ABP v Cordell [2005] DRS 03371 (03 June 2005)

ABP
-  v  -
Mr. Pete Cordell

Nominet UK Dispute Resolution Service

DRS 03371

Decision of Independent Expert

1.  	Parties
	Complainant:		ABP
Country:		United Kingdom

Respondent:		Mr. Pete Cordell
Country:		United Kingdom
		
2.	Domain Name
<cargoflow.co.uk>
	(“the disputed Domain Name”) 

3.	Procedural Background:
The Complaint was lodged with Nominet UK (“Nominet”) in full on April 18, 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on April 21, 2005, giving him 15 working days within which to lodge a Response. No Response was filed and so Nominet did not initiate its Informal Mediation procedure. On May 19, 2005 the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet’s Dispute Resolution Service Policy (“the Policy”).

On May 24, 2005 the undersigned, Mr. David H Tatham (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality and he was selected by Nominet as the Expert for this case on the same day.
4.	Outstanding Formal/Procedural Issues (if any)
There are no outstanding formal or procedural issues, but see my Preliminary Remarks on the identity of the Complainant under Discussion and Findings below.

5.	The Facts
The Complainant
Attached to the Complaint were copies of the following:
A registration certificate for the UK trade mark ABP CONNECT CARGOFLOW No. 2356383 dated February 20, 2004;
A letter from Messrs. Taylor Wessing dated September 13, 2004 with which the above registration certificate was sent to Associated British Ports Holdings Plc;
A Press Release dated May 5, 2004 headed “NEW CARGOFLOW BRAND STAMPS DISTINCT IDENTITY ON ABP CONNECT BUSINESS WING”;
A Press Release dated May 27, 2004 headed “ABP CONNECT LAUNCHES HUMBER-BASED LABOUR BUSINESS”;
A Press Cutting from ‘Lloyd’s List’ dated May 5, 2004 and headed “ABP arm creates stevedore division”;
A Press Cutting from ‘Commerce & Industry’ dated July 2004 and headed “CARGOFLOW STAMPS DISTINCT IDENTITY ON ABP”.
	
From the above it can be gleaned that the full name of the Complainant is probably Associated British Ports and that in May 2005 its Services Division, called ABP Connect, re-branded its cargo-handling and stevedoring activities at the ports of Southampton and Immingham under the name ABP Connect Cargoflow. The intention, according to one of the press releases, was to distinguish ABP’s port-based cargo-handling and stevedoring operations from the rest of the business and to establish ABP CONNECT CARGOFLOW as an independently-recognised brand.
  
The Respondent
	The Respondent did not file a response so nothing is known about him.

6.	The Parties’ Contentions

The Complainant’s Contentions
The whole of the Complainant’s case is contained in a single paragraph in the Complaint which was written in capitals and which, complete with its original punctuation, reads as follows –
	
“This domain name was originally registered by Mr Nicolas Hogg, on 30th April 2004 whilst he was employed (via an agency) to work at ABP Connect in Immingham Wiltshire. He registered this domain name using information only available at that time to employees, as the official press release concerning the formation of Cargoflow as a brand of ABP Connect and thus Associated British Ports Holdings PLC, was not issued until 5th May 2004. We believe this proves he used information available to employees which did take unfair advantage of the situation. We ourselves tried to register this domain name between the time Mr. Hogg registered the name and the time of the official press release. Mr Hogg no longer worked for the company, and we believe that his reluctance to transfer is the action of a disgruntled former employee. Despite asking for this domain name to be made available to us, we understand that this domain name has now been transferred to another individual, in the Cleethorpes area and a price of £2000 is being asked for transfer we believe this to be unfair, and that Mr Hogg registered the name to cause maximum (sic) inconvenience to ABP Connect and the new Cargoflow branding, with the intention of profiting from his efforts. The name CARGOFLOW is a registered trade mark that we have used since 20th February 2004, in respect of business classes 37 (vehicle parts fittings) and 39, (warehousing transport and logistics)”

The Response
As has already been pointed out, there was no Response.

7.	Discussion and Findings
Preliminary Remarks
At the outset, it is necessary to establish who exactly is the Complainant, for there is a confusion of four different names. The Complaint has been lodged in the name of ‘ABP’, but the trade mark is registered in the name of ‘Associated British Ports’, the letter from the solicitors forwarding the trade mark registration certificate was addressed to ‘Associated British Ports plc’, and the press releases were issued in   the name of ‘ABP Connect’. 

In the Complaint it is said that the original registrant of the disputed domain name (Mr. Nicolas Hogg) “was employed (via an agency) to work at ABP Connect” and this entity is described, in both press releases as “the value-added services division of Associated British Ports”.  Thus, it would seem that ABP Connect is not a legal entity in its own right but a trading arm of Associated British Ports, who owns the trade mark registration. (The omission of ‘plc’ is not thought to be significant.) So, it seems that this is the company which ought to have filed the Complaint. 

It is not difficult to work out that the actual Complainant, ABP, is an acronym for Associated British Ports, and the Expert is therefore prepared to accept that the Complaint has been properly filed, but if the Complainant had provided more information, his task would have been made easier, and it is perhaps worth pointing out that in Nominet’s Guidance to Complainants on the Rights in a Name or Mark, it is said, at point 5: “If you are claiming rights in an acronym (e.g. Automaton Example Ltd claiming rights in AEL.co.uk) you should provide specific evidence of why that acronym is associated with you, and not merely a generic jumble of letters.” 

General
	According to paragraph 2 of the Policy, in order to succeed in a Complaint, the 	Complainant has to prove to the Expert that –

i   the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and
	ii  the disputed domain name, in the hands of the Respondent is an Abusive
 	Registration. 

The absence of a response from the Respondent does not mean that he has no answer to the Complaint. The Complainant must still make out its case.

	Complainant’s Rights
The Complainant claims to have rights in the name CARGOFLOW and that this name is a registered trade mark, but this latter claim is wrong, for in fact the trade mark, in full, consists of the words ABP CONNECT CARGOFLOW. 

It is customary, when making a comparison under the Policy, to disregard the suffix ‘.co.uk’. Therefore, the question which the Expert has to decide is whether the names CARGOFLOW and ABP CONNECT CARGOFLOW are similar, because clearly they are not identical. The disputed domain name  consists of a single word, while the trade mark has three, one of which is identical to the disputed domain name. But this word appears at the end of the mark, and the beginning of a trade mark is generally considered to be the most important, because that is the part which the consumer sees first and which he is most likely to retain in his memory. If this was a comparison of two trade marks, the Expert’s conclusion would be that they are not confusingly similar. 

However it has been accepted in a number of Decisions under the Policy that the level of rights in respect of a domain name or mark is a hurdle which has been set at a relatively low level, and in  this case there are a number of other relevant circumstances. For example, both of the press cuttings refer to the Complainant’s new Division as ‘Cargoflow’ so perhaps this is how the new trading entity is viewed by the outside world; also it could possibly be argued that the true meaning of the trade mark is actually ABP Connect’s CARGOLFLOW, and even though this flies somewhat in the face of trade mark law, one does look for the dominant feature in a composite mark such as that of the Complainant, and in this case the dominant part of the mark is, probably, the only invented word in it, namely CARGOFLOW; furthermore, in a Google search for the word ‘Cargoflow’ conducted by the Expert, which was confined to UK entries only, there were 31 entries of which only 5 did not refer either to the Complainant or to ABP Connect.

The Policy defines ‘Rights’ as including, but not limited to, “rights enforceable under English law. However a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business.” Under English law, rights in a name can of course be established through a trade mark registration, but in addition unregistered rights can confer an entitlement to bring a claim for passing-off, provided the relevant purchasing public associate the name as being distinctive of the goods or services concerned. The word ‘Cargoflow’, whilst arguably descriptive of a certain sort of activity, is not descriptive of the whole of the Complainant’s business, and the Expert believes that even in the 12 months since the Complainant undertook its re-branding, it could probably be able to assert some rights in the name against a third party under English law, although these may not yet be particularly strong. 

Thus, on the balance of probabilities, the Expert has concluded that the mark in which the Complainant has rights, and the disputed domain name are indeed similar.

	Abusive Registration
The only significant accusations levelled by the Complainant in his very short Complaint is that the disputed Domain Name is ‘unfair’ and that the Respondent took ‘unfair advantage of the situation’. He does not specifically describe the disputed Domain Name as being an Abusive Registration but that, presumably, was the purpose of his Complaint.

An ‘abusive registration’ is defined in paragraph 1 of the Policy as being “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.” 

Paragraph 3 of the Policy sets out a number of factors that define what can be an Abusive Registration, and the following would appear to be relevant in this case:

3(a) A non-exhaustive list of factors which may be evidence of an Abusive Registration is as follows:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
  A.  for the purpose of selling, renting or otherwise transferring the Domain name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain name;
  B.  as a blocking registration against a name or mark in which the Complainant has rights; or

Very little evidence in support of the Complainant’s case has been filed. There is, for example, no copy of Mr. Hogg’s contract of employment, nor are there copies of any correspondence between the Complainant and anyone demanding £2000 for a transfer of the name. The Complainant merely makes a number of statements concerning the Respondent and the circumstances in which the disputed Domain Name was registered, none of which is supported by any hard evidence.

We only have the Complainant’s word for all of these accusations, and there is no obligation on the Expert to accept a Complainant’s allegations or even to follow them without question, but it is customary in a dispute that once a Complainant has established a prima facie case, then the onus is on the Respondent to dispute it. In this case, the Complainant has levelled certain accusations and the Respondent has failed to make any reply. The Expert is prepared to accept that a case has – just – been made out by the Complainant, and he therefore has no alternative but to accept the Complainant’s assertions, even though they are unsupported.

	So, if one accepts that the original Registrant of the disputed domain name, Mr. Nicolas Hogg, was indeed employed by the Complainant when the name was first announced, and if one accepts that he used confidential information when registering the disputed Domain Name, then clearly it could be said that he took unfair advantage of the Complainant’s rights. Additionally, if one were to accept that £2000 was indeed asked in return for a transfer of the name, then this too would be clear evidence that the disputed domain name is abusive. Therefore, in the absence of any word from the respondent, the Expert has no alternative but to find that the disputed Domain name is abusive. 

8.	Decision
The Expert finds that the Complainant has Rights in the name ABP CONNECT CARGOFLOW and that this is similar to the disputed Domain Name.

The Expert further finds that the disputed Domain Name is an Abusive Registration in the hands of the Respondent. 

The Expert therefore directs that the disputed Domain Name <cargoflow.co.uk> be transferred to the Complainant.

………………………………..                                                                                        
David H Tatham
June 3, 2005