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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Coventry Building Society v Domain Names [2006] DRS 3998 (3 November 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3998.html Cite as: [2006] DRS 3998 |
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Complainant:
Coventry Building Society
UK
Respondent:
Domain Names
Malaysia
A Complaint in respect of
On 11 October 2006 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 Complaint was referred for a decision by an Independent Expert following payment by the Complainant of the required fee on 16 October 2006. I was appointed as Independent Expert as of 23 October 2006 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.
There are no outstanding formal or procedural issues.
The Complainant is one of the leading Building Societies in the UK and has traded under and by reference to that name for many years. It is the registered proprietor of several UK trade marks COVENTRY registered from 1986 and operates a website at www.coventrybuildingsociety.co.uk and other websites.
According to the Nominet WhoIs database, the Domain Name was registered on 11 March 2005. At the date of the Complaint the Domain Name resolved to a web portal giving access to pages of links to other websites under various headings including "Finance".
Complainant
The Coventry Permanent Economic Building Society began trading in 1884. Following various mergers with other Building Societies in the 1970s and 1980s, it became known as Coventry Building Society and has traded under and by reference to that name since 1983. The Complainant has over 1 million customers and assets in excess of £11 billion.
The Complainant is the registered proprietor of various UK trade marks in respect of COVENTRY in a number of classes dating from 1986 of which details are provided with the Complaint.
The Complainant is a major provider of pension, investment, insurance and trustee services and has acquired a considerable reputation in the provision of financial services in the UK. In addition to its branch network, the Complainant carries out e-commerce business through websites at www.coventrybuildingsociety.co.uk and www.thecoventry.co.uk.
Accordingly, the Complainant has acquired substantial goodwill and reputation in the name COVENTRY BUILDING SOCIETY throughout the UK in relation to Building Society and financial services.
The Domain Name is confusingly similar to the Complainant's trading name and its main e-commerce trading website at www.coventrybuildingsociety.co.uk and incorporates the Complainant's trade mark COVENTRY.
The active content hosted at the website to which the Domain Name resolves includes a number of advertising links for services not associated with the Complainant together with a banner heading "Finance" which links to a web page containing listings of a number of the Complainant's competitors.
The Respondent is in no way connected with the Complainant and has no legitimate rights or interest in the Domain Name or any of the Complainant's trade marks. The Respondent has not made any non-commercial or fair use of the Domain Name and there is no legitimate reason for its registration of the Domain Name. It is inconceivable, therefore, that the registration of a domain name including the combination of words "Coventry Building Society" could be for any reason other than to divert customers seeking to locate information or services relating to the Complainant away from the Complainant's site. This is clearly an attempt to generate traffic to the Domain Name to take unfair and financial advantage of the goodwill and reputation which exists in the Complainant's name.
The Domain Name has been used by the Respondent in a way which has confused the Complainant's customers into thinking that it was controlled by the Complainant. The Complainant was alerted to the registration of the Domain Name by one of its banking customers who was mistakenly directed to the website at the Domain Name. It appears evident that the Domain Name was registered solely with the intention of capturing typographical errors made by the Complainant's customers who by accident omit the full stop after the letters "www".
There can be little doubt that the Respondent was aware of the Complainant's business and reputation when it registered the Domain Name. The primary purpose of the registration of the Domain Name was to confuse and take advantage of the Complainant's reputation in order to divert customers and potential customers away from the Complainant's main trading website for financial gain through the advertising links to services not associated with the Complainant.
Respondent
The Respondent has not filed any response to the Complaint.
General
Although the Respondent failed to submit a Response to the Complaint, there is no scope for a decision in default under the Policy and Procedure. 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. The Complainant is still required, however, 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".
The Complainant has adduced uncontroverted evidence, first, of a number of registrations of UK trade marks in respect of COVENTRY dating back to 1986.
In addition, the Complainant sets out details of the history of Coventry Building Society whose predecessor under the name The Coventry Permanent Building Society began trading in 1884 and evidence that the Complainant has itself traded under and by reference to the name Coventry Building Society since 1983. Various documents are exhibited to the Complaint including the cover of a brochure celebrating 100 years of progress from 1884 to 1994, the report and accounts of the Complainant for 1984 and various other advertising leaflets published over the period since 1984.
The uncontested evidence is that the Complainant has carried on a substantial business under its name for over 23 years such that it has acquired a substantial goodwill and reputation in that name. I find that the Complainant has therefore established rights not only in the mark COVENTRY but also in the name COVENTRY BUILDING SOCIETY. Ignoring the suffix ".co.uk" the Domain Name differs only by the addition of the letters www in front of the name. Accordingly, I am satisfied 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 Registrant has registered or otherwise acquired the Domain Name primarily:
C. for the purpose of unfairly disrupting the business of the Complainant; and
3aii 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 Respondent has not answered the Complaint and there is, therefore, no explanation as to the circumstances in which the Domain Name was registered or as to how it has been used. In the absence of any such explanation, it seems to me to be almost impossible to conceive of any legitimate reason for the Respondent to register the Domain Name. The use of a domain name comprising "www" followed by the name of a very well-known financial institution that carries on e-commerce through the Internet is a plain case of typo-squatting intended to catch Internet users who mean to visit the website of the Complainant at www.coventrybuildingsociety.co.uk but who mistakenly miss out the first full stop in the website address.
The Complaint asserts that the web portal to which the Domain Name resolves includes a number of sponsored links to other websites and a heading "Financial" which links in turn to a web page listing the websites of a number of financial providers including competitors of the Complainant. It seems to me to be self evident that the Respondent has set up the website with a view to commercial gain from per-click payments resulting from visitors visiting the website only as a result of the typo-squatting technique. Although many visitors who are directed to the Respondent's website will simply realise their mistake, there will inevitably be a number who do click through. The very essence, however, of setting up the website must be that it does result in commercial gain as a result of visitors accessing other websites through the portal and it is most unlikely that any Internet users would get to the site other than through making a mistake in typing in the website address of the Complainant.
The use of the typo-squatting technique involving the registration of a domain name comprising the Complainant's well-known name with the addition of the letters "www" not only takes unfair advantage of the Complainant's Rights in the name by drawing away Internet users who intended to visit the Complainant's website but is also unfairly detrimental to those Rights, particularly since visitors who had intended to visit the Complainant's website may instead be drawn to a competitor's site.
In 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 COVENTRY BUILDING SOCIETY and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.
Accordingly, I find that the Complainant has Rights in respect of a name or mark which is identical or similar 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 Coventry Building Society.
Ian Lowe
3 November 2006