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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Cheltenham & Gloucester -v- Ryder [2002] DRS 203 (1 March 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/203.html Cite as: [2002] DRS 203 |
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Nominet UK Dispute Resolution Service
DRS 00203
Cheltenham & Gloucester plc -v- James Ryder
Decision of Independent Expert
| Complainant: | Cheltenham & Gloucester plc |
| Country: | GB |
| Respondent: | Mr James Edward Ryder |
| Country: | GB |
cheltenhamgloucester.co.uk ("the Domain Name")
The complaint was received by Nominet on 18 January 2002. Nominet validated the complaint and sent a copy to the Respondent on 21 January 2002, informing the Respondent that he had 15 working days to lodge a Response. A Response was lodged on 22 January 2002 and forwarded to the Complainant on 24 January 2002 with an invitation to the Complainant to lodge any Reply by 31 January 2002. The Complainant lodged a Reply on 29 January 2002 stating that it had nothing further to add. A copy of the Reply was sent to the Respondent on 31 January 2002.
The Informal Mediation failed to produce an agreed resolution. On 19 February 2002 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy ("the Policy").
On 19 February 2002 Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as the Expert with effect from 26 February 2002.
The Complainant is a well-known financial institution. It also has a UK trade mark registration for the mark CHELTENHAM & GLOUCESTER with an effective registration date of 1 October 1986.
On 7 July 2000 the Respondent registered the Domain Name.
The Domain Name currently links to the site of moneyextra.com which belongs to an unconnected third party.
Complainant:
The Complainant's submissions are as follows:
In Response, the Respondent's submissions are as follows:
The Respondent refers to the previous complaint made by Cheltenham & Gloucester with reference to the domain cheltenhamgloucester.co.uk. (and states that he will not be resubmitting copies of correspondence from that dispute).
The Respondent is making no profit or gain from the domain. The page is divided into two frames, the top frame allowing the user to jump to the domain cheltglos.co.uk (in a new window) and the second frame to an unrelated site (moneyextra.com).
Any pop ups relating to UK2.net (who host the domain) are completely beyond his control.
The top frame clearly allows the user to go to the Complainant's site if they wish. The Respondent is making no claims that moneyextra.com is connected with the Complainant.
Moneyextra.com is in no way connected with the Respondent.
In addition the Respondent refutes claims that users will be confused by the web page - as most people read from top to bottom they will see the link clearly indicating that they can go to the Complainant's site if they choose.
The Complainant makes the point that the domain was available for sale for £1000, then £750 and later £500. This offer is still open, which the Respondent hopes demonstrates his willingness to reach a negotiated settlement.
In the Complaint the issue regarding redirection of the site to leedsholbeck.co.uk some time ago is raised again. Again, the Respondent gives his assurance that this was done by mistake, and was rectified as soon as he was made aware. This point is therefore irrelevant to the current dispute (having been dismissed in the previous dispute.)
The domain cheltenhamgloucester.co.uk was registered by the Respondent on 7th July 2000. Cheltglos.co.uk (the Complainant's main domain) was registered as far back as 20th October 1998 (if not before). Therefore one can only assume that the Complainant did not wish to register cheltenhamgloucester.co.uk as they clearly had time to do so.
The Respondent has at no time attempted to hold Cheltenham & Gloucester to 'ransom' and has been entirely honourable in his dealing with them.
To summarise, the Respondent freely admits that the domain was registered with a view to coming to an agreement with Cheltenham & Gloucester; he had never deliberately misled anybody visiting the domain in question; he is asking for reasonable reimbursement of costs (£500 is not excessive and represents all costs involved, including his commercial enterprise in securing the domain sometime after Cheltenham & Gloucester had the opportunity to do so - this is clearly not excessive.)
It is disappointing that Cheltenham & Gloucester are not prepared to follow a more reasonable approach to this whole matter.
General
Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:
The Complainant has registered trade mark rights in the name or mark CHELTENHAM & GLOUCESTER. There is also no doubting that the Complainant is a well-known financial institution and therefore also has common law rights in the name CHELTENHAM & GLOUCESTER.
In comparing the name or mark of the Complainant with the Domain Name, one has to disregard the generic domain suffix. Having done so, it is clear that the Domain Name is in all material respects identical with the Claimant's name or mark CHELTENHAM & GLOUCESTER. The only immaterial difference is that the Domain Name does not have an ampersand in the middle of it, an element which in any case it is impossible to include in a .uk domain name.
The Expert therefore finds that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name. (Even if the ampersand element were to be considered sufficient to render the Domain Name non-identical, the Expert finds that it is similar.)
Abusive Registration
Paragraph 1 of the Policy defines an "Abusive Registration" as:
"A Domain Name which either:
Paragraph 3a of the Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The factors of greatest potential relevance (and those on which the Complainant relies) are the following:
The Respondent admits in his submissions that the Domain Name was registered with a view to coming to an agreement with the Complainant. The Respondent's letter to Nominet of 20 March 2001 admits to having offered the Domain Name to the Complainant for £1,000, a figure which was subsequently reduced to £750 and then £500. These facts are essentially confirmed in the Response.
A figure of £1,000 is considerably in excess of the out-of-pocket costs which one would expect to be directly associated with acquiring a domain name. The Respondent has not submitted any evidence to suggest otherwise with regard to his acquisition of the Domain Name. The use which the Respondent has made of the Domain Name is also very unlikely to have caused him to incur any significant, directly associated out-of-pocket costs. Again, the Respondent has not put in any evidence which contradicts such a conclusion. Moreover, he asserts that the amount he has sought includes compensation for "commercial enterprise in securing the domain", something which clearly falls outside out-of-pocket costs directly associated with acquiring or using the Domain Name.
It is also pertinent to consider the use which the Respondent is making, and has made, of the Domain Name. It is clear from the parties' submissions (including those filed in the complaint proceedings brought under Nominet's old Dispute Resolution Service, copies of which are annexed to the Complaint in this case) that the Respondent has not made any use of the Domain Name in connection with any business of his own. Originally the Domain Name appears to have linked to the Complainant's website. At a later point in time, the Domain Name took one to the website of Leeds & Holbeck building society. Subsequent to that, it led to the moneyextra.com website. In his letter of 20 March 2001 the Respondent claimed that the second two re-directions were accidental and in the Response he reiterates this with regard to the Leeds & Holbeck website. The Expert is not convinced by these claims.
The Expert's scepticism is reinforced by the fact that, having re-directed the Domain Name to the Claimant's cheltglos.co.uk website at the time when Nominet made a decision in the earlier proceedings under its old Dispute Resolution Service, by the time when the Complaint was lodged in this case the Domain Name again took one to the moneyextra.com website.
In any case, the Domain Name currently takes one to the moneyextra.com website, which the Respondent states is in no way connected with him. moneyextra.com is a financial advice website offering a variety of financial advice services including services relating to house-buying and mortgages and savings and investing. There is a narrow band at the top of each page of the website which provides a link to the Complainant's website with the wording "Click here to go to the Cheltenham & Gloucester site". There is nothing which makes it clear that the moneyextra.com website has no connection with the Complainant and, given the nature of the website, the Expert finds that the website is likely to confuse people accessing it into believing that it is in some way authorised by or connected with the Complainant.
No evidence has been submitted of people having actually been confused by the use of the Domain Name into believing that it is authorised by or otherwise connected with the Complainant. That being the case, the factor set out in paragraph 3 a ii of the Policy does not apply as such. However, the factors listed in paragraph 3 are expressly non-exhaustive and, for the purposes of this case, the Expert considers the likelihood of confusion to be relevant.
It is clear to the Expert that the Respondent is not using the Domain Name in a bona fide manner. The fact that the Domain Name currently leads one to the moneyextra.com website, and for a period of time previously led one to the leedsholbeck.co.uk site, neither of which has any connection with the Respondent, demonstrates this. Rather, the use which the Respondent has made of the Domain Name is consistent with his admitted intention of persuading the Complainant to purchase the Domain Name from him.
Paragraph 4 of the Policy sets out a non-exclusive list of factors which may be evidence that a Domain Name is not an Abusive Registration. The only factors which might potentially apply to this case are as follows:
It is the Expert's finding that none of the above factors apply to this case. Apart from a period when the Respondent directed the Domain Name to the Complainant's website, the only use which he has made of the Domain Name has been to direct it to the website of the Leeds & Holbeck building society and to the moneyextra.com site, neither of which are in any way connected with the Respondent. The Respondent has therefore not used the Domain Name in connection with goods or services offered by him or any business connected with him, which must be an implicit requirement for the factor set out in paragraph 4aiA of the Policy to apply. Similarly the use which the Respondent has made of the Domain Name cannot be characterised as legitimate non-commercial or fair use. Finally, it is obvious that the factor set out under paragraph 4aiB does not apply.
Taking all of the above into account, including those of the non-exhaustive factors listed in the Policy which have been found to apply or not apply, the Expert finds that the manner in which the Domain Name was registered took unfair advantage of the Complainant's Rights; and that the manner in which it has subsequently been used by the Respondent has been unfairly detrimental to the Complainant's Rights.
The Expert accordingly finds that the Domain Name is an Abusive Registration under the definition of that term set out in paragraph 1 of the Policy.
Having found that the Complainant has Rights in respect of 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, cheltenhamgloucester.co.uk, be transferred to the Complainant.
Jason Rawkins
Date: 1 March 2002
