WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Stewart Nicoll trading as BLC Cleaning Services v. Strategy Plus

Case No. D2007-1740

 

1. The Parties

The Complainant is Stewart Nicoll trading as BLC Cleaning Services, of United Kingdom of Great Britain and Northern Ireland, represented by Tods Murray LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Strategy Plus, of United Kingdom of Great Britain and Northern Ireland, self represented.

 

2. The Domain Name and Registrar

The disputed domain names <blc-cleaning.com> and <blc-cleaning-services.com> are registered with Tucows Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2007. On November 29, 2007, the Center transmitted by email to Tucows Inc., a request for Registrar verification in connection with the domain name at issue. On November 30, 2007, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2007. The Response was filed with the Center on December 16, 2007. The Center appointed Clive Duncan Thorne as the sole panelist in this matter on January 4, 2008. The Panel finds that it is properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules in paragraph 7. The decision due date was subsequently extended from January 18 to January 25, 2008.

 

4. Factual Background

The Complainant has operated a cleaning services business since 1994, trading under the name BLC Cleaning Services. The Complainant does not have a registered trademark for this name but submits that it has developed and acquired common law trademarks rights which are relevant for the purposes of this Complaint.

The Complainant submits that it has developed a reputation and goodwill during its 13 year trading under the name BLC Cleaning Services. This includes the creation and use of a distinctive BLC Cleaning logo which was created on behalf of the Complainant in 1999 and which the Complainant has used continuously since. The logo incorporates the BLC element of the name along with a logo.

The Complainant gives evidence of the use of his name and logo including the following:

(i) Business literature including but not limited to business cards, business flyers, compliments slips and brochures; on all of which the name and logo operate as a badge of origin. Examples are set out in Annex 5 to the Complaint.

(ii) On the vans used by the Complainant. A photograph of one of the Complainant’s vans is Annex 6 to the Complaint.

(iii) On the employee uniforms which the Complaint has developed. A photograph is set out at Annex 7 to the Complaint.

(iv) Advertising in local and national directories under the name of BLC Cleaning Services and use of the BLC logo. The advertising includes The Thompson Directory, The One Directory and the BT Phone Book. The Complainant Annexes copies of receipts and invoices for such advertising at Annex 8 to the Complaint.

The Complainant carries out business in Edinburgh, Glasgow, Stirling and Fife and through central Scotland under the BLC Cleaning Services name. His annual turnover for 2005 and 2006 has been 83,027.00 and 81,219.00 respectively. Copies of the 1995, 1999, 2000, 2001, 2004, 2005 and 2006 accounts are provided as Annex 9 to the Complaint. The projected turnover for the Complainant for 2007 is in the region of 90,000.

The Complainant asserts that he has invested significantly in advertising in developing goodwill and reputation in the name BLC Cleaning Services. Since 2000 he has spent nearly 19,000 on advertising which represents an investment of over 5% of turnover for this period. The Complainant submits that the use of BLC Cleaning Services is as a badge of origin.

The history of the dispute is that the Complainant entered into an agreement with the Respondent dated August 30, 2004 (hereinafter the Agreement) in relation to the provision of certain web related services which included registering on behalf of the Complainant the domain names <blc-cleaning.com>, <blc-cleaning-services.com>, <window-cleaning-scotland.com> and <graffiti-removal-scotland.com>. A copy of the Agreement is attached at Annex 2 to the Complaint. It can be noted that the first two of these domains names reflects the Complainant’s business names.

The Agreement provided a general right of termination for the Complainant subject to payment of minimum service period sums. No specific procedure for termination was prescribed and it should be noted that the Agreement was silent as to future ownership of the domain names once the Agreement terminated. There is no express provision in the Agreement dealing with this.

On or around August 6, 2007 the Complainant telephoned the Respondent to advise that he wished to terminate the Agreement as he no longer wished to continue with the Respondent’s services. The Complainant states that he wished to use new website service providers who were going to help him with his on-line booking for his business. He asked the Respondent to transfer the domain name <blc-cleaning.com>. The Respondent refused and the Parties then entered email correspondence copies of which are set out at Annex 11 to the Complaint.

The Complainant then instructed his solicitors Tods Murray LLP. Copies of the correspondence between Tods Murray LLP and the Respondent are set out in Annex 3 to the Complaint.

Although no request has been made to transfer any of the other domain names registered by the Respondent under the Agreement (as the Complainant initially only requested transfer of the domain name <blc-cleaning.com> the Complainant in its Complaint seeks transfer of both <blc-cleaning.com> and <blc-cleaning-services.com>. The reason for this is that both are relevant to the Complainant’s business and incorporate names in which he had established rights. The Complainant submits that the arguments and contentions in the Complaint apply equally to both domain names in dispute.

In its Response the Respondent refers to the Agreement. Its interpretation of the Agreement is that as part of the domain consultancy services offered the Respondent made available the four domain names on an annual basis for use in the promotion of the Complainant’s business. It accepts that this included the creation and registration of the domain names <blc-cleaning.com> and <blc-cleaning-services.com>.

The Respondent also relies upon a clause in the Agreement that any renewal of any domain name and expiry of the annual term will have to be through the Respondent if the Complainant continued to wish to use it. The Respondent relies upon the following terms:-

“Hosting

Hosting is provided for a minimum of 12 months. There is no refund in the event of cancellation during the term.

Domain Registration

This service is provided for one year. Re-registration of the domain is through the Provider.”

The Respondent states that under the terms of the Agreement, the domain names are available for use from the Respondent subject to payment of the requisite fee so that if the Complainant required “a continuance of that use” they would have “first refusal in effect”.

 

5. Parties’ Contentions

A. Complainant

1. The Complainant contends that the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It relies upon the evidence of common law trademark rights it has acquired through its trading and promotion of its business. It submits that the domain names in dispute are “clearly identical or at least confusingly similar to that name”.

2. The Respondent has no rights or legitimate interests in respect of the domain names. The Complainant relies upon the terms of the Agreement and submits that the Agreement does not entitle the Respondent to maintain any interest in the domain names in dispute. It submits that the reference on page 2 of the Agreement that “re-registration of the domain is through the provider” simply describes the procedure for renewal of the domain names during the currency of the Agreement. It submits that the Respondent’s submission that the Complainant was continuing to use and pay for the Respondent’s services in order to use the domain names is not a term of the Agreement.

It submits that this dispute is not one where the Panel is required to determine issues of contractual interpretation. Rather it submits that what was at issue was the ability of the business providing domain name registration and other web services to claim rights to a domain name which they have been paid to register on behalf of a customer.

3. The domain name is registered and is being used in bad faith. The Complainant concedes that the initial registration of the domain names was not in bad faith as this was done pursuant to the Agreement. However, registration became bad faith when the Agreement was terminated and the Respondent refused to transfer the domain names. It accepts that the circumstances of this Complaint do not fit precisely within any of the bad faith situations described in paragraph 4(b) of the Policy.

B. Respondent

1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. In summary the Respondent accepts that the domain names are “obviously similar to the trading name of the Complainant that that reflects the acceptance of our researchers and advice as to available use from the Respondent as registrants”.

2. The Respondent has rights and legitimate interests to use the domain names. The Respondent relies upon the terms of the Agreement. In summary, the Respondent interprets the Agreement on the basis that the Complainant will have had first refusal for the use of the domain names but was also not bound to make use of the domain names nor to make payment for unused domain names after any 12 month expiry period. Any domain names unused or unpaid for would remain as part of the stock of the Respondent to be applied elsewhere yet appropriate. It submits that the Complainant is attempting to assert non-existing rights over the domain names registered.

C. The domain name was registered and was being used in bad faith

1. The Respondent rejects the inference that the domain names were registered and are used in bad faith. It submits that the domain names were offered to the Complainant for use (together with the two other domain names). It points out that the two other domain names were subject to continued use upon payment of the requisite fee.

2. The Respondent states that it outlined precisely to the Complainant and to its solicitors that all that they were required to do was to provide the main servers of the new chosen web developers and they will amend the main records accordingly so that the new developers have access to the domain names. This will result in the Respondent remaining registrants of the domain names whilst providing a license for the new website to be developed without hindrance.

3. It submits that the Complaint is misconceived, frivolous, vexatious and without merit and should be rejected.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel has considered the evidence of the Complainant and its submission that it has developed common law trademark rights in the marks relied upon. The Panel accepts this evidence which is not challenged by the Respondent. It therefore finds that the domain names in dispute are similar to the trademark of the Complainant i.e. BLC CLEANING SERVICES.

Accordingly, the Panel finds for the Complainant in respect of this element.

B. Rights or Legitimate Interests

At the heart of this element is the interpretation of the Agreement. This is because the Agreement governed the relationship between the Complainant and the Respondent. It provided the basis for the creation and use of the domain names in dispute as well as the two other domain names which were registered on behalf of the Complainant. In the Panel’s view it is not possible to determine this element of the case without reaching a view as to the interpretation of the Agreement and in particular entitlement to rights in the domain names upon termination of the Agreement.

The Panel notes that the Complainant does not ask the Panel to determine issues of contract interpretation. This is on the basis that the Complainant submits that there are no such issues. Rather it submits is that what is at issue is the ability of a business providing domain name registration and other web services to claim rights to a domain name which they have been paid to register on behalf of a customer. He argues that this is clearly behaviour which falls within the remit of the Panel and under the Policy.

The Panel disagrees. The Panel is required to make findings as to both the Respondent’s rights or legitimate interests in respect of the domain names and whether or not the domain names are registered and are being used in bad faith. In the Panel’s view the Agreement is to a very large extent determinative of these issues. The Panel is also conscious that it is not well equipped to determine the interpretation of such agreements and in particular as may be required in this case, to imply terms into such agreements in order to give them business efficacy.

In the present case, there is a clear conflict between the Parties as to the Complainant’s entitlement to the domain names upon termination of the Agreement. If the Complainant is right in its contentions the Respondent is not entitled to maintain any interest in the domain names after termination of the Agreement. A contrary interpretation is provided by the Respondent to the effect that the Agreement provides, upon payment of the requisite fee, essentially a right of first refusal for the Complainant to the domain names after termination.

The Complainant makes reference to an earlier administrative panel decision of Trustway Homes, Inc. v. The PC Helpgroup Inc, WIPO Case No. D2004-1010 which it alleges contains facts similar to those in the present Complaint. The Panel has looked at that Decision. It has not found the terms of agreement between the parties in that Decision to be set out. The basis of the Complaint which appeared to be asserted was that the Respondent is no longer authorised to act on the Complainant’s behalf. The Complainant also contended that it had never conducted business under the Trustway name and that the Respondent obtained the domain name at the Complainant’s request and for the sole benefit of the Complainant.

In the present case the circumstances are somewhat different in that there is an agreement governing the relationship between the Parties and it is accepted that the Complainant subject to the terms of the Agreement and upon payment of the renewal fee is entitled to first refusal of the domain names.

In the present case however the Panel does not consider it necessary to determine in light of its subsequent finding whether the Complainant has succeeded in showing that the Respondent did not have a right or legitimate interest in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant contends that the registration became bad faith after the Agreement was terminated and the Respondent refused to transfer the domain name. The Respondent submits that its conduct is governed by the terms of the Agreement between the Parties. The Complainant relies upon the earlier administrative panel decision; Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850, as support for the proposition that bad faith registrations can occur after an initial good faith registration. The Panel accepts that as a matter of principle what may at first blush have appeared to be a good faith registration may be ‘coloured’ by the subsequent conduct of a party in for example breaching the specific terms of an agreement (such that as a matter of fact, the original registration itself could be found to have been in bad faith, see R&M Italia SpA, Tycon Technoglass Srl v. EnQuip Technologies Group, Inc., WIPO Case No. D2007-1477. However, in the present case the Panel cannot accept that what would appear to be a bona fide reliance upon the terms of the Agreement between the Parties constitutes evidence of bad faith where the Parties differ in their interpretation of the Agreement. The Panel further notes that this rather entangled matter may be one better suited to a determination before a court which is better able to consider and resolve the conflicting evidence. The Panel finds that the domain names in dispute were not registered or used in bad faith.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Clive Duncan Thorne
Sole Panelist

Dated: January 25, 2008