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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Alliance & Leicester plc v Fuz Pty Ltd [2004] DRS 1918 (03 September 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1918.html Cite as: [2004] DRS 1918 |
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Alliance & Leicester plc v Fuz Pty Ltd [2004] DRS 1918 (03 September 2004)
Decision of Independent Expert
Complainant: Alliance & Leicester plc
Address: Carlton Park
Narborough
Leicester
Postcode: LE19 0AL
Country: GB
Respondent (1): James Strong t/a Fuz Pty Ltd
Country: Australia
Respondent (2): Stinger Web Services t/a Fuz Pty Ltd
Country: New Zealand
a) allianceandleicster.co.uk;
b) allianceanleicester.co.uk;
c) alliance-ieicester.co.uk;
d) alliance-leiceste.co.uk;
e) alliance-leiester.co.uk;
f) alliance-licester.co.uk;
g) allianc-leicester.co.uk;
h) allianceandleciester.co.uk;
i) allainceandleicester.co.uk
j) alliance-liecester.co.uk,
k) allience-leicester.co.uk
l) allaince-leicester.co.uk
The Complaints were lodged with Nominet on 26th July 2004. Nominet validated the Complaints and notified each Respondent of the relevant Complaint on 28th July 2004 and informed each Respondent that it had 15 days within which to lodge a Response.
No response was received from either Respondent.
On 23rd August 2004, the two Complaints were consolidated and this Decision deals with them together.
Accordingly the disputes were referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
David Flint, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed 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.
None
Complainant:
The Domain Names in issue are allianceandleicster.co.uk; allianceanleicester.co.uk; alliance-ieicester.co.uk; alliance-leiceste.co.uk; alliance-leiester.co.uk; alliance-licester.co.uk; allianc-leicester.co.uk; allianceandleciester.co.uk; allainceandleicester.co.uk; alliance-liecester.co.uk, allience-leicester.co.uk and allaince-leicester.co.uk
.
(a) The Complainant is one of the UK's major financial services companies. Its origins trace back to 1852. Following the merger between the Alliance Building Society and Leicester Building Society, the Complainant (together with its associated companies) has been trading under the trade marks ALLIANCE & LEICESTER and ALLIANCE LEICESTER, and other marks containing these marks (together the "A&L Marks") since 1985 in the UK and other countries. The Complainant has been a member of the FTSE 100 since 1997, when it converted from its original mutual building society status. The Complainant supplies a broad range of financial services to personal and commercial customers under the A&L Marks, including through the Internet. Its aggregate operating income for 2001 to 2003 was approximately £3,990 million. The Complainant has around 5.5 million personal customers. ALLIANCE & LEICESTER is a household name in financial services and the Complainant advertises its services widely through the Internet, direct marketing and TV. The Complainant's advertising expenditure for 2003 was approximately £46 million. The ALLIANCE & LEICESTER brand has been awarded "Superbrand Status" by The Brand Council.
(b). The Complainant owns at least 41 UK, four European Community and 11 other national, including two Australian, trade mark registrations for the A&L Marks.
Complainant:
The substance of each Complaint is as follows: -
By registering the nine Domain Names set out in paragraph 2(a) – (i) above, in name of Fuz Pty Ltd and the three Domain Names set out in paragraph 2(j) – (l) above, in name of Stinger Web Services and for the reasons set out in this complaint, each relevant Respondent is engaged in a pattern of making Abusive Registrations, or "typo squatting". In this regard, each Respondent has also registered .com domain name misspells.
The "Fuz Pty" names are connected to the sedo.co.uk parking website. The "Stinger Web Services" domain names are connected to websites that are very similar to the First Respondent's sedo.co.uk websites. Further, the "Stinger Web Services" domain names are connected to the same domain name parking website as one of the .com domain names owned by the First Respondent, alliance-liecester.com. On these facts, it is submitted that "Stinger Web Services" is the Respondent, and this further demonstrates a pattern of typo squatting.
By incorporating common misspellings of the Complainant's household A&L Marks, which denote the Complainant and nobody else, the Domain Names misrepresent inherently that they are registered, operated or authorised by, or otherwise connected with the Complainant, and amount to instruments of fraud. This is unlawful under UK passing off law and takes unfair advantage of and is unfairly detrimental to the Complainant's Rights.
The Domain Names have also been registered and used in a manner which is unfairly detrimental to the Complainant's Rights because: (a) As long as they are in the hands of the Respondents without the Complainant's consent, the Complainant has no control over the ownership or use of the Domain Names. This is inherently detrimental to the Complainant's Rights. (b) The financial services market is very competitive. By providing links to the websites of the Complainant's competitors in the sedo.co.uk websites (only one of whose links relates to the Complainant), the Respondents provide these competitors with business opportunities that they would not otherwise have had, at the expense of, and free-riding on, the Complainant's Rights. (c) The Complainant provides sophisticated financial products. By registering the Domain Names, and connecting them to websites of poor quality not connected to the Complainant, the Respondents tarnish the Complainant's valuable reputation in the A&L Marks. (d) The Respondents' registration and use of the Domain Names will dilute and blur the distinctiveness of the Complainant's marks.
The Complainant confirms that each Domain Name in the hands of the relevant Respondent is an Abusive Registration.
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that 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 this case the first limb of that task is straightforward. The Complainant is the proprietor of rights in the name ALLIANCE & LEICESTER through extensive use and trademark registration and rights. Each Domain name comprises one of the said names combined with a misspelling of the other combined with the suffix <.co.uk>. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic.
Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark, which is identical to each Domain Name.
Abusive Registration
This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? 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."
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations – the Expert does not consider the fact that 12 names (plus others in the .com registry) may have been registered by the Respondents to be evidence of Abusive Registrations as it is only findings by Experts which can form the basis of such a finding. The Expert recommends that Nominet consider whether the Policy could usefully be clarified to facilitate such a finding of engagement in a pattern of Abusive Registrations - and there being no suggestion in the Complaint that the Respondent has given to Nominet false contact details, the only potentially relevant 'factors' in paragraph 3 are to be found in subparagraphs i and ii, which read as follows:
i "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily 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;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;"
ii "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."
The Expert interprets "as" in sub-paragraph i. B as being synonymous with "for the purpose of". Were it to be interpreted otherwise all domain name registrations would inevitably constitute "blocking registrations" for any later arrival wishing to use the name in question.
Each of the domain names resolves to a holding site which contains details of the Complainant's Premier Current Account and to other financial services offered by competitors of the Complainant. An investigation by the Complainant disclosed around 10,500 misspellings of its domains in a seven week period, many ending up at a Respondent's website.
Accordingly, the Expert finds that each Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant's rights. In particular, the Expert considers paragraph 3.a.i.C and 3.a.ii to be satisfied.
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that each Domain Name, in the hands of a Respondent, is an Abusive Registration, the Expert directs that the Domain Names,
a) allianceandleicster.co.uk;
b) allianceanleicester.co.uk;
c) alliance-ieicester.co.uk;
d) alliance-leiceste.co.uk;
e) alliance-leiester.co.uk;
f) alliance-licester.co.uk;
g) allianc-leicester.co.uk;
h) allianceandleciester.co.uk;
i) allainceandleicester.co.uk
j) alliance-liecester.co.uk,
k) allience-leicester.co.uk
l) allaince-leicester.co.uk
each be transferred to the Complainant.
David Flint
Date 03 September 2004
