1879 English Heritage v Alliance Of Enfield [2004] DRS 1879 (26 August 2004)


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Nominet UK Dispute Resolution Service


You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> English Heritage v Alliance Of Enfield [2004] DRS 1879 (26 August 2004)
URL: http://www.bailii.org/uk/cases/DRS/2004/1879.html
Cite as: [2004] DRS 1879

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Nominet UK Dispute Resolution Service

DRS 01879


ENGLISH HERITAGE v. ALLIANCE OF ENFIELD

Decision of Independent Expert


1. Parties:

Complainant: English Heritage
Country: GB


Respondent: Alliance of Enfield
Country: GB


2. Domain Name:

Englishheritage.co.uk (“the Domain Name”)


3. Procedural Background:

The complaint was entered into Nominet’s system on 5 July 2004.  Nominet validated the complaint and sent the complaint documents to the Respondent’s contact address and the postmaster@englishheritage.co.uk email address on 8 July 2004, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 working days (until 30 July 2004) to submit a Response. It appears that the email ‘bounced’ and the fax recipient had no record of the Respondent. No Response was received and therefore the Informal Mediation stage was bypassed. On 3 August 2004 the Complainant was invited 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 11 August 2004.

On 13 August 2004 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet duly appointed me as Expert with effect from 18 August 2004.


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

None.


5. The Facts:

The Complainant is a statutory body established under the National Heritage Act 1983 and entrusted with various functions such as the conservation of historic buildings in England. It is the proprietor of four cited trade mark registrations: (i) UK No. 2054192 - ENGLISH HERITAGE (word and device mark) registered as of 26 January 1996 in Class 36 for various financial and insurance services; (ii) UK No. 1496482 – ENGLISH HERITAGE (word mark) registered as of 3 April 1992 in Class 42 for various surveying, architectural and planning services; (iii) UK No. 1496481 – ENGLISH HERITAGE (word mark) registered as of 3 April 1992 in Class 16 for various paper goods; and (iv) CTM No. 000575373 - ENGLISH HERITAGE (word and device mark) registered as of 26 June 1997 in Class 42 for a broad range of goods in Classes 9, 14, 16, 20, 21, 24, 25, 28, 29 and 30.

The Nominet WHOIS search with which I have been provided shows that the Domain Name, englishheritage.co.uk, was registered on behalf of the Respondent on 26 June 1998.

I have been provided with printouts of past incarnations of the website which has been published under the URL http://www.englishheritage.co.uk. The Domain Name does not appear to have ever been used for a ‘genuine offering of goods or services’ within the meaning of paragraph 4(a)(i)(A) of the Policy, and for much of the time it seems that this URL has simply been used to frame the Complainant’s own website.


6. The Parties’ Contentions:

Complainant:

The Complainant requests that the Domain Name be transferred to it on the basis of the following submissions:

“The complainant is established as a non-departmental UK public body established under the National Heritage Act 1983. The full title of the complainant is the Historic Buildings and Monuments Commission for England, but is commonly referred to as ENGLISH HERITAGE. The complainant is funded in part by the British Government and in part from revenue earned from its own trading and fund-raising activities. The complainant has a statutory responsibility for all aspects of protecting and promoting the historic environment in the UK and is sponsored by the Department of Culture, Media and Sport (DCMS). The complainant is the British Government's adviser on the historic environment and works closely with the Deputy Prime Minister and the Departments for the Environment, Food and Rural Affairs and for Trade and Industry.
There are a selection of UK legislative instruments (or relevant parts thereof) attached at Annex 1 referring to the complainant in this capacity, including: the National Heritage Acts 1983 (establishing the complainant) and 2002; The Stonehenge Regulations 1997 (giving powers to the complainant to control public access to the Stonehenge site); The Local Authorities (Goods and Services)(Public Bodies)(English Heritage) Order 1997; The Museums and Galleries Act 1992 (Amendment) Order 2000; The Authorisation of Works (Listed Buildings)(England) Order 2001; and The Whole of Government Accounts (Designation of Bodies) Order 2003. In each instrument references to the complainant have been highlighted.
The complainant uses, and indeed is obliged to use, the name ENGLISH HERITAGE (referred to in this complaint as "the Mark") in relation to all of its activities. Such activities specifically include: giving grants for the conservation of historic buildings, monuments and landscapes; maintaining registers of England's most significant historic buildings, monuments and landscapes; advising on the preservation of the historic environment; promoting education and research about England's heritage; caring for Stonehenge and over 400 other historic properties on behalf of the nation; and maintaining the National Monuments Record as the public archive of England's heritage.
The complainant is the owner of the following UK and Community trade marks featuring the Mark: (i) UK No. 2054192 - ENGLISH HERITAGE (word and device mark); (ii) UK No. 1496482 – ENGLISH HERITAGE (word mark); (iii) UK No. 1496481 – ENGLISH HERITAGE (word mark); and (iv) CTM No. 000575373 - ENGLISH HERITAGE (word and device mark). Copies of the registration certificates for each of the registrations are attached at Annex 2. The registrations evidence the complainant's registered rights in the Mark.
Attached at Annex 3 is the complainant's most recent (2002/2003) Annual Report and Accounts. The Report provides details about the complainant's recent and planned activities. The Accounts (beginning on page 25) detail the complainant's expenditure, of which in excess of £13 million was spent on Education and Outreach; in the notes on the financial statements for this expenditure (page 34) it is shown that expenditure on "public affairs and communications" and "education and publications" in 2003 was in excess of £5 million; this expenditure represents a fraction of the substantial investment the complainant has made in acquiring goodwill in the Mark amongst the public. Of this in particular in 2003, the complainant spent approximately £1.5 million on promotional activities and events, £0.5 million of which was spent on advertising featuring the Mark.
At Annex 4 is a colour photocopy of pages 2.0 and 2.1 of a booklet produced by the complainant entitled Modernising English Heritage 2003/4 – 2004/5 Coming of Age. These pages show the complainant's funding arrangements and expenditure budgets for 2003/2004. The budget for expenditure on Education and Outreach will be £6.5 million (as shown on the green section of the diagram). This expenditure in the complainant's brand will continue to enhance and increase the goodwill attached to the Mark.
Such investment in the complainant's brand and the Mark in particular results in the acquisition of goodwill in the Mark which is protected as an unregistered trade mark in England and Wales by the law of passing-off, and in other territories by similar causes of action.
The domain name www.englishheritage.co.uk ("the Domain Name") is identical to the Mark in which the complainant has established both registered and unregistered rights, both in the UK and Europe. As a result, the registration of the Domain Name by the respondent is an abusive registration because it has been registered in such a way that is unfairly detrimental to the complainant's rights.
Furthermore, the registration of the Domain Name constitutes a blocking registration against the Mark in which the complainant has demonstrated it has rights. This is because the registration by the respondent prevents the complainant from registering the Mark as a .co.uk ccTLD. According to the nominet.uk WHOIS database, the Domain Name was registered on 26 June 1998 and was last renewed on 5 June 2004; the current registration expires on 26 June 2006.
The registration is owned by ALLIANCE OF ENFIELD but no further contact details are provided. A copy of the WHOIS query result is at Annex 5.
The registration of the Domain Name is abusive because it is being and has been used in a manner which takes unfair advantage of and is detrimental to the complainant's rights. In particular:-
(A) Because the respondent's Domain Name and the complainant's Mark are identical, on-line users have been and will continue to be confused into believing the Domain Name is registered to, owned, operated or authorised by, or otherwise connected to the respondent when this is not the case.
(B) The respondent's registration of the Domain Name is an attempt to unfairly take advantage of the complainant's rights (both registered and unregistered) in the Mark with the effect of creating an unfair detriment to the complainant's rights.
(C) The likelihood of confusion by on-line users of the respondent's website and the complainant is unavoidable due to the fact that the Domain Name is identical to the complainant's Mark.
(D) At Annex 6 are a selection of screen grabs, each individually numbered. SG 1 is the complainant's current official website (www.english-heritage.org.uk). SG 2 is of the website operated by the respondent which framed the complainant's official site so as to give the appearance that the site is the complainant's official site. The complainant only discovered the respondent's website on or around 15 May 2004 and believes that the respondent's site had been framing the complainant's official site for a number of weeks before this time. SG 3 is a more recent version of the respondent's website (displayed since on or around 15 June 2004) which no longer frames the complainant's site but provides a selection of links to other sites (these links do not work – if clicked on the user remains on this page); whilst the complainant's site is not framed there still appears a pop-up advert for the complainant (shown using the FESTIVAL OF HISTORY advert) which, if clicked on, takes the user to the complainant's official site. The complainant has no link or association whatsoever with ROAR – the title on this page. On the bottom of each of SG 2 and 3 the respondent states that the Domain Name is for sale and provides a link through "to make an offer". SG 4 is the page that users are taken to if they wish to make an offer to buy the Domain Name – the Domain Name is for sale from Fabulous.com, which refers to itself at www.fabulous.com as an ICANN accredited registrar. Because the respondent is offering the Domain Name for sale it is offering it to the world at large but, in reality, it is only really being offered to those for whom it is relevant; in this case, given the rights in the Mark that the complainant has shown above, this can only be the complainant. Fabulous.com provides a service for registering domain names and, therefore, the respondent's connection with it clearly shows that this is an abusive registration intended to exploit the one organisation that has rights in the Mark; the complainant.
(E) The Domain Name has, until very recently (and as shown above), been used to frame the complainant's official site and such use has caused confusion amongst the public. In particular, users who accessed the Domain Name and had the framed site on-screen saw all of the navigation tools from the official site but were not able to load any of the data from the complainant's official site; this was because the framed site was not connected to the complainant's mainframe server. The complainant received a number of complaints from members of the public who could not access or navigate around the complainant's site. It was on receiving these complaints that the complainant discovered (on or about 15 May 2004) the existence of the respondent's site and that all of the complaints received were in fact related to the public's inability to navigate its way around the respondent's site. Having discovered why the public were making these complaints to the complainant it was noted that approximately seven complaints it received in the following week were because of the respondent's site. The complainant continued to receive similar complaints until the respondent's website stopped framing the complainant's official site. Framing the complainant's official site at the Domain Name has caused damage to the complainant's reputation because members of the public have associated it with the complainant and this has damaged the complainant's goodwill, reputation and the Mark as a result. As a Government sponsored organisation the complainant's goodwill and reputation is vital to all of its activities and its role generally as an adviser to the British Government; the complainant must, therefore, insist that such harmful and damaging associations be prevented. The complainant believes that many more members of the public may have wanted to complain or contact the complainant but could not do so because they would not have been able to find out the complainant's contact details from the respondent's website.
(F) The respondent's website (as shown in SG 3) now provides a series of links. The only link that works on this page is through the pop-up advert for the complainant's official site. The public are still likely, therefore, to believe that the Domain Name is owned, operated or authorised by the complainant or is somehow otherwise connected with the complainant. Any such association made by the public is and continues to be damaging to the reputation and goodwill of the complainant and the rights it has demonstrated in the Mark. The damage caused to the complainant is the association made by the public with the respondent and a website which is inferior to the complainant's official site. The respondent is willingly creating confusion amongst the public in an attempt to gain an unfair advantage by using the complainant's Mark in which the respondent has no rights and no interest other than exploiting the goodwill of the complainant.
(G) Furthermore, not only does the respondent's website provide the pop-up link to the complainant's official site it also automatically opens up the complainant's official site. This causes further confusion amongst the public to the extent that they will continue to associate the respondent with the complainant when in fact there is no relationship between the two at all. This association made the by public has and will continue to damage the complainant's goodwill and infringe the complainant's rights in the Mark.
(H) Also, when closing the respondent's website a pop-up for another site appears; www.guardiancredit.co.uk – SG 5 shows the pop-up site. The respondent is using the complainant's rights to attract advertisers to use the respondent's site. Moreover, the public will, and are likely to, make further harmful associations with the complainant because of the use of pop-up advertising.”

Respondent:


The Respondent has not filed a Response.


7. Discussion and Findings:


Requirements which must be satisfied in order for the Complaint to succeed

Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it 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 as defined in Paragraph 1 of the Policy.
These matters must be affirmatively proven by the Complainant, notwithstanding the failure by the Respondent to file a Response. The effect of the Respondent’s default, under paragraph 15(c) of the Procedure, (there being no exceptional circumstances in this case) is that I may draw such inferences from the Respondent’s non-compliance as I consider appropriate.
Complainant’s Rights

I must decide whether the Complainant has ‘Rights’ in respect of a name or mark which is identical or similar to the Domain Name.  The definition of ‘Rights’ in the Policy “includes, but is not limited to, rights enforceable under English law.”
The Local Authorities (Goods and Services) (Public Bodies) (English Heritage) Order 1997 (SI 1997 No. 1835) was laid before Parliament on 28th July 1997 – almost a year before the Respondent registered the Domain Name. The notes to that statutory instrument recite that the Complainant is “commonly known as English Heritage”. The cited trade mark registrations which I have referred to above all pre-date the initial registration of the Domain Name. The voluminous financial and legislative materials before me demonstrate that the Complainant has been conspicuously active in England for a long time and on an extensive scale under the name ‘English Heritage’. I am amply satisfied on the balance of probabilities that the Complainant owns Rights in the designation ENGLISH HERITAGE, both now and at the date of initial registration of the Domain Name. Indeed, I regard it as likely that the Respondent selected the Domain Name in full knowledge of the Complainant’s Rights.
I am also satisfied that this designation is identical to the Domain Name (ignoring, as I am required to do, the first and second level suffixes).

Abusive Registration

Paragraph 1 of the Policy 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.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3(a) of the Policy. A non-exhaustive list of countervailing factors are set out in Paragraph 4(a) of the Policy.
While the Complaint makes passing reference to blocking registrations (the province of paragraph 3(a)(i)(B) of the Policy), the principal thrust of the Complainant’s case is based upon paragraph 3(a)(ii) of the Policy. Under that paragraph, it is indicative of Abusive Registration if 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.
The Complainant contends that it “received a number of complaints from members of the public who could not access or navigate around the complainant's site. It was on receiving these complaints that the complainant discovered (on or about 15 May 2004) the existence of the respondent's site and that all of the complaints received were in fact related to the public's inability to navigate its way around the respondent's site. Having discovered why the public were making these complaints to the complainant it was noted that approximately seven complaints it received in the following week were because of the respondent's site. The complainant continued to receive similar complaints until the respondent's website stopped framing the complainant's official site.” Those contentions must be regarded as unchallenged. This evidence suggests that members of the public are liable to assume that the Domain Name is owned or controlled by the Complainant; and have laboured under that misapprehension to the point of raising objections with the Complainant itself.
The Complainant “believes that many more members of the public may have wanted to complain or contact the complainant but could not do so because they would not have been able to find out the complainant's contact details from the respondent's website.” I regard this as likely and, by extrapolation, I would be concerned about the potential for important and/or sensitive electronic mail messages intended for the Complainant to go astray. The Respondent may well know more about the full extent to which such misdirection is occurring, and has not helped itself by failing to respond to the Complaint.
However, even in the absence of a response from the Respondent, I am not sure whether I would go so far as to conclude, as the Complainant has invited me to do, that the Respondent “is willingly creating confusion amongst the public in an attempt to gain an unfair advantage by using the complainant's Mark”. But it is not necessary under the Policy for the Complainant to prove an intention to deceive on the part of the Respondent. For present purposes it is sufficient that the Complainant has satisfied me that the Domain Name has been used in a manner which has confused people into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
On the basis of the strong prima facie association between the Complainant and the Domain Name, and the evidence of confusion adduced by the Complainant; my overall assessment on the balance of probabilities is that the Complainant has successfully discharged the burden of proving that the Domain Name (i) was registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights and/or (ii) has been used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights. I consider that the Respondent registered the Domain Name in a manner which took unfair advantage of the Complainant’s Rights and that the Domain Name has been used in a manner which is unfairly detrimental to the Complainant’s Rights.
Accordingly I conclude that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8. Decision:
Having concluded that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, I determine that the Domain Name, englishheritage.co.uk, should be transferred to the Complainant.

 

______________________                                           
Philip Roberts                                                                              Date August 26th, 2004

 


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URL: http://www.bailii.org/uk/cases/DRS/2004/1879.html