Gold Financial Group Ltd v Yates [2004] DRS 1824 (2 August 2004)

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The domain names in dispute are:
goldfinancialgroup.co.uk;
goldrecruit.co.uk;
goldinsuranceservices.co.uk;
goldmortgage.co.uk;
medicaldentalprofessional.co.uk;
goldfinancialservices.co.uk;
goldfinancialconsulting.co.uk

On 7 June 2004 the Complaint was lodged with Nominet UK in accordance with the Dispute Resolution Service Policy (hereinafter the “DRS Policy”) and hard copies of the Complaint were received in full on 15 June 2004.

On 18 June 2004 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure allowed the Respondent 15 working days i.e until 12 July 2004, within which to respond to the Complaint.

On 14 July 2004 as the Respondent had failed to file a Response, Nominet UK generated and sent the complainant documents to the Parties. Said documents inter alia advised the Respondent that the matter would be sent to an independent expert for a decision on receipt of the fees from the Complainant.

On 23 July 2004, James Bridgeman was appointed as Expert having confirmed to Nominet UK 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.

The domain names in dispute were registered by the Respondent in his own name on the following dates:

· goldfinancialgroup.co.uk registered on 14 November 2002;
· goldrecruit.co.uk registered on 14 November 2002;
· goldinsuranceservices.co.uk registered on 14 November 2002;
· goldmortgage.co.uk registered on 14 November 2002;
· medicaldentalprofessional.co.uk registered on 11 November 2002;
· goldfinancialservices.co.uk registered on 11 November 2002;
· goldfinancialconsulting.co.uk registered on 14 November 2002.

The Complainant is a private registered company. The Complainant has furnished copies of certificates of incorporation of the Complainant and other private registered companies as follows:

· Gold Financial Group Limited (company number 4686734) incorporated on 5 March 2003.

· Gold Independent Financial Advisors Limited (company number 4666765) incorporated on 14 February 2003;

· Gold Insurance Brokers Limited (company number 4667428) incorporated on 17 February 2003;

· Gold Mortgages Limited (company number 4665691) incorporated on 13 February 2003;

· Medical Dental Professional Consulting Limited (company number 4698120) incorporated on 14 March 2003;

· Gold Financial Consulting Limited (company number 4659358) incorporated on 7 February 2003.

The file furnished in these proceedings contains print-outs of the home pages at the addresses of the domain names in dispute:

· the homepage at goldfinancialgroup.co.uk address has only very basic information with no contact details whatsoever;

· the homepage at goldrecruit.co.uk address states only “Welcome to Gold Recruit. This web site is under construction by [name of company] please check back soon”;

· the homepage at goldinsuranceservices.co.uk address is more detailed. It does not however provide any details, but there is a number of buttons on the display that includes a “contact default” – as only the home page has been furnished so it is not possible to ascertain whether these buttons are operative;

· the homepage at the goldmortgage.co.uk address is similar to the goldinsuranceservices.co.uk homepage;

· the medicaldentalprofessional.co.uk address leads to a “This page cannot be displayed” message;

· the homepage at the goldfinancialservices.co.uk address states only: Welcome to Gold Financial Services. This web site is under construction by [name of company] please check back soon”;

· the home page at the goldfinancialconsulting.co.uk address is similar in content to the goldinsuranceservices.co.uk home page.

In a very brief Complaint, the Complainant alleges that the domain names in dispute are identical or similar to a name or mark in which the Complainant has Rights.

The Complainant further alleges that said domain names in the hands of the Respondent are Abusive Registrations.

The Complainant alleges that the Respondent registered said domain names on behalf of the Complainant at a time when he was in the employment of the Complainant. The Complainant further alleges that the Respondent is no longer an employee of the Complainant and despite demand has refused to transfer said domain names into the name of the Complainant.

The Complainant submits that when the Complainant company was established, the Respondent was given the task of registering the company’s web sites on the terms that any costs that he incurred would be refunded to him.

The Complainant alleges that it would appear that the Respondent decided to register the domain names in his own name.

The Complainant further alleges that on the 15 June 2003 the Respondent informed the Complainant verbally and in writing that the domain name registrations in dispute had been transferred to the Complainant and that the Respondent gave the Complainant the original Nominet UK registration certificates.

The Respondent’s employment with the Complainant was subsequently terminated. Since the termination of the Respondent’s contract of employment the Complainant alleges that it has been trying unsuccessfully to have the domains transferred by amicable means to enable the Complainant to continue to run its business.

The Complainant submits that there is a threat that its business would be disrupted if the Respondent were to take the disputed domain names off line. The Complainant alleges that it is unable to update its web sites in any fashion and this is affecting the business not only in a monetary fashion but could potentially cause the Complainant to be in breach of the Financial Services Act.

The Complainant alleges that it is unable to contact the Respondent as he has moved several times. Attempts to make contact by telephone have been unsuccessful as no messages are returned.

Paragraph 2 (a) of the DRS Policy imposes on the Complainant the onus of proving 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.

Paragraph 2 (b) imposes a further obligation on the Complainant “to prove to the Expert that both elements are present on the balance of probabilities.”

In the present case the Complainant has failed to satisfy this Expert that either of these elements are present on the balance of probabilities for the following reasons:

The DRS Policy defines Rights as including “but…not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.”

This is a very broad definition of the term “Rights” and presumably is not limited to intellectual property or similar rights but is broad enough to include rights of ownership of the domain names themselves.

The Complainant clearly makes a claim to some form of contractual and/or proprietary right to the registrations themselves. It states that the Respondent registered the domain names in dispute on behalf of “the company”.

The Complaint explains the alleged arrangement in the following terms: “When we started the company MR (sic) Stephen Yates was given the task of registering the companies web sites any costs he incurred be refunded to him. It would appear that at the time he registered the domains he decided to register them through his own name..”

If proven, this allegation could well be sufficient for the Complainant to succeed, however the Claimant has not furnished sufficient evidence to support this claim. The Complainant has furnished a copy of the Nominet UK registration certificate for the goldfinancialconsulting.co.uk registration with the words “All transferred to Gold Financial Group Ltd. 15/03/03” written on it and what the Complainant claims to be the initials of the Respondent. This in itself, without more, does not permit a finding in the Complainant’s favour on the balance of probabilities.

Without some substantive evidence this Expert cannot conclude that the Complainant has proven on the balance of probabilities that it has any contractual or proprietorial Rights to ownership of these domain names as it alleges.

As to intellectual property rights, it is necessary to deal separately with the domain name goldfinancialgroup.co.uk as this is identical to the Complainant’s corporate name. The Complainant has not registered either the individual words GOLD FINANCIAL GROUP or the single compound word GOLDFINANCIALGROUP as a trademark. Neither has it provided any evidence of any use of same such as would establish that the Complainant has a goodwill in the name or mark.

The mere fact that a company is registered with a particular corporate name does not necessarily give that company any intellectual property rights in the name. Such rights would come from trade mark registration and/or use of the corporate name in trade or commerce by the company in such a way as to establish a protectable goodwill.

Dealing then with the domain names, goldrecruit.co.uk, goldinsuranceservices; goldmortgage.co.uk, medicaldentalprofessional.co.uk, goldfinancialservices.co.uk and goldfinancialconsulting.co.uk, the Complainant has given no information as to any trademark rights or rights in the nature of goodwill in any name or mark that is identical or similar to them. Some of them are identical or similar to the corporate names of the companies listed above, but the Complainant does not claim to have any registered trade marks and there is no evidence of any goodwill in the use of any of these names in trade or commerce either by the Complainant or any associated companies.

The print-outs of the home pages at the addresses of the disputed domain names listed and described above do not help the Complainant’s case in this regard either. These home pages contain no contact information and are either very basic, under construction or inaccessible. In any event they do not amount to evidence of any substantive trading on the part of the Complainant using these domain names such as to create common law rights in the names. In fact some of these names are of such a laudatory, descriptive and generic character that it would be difficult to establish any such rights.

Furthermore, while it is implied in the Complaint that the Complainant company acts for and is in some way entitled to claim rights in relation to or on behalf of the other companies listed above, there is no explanation whatsoever in the Complaint as to the nature of the relationship that exists. Is the Complainant the parent company? Is it one of a group of companies? On what basis does it claim to speak for the other companies? Furthermore there is no evidence of any relationship whatsoever between these companies themselves.

It follows that the Complainant has failed to prove to this Expert on the balance of probabilities that it has any Rights either in the nature of contractual rights or proprietary rights in the registrations themselves or any relevant intellectual property rights.

As to the question of whether the domain names are identical or similar to a name or mark in which the Complainant has Rights, given the findings supra that the Complainant has not provided any evidence of Rights in any mark or name, this exercise is moot.

Nonetheless to address the issue for the sake of completeness, a comparison of the domain names with the Complainant’s corporate name leads this Expert to conclude that the disputed domain name <goldfinancialgroup.co.uk> is clearly identical with the Complainant’s corporate name.

There are certain similarities between the disputed domain names and the corporate names of the other companies listed above and in some instances they are identical, but there is no evidence of any connection between the Complainant and these companies.

As to whether the domain name registrations are abusive in the hands of the Respondent in the light of the above this is also moot.

“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.”

The domain names in dispute were all registered in the month of November 2002 at a time that pre-dated the incorporation of the Complainant on 5 March 2003 or the other companies listed above in that were incorporated earlier in the month of February 2004.

It is not difficult to understand how in certain circumstances, this could arise, during a pre-incorporation period and it is all the more reasonable that in a pre-incorporation period, a group of domain names may be secured by registering them in the name of one of the promoters of the company or their nominee. This however is not how the matter has been described by the Complainant.

It is however difficult to understand how, in these circumstances the Complainant could claim that:“ [w]hen we started the company MR (sic) Stephen Yates was given the task of registering the companies web sites any costs he incurred be refunded to him.” This would seem to imply that the company was incorporated prior to the domain name registrations which is not the case.

Without some explanation, it is not possible to conclude that at the time the registrations were made the registrations took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

As the Complainant company was not yet incorporated it had no rights. Its promoters may have had rights and the company may have acquired such rights upon incorporation, but at the time that these registrations were made the Complainant did not exist and had no rights.

It would be possible to conclude that the domain name has since been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s rights. If, as alleged by the Complainant, the Respondent registered these domain names as agent for the Complainant or its promoters, and has since agreed to transfer them but has refused to do so and the Complainant is unable to access its web sites as a result, this would amount to an Abusive Registration. Unfortunately for the Complainant, there is insufficient evidence to support these allegations.

Finally the Complainant has not furnished any evidence to support its claim that the Respondent was in its employ, or that the Complainant reimbursed the Respondent for the costs of the registrations.

In the absence of substantive evidence, the Complainant has failed to establish that said domain registrations were “Abusive Registrations”.

However, in the circumstances outlined, because of the nature of the allegations, it is appropriate that the Complainant and/or the other companies listed above should be entitled to re-file a complaint and this Expert would recommend that in such circumstances, the matter should not be considered as res judicata in subsequent proceedings based on the same facts.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Gold Financial Group Ltd v Yates [2004] DRS 1824 (2 August 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1824.html Cite as: [2004] DRS 1824

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