FairView New Homes Ltd -v- Brueton [2002] DRS 522 (8 November 2002)

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A complaint (“the Complaint”) was entered onto the Nominet system on 29 July 2002. It was received in full by Nominet on 30 July 2002. This was forwarded to the Respondent on 1 August 2002. A Response was received by Nominet on 19 August 2002 and forwarded to the Complainant on the same day. A Reply was received on 29 August and forwarded to the Respondent on the same day.

Informal Mediation took place but no acceptable solution was achieved and on 23 September 2002 Nominet notified the Complainant that the Complaint would be referred to an independent expert upon payment of the requisite fee. The Complainant paid the fee on 2 October 2002 for a decision of an Expert pursuant to paragraph 6 of the Policy.

On 9 October 2002 I was appointed by Nominet as an Expert to determine this dispute. I confirm that I am impartial and independent. My decision was due to be given on or before 23 October, but for the reasons set out below that deadline has been extended.

On an initial examination of the papers that were forwarded to me by Nominet, it was apparent that the Complaint had not been signed by the Complainant or on its behalf. The signature is in my view an essential part of the Complaint form as the form amongst other things incorporates a declaration by which the Complainant affirms that the information given in the Complaint is true and complete. The provision of a signature is the formal acceptance of the terms of the declaration.

In addition it was apparent that evidence had been filed by the Complainant after the formal period for doing so, although it seemed to me that the evidence was possibly of some importance to the determination of the Complaint.

Pursuant to Paragraphs 12 and 13 of the Procedure, the Expert may in exceptional cases extend any period of time in proceedings under the DRS and may also call for further statements or documents. In light of the matters set out above and the facts of this particular case, I directed that the Complainant should re-file a signed Complaint to be served by Nominet on the Respondent by 29 October 2002 together with the additional evidence referred to, and that the Respondent be at liberty to serve a response dealing solely with that evidence, by 5 November 2002. Those directions have been complied with and my decision is due by the revised date of 8 November 2002.

In addition to the above matters, I must also deal with one further procedural point. The Complaint has been filed in the name of Fairview Limited. Included in the supporting papers there is an extract from Companies House database records for company number 03514938, the company known as Fairview Limited. This company was incorporated in 1998. By a letter dated 28 August 2002 solicitors for the Complainant, Messrs Finers Stephens Innocent, wrote to Nominet and said “Please note that the complainant’s company name is “Fairview New Homes Limited” rather than “Fairview Limited”. Our apologies for the error in the DRS complaint form. Fairview New Homes Limited was previously known as Fairview New Homes Plc. Its company number is 01792776. The company has been registered and trading (under the name Fairview New Homes) since 1984. You will note that our client’s company name is identical to the domain name registered by the respondent” I have looked at Companies House database records. The company registered under number 01792776 is indeed known as Fairview New Homes Limited, and was incorporated in 1984. However the records refer to the change of name in 1984 as being from New Fairview Homes Limited. In the circumstances of this case I do not think that there is any reason why I should not accept that the correct Complainant is Fairview New Homes Limited.

The disputed Domain Name fairviewnewhomes.co.uk was registered by “Yours-to-buy” on 9 August 2000. The Respondent has confirmed that the registration was on his behalf and the registered contact address held by Nominet are those for Mr Brueton.

The Complainant asserts that it has for 30 years traded under the name Fairview and therefore has extensive goodwill in that name. It operates a website which can be located at www.fairview.co.uk and www.fairviewnewhomes.plc.uk. It also asserts that it has registered the phrase “Fairview New Homes” as a trade mark (Nos. 1485267 & 1485268) – although it should be noted that these registrations are recorded on the Trade Mark Registry database records in the name of Fairview New Homes Plc.

Upon purchasing the domain name, the Respondent contacted Mr David Reed who he believes was the marketing manager of Fairview New Homes Plc to enquire whether “his employers were interested in the ….domain name” (my emphasis). A different version of events is put forward by the Respondent who has prepared a witness statement from its IT manager, Mr Cruickshank who alleges that he received a number of calls from the Respondent approximately 12 months ago which culminated in a conversation between Mr Cruickshank and the Respondent in which the Respondent offered the disputed Domain Name for sale. Mr Cruickshank says that the offer was refused and that a further telephone call was thereafter made to the Complainant’s Chairman in similar terms.

Although the surrounding circumstances of the contact that was made appear to be in dispute, what is not in dispute is that contact was in fact made.

On 18 July 2002 the Complainant’s advisers wrote to the Respondent asserting that the Respondent was guilty of passing off and demanding that the Respondent transfer the disputed domain name (and also a further domain name fairviewnewhomes.com) to the Complainant, and provide undertakings not to use the name Fairview New Homes in the future.

The Respondent replied to that demand on 22 July 2002 and informed the Complainant that the “description of our domain deals with alternative developments surrounding the use of existing homes outside the remit or portfolio of “Fairview New Homes””. He went on to say that “In any event all operational domain names owned, may be purchased” and “we would be willing to consider any reasonable proposals”.

The disputed domain name is currently directed to a page which includes the following text-

“Coming Soon!! Fair View New Homes.co.uk. A site especially aimed at collecting your Fair Views on New Homes; the quality and service offered by all New Homes Builders in the UK.

FairViewNewHomes.co.uk – Will have a Consumer Complaints Page – Where you can air your complaints and constructive criticism which will then be passed on to New Homes Builders in the form of market research.”

The Respondent asserts that it has for the last two years been researching, planning, collaborating and establishing its market research tool website.

The Complainant submits that the disputed Domain Name is identical or similar to a name or mark in which it has rights and that in the hands of the Respondent it is an Abusive Registration.

The Respondent’s requested remedy is that the disputed Domain Name be transferred.

1) The Respondent’s use of the Disputed Domain Name is intended to confuse customers and potential customers into thinking that the Respondent is in some way connected with Fairview Limited (or now Fairview New Homes Ltd) which will lead to damage to the Complainant in the form of lost sales (Paragraph 3 (a) (ii) DRS Policy).

2) The Respondent is using the Disputed Domain Name in a manner which takes unfair advantage of the Complainant’s rights and is unfairly detrimental to those rights (Paragraph 1 DRS Policy).

1) His intention at the time of acquisition was to establish a market research tool website.

2) The use of the disputed Domain Name falls outside of the protection which the Complainant alleges is afforded by their registered trade marks.

3) The Complaint has been filed in bad faith because the Respondent has at all times acted in good faith, particularly because he asserts that had the Complainant objected to the registration when enquiries were first made by the Respondent he would have assigned the domain name to the Complainant.

2) That the Complainant is entitled to rely upon the goodwill of associated companies in the Fairview Group.

To succeed in this Complaint the Complainant must, in accordance with Paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that (1) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and (2) the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

As indicated above, the Complainant has asserted that it has Rights in a name or mark which is identical or similar to the disputed Domain Name.

The first (.uk) and second (.co) levels of the Domain Name should be discounted for the purposes of comparison as being of a generic nature. I am of the opinion that the Domain Name fairviewnewhomes is identical to Fairview New Homes, that being the name or mark in which the Complainant claims Rights.

The definition of “Rights” is set out in the Policy as “includes, but is not limited to, rights enforceable under English Law”. Under English Law rights in a name/mark are protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect the goodwill arising from that name/mark.

With regard to the former, the Complainant has provided details of the two registered trade mark referred to above which are either for FAIRVIEW NEW HOMES or are the significant part of the registration. I therefore conclude that the Complainant does have rights in a registered trade mark for the name Fairview New Homes.

Turning to passing off, for the Complainant to be able to assert rights, it must prove that (a) it has sufficient goodwill in the name Fairview New Homes, (b) that there is a misrepresentation by the Respondent likely to make the public believe that the goods or services of the Respondent are associated with those of the Complainant, and (c) that such misrepresentation has or will cause damage to the Complainant.

The Complainant has asserted that it has goodwill arising from 30 years use of the word “Fairview” (some existing in group companies before it was incorporated) and many years use of the name “Fairview New Homes” (it changed its name to Fairview New Homes Ltd in 1984), including use on the internet.

In the current dispute I am of the opinion that (a) the Complainant does have sufficient goodwill in the name Fairview New Homes, and in circumstance where I find that the registration of the disputed Domain Name is abusive that (2) use of an identical name would lead to a misrepresentation, and (3) that such misrepresentation would cause damage to the Complainant.

For the reasons set out above, I find that the Complainant has established that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.

An Abusive Registration is defined in Paragraph 1 of the Policy 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 of an Abusive Registration are set out in Paragraph 3 of the Policy. They are:-

“i 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 Complainant;
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;
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. It is independently verified that the Respondent has given false contact details to us.

The Respondent has admitted that he made contact with a “Fairview” company shortly after he registered the domain name. He says this was because he wanted to ensure that they were not interested in the disputed Domain Name so that he could be free to use it. I do not accept this. The initial registration was registered under the pseudonym of Yours-to-buy, which to my mind gives a clear indication of the Respondent’s intention when registering the Disputed Domain Name, namely that he intended to try and sell it to the Respondent, whom he clearly knew had rights to the name.

My conviction that this was the position is made all the more certain by the evidence of Mr Cruickshank’s which I chose to prefer. I also took regard of the Respondent’s letter dated 22 July when he said that “all operational domain names owned, may be purchased”, and further the fact that the Respondent has failed to provide any evidence of any actual development of his website beyond the notice referred to above, despite two years having elapsed since registration.

In the circumstances I am of the opinion that the Respondent registered the disputed Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the disputed Domain Name.

The Respondent has asserted in its Response that it intended at the time of registration to operate a genuine site that was outside of the Complainant’s sphere of activity. I do not find that to have been so. The Respondent also asserts that the Complaint has been filed in bad faith on the grounds that he initially sought “approval” to use the name from the Complainant. I do not find that any such approval was given and see no reasonable grounds for holding that the Complaint was made in bad faith.

For the reasons set out above, in my opinion the Complainant has proven 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. The Complaint

therefore succeeds and I direct that the Disputed Domain Name be transferred to the Complainant forthwith.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> FairView New Homes Ltd -v- Brueton [2002] DRS 522 (8 November 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/522.html Cite as: [2002] DRS 522

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