DISPUTE RESOLUTION SERVICE

DRS 6649

Decision of Independent Expert

Stockland Corporation Limited

and

Thomas Lane (an individual)

1.	The Parties:

Complainant:		Stockland Corporation Limited
Country:	Australia

Respondent:		Thomas Lane
Country:			United Kingdom

2.	The Domain Name(s):

stockland.co.uk

3.	Procedural History:

3.1	The Complaint was received by Nominet, on 12 December 2008.  On 17 December 2008, Nominet validated the Complaint and took appropriate steps to notify the Respondent of the Complaint.

3.2	A response from the Respondent (the ‘Response’) was received on 15 January 2009, and the Complainant’s reply (the ‘Reply’) to the Response was received on 21 January 2009.  A mediator was appointed on 22 January 2009. 

3.3	On 9 February 2009, the status of the dispute changed from Mediation to a request under Nominet’s dispute resolution procedure (‘DRS’) Procedure.

3.4	On 23 February 2009, Dr Russell Richardson was appointed as the expert (the ‘Expert’) who confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. 

4.	Factual Background

4.1	The Complainant was established in Australia in 1956, and has used the name Stockland there since 1984.  It is one of Australia’s largest property companies, with a market capitalisation of (approximately) 8 billion Australian dollars.

4.2	The Complainant has a UK subsidiary - registered at Companies House as Stockland UK Development Limited (since 1 December 2006).  It changed its name to Stockland Halladale (UK) Limited (as from 15 May 2007) and then to Stockland (UK) Limited (as from 28 June 2008).

4.3	The Complainant registered STOCKLAND as a trade mark in the UK on 6 December 2006 (classes 35, 36, 37, 42 and 43).  It has other trade marks registered in the UK, and as Community trade marks, which include the STOCKLAND name (see paragraph 5.2 below for descriptions).

4.4	The Complainant has traded in the UK under the name Stockland Halladale since 30 April 2007, and under the name Stockland since 1 July 2008.  The UK Subsidiary is responsible for a portfolio valued at approximately 1 billion pounds, with a staff role of more than 70, located in 3 UK offices.

4.5	The Respondent registered the Domain Name on 24 March 2004.

4.6	The Complainant and Respondent opened discussions about the Respondent selling the Domain Name in December 2007. The Complainant notified the Respondent on 21 May 2008 that it was no longer interested in purchasing the Domain Name.

5.	Parties’ Contentions

The Complaint: 

5.1	In summary, the Complainant argues that the Domain Name should be transferred to it because:  

-	The Complainant has Rights in the Domain Name based on: its trade marks in the STOCKLAND name (see paragraph 4.3 above); and that it is well-known within the property development industry.  It advertises in the UK via the sponsorship of industry events (typically 6 events per annum).  In addition, the STOCKLAND name and brand are sometimes used on letting and sales advertising. 

-	The Complainant and the Respondent entered into negotiations for the purchase of the Domain Name but these negotiations broke down on 21 May 2008 when the Complainant informed the Respondent that it was no longer interested in purchasing the Domain Name.  During the period of these negotiations, the Domain Name’s website (the ‘Website’) pointed to www.replus.co.uk, the Respondent’s consultancy business. 

-	The Complainant on 2 July 2008 (via its legal representatives) received e-mail correspondence from the Respondent informing it that – e-mails were being sent to the Domain Name which appeared to be intended for the Complainant. 

-	In the same letter, the Respondent also said that the development of a holding page for the Domain Name would be delayed and may not be finalised “for some time”, and that the Domain Name would instead point to a website at www.lonpro.co.uk.  (A copy of the 2 July 2008 letter was included as evidence.)

-	The www.lonpro.co.uk is the domain name for a U.K. property business, London Property Consultants. London Property Consultants is in the same or similar industry to that carried out by the Complainant, but is not linked with the Complainant.  At the date of the submission, the Domain Name pointed to the www.lonpro.co.uk website and had done since early August 2008. 

-	The Domain Name, in the hands of the Respondent, is an abusive registration. The Respondent continues to receive e-mails that are intended for the Complainant.  Web-users looking for the Complainant who search using the Domain Name will be directed to the www.lonpro.co.uk website which will confuse people in to thinking that the Domain Name’s website was controlled by the Complainant. 

-	Further, the Respondent is seeking to take advantage of the Complainant’s reputation in the property industry for its own gain.  The Respondent will attract a greater number of hits for the Website as a result of using the Complainant’s name and this may lead to increased business for the Respondent, at the Complainant’s expense.

-	Despite assertions by the Respondent, in the course of the negotiations to purchase the Domain Name, that efforts had been made by the Respondent to promote the “STOCKLAND” brand for beef cattle from his family farm, the Respondent had not provided any evidence of the promotion of the brand. The Respondent has at no point used the Domain Name in respect of his farming/cattle business, or to point to a website related to such business.

5.2	In support of the Complaint, apart from those exhibits already mentioned, the Complainant submitted exhibits giving evidence of: 

-	ASIC (Australian Securities & Investments Commission) Database printouts of company information; 
-	Complainant’s Shareholder Review 2008 brochure; 
-	certificate of incorporation of a private limited company, Company Number 6016247 Stockland UK Development Limited (1 December 2006), change of name certificates (from Stockland UK Development Limited to Stockland Halladale (UK) Limited, from Stockland Halladale (UK) Limited to Stockland (UK) Limited;
-	various media/information releases regarding its move into the UK and  Board changes; 
-	general information on the properties it has developed; 
-	UK trade marks for STOCKLAND, and STOCKLAND HALLADALE, and two Community Trade Marks for STOCKLAND (different typographical arrangements), and one for STOCKLAND HALLADALE; 
-	correspondence with the Respondent concerning negotiations for purchase of the Domain Name; and, 
-	a print-out from the London Property Consultants (www.lonpro.co.uk) website.

The Response: 

5.3	In summary, the Respondent argues that the Complaint should not succeed because:  

-	The Domain Name was registered on 24 March 2004, together with ‘stacklandhillhides.co.uk’ [sic]. The domain ‘stocklandhill.co.uk’ was not available. The domains were registered to promote the Respondent’s family farm, run by his Father, which is located on Stockland Hill in East Devon, between the villages of Stockland and Cotleigh. 

-	The family farm produces beef which is predominately sold through independent butchers within a 50 mile radius. It has a reputation for high quality meat from its naturally reared grass fed animals. 

-	In 2004, the farm decided to process cow hides to create luxury rugs. Although he initially wanted to use the brand ‘Stockland Hill’, the domain name was not available. The Respondent decided that ‘Stockland’ would be a good umbrella brand to cover all farm produce, and the hides would be traded as Stockland Hill Hides. 

-	Sales of the cow hides were both direct and through the internet (including E-Bay).  (Copies of the website through which sales were made were not attached, though the Respondent said they were.) However, after approximately eighteen months, the active marketing ceased for this good.

-	In early 2007, the family identified that it would be beneficial to develop a brand and build the brand around the name ‘Stockland’ as: it was connected with the locality; the name produces a positive traditional image for the national market; and, the Respondent already owned the Domain Name. Unfortunately, as a small business, the time to implement the brand took longer than expected. 

-	In December 2007, the Respondent started to receive e-mails intended for the Complainant; whom he notified of this, offering to forward them. The Respondent subsequently intimated to the Complainant that he would consider transferring the Domain Name to the Complainant for a sum. He initially received a positive response but negotiations faltered.

-	As the Respondent continues to receive e-mails which appear intended for Stockland Corporation Ltd, including where it appears staff members have registered the wrong e-mail address on websites, it appears that the Stockland Corporation Ltd prematurely announced it had acquired the domain to its staff

-	He considers that a large and powerful overseas business, with good legal support, has acquired a UK company and changed the name, firstly from Halladale to Stockland Halladale, and then in 2008 to Stockland Corporation. 

-	At the time of this name change, the organisation was aware the Domain Name was already registered, and not available. It appears to the Respondent that the Complainant continued to want to acquire the Domain Name but without paying a fair compensation or even covering the costs of change.

The Reply: 

5.4	The Complainant replied as follows, in summary:

-	In relation to the Respondent’s claim that he attached copies of his website in relation to the sales of cowhides using the internet. There were no copies attached and at no time during the negotiations with the Complainant did the Respondent provide any evidence of his activities. 

-	The fact that the Respondent continues to receive e-mails which appear intended for the Complainant suggests that web-users expecting to contact the Complainant assume that the Complainant is contactable at an e-mail address using the Domain Name. 

-	The Complainant confirmed that it at no time announced to its staff that it had acquired the Domain Name

-	The Respondent provided no reason why the Domain Name was pointed to the www.lonpro.co.uk website.  The fact that the Respondent pointed the Domain Name to that website whilst being aware that there was confusion in the marketplace as to the Domain Name further confirms that the Domain Name in the hands of the registrant is abusive. 

-	The Complainant noted that since the Complaint was submitted, the Respondent moved the Domain Name from pointing to www.lonpro.co.uk to www.replus.co.uk.  As at the date of the Reply, the Website did not point to any website. The Complainant assumes that the Respondent pointed the Domain Name at www.lonpro.co.uk to take unfair advantage of the Complainant’s reputation in the property industry, for its gain. 

-	The Respondent has provided no evidence to support his claimed rights in and use of the name “Stockland”. 

Non-standard submission

5.5	In accordance with paragraph 13 of Nominet’s DRS Procedure, the Expert was forwarded a letter Nominet had received from the Respondent, dated 11 March 2009, which asked the Expert to consider a non-standard submission from him. 

5.6	The Complainant was allowed the opportunity to comment as to whether the Expert should consider the non-standard submission by the Respondent, and in response on 13 March 2009 submitted that the Expert should not entertain further submissions in this case.  

5.7	After reading both submissions, the Expert considered it appropriate for him to consider that additional submission, provided the Complainant would be allowed to reply to the Respondent’s additional points. 

5.8	In summary, the Respondent provided copies of website print outs for his cowhide rugs business.  (However, these website print-outs had no web address on them and were un-dated.) 

5.9	In response to the Complainant’s reference to the Respondent pointing the Domain Name to the www.lonpro.co.uk website, the Respondent explained that he communicated to the Complainant that he was temporarily switching the forwarding and that if it was damaging to the Complainant he would have expected a swift request from the Complainant to ask for the Domain Name website to be changed.  He stated that, as soon as he became aware of the objection to the forwarding, he changed it.

5.10	The Respondent also stated that he was not aware of any ‘confusion in the marketplace’.  

5.11	The Complainant was allowed to comment on the Respondent’s submission, and said in reply in a letter dated, 18 March 2009, that the website copies provided did not explain the Respondent’s misuse of the Domain Name.  Further, the confusion in the marketplace is evident by the fact that the Respondent receives e-mails which appear intended for the Complainant. 

5.12	Finally, the Complainant claimed that pointing the Domain Name to www.lonpro.co.uk was a negotiating tactic and if the Domain Name was of such importance to the Respondent’s family farm business, pointing it to a website dealing with property investment and financing was of no benefit to the family farm business.  A simple holding page could have been maintained.

6.	Discussions and Findings

General 

6.1	To succeed in its application, the Complainant has to prove pursuant to paragraph 2 of Nominet’s DRS Policy (the ‘Policy’), on the balance of probabilities (that the Complainant’s case is more likely than not to be the true version), that: 

	 (i) it has Rights in respect of a name or mark identical or similar to the Domain Name (paragraph 1 of the Policy)  ; and, 

	 (ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration (paragraph 1 of the Policy). 

6.2	Taking each of these limbs in turn:

i) Complainant’s Rights 

6.3	Paragraph 1 of the Policy defines “Rights” as including, but not being limited to: “rights enforceable under English law.” Also, the Complainant must have the rights at the time of the complaint. 

6.4	As set out at paragraph 4.3 above, the Complainant has trademarked STOCKLAND in the UK for Classes 35, 36, 37, 42 and 43; these classes relate to among other things - advertising, commercial and business management, and property development. 

6.5	It has also registered STOCKLAND as a Community trade mark.  A Community trade mark gives its proprietor a uniform trade mark right applicable in all Member States of the European Union, including in this case, the U.K.  

6.6	Additionally, the Expert has been provided with evidence by the Complainant that it: traded in the U.K. under the STOCKLAND name; advertised its goods and services using the STOCKLAND mark/name at trade sponsorship events, and on letting and sales advertising. 

6.7	Therefore, as well as the trade marks mentioned, the Expert considers that the Complainant had, and has, substantial goodwill and reputation more generally in the name STOCKLAND relating to property development and management. 

6.8	On this basis, the Expert considers that it is likely that at the time of the Complaint, the STOCKLAND name would have been recognised by those within the property development Industry as indicating the goods and services of the Complainant.

6.9	As such, the Expert considers that the Complainant has Rights in respect of the mark/name STOCKLAND. 

6.10	The next question is whether the Domain Name is identical or similar to the Complainant’s Rights i.e. the mark/name STOCKLAND.  Disregarding the generic .co.uk suffix, the Expert considers that the Domain Names is identical to the Domain Name.  

6.11	Therefore, given these factors, as well as the fact that the requirement to demonstrate "Rights" is not a particularly high threshold, the Expert considers that the Complainant has Rights in the mark/name STOCKLAND, which is identical to the Domain Name.

ii) Abusive Registration 

6.12	Paragraph 1 of the Policy defines “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 took unfair advantage of or was unfairly detrimental to the Complainant’s Rights;” 

6.13	In relation to (i) above – while the Complainant has not raised this as a specific consideration, given the Domain Name was registered by the Respondent on 24 March 2004, and the Respondent established itself in the UK in 1 December 2006 (albeit trading in Australia prior to this date), the Expert considers it unlikely that the Respondent would have known of the Complainant at the time of registration.  As such, the Expert considers that the registration of the Domain Name did not take unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

6.14	In relation to (ii) above – this said, the Expert considers that the Domain Name has subsequently been used in a manner which has been at least  unfairly detrimental to the Complainant’s Rights. 

6.15	Paragraph 3 of the Policy sets out a non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration. In this case, the Complainant refers in substance to the factor set out at paragraph 3 (a) (ii) of the Policy, which states that:

 	“[there may be evidence of an Abusive Registration if there are] 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.”

6.16	The Complainant makes two points in this respect.  First, that web-users are confused into thinking that the Domain Name belongs to the Complainant and secondly, the Respondent has caused detriment to its business by pointing the Website to the website of a competitor.

6.17	In relation to the first point, the Complainant relies on the following to support this submission:

o	an e-mail sent by a friend of one of the Complainant’s employees to the friend’s name tagged on to the Domain Name, dated 14 January 2008; 

o	an e-mail from the Respondent to the Complainant, dated 15 January 2008, offering to forward wrongly addressed e-mails; and,

o	an e-mail from the Respondent to the Complainant’s solicitors (previously mentioned above), dated 2 July 2008, which states that: 

“e-mails are being sent to the domain ‘stockland.co.uk’ which appear to be intended for [the Complainant] rather than our business.  It is possible that some of these e-mails include sensitive information, so your client may want to check that both staff and stakeholders are aware that ‘stockland.co.uk’ is not connected with them. I have offered in the past to [the Complainant] to forward any e-mails that appear to be mis-directed, but this was declined.” 

6.18	The confusion referred to is as to the identity of the person behind the Domain Name; hence why e-mails have been sent to the name of the intended recipient using the Domain Name as the web address. 

6.19	The Expert considers that such evidence is sufficient to show that there has been confusion in the use of the Domain Name; in that people or businesses have been confused into believeing that the Domain Name was registered to, operated or authorised by, or otherwise connected with the Complainant.

6.20	Given the Complainant’s Rights in the STOCKLAND mark/name and associated business goodwill and reputation, web-users sending the e-mails would have done so on the basis that they were sending their e-mails to those working for the Complainant or a company associated in some way with the Complainant.   

6.21	The Expert considers that it is likely that the substantial goodwill and reputation in the mark/name STOCKLAND relating to property development (see for example paragraphs 6.4 to 6.6 above) makes the likelihood of such confusion material. 

6.22	The Expert also considers that, given the above, those web-users attempting to locate the Complainant’s website via the Website, would have been initially confused into thinking that the Website was either that of the Complainant or somehow linked to the Complainant. Visitors to the Website would not have arrived there if it had not been for the similarity between the Domain Name and the Complainant’s Rights.  

6.23	In relation to the second point, just because registrants of domain names receive e-mail traffic intended for the complainant does not automatically mean that there has been an Abusive Registration because of such confusion.  Whether it is an Abusive Registration because of the confusion depends on the nature of the domain name and the circumstances of its use.  

6.24	For example, there are circumstances where even a confusing use of such a domain name will not be regarded as unfair because the respondent’s registration and use of the domain name predates the complainant’s rights and where the respondent has not changed his use of the domain name to take advantage of the complainant’s rights. 

6.25	The Expert notes in this regard the Nominet Appeal decision in myspace DRS No. 04962, where at page 15, the Appeal Panel said: 

“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.”

6.26	However, this is not the case here. While there is no evidence before the Expert that the Respondent has sought to benefit financially from the Domain Name through such confusion: there is evidence before the Expert that the Respondent pointed the Domain Name website to that of a competitor of the Complainant; namely, London Property Consultants (www.lonpro.co.uk).

6.27	The Expert considers that, on the balance of probabilities, such an action would have been at least unfairly detrimental to the Complainant.  A web-user sending e-mails to or accessing the Website would have been confused into thinking that London Property Consultants were somehow connected with the Complainant; thus potentially taking business away from the Complainant.

6.28	It does not assist the Respondent’s case that someone using the Domain Name as an e-mail address or accessing the Website might soon realise his or her mistake and look for the Complainant’s e-mail address/website. The detriment to the Complainant would have already occurred by the initial confusion.

6.29	While there is nothing in the Respondent’s submission to explain why he pointed the Website to a competitor of the Complainant, the Expert notes that this happened after the breakdown in the negotiations to sell the Domain Name to the Complainant.  While the Respondent says in his non-standard submission that he changed the website once he was aware of the Complainant’s objection, the Domain Name pointed to the www.lonpro.co.uk website for at least four months.  This is a material amount of time for the detriment to occur.

6.30	Therefore, by reference to paragraph 3 (a) (ii) of the Policy, the Expert considers that the Respondent has been using the Domain Name in a way which has, or is likely to have, confused people or businesses into believing that the Domain Name is registered to the Complainant. Such confusion was unfairly detrimental to the Complainant because of the Respondent pointing the Domain Name to a competitor of the Complainant.

6.31	As to any other factors which may be evidence of an Abusive Registration, the Expert does not consider the fact that there were negotiations for the purchase of the Domain Name as being relevant in this case. The Expert notes in this regard that, as set out at paragraph 4 d. of the Policy, trading in domain names for profit is of itself a lawful activity.  

6.32	The Expert has considered whether there is any evidence/arguments before him which may be relevant to his consideration whether the Domain Name is not an Abusive Registration. In relation to this, the Expert notes the non-exhaustive list of factors set out at paragraph 4 of the Policy which may provide such evidence.

6.33	The Respondent in effect argues that, in reference to:

“[Paragraph 4 a. i.] Before being aware of the Complainant’s cause for complaint (not necessarily the ‘complaint’ under the DRS), the Respondent has: 

A. used or made demonstrable preparations to use the Domain Name or a domain name which is similar to the Domain Name in connection with a genuine offering of goods or services; 

B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name; 

C. made legitimate non-commercial or fair use of the Domain Name;”

6.34	The Expert notes that the Respondent has said that his family business is situated at Stockland Farm, North Devon and that the Domain Name was registered to promote the Respondent’s family farm.  He also said that he has used or made demonstrable preparations to use a domain name which is similar to the Domain Name (stacklandhillhides.co.uk [sic]) in connection with an offering of goods (namely processed cow hides to create luxury rugs).

6.35	However, while the Respondent provided two website print-outs that he said were from the www.stocklandhillhides.co.uk website in his non-standard submission, these print-outs were not supported with accompanying domain name addresses/dates of their siting as part of the print-out.  In these circumstances, the Expert has placed little evidential weight on them. Also, the Expert considers that the Respondent cannot claim that his use of the Domain Name, by pointing the Website to that of a competitor, can be considered ‘legitimate or fair’.

6.36	In any event, even if the Complainant were able to bring further evidence to show that these website print-outs were sited at the www.stocklandhillhides.co.uk domain name, and the date when these print-outs would have been sited there, this in itself does not mean that the Complainant’s complaint cannot succeed.  As mentioned above, such considerations will depend on the nature of the domain name and the circumstances of its use.  

6.37	As such, the Expert considers that notwithstanding the arguments put forward by the Respondent as summarised in paragraph 6.33 to 6.35 above, the Domain Name has been used in a manner which was unfairly detrimental to the Complainant through pointing the Domain Name to the website of a competitor.

7.	Decision

7.1 	The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  Therefore, the Expert directs that the Domain Name be transferred to the Complainant.

Signed:  Dr Russell Richardson			Dated: 25 March  2009