Nominet UK Dispute Resolution Service

DRS No. 05127

McClure Naismith LLP -v- 123 Domains Limited

Decision of Independent Expert

1      Parties

Complainant:	McClure Naismith LLP
Country:		UK
               
Respondent:	123 Domains Limited
Country:		Spain

2      Domain Name
            
mcclurenaismith.co.uk (the “Domain Name”)
       
3      Procedural Background
           
3.1	The Complaint entered Nominet's system on 9 October 2007. Hard copies of the Complaint were received by Nominet on 12 October 2007. The Complaint was validated and sent to the Respondent on 15 October 2007. 

3.2	No response was received within the deadline for response on 7 November 2007 and therefore no response was forwarded to the Complainant.  Mediation not being possible, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service on 12 November 2007. 

3.3	On 12 November 2007 I confirmed that I was not aware of any reason why I could not act as an Independent Expert in this case and I was appointed as such on 19 November 2007.
          
4     Outstanding Formal/Procedural Issues (if any)

None.

5     The Facts

5.1	The Complainant is a Scottish law firm with offices in Glasgow, Edinburgh and London with annual turnover of approximately £15 million.    It would appear currently to be trading as a limited liability partnership but is the successor to a business that can trace its history back to 1826.   It has traded under variants of the “McClure Naismith” name since at least 1858. 

5.2	The Complainant is also the owner of a UK registered trade mark no. 2257401 dated 9 January 2001 for the phrase “McCLURE NAISMITH THE DETERMINNG FACTOR”.

5.3	The Respondent is 123 Domains Limited. The exact legal status of the Respondent is unknown but it provides contact details in Spain.  The Respondent registered the Domain Name on 10 August 2004. 

5.3	The Domain Name appears at all relevant times to have directed internet users to a webpage that bears all the tell-tale signs of having been created by a "domain name parking" service.  Under a heading “Mcclurenaismith.co.uk” is to be found the phrase “What you need, when you need it” and beneath that is a series of various links to a number of different “categories”.  Some of these “categories” seem to be are related in some way or other to legal services such as “Legal forms” and “Legal advice”, but there are also others with no such obvious connection, such as “Airline tickets”, “Hotels” and “Car Insurance”.

5.4.	A notable feature of the domain name parking service in question is that the form and style of the web page displayed dynamically changes from second to second depending   upon when an internet user retrieves it.  However, regardless of the exact style of the page is displayed, each page retains “Mcclurenaismith.co.uk” heading, the phrase “What you need, when you need it” and similar if not identical links.    

5.5	The domain parking service web pages are still operating from the Domain Name as at the date of this decision.  

6     The Parties’ Contentions

Complainant

6.1	The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is identical or similar to a name or mark in which it has rights (as defined in the Policy) and that registration and use of the Domain Name is abusive.

6.2	It claims it has “rights in the Domain Name”: 

(i)	as a result of the trading activities that have taken place under the name McClure Naismith since 1826.   It also claims “to date” to have “spent about £3 million on advertising and promoting the firm”;

(ii)	by reason of UK registered trade mark no. 2257401 described above.

6.3 	The Complainant maintains that the Domain Name:  

(a)	was primarily registered being used to unfairly disrupt the Complainant’s business;

(b)	is used by the Respondent in a way which has confused and will continue to confuse people into thinking that it is controlled by the Complainant as the site “primarily advertises other law sites”; and

(c) 	is using the good name of the Complainant’s firm to link to other websites including those that promote London accommodation, Las Vegas real estate and student credit cards.

Response

6.4	The Respondent served no Response in these proceedings.	

7	Discussion and Findings:

General 

7.1	To succeed under Nominet’s Dispute Resolution Service Policy (the “Policy”), the Complainant must prove on the balance of probabilities, first, that it has Rights in respect of a "name or mark" that is identical or similar to the Domain Name (paragraphs 2(a)(i) of the Policy) and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent (paragraph 2(a)(ii) of the Policy).

7.2	Abusive Registration is defined in paragraph 1 of the Policy in the following terms:

“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.”

Complainant’s Rights

7.3	Rights are defined in the Policy 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;”

7.4	There have been numerous cases under Nominet’s DRS that have held that where an entity owns sufficient goodwill in a name so as to enable it to bring proceedings under the English law of passing off, then this provides rights for the purposes of the policy.  Whilst I am not a Scottish lawyer, the law of passing off appears to be the same in Scotland as it is in England.

7.5	In the current case the Complainant does not expressly claim that it has rights under the law of passing off, but given the fact that reference is made in the Complaint to “goodwill in the McClure Naismith name”, it is reasonably clear that this is what is intended.  I also accept that given the extensive evidence appended to the Complaint as to the extent of the Complainant’s activities in Scotland under that name for nearly 150 years, the Complainant has sufficient rights in that name under the law of passing off so as to have rights in the McClure Naismith name for the purposes of the Policy.   Further, given the fact that the Complainant has an office in London, it seems likely that it also has sufficient rights under the law of passing off in England. 

7.6.	The only difference between the name  “McClure Naismith” and the Domain Name once the “.co.uk” suffix is disregarded, is the absence of the a space between the names “McClure” and “Naismith” and it is well known that it is not possible to incorporate a space in a domain name.  In the circumstances, I conclude that the Complainant has rights in a name or mark that is essentially identical to the Domain Name.

7.7 	The Complainant also relies upon UK registered trade mark no. 2257401.  That trade mark takes the form of a slogan which comprises the name of the Complainant followed by the words “the determining factor”.  The most significant element of that trade mark is the Complainant’s name.   In the circumstances, I also conclude that by means of this trade mark the Complainant also has rights in a mark that is similar to the Domain Name.  

7.8	Accordingly, the Complainant has satisfied the requirements of paragraph 2(a)(i) of the Policy.

Abusive Registration

7.7	Paragraph 3 of the Policy provides a non-exhaustive list of factors that may be evidence that a domain name registration is an Abusive Registration.  The Claimant does not expressly refer to any of those factors in its Complaint but in substance appears to be making reference to paragraph 3(a)(i)B and 3(a)(ii) of the Policy.   These are:

“Circumstances indicating that the Respondent has registered or otherwise acquired the Domain name primarily … as a blocking registration against a name or make in which the Complainant has Rights” (paragraph 3(i)(B)); and

“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” (paragraph 3(a)(ii)).

7.8	The Respondent has not put in a Response or otherwise attempted to give reasons as to why he has registered the Domain Name. However, it seems clear from the nature of the website operating from the Domain Name that the Respondent is attempting to obtain “click-through” revenue by using the Domain Name in conjunction with a "domain name parking" service. The way in which these services operate was briefly explained in the case of The Royal Bank of Scotland Group Plc v John Wilfred [2006] DRS 03952. In this case the expert stated: 
"This website looks to be one of the increasingly popular "domain name parking" type websites which work by paying the owner of the domain name a fee every time the website is accessed. As the Complainant says it is likely that customers or prospective customers of the Complainant will visit this website in error because it contains the Complainant's name "RBS" and because of its similarity to one of the Complainant's actual domain names, rbs-online.co.uk. It follows that the Domain Name is likely to attract a relatively high volume of traffic and will consequently earn the Respondent a good income."

7.9	There is nothing per se abusive in using a domain name parking service to generate “click-through” revenue.   However, it is quite a different matter to seek financial gain either for oneself or a third party by choosing and using a domain name that incorporates the name or mark of another business with a view to drawing traffic to a domain name parking service web page.   Such activity has been found to be abusive in a number of DRS cases including The Royal Bank of Scotland Group Plc v John Wilfred [2006] DRS 03952 and Newbury Building Society v Webster [2006] DRS 3967.   
7.10.	I also have little doubt that it was with the Complainant’s business in mind that the Domain Name has been registered and used in this case.  The exact combination of the names McClure and Naismith strikes me as an unusual one and (in the absence of any evidence to the contrary) can only sensibly be said to refer to the Complainant’s business. 
7.11	Arguably such activity falls within paragraph 3(a)(ii) of the Policy.  I am not convinced that the Complainant is right when it suggests that internet users will be confused into thinking that the domain name is controlled by it because “the site primarily advertises other law sites”.  Whilst there are indeed legal services related links on the web pages, the style and structure of each web page is such that it strikes me as unlikely that any person reaching this page would think that the page was endorsed or controlled by the Complainant.   However, I do not think that this matters.   The fact that an internet user is likely to type in the Domain Name thinking that this is a Domain Name operated or authorised by the Complainant and will bring him to a site operated by the Complainant is sufficient.  This “initial interest confusion”, even if it is dispelled once the internet user reaches a website, is sufficient confusion for the purposes of paragraph 3(a)(ii) of the Policy, provided that the registrant has registered or is using the domain name with the intention of taking advantage of such confusion. 
7.12	These findings are sufficient to decide the case in the Complainant’s favour.  However, it is also worth noting that the decision in Chivas Brothers Limited -v- David William Plenderleith (DRS 00292) is also relevant here. In the Chivas case the expert stated that: 
"Where a Respondent registers a Domain Name: 
1. 	which is identical to a name in respect of which the Complainant has rights; and
2. 	where that name is exclusively referable to the Complainant; and
3. 	where there is no obvious justification for the Respondent having adopted that name for the Domain Name; and
4. 	where the Respondent has come forward with no explanation for having selected the Domain Name,
it will ordinarily be reasonable for an expert to infer first that the Respondent registered the Domain Name for a purpose and secondly that that purpose was abusive. In this case the Expert draws those inferences."
7.13 	All four limbs of the Chivas case test are satisfied in the current case. Consequently, even in the absence of a finding that the Domain Name was registered and used with a view to generating “click-through” revenue, it would still be possible to infer that the registration is abusive.
7.14	I, therefore, conclude that the Complainant has made out its case that the Domain Name is an abusive registration within the meaning of paragraph 2(a)(ii) of the Policy.

8	Decision

8.1	I find that the Complainant has Rights in 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 under paragraph 2(a) of the Policy.

8.2		I therefore determine that the Domain Name should be transferred to the Complainant.

Matthew Harris

…………………………
28 November 2007