firstrung.co.uk (2009): The mere fact that confusion has occurred and is likely to occur is not enough.
Background
Both parties provided online advisory services primarily directed to people seeking to get themselves on the first rung of the UK property ladder. This domain name dispute was part of a wider trademark dispute between the parties.
Mr. Holmes registered firstrung.co.uk - the domain name in dispute - in November 1999. His company Firstrung (UK) Limited registered the domain name 'firstrung.com' in April 2003.
FirstRungNow Limited ("FirstRungNow") began trading from a website at firstrungnow.com in November 2003. Between 2003 and 2004 FirstRungNow generated much media publicity.
Although it wasn't clear exactly when Firstrung UK started using firstrung.co.uk, this was likely to have been in about June 2005 when Mr. Holmes emailed FirstRungNow requesting that it cease naming its forum 'firstrung' because it may cause confusion with firstrung.co.uk.
The following year, FirstRungNow applied to register FirstRung as a UK trademark. Mr. Holmes followed with an application to register FIRSTRUNG as a community trademark. Both parties opposed each others' applications and both succeeded.
FirstRungNow then filed a complaint under the Nominet UK Dispute Resolution Service seeking transfer of the domain firstrung.co.uk.
To win the domain name dispute, FirstRungNow needed to prove it had rights in respect of a name or mark which was identical or similar to the domain name and the domain name, in the hands of Mr. Holmes, was an abusive registration.
The domain name dispute appeal
The expert in the initial Nominet domain dispute case rejected the case. FirstRungNow appealed the decision.
Procedural matters
Both parties tried to submit additional evidence by way of a non-standard submission but the appeal panel rejected both applications, holding that the non-standard submissions did not add anything helpful.
FirstRungNow also objected to "without prejudice" correspondence between the parties being submitted as evidence. The panel declined this request because it had been used in the UK opposition hearing relating to FirstRungNow's trademark application and indeed referred to in the decision. It was also material to the domain name dispute decision. Under the Nominet Dispute Resolution Policy, without prejudice correspondence can only be excluded if it was generated within Nominet's informal mediation or if it is in the interests of justice to exclude it.
Trademark rights
It was not in dispute that FirstRingNow had rights in the name "FirstRungNow" Limited deriving from its use since 2003 and from its registered device trademark which included the term.
Abusive registration
Because Mr. Holmes registered the domain name in dispute long before FirstRungNow's use of its FirstRungNow name, the issue was whether Mr. Holmes had 'subsequently used the domain name in a manner which took unfair advantage of or was unfairly detrimental to FirstRungNow's rights'. Mr. Holmes claimed he had started using the domain name in 2004, but could not produce any evidence of this (he used 'robot txt', a device which made it impossible for web archive devices to archive his site). The only evidence in fact came from FirstRungNow, which showed Mr. Holmes' use of the domain name for a website from at least 2005 onwards.
The case revolved around paragraph 3aii of the Nominet DRS Policy which provided that the following was one of the factors which may be evidence that a domain name is an abusive registration: "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 appeal panel acknowledged that there had been substantial customer confusion due to the similarity of the parties' respective domain names and fields of business. However, to be an abusive registration, there had to be an element of wrongdoing by Mr. Holmes. FirstRungNow had failed to show, on the balance of probabilities, that Mr. Holmes' use of the domain name in dispute was anymore than a 'reasonable desire to use a descriptive term commonly used in the field' of property'. Accordingly, the panel dismissed the domain name appeal although it did express some misgivings about the failure by Mr Holmes to produce evidence showing when he started using the domain name.
The appeal panel decided that FirstRungNow was not a reverse domain name hijacker (because it considered that it truly believed in its cause).
The panel also observed that Nominet's domain name dispute resolution service is not the forum for resolving wider complex disputes between parties.
"Take home"
Complainants under Nominet's DRS often assume that they have a case for abusive registration simply because of the occurrence of some customer confusion. As this case illustrates, that is wrong. Everything depends on the circumstances of registration and use of the domain name and, in particular, on the presence of an element of wrongdoing. In cases such as this, where the domain name is of a generic nature and the parties are engaged in a similar business referable to the generic term, this is not an easy job for the complainant, on whom the burden rests.
For a free initial chat and more information about our domain name legal advice and services, call Adam Taylor of Adlex Solicitors on +44 (0) 207 317 8404 or email.