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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Bank of Scotland Group Plc v Metcalfe [2007] DRS 4806 (2 August 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4806.html Cite as: [2007] DRS 4806 |
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1. Parties:
Complainant: The Royal Bank of Scotland Group Plc
Country: UK
Respondent: Linda Metcalfe
The registrant has claimed to be a non-trading individual and has opted to have her address omitted from the WHOIS service.
Country: UK
Together "the Parties".
2. Domain Name in dispute:
loan-lombarddirect.co.uk
("the Domain Name")
3. Procedural Background:
Summary of DRS activities
19/06/2007 Dispute entered into system
21/06/2007 Hardcopies received in full
21/06/2007 Complaint validated
22/06/2007 Complaint documents generated and sent to Respondent
17/07/2007 No Response received
17/07/2007 No Response to Complaint documents generated and sent to Complainant.
18/07/2007 Fees received for Expert decision from Complainant
19/07/2007 Next Expert on list indicates he is conflicted and cannot act.
24/07/2007 Iain M Tolmie available and conflict check satisfactory
25/07/2007 Mr Iain M Tolmie selected as expert
Appointment of Expert
3.1. On the 24th July 2007, I (Iain M. Tolmie, the undersigned, "the Expert") was contacted by the Nominet Dispute Resolution Service and I confirmed to them that:
"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties."
3.2. I was appointed as the independent Expert for this Case as from 30th July 2007 to respond on or before 13th August 2007, and I signed the necessary declaration of impartiality and independence on 25th July 2007. The process which I must follow is set out in the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") and the Dispute Resolution Service Policy ("the Policy"). Both of these documents have been provided to the Parties and are also freely available for consultation, together with advice, on the Nominet UK website (http://www.nominet.org.uk/disputes/drs).
4. Outstanding Formal/Procedural Issues:
Standing of the Complainant
4.1. This Complaint has been made by The Royal Bank of Scotland Group Plc ("RBS") on behalf of itself and its subsidiary Lombard Bank.
Absence of Response
4.2. The Respondent has not entered a Response. The Respondent accepted the Nominet Dispute Resolution Procedure at the time of the registration of the Domain Name. The Respondent is not obliged to make any formal response and the Procedure does not permit a Decision by default.
4.3. The Respondent has chosen to register the Domain name as a non-trading individual, and has requested her details be withheld from the public register. Full contact address details still have to be provided and maintained by the individual in order to meet the registration requirements; they are simply not made available on the public record.
4.4. From the records sent to me, I can see that Nominet have taken all necessary steps under the Procedure to contact the Respondent at the addresses provided on her registration, and at the generic e-mail address [email protected], to inform her of the Complaint and to allow her to respond to it. The e-mails "bounced" and were undeliverable. No reply or formal Response was made by the Respondent to the standard dispute notification letter nor has any other contact been made, and accordingly I will now proceed to a decision on the Complaint notwithstanding the absence of a Response, as is provided for in the Procedure §15b:
"If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint."
4.5. Furthermore, since I am not aware of any exceptional circumstances in this case, I will act in accordance with the Procedure §15c which provides that:
"If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure […], the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."
5. The Facts:
5.1. I accept the following as facts:
5.2. The Complainant has an operating history dating back to the foundation of The Royal Bank of Scotland in 1727. It is now a major international banking group, a visible presence on the high street and a household name.
5.3. The Lombard Bank has a history dating back to 1969, and is a subsidiary company of RBS. It is a major provider of asset finance to industry. The name "Lombard Direct" echoes these activities, but is used to address the personal finance market.
5.4. "Lombard Direct" is an RBS brand for which it holds trademarks for the text "Lombard Direct" (filed 2nd December 1995 and registered 31st March 1997) and a distinctive mark including "Lombard Direct"(filed 7th April 1998 and registered 30th October 1998).
5.5. Lombard Direct provides (inter alia) personal financial services via websites under the names "lombarddirect.co.uk" (registered prior to August 1996) and "lombarddirect.com" (registered 14th March 2000). The website at "lombarddirect.co.uk" has been in operation for about 10 years.
5.6. The Respondent registered the Domain Name as a private non-trading individual on 25th June 2005.
5.7. The commencement of RBS operations using the Lombard Direct brand name and its registration of the relevant trademarks significantly pre-dates the registration of the Domain Name.
6. The Parties' Contentions:
Complainant.
6.1. I have accepted as fact that the Complainant is an established major international banking company, and that it offers a wide range of financial services. Its services include personal financial services offered under the brand name "Lombard Direct", for which it holds trademarks. The services are offered via a website at "lombarddirect.co.uk".
6.2. The Complainant's further submissions (made on its behalf by an authorised legal representative) were as follows [note that I have summarised the submissions and the paragraph numbering is mine]:
6.2.1. 8. The Domain Name is confusingly similar to Complainants' LOMBARD DIRECT mark. Respondent simply added the generic word "loan", a hyphen and the formal ".co.uk" suffix to Complainant's mark. These minor additions do not alter the overall impression of the Domain Name, which strongly conveys that it is sponsored by, or associated with, Complainants. [T]he addition of the term "loan", which is descriptive of services offerred by Complainants, does not sufficiently distinguish the Domain Name from Complainants' mark. See National Westminster Bank Plc. v. 2catchafly (DRS 03390 3 April 2006). Because none of Respondent's alterations distinguish the Domain Name from Complainants' mark, Internet users will perceive Complainants' mark to be the most distinctive and dominant component of the Domain Name. See The Royal Bank of Scotland Group Plc v. John Leona (DRS 04185 19 January 2007). Consequently, the Domain Name is confusingly similar to Complainants' LOMBARD DIRECT mark because it is identical but for the addition of the descriptive term "loan", a hyphen and the formal suffix.
6.2.2. 14. [I]t appears that Respondent registered the Domain Name primarily for the purpose of taking unfair advantage of Complainant's business. See Policy 3(a)(i)(C). The Domain Name appears to be targeted towards Internet users seeking access to Complainants' financial services. Such users, however, are taken to Respondent's website, which contains links that lead to the websites of Complainants' competitors. For instance, as of 18 June 2007, the Domain Name resolved to website the heading "Loan – Lombard Direct – Why Not Choose a Loan From One of the UK's Largest Providers." On the "Main Menu" are links describing various loan and mortgage products offerred by Complainants, each of which takes visitors who click on such links to a different webpage from which Internet users can access the websites of Complainants' competitors. Further, the words "LOMBARD DIRECT LOANS" are prominently displayed in the center of the website's homepage in bold 24 point font, followed by information concerning Complainant's business. While the same page also contains a disclaimer in 9 point font, it is insufficient to avoid confusion given that "the similarity of the Domain Name to the Complainant[s'] name may give members of the public false impressions and confidence as to the origins of the site which may override innate caution to read small print." See HM Land Registry v Timewell Estates Plc, DRS 000652 (Jan. 8, 2003). See also Mactra Shop Equipment & Fittings Limited v Sunshine Maritime Limited, DRS 002284 (18 January 2005) (finding a disclaimer did not obviate the risk of confusion where it was smaller than the central text and might not be read by customers in a hurry). Moreover, even if the disclaimer was adequate to inform visitors that Respondent's website was not affiliated with Complainants, Respondent's use of the Domain Name will inevitably attract visitors to Respondent's site on the basis that they are visiting the Complainants' website, which provides Respondent with an unfair advantage because of her misuse of Complainants' rights to attract visitors to her site. Past experts have found initial interest confusion in such cases and have transferred the domain names at issue accordingly. See, e.g., Savvis UK Ltd –v- Mr Alif Terranson, DRS 01810 (23 July 2004) (finding, where the disclaimer was adequate to inform visitors that the respondent's website was not affiliated with the complainant that use by the respondent of the domain name would lead to initial interest confusion regardless of the disclaimer and its effectiveness); QVC Inc & QVC -v- Sticky Dickys, DRS 0784 (21 March 2003).
6.2.3. 15. [S]uch use of the Domain Name unfairly disrupts Complainants' businesses by improperly directing Complainants' current and prospective customers to Complainants' competitors causing loss of business and revenue. See National Westminster Bank plc v. 2catchafly (DRS 3390, 3 April 2006) (finding that using confusingly similar domain name to divert Internet users to the respondent's website, which offered links to other sites offering financial services of complainant's competitors, unfairly disrupted complainant's business.) Such use constitutes further evidence of abusive registration under Policy 3(a)(i)(C).
6.2.4. 16. [The], Respondent is using the Domain Name in a way that either has confused people into believing, or is extremely likely to confuse people into believing, that the Domain Name is registered to Complainants, is operated or authorised by Complainants, or otherwise is connected with Complainants. See Parasol IT Plc v. Cevan Thompson, (DRS 1292 2 March 2004) (finding a prima facie case of confusing similarity where the respondent registered a domain name that was confusingly similar to the complainant's own domain name which resolved to the complainant's website). Given that the Domain Name simply adds the word "loan", which is descriptive of Complainants' services and a hyphen before Complainants' mark, thus, strongly suggesting that it corresponds to a website owned by or affiliated with Complainants, an Internet user intending to access Complainants' website could find herself at Respondent's website without realizing that Respondent's website is not Complainants' official website. The content of Respondent's website, because it consists of information concerning products and services similar to those offered by Complainants, would not necessarily alert the user to her error. Even if a user realized that she was not at Complainants' official website, she still could be confused into believing that Complainants were in some way associated with the Domain Name, given these substantial similarities. See National Westminster Bank plc v. 2catchafly (DRS 3390, 3 April 2006) (concluding, in directing the transfer of the domain name, which the Respondent had used to operate a website providing links to the complainant's competitors, that "there is a strong likelihood of confusion on the part of Internet users and the indications are that the Respondent, in applying to register the domain name, intended to create such confusion."). Indeed "[i]t is a domain name that an internet user would be liable to use in the expectation of accessing [Complainants'] website." Parasol IT Plc v. Cevan Thompson, (DRS 1292 2 March 2004).
6.2.5. 17. [T]he Domain Name is also an abusive registration because Respondent is using it to benefit commercially from the unauthorized and illegitimate use of Complainants' mark and associated goodwill and, thus, is using the Domain Name in a manner that takes unfair advantage of and is unfairly detrimental to Complainants' rights. Specifically, Respondent's purpose in redirecting Internet users searching for Complainants' products and services – including Complainants' current and prospective customers – to the websites of Complainants' competitors is presumably to generate "click-through" revenues based on the amount of traffic Respondent diverts to those sites. Respondent's registration of a domain name that incorporates Complainants' well-known mark, and generating "click-through" revenues by hosting links to Complainants' competitors takes unfair advantage of Complainants' rights and is unfairly detrimental to those rights by making commercial gain accruing from the per-click payments driven by the attractive force of Complainants' well-known mark. See The Royal Bank of Scotland v. Robert Morrison, (DRS 3719 21 July 2006) (finding abusive registration where respondent had unfairly disrupted the complainants' business by improperly directing those seeking information about the services offered under the complainants' trademark to the complainants' competitors, and that the respondent had also taken unfair advantage of the complainants' rights by seeking to generate click-through revenues from typographical errors by Internet users searching for the complainant).
Respondent
6.3. The Respondent has not submitted a response in time or at all.
7. Discussion and Findings:
Burden of Proof
7.1. In order for the Complainant to succeed it must (Policy §2) prove to the Expert, on the balance of probabilities, both:
i that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
7.2. Rights are defined in the Policy as:
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;
Complainant's Rights
7.3. The Complainant by making its Complaint has agreed to be bound by the Procedure, and its authorised representative has signed a statement of truth in respect of the Complaint and the associated documentation supplied.
7.4. In order to establish that it has Rights, the Complainant relies upon its long-standing establishment as major international banking company, its provision of personal financial services for many years using the "Lombard Direct" brand and its registered trademarks: these I have accepted as fact.
7.5. In examining the Domain Name I need to exclude the ".co.uk" suffix (which is generic and is usual to ignore). It is also important to recognise that, in rendering company names into domain names, there are technical restrictions, in particular domain names are usually expressed as lower case letters only.
7.6. The Domain Name (excluding the ".co.uk") is "loan-lombarddirect", which on the face of it is similar to the Complainant's business name (Lombard Direct), its registered trademarks and its own domain name (lombarddirect.co.uk). The question arises, however, as to whether the addition of the word "loan" followed by a hyphen distinguishes the Domain Name from the Complainant's intellectual property.
7.7. The Complainant has helpfully included references to prior DRS Expert's Decisions that may support the view that the Domain Name in this case is infringing. Whilst these are not in any way binding upon me, they do provide additional material for consideration. Each individual case has its own particular set of facts and background, and a decision in one may not be relevant in another because of differing circumstances.
7.8. The reasoning of the Expert in DRS 00390 is helpful, and I find that in this case the dominant element in the Domain Name is "lombarddirect". I find that the word "loan" is generic and descriptive of the services offered by the Complainant, that therefore the Domain Name as a whole is not distinct, and that it is similar to the Complainant's established business name and mark.
7.9. I therefore find that the Complainant has established to my satisfaction that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive Registration
7.10. Having found that the Complainant has established to my satisfaction that it has Rights, I must now examine its allegations of an Abusive Registration by the Respondent.
7.11. An Abusive Registration is defined in the Policy as follows:
Abusive Registration means 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;
7.12. The Complainant has clearly stated that it has no connection with the Respondent and that the Respondent is not authorised by the Complainant to make use of its name or trademarks.
7.13. It is alleged that the Respondent had created a website at the Domain Name that made specific reference to the Complainant and its services. There is no longer a website available at the Domain Name for me to inspect, and so I must rely on the evidence presented by the Complainant (including screen copies of parts of the website). It must be remembered that the Respondent has not challenged this evidence. The detail of the Complainant's allegations about the webpage appear at §6.2.2 above. I accept that the implication of the words in large type at the head of the home page "Loan - Lombard Direct. Why not choose a loan from one of the UK's largest suppliers" together with the heading "Lombard Direct Loans" in large letters in the centre of the page give an immediate impression of the Domain Name being operated by the Complainant. This is further reinforced by the remainder of the page being a review of the Complainant's services in the form of an editorial. The website also provides a list of "shortcut" links on the left hand side to take visitors to services such as "Home Equity Loan", "Mortgage Loan" and about a dozen similar headings. This website as a whole apparently offers services that are similar or identical to those of the Complainant, and I accept the Complainant's assertion that the links on the site are to service providers who are in the same or similar markets as the Complainant. In my judgement, this does not constitute "legitimate non-commercial or fair use of the Domain Name" by the Respondent – who claims to be a non-trading individual.
7.14. The Respondent has placed a "disclaimer" on the web page which appears under the large central heading "Lombard Direct Loans" and is in the following terms: "NOTE: this is not the Official Lombard Direct site CLICK HERE to go directly to LOMBARD DIRECT". I do not know if the link actually worked. The Respondent has not provided a Response to the Complaint, and so has not provided an explanation of her intentions for the page as a whole or this disclaimer. However, I must consider whether this disclaimer in some way mitigates the Respondent's use of the Domain Name. The disclaimer is smaller than the main headings, which clearly use the words "Lombard Direct". Since the Lombard Direct name is prominent on the page, and is repeated some dozen times in various sizes and formats, the immediate response by a visitor may well be to click on one of the shortcut links believing the page to belong to Lombard Direct. The Complainant has supplied evidence that one such link lead to another financial services supplier, but I have no idea where the other links went. However, it seems to me that most visitors would be tricked into starting to interact with a financial services provider that they would expect to be Lombard Direct – but which would in all probability be another competitor organisation. This can only result in the diversion of business from the Complainant. In my judgement, the immediate effect when seeing the home page is that it represents services from Lombard Direct, and hence that it is a deliberate misrepresentation that the "disclaimer" does nothing to counteract. I have been referred to other Expert's Decisions in similar situations, including DRS 000652 and DRS 002284 that make similar points. In the specifics of this Complaint, I too can see no way in which any disclaimer could counteract the misleading use of the Complainant's name in the Domain Name and the extensive reproduction of that name on the web page, and I find that that the overall effect is one of deliberate misrepresentation and subsequent misdirection of traffic.
7.15. The outcome of my analysis must be that the Domain Name and the web page to which it resolves are misleading and that they unfairly represent the services of others as being those of Lombard Direct. I find that the website as presented was "unfairly disrupting the business of the Complainant" in contravention of Policy §3aiC. I would also be concerned that the web page (currently not in operation) could be restarted and that the unfair disruption would then resume.
7.16. In the absence of any explanation from the Respondent, I will exercise my discretion to draw such inferences as I find appropriate. I can see no rational explanation for the registration of the Domain Name by a person claiming to be "a non-trading individual" other than that it was a deliberate act in the knowledge that Lombard Direct was a well-known supplier of personal financial services. In my judgement the Respondent intended to mislead Internet users into believing that the website (and hence the Respondent) was in some way connected with or authorised by the Complainant. The Complainant alleges that this was a vehicle to create income for the Respondent at the expense of the Complainant; however, I have been provided with no evidence that this was so. On the balance of probabilities, this does seem to be the only plausible explanation – unless the intention was malicious. Since the Complainant denies any authorisation of, or connection with the Respondent, and there is no contrary evidence from the Respondent, then I can only draw the conclusion that the registration is abusive.
7.17. I find that the Respondent has used 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", which is in contravention of Policy §3aiii.
7.18. Both of the above breaches of the Policy mean that the Domain Name has been "used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights".
7.19. I therefore find that the Complainant has established to my satisfaction that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
8. Decision:
8.1. For the reasons set out in detail above, I find that the Complainant has established that it has Rights in respect of a name or mark which is identical or similar to the Domain Name and I find that the Domain Name in the hands of the Respondent is an Abusive Registration.
8.2. I therefore determine that the Domain Name should be transferred to the Complainant.
Dated: 2nd August 2007
Iain M. Tolmie ("the Expert")