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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> The Royal & Ancient Golf Club of St Andrews v The Championship Committee Merchandising Ltd [2005] DRS 02505 (02 June 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02505.html Cite as: [2005] DRS 02505, [2005] DRS 2505

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The Royal & Ancient Golf Club of St Andrews v The Championship Committee Merchandising Ltd [2005] DRS 02505 (02 June 2005)

DRS 02505

NOMINET-UK DISPUTE RESOLUTION SERVICE

B E T W E E N :

THE ROYAL & ANCIENT GOLF CLUB OF ST. ANDREWS AND THE CHAMPIONSHIP COMMITTEE MERCHANDISING LIMITED

Complainants

- and - JONATHAN STOCK

Respondent

___________________________________________________ DECISION OF INDEPENDENT EXPERT ___________________________________________________

Appointment

1. I was appointed, with effect on 19^th May 2005, to decide, under Nominet's Dispute Resolution Procedure, a complaint that a domain name, in the hands of the Respondent, is an Abusive Registration. I am required to give my decision by the 3^rd June 2005.

Terminology

2. In this Decision

"Nominet" means Nominet-UK

"the Procedure" means Nominet's current dispute resolution procedure

"the Policy" means Nominet's dispute resolution policy

"the Domain Name" means the domain name "royalandancient.co.uk."

Materials

3. I have been provided with the following materials:

(1) Dispute History

(2) Complaint

(3) Standard correspondence between Nominet UK and the parties

(4) Non standard submission made by the Respondent

(5) Register entry for royalandancient.co.uk

(6) Nominet WHOIS query result for royalandancient.co.uk

(7) Printout of website at www.royalandancient.co.uk

(8) Copies of the Policy and Procedure

The Complaint

4. The Complainants assert that the Domain Name, in the hands of the Respondent, is an "Abusive Registration".
5. The Complaint, which is dated the 29^th March 2005, is made and verified by Willoughby and Partners, solicitors, acting on behalf of the Complainants. The substance of the Complaint is as follows:-

(1) The Complainants have rights in the name or mark Royal [&]/[and] Ancient.

(2) This is identical to the Domain Name.

(3) The registration of the Domain Name in the hands of the Respondent is an Abusive Registration because, on the balance of probabilities:

(i) it was registered with the intention of selling it to the Complainants at a profit

(ii) it has been used in a manner likely to have deceived or confused Internet users ("initial interest confusion")

(iii) it has been used in a manner likely to have derived for the Respondent an unfair benefit (pay-per-click)

(iv) generally, the circumstances surrounding the Respondent's behaviour (including a pattern of behaviour evidenced by the Respondent's other registrations in the '.co.uk' domain) add up to this Domain Name being an Abusive Registration within the meaning of the Policy.

Procedural History

6. Paragraph 5 of the Procedure is in the following terms:-

"5. The Response

a Within fifteen (15) Days of the date of commencement of proceedings under the Dispute Resolution Service, the Respondent shall submit a response to us.

b Within three (3) Days following our receipt of the response, we will forward the response to the Complainant.

c The Respondent must send the response to us in hard copy and (except to the extent not available for attachments) in electronic form to us at the addresses set out in our explanatory coversheet. The response shall:

i. not exceed 2000 words (not including the text set out in paragraph 5(c)(v) and annexes);

ii. include any grounds the Respondent wishes to rely upon to rebut the Complainant's assertions under 3(c)(v) above including any relevant factors set out in paragraph 4 of the Policy;

iii. specify whether the Respondent wishes to be contacted direct or through an authorised representative, and set out the e-mail address, telephone number, fax number and postal address which should be used;

iv. tell us whether any legal proceedings have been commenced or terminated in connection with the Domain Name which is the subject of the complaint;

v. conclude with the following statement followed by the signature of the Respondent or its authorised representative:

"The information contained in this response is to the best of the Respondent's knowledge true and complete and the matters stated in this response comply with the Procedure and applicable law"; and

vi. attach three copies of any documentary or other evidence on which the Respondent relies including correspondence and any trade mark registration and/or evidence of use of or reputation in a name or mark together with an index of the material attached.

d If the Respondent does not submit a response, we will notify the Parties that we will appoint the Expert on our receipt from the Complainant of the applicable fees according to paragraph 21 and in the absence of exceptional circumstances."

7. Paragraph 1 of the Procedure includes the provision that

"Days means unless otherwise stated any day other than Saturday, Sunday or any Bank or public holiday in England and Wales;"

8. These proceedings were commenced on the 1^st April 2005. The Respondent did not serve a Response in time - i.e. the 25^th April 2005. On the 26^th April 2005 the Respondent contacted Nominet and informed them that he was no longer the registrant of the Domain Name. He was informed that this was not the case, because the attempt to transfer the registration had been made after Nominet had received the Complaint - see paragraph 13 of the Policy. The Respondent indicated that if he had been aware of this (though he would have been if he had read the copy of the Policy which was sent to him with the Complaint), he would have submitted a Response. Accordingly, apparently in exercise of its powers under paragraph 12 of the Procedure, Nominet extended time for the service of a Response until 4.30pm on the 27^th April 2005.
9. The Respondent submitted a Response ("the Response") on the 27^th April 2005 but it was not received by Nominet until after 4.30pm. Furthermore, it exceeded 2000 words in length. On the 28^th April 2005 Mr Penman on behalf of Nominet, e-mailed the Respondent in the following terms:-

"Dear Mr Stock,

Thank you for this email. Unfortunately it arrived after the 4.30 deadline and is over the 2000 word limit. Accordingly, this will not count as a response to the DRS complaint. Instead, we will separate the first paragraph and treat the email as a non-standard submission under paragraph 13.b of the DRS procedure.

The complainant will now be offered the opportunity to forward the case to an expert decision.

Please feel free to telephone if I can help further."

10. Paragraph 13 of the Procedure provides as follows:-

"13. Further Statement

a In addition to the complaint, the response and if applicable the reply and any appeal, the Expert may request further statements or documents from the Parties. The Expert will not be obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or this Procedure or which he or she has not requested.

b Any communication with us intended to be passed to the Expert which is not part of the standard process (e.g. other than a complaint, response, reply, submissions requested by the Expert, appeal notice or appeal notice response) is a 'non-standard submission'. Any non-standard submission must contain as a separate, first paragraph, a brief explanation of why there is an exceptional need for the non-standard submission. We will pass this explanation to the Expert, and the remainder will only be passed to the Expert at his or her sole discretion. If there is no explanation, we may not pass on the document or information."

11. A copy of the Response was provided to me but without any attachments. At my request, Nominet forwarded these to me. The Response fails to include any statement verifying the contents, as is required by paragraph 5c of the Procedure. Notwithstanding, as a matter of discretion, I have taken the Response into account in reaching my Decision.

Jurisdiction

12. Under paragraph 2a of the Policy a Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the Procedure that:

"i. The Complainant 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".

13. Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

Rights

14. Paragraph 1 of the Policy defines "Rights" as including, but not being limited to, "rights enforceable under English law". This definition is subject to a qualification which is not material.
15. The Complainant's case as to their rights may be summarised as follows:-

(1) The Complainants are the Royal & Ancient Golf Club of St Andrews ("the Royal & Ancient") and its wholly owned subsidiary, The Championship Committee Merchandising Limited ("CCM"). The Royal & Ancient has just celebrated its 250^th anniversary. It has not only been a golf club, but also the governing body of golf throughout the world apart from the United States and Mexico. Moreover, through its Championship Committee, it has for very many years been the organiser of The Open Championship, the Amateur Championship and other amateur UK golf championships and team events. Since 1 January 2004 the governance and championship organising roles of the Royal & Ancient have been performed by R&A Rules Limited and R&A Championships Limited respectively. Both companies trade as "the R&A". The beneficial ownership of both companies lies ultimately with the Royal & Ancient.

(2) By virtue of its history and its various roles described above, the Royal & Ancient has developed a very significant reputation and goodwill under its full name and the various abbreviations including in particulars, 'Royal & Ancient'. The Royal & Ancient has sought to protect its goodwill in those abbreviations by having them registered as trade marks including one registration namely UK registration number 1566542 dated 31 October 1994 ROYAL & ANCIENT/ROYAL AND ANCIENT (words) in class 16 for printed matter etc. The registration is held in the name of CCM, for that is a subsidiary company which is a trading arm of the Royal & Ancient.

(3) While the registered rights are in the name of CCM, and the substance of the reputation and goodwill in registered rights are in the name of CCM, the substance of the reputation and goodwill in the name (i.e. the common law or unregistered rights) lie with the Royal & Ancient, of which CCM is a wholly-owned subsidiary. For the unregistered rights, the Complainants pray in aid the fact that the Royal & Ancient is a household name to, at the very least, all those interested in playing golf and in spectating at major golfing championships in the UK. The Complainants also point to the significant trading income generated by the Royal & Ancient as is represented in the Accounts of CCM and R&A Championships Limited a subsidiary and trading arm of the Royal and Ancient. All of that income is generated from events and merchandising activity conducted under and by reference to the name of the Royal & Ancient. R&A Championships Limited's accounts for its first year of trading on 1 January 2004 have not yet been finalised. However, the Complainants are able to confirm that that company's turnover for the year will run into many millions of pounds.

(4) For an indication of the source of much of the UK income see the Open Championship 'Ticket Booking Form & Spectator Guide' exhibited. For up to date details of the activities of The Royal & Ancient I should refer to the Complainants' website at www.randa.org. Reference should also be made to the first four pages of a Google search conducted for "royal and ancient" exhibited to the Complaint.

(5) All the 'royal [and][&] ancient' references are direct or indirect references to The Royal & Ancient

16. In the Response the Respondent states:-

"I believe the name 'royalandancient' is a very generic term and the words 'royal and ancient' are used to describe many different situations. I had have never heard of royal and ancient golf club of St Andrews until I was contacted by the complainant. …

A search in Google for "royalandancient" returns 18 results, the top result related to ancient scottish tartan, the third result being royalandancient.com which is not owned by the claimant nor used for anything to do the claimants business."

This Google search was attached to the Response.

17. A supplier of goods or services which have attracted goodwill or acquired a reputation in the market and are known by some distinguishing name or mark has a common law right to prevent others from passing off their own goods or services as being those of the supplier who has acquired that right. Notwithstanding the Respondent's asserted ignorance of the Royal and Ancient Golf Club of St. Andrews, on the evidence provided by the Complainants, I am quite satisfied on the balance of probabilities and find as a fact that the Royal and Ancient Golf Club of St. Andrews has acquired the goodwill and reputation which would support a passing-off action based upon the use of "Royal and Ancient" either as a name or a mark.
18. The assertion that The Championship Committee Merchandising Limited is the registered owner of "ROYAL & ANCIENT/ROYAL AND ANCIENT", is substantiated by the copy search provided by the Complainants with their Complaint.
19. In the circumstances I am satisfied, and find as a fact, that the Complainants have rights enforceable under English law in relation to the names Royal and Ancient and Royal & Ancient and that these are "identical" to the Domain Name. If one were pedantic, one might dispute that finding on the basis that the Domain Name is entirely lower case or excludes any abbreviated form of "and". However even the pedant would have to concede that if the names to which the Complainants have title are not identical to the Domain Name, they are similar to it, and I so find.

Abusive Registration

20. Paragraph 1 of the Policy defines "Abusive Registration" 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."

21. The Policy provides:

"3. Evidence of Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

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

A 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 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 The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;

iv. it is independently verified that the Respondent has given false contact details to us; or

v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant;

A. has been using the domain name registration exclusively; and

B. paid for the registration and/or renewal of the domain name registration..

b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.

c. There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4(c)).

4 How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

i. Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS) the Respondent has:

A. used or made demonstrable preparations to use the Domain Name or a Domain name which is similar to the Domain Name in connection with a genuine offering of goods or services;

B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;

C. made legitimate non-commercial or fair use of the Domain Name; or

ii. The Domain Name is generic or descriptive and the Respondent is making fair use of it.

iii. In relation to paragraph 3(a)(v); that the Registrant's holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or

iv. In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.

b. Fair use may include sites operated solely in tribute to or criticism of a person or business.

c. If paragraph 3(c) applies to succeed the Respondent must rebut the presumption by proving in the Response that the Registration of the Domain Name is not an Abusive Registration.

22. The Complainants contend that the Domain Name is an Abusive Registration as defined in Paragraph 1 of the Policy under both limbs of that definition in that it:

(1) was registered or otherwise acquired, in a manner, which at the time when the registration or acquisition took place, took unfair advantage f or was unfairly detrimental to the Complainants' rights; and

(2) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainants' rights.

23. The Claimants' case in support of the above contentions is as follows:-

(1) The Respondent is a serial cybersquatter. He is or has been the registered proprietor of over 1800 domain names in the 'co.uk' sub-domain, many of which are well-known names and trade marks of others and many of which are minor variants of well-known names and trade marks of others. A few pages extracted from a Marquesa print-out of the registrations in his name include, by way of example, 'Nexium.co.uk', 'Xenical.co.uk', 'JapanAirlines.co.uk', 'RaymondWeil.co.uk', 'LouisVuitton.co.uk', 'ColinFirth.co.uk' and 'AnnaFriel.co.uk.

(2) The Respondent registered his domain names to sell them. A selection of print-outs of webpages connected to his domain names confirm that the names are for sale. Until recently the webpage at 'www.royalandancient.co.uk' indicated that the Domain Name was for sale. While that webpage had now been withdrawn (as appears from a print-out of the current webpage), manifestly his intention must have been to sell all of them at a profit.

(3) The Complainants are not aware how many of the names listed in the Marquesa print-out are or have been the subject of complaint. However, the Complainants' representatives launched a complaint against the Respondent in respect of 'nexion.co.uk' on behalf of AstraZeneca, the proprietor of NEXIUM. The Respondent agreed (otherwise than by way of the mediation process) to transfer the name to AstraZeneca before the complaint reached an expert. Moreover, 'xenical.co.uk' was the subject of a complaint by Roche, the proprietor of XENICAL. That complaint failed. It is published on Nominet's website under DRS 01798. The complainant in that case then resorted to the court. Annex 7 is a copy of the order by which the Respondent agreed to ay the complainant £6,000. Clearly, the Respondent was forced to accept that by registering Roche's trade mark as a domain name he was infringing that company's rights.

(4) Recently, the Complainants' representative telephoned the Respondent and reminded the Respondent of the nexium.co.uk cases and invited the Respondent to agree to transfer the Domain Name to the Complainants without further fuss. The Respondent refused saying that the Domain Name was not in the same category as the other two. He said that if the Complainants wanted the Domain Name they would have to buy it. On being told that the Complainants would be willing to pay him his out-of-pocket expenses, he said that he did not give his domain names away. The Complainants suspect that it was following that telephone conversation that the Respondent changed the webpage connected to the Domain Name.

24. The following are the material passages in the Response:-

(1) "I do not own 1800 domains in fact at present the current figure is in the region of 400."

(2) "In respect to the web-site been withdrawn, I felt until this issue was resolved it would be sensible to withdraw the web-site, but under no way was this action an admission of any guilt. The original web site can be seen in my attached Annex 1.

The web page which displayed under the domain name offered many products and services (please view annex 1) but at no time did the domain royalandancient.co.uk try to pass off or offer similar products and services as the claimant."

(3) "In respect of 'nexium.co.uk' I cannot recall any DRS being filed and I cannot understand why should the claimant divulge a confidential conversation which was held and what was concluded was not intended to be used against me at a later date. 'xenical.co.uk' through the DRS the name was not transferred which led me to believe I had every right to keep the domain.

Regarding the court case I simply could not afford to fight the domain in a court of law so decided to stop any more actions and pay the other parties legal fees. The court order was to take down the web site and not to transfer the domain to the claimant.

All information given by the Complainant in point 3 does not have any relevance to a DRS."

(4) "I believe the name 'royalandancient' is a very generic term and the words 'royal and ancient' are used to describe many different situations. I had have never heard of royal and ancient golf club of St Andrews until I was contacted by the complainant.

The Complainants representative did indeed telephoned me and he stated he was doing a favour for 'his' golf club and asked to 'give' him the domain, as he was doing a 'favour' he had no budget to buy the domain name.

I suspected this was a either a trick or at that time he was not working under any authorisation from any client. This is why a stated I was not in the habit of 'giving' away domains, as I felt it was a cynical ploy to obtain the domain name."

(5) "I have tried to respond to each of the claimants points above, although most are not related to this domain name but to my character in general and/or past registrations I may have owned. I believe the only points which are relevant to this domain dispute are as follows."

(6) "As stated earlier I have never heard or royal and ancient golf course of St Andrews and have never contacted them or any other holder of a mark like or similar to royal & ancient with a view to selling the domain to them. As the claimant is already aware the domain was registered for the purposes of pay per click."

(7) "A search in Google for 'royalandancient' returns 18 results, the top result related to ancient scottish tartan, the third result being royalandancient.com which is not owned by the claimant nor used for anything to do with the claimant's business. This Google search is attached at Annex 2.

Annex 1 shows the original web site and the links it contained, it does not infringe on the claimants trademarks nor does it offer any products or services provided by the claimant."

(8) "Any benefit received has been through advertising products that are not connected to the claimants business or trademarks. Please view the original site at Annex1."

(9) "I do not believe for the reasons I have set out above that I have abused the registration of this domain name or the claimants trademarks."

25. It is to be noted that the Respondent:

(1) asserts that he had not, until contacted by the Claimants' representatives, ever "heard of royal and ancient golf course of St Andrews" (the implication being that he could not have been motivated by a desire to sell the Domain Name to the Complainants or a competitor);

(2) claims that he acquired the Domain Name for the purposes of "pay per click" (i.e. not for sale);

(3) accepts that in a telephone conversation with the Complainant's representative he did say that he was not in the habit of "giving away domains", but he disputes the context and hence the significance of these words.

The conflict between the parties` accounts of the telephone conversation is stark.

26. The Respondent's position, as summarised in the lasts paragraph, gives rise to strong suspicions. The "Response" does not include any statement of verification. He does not dispute the assertion that he is a "serial cybersquatter" or that webpages connected to his domain names confirmed that the names are for sale, or that at one time the names for sale had included the Domain Name. It seems to me that the resolution of the issues relating to the telephone conversation referred to above and toe the Complainants` case based on paragraph 3 a i A of the Policy would inevitably involve a finding of deliberate falsehood by one side or the other. Findings of deliberate falsehood, particularly in the course of an entirely paper exercise, are inherently undesirable, and, in this case, unnecessary, because, as explained below, I am satisfied that the case can be fairly decided without resolving those issues.
27. Because of the terms of the Response it is appropriate to consider whether any of the non-exhaustive list of factors in paragraph 4 of the Policy which may be evidence that the Domain Name is not an Abusive Registration are made out. It is the Respondent's case that, before being aware of the existence of the Complainants and therefore of any rights they might have in the Domain Name, he used it in connection with a genuine offer of goods or services. The thrust of what he says appears to be that he was making a legitimate and fair use of the Domain Name - but the only basis of this would appear to be the factors referred to in the preceding sentence.
28. If what he asserts is correct, then the factors referred to in paragraph 4aiA are made out. These factors are not, however, stated to be conclusive of the issue of Abusive Registration and would need to be taken into account in the context of all the circumstances, including proof by a complainant of any of the factors which are stated in the Policy to constitute evidence of Abusive Registration. It seems to me, that the use of a name or mark to which another has title for the purposes of providing goods or services even if it is done in all innocence and even if the goods and services are not the same or similar to goods and services provided by the owner of the title or mark may still be an Abusive Registration if there is other evidence of Abusive Registration. Accordingly, I turn to the question of whether there is, and in particular to the factors set out in paragraph 3 of the Policy at aii and aiii.
29. Whilst it is true that paragraph 3aii of the Policy requires evidence of actual use of the Domain Name and of actual confusion (and the Complainants have provided no evidence of actual confusion), the list of factors in paragraph 3 of the Policy is stated to be "non-exhaustive". I am of the opinion that a Registration may be Abusive without evidence of actual confusion if the Domain Name is used in a way which would be likely "to confuse people into believing that the Domain Name is registered to, operated, or authorised by, or otherwise connected with a Complainant". It might be contended that any confusion would be short-lived. However, it seems to me that the mischief at which paragraph 3aii of the Nominet Policy is directed is any confusion of the sort described. There is no exclusion of confusion which is "short-lived". In the present case, I am of the view that people or businesses are likely to have been confused into believing that the Domain Name was registered to, operated or authorised by, or otherwise connected with the Complainants and to seek, and to have sought, to enter the website in question for that reason. I consider such initial confusion (initial interest confusion), is capable of giving rise to a finding of Abusive Registration. The Complainants contend that in a case such as this where for a very large number of people the Domain Name has only one meaning (the Royal & Ancient or one or more of its associated or subsidiary companies), it is obvious that a high proportion of Internet users are likely to believe that the name is a domain name of or authorised by the Complainants; no evidence is necessary; the name speaks for itself. I share this view. It is more likely than not that all golfers, and most persons interested in sport in general, would make the connections which the Complainants allege. Such classes of persons would undoubtedly be numerically significant. That is sufficient. The fact that the words " royal and ancient " are sometimes used in other contexts and to make other connections, as evidenced by the Google searches referred to, does not nullify the Complainants claims in respect of either "title" or "confusion".
30. I have already referred to the fact that the Respondent has not disputed that he is a "serial cybersquatter" or that websites connected with his domain names are for sale. Whilst asserting that currently he is the owner of only 400 domain names, he has not disputed the Complainants' assertion that he "is or has been the registered proprietor of over 1800 domain names" in the ".co.uk" sub-domain, many of which are well-known names and trademarks of others or minor variations of such names or marks. He has not taken issue over the examples given (e.g. "RaymondWeil.co.uk") or suggested that such Domain Names were registered at the request of or on behalf of the well-known organisations which use and/or trade under those or very similar names, or that he has rights in any of those names.
31. Paragraph 4aiv of the Policy provides that a factor which may be evidence that a Domain Name is not an Abusive Registration is

"In relation to paragraph 3(a)(iii) … that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent."

The Respondent has not sought to rely upon this provision, but in any event it does not seem to me to fit the facts of the present case. "Household" names such as RaymondWeil.co.uk, LouisVuitton.co.uk etc. are not of a significantly type or character to the Domain Name - which is also a "household" name. On the basis of the material before me I am satisfied on the balance of probabilities and find as a fact that the terms of sub-paragraph a iii of paragraph 3 of the Policy are fulfilled, and that the Respondent is engaged in a pattern of registrations whereby he is the registrant of domain names (under .uk or otherwise) which correspond to well known names in which he has no apparent rights, and the Domain Name is part of that pattern.

32. It is necessary to weigh my findings in respect of paragraph 4aiA of the Policy with those in respect of paragraph 3aii and iii. The fact that the Respondent is engaged in a pattern of registrations whereby he is the registrant of domain names which correspond to well-known names in which he has no apparent rights, and that the present case is a part of that pattern, in my judgment outweighs my finding in respect of paragraph 4aiA of the Policy. The Respondent seeks to trade (one way or another) on other organisations' well-known names. That is the pattern. If, as he asserts, he is ignorant of some of those organisations or of their rights it is because he failed to carry out any appropriate searches. In my judgment the registration of the Domain Name as a part of such pattern was, at the time when it took place, unfairly detrimental to the Complainants' Rights. On this ground, therefore, I find that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
33. In relation to paragraph 3aii of the Policy, I have considered whether it is material that the web-site, because of the attempted transfer, is, just at present, in a state of "limbo". However, it does not seem to me to make any difference, notwithstanding the fact that paragraph 3aii of the Policy uses the words "is using" – i.e. the present tense. Paragraph 3 of the Policy is not exhaustive. "Abusive Registration" is stated, in paragraph 1 of the Policy, to mean a Domain Name which

"… has been used in a manner which … was unfairly detrimental to the Complainant's Rights"

(emphasis added)

I am satisfied that this was the case in the past and that it would be again were the Domain Name to continue to be in the hands of the Respondent. The creation of confusion or the likelihood of confusion, as described paragraph 29 above, by the Respondent's registration of the Domain Name, in my judgment outweighs the establishment of the factor identified in paragraph 4aiA of the Policy. Accordingly, on this additional ground, I find that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

34. In the light of the findings which I have already made, it is unnecessary for me to express any opinion in relation to the Complainants' assertion that the Registration is abusive on the ground set out in paragraph 3 a i A of the Policy or because "it has been used in a manner likely to have derived for the Respondent an unfair benefit (pay-per-click)"..

Decision

35. For the reasons given above, I find that the Domain Name was registered in a manner which at the time when the registration took place was unfairly detrimental to the Complainants' Rights and also was used in the like manner and, in the hands of the Respondent, is an Abusive Registration.
36. The Complainants have requested the transfer of the Domain Name. On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Name should now be transferred to the Complainants as they request.

David Blunt QC

2 June 2005