DSG Retail Ltd -v- Lyons [2004] DRS 1446 (26 January 2004)

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The complaint was lodged with Nominet both electronically and in hard copy on 3 December 2003. On 8 December 2003 Nominet validated the complaint and wrote to inform the Respondent of the complaint, asking for a response by 2 January 2004.

The Complainant supplied Nominet with the Huntingdon postal address for the Respondent shown above. Two different postal addresses appear in Nominet’s register for this registration:

· Registrant and administrative contact: Mr Francis David Lyons, 19 Crescent Road, Whittlesey, Peterborough PE7 1XY

· Billing and technical contact: David Lyons, 145 High Street, Huntingdon, Cambridge, Cambs, PE29 3TF

Nominet posted two copies of its letter to the Respondent dated 8 December 2003. One was addressed to Mr Francis David Lyons, PC World Direct Ltd, 19 Crescent Road, 89 High Street, Whittlesey, Peterborough, PE7 1XY. This copy was returned by the Royal Mail a few days later marked as undeliverable because of an incomplete address. The other copy was sent to Lawgistics at the address supplied by the Complainant. Nominet also emailed the letter to three email addresses (one derived from the Domain Name, one supplied by the Complainant and one in the registration record) and had no indication that these were not delivered.

No response was received from the Respondent. On 6 January 2004 Nominet wrote again to the Respondent, saying that the case would now be referred to an independent expert for a decision if the Complainant paid the fee. On 7 January the Respondent rang Nominet to say that he had received the letter dated 6 January but not the previous one dated 8 December, and that he would like to make a response. Nominet replied that they believed they had copied the correspondence correctly in accordance with its Procedure and therefore it was too late to make a response.

On 13 January 2004 the decision fee was received from the Complainant. On 16 January Nominet asked this Expert, Claire Milne, whether she could act in this case. She confirmed that she had no connection with either of the parties and was accordingly appointed.

The non-delivery of one of the copies of Nominet’s letter of 8 December and the Respondent’s phone call of 7 January raise the issue of whether the Respondent has had a fair opportunity to respond, particularly in view of possible postal delays and absence from work over the Christmas holiday period. I have considered this matter carefully. Given that Nominet also sent the same letter to Lawgistics (a law firm who in a letter of 22 September 2003 identified Mr David Lyons as their client) and copied it electronically to three separate email addresses, I find it probable that at least one of these communications reached the Respondent before the response deadline. I therefore believe that, in this instance, not only has Nominet followed the correct procedure but the Respondent did have an opportunity to respond, which he initially chose not to exercise (although he later changed his mind).

As part of the Complaint, Companies House registration documents have been supplied showing that on 15 April 2002 a private limited company called PC World Direct Ltd was incorporated, with a registered office address of 19 Crescent Road, Whittlesey. Two company appointments are shown: Francis David Lyons, born 1954, as Secretary, and David Lyons, born 1978, as Director. Both Mr Lyons use the same 19 Crescent Road address. The last accounts, made up to 30 April 2003, show the company as dormant.

Nominet’s registration records show that on 11 June 2002, Mr Francis David Lyons registered the name pcworlddirect.co.uk for PC World Direct Ltd through the Internet Service Provider Easily.

On 22 September 2003 Lawgistics wrote to the solicitor of Dixons Group as follows:

“Thank you for your letter of 4 September 2003. We can confirm that we act for both Mr Lyons and PC World Direct Ltd. The domain name was registered in June 2002. The suggest [sic] purchase price is £300,000.”

The well-known chain of stores PC World is of course part of the Dixons Group. A logo showing the name “PC World” (in its usual style) above the words “Direct Services” (in much smaller letters) has been supplied as part of the complaint. Dixons used this style internally from May 1999, and as part of a letterhead at least during the month of July 2000.

On 8 December 2003 and 26 January 2004, the URL www.pcworlddirect.co.uk resolved to a holding page on the website of easily.co.uk.

DSG Retail holds a portfolio of trade marks which incorporate the name PC World and further details of these can be provided. As demonstrated by the logo supplied, PC World has traded under the banner PC World Direct for a number of years.

We believe that customers would expect any use of PC World Direct to be associated with the PC World stores. Use of the pcworlddirect.co.uk URL would therefore confuse users, especially as PC World’s URL is pcworld.co.uk.

The offer on behalf of the registrant to sell the name to DSG for £300,000 is evidence of bad faith.

According to section 2 of Nominet’s Dispute Resolution Service Policy, in order to succeed, a complainant must demonstrate two points, each on the balance of probabilities:

· The complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name, and

The Complainant appears not to have read the Policy. No attempt has been made to demonstrate Rights in respect of a name or mark which is similar to the Domain Name. Instead, rather flimsy evidence has been supplied in support of Rights in the exact name PC World Direct. Seven pages of registration details for DSG Retail Limited have also been supplied, with no explanation of their relevance to the case and no apparent mention of PC World.

No evidence has been supplied of the Complainant’s Rights in the name PC World. However, I accept that DSG Retail Ltd does have such Rights. The name PC World is well known and its website at pcworld.co.uk is active.

I also find that, in the context of online trading, the name pcworlddirect is similar to the name pcworld. I therefore find that DSG has Rights in a name similar to the Domain Name.

Nominet’s Dispute Resolution Policy (1) defines 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.

I have no information on the Respondent’s intentions at the time of registration. However, I consider it very improbable that any UK resident could register the business name PC World Direct, or the corresponding domain name, without being aware that its use could cause confusion with the prominent chain PC World.

There is no evidence of the Respondent having used or prepared to use the Domain Name for a website. The company with the corresponding name remained dormant well after the Domain Name was registered. However, the Domain Name has been offered to the Complainant for £300,000 – an amount well in excess of any credible out-of-pocket costs.

With reference to the Policy section 3a, I believe therefore that the Respondent must have registered the Name with a view to taking unfair advantage of the Complainant’s Rights – whether by confusion marketing or by selling at a large profit is immaterial, although the latter seems more likely. Accordingly, I find that this was an Abusive Registration.

The Complainant has Rights in a name that is similar to the Domain Name. The Registration took unfair advantage of the Complainant’s Rights. The Registration is therefore Abusive.. As requested by the Complainant, I direct that the Domain Name should be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> DSG Retail Ltd -v- Lyons [2004] DRS 1446 (26 January 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1446.html Cite as: [2004] DRS 1446

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