainant was using the Domain Name for email services. Consequently, email addressed to 'postmaster@kentqualified.co.uk' would have been received or bounced by the Complainant's mailserver rather than reaching the Respondent. In addition, the letter of 10 September 2002 sent by Nominet to the Respondent at the contact address in Nominet's domain name register database was returned by the Post Office on or about 14 September 2002 marked 'addressee has gone away'.

A further address for the Respondent was evident from a company details printout prepared from the Companies House online service and supplied by Nominet in the Expert's papers. These details related to the Complainant ("the Company Details"). The Respondent was noted as the Company Secretary of the Complainant between July 1998 and February 2002 and in that connection had supplied a different address to the Registrar of Companies.

While the attempts to effect service of the complaint on the Respondent were in technical compliance with the terms of the paragraph 2a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”), on 14 October 2002 the Expert requested Nominet to re-serve the complaint to the address which the Respondent had provided to Companies House. The Expert also requested Nominet to ask the Complainant whether it had any additional address for the Respondent given his prior connection with Kent Qualified.

On 14 October 2002 Nominet duly re-served the complaint as directed and allowed the Respondent fifteen working days to respond as per the procedure (i.e. until 6 November 2002). On 7 November 2002, Nominet wrote to confirm that it had received no response from the Respondent to the re-served complaint regarding the Domain Name. Nominet also confirmed that it had contacted the complainant's representative Mr. Kracht who stated that he did not know the current whereabouts of the Respondent and added that he had only been a director of the Complainant since 29 July 2002. In these circumstances, the Expert was satisfied that all reasonable steps had been taken to contact the Respondent and therefore proceeded to a decision.

In terms of paragraph 5a of The Procedure, the Respondent is required to submit a response to Nominet. In this case no such response has been received. Nominet has complied with the notification provisions of paragraph 2 of the Procedure and indeed, at the request of the Expert, has made greater efforts to contact the Respondent than are strictly required by the Procedure.

In terms of paragraph 15b of the Procedure the Expert will proceed to a Decision on the complaint if, in the absence of exceptional circumstances, a party does not comply with any time period laid down in the Procedure or the Policy.

There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the complaint notwithstanding the absence of a Response.

Paragraph 15c of the Procedure provides that “If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure …….. , the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.”

In the absence of a Response the Expert must consider whether to draw any inferences from the Respondent’s non-compliance with paragraph 5a of the Procedure. The Expert notes that the Respondent has made no attempt to answer or address the Complainant's submissions. Nevertheless, the fact that there is no Response does not affect the primary requirement upon the Complainant who must prove the existence of its Rights and of an Abusive Registration on balance of probabilities.

1. The Respondent, Kevin Hewlett, was the Company Secretary of the Complainant, Kent Qualified, between 31 July 1998 and 23 February 2002.

2. The Complainant is a private company, limited by guarantee, with no share capital. Its business is 'adult and other education'. It is a UK registered charity. It was incorporated on 10 June 1994. The Complainant has had no previous names and hence was named 'Kent Qualified'* upon incorporation. The Complainant's statutory accounts and annual returns are up to date.

*Note: Kent Qualified does not use the word 'Limited' as part of its company name and appears to have opted for this exemption, available to companies limited by guarantee, in terms of section 30 of the Companies Act 1985.

3. The Domain Name was registered on 25 June 2000 in the personal name of the Respondent.

4. As at the date of preparation of this Decision, the web site to be found at http://www.kentqualified.co.uk merely displayed a blank page under the heading 'www.kentqualified.co.uk - /'. No html index page or any other web pages had been published at that site.

5. The Domain Name is being operated by or for the Complainant for the purposes of email services. The Complanant's representative Mr Kracht's email address is listed in the complaint and takes the form [first name][surname]@kentqualified.co.uk and the Expert's papers show that Mr Kracht has exchanged email with Nominet using this email address in connection with the present dispute.

6. The Domain Name is listed for both email and web services on the Complainant's headed notepaper.

The Complainant's submissions are extremely brief and can be quoted verbatim as follows:

I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

kentqualified.co.uk is registered under the name of the previous Director. When the company [sic] was originally registered it should have been in the name of a Trustee. The previous Director has left due to circumstances which I cannot mention and is unlikely to give permission for the transfer from his name to that of a company Trustee. All our business contacts, stationery, marketing material has the name kentqualified.co.uk.

In terms of paragraph 2b of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2a of the Policy, namely that:

(i) The Complainant 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.

The Complainant has provided no supporting documentary evidence. Accordingly, the Expert has extremely limited information in this case. The complaint does, however, contain a declaration signed on behalf of the Complainant stating that the information in the complaint is true to the best of the Complainant's knowledge. Accordingly, the Expert will treat the complaint itself as Complainant's evidence. That does not mean that the submissions made in the complaint are to be treated as proof, merely that those statements can be weighed to assess the Complainant's case.

In addition to the Complainant's submissions, the Expert has available the following evidence: a WHOIS printout of the Domain Name, a photocopy of a piece of the Complainant's headed notepaper partially obscured by the Complainant's cheque in favour of Nominet, a printout of the browser display of the web address http://www.kentqualified.co.uk and the Company Details. All of these were supplied by Nominet with the complaint.

Does the Complainant have Rights in respect of a name or mark which is identical or similar to the Domain Name? The Expert discounts the first (.uk) and second (.co) levels of the Domain Name for the purposes of comparison, on the basis that these are wholly generic. The Expert also discounts the fact that the Domain name does not have a space between the words 'Kent' and 'Qualified' as this is a necessary consequence of the technical rule which provides that a space is not a permitted character in a domain name. Having dealt with these issues, the Expert considers that the Domain Name is identical to Kent Qualified, being the name or mark in which the Complainant claims Rights.

The definition of Rights under the Policy "includes but is not limited to, rights enforceable under English law" but excludes rights in a name or term which is wholly descriptive of the Complainant's business.

Under English Law rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark. The Complainant has provided no evidence of any registered rights and the Expert must therefore conclude that the Complainant does not have rights in a registered trade mark for the name Kent Qualified.

The Complainant's only direct submission as to the extent of its Rights in the Domain Name is the standard submission in the Nominet model complaint form - " I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.". In addition to that submission, it is evident from the Company Details that Kent Qualified was incorporated in 1994 under that name - in other words, the company has not changed its name at any point. The Expert also notes (1) that the Complainant appears to be a registered charity, this information being printed on the Complainant's cheque paying the fee to Nominet, and (2) that the Complainant submits that all its "contacts, stationery, marketing material" carries the name kentqualified.co.uk. This latter point is supported by evidence to some extent - the photocopied letterhead of the Complainant in the Expert's papers bears the name 'Kent Qualified', the general email address 'info@kentqualified.co.uk' and the website address 'www.kentqualified.co.uk'.

The incorporation of a company under a particular name does not of itself give rise to the right to prevent others using that name. The effect of such a registration is merely to block any others who might subsequently attempt to register the same name with the relevant Companies House. However, the evidence does indicate that the Complainant is using the name in the course of operating a registered charity, it is currently displaying not only the name or mark but also the Domain Name itself on its stationery, and its company name has been Kent Qualified since incorporation in 1994. Its statutory accounts and annual returns are up to date and it is not dormant. It appears to be a trading company. With considerable reluctance, given the paucity of the evidence, the Expert has accepted these factors taken together as indicative of a use of the name Kent Qualified which might be capable of founding a claim for passing off under English law. How strong such a claim would be is dependent on the amount of goodwill in the name, as to which there is no information. However, lest it be thought that the Expert is stretching matters on this point, it is worth noting that the definition of Rights is non-exhaustive and the Expert takes that view that in the present case, however limited the extent of the Complainant's rights, the information presented just, and only just, tips the balance of probabilities in the Complainant's favour. The Expert therefore finds that the Complainant has rights in the name Kent Qualified, being a name identical to the Domain Name.

Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” as:-

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.”

Paragraph 1(ii) deals with the use of the Domain Name. 'Use' in this paragraph must be interpreted as meaning use of the Domain Name by the Respondent or a third party rather than by the Complainant itself. There is no material before the Expert indicating that the Respondent or a third party has ever used the Domain Name, unfairly or otherwise. On the contrary, such information as there is indicates that the Complainant is the current user and that the Domain Name is under its de facto control. Consequently, this paragraph need not be considered further.

It is at the point of registration that the possible unfair advantage or unfair detriment will have taken place, in other words, the situation envisaged by paragraph 1(i).

The Policy provides a non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration in paragraph 3(a) of the Policy. These are:-

"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. 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; or
iv. It is independently verified that the Respondent has given false contact details to us."

The Complainant's submissions do not indicate that the Respondent registered the Domain Name primarily (or otherwise) for the purposes of sale to the Complainant. There is no evidence before the Expert that would indicate that the Respondent had this primary purpose. For example, there is no indication that the Respondent has been refusing to transfer the Domain Name to the Complainant until a substantial sum of money has been paid. Rather, it seems that the Complainant has not been able to contact the Respondent.

There is no evidence that the Domain Name was registered as a blocking registration. Although the Domain Name in effect blocks registration of an identical domain name by the Complainant this will always be the case in any dispute under the Policy. To make out a case under this point there must be evidence of some deliberate intent to block the Complainant at the time of registration. None has been provided.

Similarly, while there may be a certain amount of disruption suffered by any Complainant making a complaint under the policy, to make out a case of disruption there must be evidence of the Respondent's deliberate intent to cause it. There is no evidence in this case that the primary purpose of the Respondent in making the registration was to cause unfair disruption to the Complainant.

There is no evidence of confusion. The Complainant is operating the Domain Name, at least for email purposes, the Respondent is not using the Domain Name, and there is no indication that there has been any confusion on the part of people or businesses.

There are no submissions that the Respondent registered the Domain Name as part of a pattern of abusive registrations. There are also no submissions, or independent verifications, as to the fact that the Respondent supplied false contact details to Nominet.

Accordingly the Complainant has not established any of the non-exhaustive factors which may evidence Abusive Registration in paragraph 3 of the Policy. The Expert is therefore required to consider whether, having regard to the definition of an Abusive Registration, the registration is otherwise abusive. The Expert accepts, from the Complainant's submissions, from the WHOIS printout and the Company Details, that while the Respondent was Company Secretary of the Complainant (and not a Director as the Complainant states) the Domain Name was registered in the Respondent's name. It is not clear whether the registration was effected by the Respondent himself, although the Expert accepts the Complainant's submission in this regard as the most probable construction that can be placed upon the facts. Doubtless the Nominet member with whom the name was registered would be able to confirm, data protection laws permitting, what actually took place.

Once again, the Complainant's lack of substantive evidence lets it down. Who paid for the Domain Name's registration? To whom was the Nominet member's invoice addressed? What instructions did the Complainant give the Respondent, if any, to register the Domain Name? What investigations, if any, did the Complainant undertake upon discovering the position? Did any discussions ensue between Nominet and the Complainant, upon the Complainant's discovery that the Domain Name was held in the name of the Respondent?

Clearly, the registration was taken in the Respondent's name either in error, accidentally or deliberately. Does this give rise to an Abusive Registration? Case number DRS188, The Leeds Festival (Mela) Ltd. -v- The Preview Channel, gives an example of a similar situation. In that case, the two parties had had a mutually beneficial business relationship. The complainant was the organiser of an Asian Festival and the respondent a web designer. The complainant instructed the respondent to register the disputed domain name. For reasons unknown to both parties, the registration was taken in the name of the respondent. The respondent invoiced the complainant in respect of the registration. The parties fell out. The respondent had control of the domain name. The complainant alleged that the website associated with the domain name was being used by the respondent to divert visitors to the respondent's own site where detrimental remarks were being made relating to the complainant. In addition, the complainant did not have access to email via the domain name and was able to satisfy the expert that this had caused considerable disruption. The expert found that there had been an Abusive Registration by reference to the Respondent's use of the domain name.

In the present case there are no similar circumstances that are so clearly indicative of an Abusive Registration. The Respondent is not using the Domain Name. The Expert cannot form a view as to the intentions of the Respondent. It follows that the Expert cannot form a view as to whether the there was an error at the time of registration or whether the Respondent was behaving less than honourably. An error at the time of registration would not, in the Expert's view, amount to an Abusive Registration without something more, such as the example of unfair use provided in Leeds Festival. Here there is no evidence of unfair use.

Evidence of dishonourable intentions on the part of the Respondent or of disruptive activities regarding the use of the Domain Name might have taken the Complainant further. Regrettably, the complaint merely offers the Complainant's assertion that the Domain Name should have been registered in the name of "a Trustee" (although one might ask why not in the name of the Complainant itself) and that the Respondent left due to circumstances that cannot be mentioned and "is unlikely to give permission for the transfer from his name to that of a company Trustee". In the Expert's view these assertions are not factors which are evidence of an Abusive Registration and the Expert therefore finds that the Complainant has failed, on balance of probabilities, to prove that the Domain Name in the hands of the Respondent is an Abusive Registration.

The Expert has some sympathy with the Complainant in that it has been found to have Rights in the name Kent Qualified, yet the Domain Name which it is operating is registered to a third party. However, the Policy is not the appropriate vehicle to secure a transfer from the Respondent unless there is appropriate evidence of an Abusive Registration. If there is such evidence, a further application might be made under the Policy. If not, the Complainant may have other remedies in other fora whereby a resolution might be secured.

In light of the foregoing finding, namely that the Complainant has failed to prove on balance of probabilities that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy, the Expert refuses the request for transfer of the name.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Kent Qualified -v- Hewlett [2002] DRS 599 (15 November 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/599.html Cite as: [2002] DRS 599