Nominet UK Dispute Resolution Service

DRS Number 3894

Post Office Limited

v

Kwan Jin

Decision of Independent Expert

1.	Parties

Complainants:	Post Office Limited	
Country:	United Kingdom	

Respondent	Mr Kwan Jin	
Country:	Korea	

2.	Domain Names

wwwpostoffice.co.uk   -  registered on 29 May 2004.
postofficeloans.co.uk – registered on 20 April 2004.
postofficeservices.co.uk -  registered on 20 April 2004.

3.	Procedural Background

The Complaint was lodged with Nominet on 4 August 2006.  Nominet validated the Complaint and notified the Respondent of the relevant Complaint on 9 August 2006 and informed the Respondent that it had 15 days within which to lodge a Response. 

No response was received from the Respondent.

No mediation having been possible, on 14 September 2006 the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

David Flint, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4.	Outstanding Formal/Procedural Issues (if any)

The registrant is listed as an individual and uses one of two addresses: Domain Administration Limited PO Box 37410 Auckland 1033 New Zealand and 119-28 Sang-Do 1 Dong Dong Jak Gu Seoul lanarkshire 603021 Korea 

The Complainant believes that the registrant is the same in each instance for a number of reasons: (a) the Registrant's agent is the same in each instance; and (b) the Auckland address was used by the Respondent as the listed administrative address, and was used by Nominet as a means of contact in the <vovlo.co.uk> proceedings (DRS 03700). 

The Expert believes for the reasons indicated and from the evidence produced in support of the Complaint, that the Respondent in each case is the same.

5.	The Facts

The Complainant has a substantial reputation and goodwill in the United Kingdom in the POST OFFICE brand through the extensive services carried out by the Complainant under that brand at its 14,000 Post Office branches. It should be noted that the Complainant: (a) sells around 170 products and services including personal loans; (b) carries out around 2.7 billion transactions per year (the majority of which relate to banking, leisure and postal services); (c) every year around 500 million household bills are paid over at the Complainant's counters; (d) every year a million travel insurance policies are sold by the Complainant; (e) the Complainant is one of the largest providers of foreign currency in the United Kingdom. An illustrative list of the registered trade marks for the POST OFFICE brand owned by the Complainant has been provided. 

6.	The Parties’ Contentions

Complainant

The Domain Names are identical or similar to the registered trade marks owned by the Complainant. Further, the Complainant's use of its respective brands is sufficient to give it rights in passing off in the POST OFFICE brands. The Complainant has "Rights" as defined in the Nominet DRS Policy. The Domain Names are as follows: wwwpostoffice.co.uk The domain has been registered such than an internet user who omits to type the "." between "www" and "postoffice.co.uk" will get taken to the Respondent's website. www.postofficeloans.co.uk and www.postofficeservices.co.uk These domains are clearly derivatives of POST OFFICE and are intended to make the internet user believe that these two domains host websites run by the Complainant relating to "loans" and "services" respectively, or that the websites offer loans and other services provided by, or otherwise connected to, or endorsed by the Complainant. The addition of the words "loans" and "services" to the Complainant's name (a registered trade mark) is merely descriptive of services and products that the Complainant provides. Accordingly, the Domain Names are identical or similar to the name in with the Complainant has Rights. The Complainant contends that the Respondent has no such rights in the Domain Names.

The Complainant seeks transfer of each Domain Name.

Respondent

No response was received from the Respondent

7.	Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant’s Rights

In this case the first limb of that task is straightforward. The Complainant has been trading since at least the 19th Century from premises described as Post Offices and has been known as such within the United Kingdom for at least as long and has produced substantial evidence of its so doing.  In those circumstances the Expert is satisfied that the Complainant does have Rights in respect of a name or mark which is identical or similar to each Domain Name.

Abusive Registration

This leaves the second limb. Is each Domain Name, in the hands of the Respondent, an 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 3a of the Policy. 

The Respondent has been the respondent in four other cases (DRS 2181, DRS 3305 DRS 2850, DRS 3700) in which his registration of the name in question has been found to be abusive. Accordingly in terms of paragraph 3 c of the Policy, there is a presumption of Abusive Registration in respect of Mr Kwan Jin. Although this presumption is rebuttable, no attempt so to do has been made.

In the cases immediately before this Expert relevant ‘factors’ in paragraph 3 are to be found in subparagraphs i and ii, which read 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;”    

The Expert interprets “as” in sub-paragraph i. B as being synonymous with “for the purpose of”. Were it to be interpreted otherwise all domain name registrations would inevitably constitute “blocking registrations” for any later arrival wishing to use the name in question. 

The expert considers that the suffixes “loans” and “services” are descriptive of the services offered by the Complainant under its name and that they rely on the goodwill associated with the Complainant.

Additionally, the Expert considers that the contact details provided by the Respondent to Nominet are, on balance of probability, false. The fact that each of the e-mails sent by Nominet to the Respondent were returned as undeliverable is indicative of this fact.   

In Case DRS 3700 (vovlo.co.uk) ( a case with the same respondent as the cases here), the Expert noted: -

“The evidence would also strongly suggest that the Respondent has given false contact details to Nominet or has been intentionally misleading, in failing to update the various contact details on the Register, and in identifying himself as a "UK Individual" and supposedly as a "non-trading individual" in order to benefit from the provisions of Nominet's Terms and Conditions allowing a "consumer" as " ...an individual not registering, using or planning to use the domain name as part of a business, trade or profession" to opt-out from having their address shown in the WHOIS. The evidence shows the commercial scale of the typosquatting variations of domain names registered by the Respondent and demonstrates that these are used for the generation of click-through revenues, which must presumably be at least sufficient to support such numerous registrations and websites. In the Expert's view, that amounts to operating a "business" ­ registering and using domain names, being typographical variations of well-known marks and names, and establishing associated websites to generate click-through income therefrom.  

In these circumstances, the Expert considers that Nominet should give serious consideration to revoking the Respondent's opt-out for all his domain names on these grounds and to whether sanctions may be invoked under Paragraph 16 of Nominet's Terms and Conditions (on the grounds that Respondent has provided "significantly inaccurate, not correct, unreliable or false contact details (including names), failed to keep [his] contact details up to date, or failed to give [Nominet] those details at all"), or under Paragraph 17 on the reasonable belief that the contact details for those names may indeed be "so inaccurate or false" that it is not possible to ensure that the Respondent himself can be notified of changes (witness the fact that the contact details had not been updated in the present case).”

This Expert would concur with these sentiments.

In the papers passed to the Expert in support of this Complaint, were details of some further 500+ domains which were registered in name of the Respondent. Whilst not wishing to prejudge any future proceeding, the Expert notes that these names are either the names of, or typographical errors of the names of major businesses and locations within the United Kingdom and invites Nominet to consider whether it is possible to cancel these names on the basis of false contact information rather than by 500 additional cases under the DRS. 

The Expert finds that each Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s rights.

8.	Decision

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to each Domain Name and that each of the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Names wwwpostoffice.co.uk, postofficeloans.co.uk and postofficeservices.co.uk  be transferred to the Complainant.

David Flint

24 September 2006