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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Alliance & Leicester plc v Willow [2005] DRS 02532 (16 July 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02532.html Cite as: [2005] DRS 02532, [2005] DRS 2532 |
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Alliance & Leicester plc v Willow [2005] DRS 02532 (16 July 2005)
Complainant: Alliance & Leicester Plc
Country UK
Respondent: Lucy Willow
Country: AU
allianceamdleicester.co.uk; allianceandleiceter.co.uk; allianceandleichester.co.uk; allianceandlicester.co.uk; allianceleceister.co.uk; alliancenadleicester.co.uk; alliance-mortgages.co.uk; leicesterandalliance.co.uk
("the Domain Names")
11/04/2005 Dispute entered into system
18/04/2005 Hardcopies received in full on: 15/04/2005
18/04/2005 Complaint validated
20/04/2005 Complaint documents generated
16/05/2005 No formal Response received. Such correspondence as was received treated an as "no response".
16/05/2005 "No response to complaint" documents generated
17/05/2005 Email bounce from [email protected], [email protected]
07/07/2005 Fees due date amended by 27 working days because of administrative error by Nominet
07/07/2005 Fees received from Complainant on 07/07/2005
07/07/2005 Mr Nick Gardner selected as Expert
11/07/2005 Mr Nick Gardner is not able to act as Expert.
12/07/2005 Mr Iain M Tolmie selected as Expert
3.1. It should be noted that there were 2 procedural delays in the processing of this Complaint. Initially, through an administrative error by Nominet, it was necessary to revise the time available to Alliance & Leicester PLC ("A&L") to pay the fees for an Expert decision. Secondly the Expert initially appointed found that he was unable to accept the appointment (the reasons are not disclosed).
3.2. Experts are appointed on the "cab rank" principle, and the next available Expert was appointed in his place.
3.3. On the 12th July 2005, I (Iain M. Tolmie, the undersigned, "the Expert") was contacted by the Nominet Dispute Resolution Service and I confirmed to them that:
"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties."
3.4. I was appointed as the Independent Expert for this Case as from 14th July 2005 to respond on or before 28th July 2005. This process is governed by the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") and the Decision is made in accordance with the Dispute Resolution Service Policy ("the Policy"). Both of these documents are available on the Nominet UK website (http://www.nominet.org.uk/DisputeResolution).
4.1. The Respondent has not submitted a formal response to Nominet in time or at all as provided for under paragraph 5a of the Procedure. Letters and e-mails were sent to her by Nominet as required by the Procedure. The Respondent is an individual and there has been some e-mail correspondence with the person named on the Domain Name registration as "administration contact" a Mr Andrew Jones. The correspondence purports to offer to transfer the names to the Complainant, however, as Nominet have pointed out, only the Respondent (as an individual) can give such directions, and (despite requests) no signed authority has been forthcoming.
4.2. The Respondent accepted that she was bound by the Nominet Dispute Resolution Procedure at the time of the registration of the Domain Name. She is not obliged to make any response. Nominet have therefore treated the non-standard response from another person as a non-response by the Respondent, and have acted as set out in paragraph 5d of the Procedure.
4.3. From the records sent to me, I can see that Nominet have taken all necessary steps under the Procedure and there is no evidence before me to indicate that there are any exceptional circumstances which I should take into account. Accordingly I will now proceed to a Decision on the complaint notwithstanding the absence of a response, as is provided for in Paragraph 15b of the Procedure:
"If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint."
4.4. Furthermore, since I am not aware of any exceptional circumstances in this case, I will act in accordance with Paragraph 15c of the Procedure which provides that:
"If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure , the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."
5.1. I accept the following as facts:
5.2. The Complainant is a corporate entity and one of the UK's major financial services companies, whose origins trace back to 1852. Following the merger between the Alliance Building Society and Leicester Building Society, the Complainant (together with its associated companies) has been trading under the trade marks ALLIANCE & LEICESTER and ALLIANCE LEICESTER, and other marks containing these marks (together the "A&L Marks") since 1985 in the UK and other countries. The Complainant has been a member of the FTSE 100 since 1997, when it converted from its original mutual building society status.
5.3. The Complainant supplies a broad range of financial services to personal and commercial customers under the A&L Marks. Its aggregate operating income for 2000 to 2004 was approximately £6,617 million.
5.4. ALLIANCE & LEICESTER is a household name in financial services. The Complainant advertises its services widely through direct marketing, TV and the Internet. The Complainant's advertising expenditure for 2003 was approximately £45 million (including around £10 million online). The ALLIANCE & LEICESTER brand has been awarded "Superbrand Status" by The Brand Council, along with other famous brands like AMERICAN EXPRESS, COCA-COLA and IBM.
5.5. The Complainant owns at least 41 UK, four European Community and 11 other national, including two Australian, trade mark registrations for marks containing ALLIANCE LEICESTER. The Complainant also owns a UK trade mark registration for ALLIANCE MORTGAGE.
5.6. The Complainant operates the website www.alliance-leicester.co.uk.
5.7. The Complainant owns at least 131 domain names containing the words ALLIANCE and LEICESTER together, as well as variations and misspellings of these words together.
5.8. The Respondent has registered the Domain Names as a private individual.
Complainant
6.1. I have accepted as fact that the Complainant has an extensive holding of trade marks of various types, full details of which were attached to the Complaint (see paragraph 5.5 above)
6.2. The Complainant's submissions (made on its behalf by a solicitor) are extensive and are in summary as follows:
6.2.1. As a result of the Complainant's extensive use and marketing of the A&L Marks for many years, the Complainant has acquired a substantial reputation and goodwill in the UK and other countries in the marks.
6.2.2. The A&L Marks are distinctive inherently and as a result of the fame they have acquired through the Complainant's use and marketing. The A&L Marks are not descriptive of the Complainant's business or of anything else.
6.2.3. On the above basis, the Complainant has for many years owned substantial rights in the A&L Marks which are enforceable under English law (under registered trade mark law and the common law of passing off) and in other countries.
6.2.4. The A&L Marks are nearly identical to the Domain Names. The Domain Names are very close misspellings of the A&L Marks. The domain name alliance-mortgages.co.uk is identical to the Complainant's trade mark registration for ALLIANCE MORTGAGE, apart from MORTGAGES being in the plural in the Domain Name. The domain name leicesterandalliance.co.uk is an identical mirror image of the A&L Marks.
6.2.5. The Respondent is not connected to the Complainant in any way and registered the Domain Names without the Complainant's consent on 28 June 2004. The Respondent must have been aware of the Complainant's rights in the marks when she registered the Domain Names. Because (amongst other things) the combination of the words ALLIANCE and LEICESTER is unusual and inventive and it is not credible that the Respondent came up with the Domain Names independently of the Complainant's rights when she registered them.
6.2.6. Each of the Domain Names connects to a "domain name parking" page on the website of the third party Sedo (www.sedo.co.uk). Each website is headed with the relevant Domain Name, followed by the statement: "Banking - we recommend these sponsored links". Each website then contains links to several other sites. These links lead to third party websites, including the websites of some of the Complainant's competitors - e.g. Halifax and Royal Bank of Scotland - and other websites relating to financial services. The Respondent's websites also contain a link to the Complainant's website.
6.2.7. Sedo supplies the Respondent (and its other customers) with a free "Domain Parking Program", under which Sedo hosts the Respondent's websites and provides targeted advertisement links on the sites. The Respondent earns from euros 0.03 to euros 1.50 every time someone accesses her websites and clicks on one of the links. The webpage also states that domains parked with Sedo are "5 times more likely to sell".
6.2.8. The Complainant has not consented to and has no connection with the Respondent's websites or any of the other third party websites contained in the advertisement links.
6.2.9. The above matters demonstrate that the Domain Names were registered and/or have been used in a manner which took unfair advantage of and/or was unfairly detrimental to the Complainant's rights, including on the basis of the following factors:
6.2.9.1. Policy paragraph 3.a.i.A. The Respondent's placing of the Domain Names on the Sedo website, where they are "5 times more likely to sell", proves that the Respondent acquired the Domain Names in order to sell them to the Complainant or a competitor for a sum exceeding her out-of-pocket costs.
6.2.9.2. Policy paragraph 3.a.i.C. The Respondent has registered the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant, in particular by diverting away to third party websites business intended for the Complainant.
6.2.9.3. Policy paragraph 3.a.ii. Members of the public are bound to have been confused into believing that the Domain Names are registered to, operated or authorised by, or otherwise connected with the Complainant, and it should be inferred that they have. In particular, confusion is inevitable because: (a) The Domain Names are nearly identical to the A&L Marks and contain no indication that they are not connected with the Complainant. (b) The Respondent's websites include a link to the Complainant's website and other financial services websites. (c) The statement "Banking - we recommend these sponsored links" implies that the Complainant has sponsored or is otherwise connected with the Respondent's sites. (d) The fact that the Domain Names are connected to the Sedo website, where domain names are "5 times more likely to sell", and where the Respondent earns up to euros 1.50 every time someone accesses her websites and clicks on one of the links, demonstrates that the Respondent is counting on the fact that users will at the very least initially access her sites in the mistaken belief that the Domain Names are connected with the Complainant.
6.2.9.4. Policy paragraph 3.a.iii By registering the eight Domain Names, and for the reasons set out in this Complaint, the Respondent is engaged in a pattern of making abusive registrations, or serial "typo squatting".
6.2.10. The Domain Names have also been registered and used in a manner which took unfair advantage of and/or was unfairly detrimental to the Complainant's rights because the Respondent is using the Domain Names at the expense of, and free-riding on, the Complainant's rights. Even if some members of the public who access the Respondent's websites, initially thinking that the Domain Names are connected to the Complainant, are subsequently not in fact confused into thinking that the websites are connected with the Complainant
6.2.11. The Respondent's registration and use of the Domain Names will dilute the distinctiveness of the A&L Marks and as long as the Domain Names are in the Respondent's hands without the Complainant's consent, the Complainant has no control over the ownership or use of the Domain Names. This is inherently detrimental to the Complainant.
6.3. Twelve Annexes of supporting information were also supplied.
7.1. The Respondent has not submitted a response in time or at all.
Burden of Proof
8.1. In order for the Complainant to succeed it must (under Paragraph 2 of the Policy) prove to the Expert, on the balance of probabilities, both:
i that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
8.2. Rights are defined in the Policy as:
Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business;
Complainant's Rights
8.3. The Complainant by making its Complaint has agreed to be bound by the Procedure and its legal representative has also signed a statement of truth in respect of the Complaint and associated documentation supplied.
8.4. The Complainant relies both on its portfolio of trade marks and also upon the established use of the company trading name as the basis of its rights. It has established a reputation in the financial services industry in its current form stretching back over 20 years and in its original forms over 150 years (see section 5 above). I therefore find that the Complainant has established rights in the name Alliance & Leicester. It seems self evident to me that the way that the name is said "Alliance and Leicester" should also be regarded as the company name and an established right, although as far as I can tell (strangely) there are no formal registrations which cover that format.
8.5. In examining the Domain Names I need to exclude the ".co.uk" suffix (which is generic and is usual to ignore) and I need to bear in mind that domain names in general are usually expressed in lower case only, that "&" is a prohibited character, and that it is established practice in a name such as Alliance & Leicester to substitute either a "-" or the word "and" for the "&" or simply run the two words together hence alliance-leicester, allianceandleicester or allianceleicester. Alliance & Leicester have themselves chosen to use www.alliance-leicester.co.uk as their main web site, but this does not invalidate the other forms.
8.6. In my opinion, the Domain Names "allianceamdleicester", "allianceandleiceter" "allianceandleichester", "allianceandlicester", "allianceleceister" "alliancenadleicester" are clearly various forms of or mistyping of the Complainant's name in which it has established rights (insofar as that name may be reasonably rendered as a domain name). In the case of "leicesterandalliance" it is clearly a simple inversion of the name. In the case of "alliance-mortgages" it is a similar representation in a domain name of a mark in which A&L have established rights (ALLIANCE MORTGAGE - UK Trade Mark 2196139).
8.7. In my opinion ALL of the Domain Names listed in §2 above are similar to the name Alliance & Leicester - in which I have found that the Claimant has established rights.
8.8. I therefore find that the Complainant has established to my satisfaction that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive Registration
8.9. Having found that the Complainant has established to my satisfaction that it has Rights in respect of a name or mark which is identical or similar to the Domain Names, I must now examine its allegations of an Abusive Registration by the Respondent.
8.10. An Abusive Registration is defined in the Policy as follows:
Abusive Registration means 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;
8.11. The Complainant has made detailed reference to the Policy in its submissions to me. I shall therefore deal with the main points raised.
8.11.1. Policy paragraph 3.a.i.A. The Respondent's placing of the Domain Names on the Sedo website, where they are "5 times more likely to sell", proves that the Respondent acquired the Domain Names in order to sell them to the Complainant or a competitor for a sum exceeding her out-of-pocket costs.
8.11.2. In the absence of any evidence as to the price sought (if any) either directly or indirectly I cannot find that simply using the Sedo website is proof of a breach of the Policy. It is not, of itself, against the Policy to offer domain names for sale, nor to use the Sedo website in the manner alleged.
8.11.3. Policy paragraph 3.a.i.C. The Respondent has registered the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant, in particular by diverting away to third party websites business intended for the Complainant.
8.11.4. It is very difficult to envisage what purpose an individual in Australia may have had for registering names closely adjacent to the name of a UK bank. Since A&L have Australian trade marks I assume (but do not know) that they also operate in Australia. I have to agree that I can see little point in the registration of the Domain Names by the Respondent other than to divert web traffic intended for the Complainant to her own web sites. Her web sites are set up in such a way as to allow her to acquire an income from them. I would agree that the only reason for using domains based on the mistyping of the A&L marks is because the A&L traffic would be valuable some random name un-associated with banking would have been useless for the purpose. There would be little point in showing banking links on the web pages if it were not known that A&L were a bank and that people mistyping the A&L name would be seeking banking services. In my opinion, this can only be making unfair use of the Complainant's name and reputation. It is my opinion that this is unfairly detrimental to the Complainant's rights.
8.11.5. Policy paragraph 3.a.ii. Members of the public are bound to have been confused into believing that the Domain Names are registered to, operated or authorised by, or otherwise connected with the Complainant, and it should be inferred that they have.
8.11.6. Given that the only purposes for which the Domain Names are used is to generate an income which of itself is based on capturing traffic intended for another site and redirecting it in a way that pays "click through" fees to the Respondent; it seems self-evident that the Respondent is relying on creating confusion. In the absence of any explanation from the Respondent, there seems to be no other conclusion than that the Respondent sought to create confusion and is profiting from it. Any user of the Internet who ends up at one of the sites pointed to by the Domain Names is bound (at least in the first instance) to be confused as to whether it is a site owned and operated by A&L. It would be possible to believe that A&L sponsors or recommends some of the products on the Respondents web pages which is clearly not the case and is vehemently denied by the Complainant. As a result, it is my opinion that the Domain Names have been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights
8.11.7. Policy paragraph 3.a.iii By registering the eight Domain Names, and for the reasons set out in this Complaint, the Respondent is engaged in a pattern of making abusive registrations, or serial "typo squatting"
8.11.8. I cannot accept this allegation. To make all the registrations at once cannot to my mind constitute a pattern that would require the Respondent to have done the same or similar things a number of times.
8.12. Whilst I do not accept all the allegations made by the Complainant, there seems little point in exploring them further in view of my findings above.
8.13. It seems to me, in the absence of any explanation from the Respondent, that the only possible purpose for registering these 8 Domain Names was to profit from the "click through" process available via Sedo, and/or to sell the names for valuable consideration either to A&L or to one of their competitors.
8.14. I therefore find that the Complainant has established to my satisfaction that the Domain Names, in the hands of the Respondent, are Abusive Registrations.
9.1. For the reasons set out above I find that the Complainant has established that it has Rights in respect of a name or mark which is identical or similar to the Domain Names (as listed in §2. above) and I find that the Domain Names (as listed in §2. above), in the hands of the Respondent, are Abusive Registrations.
9.2. I therefore Determine that the Domain Names (as listed in §2. above) should be transferred to the Complainant.
Iain M. Tolmie ("the Expert")
Date: 16th July 2005