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Case comment - Exenergy Ltd and Ibex Management Limited

2 March 2012

The presiding Expert was unable, on the evidence, to determine whether a domain name was an Abusive Registration under Nominet policy, and took no action, leaving the dispute to be resolved by the Court.

Background

Excelsior Homecare Limited ("Excelsior"), a specialist installer of insulation, energy and heating equipment, was for many years managed by Roger Leaver. In late 2009 Mr Leaver was considering the companys future and appointed a consultancy firm, Ibex Limited ("Ibex") whose directors included Graham Hall.

The parties intended that Mr Hall would, in due course, effect a management buy out of Excelsior. After a few months, he was appointed managing director of that company, and a new company, Exenergy Limited ("Exenergy") was incorporated in December 2009. In July 2010 Excelsiors assets were transferred to Exenergy and Mr Hall became Managing Director. Ibex continued to provide consultancy services to the new entity.

However, in August 2011, Mr Hall resigned, claiming constructive dismissal, the parties having failed to agree terms for an MBO. It then became apparent that the domain name www.exenergy.co.uk (the "Domain Name") had been registered in the name of Ibex in November 2009 and had remained in Ibexs name ever since. Mr Leaver took over management of Exenergy which insisted that the Domain Name be transferred to it and refused to pay Ibexs final invoice. It then applied for an injunction against Ibex, alleging that Mr Hall was threatening to take down the www.exenergy.co.uk site. Those proceedings were stayed pending the outcome of the Nominet Dispute Resolution Service ("DRS") complaint brought by Exenergy.

Proceedings

Under the DRS policy, to succeed in its complaint a Complainant must prove that:

1. it has enforceable rights in a mark identical or similar to the Domain Name

2. the Domain Name is an "Abusive Registration"

Here, there was no dispute over the fact that Exenergy Limited had built up reputation and goodwill in the name Exenergy since it began trading under that name in July 2010. Accordingly, the first requirement was satisfied.

For http://www.exenergy.co.uk/ to be an "Abusive Registration" it would either have to have been registered in a manner which (at the time) took unfair advantage of or was unfairly detrimental to Exenergys rights in "exenergy", or have been used in a manner which has taken unfair advantage of or has been unfairly detrimental to those rights.

The Expert identified two factors from those listed in the policy as potentially relevant, the first being where the Domain Name appears to have been registered for the purposes of blocking or disrupting the complainants business. The second arises where the registration occurred through a relationship between the parties, and the rights holder (although not the registered owner) has paid for that registration.

However, the Expert came to an impasse. A number of critical facts were disputed by the parties. Ibex contended that it purchased the Domain Name before Exenergy was incorporated and had never been paid for it. Exenergy claimed that it had paid for the Domain Names registration as part of disbursements invoiced. Ibex also submitted that it had conceived the name as a combination of "Excelsior" and "Ibex", whereas Exenergy claimed that the name was discussed between Mr Leaver and Mr Hall prior to its incorporation, and that the name linked "Excelsior" and "energy". Crucially, there were no documents supporting either sides version of events. The Expert concluded that the evidence was not clear and the case was not appropriate to be determined under the policy. Exenergy had the required rights in the name, but it could not be determined whether the Domain Name was, in Ibexs hands, an Abusive Registration. Therefore the Expert left determination of the dispute to the Court already dealing with the proceedings.

Comment

This highlights the difficulties faced by "paper based" dispute resolution procedures when key facts are disputed and there is no independent evidence to assist. In this instance, there were already court proceedings underway between the parties, dealing with this dispute and numerous others. This was clearly a persuasive, and perhaps determinative, factor for the Expert. There is provision within the policy for the Expert to call for an in person hearing, which would have allowed for testing of the parties evidence, and which arguably would be the only appropriate course if a complainant could not financially sustain full court proceedings.

This article was first published in the ITMA Review

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