Nominet UK Dispute Resolution Service

DRS Number 03611

The Film Unit Drivers Guild 

v. 

Gocool

Decision of Independent Expert

1.	Parties

Complainant:	The Film Unit Drivers Guild		
Country:	U.K.	  

Respondent:	Gocool		
Country:	U.K.	

2.	Domain Name	<filmunitdrivers.co.uk> (“the disputed Domain Name”) which was registered on December 19, 2005.

3.	Procedural Background
The Complaint was lodged with Nominet UK (“Nominet”) on April 18, 2006. On the same day, not only were hard copies received in full, but Nominet validated the Complaint and also notified the Respondent of the Complaint 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 23, 2006 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 25, 2006 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.

At the request of the Expert, on May 31, 2005 Nominet requested the Complainant, under the terms of Article 13(a) of its Procedure for the Conduct of Proceedings under the DRS (“Nominet Procedure”), to provide evidence that the name FILM UNIT DRIVERS GUILD had become a distinctive identifier associated with the Complainant or its services.

On June 6, 2006 the Complainant supplied some such evidence and, although the Respondent was given the opportunity to do so, he filed no response to this evidence.

4.	Outstanding Formal/Procedural Issues (if any)
There are no outstanding Formal/Procedural Issues.

5.	The Facts
The Complainant is a partnership which has existed since 1991 to act as a “clearing house” for film unit drivers, putting individuals and businesses who require film unit driving services in touch with drivers who can provide them. Such drivers are usually (but not exclusively) paying members of the Complainant and are all screened by the Complainant for experience and quality. Membership of the Complainant costs £480 + VAT annually.

6.	The Parties’ Contentions

Complainant
The Complainant contends that it has rights in the disputed Domain Name because it has advertised and traded using the unregistered trade mark FILM UNIT DRIVERS GUILD since 1991 and continues to do so. It further contends that this trade mark is well known in the film industry to refer exclusively to the Complainant which has built up substantial goodwill in it in the UK. As evidence of this it supplied initially, and subsequently in response to Nominet’s request, copies of the following: 
•	An example of the Complainant’s name together with its logo which it claims to use on its headed notepaper. It also claims that this logo is printed in gold on a red background and that it is also used in the form of a vehicle grille badge for its members.
•	A letter from National Westminster Bank plc (West End Business Centre) confirming the opening of an account in the name of Film Unit Drivers Guild on May 24, 1991.
•	A printout from Yahoo! Movies (http://movies.yahoo.com) showing the names of the Cast and of the Credits for the film “Hamlet” which was made in 1996. The Complainant is listed therein under the Heading: ‘Other Crew – Transport’).
•	A letter from Acton Stationers & Printers Limited confirming dealings with Film Unit Drivers Guild for 10+ years and attaching a copy of an invoice for various items of stationery No: SINV000485 dated February 7, 2001 and addressed to the Complainant.
•	A copy of a Credit Application Form issued by the Complainant to Laurie Johnson Organisation (undated but allegedly faxed on June 6, 1997).
•	A Certificate of Employers Liability Insurance issued by Folgate Insurance in the name of Film Unit Drivers Guild.
•	A copy of the Annual Accounts for Film Unit Drivers Guild for the year to May 31, 1999.
•	A Certificate of Incorporation of The Film Unit Drivers Guild (UK) Limited.
•	An extract from “The Knowledge”, a film industry directory (17th edition 2002) showing a paid-for advertisement for Film Unit Drivers Guild.

The disputed Domain Name was registered on 19 December 2005 and the Complainant contends that in the hands of the Respondent it is an Abusive Registration because it was primarily registered in order to stop the Complainant registering the disputed Domain Name despite its rights in a very similar name; or, alternatively, because it has been used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s rights. 

In a copy of the website at the disputed Domain Name which was taken on April 10, 2006 and which was annexed to the Complaint, it is said to be a “single site information and support forum for Film Unit Drivers in the Uk”. The entry continues “This is a place where we can all share information relating to our jobs in the Film business” and “There are sections for Jobs both driving and non-driving!”. The Complainant contends that from this it is apparent that the Respondent intends to be a direct competitor of the Complainant’s business. 

The Complainant first became aware that the disputed Domain Name had been registered early in 2006 when a business from whom the Complainant had ordered a coffee machine tried to confirm the Complainant’s contact details by reference to the disputed Domain Name. The outcome of this confusion between the Respondent and the Complainant was that the business in question was unable to deliver the machine correctly to the Complainant. On February 15, 2006, Barry Newell, a member of the Complainant, contacted the Respondent to discuss the Respondent’s registration and use of the disputed Domain Name but was unable to reach any agreement on these issues. As a consequence of this conversation, the Respondent posted an entry (since removed) on a Bulletin Board on its website at the disputed Domain Name which contained offensive language and which cast doubts on the business practices of the Complainant. A copy of this Notice, taken on February 21, 2006, was annexed to the Complaint. In it the Respondent refers to “The Film Unit Drivers Guild (UK) Limited”. This is an English limited company that is connected with the Complainant. It was registered on 14 November 2000 and its directors and sole shareholder are members of the Complainant, but it is currently dormant and is not trading. A copy of the Companies House record for this company was annexed to the Complaint.

The Respondent’s website is still operational at the disputed Domain Name but according to a copy of it taken by the Complainant on April 10, 2006 and annexed to the Complaint, it includes a disclaimer that the disputed Domain Name is “in no way affiliated or associated with ‘The Film Unit Drivers Guild (UK) Ltd’, who provide unit cars to the film industry. filmunitdrivers.co.uk is an information forum for film unit drivers, production companies & crew and run by film unit drivers.” However the Complainant says that no information is offered to help redirect users to the Complainant, and contends that, given its goodwill in its trade mark, the disclaimer appears insufficient to remove the misrepresentation created by the Respondent’s use of the Disputed Domain Name that the Respondent and/or its website is somehow connected with the Complainant.

Respondent
As noted above the Respondent filed no response on either of the occasions when he was invited to do so.

7.	Discussion and Findings:

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

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 a Respondent does not mean that he has no answer to the Complaint. A Complainant must still make out its case and, having done so, the burden is on a Respondent to prove otherwise.

Complainant’s Rights
The Complainant is relying on rights in its name, which is not a registered trade mark. It is essential therefore that he should demonstrate that the name has become a distinctive identifier which associated with him and/or the goods or services which he offers. 

Initially the only evidence of such an association filed by the Complainant was a single page photocopy of a stylised version of the name FILM UNIT DRIVERS GUILD over some contact details. In addition, the Complaint contained several statements of fact concerning the Complainant’s business activities which were not supported by any documentary evidence. In the opinion of the Expert this was not sufficient to show that the name had indeed acquired the necessary distinctiveness. Since the Complainant was legally represented, this was a surprising omission and in similar circumstances, Experts have dismissed the Complaint (see DRS 2830 Framlingham College Enterprises Limited v. Realm Solutions, Inc. in which, since the Complainant provided no documentation and only made mere assertions, it lost the Complaint. See also DRS 2735 Equazen UK Limited v. Mr. Robert Morrison in which no evidence was provided of any trade mark rights or goodwill in its name and again the Complaint was dismissed as a result.) However in this instance, the Expert decided to seek further documentary proof under Article 13(a) of the Nominet Procedure. This was supplied and is detailed above. On the strength of this evidence, the Expert is prepared to accept that the Complainant has established its rights in the name FILM UNIT DRIVERS GUILD. This name is not identical to the disputed Domain Name, but it is very similar and contains 3 out of the 5 words in the title of the Complainant one of which is only the definite article. The Expert believes that the two names are similar and is prepared to accept that there is sufficient similarity for the first leg of paragraph 2(a) of the Policy to be proved.

Abusive Registration
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)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
  B.  as a blocking registration against a name or mark in which the Complainant has rights; or 
  C  for the purpose of unfairly disrupting the business of the Complainant.
3(a)(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; 

It has been held that a domain name registration can be abusive without any evidence of actual confusion (see DRS 2505 The Royal and Ancient Golf Club of St Andrews and the Championship Committee Merchandising Lt. v. Jonathan Stock at paragraph 29), but the story of the mistaken identity by the supplier of the coffee machine is clearly an example of confusion. It may only be hearsay, but it has not been challenged by the Respondent. Consequently the Expert finds that paragraph 3(a)(ii) is proved.

As pointed out above, the disputed Domain Name <filmunitdrivers.co.uk> is similar to the Complainant’s name and unregistered trade mark ’The Film Unit Drivers Guild’. The Complainant does have its own domain name and website at <fudg.co.uk> but the disputed domain name would perhaps have been a more obvious choice and, as evidenced by the coffee machine supplier’s confusion, it is what a casual seeker for knowledge of the Complainant would choose. The Expert has concluded therefore that the disputed domain name is a blocking registration.

These two circumstances would, in themselves, be enough to find that the disputed Domain name is an abusive registration, but the story does not stop there. For a time – it is not clear for how long – the website at the disputed Domain Name contained 3 pages describing the Complainant’s objection to the disputed Domain Name and including some highly derogatory remarks about the Complainant and Barry Newell in particular. The latter is a director and the sole shareholder of the dormant company The Film Unit Drivers Guild (UK) Limited, and so probably the prime mover behind the Complainant and this Complaint. Within these 3 pages can be found the following statement:
“Barry was in a right flap when I took his call and to be honest he seemed rather concerned about Potential customers mistaking THIS FREE FORUM for THE FILM UNIT DRIVERS GUILD (UK) LTD who do not have a website. This will of course have to be proven.. but im[sic] my opinion you would have to be a complete TWAT to not distinguish the two.”

In the opinion of the Expert the only ‘twat’ is likely to be any person who finds the domain name <filmunitdrivers.co.uk> and the name ‘The Film Unit Drivers Guild (UK) Limited’ to be distinguishable.

The Complainants have made out a good case and, once a bona fide case is made out, the onus shifts to a Respondent to refute it. In this case, the Respondent has failed to reply – apart that is from the comments on the website, one example of which is quoted above.

The Expert has concluded therefore that the requirements of paragraph 1 of the Policy do apply in this case.

It is true that the website at the disputed domain name carries a disclaimer. It is referred to above on page 3, but it reads in full –

WELCOME TO FILMUNITDRIVERS.CO.UK

FILMUNITDRIVERS.CO.UK IS IN NO WAY AFFILIATED OR ASSOCIATED WITH “THE FILM UNIT
DRIVERS GUILD (UK) LTD”, WHO PROVIDE UNIT CARS TO THE FILM INDUSTRY.
FILMUNITDRIVERS.CO.UK IS AN INFORMATION FORUM FOR FILM UNIT DRIVERS, PRODUCTION
COMPANIES & CREW AND IS RUN BY FILM UNIT DRIVERS

Obviously the Respondent felt this disclaimer was necessary in order to distinguish his organisation from that of the Complainant – of which he was clearly aware. But he chose the wrong target. According to the Complainant, and as confirmed by extract from the Companies House records, the company ‘The Film Unit Drivers Guild (UK) Limited’ is a dormant and non-trading company. The Expert has therefore  concluded that the disclaimer is insufficient to avoid an adverse finding in this Complaint.

The Complainant charges the Respondent with registering the disputed Domain Name and of setting up the website in order to compete directly with him. It is clear from the wording of the website that this is indeed the case, and in this instance the Expert is happy to follow his own reasoning in a similar case (DRS 03296 Disney Enterprises Inc. v. James Robinson) in which he found that it was impossible to imagine any legitimate reason for setting up the Website at the disputed domain name. Indeed, this is confirmed by a far higher authority in the form of Rattee J. who, in the case of Britannia Building Society v. Prangley & others, said “What other purpose could there have been, one might ask rhetorically, for having a domain name incorporating the name of the plaintiff, if it was not to be used for the purpose of indicating that it was somehow connected with the plaintiff?”

8.	Decision
The Expert finds that the Complainant has rights in the name FILM UNIT DRIVERS GUILD and that it 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 <filmunitdrivers.co.uk> be transferred to the Complainant.

David H Tatham

June 19, 2006