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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Chao Investments Ltd [2007] DRS 4219 (4 January 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4219.html Cite as: [2007] DRS 4219

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Nominet UK Dispute Resolution Service

DRS Number 4219

J H Donald Limited

v

Chao Investments Limited

Decision of Independent Expert

1. Parties

Complainants:	J H Donald Limited
Country:	United Kingdom

Respondent	Chao Investments Limited
Country:	New Zealand

2. Domain Name

jhdonald.co.uk - registered on 10 December 2004

3. Procedural Background

The Complaint was lodged with Nominet on 16 November 2006. Nominet validated the Complaint and notified the Respondent of the relevant Complaint on 17 November 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 27 December 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 a non-UK Corporation and uses the address: PO Box 37410 Auckland 1033 New Zealand.

The Expert notes that this address is the same as was used by the respondent in Case 3984 (postoffice.co.uk)

5. The Facts

The Complainant trades under the name J H Donald and has done so since the 1950's. Newspaper cuttings, letterheads copies of the exterior/ interior of some of our shops were supplied as evidence of trading.

6. The Parties' Contentions

Complainant

The Domain Name in dispute is identical or similar to a name or mark in which the Complainant has Rights. The Complainant confirms that Domain Name in the hands of the Respondent is an Abusive registration. The Company trades under the name J H Donald and has done so since the 1950's. Newspaper cuttings, letterheads copies of the exterior/ interior of some of our shops are supplied as evidence of trading.

The Complainant has made no contact or correspondence with this Respondent.

The Domain Name in the hands of the Respondent is abusive because: The Respondent is confusing customers by using this web site as an index to competitors web sites and the goods being display are of the same nature as the Complainant's general business i:e Electrical retailing. Periodically customers will contact the Complainant as about this web site and are not convinced the Complainant has no control over this site. The Complainant believes this is damaging the Complainant's business.

The Complainant seeks transfer of the 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 50's under the name J H Donald 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 the 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.

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 use made by the Respondent of the Domain Name in the provision of a website the links from which are apparently to products of a type sold by the Complainant, in the opinion of the Expert satisfies the requirements of sub-paragraph C

The Expert finds that the 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 the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name jhdonald.co.uk, be transferred to the Complainant.

David Flint

04 January 2007