Steria UK Ltd v Vas Systems Ltd [2004] DRS 1592 (27 April 2004)

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The Complaint was lodged with Nominet on 1 March 2004. Nominet validated the Complaint and notified the Respondent on 4 March 2004 and informed the Respondent that it had 15 working days within which to lodge a Response. All correspondence to the Respondent was sent to the address given by the Complainant and to the Respondent’s address on the Nominet Registry. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 5 April 2004 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).

Sallie Spilsbury, the undersigned (“the Expert”) has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.

Under Paragraph 5a of the Dispute Resolution Service Procedure (“the Procedure”) the Respondent was required to submit a Response to the Complaint to Nominet by 26 March 2004. The Respondent has failed to do so.

If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint.

Are there exceptional circumstances which would suggest that it is not appropriate to proceed to a Decision?

It is the view of the Expert that there are no exceptional circumstances. It appears from Nominet’s file that initial correspondence was sent by Nominet to the Respondent’s address as notified by the Complainant. When it became apparent that this address might be incorrect, the correspondence was sent to the Respondent’s registration address on the Nominet database. There is nothing to suggest that this correspondence was not received by the Respondent. The Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.

The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties’ submissions (which consist of the Complaint and its Exhibits) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent’s non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure).

The facts of this Complaint are unusual in that the Complainant or its associated companies have used the Domain Name without restriction since its registration in 1999. The Complaint essentially concerns the circumstances surrounding the registration of the Domain Name on behalf of the Complainant through the Complainant’s intermediaries.

The Complainant describes itself as a subsidiary of the French group, Groupe Steria SCA. The Complainant was registered as a private limited company under the name Steria UK Limited on 8 January 1999. At the time of incorporation, the Complainant was the only company within the Steria group of companies operating in the UK. Shortly after incorporation, the Complainant requested Asmec Management Associates Limited (“Asmec”) to arrange for registration of the Domain Name on its behalf. Asmec arranged for the Respondent to make the required registration, which was carried out on 26 January 1999.

Asmec have confirmed to the Complainant that, when requesting the Respondent to register the Domain Name, their intention was for it to be registered in the name of the Complainant. This confirmation takes the form of an email from Martin James of Asmec to Sarah Mitchell of the Complainant dated 29 January 2004 at Exhibit 2 of the Complaint which states as follows:

“It was my understanding as the time that this [the Domain Name] would be registered for Steria and on Steria’s behalf”.

The Complaint records that the initial registration fee for the Domain Name (and ongoing costs of renewal) were paid for by the Complainant. The Complaint also states that at all times the Complainant intended in good faith that the registration of the Domain Name would be in the name of Steria UK Limited (the Complainant), rather than in the name of the Registrant (the Respondent). However in the papers before the Expert (which include copy emails between Asmec and the Respondent from the time of the Domain Name registration) there are no clear instructions about the name in which the Domain Name should be registered. The relevant email reads as follows:

e-mail address:….
User:…
User’s IP address: …
Web space for www.steria.co.uk

The Complaint does not make clear whether the Complainant itself contracted with the Respondent for registration of the Domain Name, although this seems unlikely. More likely is that Asmec entered into the contract either as agent for the Complainant or on its own behalf.

In December 2001, the UK business of the Groupe Steria SCA was re-organised. As part of the rationalisation of the UK business, the business of the Complainant was transferred to Steria Limited on 31 December 2002, although the Complainant remains a separate legal entity. The Complainant’s sister company, Steria Limited, is now the main trading company in the Steria group in the UK and, since April 2002, has been the tag holder of the Domain Name.

Following the transfer of the Complainant’s business in the UK to Steria Limited in December 2002, it was discovered that the Domain Name had been registered in the name of the Respondent, rather than in the Complainant’s name. The Complaint records that attempts were made by the Complainant to locate and contact the Respondent in order to regularise the situation, and to arrange a transfer of the Domain Name. In August 2003, Nominet informed the Complainant that the contact held by Nominee for the registrant of the Domain Name was Mr Gordon Fielden, a director of the Respondent Company. The Complainant made contact was made with Mr Fielden in September 2003 and forms were sent to him to arrange for signature on behalf of the Respondent to affect a transfer of the Domain Name. The transfer forms have not been returned by Mr Fielden.

In November 2003, Mr Fielden indicated to the Complainant that a further £100 would be payable, in addition to the transfer fee charged by Nominee. This is recorded in Exhibit 4 to the Complaint which takes the form of an email from Mr Fielden to the Complainant in the following terms:

“VAS Systems require a 100 pound transfer fee (plus VAT), if you make a payment to VAS Systems Limited and the details of where you would the domain transferred to, upon receipt of clear fund this will done immediately” (sic)

The Complainant states that it agreed to pay this fee and requested details to enable the agreed sum to be paid by the Complainant’s sister company, Steria Limited.

Since November 2003, the Complainant’s sister company, Steria Limited, has continued to pursue this matter on the Complainant’s behalf. Despite repeated attempts to contact, Mr Fielden, the relevant details enabling the Complainant to pay the transfer fee and agreed additional fee and affect the transfer have not been supplied. As at the date of filing the Complaint contact between Mr Fielden and the Respondent appears to have ceased. There is nothing in the papers before the Expert to indicate that the Respondent has ever explicitly refused to transfer the Domain Name.

The Respondent was incorporated on 6th May 1997. From the papers before the Expert the Respondent appears to provide ISP-type services including domain registrations.

The Domain Name was registered on 26 January 1999. On a WHOIS search the Registrant is shown as VAS Systems (Firenet).

There is no definite indication before the Expert that the Registrant and the Respondent company are the same entity. However a Companies House search of the Respondent shows one of its directors to be Gordon Fielden. As stated above, Mr Fielden has emailed the Complainant making representations on behalf of the Respondent company. The Expert is therefore prepared to accept that the company (Vas Systems Limited) and the Registrant (Vas Systems (Firenet)) are the same entity for these purposes.

The Complainant asserts that it has Rights (as defined in the policy) in the name “Steria” which is a similar name to the Domain Name.

The Complainant contends that the registration by the Registrant of the Domain Name in its own name rather than in the name of the Complainant was unfairly detrimental to the Complainant’s Rights. It states that the business of the Complainant’s sister company, Steria Limited, is being adversely affected by the incorrect registration of the Domain Name. In particular, Steria Limited is unable to obtain a digital certificate until it can demonstrate ownership of the Domain Name.

For the above reasons the Complainant contends that the registration is abusive and requests transfer of the Domain Name to the Complainant, to enable it in turn to transfer it to the Complainant’s sister company (and the Steria group’s main trading company in the UK) Steria Limited.

(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 onus of proving both of the above elements is borne by the Complainant who must prove them on the balance of probabilities (Clause 2b of the Policy).

The term “Rights” is defined by the Policy to include, but not be limited to, rights enforceable under English law but the term does not extend to a name or term which is wholly descriptive of the Complainant’s business.

(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.

The Complainant states that it was incorporated in the UK in 1999 as a member of the international group of Steria companies and it has supplied a copy of the incorporation certificate for the Complainant. The Complaint also records that the business of the Complainant company was transferred to Steria Limited in 2002. Although the Complainant company remains a legal entity, the suggestion in the Complaint is that it no longer trades.

The Complainant has supplied no evidence of trade mark registrations for the STERIA mark nor has it provided evidence that goodwill has been generated by the STERIA mark. The Complaint does not give any indication of the nature or the size of the Complainant’s business.

The only information about this before the Expert is contained in a Companies House search for the Complainant company provided by Nominet which states that the nature of the Complainant’s business is “Software consultancy and supply”. In addition, in accordance with its normal practice Nominet has supplied the Expert with a printout of the website at www.steria.co.uk (which is operated by the Steria Group of companies of which the Complainant forms part). The website states that

“Steria is an IT services company operating in 12 countries across Europe. We design, develop and deliver quality IT systems solutions underpinned by secure infrastructures for clients in the Defence, Criminal Justice, Emergency Services, Transport and Insurance Markets. In addition a high proportion of our business is with Government Departments…”

The Expert is mindful that the definition of Rights in the Policy is expressed to be wider than rights enforceable under English law. She is also mindful that an overly technical interpretation of the Policy may be contrary to the spirit of the Policy. For this reason she is prepared to consider whether the Steria group as a whole has rights in the STERIA mark and therefore to take account of Rights belonging to the Complainant (which it seems no longer trades), its UK sister company, which took over the UK business in 2002 and the Steria Group of companies in relation to this Complaint.

The Policy requires the Complainant to prove that it has Rights on the balance of probabilities (clause 2 b of the Policy). In the view of the Expert the Complaint document and exhibits, do not discharge this burden of proof. The Expert is in effect being asked to make an assumption that the necessary Rights must exist with almost no supporting facts about the Complainant’s business.

The information on the website about the Steria business was provided by Nominet. As stated above, this is in accordance with the usual Nominet practice. As such the Expert considers that the information provided on the website printout forms part of the “Policy and Procedure” which she may have regard to alongside the Parties’ submissions under clause 16a of the Procedure in reaching her decision

In the light of the information about the Steria group of companies set out on the website at www.steria.co.uk, the Expert is able to conclude that there are Rights in the STERIA mark for the purposes of the Policy. These rights take the form of goodwill which will have been generated by the extensive use of the STERIA mark across Europe.

The Expert does however wish to make it clear that in the absence of the information contained on the website the Complainant’s case would have failed on the ground that it has not demonstrated that it owned the necessary Rights in the STERIA mark. She would urge that future Complainants take greater account of their obligations to make out their case under the Policy.

The next question that the Expert must consider is whether the Complainant’s STERIA mark is identical or similar to the Domain Name. The Domain Name is clearly identical to the Complainant’s STERIA mark (it being customary to disregard the suffix “.co.uk”)

The first criterion under the Policy has therefore been satisfied. On the evidence currently before the Expert, the Complainant has demonstrated on the balance of probabilities that it has Rights in a mark which is identical or similar to the Domain Name.

Abusive Registration is defined by reference to two alternative limbs relating to (a) registration or acquisition of the Domain Name on the one hand and (b) to use made of the Domain name on the other.

The Domain Name was registered on 26 January 1999. The Expert must therefore consider whether the registration took unfair advantage or was detrimental to the Complainant’s Rights in the STERIA mark at the time of registration. This requirement is clearly stated in the definition of Abusive Registration which is contained in the Policy.

Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain name is an Abusive Registration. The factors which may be relevant to the registration or acquisition of the Domain Name are as follows:

There are 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 Respondent.

Clause 2(b) of the Policy clarifies that the Complainant has to prove that a Respondent’s registration is abusive on the balance of probabilities. There is no evidence before the Expert about the Respondent’s motives for registering the Domain Name.

· There is no indication that the Respondent attempted to sell the Domain Name to the Complainant at the time of registration. In fact it registered the Domain Name at the request of and on behalf of the Complainant. Although an attempt was made to charge a transfer fee in November 2003 this was a considerable time after registration and the Complainant had been free to use the Domain Name during that time. Ground A above has accordingly not been made out.

· The Domain Name was obviously not registered as a blocking registration to prevent the Complainant from securing the Domain Name. Ground B has not been made out.

· This leaves the question whether the Domain Name was registered primarily to disrupt the Complainant’s business or more generally under clause 1 of the Policy whether the registration took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

The Domain Name was clearly not registered in order to disrupt the Complainant’s business. The registration was in fact made at the Complainant’s request in order to facilitate its business.

An argument could be made that the registration of the Domain Name was abusive because the Respondent had failed to comply with instructions at the time of registration that the Domain Name should be registered in the Complainant’s name. Leaving aside whether this would constitute abuse under the terms of the Policy, the Complainant is not able to discharge its burden of proof that such instructions were in fact given to the Respondent. The contemporaneous correspondence in the Exhibits which accompany the Complaint is not clear about whether the Respondent was asked to register the Domain Name in its own name for the benefit of the Complainant or in the Complainant’s name. Although the recollection of Asmec (the intermediary liaising with the Respondent on the Complainant’s behalf) is that there was an understanding that it should be registered “for Steria”, this ambiguous statement cannot be determinative of a finding of abuse against the Respondent. “For Steria” does not mean the same thing as “In Steria’s name”. It must also be remembered that the Respondent has not disrupted the Complainant’s use of the Domain Name since the registration in 1999 and as such an inference of bad faith on the Respondent’s part at the time of registration cannot be drawn in the absence of other factors.

The Complainant has therefore been unable to discharge its burden of proving that at the time of registration, the Domain Name was abusive.

The Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name has been used in a manner which took unfair advantage of or was wholly detrimental to the Complainant’s Rights. On the rather unusual facts of this case none of these factors are directly relevant. The Complainant is operating its own website under the Domain Name without interference from the Respondent. There is nothing on the facts to indicate that the Respondent has a history of abusive registrations under the Policy.

The Expert’s decision must therefore ask the broad question about whether the Respondent’s conduct amounts to abusive use of the Domain Name generally. Is the use taking unfair advantage of or is it unfairly detrimental to the Complainant’s Rights?

From the limited evidence before the Expert it appears that the Respondent’s business concerns the registration and maintenance of domain registrations. Their maintenance of the Domain Name on behalf of the Complainant is in the view of the Expert a “use” of the Domain Name for which the Respondent will have received payment from the Complainant or its agent (Amec). The issue arises as to whether by failing to agree to transfer the Domain Name to the Complainant (but never actually refusing to do so) the Respondent has carried out this “use” in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights in the STERIA mark.

In support of a finding of damage or detriment to its Rights, the Complainant states that its sister company has been unable to obtain a digital certificate without proof of ownership of the Domain Name. There is no other indication of damage in the Complaint.

In the view of the Expert the Respondent is not taking advantage of the Complainant’s Rights. The Respondent does not appear to be gaining any specific benefit from its connection with the STERIA mark and there is no evidence that it intends to take advantage of the mark in the future.

On the other hand the failure to transfer the Domain Name is causing detriment to the Complainant’s Rights. The Complainant and its associated businesses are unable to obtain the necessary digital certificate which would presumably enable the expansion of E-business activities and the development of goodwill in that area of trade. But the question whether the detriment is “unfair” is a difficult one. The Expert has found that the Complainant has not discharged its burden of proof that the Respondent did not comply with its instructions on registration of the Domain Name. But what is clear is that the Domain Name was registered on behalf of the Complainant. As such the Respondent was required to act in the Complainant’s interests in securing and maintaining the registration of the Domain Name. The Respondent’s failure to respond adequately to the recent request for transfer of the Domain Name cannot be said to be in the Complainant’s interests. But this does not mean that it is “unfair” under the terms of the Policy.

There is nothing before the Expert to suggest that there is a sinister motive behind the Respondent’s failure to respond to the request for transfer of the Domain Name. The Expert is entitled to draw such inferences from the Respondent’s failure to submit a Response as she considers appropriate (clause 15c of the Procedure). The Expert is mindful of this but her view is that it would not be appropriate to infer that the Respondent, as a professional ISP business, has an improper motive for not transferring the Domain Name simply on the basis of the Complaint before her (which does not make this allegation) and the lack of a Response. If the Respondent were to prevent or to actively disrupt the use of the Domain Name by the Complainant that may constitute an abusive use of a domain registration under the Policy. But nothing of this nature appears to have occurred.

In November 2003 the Respondent requested a transfer fee of £100 for transfer of the Domain Name to the Complainant (which the Complainant states was payable in addition to the Nominet fee). It is possible that this request could be regarded as abusive conduct were it to exceed the Respondent’s out of pocket expenses (clause 3 iA of the Policy suggests that an attempt to sell a Domain Name for costs which exceed out of pocket expenses can provide evidence that a Domain Name was abusive at the time of registration). However the Complainant has not sought to make this point and the Respondent’s request was made some time after registration of the Domain Name. In any event the Expert has no information to enable her to judge whether the transfer fee which the Respondent sought would be excessive on the facts of this Complaint.

The question whether the Respondent is acting unfairly in not addressing a request for transfer of a Domain Name registered on behalf of the person making the request is essentially an internal dispute between the Complainant and its ISP and other intermediaries. It is not something that naturally falls to be considered within the terms of the Policy.

The Expert finds that the Complainant has not demonstrated that the Respondent’s use of the Domain Name is taking unfair advantage of or is unfairly detrimental to the Complainant’s Rights.

However as an aside the Expert would urge both Parties to resolve this matter. The Respondent is evidently not conducting this aspect of its business in a responsible manner. This decision makes it clear that should the Respondent seek to secure a benefit from the Domain Name registration whether by seeking to charge an excessive transfer fee or otherwise trying to prevent the continued use by the Complainant or its associated businesses that could very well constitute an infringement of the Policy. In the circumstances it would seem that there is no reason why the Respondent should not make the transfer that the Complainant has requested.

The Expert finds that the Complainant has not proved on the balance of probabilities that the two elements in paragraph 2 of the Policy are present, namely that there are 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.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Steria UK Ltd v Vas Systems Ltd [2004] DRS 1592 (27 April 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1592.html Cite as: [2004] DRS 1592

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