whistleblower.co.uk (2009): Complainant fails to prove that registrant of domain name had sufficient knowledge of it or its rights
Background
Whistle Blowers Press Agency Ltd ("Whistle Blowers UK") provided news and media services since about March 2007 when it registered the domain name whistleblowers.uk.com and set up a website with an "under construction" notice and contact details. Whistle Blowers UK also owned two UK registered trade marks for WHISTLE BLOWER (in Classes 35, 42 and 41) dated 1997 and 2008 respectively.
Commercial Legal UK Ltd ("Commercial Legal UK") has offered investigative media research and journalism services since 1989. It had a licence to use the trade mark WHISTLE BLOWER since early 2005 and also owned the domain name whistleblowers.co.uk, acquired in 2009.
In 2004 Ketts News Service Ltd ("Ketts"), an independent press agency, set up a website 'cash4yourstory' which enabled the public to supply their true stories to the media. In January 2008, Ketts bought the domain name in dispute - whistleblower.co.uk - from a third party company (interestingly named "Ctrl-Alt-Del IT Ltd") for £2,000.
Whistle Blowers UK and Commercial Legal UK filed a domain name complaint under Nominet's Dispute Resolution Service seeking transfer of the disputed domain name whistleblower.co.uk. To win the domain name dispute, Whistle Blowers UK and Commercial Legal UK had to prove that they had rights in respect of a name or mark which was identical or similar to the domain name and that the domain name, in the hands of Ketts, was an abusive registration in that it took unfair advantage of and/or was unfairly detrimental to their rights.
The first domain name dispute decision
The expert who decided the "first instance" (ie original) domain name dispute found in favour of Ketts. He decided that Whistle Blowers UK and Commercial Legal UK had not proved that Ketts registered the domain name in full knowledge of them or their rights. This finding was based on a leading Nominet appeal decision verbatim.co.uk (DRS 4331) where the appeal panel said that it is normally necessary for a complainant to show "as an opener" that the respondent had that knowledge when it registered the domain name or at least when it started using the domain name in the manner objected to by the complainant.
The appeal
Whistle Blowers UK and Commercial Legal UK appealed. They argued, amongst other things, that Ketts must or should have carried out searches at Companies House, the Intellectual Property Office and whois databases, which would have revealed their respective company names and domain name registrations. They said that the parties operated in a relatively niche area. They argued that Ketts had been guilty of trade mark infringement and "passing off" and that use of the domain name had led to customer confusion.
Ketts begged to differ. It maintained that at the time of its registration of the domain name (in January 2008), it had no knowledge of either Whistle Blowers UK or Commercial Legal UK. Ketts said that it became aware of them only when it received a solicitors' letter, nearly a year after is started active use of the website. Ketts argued that it registered the domain name for its generic qualities and had seen no reason to carry out trade mark or company searches. It had undertaken domain name availability searches but had found nothing of relevance.
Trademark rights
There was no dispute that the Whistle Blowers UK and Commercial Legal UK had rights in the term WHISTLE BLOWER, based on the registered trade marks and that the trade mark was similar to the disputed domain name - the domain name suffix is ignored for these purposes).
Admission of new evidence
The appeal panel allowed Whistle Blowers UK and Commercial Legal UK to submit new evidence showing that a person who had provided a witness statement in support of Ketts' original defence was not an independent freelance journalist (as had been claimed) but was in fact a former director of Ketts. Although the panel acknowledged that Nominet's Dispute Resolution Service was not normally an appropriate forum for resolving disputed issues of fact, it was nonetheless clear that Ketts had intentionally set out to mislead the expert in the original domain name case.
The appeal panel said that it deplored such conduct, that itwould disregard the original statement and would treat any other evidence from Ketts with considerable scepticism. Nonetheless, Whistle Blowers UK and Commercial Legal UK still had to prove their case on the balance of probabilities.
Abusive registration is not the same as trade mark infringement or passing off
Whistle Blowers UK and Commercial Legal UK claimed that Ketts had been guilty of trade mark infringement and passing off. These are legal causes of action which a party can pursue in court. In the case of trade mark infringement it is based on a registered trade mark. In the case of passing off it is based on unregistered rights acquired based on extensive use of a name.
Complainants unfamiliar with Nominet's Dispute Resolution Service often make these kinds of assertions but, as the appeal panel pointed out, the fact that registration and/or use of a domain name may constitute trade mark infringement or passing off does not necessarily mean that the domain name is an abusive registration. There is certainly a potential overlap but it is critical to address specifically the question of abusive registration based on Nominet's Dispute Resolution Service Policy.
Failure to supply evidence demonstrating likely knowledge
The key issue in the case was whether Whistle Blowers UK and Commercial Legal UK had provided sufficient evidence to show that Ketts must have known of them or their rights. The appeal panel concluded that they had not (despite disregarding Ketts' evidence on the point).
Amongst other things, while Whistle Blowers UK and Commercial Legal UK had filed papers with large amounts of irrelevant material such as lengthy details of Data Protection Act registrations, they had provided no real evidence about the scale of their activities such as to show that Ketts must have had them in mind when it registered the domain name in dispute. For example, they did not provide evidence to show when their own website changed from being an "under construction" site or indeed provide any information as to the scale of their activities and profits.
"Take home"
An obvious factor is to be very wary of submitting evidence designed to deceive a Nominet expert (though in this case, Ketts were fortunate that that wasn't sufficient to tip the balance in the complainants' favour). Also, bear mind that knowledge of the complainant's rights is usually a key factor in cases under Nominet's Dispute Resolution Service. Mere assertions about the level of knowledge are not sufficient. Supporting evidence must be provided. And the more the generic the domain name, the more work that a complainant needs to do.
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