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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Robert Dyas Holdings Ltd v Domain Administration Ltd [2007] DRS 4415 (21 March 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4415.html Cite as: [2007] DRS 4415 |
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Nominet UK Dispute Resolution Service
DRS 04415
Robert Dyas Holdings Limited and Domain Administration Limited
Decision of Independent Expert
Complainant: Robert Dyas Holdings Limited
Country: GB
Respondent: Domain Administration Limited
Country: NZ
robertdyass.co.uk
The Complaint was lodged with Nominet on 26 January 2007. Nominet validated the Complaint and notified the Respondent of the Complaint on 29 January 2007 and informed the Respondent that it had until 20 February 2007 to lodge a Response. No Response was received from the Respondent and, on 21 February 2007, Nominet informed the parties that, in the circumstances, Nominet could not provide mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 7 March 2007. On 5 March 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
On 7 March 2007 the undersigned David King ("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 brought to the attention of the parties which might appear to call into question his independence and/or impartiality. Nominet appointed the Expert in this matter on 12 March 2007.
The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with Paragraph 5a of Nominet's Dispute Resolution Procedure. Nominet have written to the Respondent at the postal address and the e-mail address shown in the Register Entry for the Domain Name and to [email protected]. The e-mail to the postmaster address resulted in a Delivery Failure Report but, as far as the Expert is aware, the letter, which was sent by Air Mail, and the e-mail, which was sent to the e-mail address shown in the Register Entry were delivered to the Respondent.
The Expert is satisfied that the Complaint was properly delivered to the Respondent and that,
in the absence of a response from the Respondent, there are no exceptional circumstances
present to prevent the Expert from proceeding with the Decision of this Complaint.
The Complainant is a well-known national hardware and ironmongery chain, first established in London in 1872 and now with more than 100 retail units in England.
The Complainant is a company registered in England and Wales under Company No. 04041884. The company was incorporated on 27 July 2000 in the name of RPS Travel Limited, which was changed to Robert Dyas Holdings Limited on 24 November 2000.
The Company is the owner of UK Trade Mark 2118609 for the mark ROBERT DYAS, which was registered on 26 March 1999.
The Complainant also trades from a web-site at www.robertdyas.co.uk.
The Respondent registered the Domain Name on 10 January 2005. The print-out of the Domain Name web-site provided to the Expert by Nominet contains various sponsored links to web-sites dealing in cookers and other household appliances. A print-out of the Domain Name web-site provided with the Complaint by the Complainant contains similar sponsored links.
Attached to the Complaint are copies of five decisions of the WIPO Arbitration and Mediation Center in September and November 2006 (Case Nos. D2006-1299, D2006-1207, D2006-1173, D2006-0921 and D2006-1147), in which Domain Administration Limited was the Respondent. In each case the Panelist found that the domain name in question had been registered and was being used in bad faith.
Complainant
The Complain can be summarised as follows:
The Complainant is a company registered in England and Wales.
The Complainant is a national hardware and ironmongery chain. It has trade mark rights in the mark ROBERT DYAS and has established a reputation as a retailer of a wide range of high quality domestic appliances and household goods.
From the print-outs of the Domain Name web-site and the Complainant's own web-site www.robertdyas.co.uk attached to the Complaint, the similarity between the names of the two sites is self-evident as are the goods sold and/or advertised through them.
The Respondent is using the Domain Name in a way which either has confused, or is likely to confuse, people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.
The Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to known names or trade marks in which the Respondent has no apparent rights.
The Expert has perused all the documentation, which the Complainant has supplied in support of its contentions.
Respondent
The Respondent has not responded to the Complaint.
General
Paragraph 2 of Nominet's Dispute Resolution Policy ("the Policy") requires that, to succeed, the Complainant must prove to the Expert, on the balance of probabilities, both 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 as defined in paragraph 1 of the Policy.
Complainants' Rights
The Expert is satisfied that the Complainant has Rights in its trading name ROBERT DYAS by virtue of its registered trade mark and established goodwill. The Domain Name is almost identical to the Complainant's trading name, the only difference being the addition by the Respondent of the letter "s", which is of no significance.
The Expert finds that, for the purposes of the Policy, the Complainant has Rights in respect of a name or mark which is 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 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. It is apparent that the Complainant is relying on the factors set out in paragraphs 3 a ii and 3 a iii of the Policy.
The Expert will deal first with paragraph 3 a iii, under which, it may be evidence of Abusive Registration if "the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern." Paragraph 3 c of the Policy provides that "There shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4(c)."
The Complainant has provided copies of five recent WIPO cases, which indicate a pattern of Abusive Registration by the Respondent. The Expert has also checked Nominet's web-site, which contains a "3 Cases Respondent Table", which comprises a table of cases, in which a Respondent is or may be a party found to have made an Abusive Registration in three or more DRS cases. The Expert has inspected this Table and has found that the Respondent has been found to have made an Abusive Registration in six recent DRS cases, namely:
DRS 04229 (re ulsterbankanytime.co.uk) – decision dated 11 January 2007
DRS04245 (re myt-mobile.co.uk) – decision dated 14 January 2007
DRS 04292 (re learndirec.co.uk and lerandirect.co.uk) – decision dated 31 January 2007 DRS 04293 (re fisherpice.co.uk) – decision dated 2 February 2007
DRS 04298 (re hotwheel.co.uk) – decision dated 2 February 2007
DRS 04344 (michalepage.co.uk) – decision dated 16 February 2007
The first two of theses cases were decided shortly before the Complaint was filed on 26 January 2007. The Expert does not know when these two decisions were published by Nominet on its web-site but it seems likely that the Complainant would not have been aware of them when it filed its Complaint. Certainly the Complainant would not have been aware of the other four cases, which were decided after the Complaint was filed. The Complainant has produced evidence of a pattern of abusive registrations in the .com Registry and, clearly, the Expert must also take into account the further evidence of Abusive Registration in the above six DRS cases. The Respondent has had the opportunity to respond to the Complaint but has failed to do so. In the view of the Expert, there is overwhelming evidence that the Respondent is engaged in a pattern of Abusive Registrations. The Expert upholds the Complaint on this ground alone but will comment briefly on the remainder of the Complaint.
Under paragraph 3 a ii of the Policy, there may be evidence of Abusive Registration if there are 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. Although the Complainant has not provided evidence of actual confusion having occurred, the potential for confusion between the Complainant's web-site and the Domain Name is obvious. The names of the two web-sites are so similar that it is extremely likely that people and businesses wishing to access the Complainant's web-site, in fact, visit the Respondent's web-site, which offers the same type of goods as the Complainant. Clicking on the sponsored links in the Domain Name then produces revenue for the Respondent. The Expert concludes that the Respondent has registered the Domain Name in order to take unfair advantage of the Complainant's name and reputation.
In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is similar 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 www.robertdyass.co.uk be transferred to the Complainant.
David King 21 March 2007
