TC Hayes Ltd -v- Green [2003] DRS 1180 (9 October 2003)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

A Complaint in respect of tchayes.co.uk (the “Domain Name”) under Nominet UK's Dispute Resolution Service Policy (the “Policy”) was received from the Complainant on 18 August 2003. Nominet validated the Complaint and forwarded it to the Respondent on 21 August 2003. No response was received from the Respondent. On 17 September 2003 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”). The applicable fees were received from the Complainant on 19 September 2003. I was appointed as Independent Expert as of 26 September 2003 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.

Paragraph 15b of the Procedure provides that if, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or Procedure, the Expert will proceed to a Decision on the Complaint. Nominet has taken the appropriate steps to serve the Complaint in accordance with the terms of the Procedure and received an email from the Respondent effectively acknowledging service. I find that there are no exceptional circumstances. Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non?compliance with the Procedure as I consider appropriate.

The Complainant is a retailer of electrical goods. It was incorporated on 19 September 1979. According to the Nominet WhoIs database, the Respondent registered the Domain Name on 26 December 1999. The Domain Name currently resolves to a domain holding page of Internet service provider Easyspace.

Complainant
(a) The Complaint Form is sparse on contentions and makes little more than bare assertions that the Domain Name is identical or similar to a name or mark in which the Complainant has rights and that the Domain Name in the hands of the Respondent is an abusive registration.
(b) Mr T C Hayes, the managing director of the Complainant, visited the home of the Respondent sometime before 19 July 2000. He did not meet the Respondent but met his father. The Complainant wrote to the Respondent on 19 July 2000 referring to his visit and suggested that it was illegal for the Respondent to use Mr Hayes’ name on the Internet. He asked for information to enable the transfer of the Domain Name to “its rightful owner”. The letter threatened court proceedings if there was no response within seven days. No action was taken at that time but the Complainant does now wish to retrieve its name.
(c) The Complainant understands that the Respondent is starting to build a website using its products and is concerned that the website could be used for all sorts of detrimental material about the Complainant. Since the Respondent has no connection whatsoever with the Complainant this confirms that the Domain Name is an Abusive Registration.

The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that the Complainant has Rights in respect of 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.

I have a dilemma commonly faced by Experts dealing with Complaints under the Policy. Despite the clear requirement of Clause 2b as set out above, the Complainant has not in fact put forward any specific evidence to prove the existence of “Rights” as defined in the Policy and in the Procedure. There is no suggestion that the Complainant claims to own any registered trade marks in respect of the name T C HAYES. The Complainant’s representative has done little more in effect than tick the box on the online Complaint Form confirming that the Domain Name in dispute is identical or similar to a name or mark in which the Complainant has Rights.

Two of the options open to me are, first, to take a very strict approach and simply dismiss the Complaint on the ground that the Complainant has failed at the first hurdle: or, second, I could go to the time consuming lengths of invoking my right under Clause 13 of the Procedure to request further statements or documents from the Complainant to give it the opportunity to improve its case. In my view, this second option should not be exercised lightly, particularly since to do so raises other issues as to whether further attempts should be made to serve the Respondent with any additional material provided, give him a further opportunity to respond and effectively re-open the submissions procedure. In this case I decline to adopt that course.
I have, however, a third option and that is to consider in the round the documents in fact available to me and to assess whether on balance these do point to the existence of sufficient Rights on the part of the Complainant. As the Appeal Panel pointed out in its decision in Seiko UK Limited v Designer Time/Wanderweb (DRS 00248), “the requirement to demonstrate ‘rights’ is not a particularly high threshold test.”
Included with the papers sent to me by Nominet is a print out of some details of the Complainant company at Companies House. This includes the fact that the Complainant was incorporated in September 1979, that it is in the retail electric household goods business and that there have been no changes to the name of the company over the previous 20 years. I also have a letter on the headed notepaper of the Complainant indicating that one of the directors is indeed T.C. Hayes.
It therefore appears to me that I can properly infer that the Complainant has carried on business under the name T.C.Hayes Limited for at least 20 years and probably since the company was incorporated in September 1979 and that as a consequence of its use of its name for up to 24 years the Complainant has acquired a trade reputation and goodwill in the name T.C.Hayes. In the absence of any evidence to the contrary, I can assume that such reputation and goodwill will have given rise to common law rights that may well entitle it to restrain others from passing off their business as that of the Complainant by using the name T C Hayes. Matters are finely balanced and I am conscious that prospective Complainants should be encouraged to be more rigorous as to the quality of the Complaints they file rather than less so. Nevertheless, in all the circumstances I do find on balance that the Complainant does have Rights in the name T.C.Hayes and/or T.C.Hayes Limited.
In comparing the Domain Name and the name of the Complainant I ignore the statutory, generic term “Limited” and the domain suffix “.co.uk”. I therefore find that the Complainant does have Rights in respect of a name or mark which is identical to the Domain Name.

Abusive Registration

Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which was either 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.

There is very little in the way of evidence before me as to the manner in which the Domain Name was registered or has been used. The Complainant states that it understands the Respondent was starting to build a website that could be used to post detrimental material about the Complainant. The only indication of any intention to build a website is that on 21 August 2003, when Nominet verified the Complaint, the Domain Name resolved to a web page carrying the words “T.C.H.A.Y.E.S.” and “UNDER CONSTRUCTION”. There is no evidence of any other “use” of the Domain Name since it was registered in December 1999. As I have indicated, it currently resolves to an Easyspace domain holding page
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy. Although I do not consider that a detailed analysis of those factors is appropriate in this case, they do include circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name as a blocking registration against a name or mark in which the Complainant has rights.
The Respondent did not respond to the Complainant’s letter of 19 July 2000 or to the Complaint. There is therefore no explanation from him as to the circumstances in which the Domain Name was registered or why or explaining how it has been used.

In the absence of any justification from the Respondent, it is extremely difficult to envisage any legitimate explanation for the Respondent registering the Domain Name. It represents the name of the Complainant and the name of its Managing Director, Mr T C Hayes. I note that the Respondent’s address in the Nominet WhoIs database and the address for the Respondent provided by the Complainant are both in the West Midlands where the Complainant is based. The obvious inference is that the Respondent must have had the Complainant in mind when he registered the Domain Name.
In view of the limited arguments and evidence put forward in the Complaint, matters are again very finely balanced. However, it appears clear that
(a) the registration of the Domain Name by the Respondent is in fact acting as a blocking registration against a name which is identical to a name in respect of which I have found the Complainant has Rights;
(b) there is no explanation at all from the Respondent as to how he came to select the Domain Name for registration;
(c) the Domain Name is unusual and it is almost impossible to conceive a legitimate explanation for the registration; and
(d) the background is such as to suggest that the Respondent is most likely to have had the Complainant in mind when he registered the Domain Name.

In my view, in those circumstances, it is reasonable for me to infer that the Respondent did register the Domain Name for an abusive purpose, whether as a blocking registration or otherwise, and I do so infer.
I therefore consider on the balance of probabilities that the Domain Name was registered and has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights in the name T C Hayes and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.

7 Decision

Accordingly, I find that the Complainant has Rights in respect of 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. I therefore determine that the Domain Name be transferred to the Complainant T.C.Hayes Limited.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> TC Hayes Ltd -v- Green [2003] DRS 1180 (9 October 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1180.html Cite as: [2003] DRS 1180

Nominet UK Dispute Resolution Service