Nominet UK Dispute Resolution Service

DRS :  04813

The Charity Commission for England and Wales –v- Zaibatsu, Inc

Decision of Independent Expert

1.	Parties

Complainant

Complainant Type:	Business
Complainant:		The Charity Commission for England and Wales
Country:		GB

Respondent

Respondent:		Zaibatsu, Inc
Country:		RU

Disputed Domain Names

<charitycommission.co.uk>

3.	Procedural Background

On 20 June 2007 the Complaint was lodged with Nominet UK in accordance with the Nominet UK DRS Policy and hard copies of the Complaint were received in full on 21 June 2007.

On 21 June 2007, Nominet UK validated the Complaint.

On 22 June 2007 Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the procedure for the conduct of proceedings under the Dispute Resolution Service had been invoked and allowed the Respondent 15 working days to respond to the Complaint to file a Response to the Complaint. 

No Response was received from the Respondent by Nominet UK, and on 19 July 2007 the Complainant was notified accordingly.

On 25 July 2007 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.

On 27 July 2007, following a conflict check, James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure.

On 9 August 2007 having considered the case file, the provisions relating to procedure set out in the DRS Policy and the Nominet UK Procedure for the Conduct of Proceedings under the Dispute Resolution Service (“DRS Procedure”) and in the interest of fairness, expedition, proper procedures and the rules of natural justice the Expert issued Directions requesting a Further Statement from the Complainant pursuant to paragraph 13 a of the DRS Procedure. Said Directions inter alia required the Complainant to provide said Further Statement on or before 12.00 noon GMT on Friday 17 August 2007and allowed the Respondent to provide submissions on or before 12.00 noon GMT on Friday 24 August 2007.

On 17 August 2007 the Complainant furnished a Further Statement in accordance with said Directions. The Respondent did not furnish any submissions.

4.	The Facts

The Complainant is a statutory body presently established pursuant to the Charities Act 1969 and first established by statute in the year 1853 with the object of registering and regulating charities in England and Wales.

The Complainant is the owner of 

United Kingdom registered trade mark CHARITY COMMISSION and Device registration number 2400689 registered as of 2 September 2005;

United Kingdom registered trade mark CHARITY COMMISSION and Device registration number 2400693 registered as of 2 September 2005;

United Kingdom registered trade mark CHARITY COMMISSION and Device registration number 2400694 registered as of 2 September 2005.

There is no information available about the Respondent except that provided in the Complaint and the Nominet UK WHOIS database.

The domain name in dispute, <charitycommission.co.uk>, was created on 6 December 2006.

5.	The Parties’ Contentions

Complainant’s Submissions

The Complainant requests that the domain name in dispute be transferred to the Complainant. 

The Complainant relies on its Rights in its name and in its abovementioned registered trademarks and claims that the domain name in dispute is identical or similar to a name or mark in which the Complainant has Rights and that the domain name in the hands of the Respondent is an Abusive Registration.

The Complainant submits that it is a government department established by statute that regulates registered charities in England and Wales. The Complainant answers directly to the Parliament of the United Kingdom in carrying out its duties. The Complainant’s role is to ensure that registered charities operate for the public benefit, independently of government or commercial interests. The Complainant submits that it is essential therefore that the public should have absolute confidence and trust in the Complainant.

The Complainant submits that the domain name in the hands of the Respondent can confuse the public into believing that the website established at the <charitycommission.co.uk> address is the Complainant’s official website, thus undermining the public’s trust in the Complainant and its integrity. The use of the words ‘charity’ and ‘commission’ in the domain name can only be intended to create confusion and to lead the public away from the Complainant’s official website.

The Complainant has submitted as evidence a print out of the website established by the Respondent at the <charitycommission.co.uk> Internet address. The Respondent’s website provides links to a number of external websites, including certain websites that contain “adult” content, a website that provides information on “job searches” and a “pop up” advertisement that appears behind the Respondent’s home page. 

The Complainant states that none of these links direct Internet users to the Complainant’s official website and nowhere does the Respondent’s website state that it is not the Complainant’s official website.

The Complainant submits that such links are used by the Respondent to generate revenue for the Respondent.

The Complainant submits that the domain name in the hands of the Respondent is abusive because it was primarily registered as a means to generate revenue from link traffic and by using 'pop ups' and 'cookies' and the Respondent is using the domain name in a way which may confuse people or businesses into believing that the domain name is registered to, operated or authorised by, or otherwise connected to the Complainant.

Respondent’s Submissions

The Respondent did not file any Response or any additional submissions pursuant to the Directions made on 9 August 2007.

6.	Discussion and Findings:

In order to succeed in these proceedings, paragraph 2(b) of the Nominet UK DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. 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

The Complainant is a long established and well known institution. It was first established and has operated as statutory body since the year 1853. It is named and is known as “The Charity Commission for England and Wales”. 

Furthermore the Complainant is the owner of the abovementioned registered trademarks that incorporate the words “CHARITY COMMISSION” as their dominant elements.

This Expert accepts the Complainant’s submissions that the domain name in dispute is similar to the Complainant’s name and trade marks. It consists of the principal elements in the Complainant’s name and trade marks namely the words “charity commission”. The fact that the domain name does not contain either the definite article or the word elements “for England and Wales” is not sufficient to distinguish the domain name from the Complainant’s name and mark. The definite article is not a distinctive element and the words “for England and Wales” are descriptive of the jurisdiction in which the Complainant is authorised to carry out its statutory functions.

The words “CHARITY COMMISSION” are the principal and dominant elements in the Complainant’s registered trademarks.

It follows that the Complainant has established the first element of the test in paragraph 2(a) of the DRS Policy. 

Abusive Registration

As defined in paragraph 1 of the DRS Policy, the concept “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;”

The Complainant has submitted that the domain name in the hands of the Respondent is an Abusive Registration because the Respondent is using the domain name in a way which may confuse people or businesses into believing that the domain name is registered to, operated or authorised by, or otherwise connected to the Complainant and it was primarily registered to generate revenue from link traffic and by using “pop ups” and “cookies”

In brief submissions, the Complainant has provided sufficient evidence to establish a prima facie case that the Respondent has used the domain name for such purposes. The Respondent has been given adequate opportunity to provide an explanation but has not done so.

The Respondent has chosen to register a domain name that consists of the principal element of the Complainant’s name and the dominant elements of its registered trade marks on the UK ccTLD. This is clearly not a coincidence.

The Respondent would appear to be based in Moscow in the Russian Federation, There is no evidence or indication on the file that the Respondent has any connection with the United Kingdom except for its registration and use of the domain name.

Nonetheless, as the Respondent has chosen to register the domain name on the .co.uk ccTLD it is probable that the Respondent has a certain knowledge of the United Kingdom. It is most improbable that when choosing and registering the domain name the Respondent was not aware of the Complainant and the Complainant’s name and reputation as a long established statutory body engaged in the registration and regulation of charities in England and Wales for one hundred and fifty four years.

In the circumstances, this Expert is satisfied, on the balance of probabilities, and in the absence of any Response or explanation from the Respondent, that the Respondent chose and registered the domain name in dispute intending to create a reference to the Complainant. The Respondent’s use of the domain name gives the false impression that there is an association between the Respondent’s website and the Complainant.

On the balance of probabilities the Respondent chose, registered and is using the domain name for commercial purposes in order to take predatory advantage of the Complainant’s status and reputation. It follows that the domain name in dispute is an Abusive Registration.

It follows that the Complainant has established the second element of the test in paragraph 2(a) of the DRS Policy. 

7.    Decision

This Expert therefore directs that because the Complainant has established both elements of the tests set out in paragraph 2(a) of the Nominet UK DRS Policy, the Complainant should succeed in its application and this Expert directs that the domain name <charitycommission.co.uk> be transferred to the Complainant.

______________________                                                 ______________________
         James Bridgeman                                                       Date:  29 August 2007