Nominet UK Dispute Resolution Service

DRS Number 3670

Academic Answers Limited -v- Sara Jason

Decision of Independent Expert

1.	Parties

Complainant:	Academic Answers Limited	
Country:	GB	  

Respondent:	Sara Jason
Country:	US

2.	Domain Name

ukessays.co.uk (“the Domain Name”)

3.	Procedural Background

10 May 2006: 	Complaint lodged with Nominet electronically	
15 May 2006:	Hardcopy complaint received by Nominet	
15 May 2006:	Nominet forwarded complaint to Respondent	
5 June 2006:	Response lodged with Nominet electronically	
6 June 2006:	Hardcopy response received by Nominet	
6 June 2006:	Nominet forwarded response to Complainant	
15 June 2006:	Non standard electronic reply lodged with Nominet	
15 June 2006:	Hardcopy reply received by Nominet	
15 June 2006:	Nominet forwarded reply to Respondent	

On 7 August 2006 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.

4.	Outstanding Formal/Procedural Issues (if any)

None

5.	The Facts

The Complainant has provided essays and dissertations under the name “Degree Essays UK” via its website at “ukessays.com” for three years.

The Respondent registered or acquired the Domain Name on 22 March 2006 or at some point thereafter and has used the Domain Name for a website offering essays and dissertations. 

The Respondent operates a number of other websites offering similar services.

6.	The Parties’ Contentions

Complaint

“Degree Essays UK” is an unregistered trade mark of the Complainant. 

The Respondent copied the Complainant’s site design, graphics, service and some text to make it appear as if it was the Complainant. The design of the site is almost indistinguishable from the Complainant’s site. This is an abusive registration. 

The Domain Name was registered to deceive the Complainant’s new and current customers into believing that they were buying from the Complainant, thereby causing damage to the Complainant’s business reputation and loss of profit. 

The website at the Domain Name appears directly under the Complainant’s Google Adwords result. This will cost the Respondent £1500 per day. The Complainant pays £2000 per day to be in top spot.

The Respondent intends only to unfairly disrupt the Complainant’s business for its own profit. 

There are no physical address details on the site and the Respondent refused to give any such address by telephone. The Respondent’s representative telephoned the Complainant denying any abusive registration or attempt to defraud or that there was even a resemblance between the two sites. The Respondent has not responded to four e-mails. 

The registration details may be fake. The seller of the Domain Name said that the buyer had acted on behalf of www.360netvertising.com
 
Response

The website at the Domain Name has been created to help students write their essays. The site targets UK students and so the Respondent chose a generic domain name comprising two generic words: “UK Essays”.

The Respondent checked if “UK Essays” was anyone’s trademark and concluded that it was not. 

The site does not copy the Complainant’s service.  There are many other sites offer essays or dissertations. That does not mean that those websites are copying the Complainant’s service. 

The other services of the Respondent are totally different to the Complainant’s. The Respondent offers 24/7 sales and support service. It has an entirely different price structure. The Respondent has not copied the Complainant’s design. Not even a button from its website has been copied. 

Nor has any text been copied. If the Complainant refers to copying of the labels such as ‘Home’, ‘FAQs, Prices, Order Now, Why Us etc or the name of the guarantees like No Plagiarism Guarantee, then it should complain to all those other websites who are using the same generic terms. 

The Complainant is attempting to blackmail the Respondent. It has unsuccessfully complained to the Respondent’s hosting, advertising and payment providers. 

The Respondent’s registration details are correct. It has received documents from Nominet. 

When this matter came to light, the Respondent felt that there were some minor similarities between the sites such as the colour theme. To remove any confusion, the Respondent changed the colour of our site. Red is generally the favourite colour for the UK market.

The Complainant is acting unfairly. Anyone can bid on Google Adwords and that is fair play. The reason for this complaint is that the Complainant cannot handle the competition. 

The Respondent did not register the Domain Name with the intention of deceiving new and current customers of the Complainant. The Respondent intends only to help the customers writing their essays and it wants to do so fairly. There has been no abusive registration or fraud.

Reply

The Respondent implies that it has just started operating in the essay industry and targeting UK customers and that by coincidence it bought a very similar domain name and created a site with an almost exact design to the Complainant’s. Yet the Respondent’s other sites such as essayrelief.co.uk and academicpofs.com have been in competition with the Complainant for well over a year.

This was an obvious and deliberate attempt to cash in on the Complainant’s image and customers.

The Respondent has attempted to conceal its identity on various of its sites with false information. It has a propensity to be deceitful. Correspondence to Google shows that the Respondent is based in Pakistan.  

The Respondent’s site design was a “rip off” of the Complainant’s designed only to confuse the Complainant’s customers; namely the swoosh down the left side, the 3 pillar design, the white and orange header, the similar pen logo, the similar 3 graphics in the same place on the header, same gold logo text, similar button design. Overall the entire look and colours were all strikingly similar.

Some complaints have been made to the Complainant.

The explanation that “red is the favourite colour for the UK market” is nonsense. The response doesn’t explain why the Respondent’s site is an almost carbon copy of the Complainant’s site.

The Respondent was advertising another site on Google Adwords. Why spend the money for two adverts for the same customers other than to confuse new and existing customers of the Complainant? 

These “blackmail attempts” were reasonable attempts to settle this matter out of court. The Respondent refused to settle and would not even provide a trading address. 

Such is the Respondent’s wish to cash in on the Complainant’s reputation that it has proposed merger with the Complainant. 

It is not true that there has been no action from third parties. The Respondent’s Google adverts remain down.

7.	Discussion and Findings:

General

To succeed, the Complainant has to prove in accordance with paragraph 2 of the DRS Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the DRS Policy) in respect of a name or mark identical or similar to the Domain Name and, second, that the Domain Name, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the DRS Policy).

Complainant’s Rights

Does the Complainant have common law rights the names “UK ESSAYS” and/or “DEGREE ESSAYS UK”?

Under the Policy, a Complainant cannot rely on rights in a name or term which is wholly descriptive of the Complainant’s business. 

I am not convinced that either “UK ESSAYS” or “DEGREE ESSAYS UK” is wholly descriptive of the Complainant’s business. Certainly “Essays” alone would be. But the addition of the extra, albeit highly descriptive, words is in my view sufficient to shift both names away from a normal description of the Complainant’s business. 

Even if they are wholly descriptive, the names “UK ESSAYS” and “DEGREE ESSAYS UK” could nonetheless have become distinctive through use – as have names such as “British Gas” and “British Airways”.  I must therefore determine whether the names “UK ESSAYS” and/or “DEGREE ESSAYS UK” have acquired a secondary meaning displacing any primary descriptive meaning. See, eg, DRS 2166 (<game.co.uk>).

The Complainant has not produced much information or evidence about the extent and nature of its trading activities. However, there is the Complainant’s uncontroverted assertion that it has been using the names for three years. And the Respondent does not contest the Complainant’s claim that it is spending approximately £2000 per day to achieve top sponsored position on Google for “UK ESSAYS”. 

The Complainant also holds top spot in the Google natural listings for searches against “UK ESSAYS”.

Furthermore, I have concluded below that the Respondent set out to attract business intended for the Complainant. Such activity by the Respondent presupposes that the Complainant’s business was known and identified by the name “UK ESSAYS”.

Taking these matters together, I conclude that the Complainant has - narrowly - established rights in respect of the names “UK ESSAYS” and “DEGREE ESSAYS UK” and that those names are, respectively, identical and similar to the Domain Name.

In reaching this conclusion, I am mindful that decisions under the Policy have consistently held that the threshold for establishing rights is a low one. And, as the appeal panel pointed out in DRS 3316 (<bounce.co.uk>), this is not a court process; the DRS is intended to be a relatively simple, user friendly method of adjudicating domain name disputes and experts are permitted to use a measure of common sense. 

Abusive Registration

Is the Domain Name an abusive registration in the hands of the Respondent? Paragraph 1 of the DRS 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.”

The key issue here is to ascertain the Respondent’s purpose in registering the Domain Name. The Respondent said that its aim was to provide essays to UK students and it chose the Domain Name because it was an appropriate generic term consisting of two generic words “UK” and “ESSAYS”. Certainly paragraph 4aii of the Policy states one factor which may be evidence that a domain name is not an abusive registration as follows: “The Domain Name is generic or descriptive and the Respondent is making fair use of it”. 

Whether or not the term “UK ESSAYS” as a whole is generic (ie in common use), it is undoubtedly descriptive. But is the Respondent making “fair use” of it?

The Respondent does not deny that it was aware of the Complainant when it registered the Domain Name.

The Complainant says that the website at the Domain Name was strikingly similar to the design of its own website at www.ukessays.com. 

The Respondent denies that it has copied the Complainant’s design or text. “Not even a button from its website has been copied”. The Respondent says that navigation menu items such as “Home”, “FAQ’s” etc are common to many websites.  The Respondent does admit that there were some “minor similarities” such as the red colour theme which it claims is the “favourite colour” for the UK market. The Respondent later switched to a blue theme and made some other changes to the design of its site.

I have compared the home page of the previous version of the Respondent’s site with that of the Complainant’s site. I have to agree with the Complainant. The overall structure and look and feel of the two sites is virtually identical. For example:

1.	There is a large swoosh on the left of both sites.
2.	Virtually identical images of the nib of a fountain pen appear from the top left of both pages in exactly the same place.
3.	Both sites contain an identical sized header and both headers are divided into boxes at the same points. 
4.	The left box in the Complainant’s header contains the name “Degree Essays UKTM”.  The left box of the Respondent’s header contains the name “Essays UKTM“ in the same font.
5.	The Complainant’s header includes one large and two smaller photos of an academic institution, students sitting on the grass and a student wearing a mortar board. The Respondent’s header contains three photos of the same sizes with the same respective themes in the same locations.
6.	The right box in the Complainant’s header contains a phone number. So does that in the Respondent’s header.
7.	The location and design of the navigations buttons on the left hand side of both sites is very similar. The text and graphics on both sets of buttons is almost identical. 
8.	There is a large box in the centre of the Complainant’s home page containing a video clip. There is a large box in the same place in the centre of the Respondent’s home page stating “Genuine UK Based Company”. 
9.	Both sites include seven numbered bullet points in the same place in an identical and unusual font. 
10.	There is a vertical bar in the same place on the right of both sites. The top part of the Complainant’s bar says “£500 No Plagiarism Guarantee” in a circular logo. The top part of the Respondent’s bar says “No Plagiarism Guarantee” in an identical circular logo.
11.	Below this both sites have a “Live Help” link with a graphic of a woman plus telephone.

I have not had the benefit of a colour printout of the Respondent’s site but it is common ground that its theme was red, like the Complainant’s. The Respondent claims that red is the “favourite colour” for UK essay websites. This seems inherently unlikely and is not backed up by any evidence.

In any case, even leaving aside the colour, it is clear to me that the Respondent’s site is a substantial copy of the design and appearance of the Complainant’s site.

So here we have the Respondent, a competitor of the Complainant, who has acquired a domain name which is the .co.uk version of the Complainant’s .com domain and has placed on it a website which (at least until it was later changed) was a substantial copy of the design and appearance of the Complainant’s site. I can only conclude from this that the Respondent’s purpose in registering the Domain Name was not a genuine one but rather its aim was to divert business from the Complainant by attracting and confusing its customers into thinking that the Domain Name was connected with the Complainant. 

In my view the Domain Name was acquired and has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights and is therefore an abusive registration.

The factors above are sufficient for me to reach this decision. I have not felt it necessary to make any findings on the following additional issues raised by the Complainant: The Respondent’s bidding on “UK ESSAYS” in Google; steps which may or may not have been taken by third parties such as Google or webhosts in response to complaints by the Complainant; allegedly false registration details; correspondence between the parties (which has not been produced in full) concerning a suggested merger by the Respondent and other matters; the Respondent’s alleged propensity for deceitfulness; and two alleged complaints from confused customers to Google on the day the complaint was filed.    

8.	Decision

The domain name ukessays.co.uk should be transferred to the Complainant.

            Adam Taylor                                                                  Date