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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Cancerbacup v Jin [2005] DRS 2850 (25 October 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2850.html Cite as: [2005] DRS 2850

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NOMINET UK DISPUTE RESOLUTION SERVICE

DRS Number 02850

Decision of Independent Expert

1. Parties

Complainant: Cancerbacup

Country: United Kingdom

Respondent: Kwan Jin

Country: Korea

2. Domain Name

cancerbackup.org.uk (the "Domain Name")

3. Procedural Background

The complaint of the Complainant was lodged electronically with Nominet on 3 August 2005. Nominet wrote to both parties informing the Respondent of the complaint on 4 August 2005.

A response was received from Respondent on 25 August 2005, and was forwarded that same day to the Complainant. On 7 September 2005 Complainant submitted a Reply, which was immediately forwarded to the Respondent.

On 27 September 2005 Nominet wrote to both parties indicating that it was not possible to achieve a resolution of the dispute through informal mediation, and inviting the Complainant to refer the matter for an expert decision by 11 October 2005. Nominet received the fee for an expert decision and on 7 October 2005 invited Christopher Gibson to act in the case. Christopher Gibson, 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. His appointment as Expert in the case was dated 11 October 2005.

4. Outstanding Formal/Procedural Issues (if any)

No formal or procedural issues are outstanding.

5. The Facts

Complainant has established through documentary submissions that it is a registered charity whose working name is CancerBACUP. "BACUP" stands for British Association of Cancer United Patients. The Complainant's logo comprises the word "cancer" in dark blue and "BACUP" in turquoise capital letters. It appears on Complainant's website at and on all of its printed material. Complainant provides a leading cancer information service in Europe. Its website provides thousands of pages of information and advice for people affected by cancer and has an average of 1.8 million page-views per month. Complainant has operated this website since 1998, while also operating a telephone information service, which was launched in May 1989 under the name BACUP and re-branded as CancerBACUP in 1998. This service received 50,000 calls and nearly 3,000 written enquiries in 2004.

Complainant produces dozens of booklets and fact sheets on cancers, treatments and related issues. These are free for people affected by cancer and also sold to health professionals for distribution to patients. All the Complainant's booklets are branded with the CancerBACUP name and logo. Last year, the Complainant sold over 168,000 booklets, and gave away approximately 60,000. The Complainant employs approximately 80 people and 12 volunteers, with a main office in London and a second office in Glasgow (CancerBACUP Scotland) employing 9 nurses and support staff. Complainant operates 9 CancerBACUP centres in UK hospitals, which were used by over 15,000 people last year. In the financial year to 2004, Complainant raised over £4.5 million of funding.

Complainant has registered and , as well as , and . All of these domain names forward to the Complainant's website. The Complainant owns a UK trade mark for C CANCERBACUP HELPING PEOPLE LIVE WITH CANCER, registered on 22 January 1999. Complainant regularly campaigns on numerous cancer-related issues, to promote its services and to share expertise.

The Respondent is a non-United Kingdom resident, residing in Korea. He registered the Domain Name on 5 March 2004. Respondent actively registers numerous domain names.

6. The Parties' Contentions

Complainant

The Complainant contends it has Rights in the name CancerBACUP and that the Domain Name is confusingly similar to this name. In particular, the Complainant submits that it has acquired significant goodwill and an on-line reputation in the name, CancerBACUP, while also owning a UK trade mark for CANCERBACUP HELPING PEOPLE LIVE WITH CANCER. The Domain Name is almost identical to the Complainant's name and they are phonetically identical. Complainant alleges that the Respondent registered the Domain Name as a misspelling of the well-known CANCERBACUP name and has no legitimate interest in the Domain Name.

Complainant submits that following registration of the Domain Name, Respondent directed the Domain Name to link to a site using similar colours to those used by Complainant's site and providing sponsored links to purported cancer cures. Complainant further states that Respondent receives a payment each time a user accesses such a link. These links related to third party websites which provide information and support to cancer patients. As evidence, Complainant provided a June 2004 archived extract of the website linked to the Domain Name, while indicating that the web site continues to contain sponsored links, including to the Complainant's competitors.

Complainant alleges that use of "cancerbackup" rather than its current working name (cancerbacup) is unlikely to have been observed by those browsing the Domain Name and that, in any event, most users would assume the site was connected to the Complainant, that it had registered the Domain Name as a misspelling of its name. Many people expect Complainant's name to be spelt "cancerbackup" as this word is phonetically identical to its name. Indeed, Complainant has indicated it might re-brand as CancerBACKUP.

Complainant submits that it was contacted by several third-parties regarding confusion caused by the Domain Name. A caller from City University informed Complainant that the website used similar colours to those used by Complainant's site and appeared to be trading on Complainant's reputation to sell cancer "cures." In September 2004, Complainant received a call from Professor Hall, the former director of the Northern Cancer Network, whereby he complained that when he entered what he thought was the Complainant's website address, he was taken to a recommended links page, and that similar issues arose when he entered Complainant's name into the Google search engine. Complainant then realised that Professor Hall was typing in the Domain Name instead of Complainant's address (cancerbacup.org.uk), and that he was also searching for "cancerbackup" on Google and receiving results with links to the Respondent's website. In November 2004, Complainant was also informed that certain ethnic minority organisations had mistakenly linked to the web site associated with the Domain Name instead of to Complainant's website.

Complainant submits that in November 2004, it wrote to the Respondent and to "Sedo", the host of . The letter explained that Complainant had been contacted by confused members of the public regarding the Domain Name and that it was likely to suffer damage as a result. No response to either letter was received. Later, in May and June 2005, Sedo offered to negotiate a transfer of the Domain Name to Complainant. Sedo wrote to the Respondent, but no response was received and Sedo suggested the Respondent's contact details were false or outdated.

Complainant submits that Respondent has been the subject of an earlier Nominet decision, Associated Newspapers Limited v Kwan Jin, in which Respondent had used to provide links to holiday companies. The complainant in that case had Rights in "THIS IS TRAVEL". The Panel noted that the Respondent had registered over 500 domain names and determined that "the Respondent had engaged in a pattern of registrations . . . that are effectively close misspellings of well known trademarks." Complainant (in its Reply) has provided evidence of other domain names registered by the Respondent, including , , , and .

Complainant argues that given its reputation for providing cancer information, and the fact that Respondent's website contains links to other sites containing cancer-related information or products, it is likely Respondent knew of the Complainant and its online services when he registered the Domain Name. Complainant alleges that Respondent does not trade as CANCERBACKUP.

In its Reply, Complainant responds to the Respondent's contention (see below) that it had merely selected a "generic dictionary word domain, which is composed of the word 'cancer'…" Complainant indicates that Respondent has provided no evidence in support of its position that "cancerbackup" is generic; that the word 'BACKUP' has no generic or descriptive meaning in the context of cancer-related information and products; and that an Internet user would not intuitively juxtapose the words CANCER and BACKUP in a non-generic combination, unless they were thinking of the Complainant. Complainant assets that there are numerous other combinations of cancer-related words that could have been selected, but Respondent instead selected a domain name that is closely similar in spelling and phonetically identical to Complainant's trading name.

Complainant contends the Domain Name is confusingly similar to CancerBACUP and is being used in a manner which takes unfair advantage of, and is detrimental to, the Complainant's Rights. According to Complainant, Respondent's registration and use of the Domain Name thus constitutes an Abusive Registration under the DRS Policy. In particular, Complainant urges that under Part 3 of the Policy (non-exhaustive list of factors which constitute evidence of Abusive Registration), the Domain Name has been used:

(i) for the purposes of unfairly disrupting the business of the Complainant (para. 3(a)(i)C). The Domain Name resolves to a page containing links to the Complainant's competitors, whose websites also purportedly provide cancer information and support. By registering a misspelling of CancerBACUP, the Respondent has diverted traffic from Complainant's site and disrupted Complainant's business. There is also a substantial risk that visitors to Respondent's website will assume a connection between the links available through that site and information provided by Complainant.

(ii) as a blocking registration against a name in which Complainant has Rights (para. 3(a)(i) B). Respondent has not suggested that it has any Rights to CancerBACKUP. Due to Respondent's registration of the Domain Name, Complainant has been denied the opportunity to make legitimate use of a name which is substantially similar (and phonetically identical) to its own name.

(iii) in a way which has confused people or businesses into believing that the Domain Name is registered to, authorised by, or otherwise connected with the Complainant (para. 3(a)(ii)). CANCERBACKUP is a misspelling of Complainant's name, and many users trying to access Complainant's site have been directed to the Respondent's site due to typographical error. Due to the similarities between Complainant's services and those available through the Respondent's website, many people accessing the Domain Name were probably trying to locate the Complainant's website. Having been directed to a site offering information and products which, at first sight, may appear to come from Complainant, many users may have purchased products or obtained information. Such users would not benefit from the Complainant's information and support, and they may also buy products believing that they are endorsed by the Complainant as a leading cancer charity.

Respondent

Respondent contends that the Domain Name corresponds to a generic dictionary word or 'keyword', and that since it is composed of the word 'CANCER', it is reasonable and justified to assume that the related content and advertisements would be cancer-related. Respondent confirms that English is not his main language and that to the best of his knowledge, all of his domain names relate to generic words. Respondent states that he owns thousands of domain names, examples being , , .

The Respondent repeatedly argues that Complainant does not understand the commercial workings of the Internet, and that through this ignorance, Complainant is attempting to paint a negative picture of a bona fide method of advertising. Respondent states that its site is part of a network in which third parties have themselves chosen and paid to advertise indirectly on Respondent's site, due to the keyword 'cancer', and that Respondent has no control over which advertisers choose to do so. Respondent submits that if Complainant is concerned, it should consider advertising itself on generic cancer-related keywords. Respondent also argues that it has no bearing on this case whether independent advertisers' information or claims concerning cancer are legitimate. If Complainant is concerned that such companies are advertising on the Internet, it should direct its complaints to the relevant trading authorities.

Respondent contends that Complainant is egotistical in assuming Internet users searching a generic dictionary word have any connection to Complainant's web site. Respondent suggests that the main motivation behind this case is Complainant's admitted desire to re-brand, and that the Complainant is thus for commercial re-branding reasons attempting a reverse domain name hijacking for a name which corresponds to generic dictionary keyword. Respondent asserts that on two occasions, in discussions with Complainant, Complainant informed the Respondent of their wish to obtain the 'generic' domain name . The Complainant allegedly had offered a non-disclosed sum but Respondent refused.

Respondent further submits that its selection of a blue theme for his website is unrelated to the fact that Complainant's website is also blue, and that blue is the most common theme for websites on the Internet, as also used by an asserted competitor, Cancer Research UK. Respondent also disputes that the searches in Google were done the way Complainant has described, that the complaint has given false or inaccurate information that is not representative of the way in which an average Internet user conducts searches.

Respondent submits that it has undertaken active promotion of his generic dictionary domain name, contacting relevant cancer organisations and other websites to obtain links towards his site. He explains that link building is one of the most difficult stages in the development of a website, that he has secured 117 incoming links on his website, and the industry rate for outsourcing of nonreciprocal links is between £7- £15 per link. Respondent claims that this demonstrates active and fair use of the domain name, as well as considerable time and value invested.

Respondent also emphasizes that the '.org' extension (and likewise .org.uk) were originally intended for sites of a specific nature, namely, relating to welfare, health, advice and information (as opposed to commercial sites at .com or .co.uk). Cancer and related terms are thus a perfect example of what the <.org.uk> sub-domains should be used for, and this is offered as a legitimate reason for Respondent's selection the Domain Name in the <.org.uk>.

Being a non-UK resident and without English as a first language, Respondent submits that he was not aware of Complainant and its trading name, CancerBacup, when he registered the domain name. Respondent refers to the precedent, Case DRS 02362, in which the Respondent was found not to have registered the domain name in bad faith based on the fact that being a non-UK resident without English as a first language, it could reasonably be assumed that he was not aware of the brand or trademark on the term 'Autotrader.' Germany in Europe is also much closer to the UK than Korea, and the majority of Europeans would have a much better idea of all things concerning the UK than those in Asia.

In sum, Respondent states that he actively registers generic dictionary and keyword domain names; that he makes use of a variety of widely available keyword and domain assistance tools to generate lists of such generic keywords; that he then purchases such keywords and creates mini-web sites targeted to the specific keywords of the domain name; and that he also actively promotes each site through time and monetary investment. Respondent argues there are numerous precedents in which this form of coffering has been found to be a bona fide business offering.

7. Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present:

i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

Complainant's has established that it has extensive reputation and goodwill in its trading name, CancerBACUP. The substantive part of the Domain Name contains identical letters to the Complainant's name, except that Respondent has added a "k". The names are phonetically identical. It is thus obvious that the Domain Name is similar to the Complainant's name in which Complainant has Rights, and the Complainant has therefore established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration

As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS 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."

The record above, including the documentary submissions of the Complainant, establishes on the balance of probabilities that the Domain Name is an Abusive Registration. It is sufficient for the Expert to address three points in this regard.

First, the word CANCERBACKUP is not a generic or descriptive term, and this is so even in the context of its usage for cancer related information and services. Instead, the juxtaposition of the words CANCER and BACKUP create a unique and syntactically unusual combination that does not readily come to mind, unless a person is familiar with the Complainant and its services. It is no excuse that the Respondent claims English is not his first language and therefore he might not have been aware of whether certain terms in English should be considered generic (descriptive) or distinctive.

Second, and related to the first point, Respondent has emphasized that Complainant does not understand the way the commercial Internet works in relation to choosing generic keywords that will, in turn, support sponsored links and advertising. However, whether or not Respondent has any control over which advertisers choose to advertise through his web site, Respondent did and does have control over his choice of and subsequent use of the Domain Name. In this regard, it is important to highlight the contractual commitment that every domain name registrant undertakes when registering a domain name in the '.uk' top-level country domain. Not only is the DRS Policy itself incorporated into each domain name registration agreement, but Nominet UK also provides Terms and Conditions for registration. These Terms and Conditions specify in relevant part that "[b]y entering into this contract you [the registrant] promise that . . . by registering or using the domain name in any way, you will not infringe the intellectual property rights (for example, trademarks) of anyone else" and that "you are entitled to register the domain name." These are contractual obligations that each domain name registrant, including the Respondent, should understand and must heed.

Third, there is ample evidence that the Respondent has used the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, authorised by, or otherwise connected with the Complainant (DRS Policy, para. 3(a)(ii)). CANCERBACKUP with the addition of the "k" is a close misspelling of Complainant's name, and the evidence indicates that users trying to find access to Complainant's web site have been instead directed to or confused by Respondent's site due to typographical error or other confusion. This is exacerbated due to the similarities between, on the one hand, the information and services offered by Complainant through its web site and, on the other hand, those available through the Respondent's website and its many links to cancer-related information or services.

Although the Expert observes that the Respondent has registered other domain names which are closely similar to other distinctive brands and/or trade marks, it is not necessary to determine whether the Respondent was actually aware of the Complainant and its name when Respondent registered the Domain Name. The Expert finds that, with reference to the DRS Policy including paragraph 3(a)(ii), the Domain Name in the hands of the Respondent is an Abusive Registration.

8. Decision

The Expert finds that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the disputed Domain Name, cancerbackup.org.uk, be transferred to the Complainant.

Christopher Gibson

25 October 2005