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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Oasis Stores Ltd v Dale [2008] DRS 6365 (1 December 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/6365.html Cite as: [2008] DRS 6365

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DISPUTE RESOLUTION SERVICE DRS 6365
Decision of Independent Expert
Oasis Stores Limited and J Dale
1. The Parties:

Complainant: Oasis Stores Limited

Country: United Kingdom

Respondent: J Dale

Country: United Kingdom

2. The Domain Name:

(the "Domain Name")

3. Procedural History:

3.1     The Complaint entered Nominet's system on 6 October 2008. The Complaint was validated under Nominet's dispute resolution service policy (the "Policy") and sent to the Respondent on 7 October 2008. Nominet informed the Respondent that he should file any Response by no latter than 29 October 2008. The Respondent filed no Response and Nominet informed the Complainant and Respondent of that fact in letters dated 30 October 2008. 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 20 November 2008.

4. Factual Background

4.1     The Complainant was incorporated on 2 January 1991 and first began trading as Oasis in that year. The Complainant has used the term Oasis in connection with clothing, fashion and fashion related accessories.

4.2     The Complainant presently operates 269 retail outlets in the UK and a further 132 world-wide, including locations throughout Europe as well as Indonesia, Russia, Saudi Arabia and the United Arab Emirates. The Complainant's annual turnover in the past five years has been in excess of £160 million and on occasion in excess of £230 million.

4.3     The Complainant is the owner of numerous registered trade marks that comprise or incorporate the word "Oasis". These include:

(i) United Kingdom registered trade mark no 2336917 for the word "Oasis" in class 25, filed on 4 July 2003 and registered on 30 January 2004; and

(ii) Community Trade Mark No 206250 for the word "Oasis" in classes 3, 14, 18, 21 and 25, filed on 1 April 1996 and registered on 25 April 2007.

4.4     The Respondent would appear to be an individual located in Bristol.

4.5     The WhoIs record for the Domain Name reveals that the Domain Name was registered at some time before August 1996.

4.6     On August 28, 2008 the Complainant's lawyers wrote a letter before action in relation to the Domain Name to the Respondent at his PO Box No. address in Bristol in an envelope marked with the name of the Complainant's lawyers' law firm. The letter was returned by Royal Mail in September 2008 marked "addressee gone away".

4.7     From at least the date of the Complaint, and up to the date of this decision, the Domain Name has been used for a web site that although varying in style and format has borne all the hallmarks of having been generated by a "domain name parking service".

4.8     Around the time that the Complaint was filed those typing the Domain Name into an internet browser would be diverted to a web site operating from the url http://oasis.co.uk.imondo.com/. The term "oasis.co.uk" and a search box were displayed at the top of the page. Below that were the tabs "Home", "Coast Stores Co UK", "Oasis Clothing UK" and "Beyonce Clothes", and below that a series of "Sponsored listings". The exact sponsored listing varied from time to time and possibly minute by minute but at one point the sponsored links displayed were as follows:

- Women's Clothing Shop

- Woman's Clothes

- UK Clothes

- Flax Clothes at Gidgets

- Shop SKECHERS and Save

- Large Womens Clothes

- Plis Size Consignment

- DorothyPerkins UK

- On-Dek Womens' Clothing

- Ladies Clothes

To the right of the page were a series of "Related Searches". Again the exact searches displayed has varied from time to time, but at the same time as the sponsored links listed above were displayed, the Related Searches were:

Oasis Clothes

Oasis Clothing UK

Oasis Fashion Shops

Design Clothing

Wallis Clothes

Coast Stores Co UK

Beyonce Clothes

Bay Trading Clothes

Club Oasis Oasis Lowest

The page also contained the link "Enquiries about this domain?", which linked to a page where it was possible to make an offer to purchase the Domain Name.

4.9     More recently the look and format of the web site had changed somewhat. The site now has the banner heading "oasis.co.uk". As at 4:18pm on the 24 November 2008 the text "oasis.co.uk – Oasis Music, Oasis Holidays – oasis" was displayed below that heading . Beneath that were a series of tabs with the text "Clothes", "Oasis the Band", "Holidays", "Health Spa", "Fashion" and "Christmas". When the tabs were hovered above various other links appeared that related to the subject matter of the relevant tab. Below these tabs appeared the following links:

- "Oasis Clothing Online": a link to the Complainant's products on the Littlewoods Direct web site;

- "Oasis Tickets": a link to sales of tickets links to a web site selling tickets to Oasis concerts;

- "Oasis": a link to an advertisement for the Oasis Hotel in Sardinia on the Portland Holidays direct web site;

- "Acuvue Oasys Contact Lens": a link to a site selling Johnson & Johnson "Acuvue Oasys" contact lenses;

- "Osis+": a link to "osis" hair care products for sale on eBay;

- "Save on Oasis": a link to M and m fashion and sport web site;

- "Osis Products": a link to osis hair care products for sale on the "lookfantastic" web site;

- "Find Air Oasis Shoes": a link to a seach for "air" and "oasis" and "shoes" on the Shop(com UK website; and

"Designer Sale Now on": a link to the "BrandAlley" fashion web site.

There is no longer a link for enquiries about purchasing the Domain Name.

5. Parties' Contentions

5.1     The Complainant contends that the Domain Name is identical to its OASIS trade mark.

5.2     The Complainant contends that the majority of links on the web site operating from the Domain Name are related to clothing and fashion. Further, if the term "Oasis Clothing" is typed into the search box on that page, it claims that further clothing related links are displayed.

5.3     From this the Complainant contends that the Domain Name is taking unfair advantage of, and is unfairly detrimental to, the Complainant's rights in the OASIS mark. It further contends:

(i) that the link on the web site to a page where internet users can offer to buy the Domain Name evidences that the Complainant has registered the Domain Name for the purpose 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 within the meaning of paragraph 3(a)(i)(A) of the Policy;

(ii) that the Respondent has registered the Domain Name as a blocking registration within the meaning of paragraph 3(a)(i)(B) of the Policy;

(iii) that the Domain Name was registered and is being used primarily for the purpose of unfairly disrupting the business of the Complainant within the meaning of paragraph 3(a)(i)(C) of the Policy;

(iv) that the Domain Name is being used in a way which will inevitably confuse people or businesses into believing that that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant within the meaning of paragraph 3(a)(ii) of the Policy;

(v) that the Respondent has given false contact details within the meaning of 3(a)(iv) of the Policy. It contends that contact details for the Respondent were not initially available from Nominet's public WhoIs database. These were only made available when the Complainant's solicitors contacted Nominet with a view to sending a letter to the Respondent. Further, when the Complainant sent a letter to the Respondent at the address given, the letter was returned undelivered. Reference is also made to Quixtar Investments, Inc v. Smithberger WIPO Case No. D2000-0138 and it is said that this case held that the provision of false information on applying for a domain name constituted bad faith under the Uniform Dispute Resolution Policy ("UDRP");

(vi) that the Respondent is operating the Domain Name intentionally to attract for commercial gain internet users to its web site or other on-line location by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Web Site or location or of a product or service on its Web Site or location. Reference is made in this respect to a further WIPO decision under the UDRP;

(vii) that there is no legitimate purpose for which the Domain Name could be used and that the Domain Name in the hands of the Respondent constitutes an instrument of fraud within the meaning of BT et al. v One In A Million^[1].

6. Discussions and Findings

General

6.1     To succeed under 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 (paragraph 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). The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (paragraph 2(b) of the Policy).

6.2     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."

6.3     The failure by the Respondent to file submissions in response does not entitle the Complainant to the equivalent of a default judgment on these issues. The Complainant still has to make out its case on the balance of probabilities under the Policy to obtain the decision it wants. However, in the absence of any exceptional circumstances I am entitled to draw such inferences from the Respondent's non-compliance with the Policy or the procedure for the conduct of proceedings under the Policy (the "Procedure") as I consider appropriate (paragraph 15(c) of the Procedure).

Complainant's Rights

6.4     This aspect of this case is straightforward. The Complainant is the owner of registered trade marks that comprise the word "Oasis". The Domain Name is simply the word "Oasis" with the addition of the ".co.uk" top and second level domains. Accordingly, the Domain Name is essentially identical to the Complainant's marks. The Complainant has made out the requirements of paragraph 2(a)(i) of the Policy.

Abusive Registration

6.5     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 web site that is currently operating from the Domain Name that the Respondent has at least recently used the Domain Name to generate "click-through" revenue by the means of the display of "sponsored links".

6.6     This is now a common activity on the internet. The way in which this works is that the sponsors of these links will pay a fee to a domain name owner that depends upon the number of internet users that click on the links displayed. The payment is usually indirect through the use of various third party "pay per click" and "domain name parking" services, and these services will take a percentage of the revenues generated.

6.7     It is rare for the domain name owner to choose the specific links that will appear on his web site. These are usually chosen by the "pay per click" or "domain name parking" service provider and that choice is usually made automatically by software that will often undertake some form of semantic analysis of the domain name.

6.8     However, that is not to say that the domain name owner will not influence that choice. A domain name owner using such a service will usually be presented with the option of choosing a number of "key words" or "meta tags" that will impact the sort of links displayed. In this way the domain name owner can make it more likely that links of a certain type will be displayed than others.

6.9     There are various reasons why an internet user will arrive at the page displaying the sponsored links. One of the most common is that the internet user will simply type the domain name into the address bar of his web browser that he thinks is most likely to result in him being taken to the sort of web page he is looking for. The more relevant the links to an internet user alighting on that page, the more likely that the internet user will click on that link and therefore the greater will be the income generated for the domain name owner. The domain name owner, therefore, has a vested interest in ensuring that the links displayed on the page best reflect the issues, products and/or interests that are most likely to have led the internet user to type that domain name into his address bar in the first place.

6.10     These facts have led some panels in proceedings under the UDRP to hold that a registrant can often be presumed (in the absence of any explanation from a respondent to the contrary) to have influenced the display of sponsored links on a web site which have an obvious association with a potential trade mark (as opposed to a descriptive) meaning of a term incorporated in a domain name^[2]. This in turn has allowed panels to draw certain inferences of knowledge from the links displayed.

6.11     There is nothing per se abusive in using a domain name parking service or sponsored links 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 cases under the Policy including The Royal Bank of Scotland Group Plc v John Wilfred (2006) DRS 3952 and Newbury Building Society v Webster (2006) DRS 3967.

6.12     I have mentioned that cases under the UDRP have sometimes been prepared to draw certain inferences as to a domain name registrant's knowledge from the nature of the links that appear on a domain name parking page. However, care needs to be taken when relying upon the reasoning in any UDRP case. The UDRP and the Policy are not the same things and they do not operate in the same way.

6.13     For example, under the UDRP it is necessary to show that at the time of registration a respondent acted in bad faith. However, the Policy does not require this. Instead, it requires either abusive registration OR abusive use.

6.14     In domain name parking cases this distinction is potentially significant. It is difficult to succeed under the UDRP unless it can be shown that at the time of registration the respondent was aware of the complainant's use of the relevant mark. Often the only way to assess past knowledge is to draw an inference of that knowledge from the current use of the domain name. Under the Policy this is less significant. Since abusive use is sufficient, a complainant can still be successful if it can only show that the respondent became aware of the complainant mark after registration.

6.15     However, if a domain name has not been registered in bad faith this is likely to have an impact on an assessment of whether or not subsequent use is abusive. The mere continued holding of a domain name that was not registered in bad faith cannot be abusive use of the domain name. Similarly, experts have been reluctant to hold that initial interest confusion (i.e. the confusion that may arise between a domain name and a trade mark and which may lead an internet user to type a domain name into the browser address bar) constitutes bad faith use.

6.16     Take, for example, a hypothetical (albeit somewhat implausible) scenario where someone legitimately registers a domain name incorporating the term "apple" without (at least initially) knowledge of the computer manufacturer or record company that uses Apple as a trade mark. Perhaps it has some legitimate use in connection with fruit in mind. Let us also suppose that the domain name is then temporarily parked with a domain name parking service provider.

6.17     If the links displayed are unrelated to either the computer manufacturer of record company, it is likely that there would be no abusive use, even when the potential trade mark significance of the term in the domain name is brought to his attention^[3]. This is to be contrasted with the position if the domain name was initially registered with the trade mark significance of the term in mind and with the intention to use it with a domain name parking service. In each case there may well be the same degree of initial interest confusion, but in one case there is likely to be abusive use and the other not.

6.18     However, suppose that instead the operator of the domain name parking service for a significant period of time displays links that predominately relate to computer equipment. In such a case there is not just accidental and incidental initial interest confusion. The initial interest confusion is taken and capitalised upon yet further. It is one thing to gain a slight advantage because people are drawn to a business unrelated to a complainant's mark, but quite another to structure your business around that confusion even if the initial registration was quite innocent.

6.19     Can, in such a case the registrant claim that he did not have the requisite knowledge of the claimant's mark even though that would have been obvious from even a cursory examination of the way in which his domain name has actually been used? Further, is direct personal knowledge on the part of the registrant required in this situation? If the registrant has allowed the domain name to be used in a way that it is clear that the operators of the domain name parking service have the relevant knowledge, why is this not sufficient?

6.20     Further, even assuming that the registrant must have personal and direct knowledge of the Complainant's mark, can the domain name registrant avoid responsibility for any links simply because he is able to show that the links that appeared on the parking page were not displayed at his express direction or without his direct consent or knowledge?

6.21     I would suggest that if a domain name registrant who is aware or becomes aware of the trade mark significance of a term incorporated in his domain name, allows a domain name to be used by a domain name parking service to produce a page that include links that take advantage of that trade mark meaning, he will be abusively using that domain name. He cannot avoid such a finding by showing that he did not do this directly himself, but allowed a third party to do this instead. Nor can he avoid responsibility for these third party acts by turning a blind eye to how exactly the domain name is being used.

6.22     There is one important case that might suggest that this analysis is not correct. That is the decision of the Appeal Panel in MySpace, Inc v Total Web Solutions Limited DRS 04962. The domain name in that case was "myspace.co.uk" and the respondent had been using a domain name parking service. There was no suggestion of registration in bad faith as the domain name pre-dated the complainant's business. The Appeal Panel held that although the domain name registrant could have influenced the links that appeared on the domain name parking service, as a matter of fact he had not done so. The links that appeared were automatically generated and over time there started to appear links that related to the complainant or the complainant's competitors.

6.23     In the MySpace case the complainant contended that the respondent had the ability to control the content of the web site and that its failure to have exercised that control was enough to render the Domain Name an Abusive Registration. On the particular facts of that case the Appeal Panel rejected that argument.

6.24     Paragraph 10(a) of the Policy states that Appeal decisions "do not have precedent value, but will be of persuasive value to Experts in future decisions". In my view that persuasive value is a high one. Where it is clear that an Appeal Panel has considered in depth a difficult issue under the Policy, a single expert should be loath to depart from that decision, even if he might have decided the case in a different manner. Due weight needs to be paid to the fact that experts should aim at consistency between expert decisions. It is, therefore, necessary to consider what the MySpace decision actually said in some detail.

6.25     In My Space the Appeal Panel stated that:

"To date experts and Appeal panels have reasonably consistently taken the view that if a registrant acquires a domain name in advance of the coming into existence of the complainant's rights, the registrant is entitled in principle to hold onto the domain name and to use it, notwithstanding that confusion of the 'initial interest' variety may be inevitable. Similarly, experts and Appeal panels have concluded that in such circumstances it is not of itself abusive for the registrant to demand a high price from the complainant for transfer of the domain name in recognition of its enhanced value."

6.26     These statements are relatively uncontroversial. However, the Appeal Panel then goes on to state:

"Problems only arise for the registrant if he actively does something to take unfair advantage of his position. In the case, for example, the registrant sought to rack up the price by threatening to transfer the domain name to a competitor of the complainant."

6.27     It then considered the UDRP decision of Villeroy & Boch v Mario WIPO Case No. D2007-1912 in which the panel had stated that a respondent was broadly responsible for the content of a web page appearing at his domain name even where the content of that web site had been automatically generated by domain name owner's registrar. However, the Appeal Panel went on to distinguish that case as follows:

"However, the registration of domain names is still a first-come-first-served system and the Panel is reluctant to place any duty on a registrant, who has merely had the good fortune (or maybe ill fortune) to register a name in good faith, which subsequently, through no fault of his own, acquires notoriety, provided that he does nothing actively to exploit his position. The Panel observes that the Villeroy & Boch case was a very different case. The Respondent registered the domain name in issue with knowledge of the Complainant's rights and gave a very suspect reason for having registered it."

6.28     The difficulty with this rather short analysis is that it is not entirely clear why it is that the continued use of the domain name parking service did not constitute "active" conduct. It is therefore, worth examining this issue in somewhat greater detail.

6.29     Suppose a registrant immediately after a non-abusive registration enters into an agreement with a third party to the effect that the third party can and should manually set up a pay per click web site but the registrant does not set any restrictions on the links that are chosen. Let us also suppose that initially the links are unobjectionable but then at a later date the third party manually changes those links to pay per click links that play off the similarity between the domain name and a trade mark owners' trade mark. I do not think that in these circumstances a registrant can avoid a finding of abusive use. To claim in such circumstances that this somehow imposes an improper "duty" on the registrant is wholly unconvincing. All registrants have an obligation or "duty", even if they registered a domain name in a non-abusive manner, not to subsequently use a domain name in an abusive manner. It cannot be right that a registrant can enter into a contract in which it cedes control over the way in which the domain name is used to a third party and then claims not to be responsible for the third party's actions because it did not "actively" choose the web site content displayed and that any attempt to impose such responsibility involves placing it under a "duty" to monitor the third party's actions.

6.30     Of course, in the Myspace case the links in question were not chosen manually. The links were instead chosen automatically by the domain name parking service provider's software. However, it is not at all clear as to why this should necessarily make a difference to the analysis. Software is not some abstract thing that has no connection with human beings. Someone has created that software and chosen a series of rules as to how that software will choose particular links. If the effect of those rules is that links are displayed that take advantage of the trade mark meaning of a particular term, then it should be no answer to respond, "I didn't do that, my software did" (or perhaps "my domain name parking service provider's software did it").

6.31     There is perhaps a significant, and potentially distinguishing, complication here in that the term "Myspace" although a trade mark, nevertheless comprises words that are suggestive, albeit not wholly descriptive, of the services provided by the complainant. The complainant offered internet users their own personal "space" on the internet. This, therefore, raises the question, whether the software in that case chose the links about which complaint was made, not because of their trade mark significance but because of the descriptive content of the domain name. Frankly, I am somewhat sceptical that this was actually the case, but if the respondent had positively or credibly shown that this was so, the decision in Myspace makes sense. It becomes a case where even if one imputes the actions of the domain name parking service provider and its software to the respondent, the respondent had still taken no "active" step that was abusive. The links were chosen in the same unobjectionable way now as they had always been. It just so happened that because of the rise of business that used these "descriptive" terms, links associated with that business were now likely to appear. This had provided the domain name owner with a windfall, but it was one that had arisen because someone else had expended effort into building up the reputation of a mark that contained a suggestive or descriptive element. This was not illegitimate.

6.32     I say "if the respondent had positively or credibly shown that this was so" because there is a rather important practical question of proof here. It is, of course, for a complainant to prove that a registration is abusive. However, where a complainant has brought forward prima facie evidence to the effect that a respondent is seeking to take advantage of the trade mark significance of a term, it must be for a respondent to show that this is not so and that there is an innocent explanation for what has happened. I do not think it is sufficient simply to say that the links were automatically generated by a domain name parking service provider and to show that the domain name owner did not (by the means of the choice of keywords and the like) try to directly influence the sort of links produced. It frankly begs too many questions as to how the domain name parking service software works.

6.33     It may be objected that this places an unfair and intolerable burden on the domain name registrant. After all, how exactly a domain name parking service provider's software works and how links are chosen may be something that the provider would consider to be a trade secret. Therefore, the service provider may not be prepared to explain this in any detail to a respondent with a view to that explanation being used in proceedings under the Policy. If the parking service provider takes advantage of software systems owned and run by others, this will further complicate matters.

6.34     Nevertheless, there are degrees of disclosure. It may well be that sufficient explanation can be provided which whilst not disclosing any commercial secret, nevertheless an expert finds persuasive. Even if that is not possible, it must not be forgotten that it was the respondent's own choice to use the service in question. It is, therefore, the respondent who has chosen to cede control over how his domain name is used. I do not think it is unreasonable to expect him to bear the burden of explaining what he has allowed to be done in his name.

6.35     With this in mind I finally turn to the specific facts of the case now before me. The Complainant contends that there is no legitimate purpose for which the Respondent could use the Domain Name. I do not agree. The term "oasis" is an ordinary English word used to describe a source of water surrounded by vegetation in a desert and more generally to describe a quiet and peaceful place surrounded by busy or noises places. There are potential legitimate "generic" uses of this word, including the use of the word to display sponsored links that have some association with that "generic" meaning.

6.36     Further, whilst I accept the Complainant's evidence that "Oasis" is a term that has become associated by certain sections of the British public with the Complainant's activities, the Complainant is not the only entity that has used this term as a trade mark. The term Oasis has, for example, been adopted by a drinks company for a soft drink and will also be known by many as the name of a famous British rock band. There would be nothing abusive in the registration of the domain name by the Respondent for a genuine business that had adopted Oasis as its name without any intention to trade off the reputation that the Complainant had built up in its OASIS mark.

6.37     The Complainant contends that the Domain Name was registered by the Respondent with the Complainant in mind, going so far as to assert that it was registered for the purpose of selling renting or otherwise transferring it to the Complainant or its Competitors.

6.38     I am also unconvinced by this allegation. The WhoIs records for the Domain Name show that is was registered "before August 1996". This would suggest that the Domain Name pre-dated Nominet's creation in 1996. Given that internet service providers did not start to provide domain names to customers on a commercial basis until the early 1990s^[4], I am prepared to accept that the Domain Name was probably registered after the Complainant started business. However, even if this is so, there is simply no evidence before me that would suggest that by the time of registration the fame of the Complainant name and mark were such that I can infer that the Domain Name was registered with the Complainant in mind.

6.39     The Complainant has produced evidence as to how the Domain Name is being used today. In some cases it is possible to infer from the nature of a domain name or the present use of a domain name a registrant's intentions at the time of registration. However, I do not think it is possible to do so in this case given that the registration took place over 12 years ago, there is no evidence before me as to how the Domain Name was used prior to late 2008 and the Domain Name uses a word that is far from exclusively referable to the Complainant.

6.40     Accordingly, I am not prepared to find that there has been abusive registration in this case. Nevertheless, for the reasons I will describe I believe that the Complainant can still succeed in this case on the basis that there has been abusive use of the Domain Name.

6.41     I accept that the Respondent is more likely than not in recent years (if not earlier) to have become directly aware of the Complainant's trade mark use of the Oasis term. By 2003, if not earlier, the business had become a substantial presence on the high street. The question, therefore, becomes how the Domain Name was subsequently used in light of that knowledge.

6.42     I have already mentioned that the web site to which internet users are diverted when the Domain Name is entered into an internet browser has recently displayed sponsored links and has borne all the hallmarks of having been generated by a domain name parking service. Further, the url from which the page operates uses the domain name and at the bottom of the page there is currently copyright notice in favour of iMODO.com. iMODO.com is a "domain name parking" or "domain name monetization" service provider. There is, therefore, little doubt that the Complainant is correct when it says that the Domain Name has been, and is being, used to generate click through revenues for the Respondent. It is possible that the Domain Name has been used in this manner for a significant period of time, but exactly how long is not known.

6.43     However, as has already described, the use of a domain name parking service is not of itself abusive. What the Complainant must also show is that the Respondent has sought to take financial advantage of the reputation that the Complainant has built up in its Oasis mark.

6.44     I am unconvinced by the Complainant's contentions that something can be read into the fact that if one inserts the term "oasis clothing" into the search form appearing on the web page this produces a list of links to clothing related web site. The fact that a search for "clothing" sponsored links produces a list of clothing sponsored links should be of no surprise to any one. It throws no sensible light on the Respondent's motivations in using the Domain Name. No doubt if one searched for the term "Coca Cola" into the search form, it would provide sponsored links to cola flavoured soft drinks. But it would be fanciful to conclude from this that the respondent was seeking to use the Domain Name to take unfair advantage of the Coca Cola trade mark.

6.45     Nevertheless, the Complainant's uncontested evidence would appear to be that, even without undertaking this sort of search, the sponsored links appearing on the "home" tab of the web site operating from the domain name were predominantly clothing related. Indeed, on occasion it would appear that they were almost exclusively clothing related. Further, many of the "tabs" displayed on the home page included references to the Complainant or related companies and a large number of the "Related Searches" similarly appear to have directly related to the Complainant's products.

6.46     The predominance of clothing related links is hard to explain either by chance or as resulting from some automated assessment of the generic meaning of the word or words incorporated in the Domain Name. For reasons that I have already explained, and in the absence of any argument or evidence from the Respondent to the contrary, I am prepared to accept that the Respondent had some influence over at least the type of links displayed. This in turn provides further evidence of the Respondent's knowledge of the Complainant's mark and involves an active step to take advantage of that mark within the meaning of the MySpace decision.

6.47     Further, regardless of the extent to which the Respondent influenced the links that were displayed, there is little doubt that the links that have been displayed attempt to take advantage of the association between the word "oasis" and clothing that has arisen as a consequence of the reputation of the Complainant's mark. For the reasons I have already given, I believe that even if the Respondent did not directly influence the links that were displayed, the actions of the domain name parking service in this respect are actions that can be imputed to the Respondent. That is sufficient for a finding of abusive use. Indeed, I believe that this would also be the case in the highly unlikely event that the Respondent was not personally aware of the exact use that the domain name parking service had made of the Domain Name.

6.48     The question arises as to whether my conclusions in the preceding paragraph can be reconciled with the decision of the Appeal Panel in the MySpace case. As I have already explained the exact rationale of the MySpace case is not easy to discern. However, I believe that the facts of the current case are distinguishable from those in MySpace. The mark OASIS is not in anyway descriptive or suggestive of clothing. It is difficult to understand how the sponsored links as to clothing might appear unless in some manner or other the automated selection process involved taking into account the trade mark, rather than any generic or descriptive, significance of the term. If an "active" step is required in this case, that requirement has been satisfied by the domain name parking services display of the clothing related links.

6.49     There are also a number of other factors that support a finding of bad faith use in this case. Recently the web site operating from the Domain Name appears to have displayed a far larger number of non-clothing related sponsored links. Even though clothing related links still remain, they appear to form a much lesser percentage of the overall links displayed. However, these recent differences if anything raise rather than allay suspicions as to the Respondent's motives. Why is it that such a change has occurred at a time that coincides with these proceedings? It is hard to avoid the conclusion that this is not coincidental and that the Respondent has made changes in response to these proceedings. But if the Respondent considered his previous use of the Domain Name to be legitimate, why did he consider it necessary to make such a change?

6.50     Similar questions arise as to the removal of the link through which it is possible to make an offer to purchase the Domain Name. The fact that the Respondent is willing to sell a domain name that comprises an ordinary English word is perhaps unremarkable. But again if the Respondent thought that he could legitimately sell the Domain Name prior to the commencement of these proceedings, why is it that this link disappeared after these proceedings were commenced?

6.51     Further, there is the Complainant's contentions regarding false contact details. Paragraph 3(a)(iv) of the Policy gives as an example of evidence of abusive registration:

"It is independently verified that the Respondent has given false contact details to [Nominet]".

6.52     In this case there is evidence that a letter sent to the address provided by the Respondent to Nominet, could not be delivered to the Respondent. The letter was returned by the Royal Mail marked "addressee gone away". There is also the fact that initially the PO Box address now given for the registrant of the Domain Name was not publicly available through Nominet's WhoIs database. Although this is not fully explained by the Complainant, it would appear that what happened here is that the Respondent's address was not revealed because he had represented to Nominet that he was a non-trading individual^[5]. Given the way in which the Domain Name has been used, it would also appear that this representation was false.

6.53     In short, whether or not the Respondent has provided "false contact details", it seems reasonable clear that the Respondent has taken steps to make it difficult for any person to get in contact with him and that this has included make false representations in relation to his activities to Nominet. These are not the actions one would expect of someone who believes that his activities in relation to the Domain Name are legitimate. Whether or not these actions fall strictly within the scope of paragraph 3(a)(iv) of the Policy, they are supportive of a finding of abusive registration.

6.54     In the circumstances, the Complainant has made out the requirements of paragraph 2(a)(i) of the Policy.

6.55     In coming to this conclusion I have taken no regard of the Complainant's contentions in relation to the decision in BT et al. v One In A Million. A similar attempt to rely upon the BT decision was made by the appellant in Comité Interprofessionnel du Vin de Champagne v Steven Terence Jackson DRS 4479. Although the Appeal Panel found in favour of the appellant in that case, it did so without reliance on the BT decision. It also commented that submissions by a complainant as to whether or not a respondent's use of a domain name constituted trade mark infringement or passing off, were rarely of assistance in proceedings under the Policy.

7. Decision

7.1     I find that the Complainant has Rights in the OASIS mark, which is identical or similar to the Domain Name, and that the Domain Name, in the hands of the Respondent of the Domain Name, is an Abusive Registration.

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

Signed …………………….. Dated …………………

Note 1   [1998] EWCA Civ 1272, [1999] 1 WLR 903, [1999] FSR 1, [1999] ETMR 61    [Back]

Note 2   See for example the analysis of the three-person panel inBacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc. WIPO Case No. D2008-0321, although the majority of the panel held on the facts of that particular case held that no such presumption arose.     [Back]

Note 3   See, for example, the decision of the three person Appeal Panel in Verbatim Ltd -v- Michael Toth DRS 04331 where the panel accepted that the respondent had no knowledge of the complainant’s mark at the time of registration and for a period of 6 weeks after the trade mark had been brought to his attention the domain name continued to be used to resolve to a domain name parking page that displayed pay per clink links unconnected with the complainant’s business.     [Back]

Note 4   See the brief history of .uk domain name registrations set out at http://www.nominet.org.uk/about/background/history/     [Back]

Note 5   See “WHOIS Frequently Asked Questions” at http://www.nominet.org.uk/other/whois/faq/    [Back]