Nominet UK Dispute Resolution Service

DRS 03817

Welconstruct Group Limited v Brainfire Group

Decision of Independent Expert

1.	Parties

Complainant:		Welconstruct Group Limited
Country:		United Kingdom

Respondent:		Brainfire Group
Country:		Canada		

2.	Domain Name

wellconstruct.co.uk (“the domain name”)

3.	Procedural Background

On 7 July 2006 Nominet received hard copy of the complaint dated 5 July and checked that it complied with the Nominet Dispute Resolution Service Policy (“the Policy”) and Procedure (“the Procedure”). Nominet notified the Respondent of the complaint on 7 July and informed it that it had 15 working days within which to lodge a response. No response was received. Informal mediation not being possible, on 1 August Nominet notified the parties that an expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 4 August. 

On 9 August I, Mark de Brunner, agreed to serve as an expert under Nominet’s Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties and that there are no facts or circumstances that might call into question my independence.

4.	Outstanding Formal/Procedural Issues

Email delivery failures

There are email delivery failure reports on file, generated in connection with Nominet’s attempts to notify the Respondent of the complaint and, subsequently, of the fact that the case would be referred to an expert if the appropriate fee was paid. I need to decide what to make of those delivery failure reports.

My starting point is that those registering domain names with Nominet agree to keep Nominet up to date with their contact details. The Procedure says that Nominet will send a complaint to the Respondent using, at its discretion, any one of a range of means – including

-	email using the contact details shown as the registrant or other contacts in the domain name register database entry for the domain name in dispute

-	email to postmaster@<the domain name in dispute>

In the event, Nominet sent the complaint (7 July) and subsequent correspondence (1 August) to both admin@brainfire.com and postmaster@wellconstruct.co.uk. The delivery failure reports relate to both of these addresses.

Given that it is the Respondent’s obligation to keep its contact details with Nominet up to date I am satisfied that Nominet did what it could to notify the Respondent of the complaint and of how that complaint was being handled. I therefore propose to proceed on the basis that the Respondent has been properly notified of proceedings under the Dispute Resolution Service.

Standard warning letter

The file also shows that on 4 August the Complainant was sent a copy of a warning letter now sent out routinely in cases where complaints are short or appear unsupported by evidence. The letter is from the Chairman of the panel of experts. It makes clear that neither he nor Nominet have looked at the substance of the complaint but that, to be successful, complaints need to establish proof on the balance of probabilities and that complainants should therefore satisfy themselves that they have offered sufficient material to discharge that obligation. The Complainant confirmed the same day that, despite the warning, it wanted the complaint to be referred for an expert decision.

5.	The Facts

I have visited the websites of both parties (the Complainant’s at www.welconstruct.co.uk and the Respondent’s at www.wellconstruct.co.uk). From those visits, the complaint and the information routinely supplied by Nominet I accept the following as facts.

The Complainant manufactures and sells a wide range of industrial and clerical workplace furniture and fittings. It was incorporated in 1952 and has changed its name twice since then. The company adopted its present name in 2004, but has been trading as Welconstruct for several decades. The Complainant holds a UK trademark registration dated 26 July 2001 for the name Welconstruct, in respect of industrial and clerical workplace furniture and fittings. It also holds a trademark registration dated 18 November 2005 for a “Welco” logo (the letters “Welco” inscribed in a circle). 

The Complainant registered the domain name welconstruct.co.uk on 4 February 1997. The website at that domain name is branded with the “Welco” logo. At the bottom of the home- page there is a claim to copyright made by “Welconstruct Group Ltd”. The page invites visitors to browse online catalogues for, among other things, storage, safety and handling equipment as well as waste management products. A linked page, “About Welconstruct”, describes a long-established business sourcing and supplying workplace products and equipment.

The Respondent registered the domain name at issue here, wellconstruct.co.uk, on 27 April 2005. That domain name resolves to a “parking” page listing categories of goods and services that include the kind of goods sold by the Complainant (for example lockers, shelving, bins and benches) and containing links to third party websites.

6.	The Parties’ Contentions

Complainant

The Complainant says it has rights in the name Welconstruct and that the domain name takes unfair advantage of those rights because the Respondent

(i)	has set out to divert trade intended for the Complainant from people who inadvertently type the domain name into their browser – and is therefore effectively disrupting the Complainant’s business

(ii)	is using the domain name in a way that has confused people into thinking that the domain name is connected with the Complainant

Respondent

There has been no reply.

7.	Discussion and Findings:

General

To succeed in this complaint the Complainant must prove, 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 that

(ii)	the domain name, in the hands of the Respondent, is an abusive registration.

Approach where there has been no reply

There is a long-established approach to be taken by experts in cases where there is no reply to a complaint. The Complainant must make out at least a prima facie case that the domain name is an abusive registration. Such a case demands a reply. If there is no reply, the complaint will ordinarily succeed. So the question becomes whether the Complainant has established a prima facie case.

Complainant’s Rights

The Complainant has been trading as Welconstruct for many years and holds a trademark registration in that name. It evidently has both registered and unregistered rights in the name Welconstruct. Ignoring the .co.uk suffix as a generic feature of Nominet’s domain name registry, the domain name at issue here is almost identical, but contains a double “l” in place of the single “l” of the Complainant’s name.

I conclude that the Complainant has rights in respect of a name which is similar to the domain name.

Abusive Registration

The Dispute Resolution Service rules define an 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.

The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. These factors include circumstances indicating that the Respondent
(i)	registered the domain name primarily for the purpose of unfairly disrupting the business of the Complainant
(ii)	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

These are squarely the claims of the Complainant and I can take each in turn.

No direct evidence is offered of the Respondent’s reasons for registering the domain name. The domain name is, however, similar to the name in which the Complainant has rights. Given that the Respondent has no obvious connection with either name but is allowing the domain name to be used to present links to competitors of the Complainant, it seems likely that the Respondent had the Complainant’s trading name in mind at the point of registration and that the domain name was chosen on the basis that it offers access to some business that would otherwise have gone to the Complainant.

There is no direct evidence, either, that the Respondent’s use of the domain name has caused actual confusion. But the list of factors in the Policy is not exhaustive and, given the nature of the links on the parking page, there is evidently a high risk that confusion will be occurring.

The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. The only factors that might be relevant here are where

i)	before being informed of the Complainant’s cause for complaint, the Respondent has

(a)	used the domain name in connection with a genuine offering of goods or services, or

(c)	made legitimate non-commercial or fair use of the domain name
or where
(ii)	the domain name is generic or descriptive and the Respondent is making fair use of it.

The Respondent does appear to be using the domain name in connection with a genuine offering of goods or services, but that does not help it much here because the offering looks as though it might rely on the kind of confusion that may be evidence of an abusive registration. Whether the use of the domain name is “fair” rather begs the question, because that is effectively the point for me to decide. Conceivably, it is possible to argue that the domain name is generic. But it is not an obviously strong case and, in any event, for this factor to have weight the Respondent would need to be making fair use of the domain name. Again, that is effectively the very question before me.

It seems clear that the Respondent is taking advantage of the Complainant’s rights in a name similar to the domain name. The question remains whether that advantage is “unfair” - or whether the Respondent is just legitimately exploiting a commercial opportunity. In my judgement it is significant that the Respondent has no obvious interest in either the domain name or the name in which the Complainant has rights - beyond the possibilities created by the Complainant’s goodwill in Welconstruct. The potential for diversion of the Complainant’s trade is evidently great. Given that, I am satisfied that the Respondent’s exploitation of this commercial opportunity can only involve taking unfair advantage of the Complainant’s rights.

At the very least, the Complainant has established a prima facie case that the domain name was registered and has been used in a manner which took unfair advantage of the Complainant’s rights and that this is therefore an abusive registration. In the absence of a reply to that case, the complaint succeeds.

8.	Decision

I find that the Complainant has rights in respect of a name which is similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.

In the light of that, I direct that the domain name be transferred to the Complainant.

Mark de Brunner

24 August 2006