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Nominet UK Dispute Resolution Service

DRS 00336

Premier Finance Services Ltd -v- Premier Exchange Finance Ltd (In Liquidation)

Decision of Independent Expert

1. Parties:

   Complainant:	Premier Finance Services Ltd 1A Corrie Road Addlestone Surrey
   Postcode:	KT15 2HT
   Country:	GB
   Respondent:	Premier Exchange Finance Ltd (In Liquidation) C/O Begbies Traynor The Old Exchange 234 Southchurch Road Southend-On-Sea Essex
   Postcode:	SS1 2EG
   Country:	GB

2. Disputed Domain Name:

   premierfinance.co.uk

3. Procedural Background:

   A complaint ("the Complaint") was entered onto its system by Nominet on 5 April 2002. It was received in full by Nominet on 8 April 2002. Thereafter matters did not proceed in such a straightforward manner.

   The Registrant of the disputed domain name is currently identified on Nominet's records as Premier Finance Ltd. As a search of the register of companies confirms, no such company exists. It would I think be helpful at this stage to set out briefly a short statement as to the status of the Respondent.

   The intended Registrant of the disputed domain name was a company by the name of Premier Exchange Finance Ltd. However as a result of what has been claimed to have been an administrative error of that company's agent, the name of that company did not appear on Nominet's records, but rather that of the non-existent company Premier Finance Ltd.

   The current status of Premier Exchange Finance Ltd, is that the company is in Liquidation and David Hudson of Begbies Traynor has been appointed as Liquidator. It is alleged that prior to the liquidation the disputed domain name was in fact sold to the Trustees of Malatani Trust, trading as Premier Exchange Finance/Premier International Trading.

   On 8 April 2002 (e.g. shortly after the Complaint was filed) Nominet received a request from Premier International Trading together with a completed Transfer of Domain Name Registration Form requesting the transfer of the disputed domain name from Premier Exchange Finance Ltd to itself. Because the form was not executed by the recorded Registrant, Nominet did not effect a transfer.

   On 11 April 2002 Nominet sent a copy of the Complaint to Premier International Trading, who appeared to be operating a website using the disputed domain name, and to Premier Finance Ltd c/o Begbies Traynor. I assume that Begbies Taylor became known to Nominet when dealing with the above-mentioned transfer request.

   On or about 24 April 2002 a Response was received on behalf of Premier International Trading. It claimed that Premier International Trading had acquired the assets of Premier Exchange Finance Ltd and that as such it was the proper Respondent to the Complaint. The Response was forwarded by Nominet to the Complainant on 25 April 2002.

   On the same day Nominet realised that an error had occurred, namely that they had accepted a Response from a party who was not in fact the Registrant and as such not the correct Respondent. It therefore notified the Complainant of the error said that it would have to investigate the claim being made by Premier International Trading in its Response document, namely that it had acquired the disputed domain name from Premier Exchange Finance Ltd and that as such it should be the Respondent to the Complaint.

   In short Nominet were faced with a situation where the named Registrant did not exist; the correct entity that had registered the disputed domain name was in liquidation; and a further party was claiming to have acquired the disputed domain name.

   On 26 April 2002 Premier International Trading submitted what they claimed to be evidence supporting their claim to have acquired the disputed domain name. Nominet challenged the validity of that evidence and concluded that in any event insofar as the transfer request was received after the Complaint, the Dispute Resolution Service Policy ("the Policy") "Transfers During a Dispute" (Section 12(a)(i)) prevented a transfer from taking place.

   On the same day the Liquidator of Premier Exchange Finance Ltd notified Nominet in writing that he did not object to the transfer of the disputed domain name to Premier Finance Services Ltd ("the Complainant") and completed a Transfer of Domain Name Registration Form. To accept the transfer Nominet determined that they would have to amend their database to show the correct Registrant as Premier Exchange Finance Ltd, rather than the non-existent Premier Finance Ltd. In order to do so they contacted the original registering agent, and sought an indemnity from the agent for any liability that may arise to Nominet in respect of the database correction. The indemnity was forthcoming on 1 May 2002.

   On 3 May 2002 a representative of Premier International Trading wrote to Nominet and criticised its decision not to allow the transfer to Premier International Trading. On the same day Premier Finance Services Ltd submitted a completed Transfer of Domain Name Registration form.

   On 8 May 2002 a further letter was received from Premier International Trading again making complaint that Nominet were refusing to transfer the disputed domain name to that company and threatening legal action against Nominet and the Complainant if the DRS procedure led to the disputed domain name being transferred to Premier Finance Services Ltd.

   On the same day the Liquidator of Premier Exchange Finance Ltd wrote to Nominet and stated that he wished to cancel the transfer that he had previously completed as he had become aware that the disputed domain name had been sold by Premier Exchange Finance Ltd prior to the liquidation to the Malatani Trust.

   On 15 May 2002 Nominet notified the Liquidator of Premier Exchange Finance Ltd that it deemed him the proper Respondent to the Complaint and invited him to file a Response by 7 June.

   On 30 May 2002 Mr John Spencer of the Malatani Trust submitted a response on behalf of the Respondent. This was forwarded to the Complainant on 30 May 2002 and a Reply was received on 6 June 2002 and forwarded to the Respondent on the same day.

   Informal Mediation took place but no acceptable solution was achieved and on 20 June 2002 Nominet notified the Complainant that the Complaint would be referred to an independent expert upon payment of the requisite fee. The Complainant paid the fee on 25 June 2002 for a decision of an Expert pursuant to paragraph 6 of the Policy.

   On 2 July 2002 I was appointed by Nominet as an Expert to determine this dispute and my decision is due by no later than 16 July 2002. I confirm that I am impartial and independent.

4. Outstanding Formal/Procedural Issues:

   I have set out above the steps that have been taken by Nominet when identifying the Respondent to these proceedings. In my view their approach is entirely correct, and the Liquidator of Premier Exchange Finance Ltd is the right Respondent to the Complaint.

   The issue concerning the identity of the correct Respondent has only arisen because of the initial failure of Premier Exchange Finance Ltd to provide correct details to Nominet, and the failure of the Malatani Trust to record the transfer of the disputed domain name at the time of acquisition.

5. The Facts:

   The disputed domain name premierfinance.co.uk was registered by Premier Exchange Finance Ltd ("the Respondent") on 13 May 1999. As indicated above, the details submitted upon registration were incorrect and as a result the Registrant was recorded as Premier Finance Ltd rather than the correct Registrant Premier Exchange Finance Ltd.

   From the documentation that I have seen, submitted to Nominet during correspondence, I am satisfied that an error arose when the disputed domain name was registered and that the correct identity of the Registrant is Premier Exchange Finance Ltd.

   The disputed domain name was used as an advertising medium by Premier Exchange Finance Ltd until March 2001 when it is alleged that it was sold to the Malatani Trust. It has subsequently been used in the same manner and is currently pointed to a website where the Malatani Trust appear to be offering services relating to the raising of finance using vehicles as security. Again, on the basis of correspondence that I have seen, namely that from the Liquidator to Nominet, I believe that the Malatani Trust is the proprietor of the disputed domain name, although as indicated above and in accordance with the Policy, Premier Exchange Finance Ltd remain the correct Respondent.

   Premier Finance Services Ltd was incorporated on 26 June 2001 and trades under the name "Premier Finance". It is "associated" to Premier Insurance Intermediary Ltd, a company that was incorporated on 12 June 1988 and the two companies work in partnership providing "a comprehensive portfolio of finance and insurance products".

   Premier Finance Services Ltd are licensed by the Office of Fair Trading to give consumer credit under the name Premier Finance (licence No 506746).

   On 20 March 2002 a conversation appears to have taken place between Premier Finance Services Ltd and a representative of the Malatani Trust (trading as Premier Exchange Finance/Premier International Trading) during which this dispute was discussed. There is a conflict as to who initiated the discussion. This appears to have been followed up by a meeting of the respective representatives on 25 June 2002 at which time the purchase of the domain name by the Complainant was discussed with a figure of £25,000 being proposed. There is a conflict as to who proposed the figure.

6. The Parties' Contentions:

   Complaint:

   The Complainant submits that the Disputed Domain Name is identical or similar to a name or mark in which it has rights and that in the hands of the Respondent it is an Abusive Registration.

   The Respondent's requested remedy is that the Disputed Domain Name be transferred.

   In support of its Complaint the Complainant makes the following assertions.

   1. The failure of the Respondent to register correct details - paragraph 3(a)(iv) of the Policy (false contact details)
      
      
   2. The Respondent is not authorised by the Office of Fair Trading to trade as Premier Finance, whilst the Complainant is.
      
      
   3. Use of the disputed domain name is leading to confusion and association particularly as a result of the geographical proximity to each other of the Complainant and the Respondent - paragraph 3(a)(ii) of the Policy.
      
      
   4. The Respondent is not commonly known by the name "Premier Finance" - paragraph 4(a)(i)(B) of the Policy.
      
      
   5. The use of the disputed domain name on the Respondent's website is not generic or descriptive - paragraph 4(a)(ii) of the Policy.
      
      
   6. The Respondent is trying to "cash in" on the failure to register the correct Registrant's details.

7. Response:

   The Respondent makes the following points.

   1. The disputed domain name was registered almost 2 years before the Complainant commenced business and that as such the Respondent's use cannot be abusive.
      
      
   2. The Respondent (and its successor in ownership of the disputed domain name) has made legitimate use of the disputed domain name.
      
      
   3. The Complainant approached the Respondent to buy the disputed domain name and not the other way round.
      
      

   Reply:

   1. At the time of incorporating Premier Finance Services Ltd it knew of the disputed domain name registration, but because the Respondent was in Liquidation was not concerned.
      
      
   2. Clients of the Complainant have located the Respondent's website rather than that of the Complainant and thereby formed "undesirable opinions" of the Complainant, and the Complainant has received calls from the Respondent's clients.
      
      
   3. A renewal of the disputed domain name was due in May 2001 and would have prompted an intention to transfer the domain name as this was when the Respondent went into Liquidation.
      
      
8. Discussion and Findings:

   General

   To succeed in this Complaint the Complainant must, in accordance with Paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that (1) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and (2) the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

   Complainant's Rights

   As indicated above, the Complainant has asserted that it has Rights in a name or mark which is identical or similar to the Domain Name.

   The first (.uk) and second (.co) levels of the Domain Name should be discounted for the purposes of comparison as being of a generic nature. I am of the opinion that the Domain Name premierfinance is identical to Premier Finance, that being the name or mark in which the Complainant claims Rights.

   The definition of "Rights" is set out in the Policy as "includes, but is not limited to, rights enforceable under English Law". Under English Law rights in a name/mark are protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect the goodwill arising from that name/mark.

   With regard to the former, the Complainant has not provided any details of any registered rights and I must therefore conclude that the Complainant does not have rights in a registered trade mark for the name Premier Finance.

   Turning to passing off, for the Complainant to be able to assert rights, it must prove that (a) it has sufficient goodwill in the name Premier Finance, (b) that there is a misrepresentation by the Respondent likely to make the public believe that the goods or services of the Respondent are associated with those of the Complainant, and (c) that such misrepresentation has or will cause damage to the Complainant.

   The Complainant has provided no evidence of the extent of its use other than stating that it holds a consumer credit licence to trade as Premier Finance. No evidence has been submitted which confirms the length of time that the Complainant has traded under that name. The Complainant has admitted that when it incorporated it was aware that the Respondent had registered the disputed Domain Name. The name in respect of which the Complainant claims rights is a wholly descriptive term denoting the quality of a service or product. Whilst it is not impossible to obtain sufficient goodwill in a descriptive name to support a claim for passing off, such use would have to be significant.

   In the current dispute I am of the opinion that the Complainant does not have sufficient goodwill in the name Premier Finance both as a result of the prior use by the Respondent and the descriptive nature of the name to give rise to a protectable Right.

   The definition of Rights is non-exhaustive because it includes but is not limited to, rights enforceable under English Law. The Complainant alleges that it has the right to trade under the name Premier Finance by virtue of a consumer credit licence. In my opinion this does not give rise to a Right to prevent the Respondent's use, given the pre-existing use by the Respondent and the descriptive nature of the name.

   For the reasons set out above, I find that the Complainant has failed to establish that it has Rights in respect of a name or mark which is identical or similar to the Domain Name. The Complaint therefore fails.

   Abusive Registration

   An Abusive Registration is defined in Paragraph 1 of the Policy 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."

   Under (i) above it is critical that abusive conduct should be present at the time of registration or acquisition. As I have indicated above, the Domain Name was registered on 13 May 1999, some two years prior to the incorporation of the Complainant. Whilst in this particular matter there is some relevance to the issue of acquisition given the purchase of the disputed Domain Name by the Malatani Trust, the Complainant has not in my opinion adduced any evidence which would support an allegation that the registration took unfair advantage or was unfairly detrimental.

   I do not therefore find that there was an Abusive Registration under Paragraph 1(i).

   The ground set out in Paragraph 1(ii) is not so restrictive. A non-exhaustive list of factors which may be evidence of an Abusive Registration are set out in Paragraph 3. They are:-

   i. "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

   A. primarily for the purposes 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

   C. primarily for the purpose of unfairly disrupting the business of the Complainant;"

   ii. 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;
   

   iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
   

   iv. It is independently verified that the Respondent has given false contact details to us.

   The Complainant has primarily directed its contentions to sub paragraph (ii) - confusion, and sub paragraph (iv) - false contact details.

   Confusion - For a Complainant to get a complaint off of the ground under this limb of the definition of what is Abusive, it must show that the conduct complained of is unfair. In my opinion the Respondent has a legitimate right to use the disputed Domain Name because its use pre-dates that of the Respondent, and because the name in dispute is descriptive of the general type of services that they are engaged in. In my view, the Complainant's credit licence does not entitle them to prevent the use being made of the name by the Complainant and is a matter that should be taken up with the Office of Fair Trading if at all. Any confusion that has arisen is therefore not relevant to the dispute and has occurred as a result of the Complainant adopting a name used by the Respondent.

   False Contact Details - This allegation relates to the failure of the Respondent to register its correct name. In my opinion the requirement for "false" suggest some intention to mislead. I am confident that there was no such intention in the present circumstances.

   The factors contained in Paragraph 3 of the Policy are non-exhaustive. The Complainant has referred to further grounds in its Complaint namely the converse of some of the grounds set out in Paragraph 4 of the Policy (what is not Abusive), namely that the Respondent is not commonly known as "Premier Finance" and that the use of the disputed Domain Name is not generic or descriptive.

   With regard to the former, the grounds set out in Paragraph 4 are intended to be a guidance to Complainants and Respondents. They highlight that where a Respondent has been known by a name identical or similar to the disputed Domain Name prior to the Complaint being made, a Complaint is unlikely to succeed. It does not necessarily follow that the converse of that ground makes a registration abusive. In the present circumstances the Respondent has used the disputed Domain Name in connection with its business long before the Complainant's use and I do not therefore accept the Complainant's submission.

   With regard to the second ground, in my view the use made by the Respondent has been descriptive insofar as the business of the Respondent has been in relation to the raising/provision of finance.

   The grounds set out in the Policy are non-exhaustive. The Complainant's evidence refers to negotiations between the Complainant and the Malatani Trust for the purchase/sale of the Disputed Domain Name, and it alleges that the Respondent has sought to "cash in". Insofar as the negotiations were not conducted by the Respondent I do not strictly believe that they can be considered to be conduct by the Respondent. In any event for this sort of matter to be taken into account there must be an intention to sell the Domain Name at the time that it is registered. There was no such intention present here.

   The Complainant also asserts that the disputed Domain Name would have been renewed in May 2001 which would have given rise to an intention to transfer. I have to confess that I do not entirely understand this ground. I assume that it is intended to highlight that the incorrect Registrant details would have come to light in May 2001 and that as they were not amended this is evidence of Abusive behaviour. In my view I cannot draw such a conclusion from the evidence that has been submitted.

   I am not aware of any other grounds arising from the evidence submitted by either party that supports the Complainant's allegation that the registration was an Abusive Registration.

9. Decision:

   For the reasons set out above, in my opinion the Complainant has failed to 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 (ii) the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore fails.