Nominet UK Dispute Resolution Service

DRS Complaint No 04258

Decision of Independent Expert

1.	Parties

Complainant:	Hargreaves Lansdown 	
Country:	GB  

Respondent:	Jason Maxan
Address:	omitted from WHOIS service

2.	Domain Name

hargeaveslansdown.co.uk

3.	Procedural Background

The Complaint was validated by Nominet on 29 November 2006 and sent to the Respondent on that date by post, fax and email to the respective contact details held by Nominet.  Nominet informed the Respondent that it had 15 working days, i.e. until 21 December 2006, to respond to the Complaint.

By 22 December 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 and thereafter I was contacted by Nominet and asked to confirm that I was able to provide an Expert Decision.  I responded to Nominet confirming that I was able to provide a decision.  

On 9 January 2006, 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 using 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 Service 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’s website asserts that it was established in 1981 by Peter Hargreaves and Stephen Lansdown, that it is one of the leading direct providers of asset management services to private investors in the UK.

There are various corporate entities within the Hargreaves Lansdown ‘group’, including Hargreaves Lansdown Plc which was incorporated in 1987.  These entities all trade under the name Hargreaves Lansdown, and it is asserted that this collective entity is the Complainant.

The Complainant uses the name ‘Hargreaves Lansdown’ on various marketing material, and alleges that it has invested millions of pounds on marketing initiatives to promote the name.

The Complainant also owns the domain name <hargreaveslansdown.co.uk> which ultimately resolves to the Complainant’s website.  It registered this domain in 2001.

The Domain Name was registered by the Respondent on 11 January 2005.  It resolves to a webpage which prominently features the domain name in large letters at the top of the page and then provides links to other websites.  At the time of writing this decision, the links have little to do with the financial sector (or at least those that appear on the home page), however from the papers provided to me it would appear that at the time the Complaint was made, the website only contained, or appeared to contain, links to various financial sector websites.  It also featured prominently a link under the text and heading “Hargreaves UK – Hargreaves official site visit www.hargreavesuk.com”.  That URL seemingly has nothing to do with the Complainant, but relates to a clothing retailer. 

The Complainant became aware that the Domain Name had been registered by the Respondent at least as early as December 2005.  At this time it made contact with the Respondent and objected to the registration and use of the Domain Name and demanded (1) that it be transferred to the Complainant and (2) that it be pointed to the Complainant’s website pending the transfer.

On 16 December 2005, a “John Jones” responded to the Complainant’s request on behalf of the Respondent and said that he would be happy to transfer the domain, and would arrange for it to be pointed to the Respondent’s website within 24 hours.  Neither action was subsequently carried out.

The Complainant alleges that the Respondent’s use of the Domain Name has confused people who have mistakenly typed the Complainant’s domain name incorrectly.  

The Parties’ Contentions

Complainant

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

In support of the claim to Rights, the Complainant says that it has a number of company registrations, which incorporate the name HARGREAVES LANSDOWN, that it has traded under that name for an extensive period of time (since 1981), and that it has invested substantial sums promoting itself under that name.  Perhaps surprisingly the Complainant has no registered rights upon which to base its complaint.

In support of the claim that the Domain Names are Abusive Registrations the Complainant says that -   

i)	the Respondent has used the Domain Name in a way that has already confused people who have mistyped the Complainant’s contact details into thinking that it (or the associated website) is controlled by the Complainant; 

ii)	the Respondent has never been authorised by the Financial Services Authority.

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 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 has clearly made extensive use of the name/trade mark ‘HARGREAVES LANSDOWN’, and has used that name/mark such that it is likely to have created extensive goodwill therein.  By way of example if one conducts a Google search for that name, the first two pages of results solely reference the Complainant.  It is my view that their use is such that they would be able to obtain Common Law protection in the UK for their name or mark in respect of unauthorised use.  It is clear that the Complainant therefore qualifies as having the necessary Rights in that name/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 <hargeaveslansdown.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 ‘HARGREAVES LANSDOWN’ (my emphasis) on the one hand, and ‘HARGEAVESLANSDOWN’ on the other.  In my opinion the omission of the letter ‘R’ or the space after the ‘S’ in the Domain Name make little difference to the overall impression or impact of it, and I determine that the Complainant has established that it has Rights in a name or mark similar to the disputed Domain Name.   In reaching this conclusion I am emboldened by the link that previously appeared on the Respondent’s homepage to “Hargreaves UK” (my emphasis) to which I refer above.  If the Respondent can associate “Hargeaves” and “Hargreaves” (my emphasis), then it seems reasonable that others would too.

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 for the reasons identified above.

The Policy defines an 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”

and goes on to set out a (non-exhaustive) list of factors which may be evidence that a domain name is an Abusive Registration.  

The first ground of complaint relied upon by the Complainant (listed above) seems to marry up with the ground identified in the Policy at Paragraph 3(a)(i)(ii), namely –

	“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…”

However in my opinion this part of the DRS Policy requires there to have been actual evidence of confusion because it uses the word “has”.  In the present case the Complainant makes a mere assertion that the use made of the Domain Name has caused confusion without adducing any evidence whatsoever to support its allegation.  I therefore conclude that the Complainant does not succeed on the ground identified by me.  I appreciate that this conclusion may seem pedantic in light of my further comments later in this decision, but I believe that the words of the Policy must be given their most natural meaning.  Whether they should be amended to include both the likelihood of confusion as well as actual confusion (which would be in line with UK law on the protection of trade marks) is a matter for others to decide.

The Complainant also relies upon a further ground to assert that the Domain Name is Abusive, namely that the Respondent is not authorised by the Financial Services Authority.  I am afraid that I am at a loss without further help or assistance to understand how this ground applies to the present dispute.  If it is in fact the case that the Respondent would need FSA approval to host its site, then that would seem to be a matter between the Respondent and the FSA rather than a matter for the Nominet Dispute Resolution Service.  If the Complainant means to assert that if the Respondent is seeking to hold itself out as an advertiser of the Complainant’s services, and has not FSA approval to do so, then (a) again I am not sure that this is a reason to decide that the registration of the Domain Name is abusive, and (b) I think I would need a more complete submission as to the FSA rules and their impact on the Policy.  I therefore also conclude that the Complaint does not succeed on this further ground. 

If these were the only grounds that could apply to the Complaint, that would be an end of the matter.  However, the grounds mentioned in Paragraph 3(a)(i)(ii), are non-exhaustive, and one has to remember that these are only illustrative – it is the definition of what is an Abusive Registration that one has to judge the Complaint on.

The conduct of which complaint is made, namely the registration and use of a domain name that is sufficiently similar to the well known name or mark of another party and which is directed to third party sites which provide identical or similar goods/services to those for which the name or mark is used, is commonplace.  One can only assume that the purpose of this conduct is to derive an income or other benefit from the instances where customers of the rights owner who are seeking to locate the rights owner, mistakenly type the similar domain, and are then diverted away from the offering of the rights owner to a site which offers comparable goods or services.  

In my opinion this conduct requires (1) the misuse of the rights owners goodwill, insofar as the opportunity to divert the customer only arises because the customer is in fact seeking to locate the right’s owner which is a product of the right’s owners goodwill and promotion of its name/mark, and (2) a necessary ‘deception’ by using a domain name that is sufficiently similar to the right’s owners name/mark, such as to be mistakenly used by the customer, and further the use of text on the website that is likely to   lead to the customer believing that the site has a connection with the right’s owner.  However I also believe that the ‘deception’ that I have referred to is not in many respects necessary because the nature of internet use is such that once a user has been diverted away from the right’s owners offering, the mere ‘invitation’ to view a link to a related or similar service may be enough to encourage the user in that direction rather than in the direction of the right’s owner. 

I believe that the conduct referred to above would be akin to a sports shop branding itself on the shop face as, for example NIKE, but once the customer enters the shop, the only products for sale are those manufactured by the shop owner.  Once inside the shop the customer whilst initially attracted by the NIKE brand which he/she knows well, may be sufficiently attracted by the shopkeeper’s products to make a purchase, but without making use of the NIKE mark in the first place, the customer would not have been in the shop at all.  This conduct would undoubtedly be an infringement of the rights held by Nike and would certainly be unfair and detrimental to those rights.

In my view there is little to distinguish the two types of conduct and it is clear to me that the Domain Name was registered and is being used in a manner which, takes unfair advantage of or is unfairly detrimental to the Complainant's Rights.

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 to the Domain Name <hargeaveslansdown.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 <hargeaveslansdown.co.uk> should be transferred to the Complainant.

Simon Chapman

11 January 2006