Nominet UK Dispute Resolution Service

DRS Complaint No 04719

Decision of Independent Expert

1.	Parties

Complainant:	CC Automotive Group Ltd. 	
Country:	GB

Respondent:	Mr Denys Ostashko
Country:	GB

2.	Domain Name

ucan.co.uk

3.	Procedural Background

The Complaint was validated by Nominet on 24 May 2007 and sent to the Respondent on that date by both post and email to the respective addresses set out in the Registry details.  Nominet informed the Respondent that it had 15 working days, i.e. until 24 May 2007, to respond to the Complaint.

A Response was received on 7 June 2007, which was sent to the Complainant on the same date, together with notification that the Complainant had until 18 June 2007 to serve a Reply.

A Reply was received by Nominet.  Mediation between the parties followed with no resolution.  Nominet thereafter invited the Complainant to request an Expert Decision.

The Complainant paid the fee for an Expert Decision 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 20 July 2007, the matter was duly referred to me, Simon Chapman, (“the Expert”) for an Expert Decision.

4.	The Facts

The Complainant is part of a group of companies that provide services relating to motor vehicles.  It is group policy that trade mark registrations are held by the Complainant, and one of those is UK registered trade mark No. 2412482. This mark is a device mark consisting of the words “UCAN CAR CREDIT”, with the “U” stylised such that their exist two dots or eyes, between the top two lines of the U, such that it represents a smiling face.  The mark was applied for in January 2006 and registered in August of the same year.  

A company within the Complainant’s group of companies is Ucan Car Credit Ltd, trading as “Ucan Car Credit”.  That company has traded since March 2006, and provided credit and finance services relating to cars.  Its trading activities are not insubstantial, with turnover in 2006 of £20m and 2007 of £18m.  It has advertised extensively in the press, internet, television and trade directories, and asserts that its spend on advertising and promotions in 2006 was £3.9m and 2007 £2.1m.  All of these advertisements and the company’s own materials prominently feature the trade mark “UCAN CAR CREDIT”, with particular emphasis both in size and colour the word “UCAN” in the stylised form referred to above.  The company uses the url www.ucancarcredit.co.uk.  Many adverts use the mark in a descriptive manner for example “Can’t get credit for a better car?  Ucan now”, although the stylised form for “UCAN” is always used.  All of the goodwill from the use of the trade mark vests in the Complainant.

The Disputed Domain Name was registered on 15 September 2006.  The Registrant was part of the Complainant’s TradeDoubler affiliate program, both before and after he registered the Disputed Domain Name.  The terms and conditions for the Complainant’s TradeDoubler affiliate program seemingly allowed its affiliates to use its trade marks in domain names where they were to be used “for the sole purpose of driving traffic from search engines”.  Following the termination or alteration of the Complainant’s affiliate program, the Respondent directed the Disputed Domain Name to the website of a competitor to the Complainant, Approved Car Finance Ltd.  Following a complaint by the Complainant to Approved Car Finance Ltd, the Respondent directed the Disputed Domain Name to a holding page which advertised links to websites, some of which offered competing services to those of the Complainant.  Following a complaint by the Complainant to the Respondent, the Respondent thereafter directed the Disputed Domain Name to the Complainant’s website.

It would now seem that the use of the Disputed Domain Name has reverted to a webpage which has links to further webpages which have links to websites offering competing services to those of the Complainant.

The Parties’ Contentions

Complaint

The Complainant asserts that it has Rights in respect of a name and mark which is identical or 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 is the proprietor of the registered trade mark referred to above and its sister company has extensively used that mark and name.  

In support of the claim that the Domain Names are Abusive Registrations the Complainant says that the Respondent has registered the Domain Name for the purpose of unfairly disrupting the Complainant’s business (Para 3(a)(i)(C) Policy), by directing the domain to a competitor website, and thereafter to the Complainant’s website, thereby causing people to believe that the Disputed Domain Name is controlled by the Complainant.

Response

The Respondent asserts that –

i)	The Complainant does not have rights to the word “UCAN” alone, which is a common abbreviation for “you can”, and an abbreviation used by many other UK companies.  It also disputes that the Disputed Domain Name is identical or similar to a name or mark in which the Complainant has Rights.

ii)	The Disputed Domain Name was fairly used to help the Complainant’s business via their affiliates program.

iii)	The present use of the Disputed Domain name (a parking page with links to third party sites) is not abusive.

iv)	The Complaint has been filed in bad faith because (a) there are other domains that incorporate the mark “UCAN” being used by the Complainant’s competitor, (b) the Disputed Domain Name is generic, and (c) the Disputed Domain Name has nothing to do with the Complainant.

Reply

The Complaint responds to the arguments of the Respondent as follows –

i)	The word “UCAN” is the dominant element of the Complainant’s mark, and it has educated the public that the word is distinctive of the Complainant’s services.

ii)	The Complainant was unaware of the Respondent’ status as an affiliate within its program, but asserts that this does not allow the Respondent to use the Disputed Domain Name as it has done since its affiliation ended.

ii)	The existence of other abusive domain names is irrelevant.

5.	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).

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 is the proprietor of a UK trade mark registration for the words “UCAN CAR CREDIT” + device.  It is clear that a sister company of the Complainant has also made extensive use of that mark, where the emphasis has been predominantly on the first word “UCAN” in a stylised form.  In my opinion the dominant elements of the mark, are the word “UCAN” and the stylisation of that word.  I have some doubts whether the full mark or name could be considered to be identical or similar to the Disputed Domain Name, and I therefore have to decide whether the Complainant has Rights in the word “UCAN" alone.  Notwithstanding the stylisation of the word, it is my opinion based upon the information that I have before me, that the Complainant has acquired Rights in the form of goodwill in the mark “UCAN”, albeit in the limited area of credit and finance services relating to cars.

The Policy requires such rights to be in a name or mark identical or similar to the Disputed Domain Name.  The Domain Name is <ucan.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 ‘UCAN’ on the one hand, and ‘UCAN’ on the other, and I therefore determine that the Disputed Domain name is identical to a name or mark in which the Complainant has Rights.  

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 Complainant has set out a specific ground of complaint, the reference for which in the Policy is paragraph 3(a)(i)(c), which states that it may be evidence of an abusive registration if the Respondent registered or otherwise acquired the Domain Name for the purpose of unfairly disrupting the business of the Complainant.   However this allegation was made prior to the Respondent asserting in his Response that the Disputed Domain Name was in fact registered as part of his involvement in the Complainant’s affiliate program, and in accordance with the Complainant’s terms and conditions for that program.  It cannot therefore be said that the Disputed Domain name was registered or otherwise acquired in the circumstances described above.  I therefore determine that this ground of complaint therefore fails.

Notwithstanding the failure of that specific ground, I must consider whether the Disputed Domain Name is an abusive registration within the general definition detailed above.  Whilst the first limb of the definition refers to registration or acquisition, the second limb deals with the use of the domain name.  In the present circumstances, the Respondent would appear to have initially registered and used the Disputed Domain Name legitimately.  However after the termination or modification of the Complainant’s affiliate program, the Respondent’s use appears to have crossed the line into illegitimate use.  The Disputed Domain Name was clearly initially registered because the Respondent believed that it would be successful as a tool in his involvement as an affiliate.  He must therefore have believed that the word within the Disputed Domain Name “UCAN” had sufficient proximity to the Complainant’s name or mark, and as such for him to now argue that the word is generic, or will not lead to confusion with the Complainant seems rather illogical.

Notwithstanding any complaint that that the Respondent may have had against the Complainant in respect of the termination or modification of the affiliate program, that does not justify the Respondents actions in turning the use of the Disputed Domain Name against the Complainant. In that respect it seem highly likely given the initial use of the Disputed Domain Name that the subsequent use will likely lead to customers of the Complainant being diverted to its competitors, or at least leading them to being confused as to the origin of the content of the information supplied to them.

In light of the above, and notwithstanding the original legitimate registration of the Disputed Domain Name, the Respondent’s subsequent use of the domain name became abusive.

6.	Decision

For the reasons set out above, I find that the Complainant does have Rights in respect of a name and mark which is identical to the Domain Name <ucan.co.uk>, and that the Disputed Domain Name in the hands of the Respondent is an Abusive Registration.  The Complaint therefore succeeds. It also follows that the allegation made by the Respondent that the Complaint has been made in bad faith must fail.

The disputed Domain Name <ucan.co.uk> should be transferred to the Complainant.

Simon Chapman

9 August 2007