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 Β£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!
 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Headline Filters Ltd v Janes [2008] DRS 05276 (22 January 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5276.html Cite as: [2008] DRS 05276, [2008] DRS 5276 |
||
[New search] [Printable RTF version] [Help]
Complainant : Headline Filters Limited
Country : GB
Respondent : Mr David Janes
Country : GB
headlinefilters.co.uk
3.1. On 26th November 2007 the Complaint was lodged with Nominet in accordance with the Nominet UK Dispute Resolution Service Policy ("the Policy"). Hard copies of the Complaint and its attachments were received in full by Nominet on 27th November 2007.
3.2. On 28th November 2007 Nominet validated the Complaint. On the following day it sent a copy of the Complaint to the Respondent, and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service ("the Procedure") had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.
3.3. Nominet sent the Complaint to the Respondent's postal contact details given in the Complaint, which differed from those in Nominet's records. A copy was also sent by email to [email protected]. It appears, however, that no copy was sent to the postal contact details in Nominet's records, through oversight.
3.4. No response was received from the Respondent. On 3rd January 2008 the Complainant sent a non-standard submission to Nominet, explaining that its further submission was being sent, as the Respondent had started to withdraw evidence as a result of the Complaint, and a previous "letter before action".
3.5. On 4th January 2008 the Complainant paid the relevant fee to Nominet in order for the matter to be referred to an independent Expert for a Decision. On 7th January 2008 Bob Elliott was selected and duly appointed as Expert.
4.1. In exercising his discretion under paragraph 13.b of the Procedure, the Expert requested sight of the non-standard submission from the Complainant of 3rd January 2008 (see paragraph 3.4 above). This turned out to be a further copy of the Complaint, but with a couple of additional attachments.
4.2. In addition, in view of Nominet having omitted to send the Complaint to the postal contact details in its own records, at the Expert's request, a further copy of the Complaint was sent to that address on 15th January 2008, with an invitation to the Respondent to submit any non-standard submission in response within 5 working days. An email was received by Nominet from "David" (presumably the Respondent) on the same day. The email address used by "David" was [email protected].
5.1. The Complainant is a UK registered company. It appears according to Companies House records to have been formed in 1986, and to have had its current name since then. However, the Complaint contains no details in relation to the Complainant's business, except that it owns two UK trade mark registrations HEADLINE FILTERS and HEADLINE, in classes 7 and 9, in respect of air filters, gas filters and related goods.
5.2. The Respondent is said by the Complainant to have been someone who worked for it until June 2002. Following his departure he registered the Domain Name on 28th August 2002. The Complainant says that he joined its competitor Classic Filters at that time.
5.3. The Complainant also says that the Respondent (and Classic Filters) have been using the trade mark HEADLINE FILTERS to promote his/their business by directing users of the internet to his/their website www.classicfilters.com.
5.4. The Complainant does not, however, provide any evidence of how the Domain Name has itself been used by the Respondent. Instead, the Complaint annexes the results of recent Google searches on "headlinefilters.co.uk", which indirectly come up with the Classic Filters website at www.classicfilters.com, through the use of "www.headlinefilters.co.uk" as a meta tag ("www.headlinefilters.com" is also used in the same way that domain name is owned by the Complainant). The Complainant also annexes a copy of a page from the www.classicfilters.com website, which refers to "Direct replacements for Headline Filters ", and a source page for the www.classicfilters.com website, which shows "Headline Filters", "www.headlinefilters.com" and "www.headlinefilters.co.uk" as meta tags for that site.
5.5. The Complainant's non-standard submission of 3rd January 2008 attaches an undated revised source page, but the same meta tags are still shown as in use. The page from the website itself, however, no longer includes the reference to "Headline Filters".
5.6. The only evidence which the Expert has as to the current use of the Domain Name itself is provided by Nominet, which shows that as at 28th November 2007 the Domain Name was pointed to a holding page on which the only text was "holding page for www.headlinefilters.co.uk". As at the date of this decision, that remains the case.
5.7. The Complainant's non-standard submission of 3rd January 2008 also attaches an unsigned copy of a letter dated 15th October 2007 from Loven & Co, trade mark agents, to the Managing Director of Classic Filters Limited. However, no explanation of this letter has been provided, and it is clearly marked "Draft only". Therefore, the Expert proposes to disregard it for the purposes of his decision.
Complainants' Submissions
Rights
6.1. The Complainant relies upon its registered trade marks. It says the Domain Name is identical or similar to a name or mark in which it has rights.
Abusive Registration
6.2. Since the Respondent is in the same line of business as the Complainant, the Complainant says that the Respondent's registration and use of the Domain Name in order to direct online customers to the Respondent's Classic Filters website amounts to "the illegitimate hijacking of our registered trade mark". The Complainant also says that the home page on the Classic Filters website, by referring to Headline Filters "gives the impression that the Complainant and Classic Filters are connected in some way".
6.3. The registration of the Domain Name by the Respondent two months after leaving the Complainant and having joined the Complainant's competitor Classic Filters, has prevented the Complainant from obtaining the Domain Name.
6.4. The Complainant asserts that it will take action through the courts to protect against abusing its trade mark rights, although at the same time it confirms that no legal proceedings have been issued or terminated in connection with the Domain Name.
6.5. The Complainant seeks the transfer of the Domain Name to itself.
Respondent's Submissions
6.6. The Respondent's non-standard submission of 15th January 2008 is as follows:
6.7. "The domain www.headlinefilters.co.uk is nothing to do with Classic Filters Ltd. The domain has been registered privately by David Janes as a speculative investment, not as an abusive registration. The www.headlinefilteres.co.uk (sic) domain has not been used to promote Classic Filters Ltd."
General
7.1. In order to succeed in these proceedings, paragraph 2.b of the Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2.a are present 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.
Complainant's Rights
7.2. Although the Complainant has provided no evidence as to its own business, it has provided confirmation of its ownership of the UK registered trade mark, HEADLINE FILTERS. On the basis of that registration, the Expert is satisfied that the Complainant has established that it has Rights in the mark HEADLINE FILTERS which is identical to the Domain Name.
Abusive Registration
7.3. The Complainant also has to show that the Domain Name is an 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.
7.4. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3.a. of the Policy. Those include, under paragraph 3.a.i.B: "circumstances indicating the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights" and paragraph 3.a.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".
7.5. The Complainant in its Complaint has concentrated primarily on showing that its name has been misused by Classic Filters (causing confusion) through meta tags used in respect of the www.classicfilters.com website, namely "Headline Filters", "www.headlinefilters.com" and "www.headlinefilters.co.uk". The Complainant has also provided one instance from the text of the website itself referring to "Headline Filters". The Expert is not aware that there has been any use by the Respondent of the Domain Name as such, for the purposes of causing confusion. There is no necessary connection between any of the uses identified by Complainant, and the Respondent. Although the Expert is prepared to accept that the Respondent is employed by or otherwise connected with Classic Filters, the uses made of the website addresses as meta tags do not necessarily imply any involvement of the Respondent himself (although that can perhaps be inferred). There is no need for the Respondent to have authorised such use, as the Domain Name itself is not being used to divert traffic. That is demonstrated, inter alia, by the use by Classic Filters of the Complainant's own website address (www.headlinefilters.com) in the meta tags. That is not "use" of the Complainant's own domain name as a domain name (or internet address). In the same way, the Expert does not regard the evidence which the Complainant has put forward as being evidence that the Domain Name itself has been used in such a way as to fall within paragraph 3.a.ii of the Policy, that is, so as to suggest a confusing connection.
7.6. However, there remains the argument that the acquisition of the Domain Name by the Respondent was primarily as a blocking registration against a mark in which the Complainant has Rights. In this respect, the Complainant's evidence (which is uncontested) is that the Respondent previously used to work for it, went to work for one of its competitors, and two months after leaving its employment, registered the Domain Name, in circumstances where the Respondent clearly must have had the Complainant in mind. The Respondent's non-standard submission of 15th January 2008 says that the Domain Name was registered as a "speculative investment". Although the evidence in this respect is thin, the Expert regards it as being sufficient to establish that the Respondent's motives in registering the Domain Name were clearly unlikely to have been favourable to the Complainant, and at the very least, the Respondent will have known that, by registering the Domain Name, he was depriving the Complainant of the use of the same for its business. It may well be that the Respondent also had other uses in mind. However, the Expert does not need to speculate further, as he considers that the Complainant has done sufficient in this respect to make out its case on the balance of probabilities, in respect of the acquisition by the Respondent of the Domain Name for the purposes of blocking the Complainant from doing so itself, under paragraph 3.a.i.B of the Policy.
7.7. The Expert therefore finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration within the meaning of the Policy.
8.1. The Expert finds that the Complainant has rights in the mark HEADLINE FILTERS which is identical to the Domain Name. The Expert further finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
8.2. The Expert therefore decides that the Domain Name should be transferred to the Complainant.
..
Bob Elliott22nd January 2008
