Aifos PLC v Copley (t/a Lorraine Copley Mortgage Brokers)  [2005] DRS 02545 (17 June 2005)

Nominet UK Dispute Resolution Service
DRS 02545
Aifos PLC –v–Lorraine Copley (t/a Lorraine Copley Mortgage Brokers)
Decision of Independent Expert
1	Parties
Complainant:
Aifos PLC
Country: UK
Respondent:
Ms Lorraine Copley
(trading as Lorraine Copley Mortgage Brokers)
Country: UK

2	Domain Name
AIFOS.CO.UK
3	Procedural Background
A Complaint in respect of <aifos.co.uk> (the “Domain Name”) under Nominet UK's Dispute Resolution Service Policy (the “Policy”) was filed on 12 April 2005 and received from the Complainant in full on 14 April 2005.  Nominet forwarded the Complaint to the Respondent on 19 April 2005.  No response was received from the Respondent.  On 17 May 2005 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”).  The applicable fees were received from the Complainant on 1 June 2005.  I was appointed as Independent Expert as of 8 June 2005 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.  
4	Formal/procedural issues 
Paragraph 15b of the Procedure provides that if, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or Procedure, the Expert will proceed to a Decision on the Complaint.  Nominet has taken the appropriate steps to serve the Complaint in accordance with the terms of the Procedure.  I find that there are no exceptional circumstances.  Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non‑compliance with the Procedure as I consider appropriate.  
5	The Facts
The Complainant was incorporated on 15 May 2003 and is the UK subsidiary of Aifos Arquitectura Y Promociones Inmobiliarias S.A. (“Aifos SA”), a Spanish property development company.  The Respondent is a mortgage broker.  According to the Nominet WhoIs database, the Domain Name was registered on 16 October 2003.  It presently resolves to a domain holding page of 123-Reg.  
The Parties’ Contentions
Complainant
(a)	Aifos SA is the registered proprietor of the Community Trade Mark AIFOS PROMOCIONES INMOBILIARIAS.
(b)	The Complainant and Aifos SA have spent a significant amount of time and money in building up the Aifos brand in Spain, England, Ireland and Germany (where they have offices) and there is considerable goodwill in the name.
(c)	Aifos SA registered the domain name <aifos.com> on 1st February 1999 and has registered the domain name <aifos.es>.
(d)	“Aifos” is Spanish-based and Spanish-sounding.  It was invented by Aifos SA and does not have any specific meaning in Spanish.  It is extremely unique and unusual.
(e)	In setting up its business between May and October 2003, the Complainant contacted a number of mortgage brokers including the Respondent.  In the circumstances, the Respondent must have come across the name “Aifos” at that time and her registration of the Domain Name cannot have been coincidental but must be abusive.
(f)	The Respondent does not use the Domain Name or have any association or connection with the name “Aifos”.  Although the Respondent has said in correspondence that she is in the process of making use of the Domain Name, she expressed a willingness to sell the Domain Name in the same letter and claimed that she had had an interest shown by another party wishing to buy it.  The Respondent’s willingness and attempts to sell the Domain Name to the Complainant are strongly indicative of the Respondent’s intentions and motives when the Respondent registered the Domain Name.  
(g)	The Domain Name is an Abusive Registration because the Respondent registered the Domain Name primarily for the purpose of selling or otherwise transferring the same to the Complainant.  
In support of the Complaint, the Complainants provided documents including details of the Community Trade Mark registration of Aifos SA and copies of correspondence with the Respondent.  
Respondent	
The Respondent has not filed any response to the Complaint.
6	Discussion and Findings
The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities 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.
Complainant’s Rights
“Rights” are defined in the Policy and in the Procedure.  Rights “includes, but is not limited to, rights enforceable under English law.”  
Although the Complaint does not spell out clearly just what Rights the Complainant claims, the position appears to be that it has carried on business in the UK under the name Aifos PLC since about October 2003.  It does not claim any formal licence from its parent company, Aifos SA, in respect of its use of the Community Trade Mark AIFOS PROMOCIONES INMOBILIARIAS (the “CTM”) but I assume that the Complainant has adopted the name Aifos PLC and has used the sign AIFOS with the consent of Aifos SA.  The application to register the CTM was filed by Aifos SA on 28 February 2003.  
It is well established that for the purposes of the Policy and Procedure, Rights includes not only registered trade mark rights but also such rights in a name or mark that might give rise to a claim in passing-off.  The Complaint is unsatisfactory in that the Complainant relies on a CTM that is owned by its parent company which is not a party to these proceedings and does not appear to claim any rights in the CTM itself.  Since Version 2 of the Procedure was adopted in relation to all complaints filed under the Policy on or after 25 October 2004, it has been expressly permissible for multiple Complainants to file a complaint (Clause 3b of the Procedure).  This provision assists particularly with circumstances such as the present where two or more parties have a common interest in respect of a complaint and the relevant Rights are shared in some way or where the Rights are vested in one entity but the complaint might more naturally be filed by an associated company or other third party. 
There is an underlying assumption that the Claimant claims some benefit from its parent’s CTM but an open question is whether it is now a requirement under the Policy for the owner of the Rights to be joined as a Complainant in a case where a Complainant wishes to rely on Rights vested in an associated company.
A further difficulty is that the CTM, which comprises the following device word mark,

is clearly not identical to the Domain Name even if I ignore, as I do, the “.co.uk” domain suffix.  The Complainant does not make any submissions as to whether it is similar to the Domain Name.  I note, however, that the CTM includes the word AIFOS, albeit in stylised form, and draw on my own understanding that “promociones inmobiliarias” is Spanish for the generic, descriptive term “real estate promotions”.  Ignoring this generic term, the CTM is identical to the Domain Name.
Finally, in relation to Rights, the Complaint makes the bare assertion that “the Complainant and [Aifos SA] have spent a significant amount of time and money in building up the “Aifos” brand in Spain, England, Ireland and Germany (where they have offices), and there is considerable goodwill in the name “Aifos”.  The Complainant does not adduce any evidence as to the extent of spending by the Complainant or Aifos SA on marketing the AIFOS brand or as to the amount of business done by them under the AIFOS mark that might support the submission as to the amount of goodwill in the name.
In the circumstances, it is apparent that the Complaint could be criticised for being somewhat lightweight.  Nevertheless, in assessing whether the Complainant has established that it has Rights for the purposes of the Policy, I take into account the fact that there has been no response by the Respondent and no contradiction of the submissions made in the Complaint.  The Complainant has apparently carried on business in the UK under the name Aifos PLC since October 2003.  I also take into account the fact that AIFOS is an unusual and distinctive word that may well have been invented by Aifos SA.  A Google search produces several thousand hits of which the overwhelming majority (on an informal sample basis) relate to Aifos SA (not always in flattering terms).  
I consider that it may well have been more appropriate for the Complaint to have been brought in the joint names of the Complainant and Aifos SA, as envisaged by Version 2 of the Policy, so that the joint Complainants might have taken in that case the benefit of the CTM.  On balance, however, given the uncontroverted, albeit limited, evidence as to its own activities and its association with Aifos SA, I accept that the Complainant has established sufficient Rights in respect of AIFOS and AIFOS PROMOCIONES INMOBILIARIAS through its activities in the UK and its association with Aifos SA and that the failure to join Aifos SA in not fatal to the Complaint.  
Accordingly, I find that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.  
Abusive Registration
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.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy.  These include:
3ai  Circumstances indicating that the Respondent has registered …the Domain Name:
A.	primarily for the purposes of selling, renting or otherwise transferring the Domain Name to 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; and
B.	as a blocking registration against a name or mark in which the Complainant has Rights.
The evidence of the Complainant is that AIFOS is an invented name created by Aifos SA.  In the course of setting up its business between May and October 2003 the Complainant contacted a number of mortgage brokers in the UK including the Respondent.  The Complainant has not produced any evidence of this but, in the absence of any Response to the Complaint, it has not been denied.  
In its letter dated 18 March 2005, answering correspondence from solicitors instructed by the Complainant, the Respondent asserted no rights to the Domain Name and volunteered no explanation as to how the Respondent came to register the Domain Name.  She claimed that she was in the process of making use of the Domain Name and that she had received interest from another party wishing to buy the Domain Name from her but stated that she would naturally consider any offer the Claimant wished to make.
Clause 3b of the Policy makes it clear that failure to use the Domain Name for the purposes of a website is not in itself evidence that the Domain Name is an abusive registration.  Nevertheless, in this case, the fact that the Respondent has failed to make any legitimate use of the Domain Name bolsters the case put forward by the Respondent that the Domain Name comprises a unique, unusual name invented by the Claimant which the Respondent would have had no cause to register had it not been brought to her attention as an unusual word when she was contacted by the Claimant as it sought to set up its business in the UK.  The reaction of the Respondent to correspondence from the Claimant’s solicitor in offering the Domain Name for sale and threatening the Claimant with the prospect of selling the Domain Name to another interested party supports the submission that the Respondent registered the Domain Name with a view to selling it on to the Claimant or a competitor for valuable consideration in excess of her direct out-of-pocket costs.
The Respondent has not put forward either in a Response or in any correspondence any explanation or justification for her having registered the Domain Name that I accept is an unusual, invented word that has no obvious association with anyone other than the Claimant.  It is therefore difficult to imagine what legitimate reason the Respondent could have had for registering the Domain Name and quite credible that she did so in reaction to being contacted by the Claimant in the early stages of its setting up in business.  The Respondent has not produced anything to dispel the natural inference that this was the case on the basis of the facts put forward by the Claimant.  
In all the circumstances, I consider that the Domain Name was registered and has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights in the name AIFOS and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.
7	Decision
Accordingly, I find that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.  I therefore determine that the Domain Name be transferred to the Complainant Aifos Plc.  

……………………………….
Ian Lowe
17 June 2005