Nominet UK Dispute Resolution Service

DRS 4460

Nuffield Hospitals v. Larry Ward t/a Fuz Pty Ltd

Decision of Independent Expert

1.	Parties

Complainant:	Nuffield Hospitals
Country:	GB

Respondent:	Larry Ward t/a Fuz Pty Ltd
Country:	AU

2.	Domain Name

nuffieldhospital.org.uk ("the Domain Name")

3.	Procedural Background

The Complaint was submitted to Nominet on 12 February 2007.  Hardcopies were received in full on 12 February 2007.  On 14 February 2007 the Complaint was validated by Nominet and sent to the registrant contact for the Respondent by post and email both to postmaster@nuffieldhospital.org.uk and to the email address which Nominet held for the registrant contact for the Respondent on the register database.  The Respondent was informed in this correspondence that it had 15 working days, that is, until 8 March 2007 to file a response to the Complaint.  On 6 March 2007 Nominet's letter to the Respondent was returned by the relevant postal authorities marked 'Insufficient Address'.

The Respondent did not file a response and the case did not proceed to the mediation stage.  On 21 March 2007 the Complainant paid the fee for referral of the matter for an expert decision pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy").  On 26 March 2007 Andrew Lothian, 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 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. Nominet duly appointed the Expert with effect from 29 March 2007.

4.	Outstanding Formal/Procedural Issues

Communication / No response

The Respondent has failed to submit a response to Nominet in time in accordance with paragraph 5(a) of the Procedure.  The Expert is satisfied that, in following the steps outlined in the Procedural Background above, in accordance with paragraph 2(a) of the Procedure, Nominet has made all reasonable efforts to give notice of the Complaint to the Respondent.  While the paper copy of the Complaint was returned by the postal authorities on the basis of an insufficient address, it would appear that at least one of the two notification emails was successfully delivered and in any event it is the obligation of the Respondent in terms of clause 4.1 of their registration contract with Nominet to ensure that all of their contact details are complete and correct.  

Paragraph 15(b) of the Procedure provides inter alia that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

Paragraph 15(c) of the Procedure provides that "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." In the view of the Expert, if the Respondent does not submit a Response the principal inference that can be drawn is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration.  This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration, nor does it in the Expert's view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.  

5.	The Facts

The Complainant is a registered charity operating throughout England and Wales.  It is engaged in the provision of hospitals, nursing/convalescent homes and other related services.  The Complainant was incorporated in 1957 as Nuffield Nursing Homes Trust and changed its name to Nuffield Hospitals on 1 September 2003.

The Complainant is the proprietor of UK registered trade mark number 1344127 for the word mark NUFFIELD HOSPITALS in classes 43, 44 and 45, registered on 1 March 1991.

The Respondent registered the Domain Name on 24 June 2004. 

As at the date of this decision, the web page associated with the Domain Name displayed a series of hyperlinks, the majority of which appear to be devoted to various providers of medical services other than the Complainant.

The name Fuz Pty Ltd (with a corresponding address to the address of the Respondent in this case) has been mentioned in five previous decisions under the DRS where there was a finding that the Respondent had made an Abusive Registration.

6.	The Parties' Contentions

Complainant

The Domain Name is identical to the trade mark and registered company name of the Complainant and is an abusive registration in the hands of the current owner. 

The Complainant asserts rights to this domain name because: 

•	It is registered at Companies House under the name Nuffield Hospitals (company number: 576970), incorporated on 14/1/1957; previously registered as Nuffield Nursing Homes Trust (company number 4639458). 

•	It has been registered as a charity with the Charity Commission (registered charity number: 205533) since 22/9/1962. 

•	It trades under the name Nuffield Hospitals and has done so since 1/3/1991. 

•	It is the owner of the registered trademark Nuffield Hospitals (trademark number 1344127) which has been registered since 1/3/1991. 

The Domain Name in the hands of the Respondent is abusive because it was: 

•	Primarily registered to take advantage of the reputation and goodwill in the name Nuffield Hospitals and essentially ‘passing-off’ and confusing consumers as being associated with or part of Nuffield Hospitals; and 

•	Primarily used as a revenue-generator, with a pay-per-click website set up on the domain. 

•	Nominet has previously made judgments against Fuz Pty Ltd in which Fuz Pty Ltd was found to have made abusive registrations.

Respondent

The Respondent has not filed a response. 

7.	Discussion and Findings:

General

In terms of paragraph 2(b) of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, namely 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

Paragraph 1 of the Policy provides that 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".  Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the name or term in which the Complainant has these is wholly descriptive of its business; (3) if not wholly descriptive, whether the name or term is identical or similar to the Domain Name.

Complainant's Rights in the mark NUFFIELD HOSPITALS

The requirement to demonstrate Rights under the Policy is not a particularly high threshold test.  Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark.  

The Complainant has cited a UK registered trade mark for the word mark NUFFIELD HOSPITALS of which it is the registered proprietor.  The Expert is therefore satisfied that the Complainant has Rights in this mark.

The second question for the Expert is whether the name or term in which the Complainant claims Rights is wholly descriptive of the Complainant's business.  The Complainant provides hospital/nursing home and other related medical services.  The word HOSPITALS is descriptive of such services but this is only part of the mark NUFFIELD HOSPITALS (the word 'NUFFIELD' being the most distinctive component) and accordingly the Expert is satisfied that the name or term relied upon by the Complainant is not wholly descriptive of the Complainant's business.  

The final question regarding Rights is whether the name or mark is identical or similar to the Domain Name.  The first (.uk) and second (.org) levels of the Domain Name can be disregarded as being wholly generic.  This leaves a comparison between NUFFIELD HOSPITALS and the third level part of the Domain Name 'nuffieldhospital'.  On this comparison there is considerable similarity between the mark and the Domain Name whether on an objective (one character different) or subjective (general appearance of the domain) test, bearing in mind the fact that white space is not permitted within a domain name.  In fact, the third level part of the Domain Name is merely the singular of the Complainant's mark which is expressed as a plural.

Accordingly, the Expert is satisfied on the balance of probabilities that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name. 

Abusive Registration

Is the 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 constitute evidence of Abusive Registration is set out in paragraph 3 of the Policy.  The Complainant is not, however, obliged to frame its submissions in terms of any of the elements in paragraph 3.

In the present case, the first submission by the Complainant broadly corresponds with the terms of paragraph 3(a)(ii) of the Policy (Circumstances indicating that Respondent's use of Domain Name has confused people or businesses into believing it is registered to, authorised by or connected with the Complainant) while its third submission corresponds with paragraph 3(c) of the Policy (presumption of Abusive Registration).  The Complainant's second submission does not fall within any of the non-exhaustive factors listed in paragraph 3 of the Policy and must be considered within the general definition of Abusive Registration.

Presumption of Abusive Registration

Paragraph 3(c) of the Policy provides:-

	"There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c))."

Paragraph 4(c) of the Policy provides:-

	"If paragraph 3(c) applies, to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration."

While the Complainant's submissions are somewhat scant on this point, it is clear to the Expert that the name Fuz Pty Ltd has been raised or is otherwise connected with the Respondent in a number different DRS decisions in the past:- 

DRS 01918/9 [Alliance & Leicester plc –v- (1) James Strong and (2) Stinger Web Services, both trading as Fuz Pty Ltd - 3 September 2004] - finding of Abusive Registration in respect of 12 domain names; 

DRS 02183/4/5 [Associated Newspapers Limited -v- (1) Mark Twist, (2) M Strong and (3) Aaron Maddely all trading as Fuz Pty Ltd - 7 January 2005] - finding of Abusive Registration in respect of 7 domain names; 

DRS 02352 [Hayes & Jarvis (Travel) Limited -v- M Strong trading as Fuz Pty Ltd - 21 March 2005] - finding of Abusive Registration in respect of 1 domain name;

DRS 03270 [Random House, Inc –v- James Strong - 7 March 2006] - finding of Abusive Registration in respect of 1 domain name; and 

DRS 04292 [Ufi Limited –v- Domain Administration Ltd t/a Fuz Pty Ltd - (31 January 2007)] - finding of Abusive Registration in respect of 2 domain names.

In each of these cases with the exception of DRS 03270 and 04292 the respondent shared an identical trading name and address.  In DRS 03270 the trading name Fuz Pty Ltd was not directly mentioned but the address of the respondent was identical with all other cases as was the respondent's contact email address.  In DRS 04292 the trading name Fuz Pty Ltd was used by the respondent although the address had been changed at some point from the address of the current Respondent to an address in New Zealand.  The Expert is satisfied that the respondents in DRS 03270 and DRS 04292 are the same respondents as that in the other cases (as was also accepted by the expert in DRS 04292). All of the domain names concerned have been used in a broadly similar way. These cases account for 21 findings of Abusive Registration, four of which were made in three cases decided in the two years before the Complaint was filed.  In these circumstances the Expert is satisfied that the presumption of Abusive Registration arises in terms of paragraph 3(c) and that the Respondent has done nothing by way of a rebuttal in terms of paragraph 4(c). Having said that, this case does not require to turn on the presumption of Abusive Registration alone.

Confusion

With regard to the Complainant's first submission, no evidence of actual confusion has been produced as is contemplated by paragraph 3(a)(ii) of the Policy.  Consequently, the Complainant's submission cannot be said to fall squarely within the terms of this non-exhaustive factor.  However, the Expert is satisfied from the nature of the Domain Name (being simply the singular variant of the Complainant's name which is normally expressed as a plural) taken together with the content of the website, that the Respondent is seeking to profit from 'initial interest' confusion generated by the association of a variant of the Complainant's name with the Respondent's website, coupled with any further confusion which may result from the presentation of hyperlinks pointing to a range of related services which appears to include competitors of the Complainant and related services.  The Respondent has not sought to provide any explanation for his use of the Domain Name in this manner and this raises the inference that the Respondent has no reasonable or honest explanation to offer.

On the balance of probabilities, the Expert considers that the confusion which the Domain Name is very likely to generate, given that a substantial proportion of the visitors to the associated website will be expecting to find the Complainant, and the high possibility of subsequent diversion of those visitors to competitors of the Complainant by way of the hyperlinks together amount to a use of the Domain Name which is unfairly detrimental to the Complainant's Rights.

Pay per click website

The Complainant's second submission focuses on its allegation that commercial gain is accruing to the Respondent from per-click payments. Such payments would result from visitors being drawn to the Domain Name by the attractive force of the Complainant’s reputation in its corporate name and trade mark. The Respondent has not denied the Complainant's assertions on this point. In the Expert's view this use of the Domain Name to profit directly from its similarity to the Complainant's name and mark takes unfair advantage of the Complainant's Rights.  

Accordingly, the Expert is satisfied that the Domain Name constitutes an Abusive Registration on two separate counts arising from the Complainant's submissions.  

8.	Decision

The Expert finds, on balance of probabilities, that the Complainant has proved that it has Rights in a name or mark similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  The Expert therefore directs that the Domain Name be transferred to the Complainant.

Andrew D S Lothian
30 March, 2007