Out-Law News 4 min. read

Pub chain snatches hogshead.tv from ex-employee


The company behind the Hogshead pub chain has won a dispute with an ex-employee over the domain name hogshead.tv. While the disgruntled worker could criticise the company on-line, his choice of domain name showed bad faith.

The Laurel Pub Company Limited, owner of the Hogshead chain, employed Peter Robertson as the manager of its Robin Hood pub in Dagenham, Essex, between January and October 2003.

It wasn't an easy job, by Robertson's account. He descried it as "an East End pub with a history of Nazi activity and a drugs problem," adding that it was "a meeting place for soccer thugs". He said he hoped to use the internet as a tool to stop the violence and to encourage new customers.

Disagreements arose between Robertson and his employers over the management of the pub. In October 2003, Robertson was sacked - and then in February 2004, evicted from the premises. Robertson went to an employment tribunal.

He registered the domain name in February this year, setting up a web site that described hogshead.tv's profile as a "new innovation for service and staff relations in the licence trade."

Laurel's representatives contacted Robertson to discuss the site. Robertson claimed that he had not thought of Laurel's trade mark in the name when he registered the domain. Over the course of the next months he gave several different reasons for the registration, according to a ruling published yesterday by the World Intellectual Property Organisation (WIPO).

These included the fact that he was a "larger than life person", and that "hogshead means 54 gallons"; and that it was in honour of his late friend, Mr Stewart, who was nicknamed "Hogshead".

Laurel offered to pay Robertson's out of pocket expenses if he would transfer the name – an offer made three times over the next few months – and Robertson said that he would think about it.

In the end he came back to Laurel on several occasions with an offer to sell the hogshead.tv domain name and robinhoodlive.com, another domain name that he had registered and used, with Laurel's knowledge, while employed by the company.

Robertson then began contacting Laurel's senior management by e-mail, advertising the hogshead.tv site and claiming, among other things:

"The aim of the web site is to bring high standards to the pub retailing business. The web site will point out all good practise's (sic) and more importantly all bad practise's (sic). We will then make recommendations on area's (sic) which will improve a particular pub or company."

He then used the site, re-directed to robinhoodlive.com, to set up a message board for disgruntled staff.

Laurel complained to the ISP hosting the site and, on two occasions, the web site was taken down. Ultimately Laurel referred the matter to WIPO's domain name dispute service, arguing that the name infringed its registered trade marks in the name Hogshead.

Robertson, said the company, had registered the domain either for the purposes of selling it back to Laurel, to set up a business trading on Laurel's goodwill in the same sector, or to tarnish Laurel's image.

In his defence, Robertson explained that the site was originally intended to show pictures of "not so beautiful people", but when he learned of staffing problems within the firm he used his site to set up a message board to allow people to discuss alleged "discrimination".

WIPO panellist Dawn Osborne reasoned that Robertson must have known about the company's trade mark rights in the word Hogshead. She noted that he had not used the site for its original purported purpose, but neither had he used the site in any great way for commercial purposes, as alleged by Laurel.

According to Osborne:

"[Robertson] has a right to free speech and a legitimate right to host a complaint site about [Laurel] on the internet. However, in the view of the Panel this is a completely different thing and should not be confused with having a legitimate right to the Domain Name in question in this case."

Accordingly, the panel found that Robertson had no right or interest in the domain, as it consisted mainly of Laurel's trade mark and directly reflected its brand.

Osborne had greater difficulty in finding that Robertson had fulfilled the other criteria that would allow the domain to be transferred – namely the question of bad faith.

Robertson simply did not fit fully into one of the four categories set out in the arbitration rules, which are, generally:

  • That the domain had been bought mainly in order to sell it to Laurel or a competitor;
  • That the domain had been bought in order to stop Laurel using it;
  • In order to disrupt Laurel's business; or
  • To attract, for commercial gain, web users confused by the domain.

Osborne found that the criteria were non-exclusive and she could look at Robertson's actions as a whole. She wrote:

"The fact that [Robertson] has chosen a domain name reflecting [Laurel's] trade mark suggests that [Robertson] intended to disrupt the business of [Laurel] and to divert traffic intended for [Laurel's] site to his own. Members of the public looking for [Laurel's] site searching for 'hogshead' may arrive at [Robertson's] site instead by mistake."

She concluded that Robertson "could have chosen a domain name which on face value would not be thought to be owned by the Complainant and would not have been likely to disrupt and divert the Complainant's business."

She found that Robertson had used the name in bad faith and ordered that it be transferred to Laurel.

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