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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> West v Barrett [2009] DRS 6711 (27 March 2009) URL: http://www.bailii.org/uk/cases/DRS/2009/6711.html Cite as: [2009] DRS 6711 |
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DISPUTE RESOLUTION SERVICE
DRS 06711
Decision of Independent Expert
David West
- and -
Jason Barrett
Complainant: David West
Country: UK
Respondent: Jason Barrett
Country: UK
hey-u.co.uk
The Complaint was received by Nominet on 9 January 2009. Nominet validated the Complaint and sent a copy to the Respondent.
No Response was received by Nominet.
On 12 February 2009 the Complainant paid Nominet the required fee for a full decision of an Expert pursuant to the Nominet UK Dispute Resolution Service Policy ("the Policy").
Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and duly appointed the undersigned as the Expert with effect from 25 February 2009.
On 6 March 2009, at the Expert's request, Nominet sent both parties some requests for further evidence pursuant to paragraph 13a of the Dispute Resolution Service Procedure. After an agreed time extension, the Complainant filed the additional evidence requested on 18 March 2009. The Respondent submitted no response.
On 19 March 2009, at the Expert's request, Nominet notified the Respondent that he had until 24 March 2009 to file any response to the Complainant's additional evidence. The Respondent responded on 24 March 2009 indicating that he did not contest the transfer of the Domain Name to the Complainant.
The Nominet records show that the Domain Name was registered on 19 September 2008.
Based on the Complainant's submissions (see section 5 below) and a review of the materials annexed to the Complaint and provided in response to the Expert's paragraph 13a requests, set out below are the main facts which I have accepted as being true in reaching a decision in this case:
(1) The Complainant owns a club called Hey Jo, which has an active website.
(2) The Respondent registered the Domain Name on behalf of the Complainant.
(3) The Complainant paid for the Respondent's services, including for registration of the Domain Name.
(4) When requested to do so, the Respondent did not provide to the Complainant the information which was needed to allow ownership and control of the Domain Name to be transferred to the Complainant.
Complainant:
The Complainant's submissions can be summarised as follows:
1. The Complainant has rights in trade marks/names which are identical or similar to the Domain Name:
(1) The Complainant owns a club called Hey Jo. This has a website at www.heyjoclub.co.uk.
(2) The club and the story behind it have been featured in the BBC series "Trouble at the Top".
(3) In discussions between the Complainant and the Respondent (see further below), the Complainant suggested "Heyu" as the name for the planned website.
2. The Domain Name is an Abusive Registration in the hands of the Respondent:
(1) The Respondent contacted the Complainant via Facebook in July 2008 and requested an appointment. The Complainant agreed and during a meeting which followed the Respondent proposed building a social networking website for the Complainant. The Complainant agreed, and it was verbally agreed between the parties that the Complainant would pay the Respondent £50 per hour for his work as a webmaster plus all related costs such as for the acquisition of domain names.
(2) On 4 September 2008, the Complainant suggested the name "Heyu" in an email to the Respondent. On 16 September the Complainant confirmed that the Domain Name was available and this was agreed.
(3) The Respondent registered the Domain Name in his own name, even though it was for the Complainant. In spite of several requests on the Complainant's behalf, the Respondent failed to provide the information needed for the Complainant to be able to take over ownership and control of the Domain Name.
(4) The Complainant paid the Respondent's invoices, including one dated 14 October 2008 which covered (amongst other items) the acquisition of the Domain Name. (Copies of the invoice and of the Complainant's relevant cheque stub were provided by the Complainant in response to the Expert's paragraph 13a requests.)
(5) Progress on the proposed website was very slow. The Respondent did not build a site for www.hey-u.co.uk as had been agreed. Instead he went to www.ning.com, created a basic website at www.heyjoclub.ning.com , using ning.com's template, and pointed www.hey-u.co.uk to that website.
(6) As a result the Complainant became dissatisfied and asked the Respondent not to do any more work for him and, again, to provide the information which he needed in order to take over ownership and control of the Domain Name- which the Respondent did not do.
Respondent:
No Response was filed by the Respondent. The only relevant communication from the Respondent has been his communication on 24 March 2009 (see under section 3 above).
General
Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
i it 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 (as defined in paragraph 1 of the Policy).
Complainant's Rights
In light of the factual findings set out in section 4 above, I conclude that the Complainant has Rights in the nature of legally protectable goodwill in the name of his club, Hey Jo. I narrowly make this finding on the balance of probabilities, although I would comment that the evidence submitted by the Complainant in this regard was less thorough than one would ideally expect in order to make a more categoric finding. Disregarding the generic .co.uk suffix, the Domain Name is similar to the Hey Jo name.
I therefore find that the first limb of paragraph 2 of the Policy is satisfied.
Abusive Registration
Paragraph 1 of the Policy defines an "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 has taken unfair advantage of or has been unfairly detrimental to the Complainant's Rights."
Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. The factor under paragraph 3a which is relevant to this case is 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."
Based on the factual findings set out in section 4 above, this case arguably falls literally within the scope of the factor under paragraph 3av above. Sub-paragraph B is satisfied because the Complainant paid the Respondent for the registration of the Domain Name. Although the Respondent's relevant invoice for £2,450 lists the "Domain acquisition" as being for "No charge", this part of the invoice is headed "Discounts" and it is clear that, by paying the invoice, the Complainant was indirectly paying for the registration. The fact that the Respondent structured his invoice in such a way that the registration fee was wrapped in with his other fees for consultancy work does not mean that the Complainant did not in effect pay for the registration of the Domain Name.
As for sub-paragraph A, arguably the Complainant has been using the Domain Name exclusively even though the Respondent did not provide the Complainant with the means to do so directly (because of the Respondent's failure to provide the information which the Complainant needed to take practical control of the Domain Name). The relationship between the parties was clearly such that the Respondent was using the Domain Name on the Complainant's behalf. On balance, I find that sub-paragraph A is therefore satisfied. However, even if this was not the case, the factors under paragraph 3a of the Policy are expressly non-exhaustive and the facts of this case clearly fall within the spirit of the factor under paragraph 3av.
In light of the above, I am satisfied that the Domain Name is an Abusive Registration under both sub-paragraphs of paragraph 1 of the Policy (as set out above). The Respondent should properly have registered the Domain Name in the Complainant's name and his failure to do so was unfairly detrimental to the Complainant's Rights. Even if that were not a correct analysis, the Respondent's subsequent failure to provide the information which the Complainant needed in order to take over ownership and control of the Domain Name amounts to use of the Domain Name which has been unfairly detrimental to the Complainant's Rights.
Having found that the Complainant has rights in respect a name or mark which is similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration, the Expert directs that the Domain Name hey-u.co.uk be transferred to the Complainant.
Jason Rawkins 27 March 2009
