[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> MGN Ltd v SP Alford [2008] DRS 6172 (9 October 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/6172.html Cite as: [2008] DRS 6172

[New search] [Printable RTF version] [Help]

 


DISPUTE RESOLUTION SERVICE

DRS 06172

Decision of Independent Expert

MGN Limited

- and –

S.P. Alford

1. The Parties:

Complainant: MGN Limited

Country: UK

Respondent:: S.P. Alford

Country: UK

2. The Domain Name:

thedailymirror.co.uk

3. Procedural History:

The Complaint was received by Nominet on 20 August 2008. Nominet validated the Complaint and sent a copy to the Respondent.

No Response was received by Nominet.

On 18 September 2008 the Complainant paid Nominet the required fee for a full decision of an Expert pursuant to the Nominet UK Dispute Resolution Service Policy ("the Policy").

Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and duly appointed the undersigned as the Expert with effect from 24 September 2008.

4. Factual Background and Findings:

The Nominet Records show that the Domain Name was registered on 9 February 2000.

Based on the Complainant's submissions (see section 5 below) and a review of the materials annexed to the Complaint, set out below are the main facts which I have accepted as being true in reaching a decision in this case:

(1) The Complainant has made very significant use of the names THE DAILY MIRROR and MIRROR in the United Kingdom for very many years. In light of this, and the connected advertising and marketing, the brands THE DAILY MIRROR and MIRROR are very well-known.

(2) The Complainant provides online editions of THE DAILY MIRROR and SUNDAY MIRROR to the public.

(3) The Complainant owns UK registered trade marks for DAILY MIRROR and THE MIRROR.

(4) The Respondent also owns the following domain names: arenal.co.uk; arthurdaley.co.uk; bobhoskins.co.uk; joestrummer.co.uk; thepogues.co.uk; stagecoachtravel.co.uk; thedailystar.co.uk. The website www.dailystar.co.uk has several links to sites that are unrelated to THE DAILY STAR, including a link to a site offering home delivery of THE SUN newspaper; a link to a dating site; and several links to erotica sites.

(5) V13 Domain Names is an alter ego of the Complainant.

(6) The home page of the website at www.thedailymirror.co.uk (as at 15 July 2008) states "Well, what did you expect?" and links through to an affiliate website where the user is able to book hotel accommodation in various cities worldwide. The Domain Name has been set up to act as an affiliate for this Alpha Rooms bookings website. The www.dailymirror.co.uk website has in the past been used to direct the public to unrelated third parties services, including links to publications which compete with the Complainant's services.

(7) The current home page at the website for the Domain Name states "Click here to make an offer for this domain name".

5. Parties' Contentions:

Complainant:

The Complainant's submissions can be summarised as follows:

1. The Complainant has rights in trade marks/names which are identical or similar to the Domain Name:

(1) THE DAILY MIRROR is published by MGN Limited, part of Trinity Mirror plc, the UK's largest newspaper publisher. Trinity Mirror plc publishes over 150 regional newspapers, five national newspapers and over 200 websites.

(2) THE DAILY MIRROR was founded in 1903 and is one of the UK's best known daily newspapers. In June 2008, 1,472,286 copies of THE DAILY MIRROR were circulated each day. THE DAILY MIRROR has a widespread reputation and is recognised widely as a leader in the daily newspaper market.

(3) In 2007, THE DAILY MIRROR won a number of industry awards, including Scoop of the Year; Front Page of the Year; Show Business Writer of the Year; Photographer of the Year at the UK Press Awards, and Scoop of the Year; Daily Newspaper of the Year at the London Press Club Awards.

(4) The Complainant operates an online edition of THE DAILY MIRROR at www.mirror.co.uk and www.dailymirror.co.uk (both domain names directing to the same website).

(5) The Complainant has a number of registered trade marks for DAILY MIRROR and THE MIRROR with effect in the United Kingdom, including UK trade mark registration no. 504820 for the mark DAILY MIRROR (dating from 1929) and UK trade mark no. 2122294 for the mark THE MIRROR (dating from 1997).

(6) As set out above, the Complainant has made significant use of THE DAILY MIRROR and MIRROR names in the United Kingdom for more than 100 years. This, combined with the significant advertising, marketing and public relations expenditure which goes alongside such extended use, means that it is a very well-known brand and one which is easily recognised by the public.

(7) Furthermore and specifically as regards the internet, the brand is strengthened by the fact that the Complainant is the registered owner of domain names such as dailymirror.co.uk, mirror.co.uk and sundaymirror.co.uk whereby the Complainant provides online editions of THE DAILY MIRROR and SUNDAY MIRROR to the public.

(8) The Domain Name is identical to the registered Rights of the Complainant in DAILY MIRROR, save for the addition of "THE". This addition plays no role from a Rights perspective. Indeed its addition makes it identical to the way the Complainant's newspaper is referred to by the public, and hence identical to the Complainant's unregistered rights. The Domain Name is therefore identical, or closely similar to, the trade marks of the Complainant.

2. The Domain Name is an Abusive Registration in the hands of the Respondent:

(1) Abusive use of the Domain Name under paragraph 3(a)(iii): the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern. A list of all of domain names, which the Complainant believes are owned by the Respondent, is annexed to the Compliant. The Complainant contends that the following domain names infringe the rights of others and therefore demonstrate a general pattern of abusive registrations: arenal.co.uk; arthurdaley.co.uk; bobhoskins.co.uk; joestrummer.co.uk; thepogues.co.uk; stagecoachtravel.co.uk; thedailystar.co.uk.

(2) The Complainant notes that the Respondent has registered thedailystar.co.uk, a domain name which incorporates or is very closely related to a third party's registered rights (namely, the DAILY STAR newspaper) in the journalism and newspaper industry. A WHOIS search for this domain name is annexed to the Complaint, together with a screen capture of the website (screen capture taken as at 16 July 2008). A search of the UK and Community trade mark registries shows that the Respondent has no registered rights to this name.

(3) The Respondent has therefore deliberately engaged itself in a pattern of registrations which relate to third party rights, some of which are identical to high profile UK national newspapers, and the Domain Name is part of that pattern.

(4) Abusive registration of the Domain Name under paragraphs 3(a)(i)(C) and 3(a)(ii): the Respondent's use of the Domain Name also falls under those paragraphs of the Policy, in that it unfairly disrupts the business of the Complainant, and was also designed to confuse people into believing that the Domain Name was registered to, or otherwise associated with, the Complainant. The mere registration of the Domain Name indicates that it was designed to confuse people into believing that the Domain Name was registered to the Complainant. This is made all the more apparent when one considers that (a) the Respondent has registered a domain name which is also identical to another well-known UK newspaper and (b) the reputation the Complainant possesses in THE DAILY MIRROR name.

(5) This argument is strengthened when one considers the statement on the homepage of the website hosted at the Domain Name - "Well, what did you expect?". A screen capture of the website (as at 15 July 2008) is annexed to the Complaint. The Complainant contends that this is a clear allusion to the fact that the public may mistakenly go this website expecting it to host the Complainant's website.

(6) Secondly, from the homepage at the Domain Name the user is then able to click on the image of a mirror and is then taken to an affiliate website where (s)he is able to book hotel accommodation in various cities worldwide. A screenshot of this webpage is also annexed to the Complaint. The Complainant contends that the Domain Name has been set up as an affiliate website for Alpha Rooms, and by clicking on the "Alpha Rooms" logo in the top left hand corner of the page, the user is taken to the Alpha Rooms homepage at www.alpharoom.com. The screenshot annexed to the Complaint shows that the website hosted at the Domain Name has been set up to act as an affiliate for the Alpha Rooms bookings website. In summary, the Respondent is using the Complainant's Rights in order to trade off its name and to gain affiliated booking revenues. A screen capture taken from the Alpha Rooms website showing how the affiliate program works is also annexed.

(7) Thirdly, the Complainant contends that the Domain Name disrupts its business as users who initially go to the Domain Name for news updates and information are instead directed to a site on which they can book holidays. This disrupts its business as the Complainant's Rights are being misused in order to direct the public to third party services. Moreover, the public is often easily distracted when searching for goods and services on the Internet, and by not finding what they are expecting, they may begin to search for other goods or services.

(8) Finally, the Complainant also notes that the Respondent has in the past used the website hosted at the Domain Name for the purpose of establishing sponsored links and raising money through "click-through revenue". This also caused disruption to the Complainant's business because the Complainant's Rights were being misused in order to direct the public to third party services. Screenshots taken from Archive.org of the website hosted at the Domain Name as at 14 December 2005 and 21 June 2007 are annexed to the Complaint. These screenshots clearly show click-through links to third party websites in the newspaper and media industries. Furthermore, some of these click-through links relate to publications which compete with the Complainant's services. Using the Complainant's name to advertise and drive traffic to third party's competing services is clearly an abuse of the Complainant's Rights.

(9) It is clear to the Complainant that the Respondent owned the website at the relevant times. According to the Marquesa database, as at 19 March 2006, V13 Domain Holdings was the registrant of the Domain Name. A copy of the Marquesa search record in respect of the Domain Name is annexed. Whilst V13 Domain Holdings no longer owns the Domain Name, the Complainant notes that V13 Domain Holdings is currently the registrant of the domain name onthegallops.co.uk, and that the address of V13 Domain Name Holdings is listed in the WHOIS search results as PO Box 321, Exeter, Devon, EX4 4WN. This is the same address at that of the Respondent. A copy of the WHOIS search for onthegallops.co.uk is annexed. On this basis, the Complainant submits that S.P. Alford and V13 Domain Holdings are one and the same, as it most unlikely that two unrelated entities would choose to share a PO Box in Exeter. According to Marquesa search records, V13 Domain Holdings also used to own the following domain names: thedailystar.co.uk, stagecoachtravel.co.uk, basshotels.co.uk, web-hotels.co.uk, radnorhotel.co.uk and straycats.co.uk (all of which are now owned by the Respondent). A copy of the Marquesa search report is annexed.

(10) Abusive registration of the Domain Name under paragraphs 3(a)(i)(A): the Respondent's pattern of Abusive Registration demonstrates that the Respondent registered the Domain Name for the purposes of selling it to the Complainant. This argument is strengthened when one views the statement on the homepage of the website hosted at the Domain Name: "Click here to make an offer for this domain name".

Respondent:

No Response has been filed by the Respondent.

6. Discussion and Findings:

General

Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:

i it 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 (as defined in paragraph 1 of the Policy).

Complainant's Rights

In light of the factual findings set out in section 4 above, I conclude that the Complainant has Rights in the nature of legally protectable goodwill in the name THE DAILY MIRROR; as well as Rights in the nature of registered trade marks in relation to DAILY MIRROR and THE MIRROR. Disregarding the generic .co.uk suffix, the Domain Name is identical to the former and very similar to the latter.

I therefore find that the first limb of paragraph 2 of the Policy is satisfied.

Abusive Registration

Paragraph 1 of the Policy defines an "Abusive Registration" as:

"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 has taken unfair advantage of or has been unfairly detrimental to the Complainant's Rights."

Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. The factors under paragraph 3a on which the Complainant relies in this case are as follows:

"i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name; ….

C. for the purpose of unfairly disrupting the business of the Complainant;

ii. Circumstances indicating that the Respondent is using or threatening to use the Domain Name in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;"

The Complainant relies first on paragraph 3aiii. The Respondent has registered a significant number of .co.uk domain names and several of these consist of the names of famous people or organisations, followed by the .co.uk suffix. The Respondent has no apparent rights in such marks and has not availed himself of the opportunity to make any submissions to the contrary. In addition, the domain names in question include thedailystar.co.uk and, based on the content of the home page of the corresponding website, it is clear that registration is an abusive one. Taking all of this into account, I find that the Respondent is engaged in a pattern of registrations of the nature described under paragraph 3aiii of the Policy, and that the Domain Name is part of that pattern.

With regard to paragraph 3ai.C, it should be noted that this refers to the situation where a registrant has registered a domain name "primarily for the purpose of unfairly disrupting the business of the Complainant" [emphasis added]. Whilst the Respondent's use of the Domain Name may be said to disrupt the business of the Complainant in this case, I do not believe that the evidence supports a conclusion that this was the purpose of the Respondent in registering the Domain Name or, if it was, that it was the (or a) primary purpose. The evidence which the Complainant itself puts forward rather supports the conclusion that the Respondent's primary purpose was to use the Domain Name to generate revenue.

For the same reason, I am not convinced that the evidence supports a conclusion that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant for a profit (paragraph 3ai.A). I can see that the Complainant's contention is an arguable one in that it is possible that the Respondent has used the Domain Name in the way it has in order to prompt the Complainant into purchasing it. There is some support for this from the fact that the home page at the website for the Domain Name states "Click here to make an offer for this domain name". Overall, my views on this are fairly evenly balanced. Since my decision in this case will not turn on reaching a conclusion on this particular point, I will not do so.

The Complainant is on strong ground when it comes to paragraph 3aii. The nature of the Domain Name itself, being identical to the name by which most people refer to the Complainant's newspaper, means that it is very likely that many people will go to www.thedailymirror.co.uk expecting it to be the Complainant's website. This likelihood is increased by the fact that the Complainant publishes an online version of the Daily Mirror at www.dailymirror.co.uk (and at www.mirror.co.uk). I agree with the contention that the Respondent was well aware of this likelihood, hence the comment on the home page at www.thedailymirror.co.uk of "Well, what did you expect?".

Whether or not people will continue being confused for very long after they reach the Respondent's website does not, in my view, make any difference. The point is that initial confusion is inevitable, and such confusion does create an unfair advantage for the Respondent and cause unfair detriment to the Complainant. There is unfair advantage for the Respondent because some people, who are looking for a website for the Daily Mirror (as in the Complainant's publication) and who come to the Respondent's site, will be tempted to remain on that site and to click through to the hotel accommodation site, and as a result of this the Respondent generates revenue. This is what is commonly known as "bait and switch". There is unfair detriment to the Complainant because, when such people are diverted in this way, they do not then come on to the Complainant's website, which is what they were looking for.

In the light of my conclusions regarding the confusion issue and the pattern of registrations issue, it is clear to me that the registration and use by the Respondent of the Domain Name did and has taken unfair advantage of the Complainant's Rights and was and has been unfairly detrimental to such Rights. In other words, I am satisfied that the Domain Name is an Abusive Registration.

7. Decision:

Having found that the Complainant has rights in respect 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, the Expert directs that the Domain Name thedailymirror.co.uk be transferred to the Complainant.

Jason Rawkins 9 October 2008