Dorothea Restorations Ltd -v- Broxap & Corby Ltd [2003] DRS 765 (3 February 2003)

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3 Procedural Background
A Complaint in respect of dorothearestorations.co.uk (the “Domain Name”) under Nominet UK's Dispute Resolution Service Policy (the “Policy") was received from the Complainant on 11 December 2002. Nominet forwarded the Complaint to the Respondent on 16 December 2002. No response was received from the Respondent. On 13 January 2003 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure"). The applicable fees were received from the Complainant on 21 January 2003. I was appointed as Independent Expert as of 28 January 2003 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.

4 Formal/procedural issues
Paragraph 15b of the Procedure provides that if, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or Procedure, the Expert will proceed to a Decision on the Complaint. Nominet has taken the appropriate steps to serve the Complaint in accordance with the terms of the Procedure and I find that there are no exceptional circumstances. Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non?compliance with the Procedure as I consider appropriate.

5 The Facts
The Complainant was incorporated on 31 December 1984. It provides an engineering restoration, conservation and preservation service, particularly to those involved in the care of historic structures and machinery. It operates a web site at www.dorothearest.co.uk and has also registered dorothearestorations.com which resolves to the same site. According to the Nominet WhoIs database, the Respondent registered the Domain Name on 22 July 1999. The Domain Name resolves to the web site operated by the Respondent at www.broxap.com which is headlined BROXAP STREETSCENE, described as the UK’s leading supplier of street furniture, traffic control and facilities management.

Complainant
(a) The Complainant, Dorothea Restorations Limited has traded continuously under that name since it was incorporated in 1984. Its business is the restoration of metalwork in historic buildings, the restoration of historic machinery and the production of new, high quality, bespoke architectural metalwork. The Complainant is regarded as a market leader in its field, with high-profile clients including English Heritage, The National Trust, government departments and many local authorities. Its name and reputation are highly regarded amongst existing and potential clients.
(b) The Domain Name was registered by Broxap & Corby Limited in 1999 when it acquired a controlling interest in Dorothea Limited, a company wholly independent of the Complainant. Prior to and after acquisition by the Respondent, Dorothea Limited produced new architectural metalwork and, latterly, began to undertake a limited amount of metalwork restoration. Thus the Complainant and the Respondent are competitors.
(c) The Respondent has the right to use the name Dorothea. However, the use of the name Dorothea in conjunction with Restorations is designed to mislead potential clients with the aim of diverting business enquiries to the Respondent. This is demonstrated by the Respondent’s current use of the Domain Name to link automatically into its own commercial web site (www.broxap.com).
(d) The Complainant has offered to buy the Domain Name from the Respondent for a few hundred pounds but the Respondent has met this with an offer to sell initally for £5,000 and more recently for £15,000.

In support of its complaint, the Complainant has provided documentary evidence of its incorporation, some advertising material and correspondence between the parties.
Respondent
The Respondent has not filed any response to the Complaint.

The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities 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.

“Rights” are defined in the Policy and in the Procedure. Rights “includes, but is not limited to, rights enforceable under English law. In this case, ignoring the suffix “.co.uk” the Domain Name is identical to the name of the Complainant company. The Complainant does not assert that it owns any registered trade marks in respect of DOROTHEA RESTORATIONS but does assert that it has carried on business under that name for some 18 years and has acquired a substantial reputation in that name as a result. On the face of it, therefore, in the absence of any submissions or evidence to the contrary by the Respondent, it seems to me that the Complainant has acquired sufficient reputation in the name Dorothea Restorations as might give rise to a potential claim under English law in passing off. I therefore find that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.

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, is set out in paragraph 3 of the Policy. The potentially relevant factors in this case are as follows:

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;
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.
The Complainant has adduced little in the way of evidence to support its contention that the Domain Name is an Abusive Registration and has made limited submissions. There is no real evidence that the Respondent registered the Domain Name in order to sell it, whether to the Complainant or a competitor, for valuable consideration. There are only comments that, in response to an offer by the Complainant to purchase the Domain Name for a modest sum, the Respondent offered to sell the Domain Name initially for £5,000 and then later for £15,000. Broxap Limited indicated in a letter dated 12 September 2002 that “…it is not in our interests to consider a sale of either the Dorothea brand name, business, Dorothearestorations.co.uk unless a substantial offer is made.”
The Complainant concedes that the Respondent has the right to use the name Dorothea. It appears from the correspondence produced by the Complainant that Broxap Dorothea is a division of Broxap Limited (presumably an associate company of the Respondent) and that DOROTHEA is a registered trade mark of that company. Furthermore, a search of the Nominet WhoIs database reveals that the domain name dorothea.co.uk is registered to a company called Dorothea Limited. The domain name resolves to the BROXAP STREETSCENE web site described above.

In the circumstances, however, there is no obvious, legitimate reason why the Respondent should have registered the Domain Name and arranged for it to point to the Broxap site. The correspondence suggests that Broxap Dorothea is engaged in restoration work, as the Complainant admits, but there is no evidence that it has ever carried on business under the name Dorothea Restorations or that it is also known by that name.
It seems to me that where two companies have acquired parallel rights in the same name, such as Dorothea, they are each duty bound to avoid trespassing on those further elements of the other party’s name that do distinguish its reputation or goodwill, in such a way as to cause unnecessary confusion. Although the Complainant has not produced any evidence of actual confusion, it seems to me to be self-evident that the registration of the Domain Name, identical to the name of the Complainant company, and the pointing of the Domain Name to the Broxap site are bound to cause confusion. A significant number of internet users visiting the site by reference to the Domain Name will do so in expectation that the site is that of the Complainant and once there will be misled into believing that the Complainant is a Broxap company or associated in some way with Broxap. The Respondent presumably believes that it accrues some benefit in having the Domain Name point to its web site.
In all the circumstances, taking account of the non-exhaustive factors and considering the definition of Abusive Registration in the round, I consider that the Domain Name has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights in the name Dorothea Restorations and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.

Accordingly, I find 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 therefore determine that the Domain Name be transferred to the Complainant Dorothea Restorations Limited.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Dorothea Restorations Ltd -v- Broxap & Corby Ltd [2003] DRS 765 (3 February 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/765.html Cite as: [2003] DRS 765

Nominet UK Dispute Resolution Service