Nominet UK Dispute Resolution Service

DRS Complaint No 03306

Decision of Independent Expert

1.	Parties

Complainant:	Arcadia Group Brands Ltd 	
Country:	GB	  

Respondent:	Mr Jes

2.	Domain Name

wwwdorothyperkins.co.uk

3.	Procedural Background

The Complaint was received in full by Nominet on 27 January 2006.  The Complaint was validated by Nominet and sent to the Respondent on that date.  Nominet informed the Respondent that it had 15 working days, i.e. until 22 February 2006, to respond to the Complaint.

By 23 February 2006, no formal Response having been received from the Respondent, Nominet wrote to the Complainant’s representative confirming that no Response had been filed and invited the Complainant to request an Expert Decision.

The Complainant paid the fee within the relevant time limit.  On 7 March I was contacted by Nominet and asked to confirm that I was able to provide an Expert Decision.  I responded to Nominet in writing on 8 March in the following terms –

	“Arcadia Group has previously been a client of FFW although we have not conducted any work for them in the last 2 years, and they are broadly speaking considered as an ex-client.
	
	I have had no involvement with Arcadia Group at all, and have no conflict in acting personally, but believe the above information should be disclosed to the parties for them to determine whether they would prefer an alternative expert to be appointed.”

On 9 March, the matter was duly referred to me, Simon Chapman, (“the Expert”) for an Expert Decision.

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a formal response to the Complaint.  From the papers that have been submitted to me by Nominet, it is apparent that they have sent the Complaint to the Respondent by post and e-mail to the contact details held on Nominet’s register.  

When registering a .uk domain name applicants agree to be bound by Nominet’s Terms and Conditions.  Clause 4.1 of those terms and conditions states that the registrant of the domain name shall:-

“4.1   give and keep us notified of your correct name, postal address and any phone, fax or e-mail information and those of your contacts (if you appoint any, see condition 5.2).  This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register”

In addition paragraph 2(e) of the Dispute Resolution Procedure (the “Procedure”) states that:- 

“e. Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i.     if sent by facsimile, on the date transmitted; or
ii.    if sent by first class post, on the second Day after posting; or 
iii.   if sent via the Internet, on the date that the communication was transmitted;
iv.  and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.” 

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.  

I now move on to consider the consequences of the Respondent not submitting a response.
The Procedure envisages just such a situation and provides in Paragraph 15 that:-

“c.	If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate.”

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision. 

I will draw such inferences from the Respondent’s failure to respond as I think appropriate, but must keep in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say.

5.	The Facts

The Complainant is the proprietor of the trade mark ‘DOROTHY PERKINS’ which is registered for a variety of goods and services and which is used in respect of the well known chain of retail shops of the same name.  The Complainant is the registrant of the domain name <dorothyperkins.co.uk>.

It is alleged that the mark is ‘well-known’ and dates back some 70 years.

The Domain Name was registered by the Respondent in December 2003.  It is directed to a genuine page of the official Dorothy Perkins website at
http://www.dorothyperkins.co.uk/promostores/dp/2006/ which provides details of a Spring sale and other information about the retailer.

It is alleged by the Complainant that “We understand that internet users who mis-type our website address by leaving out the “.” (full stop) after “www”, will inadvertently generate income for the registrant…”.

There is no specific evidence of any such income being generated by the Respondent, and the Complainant does not clarify how it believes the Respondent does so. 

The Parties’ Contentions

Complainant

The Complainant asserts that it has Rights in respect of a name and mark which is identical or similar to the Domain Name and the Domain Name in the hands of the Respondent is an “Abusive Registration” (as defined in the DRS Policy).

In support of the claim to Rights, the Complainant says that –

i)	it is the proprietor of various registrations for the mark ‘DOROTHY PERKINS’, and

ii)	the mark ‘DOROTHY PERKINS’ is a well known mark dating back some 70 years.

In support of the claim that the Domain Name is an Abusive Registration the Complainant says that -   

iii)	the Respondents use will inadvertently generate income for the Registrant, and

iv)	in addition to being abusive the use complained of is an infringement of their trade mark rights.

Respondent

As indicated above, the Respondent has not filed a Response.

6.	Discussion and Findings:

General

To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Dispute Resolution Service Policy (“the Policy”), prove to the Expert on the balance of probabilities that:

(i)	it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and

(ii)	the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

Despite the absence of a response from the Respondent, the Complainant must make out its case to the Expert on the balance of probabilities.  It is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

Complainant’s Rights

The DRS Policy defines Rights as follows –

“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”

The Complainant is the proprietor of registrations for the trade mark ‘DOROTHY PERKINS’, and has extensively used that mark such that it will have created extensive goodwill therein.  It is clear that the Complainant therefore qualifies as having the necessary rights in that mark.  The Policy requires such rights to be in a name or mark identical or similar to the Disputed Domain Name.  The Domain Name is <wwwdorothyperkins.co.uk>.  For the purpose of analysing whether the Domain Name is identical or similar to the name or mark in which rights are claimed, one must ignore the .co.uk suffix.  The comparison is therefore between ‘DOROTHY PERKINS’ on the one hand, and ‘WWWDOROTHYPERKINS’ on the other.  The letters ‘WWW’ are a generic reference to the well known abbreviation of ‘WORLD WIDE WEB’ and therefore not such as to distinguish the latter from the former.  In my opinion the Complainant has established that it has Rights in a name or mark similar to the disputed Domain Name.   

Abusive Registration

I now go on to consider the extent to which the disputed Domain Name is an Abusive Registration.

The Complainant asserts that the registration of the Domain Name is an Abusive Registration because internet users who mis-type the Complainant’s website address by leaving out the “.” (full stop) will use the Domain Name, which the Complainant asserts will inadvertently generate income for the Respondent.  When one types the Domain Name into an internet browser one is almost simultaneously directed to the Complainant’s website page, and indeed there is no obvious evidence of the Respondent generating any income from the diversion or link.  It is curious why anyone would register a domain name such as that in the present dispute without an intention to profit from doing so unless the registrant were an avid fan of the legitimate rights owner and keen to drive traffic to its site.  I have to say that I am highly sceptical as to the intentions of the Respondent in the present case, however the Complainant has offered no evidence which supports its allegation that the Respondent is profiting from its use of the Domain Name, and my forensic technical skills are not such as to be able to adduce any such evidence, even if I felt compelled to look for it.  As indicated above, the Complainant must prove its case on the balance of probabilities and without any evidence in support of its allegation I do not find that it has crossed that hurdle on the ground referred to.   

The DRS Policy sets out a list of factors which may be evidence that a domain name is an Abusive Registration.  One of the factors is contained in Paragraph 3(a)(ii) of the policy and provides as follows –

	“Circumstances indicating that the Respondent is using the Domain Name in an way 	which has confused people or businesses into believing that the Domain Name is 	registered to, operated by, or otherwise connected with the Complainant.”

The paragraph referred to requires there to have been actual confusion insofar as it uses the word ‘has’.  However the factors that are set out in paragraph 3 of the Policy are non-exhaustive, and as such it is open to me to determine whether if the same factor were to apply with a likelihood of confusion, the registration would still be Abusive.  In my opinion, given that the Domain Name consists entirely of the Complainant’s well known trade mark, save for the addition of the letters ‘WWW’, such that users of the Domain Name are likely only to use the Domain Name when they mistakenly omit the “.” (full stop) when typing the domain name of the Complainant, and the fact that the Domain Name is directed to the Complainant’s website, I believe there is a strong likelihood that people or businesses will be confused into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.  I believe that this result will take unfair advantage of or be unfairly detrimental to the Complainant’s Rights, and therefore conclude that the registration of the Domain Name is an Abusive Registration. 

7.	Decision

For the reasons set out above, I find that the Complainant does have Rights in respect of a name or mark which is similar or identical to the disputed Domain Name <wwwdorothyperkins.co.uk>, and that the Domain Name in the hands of the Respondent is an Abusive Registration.  The Complaint therefore succeeds. 

The disputed Domain Name <wwwdorothyperkins.co.uk> should be transferred to the Complainant.

Simon Chapman

28 March 2006