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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Friends Provident Management Services Ltd v River Cruise Investments Ltd [2007] DRS 5157 (4 December 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/5157.html Cite as: [2007] DRS 5157 |
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1. Parties:
Complainant: Friends Provident Management Services Ltd.
Country: UK
Respondent: River Cruise Investments Ltd
Country: AU
(together "the Parties")
2. Domain Names in dispute:
friendprovident.co.uk and freindsprovident.co.uk
("the Domain Names")
3. Procedural Background:
Summary of DRS activities
19/10/2007 Dispute entered into system
29/10/2007 Hardcopies received in full
29/10/2007 Complaint documents generated and sent to Respondent
21/11/2007 No Response received
21/11/2007 "No response" notification to Complainant
27/11/2007 Fees received from complainant
30/11/2007 Conflict check sent to Iain Tolmie
30/11/2007 Mr. Iain M Tolmie selected as expert
Appointment of Expert
3.1. On the 30th November 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 4th December 2007 to respond on or before 18th December 2007, and I signed the necessary declaration of impartiality and independence on 30th November 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 available for consultation, together with advice, on the Nominet UK website (http://www.nominet.org.uk/disputes/drs).
4. Outstanding Formal/Procedural Issues:
4.1. The Respondent has not submitted a response to Nominet, in time or at all, as provided for under the Procedure §5a. Nominet has provided me with evidence that it has attempted to contact the Respondent as required by the Procedure §2. Nominet attempted to communicate by e-mail to the required standard address for all registrants (postmaster@
4.2. The Respondent accepted the Nominet Dispute Resolution Procedure at the time of the registration of the Domain Names. The Respondent is not obliged to make any formal response and the Procedure does not permit a Decision by default.
4.3. From the records sent to me, I can see that Nominet have taken all necessary steps under the Procedure and there is no evidence to indicate any exceptional circumstances that I should take into account. 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."
4.4. 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 Friends Provident Group of companies is extensive and includes Friends Provident plc, Friends Provident Life and Pensions Ltd., Friends Provident Life Assurance and Friends Provident Pensions Ltd. It has been in existence (through successor organisations) since 1832. It is a well-known name in the provision of financial services to the public.
5.3. Friends Provident Management Services Ltd. holds, on behalf of the Group, the trademark number 174248 for the words "Friends Provident" in classes 09 16 35 36 37 41 and 42 since 1991.
5.4. The Respondent registered the Domains Names as a Non-UK Corporation on 30th May 2004.
6. The Parties' Contentions:
Complainant.
6.1. I have accepted as fact that Friends Provident Group (in all its forms) is an established financial services provider with a long history. It also holds an appropriate trademark covering its business name. The Complainant's additional submissions were as follows [note that these have been inserted verbatim but that the numbering is mine]:
6.1.1. 2.(a) The Complainant has no relationship with the Respondent and the domain names in the hands of the Respondent are abusive as they were set up to capture spelling mistakes made by Friends Provident customers and prospective customers when typing into the URL the Friends Provident domain name referred to in (d) above. The Respondent's domain name 'freindsprovident' contains the incorrect spelling of the word 'Friends' and the domain name 'friendprovident' has dropped the letter 's' from the word 'Friends', this in conjunction with the word 'Provident' drives internet traffic to its fake Friends Provident site. The Respondent is clearly taking advantage of the Complaint's name, trademark and trading names as customers and prospective customers are led to believe that the sites are owned and controlled by the Complainant. The definition of a trademark is 'any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings'.
6.1.2. (b) The domains also advertise and link to the Complainant's competitor sites.
6.1.3. (c) The Respondent appears to have a series of miss spelt registrations of well known companies and organisations unrelated to it e.g. the miss spelling of nationwide.co.uk as naitonwide.co.uk. The Complainant being a financial services company regulated by the Financial Services Authority in the UK has a duty to protect its customer and prospective customers from possible fraud such as phishing attacks. Phishing attacks are attempts to obtain sensitive information such as usernames, passwords and customer sensitive information by way of fake websites. The Complaint is not in any way stating that the Respondent is in any way connected to such fraudulent acts, however, if the site is sold on there is no guarantee that a future owner of the site will not use it for such purposes.
6.1.4. (d) The Complainant has written to the Respondent informing it that 'Friends Provident' is a registered trademark and requesting that the domains are transferred to the Complainant. The Respondent has not replied to the Complaint's letter a copy of which is attached at exhibit 4.
Respondent
6.2. The Respondent has made no 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. The Nominet "help" page for complainants says, "The main point of the [Rights] test is to make sure that the person who complains is someone with a proper interest in the complaint".
7.5. In examining the Domain Names, 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 Names (excluding the ".co.uk") are "friendprovident" and "freindsprovident", which are similar to the Complainant's trademark "Friends Provident" being mistyping of the style "friendsprovident". The Complainant owns and members of the Group use the domain name "friendsprovident.co.uk" for their Internet business.
7.7. I do not find that the name is in any way descriptive of the Complainant's business.
7.8. 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
7.9. 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.
7.10. 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;
7.11. The Complainant, as a well-known financial services provider, makes use of the domain name "friendsprovident.co.uk" to provide on-line access to a range of financial services and customer support services.
7.12. The Respondent has chosen to register Domain Names that closely resemble the business name and domain name of the Complainant, and has constructed web sites pointed to by the Domain Names that provide access to (inter alia) financial services that are in competition with those of the Complainant.
7.13. The Respondent has chosen not to provide any explanation of its conduct and therefore I shall (for the reasons set out in §4.4 above) draw such conclusions as seem appropriate.
7.14. The key issue in the finding of an Abusive Registration is for there to be evidence of the Respondent having some knowledge of the Complainant and/or its brand/rights (Appeal Panel DRS 04431 "verbatim.co.uk" §8.13). In this case, the Respondent has chosen to register Domain Names that are similar to that of the Complainant and to build web sites that provide similar services to those of the Complainant. The Respondent claims to be a corporate body: this is not the activity of a responsible organisation. Absent an explanation, the only conclusion I can draw is that the Respondent knew of the Complainant and intended to profit from the mistyping of the Complainant's domain name by linking to competitor sites – profit that is from deliberate misdirection.
7.15. It is clear to me that the Domain Names are designed to catch frequent forms of mistyping of the domain name "friendsprovident.co.uk" which is owned and used for business by the Friends Provident Group.
7.16. This is, in my opinion, a clear example of evidence of abusive registration as per the Policy §3aiC - "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant".
7.17. By extension it is also an example of Policy §3aii "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". In this instance, I draw the inference that if it has not caused confusion, then it is highly likely to do so. Absent any explanation, I can see no mitigating circumstances. There is, to my mind, no conceivable reason why a responsible corporate body should seek to behave in the manner adopted by the Respondent.
7.18. I find that (on the balance of probability) at the time of registration the Respondent knowingly took unfair advantage of the Complainants Rights.
7.19. I find that there are circumstances that convince me, on the balance of probability, that the Domain Names have been "used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights".
7.20. I therefore find that it is established to my satisfaction that the Domain Names, in the hands of the Respondent, are Abusive Registrations.
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 names or marks which are identical or similar to the Domain Names and I find that the Domain Names in the hands of the Respondent are Abusive Registrations.
8.2. I therefore determine that the Domain Names should be transferred to the Complainant.
Dated: 4th December 2007
Iain M. Tolmie ("the Expert")