Aquinas Ltd -v- Aquinas IT Ltd [2003] DRS 918 (12 June 2003)

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 £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!

Aquinas Limited and Aquinas International Limited –v- Aquinas I.T. Limited

On 19 March 2003, the Complaint was lodged with Nominet UK (hereinafter “Nominet”) in accordance with the Dispute Resolution Service Policy (hereinafter the “DRS Policy”) and hard copies of the Complaint were received in full on 21 March 2003.

On 26 March 2003 Nominet validated the Complaint and Nominet sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure allowed the Respondent 15 working days within which to respond to the Complaint.

On 22 April 2003 as no Response had been received Nominet proceeded to appoint an Expert to determine the dispute.

On 30 April 2003 Mr James Bridgeman was appointed as Expert having confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the Parties, which might appear to call into question his independence and/or impartiality.

Having considered the Complaint, this Expert determined that for the fair and expeditious resolution of the dispute, and particularly given that since no Response had been filed and the case was proceeding as an undefended reference, it was appropriate to request further evidence and documents from the Complainants pursuant to paragraph 13.a of the Nominet UK Procedure for the Conduct of Proceedings under the Dispute Resolution Service (“DRS Procedure”). Furthermore, in the interest of natural justice and fair procedures, this Expert determined inter alia that the Respondent should be given the opportunity to make submissions relating to any such evidence and documents submitted and that the Complainants should be given the opportunity to Reply thereto.

13 Further Statement
a In addition to the complaint, the response and if applicable the reply and any appeal, the Expert may request further statements or documents from the Parties. The Expert will not be obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy and this Procedure or which he or she has not requested.

On 15 May 2003 this Expert issued Directions pursuant to paragraphs 12 and 13 of the DRS Procedure.

By letter dated 21 May 2003 the Complainants submitted further evidence and submissions.

By letter dated 2 June 2003 the Respondent filed submissions incorporating a Response dated 17 April that the Respondent claimed had “seemed to get lost in the system”.

The Second Named Complainant is the owner of UK Trade Mark Registration No. 2234271 registered in class 35 as of 30 May 2000 in respect of:”Recruitment services; personnel recruitment services; employment agency services; recruitment and employment consultancy services.”

For a number of years the Parties have been in dispute relating to the ownership of said domain name < aquinas.co.uk > and the content of the web site established at that address. The Parties engaged in an exchange of correspondence in June and July 2001 in an endeavour to resolve their differences.

The Respondent has recently re-designed said web site and a further dispute has arisen in relation to the content of the web site.

The Complainants submit that they have been known as and have been trading as AQUINAS since January 1989 and have built up a world wide clientele base within the Aerospace, Power Generation, Oil and Gas , Defence markets. The Complainants submit that ownership of the above registered trademark AQUINAS gives the Complainants the exclusive right to use of the name AQUINAS in all matters concerning recruitment and human resources. The Complainants object to the Respondent’s use of the web site established at the < aquinas.co.uk > address for recruitment purposes.

The Complainants submit that in 2001 the Respondent gave assurances to the Complainants that it would not in any way violate the Complainants’ rights in the AQUINAS trade mark. The Respondent claimed that it was not trading in the Complainants’ market nor engaged in servicing clients in the Complainants’ geographical area. At that time the Respondent stressed that it was an I.T. recruitment company with a heavy emphasis on training.

The Complainants submit that recently there has been a change in the content of the Respondent’s web site established at the <aquinas.co.uk> address. The Complainants allege that the management team of the Respondent formed a new company named Aquinas HR Limited in January 2003 and has since engaged in a complete re-branding exercise, including a re-launch of the web site at the <aquinas.co.uk > address.

The Complainants submit that the Respondent has dropped the Aquinas I.T. Limited name and that the Respondent has re-branded itself as AQUINAS simpliciter.

The Complainants further submit that the new content on the web site relates to recruitment services but that the Respondent has not introduced its new company name Aquinas HR Limited on the web site. Where the letters “hr” appear on the site the word AQUINAS appears above and the letters “hr” below. The Complainants submit that the Respondent is thereby making unauthorised use of the Complainants’ trademark to promote itself.

The Complainants further submit that the introduction of a new company name, Aquinas HR Limited, is for the most part an effort by the Respondent to free itself from the constraints of the Aquinas I.T. Limited name. Furthermore the whole emphasis of the Respondent’s web site is toward recruitment in the Space Industry - a market that the Complainants have been engaged in since 1989. The Complainants submit that the Respondent is thereby creating confusion among the Complainants clients and candidates.

The Complainants submit that they were first made aware of the changes in the content of the Respondent’s web site when “several people” rang up about positions being advertised. These people were under the impression that the Complainants and the Respondent were one and the same company. These were people who knew the Complainants well. It was typical to hear "surely aquinas.co.uk is part of the Aquinas Group". The Complainants submit that in particular there has been confusion on the part of one of the Complainants’ oldest clients.

The Complainants submit that the Respondent is trying to fill positions such as Stress Engineers, Design Engineers, Systems Engineers and so on which are in the Complainants’ mainstream recruitment markets. More seriously still, the Complainants submit that certain positions being advertised on the Respondent’s web site are identical to those the Complainants themselves are also advertising – and with the same client.

The Complainants submit that the Respondent is trading in the same market, is supplying to the same geographical markets, is being confused for the Complainants, and is using the Complainants’ registered trade mark.

The Complainants further submit that the Respondent tried to obtain registration of the AQUINAS trade mark for training purposes but this application was rejected by the Registrar. [It should be noted that the Respondent claims that this application was successful see infra].

The Complainants submit that the Respondent is the owner of the AQUINAS IT trade mark and that this should be used in its entirety and not shortened in any way and furthermore the Respondent should use the AQUINAS IT trade mark solely for training purposes and specifically not in a personnel/human resources context. In doing so, the Complainants submit that the Respondent is in breach of the assurances given in correspondence in June and July 2001 in this regard.

There was no Response from the Respondent on the case file, but the Respondent did make submissions following the Directions of the Expert made pursuant to paragraph 13 of the DRS Policy. In these submissions the Respondent submits that it did respond to the original complaint by e-mail in a timely manner but the Response “seemed to get lost in the system”.

The Respondent claims to have been trading since 1998 and over the years has built up a reputation among its clients for supplying personnel and training courses.

The Respondent registered the domain name <aquinas.co.uk> in 1998 and claims that it has used the domain name in good faith ever since. The Respondent’s web site is an integral part of the Respondent’s business and there are hundreds of links to the site, including Web Trade Listings, Partner web sites, Trade Mags and Directories, Yellow Pages, Thompsons and so on. The Respondent claims to have used its web site as a shop window for its business and now receives nearly 70, 000 hits per month.

The Respondent submits that the Complainants did not register their trade mark until two years after the Respondent started using its web site at the<aquinas.co.uk> address. The Complainants’ registration of the AQUINAS trade mark was in direct response to the Respondent’s registration of the said <aquinas.co.uk> domain name. The Respondent claims to be the registered owner of registered trade mark no. 2265226 AQUINAS in class 42, registered on 12 July 2002 and filed on 23 March 2001.[This is denied by the Complainant].

The Respondent submits that any cancellation of the Respondent’s domain name would be extremely damaging to its business.

There are certain differences between the Respondent’s business and that of the Complainants. The Complainants are the owners of other domain names such as <aquinasgroup.co.uk>, <aquinasinternational.co.uk> and <aquinas.ltd.uk>.

The Respondent claims to have built up valuable goodwill in the domain name and a reputation, which would be damaged or lost if the Complainants were to succeed in these proceedings.

The Respondent further submits that the word “Aquinas” is a common term on the Internet. A search on the Internet using a single search engine revealed 427,000 references to “Aquinas” and 72,700 references to “Aquinas International”, so this is not a trade mark that is “so inventive” that there is a high likelihood of confusion.

In addition, the Respondent submits that there are over 10,000 recruitment companies in the UK alone, and the public are accustomed to distinguishing between them. The Respondent denies passing off and submits that it would be very difficult to pass off within the recruitment industry, because of the close relationship individual consultants have with their clients.

The Respondent alleges that the Complainants are trying to gain the reputable Internet business the Respondent has painstakingly built up over the last five years.

There has been no confusion in the market place between the Parties except for one occasion in the past five years. The Respondent’s response on that occasion was to inform the said person about the Aquinas Group in Bristol and forward them in the right direction.

The Respondent has recently established another company called AQUINAS HR Limited and the Respondent’s web site has been redeveloped. There has been a single mistake where the web site developer has used the word “AQUINAS” on its own, once. This has now been resolved and the Respondent has added a legend “Copyright 2003 AQUINAS IT Limited” to every page.

In summary, the Respondent submits that suspending, cancelling or transferring the domain name would cause immense damage to its business, which has been operating in good faith for five years; that the word “Aquinas” is a relatively common term on the Internet; that there has been no confusion between the two companies in question; and that the Respondent is not using the Complainants’ name to gain business.

Having considered the case file it was clear that the Complainant had made a number of claims and allegations but had not provided any evidence in support of same. As there was no Response from the Respondent on file, this Expert sought further evidence and submissions from the Complainants specifically on the following aspects of the Complainants’ case:-

1. evidence of ownership of the trademark No. 234271, details of the date of application and date of registration of said trademark together with full details of the class or classes in which it is registered, the goods and or services for which it is registered; and

2. evidence of the assurances that the Respondent allegedly gave to the Complainants in earlier proceedings relating to the use of the web site established at the domain name in issue herein; and

3. evidence that the web site established by the Respondents contains content in breach of said assurances; and

4. evidence of the alleged confusion among the Complainants’ clients and candidates.

Pursuant to these Directions, the Complainants provided evidence of the Second Named Complainant’s ownership of the AQUINAS registered trademark. They further provided copies of letters from the solicitors for the Respondent dated June and July 2001 wherein there was an offer to give certain assurances relating to the content of the web site established at the <aquinas.co.uk> address. It should be noted that the letters submitted were not the full correspondence and there was reference to other correspondence. This Expert takes no inference from the fact that the correspondence submitted was incomplete, but notes that the documents submitted do not appear to represent a finalised agreement between the parties.

The Complainant also provided print outs of the Respondent’s web site that clearly had the word AQUINAS on its own in large typeface with the “hr services” immediately below. There was no indication that the “hr services” element was part of the name of a company and it could be taken as being descriptive of the services on offer as the Complainants allege.

The Complainants also submitted evidence of some confusion among clients and suppliers.

“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 Complainants’s Rights; or

ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainants’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.a of the DRS Policy inter alia 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 Complainants or to a competitor of the Complainants, 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 Complainants has Rights; or

C. primarily for the purpose of unfairly disrupting the business of the Complainants;”

Paragraph 4 of the DRS Policy sets out a non-exhaustive list of factors which may be taken as evidence that the domain name in dispute is not an Abusive Registration. These include inter alia at paragraphs 4.a.i.A and B that

       A        the Respondent has used or made demonstrable preparations to use the
                  Domain Name or a Domain Name which is similar to the Domain
                  Name in connection with a genuine offering of goods or services;

B been commonly known by the name or legitimately connected with a
mark which is identical or similar to the Domain Name;…”

The essence of the Complainants argument is that the Respondent is infringing the Second Named Complainant’s registered trademark and passing itself off as the Complainants on the web site established an address at the domain name in dispute.

The allegation is that the registration of the domain name has become an Abusive Registration because the Respondent is offering of a new range of services in the field of personnel recruitment on its own behalf or on behalf of a new company Aquinas HR Limited and as a result the domain name is allegedly being used in a manner, which is taking unfair advantage of or is unfairly detrimental to the Complainants’ Rights.

In the view of this Expert, these proceedings under the DRS Policy and the DRS Procedure are not an appropriate tribunal to determine whether there is trade mark infringement or passing off as this is a matter for the courts.

On the other hand it is clear that the Respondent has been using the domain name in issue since before the date on which the Second Named Complainant registered the AQUINAS trademark. It is clear therefore that before being informed of the Complainant’s dispute, the Respondent has used the Domain Name in connection with a genuine offering of goods or services. Furthermore it is clear that the Respondent has been commonly known by the name AQUINAS IT and thereby has been legitimately connected with a mark which is similar to the domain name in dispute. In this regard the Complainants have acknowledged that the Respondent is the owner of the AQUINAS IT trade mark.

It is possible that the Complainants may have a remedy in another forum for infringment of their registered trademark and/or passing off by either the Respondent or Aquinas HR Limited or both, but it would not be appropriate for this Expert to make any comment in this regard.

The Complainants have not succeeded in establishing that the Respondent’s registration is an Abusive Registration and are not entitled to the relief sought.

This Expert therefore directs that the Complainants have failed in their application and the domain name <aquinas.co.uk> should remain in the ownership of the Respondent.

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Aquinas Ltd -v- Aquinas IT Ltd [2003] DRS 918 (12 June 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/918.html Cite as: [2003] DRS 918

Nominet UK Dispute Resolution Service