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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Mockstar Ltd v Coupe [2009] DRS 6538 (3 February 2009) URL: http://www.bailii.org/uk/cases/DRS/2009/6538.html Cite as: [2009] DRS 6538 |
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Complainant: Mockstar Limited
Country: GB
Respondent: Richard Coupe
Country: GB
glastonbudget.co.uk ("the Domain Name")
The Complaint, Response and Reply were filed on 18 November 2008, 15 December 2008 and 23 December 2008 respectively.
On 27 January 2008 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.
The Domain Name was registered on 11 August 2004 in the name of the Respondent.
The Complainant company was incorporated on 29 March 2005.
The Complainant organises the Glastonbudget Festival, a music festival devoted to tribute bands which has been held annually in Wymeswold, Leicestershire since 2005.
On 27 December 2006 an application was made for a UK trade mark for the words GLASTONBUDGET FESTIVAL in the name of Eric Weston. The trade mark was registered on 22 June 2007 (No. 244314) and was assigned to the Respondent on 24 January 2008.
On or about 20 September 2008, there was a website at the Domain Name operated by the Respondent which claimed that it was the official festival website and warned users not to buy tickets from any other websites. The Respondent was described on the site as "W Richard Coupe Founder".
Complaint
Mr Nick Tanner initially had sole control of and liability for the business. The activities and assets of the business were gradually transferred into the Complainant by Mr Tanner over the months following incorporation. The Respondent was merely an administrator.
The purpose of establishing the Complainant was to hold the Glastonbudget Festival which since its launch has become one of the best-known tribute and new music festivals in Europe. Since its inception, the festival has developed a distinctive brand and a considerable amount of goodwill, particularly among open-air music revelers, supporters of tribute bands and tribute bands themselves. The reputation of the Complainant as an events promoter under the name 'Glastonbudget' has also increased significantly, which has created further goodwill in the name.
The festival is now regarded as one of the most important dates in the East Midlands music calendar. This demonstrates that, through the hard work of Mockstar over a number of years, a substantial amount of goodwill has developed in the 'Glastonbudget' name.
The Respondent was instructed to register the Domain Name. The Complainant paid for the registration of the Domain Name and renewals.
The payment arrangements for the Domain Name demonstrate that the upkeep and administration of the Domain Name was the responsibility of the Complainant. This reflects the fact that the intention of the Respondent was to register the Domain Name on behalf of the Complainant, and shows that the rights in the name should be treated as belonging to the Complainant.
The level of traffic to the website shows that the Complainant has built up a significant amount of goodwill in the reputation of the festival and of the website. The Complainant has the right to protect that goodwill.
In 2006 the festival came to the attention of Glastonbury Festivals Limited ("GLF"), the operator of the well-known 'Glastonbury festival'. Following some correspondence, GLF granted an informal licence to the Complainant to continue using the name. A good working relationship between GFL and the Complainant ensued and this has created a substantial amount of further goodwill in the Complainant's 'Glastonbudget' name.
The letter from the Respondent's solicitors dated 14 October 2008 confirms that the Respondent himself concedes that the rights in the Domain Name belong to the Complainant, and that he has undertaken to change the registrant details into the name of the Complainant. Despite the representations made in the letter, this has not happened.
The Complainant asserts the right to protect both the substantial goodwill it has built up in its trading name 'Glastonbudget Festival' over a number of years and also to protect beneficial ownership of the Domain Name (which the Respondent registered at the Complainant's request and on the Complainant's behalf) as well as the right to request that the Domain Name be registered in the Complainant's name.
Given the Respondent's decision to leave the Complainant, his trade mark registration appeared to be malicious. When the trade mark was assigned to the Respondent, the Complainant had been incorporated and had been organising and investing in the festival for almost 3 years. The Respondent has never used the trade mark. The Complainant's use of the name 'Glastonbudget Festival' in no way infringes the trade mark as the trade mark as it was registered after the Complainant had begun building up goodwill in the name. On the contrary, the Complainant would be entitled to take steps to protect the goodwill should the Respondent ever seek to use the trade mark.
At a meeting on 13 September 2008, the Respondent demanded, inter alia, that Mr Tanner buy him out or franchise the name "Glastonbudget" from him. The Respondent also heavily criticised the way Mr Tanner had run the Complainant and the festival.
The website the Respondent is operating infringes the Complainant's unregistered trade mark in the name 'Glastonbudget'.
In taking control of the Domain Name the Respondent was misleading the public into believing that he operated the Festival. Aware that the Complainant was then forced to trade through, among others, the domain www.glastonbudget.net, the Respondent explicitly stated "Glastonbudget.co.uk is the only website you can trust. Do not buy any tickets from any other website other than glastonbudget.co.uk". This was extremely damaging to the goodwill and brand that the Complainant had generated.
In claiming to be the official Glastonbudget website, and warning people of "rogue websites" and "Immintations [sic]", the Respondent was unlawfully denouncing the replacement site put in place by the Complainant after he took control of the Domain Name as unauthorised by the Complainant.
In describing himself as a founder of Glastonbudget (which he is not), he not only diminished the reputation of the actual founder, Mr Tanner, implying that Mr Tanner did not found the Complainant or that he did so in co-operation with the Respondent, but he implied again that the Complainant has sanctioned or is affiliated with his site, which further diminished the Complainant's reputation and goodwill.
Customers and suppliers have approached the Complainant to express their confusion at the Respondent's website.
Following correspondence from the Respondent's solicitors, the Respondent has passed control of the Domain Name to the Complainant (by diverting the traffic from the .co.uk site back to the Complainant's site), although the Complainant remains concerned that this may be reversed by the Respondent at any time.
The change in registration details for the Domain Name has not been effected by the Respondent, despite his admissions and undertakings.
The Respondent is using the Domain Name in a way that is likely to confuse (and has already confused) people and businesses into believing that the Domain Name is registered to and operated by the Complainant, trading as Glastonbudget Festival, making the registration abusive under section 3(a)(ii).
Further, the Respondent registered the Domain Name as a result of a relationship (now terminated) between himself and the Complainant, and subsequent to that registration, the Complainant has operated the Domain Name exclusively and has paid for the renewal of the registration, making the Respondent's registration abusive under section 3(a)(v).
The Respondent has used and is continuing to use the Domain Name in a manner that takes unfair advantage of and is unfairly detrimental to the goodwill the Complainant has built up in the "Glastonbudget" name.
The Respondent has himself acknowledged that the Domain Name should be transferred to the Complainant and has undertaken to do this and to change the registrant details in the Complainant's favour but he has not done so.
Response
The complaint is highly misleading.
The Respondent was far more than an "administrator". He came up with the idea for the business and invited Mr Tanner to join him as a partner. Both were described as "event organisers" in the 2005 and 2006 brochures. The Respondent had a judgment against him personally arising from liabilities incurred in relation to the first festival.
The Respondent has a legal and fully enforceable claim to 50% of the Complainant. The Complainant is trying to prise his rights away.
The failure to tell the Respondent about incorporation of the Complainant shows that the attempted unlawful taking of his intellectual property has been premeditated from the outset.
Mr Tanner started using "GB" to refer to "Glastonbudget". The purpose of this was to undermine the Respondent's trade mark.
The Respondent registered the trade mark to reinforce his intellectual property. He informed Mr Tanner about this. After the trade mark was registered the Complainant ignored his requests to add the "R" symbol to its website and printed material.
The Respondent intends to enforce his trade mark, which is his right. The trade mark covers category 41 which includes databases on the internet.
The Respondent paid for registration and renewals of the Domain Name apart from the most recent renewal in 2008 which was paid for by the Complainant without the consent of the Respondent.
The Respondent passed control of the website to Chris Dunn and the Complainant for a brief period of time not by way of any admission of guilt but to try and restore a working relationship. This was not forthcoming and only gave the Complainant some misplaced confidence to attack the Respondent further with threats and demands from the Complainant's solicitor. The Respondent had no choice other than to defend his position.
The Respondent did not resign from the Complainant at the meeting on 13 September 2008. He suggested that the Complainant buy him out or "franchise" the right to use the name. In response the Complainant merely registered some other domain names and at that point the Respondent decided to take control of his website.
The Respondent was given a letter of undertaking to sign. He asked for more time to look at it and seek advice as seven days was not long enough. He was told that the Complainant would proceed anyway. A couple of months is normal for a response time for trade mark infringement cases. Not only was the Respondent put under a huge amount of time pressure but the first letter from the Complainant's solicitors included many threats. This makes a very strong case for duress and the undertaking is therefore completely void.
The Respondent lawfully owns the trade mark "Glastonbudget Festival" and also the Domain Name. As the relationship has broken down, the Respondent intends to continue trading under the "Glastonbudget" name and will sue for any infringement of his registered trade mark. The Complainant claims to have unregistered rights but it has no trade mark as it been trading for a shorter period than five years and has never used "TM" on any materials produced by the Complainant.
If the Complainant had a case it should surely take him to court in relation to his trade mark registration.
Reply
It is true that the Respondent was involved in the Festival from its inception until he left the business of his own volition in September 2008. The Respondent did have an administrative role, and was one of the numerous 'organisers', as he is credited in a festival programme.
The Respondent alleges that the Complainant is 'trying to prise his rights away from him'. This is untrue. The Respondent does not have any rights in the company. His role in the Complainant is reflected by the fact that he never became a director or shareholder.
The Respondent's claim that the Complainant was incorporated without his knowledge is untrue. The Respondent was fully aware of the transfer of the business of running the Festival to the Complainant. He states himself that he 'assumed' he was one of the directors of the company, which is a clear admission of his knowledge of the process.
For over 3 years, the Respondent continued to work on the festival after control of it was transferred into the Complainant. In this time, the Respondent was never made a director or a shareholder. If the Respondent really was unhappy with the transfer of the business to the Complainant, he would have objected but he did not.
The Respondent claims that he has a "fully enforceable claim to 50% of the Complainant. Presumably the Respondent wishes to convey that 'he was there at the start' and that the Festival 'was his idea too'. There is no legally recognised 'ownership' in this type of involvement, whether in intellectual property law or otherwise.
The first Festival took place following the incorporation of the Complainant. The business of running the festival has remained in the hands of the Complainant since this time, without any objection from the Respondent, but rather with his continued participation and support. The ownership of the festival and of the "Glastonbudget" name rests with the Company, which successfully organised it over a number of years. Contracts with artists have always been with the Company. The company is liable for the debts incurred in the course of putting on the festival. The arrangement for the venue has always been between the company and the festival.
The Respondent acquiesced in the Complainant's use and control of the name for over 3 years, until 13 September 2008, when the Respondent had an acrimonious disagreement with the Complainant, and decided to leave. At this point, it seems the Respondent wished to 'get his own back' on the company by exploiting the fact that the Domain Name was initially registered in his name.
The registration and assignment of the trade mark both post-date the goodwill built up in the 'Glastonbudget' name by the Complainant. The trade mark is therefore irrelevant for the purposes of ascertaining whether the registration of the Domain Name was abusive.
The registration of a later trade mark cannot be used to prevent a business from using the name when it has done so prior to the registration of the mark and in fact the Complainant intends to challenge the validity of the trade mark.
The manner in which the trade mark was acquired and kept secret, and the timing of its announcement, demonstrate the abusive nature of the Respondent's behaviour in relation to the Complainant. The Respondent stating that he wishes the Complainant to pay him 'a fee' for 'the use of his intellectual property' is another example of the Respondent attempting to hold the company to ransom.
The Respondent writes that he passed control of the Domain Name to the Complainant to 'restore a working relationship'. This is untrue. He did so following correspondence with the Complainant's solicitors.
The Respondent's allegation that he was coerced into signing the undertaking, and that it is therefore void, are not credible. The Respondent took independent legal advice on the issue, and requested time to consider the proposed undertakings. The Respondent then sought advice from a respected firm of solicitors. Following that advice, the Respondent signed and returned the undertaking.
The Respondent's grievances are focused on the Company's constitution and his rights in relation to the Company. He is attempting to use the Nominet complaint to resolve unrelated issues and disputes which should be resolved in a separate legal forum. The Respondent's complaints about his own lack of involvement in the Company should have been raised earlier, and can now only be resolved by company law.
General
To succeed, the Complainant has to prove in accordance with paragraph 2 of the DRS Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the DRS Policy) in respect of a name or mark identical or similar to the Domain Name and, second, that the Domain Name, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the DRS Policy).
Complainant's Rights
The Respondent says that the Complainant cannot claim unregistered rights as it has been trading for less than five years. I disagree. The Respondent's assertion may be based on the fact that the UK Trade Marks Office says that five years is the normal (not minimum) period of use required to establish acquired distinctiveness in UK trade mark applications. However, there is no equivalent guideline under the DRS.
Here, the Complainant has used the name "Glastonbudget Festival" for some four years, which in my view is not an insignificant period. The Complainant has produced unaudited accounts for the year ending 31 March 2007 showing turnover of some £118,000, which, although not massive, is not insignificant either.
The Complainant has also produced evidence of publicity in local and national media and it is not in dispute that attendance at the festival has increased from 700 in 2005 to 5000 in 2008 or that the website at the Domain Name when used by the Complainant attracted some 400-500 unique visits last year. I think it reasonable to conclude from this that the name "Glastonbudget Festival" is recognised by the purchasing public / trade as indicating services supplied by the Complainant.
In any case it is well-established under the DRS that the threshold to establish "rights" is a low one.
I am satisfied on the balance of probabilities that the Complainant has established unregistered trade mark rights in the term "Glastonbudget Festival".
The Domain Name reproduces the dominant term in the trade mark: "Glastonbudget". Apart from the domain name suffix, the Domain Name differs from the trade mark only by omission of the generic term "Festival". This is insufficient to distinguish the Domain Name from the trade mark.
I conclude that the Complainant has established rights in a name or mark which is similar to the Domain Name.
Abusive registration - introduction
Is the Domain Name an abusive registration in the hands of the Respondent? Paragraph 1 of the DRS 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
has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
Abusive registration can arise either from the manner in which the Domain Name was registered or from the way it was used thereafter. I will look first at the circumstances surrounding acquisition of the Domain Name.
Role of the Respondent at the time of acquisition of the Domain Name
The Complainant has produced a chequebook in the name of "Nick Tanner t/a Glastonbudget" as well as two insurance certificates dated April 2005 in the name of "Nick Tanner". The Complainant says that these evidence Mr Tanner's sole control and liability for the business from its inception in August 2004 and that the Respondent merely carried out some administrative work.
On the other hand, the Respondent says that he was far more than an administrator. He claims that he came up with the name and concept of "Glastonbudget" and invited Mr Tanner to join him in the venture as a partner. He says that Mr Tanner was a good choice as partner as he had relevant contacts based on his experience of running tribute nights at the Harrow Inn.
The Respondent has provided copies of programmes for the 2005 and 2006 festivals both of which include a picture of Mr Tanner and the Respondent together with a "Welcome to Glastonbudget" message signed by "Nicholas Tanner and William Coupe, Event Organisers".
The Respondent also exhibits a letter from him to a creditor who supplied services in relation to the 2005 festival. The Respondent explains in the letter that the festival did not go as well as expected, sets out the Respondent's financial position and offers payment over 36 months. There is also a judgment dated 5 August 2005 obtained by that creditor against the Respondent personally in Northampton County Court which orders the Respondent to pay some £7700 in monthly instalments of £200. The Respondent says that he is still paying this back today and that this is not the action of a person who merely undertook an administrative role.
This proceeding is not an appropriate forum to resolve the disputed question as to the role of the Respondent in the initial stages in the business. All I can say is that the Complainant has failed to satisfy me on the balance of probabilities that, at the outset, the Respondent was merely an administrator.
Registration of the Domain Name
The Complainant says that the Respondent "was instructed" to register the Domain Name on the Complainant's behalf to assist in the promotion of the first festival and that registration was in the Respondent's name as the Complainant was not an entity in its own right.
The Respondent says that the reason the Domain Name was registered in his name was to "begin my evidence for ownership of intellectual property". The Respondent claims that he was not even aware of incorporation of the Complainant until well after it happened.
Again, I cannot determine what may or may not have passed between the parties concerning the registration of the Domain Name.
What is not in dispute, however, is that the Complainant was aware of, and acquiesced in, the registration of the Domain Name in the Respondent's own name.
In my view, the Complainant has failed to establish on the balance of probabilities that there was anything abusive in the manner in which Domain Name was initially acquired.
Paragraph 3a(v) of the Policy
Registration of a domain name in the context of a relationship between the parties is specifically addressed in paragraph 3a(v) of the Policy. This is one of the non-exhaustive factors which may be evidence that a domain name is an abusive registration and provides as follows:
"v. The Domain Name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
A. has been using the Domain Name registration exclusively; and
B. paid for the registration and/or renewal of the Domain Name registration."
In my view the Domain Name could not be said to have arisen "as a result of a relationship between the Complainant and the Respondent" when the Complainant was only incorporated some seven months after registration of the Domain Name and there is no evidence that the Domain Name was registered in contemplation of the future incorporation of the Complainant.
Even if it could be said that the Domain Name was registered as a result of the relationship between the Respondent and the predecessor of the Complainant, and even if it were appropriate to extend paragraph 3a(v) to that circumstance, there is nonetheless a lack of clear evidence as to who paid for the registration and renewals of the Domain Name.
An invoice dated 13 May 2005 from Eazy Tiger Limited for £50 plus VAT covering registration of the Domain Name and glastonbudget.com was addressed to "Glaston Budget, Richard Coupe". The Complainant says that this invoice was paid by the Complainant and indeed it does appear under "misc expenses" in a set of unaudited and undated accounts which the Complainant describes as the Complainant's accounts for the year ended 31 December 2006. However, the Respondent claims that he in fact paid the invoice and observes that the Complainant has produced no receipt for payment.
Both the Complainant and the Respondent claim to have paid the renewal invoices for the Domain Name in 2006 and 2007.
The Complainant claims that it has paid for the most recent renewal of the Domain Name in 2008 and produces an e-invoice addressed to Chris Dunn of SVMC Technologies dated which states that it has been paid. The Complainant says that Mr Dunn paid for the renewal on behalf of the Complainant and that the Complainant reimbursed Mr Dunn. The Respondent claims that this invoice was paid without his permission and prior to the expiry date.
With the exception of the most recent renewal, neither party has produced any receipt or proof of payment for the registration or renewals (eg bank or credit card statement).
For these reasons, I do not consider that paragraph 3a(v) is applicable in this case.
Take over of the business by the Complainant
The Complainant was incorporated on 29 March 2005. Mr Tanner was the sole director and shareholder of the Complainant.
Although there was no formal transfer of the pre-incorporation business to the Complainant, it is not in dispute that at some point following incorporation the Complainant did in fact take over the business of running the festival. The Complainant says that this was in the first few months after incorporation and produces invoices dated April to May 2005 addressed to the Complainant relating the first festival in May 2005. In a submission filed in a previous DRS case between the parties the Respondent says that the Complainant did not take over until the 2006 festival.
It appears that the Respondent did not object to the transfer of the business to the Complainant. Indeed the website at the Domain Name continued to be used to promote the business and the Respondent allowed the Complainant to have day to day control of the website.
The Respondent suggests that he only found about incorporation of the Complainant after the event and, when he did, he assumed that he was one of the directors. He also says that at some point there was an agreement with Mr Tanner that he would be made a director but that Mr Tanner never implemented this. This is all disputed by the Complainant.
For whatever reason, the Respondent did not become a director and his exact role remains unclear. However, it is apparent that he remained very closely involved in the business until the falling out with Mr Tanner in September 2008.
Meeting on 13 September 2008
At some point a dispute arose between Mr Tanner and the Respondent which culminated in an acrimonious meeting on 13 September 2008. At that meeting, the Respondent presented Mr Tanner with various options including that Mr T buy him out or that the Respondent "franchise" (meaning license) the name 'Glastonbudget' to the Complainant.
The Complainant says that, at the time of the meeting, the Respondent decided to end his association with the Complainant.
The Respondent says he did not in fact resign from the Complainant. He says that in response to his proposals at the meeting, the Complainant registered various alternative other "glastonbudget" domain names and that "[t]his was when I took control of my website".
The Respondent's taking control of the website at the Domain Name
It is not in dispute that on or about 20 September 2008, the Respondent contacted the registrar of the Domain Name and arranged for control of the Domain Name to be switched from the Complainant to himself without the Complainant's authorisation.
The Respondent then redirected the Domain Name to his own website. The URL of that website is not given and the Complainant had not exhibited any pages from the site. However, the Respondent does not dispute the Complainant's description of that site as claiming to be the official festival website and warning users not to buy tickets from any other websites. The Respondent also described himself on the site as "W Richard Coupe Founder".
It is difficult to see this step as anything other than an attempt to unfairly disrupt the business of the Complainant and an abusive use of the Domain Name. For example, warning users not to buy tickets from other websites must have been intended to dissuade them from buying tickets from the alternative sites set up by the Complainant.
Paragraph 3a(ii) of the Policy
Paragraph 3a(ii) of the Policy is a non-exhaustive factor which may be evidence that a domain name is an abusive registration:
"ii. Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant"
The Complainant says customers and suppliers have approached the Complainant to express their confusion at the Respondent's website. The Complainant claims that one regular customer, who had already bought tickets for the 2009 festival, spoke to the Complainant's company secretary and demanded a full refund, alleging that the Complainant was in financial difficulties and had changed the website itself to allow Mr Tanner to escape liability. Another company, which provides video recording services to the Complainant, contacted Mr Dunn in alarm when the website 'changed' as the company was in the habit of directing its clients to the Domain Name to view an example of its work.
I make no finding concerning either of these incidents as the Complainant relies purely on assertions whereas claims of actual confusion ought to be backed up by supporting evidence.
However, I readily accept that the Respondent's website - describing itself as the "official" festival website and identifying the Respondent as the sole founder - is likely to have confused people or businesses into believing that the Domain Name was still being operated in connection with the Complainant's business.
The Respondent's claim to 50% ownership of the Complainant
The Respondent attempts to justify his action, inter alia, by virtue of his claiming 50% ownership of the Complainant.
I express no conclusion on the validity of this claim to part ownership of the Complainant. That is a matter which would have to be settled by a court.
However, as I have said, it is not in dispute that the Complainant has in fact operated the festival business since at least 2006 and has been permitted by the Respondent to use the website at the Domain Name for that purpose. In my view, the Respondent's claim to part ownership of the Complainant - even if legitimate - could not justify his taking control of the Domain Name without the authorisation of the Respondent and diverting traffic to the website mentioned above.
The Respondent's registered trade mark
The Respondent also invokes his registered trade mark for "Glastonbudget Festival" as a justification for his actions.
The Respondent says that, following the failure of Mr Tanner to make him a director, he realised that he needed to "reinforce" his intellectual property. He says he told Mr Tanner that he intended to register the name "Glastonbudget Festival" as a trade mark in his own name.
The Complainant insists that only at the meeting on 13 September 2008 did the Respondent inform Mr Tanner of the trade mark and that the Respondent had not been requested to make any application to register the trade mark or to have the trade mark assigned to him. The Complainant says that Respondent's trade mark application was malicious.
In any event, the Respondent apparently admits that he arranged for registration of the trade mark simply to bolster his position vis a vis Mr Tanner and/or the Complainant in the early stages of his dispute. And indeed he does use the trade mark to attack the right of the Complainant to operate the festival in the current version of his website (see below).
In my view, given the circumstances in which it was registered, the fact of the Respondent's trade mark could not justify his action in using the website at the Domain Name as outlined above.
It is notable that the Respondent since agreed to assign the trade mark to the Complainant (see below).
The letter and undertaking of 14 October 2008
On 29 September 2008, the Complainant's solicitors sent a letter before action to the Respondent requesting signature by the Respondent of an undertaking to transfer the Domain Name to the Complainant, amongst other things.
On 6 October 2008, the Respondent sent a fax stating that he would seek legal advice and promised a formal reply by 27 September 2008 (obviously a mistake).
The Complainant's solicitors replied the same day pointing out that their deadline had expired that day, that they were proceeding per their previous letter but stating that their client may reconsider its decision if it received the signed undertaking.
On 14 October 2008, the Respondent's solicitors wrote to the Complainant's solicitors. That letter claimed the Respondent commenced the business jointly with Mr Tanner as a partnership and that the business was unlawfully transferred into the Complainant following its incorporation. The letter also stated that the Respondent had an enforceable equitable interest in the Complainant as well as a claim for return of monies allegedly lent by the Respondent to the Complainant.
The Respondent's solicitors said that, without prejudice their client's position, their client had tried unsuccessfully sought to return control of the Domain Name to the Complainant and, in their letter, they requested further information in order to enable the Respondent to complete the process. They added that the Respondent had gone through the process of changing the registrant details "back" to that of the Complainant and that their client was currently awaiting email confirmation of the change. They said they would tell the Complainant's solicitors when the email was received and asked that the Complainant check the position in the meantime and confirm when the transfer was complete.
The solicitors attached to the letter an unsigned undertaking (which was an amended version of the undertaking sought by the Complainant) and said that they would forward the version signed by the Respondent in due course.
In an undertaking to the Complainant dated the same date, 14 October 2008, the Respondent agreed, amongst other things, to deliver to the Complainant all emails received or sent via the Domain Name, to assign the trade mark no. 244314 to the Complainant and not to hold himself out as employed, affiliated or connected with the Complainant or Glastonbudget Festival in any way.
The Respondent now says that he signed the undertaking under duress because he was given only seven days to respond rather than a few months which he claims is normal in trade mark cases. Also that he felt under pressure because of threats by the Complainant's solicitors.
I cannot accept this. The Respondent responded substantively through his solicitors some two weeks after the letter from the Complainant's solicitors.
The Respondent does not suggest that his solicitors' letter was written without his instructions and he clearly had the benefit of his solicitors' independent legal advice before signing the undertaking. Accordingly I do not consider that either of these documents should be disregarded.
The Respondent's subsequent actions
The Respondent did not follow through with either the registrant transfer or return of control of the website to the Complainant (apart from an unspecified period where he used the website to forward traffic to the Complainant's website).
When viewed by me on 27 January 2009 the site at the Domain Name again described itself as the official festival website. It stated that tickets would available from about 29 January 2009 and discouraged users from buying tickets elsewhere. The site claimed that the Complainant had no permission to run the festival and referred users to the Respondent's trade mark.
In my view this is clearly designed to unfairly disrupt the Complainant's business and is a further abusive use of the Domain. Even if there had been any justification for such activity (which I do not believe there was) based on any residual rights of the Respondent deriving from his early involvement in the business or from his registered trade mark, this was surely extinguished by 14 October 2008 when the Respondent's solicitors indicated that he would transfer the Domain Name to the Complainant and the Respondent agreed not in future to hold himself out as connected with the Complainant or the festival and to assign his registered trade mark to the Complainant.
Abusive registration - conclusion
For the reasons outlined above, I conclude that, while the Domain Name was not registered abusively, it has been used abusively ie in a manner which took unfair advantage of and/or was unfairly detrimental to the Complainant's Rights
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 decide that the domain name glastonbudget.co.uk should be transferred to the Complainant.
Signed: Adam Taylor Dated: 3 February 2009
