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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Evans Textile (Sales) Ltd v King [2006] DRS 370 (13 July 2006)
URL: http://www.bailii.org/uk/cases/DRS/2006/370.html
Cite as: [2006] DRS 370

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    Nominet UK Dispute Resolution Service
    DRS 0370
    Evans Textile (Sales) Ltd v. Myles King
    Decision of Independent Expert
    1. Parties:
    Complainants: Evans Textile (Sales) Ltd
    Country: GB
    Respondent: Myles King
    Country: GB
    2. Domain Name
    evanstextiles.co.uk ("the Domain Name").
    3. Procedural Background
    3.1 Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively).
    3.2 Nominet received the Complaint in full on 25 May 2006, validated it and sent it on to the Respondent on the same date, advising the Respondent he had 15 working days, until 19 June 2006, to submit a Response. The Respondent failed to submit a Response (that is, a submission compliant with the Procedure) by 19 June 2006, or at all. The parties were informed on 20 June 2006 that if the Complainant paid the requisite fees by 4 July 2006, the dispute would be referred to an independent expert and the fees were paid.
    3.3 After confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I, Victoria McEvedy, was appointed as an independent expert in this dispute on 29 June 2006.
    4. Outstanding Formal/Procedural Issues
    4.1 Paragraph 5 of the Procedure stipulates what a Response should contain, and includes a statement of truth, §5(c)v. In this case, the Respondent sent a letter attached to a covering email to Nominet on 26 May 2006. Those documents do not comply with Paragraph 5 of the Procedure. In particular, they lack a statement of truth. Paragraph 13 of the Procedure deals with non-standard submissions which are usually passed to the expert only at his discretion after the submission of an explanation as to why they are necessary. Paragraph 12(b) of the Procedure provides that the expert is to determine the admissibility, relevance and weight of evidence. Further, paragraph 6 of the Policy provides that documents marked 'without prejudice' may be considered. In this case, I have decided to consider the Respondent's documents of 26 May 2006. I should add however that failure to comply with the very minimal requirements of the Policy and Procedure is not to be encouraged and respondents should be prepared to back up their answers with statements of truth.
    5. The Facts
    5.1 The Domain Name was registered by the Respondent on 2 October 2005, as recorded in the Register and WHOIS reports supplied to me by Nominet.
    5.2 I was also provided with a printed page showing, that as at 25 May 2006, the Domain Name led to a website which contained the following text "Warning," in big bold letters, "before dealing with Evans Textiles (Sales) Limited," followed by the contact details of Evans Textiles, and the words "trading on EBAY as 1clickmillsshop" and says "Please take the time to read of my experience with their National Sales Manager," whose name and contact details follow with a link which presumably leads to the page with the story. After a reference to Customer Service week it continues "I publish this site as an aid to other customers. It is designed to reveal the particular 'style' of customer service available from Evans Textile (Sales) Ltd. If customers desire this 'Maverick' approach to customer service then they will be encouraged to do business. If the type of customer service on offer is unsuitable, people will make their decisions accordingly" and so on.
    5.3 The Complainant is therefore in the business of selling textiles online and the Respondent appears to be a disgruntled customer.
  1. The Parties' Contentions
  2. 6.1 Complainant's Case
    6.1.1 The Complainant says (and I have largely retained its own words):
    6.1.2 The Domain Name in dispute is identical or similar to a name or mark in which I have Rights. The Domain Name in the hands of the Respondent is an Abusive Registration.
    6.1.3 A delivery problem relating to an internet transaction sale by the Complainant to the Respondent has resulted in the Respondent creating a website to which the Domain Name points. We believe this is an abusive registration for the purpose of unfairly disrupting the business of the Complainant. In addition, the Domain Name is similar to our company name. The site is confusing our potential internet customers.
    6.1.4 The Respondent's claim against us is that Parcelforce did not deliver his item on time. We have proof of an attempted delivery 28.9.05 from Parcelforce (a copy is attached to the Complaint). The system then operated by Parcelforce is that the item is returned to the depot and the customer can collect from there or request a re-delivery. The Respondent refused to accept the attempted delivery as documented by Parcelforce, also he refused the re-delivery. He threatened us with his intention to create the website, claiming "Not that I would presume to dictate to you your business, but I suggest that you take action unless you want your site coming second (if at all) to this site in every relevant search. (And a few irrelevant ones too)". As Parcelforce and our company followed normal delivery procedures under terms and conditions we believe his use of this site does not fall under the fair use in criticism of a person or business. It is unfair criticism and designed to disrupt our business. The domain name was registered solely as a result of a relationship between the Complainant and the Respondent.
    6.2 Respondent's Case
    6.2.1 The Respondent says (and again I have largely retained his own words) in his cover email of 26 May 2006, "Mr Bennett is correct, there is a dispute and he owes me an apology and a refund on the transaction concerned. The apology is unenforceable but the refund is mandated in law by the Distance Selling Act. Mr Bennett has taken my money and has not refunded it within the required timescale, he is very clearly in breach of the Act. I do hope that Nominet take this into account when dealing with this dispute. Please feel free to ask Mr Bennett if he has refunded my payment. If not then refer him to the rules concerning my protection under the DSA. Mr Bennett may soon have his hands full dealing with the DTI and as a loyal Nominet customer I would prefer that you were neutral if possible. Please let me know how you see your role in this case. If you need any information from me then please let me know."
    6.2.2 In the attached letter marked "without prejudice" the Respondent also says: "I do not agree that the website www.evanstextiles.co.uk is being used in an 'abusive' manner. Mr Bennett simply refuses to refund (approx £30) regarding the failed delivery in question. Under English law I am entitled to a refund within thirty days, delivery or not. I requested such a refund which you should find evidence of in the documentation which Mr Bennett has no doubt been helpful in forwarding to you. He is obviously not aware of the Distance Selling Act with which he is supposed to comply. See 'Cooling Off Period'. Indeed Mr Bennett has retained both money and goods, not bad for him. In addition, he has given negative feedback on eBay and made a complaint to PayPal. I have made no such representations to eBay, PayPal or even to the DTI. I have instead created a situation whereby Mr Bennett will eventually have to deal with this particular unsatisfied customer. His persistent refusal to face up to his customer service responsibilities have resulted in the website of which he now complains. By all means take his £750.00 (it would be rude not to) but you can let him know that I am no stranger to satisfaction in court and that £750.00 will be just the beginning. I think Mr Bennett could well benefit from the advice of a professional. That professional might suggest that an apology and refund will have the most immediate positive effect. P.S. Checking the site stats I can see no 'traffic', I did not subscribe the URL to any search engines. I use the DB server for tests and only see a few hits showing from other IP's. I suspect that Mr Bennett is its biggest audience.".
    7. Discussion and Findings
    7.1 General
    7.1.1 Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it's an Abusive Registration, as defined in the Policy—paragraph 2(a) of which requires a Complainant to prove 2 elements:
    "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."
    7.1.2 A Complainant bears the burden of proof and must prove both elements on the balance of probabilities.
    7.2 Complainants' Rights
    7.2.1 Rights are defined by the Policy as including, but not limited to, rights enforceable under English law. It includes rights to registered and unregistered trade marks, as well as contractual and other rights.
    7.2.2 The Complainant does not refer to any registered trade marks. It does however rely on the similarity between the Domain Name and its registered company name, at §6.1.3 above. However, the fact the Complainant's registered company name is identical to the Domain Name, does not assist it. In English law, the incorporation of a company under a particular name, does no more than block others from registering the same name with the Registrar of Companies; it does not, of itself, prevent others from using that name in business, see Active Web Solutions v. Peter Shaw DRS 00228.
    7.2.3 Complainants can however rely on actual use of a name in trade as creating a reputation or goodwill protected by the common law cause of action for passing off, see Warnick (Erven) Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd [1980] RPC 31 HL; Reckitt & Colman Products Limited v. Borden Inc [1990] 1 All ER 873 and IRC v. Muller & Co.'s Margarine Ltd [1901] AC 217, 223 HL. This reputation is known as a common law or unregistered mark.
    7.2.4 Unfortunately, the Complainant has not provided any evidence that it actually trades under the name Evans Textiles (Sales) Ltd and this cannot be assumed in light of the allegation by the Respondent that the Complainant trades online under the name 1clickmillsshop. Proving it has rights is part of the Complainant's burden of proof and it has omitted to submit evidence on this point.
    7.2.5 However, although I am not obliged to investigate any aspect of a complaint, I have carried out a web search which evidences that the Complainant does trade under that name at http://www.evans-textiles.com ,as well presumably as off-line. On the home page of that site it refers to itself as Evans Textile Sales Ltd. I have no doubt that it refers to itself and trades under both its full name and the abbreviation, Evans Textiles.
    7.2.6 In any event, the standard required to make out rights under the policy is not a high one, see decision of the Appeal Panel in Seiko v. Designer Time DRS00248, and I am satisfied that it is met here and that the Complainant has rights in both Evans Textile Sales Ltd and Evans Textile arising from its actual use.
    7.2.7 Paragraph 2(a)(i) of the Policy requires that the name or mark in which a Complainant has Rights "is identical or similar to the Domain Name." In determining this, the www. prefix is ignored, as are suffixes, here ".co.uk", see the decision of the Appeal Panel in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359. Spaces, and use of upper or lower case, are immaterial.
    7.2.8 In relation to the name Evans Textiles and the Domain Name, ignoring the cases, spaces and suffix, we are therefore comparing like with like, as the names are identical. In relation to the name Evans Textile Sales Ltd, the names are similar.
    7.2.9 I find that the Complainants have proved, on the balance of probabilities, that they have Rights in names which are identical and similar to the Domain Name.
    8. Abusive Registration
    8.1 The second element a Complainant must prove under paragraph 2(a) of the Policy, is that the Domain Name is an Abusive Registration, defined in paragraph 1, as follows:
    "Abusive Registration means 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"
    8.2 Paragraph 3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration. The Complainant relies on a variety of these factors, in the manner set out in its Complaint, in paragraph 6.1.2 above. Paragraph 4 of the Policy provides a non-exhaustive, illustrative, list of factors, by which Respondents' may rebut an inference of Abusive Registration.
    8.3 The DRS does not decide issues of defamation, trade mark infringement or passing-off per se, which are matters for the courts. I will not therefore make any finding as to those. Nor, might I add, am I concerned to determine the rights and wrongs of the dispute between the parties over the delivery and refund. The DRS is concerned solely with Abusive Registrations under the Policy.
    Factors indicating Abusive Registration
    8.4 The Complainant relies on the fact that the Respondent selected the Domain Name for the purpose of unfairly disrupting the business of the Complainant. This is factor 3ai(c) of the Policy –namely circumstances indicating the Respondent registered or acquired the Domain Name primarily for the purpose of disrupting the business of the Complainant. In support of this contention the Complainant relies on the overt threat made by the Respondent namely "Not that I would presume to dictate to you your business, but I suggest that you take action unless you want your site coming second (if at all) to this site in every relevant search. (And a few irrelevant ones too)."
    8.5 In addition, the Complainant says the site is confusing its customers – in terms of factor 3aii of the Policy, namely representing the Domain Name is registered to, operated or authorized by, or otherwise connected with the Complainant.
    8.6 The Complainant further anticipates and rebuts any reliance by the Respondent on its right to make fair use of a name for the purpose of criticism by justifying its action and saying the criticism is unfair.
    Evidence against Abusive Registration
    8.7 Factor Ai(c) of the Policy provides that a factor against Abusive Registration is "[b]efore being aware of the Complainant's cause for complaint, the Respondent has …. made legitimate non-commercial or fair use of the Domain Name." Fair Use is described as "[f]air use may include sites operated solely in tribute to or in criticism of a person or business." This is the internet equivalent of allowing someone to hold up signs using the store's name in picket outside a store complaining of the service and is a legitimate use of a Domain Name. It's a nod to free speech, freedom of expression.
    Discussion
    8.8 In this case, the Respondent's use is non-commercial in the sense that the Respondent is not using the Complainant's name to sell or endorse anything. Further, no existing or potential customer of the Complainant stumbling on the site is for one minute going to think the site is authorized by or connected to the Complainant. It is quite clear that the site is being used to voice criticism of the Complainant. It is clearly intended to disrupt the Complainant's business –but in a manner permitted by the Policy –the exercise of free speech.
    8.9 I find that the Respondent's registration is not an Abusive Registration.
    9. Decision
    Taking all the circumstances of this dispute into account, I find that although the Complainant has Rights in names identical and similar to the Domain Name, the Domain Name in the hands of the Respondent is not an Abusive Registration and direct that no action be taken in relation to the Domain Name.
    Victoria McEvedy
    13 July 2006


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URL: http://www.bailii.org/uk/cases/DRS/2006/370.html