Nominet UK Dispute Resolution Service
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Cite as: [2008] DRS 5838
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Quit v Bowler [2008] DRS 5838 (29 August 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5838.html Cite as: [2008] DRS 5838 |
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Nominet UK Dispute Resolution Service
DRS No. 05838
Quit. v. Christopher Bowler
Decision of Independent Expert
Complainant: Quit
Country: GB
Respondent: Christopher Bowler
Country: GB
(the "Domain Name")
3.1 The Complaint entered Nominet's system on 25 June 2008. Nominet received hard copies of the Complaint on 26 June 2008. The Complaint was validated and sent to the Respondent. No response was received within the deadline for response of 23 July 2008 and therefore no response was forwarded to the Complainant. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me. 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 14 August 2008.
4.1 None
5.1 The Complainant is a company limited by guarantee and was established as a UK registered charity (reg. no. 1042482) in 1989. It provides support and advice to individuals who are trying to give up smoking. That support has included the operation of a telephone helpline since the 1990s under the name "Quitline".
5.2 The Complainant is the owner of UK registered trade mark No. 156369 for the word "QUIT" for "Smoking cessation counselling services; telephone smoking cessation counselling services; all included in class 42". The application for this trade mark was filed with what is now the UK Intellectual Property Office on 17 August 1995.
5.3 According to the WHOIS query results in relation to the Domain Name, the Respondent is an individual operating from a PO address in Sutton, Surrey, United Kingdom. The Respondent registered the Domain Name on 9 February 2006.
5.4 As at the date of the Complaint the web page operating from the Domain Name bears all the telltale signs of having been generated by a domain name parking service. The web page comprises a banner which incorporates the words "Welcome to quitline.co.uk", under which there are lists of "Related Searches" and "Sponsored Listings". The vast majority of these searches and listings relate in some way or other to smoking and services or products connected with the giving up of smoking. There are also search links such as "personals" and "personal ads" that relate to dating services.
5.5 The web page also contains the link "Enquire about this domain", which when clicked upon takes the internet user to an enquiry page generated by "NameDrive" and which contains the text:
"If you are interested in a possible purchase of this domain or would like to contact the owner, please fill in the following information and submit your message".
The form that follows that text includes a field marked "offer" by which it is possible to make an offer for the purchase of the Domain Name.
Complainant
6.1 The Complaint is short. The Complainant seeks the transfer of the Domain Name into its name on the grounds that it is similar to a name or mark in which the Complainant has Rights and that the registration of that Domain Name in the name of the Respondent is an Abusive Registration.
6.2 Reference is made to the Complainant's activities under the "Quitline" name and to its UK registered trade mark. The Complainant then contends that the Domain Name has been used by the Respondent in a way that is likely to confuse the public into thinking that the Complainant controls the Domain Name. It also contends that the "Personals" related links are not "an appropriate associated with a charity". It contends that any association with the Respondent's website" could only be detrimental since the public could assume that the Complainant is endorsing the products/services advertised" on the website.
Respondent
6.3 The Respondent failed to serve any Response in these proceedings.
General
7.1 To succeed under Nominet's Dispute Resolution 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, second, 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.
7.3 Whilst it is the Complainant that bears the burden of proof under the Policy, paragraph 15(c) of the Dispute Resolution Procedure (the "Procedure")[1] provides that if a party does not comply with any provision in the Policy or the Procedure than the appointed expert can "draw such inference from the Party's non-compliance as he or she considers appropriate".
Complainant's Rights
7.4 I am satisfied on the evidence that the Complainant owns a UK registered trade mark for the word "Quit". I am also satisfied that for the purposes of the Policy that this trade mark is similar to the Domain Name. When one disregards the Domain Name's <.co.uk> suffix, the Domain Name can only be sensibly understood as a combination of the words "quit" and "line" and I do not believe that the addition of the word "line" prevents the Domain Name from being similar to the Complainant's mark. "Line" is a word that is often used to denote a telephone service and as such is partially descriptive of the services in respect of which the Complainant's trade mark has been registered.
7.5 Accordingly, the Complainant has made out paragraph 2(a)(i) of the Policy.
7.6 The Complainant also refers in its Complaint to its use of the "Quitline" name since the 1990s. It is unclear whether the Complainant also intends to claim rights under the law of passing off in respect of that name for the purposes of paragraphs 2(a)(i) of the Policy. It seems probable that such rights would exist in this case, but given my conclusions in relation to the complainant's registered trade mark it is not necessary to consider this issue further.
Abusive Registration
7.7 The Complainant has provided very little evidence as to the extent of its activities. It has provided copy leaflets and claims to have developed "goodwill and reputation", but no further information or evidence is provided in this respect.
7.8 Further, the way in which the Complainant has couched its allegations of abuse is problematic. There are claims of confusion and damage but there is no express allegation as to the Respondent's motivations in this case. The Complainant contends that the Domain Name has been "used by the Respondent in a way which is likely to confuse the public into thinking that it is controlled by the Complainant". It seems probable that the Complainant contents that this is what the Respondent intended. However, given the importance of intention and motivation in proceedings under the Policy, it would had been preferable had this been made express.
7.9 Nevertheless, I have reached the conclusion that the Domain Name, on the balance of probabilities, has been registered and used by the Respondent with knowledge of the Complainant's use of the terms "Quit" and "Quitline" and with the intention of taking financial advantage of the similarity between those names and the Domain Name.
7.10 First, there is the nature of the Domain Name itself. As I have already described, it can only be sensibly be understood as the words "quit" and "line" in combination. These are two ordinary English words but the combination is moderately unusual. It is perhaps possible that they might have been chosen because of their alleged generic meaning even when used in combination (i.e. as suggestive of a telephone line service that would help someone stop doing something). However, the Respondent makes no such claim.
7.11 Indeed, even had the Respondent made such a claim it is one that would call out for further explanation or elaboration. This is so, even if the Respondent's position was simply that it is a legitimate trader in "generic" domain names. Some of the comments of the Appeal Panel in Case 03316 are relevant here. In that case the respondent was a domain name trader, the domain name was, and the word "Bounce" had both generic and trade mark meaning. The Panel stated as follows:
"Even where a generic word has been chosen for registration there is usually a reason why that generic name rather than some other generic word has been chosen. If, for example, the Respondent's evidence had been to the effect that he had registered other similar names such as 'hop', 'skip' or 'jump', the registration of "bounce" would have been more readily understandable. However, no such evidence or explanation is offered in this case."
7.12 I am not saying that the circumstances inare similar to those in the current case. In there were a number of other factors that suggested abusive registration, and there was also (in contrast to the current case) compelling evidence of reputation. Even then the Panel declared that theirs was a "far from a clear cut case and one with which the Panel has had some difficulty". Nevertheless, makes it clear that even when a domain name trader registers a single ordinary English word this may call for an explanation. Here, there has been a choice of not one word but two in combination and it is that combination of words that calls for an explanation. None is forthcoming.
7.13 Second, there is the subsequent use of the Domain Name in connection with a domain name parking service and the links that appeared on the page. As I have already stated the vast majority of these are smoking related. Insofar as the Respondent had any involvement in the choice of these links this of itself would be evidence of the Respondent's knowledge of the various goods and services that are available to those who want to stop smoking and consequently of the Complainant's activities.
7.14 The complication here is that it seems clear that the Respondent is using a domain name parking service. It is now reasonably well known how these sites operate. As was explained by the expert in The Royal Bank of Scotland Group Plc v John Wilfred [2006] DRS 03952, the owner of a domain name "parks" that domain with the service, which then generates a web page with direct and indirect links to various commercial entities. When an internet user clicks on one of these links, the domain name owner will receive a fee.
7.15 This in turn raises the question of who is responsible for the generated links and whether these links can be evidence of a respondent's knowledge of a complaint. Often the answer to that question is yes. As I stated recently in Dr Marilyn Glenville Clinic v. Digital Assets Inc DRS No. 5421.
7.11 … The links that appear on a domain name parking service page are usually generated automatically by the domain name parking service. However, it does not follow from this that the content of those links cannot constitute evidence that a respondent was aware of the activities of a complainant. The reason is that many if not most domain name parking services allow a registrant to identify certain "key words" or "meta tags" when parking a domain name. That choice of "key words" will influence the links that appear on the page, and it is clearly in the interests of the registrant to try and make those links as relevant as possible to those who are likely to have typed the domain name into their browser. The more relevant the links, the more likely that the internet user will click on them and the greater the revenue the registrant will receive.
7.12 Therefore, in the absence of an explanation and evidence to the contrary, it will frequently be possible to infer from the content of the links on a domain name parking page that the registrant was aware of the existence of the Complainant, even if the registrant did not directly choose any of the specific links displayed. This is particularly so in a case, such as the current one, where there is otherwise no obvious connection between the words to be found in a domain name and the links displayed.
7.16 In this case the links appearing on the web page and the meaning conveyed by the domain name are not completely unconnected. The links are exactly the sort of links that one would expect if the domain name had been. Are they what one would expect from ? On balance, there does not seem to me to be such an obvious connection between the words "quit" and "line" together and services connected with quitting smoking, that I can and should simply disregard these links. I accept that in this case the links are far from overwhelming evidence of knowledge on the part of the Respondent and perhaps they can be explained away. However, in the absence of such an explanation from the Respondent it is evidence that weighs to some degree in the Complainant's favour.
7.17 Lastly, there is the Respondent' silence and its failure to put in any Response. It is for the Complainant to prove its case and the Respondent is entitled to sit back and make a Complainant do so. Nevertheless, where a complainant puts forward a prima facie case of abusive registration and a respondent does not respond, then in many cases the obvious inference is that the respondent cannot do so. It is also an inference that an expert is entitled to draw given the wording of paragraph 15(c) of the Procedure.
7.18 In short, I believe that the Complainant has just about made out a case that the Domain Name was chosen and has been used with the Complainant, and the Domain Name's similarity to the "Quit" and "Quitline" names, in mind. I also conclude that the Domain Name was registered and used[2] with a view to using these similarities to attract internet users to the page generated by that parking service in order to generate click-through income.
7.19 Such activity takes unfair advantage of the Complainant's rights and constitutes an Abusive Registration under the Policy. Therefore, I find that the Complainant has made out the requirements of paragraph 2(a)(ii) of the Policy.
8.1 I find that the Complainant has Rights in the QUIT 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.
8.2 I therefore determine that the Domain Names should be transferred to the Complainant.
Matthew Harris
…………………………
29th August 2008
Note 1 This is version 2 of the Procedure which as of 29 July 2008 was replaced by version 3 of the Procedure. [Back] Note 2 Of course, under the Policy it is only necessary to show either abusive registration or abusive use. Indeed, the Complainant only seems to allege abusive use and not abusive registration. However, in this case it seems to me that any attempt to analyse these separately adds very little and on the material I have seen such claims seem to stand or fall together. There is no suggestion that the Complainant’s interest in the “Quitline” term was brought to the Respondent’s attention subsequent to registration, whether by means of pre-action correspondence or otherwise. Further, if the initial registration and use were not abusive and had the Respondent’s merely continued the same activities after notification as it had undertaken before, then it is doubtful that such continued use would have been abusive. [Back]