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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Alliance & Leicester PLC v Brawn [2006] DRS 4135 (18 December 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4135.html Cite as: [2006] DRS 4135

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Nominet UK Dispute Resolution Service

DRS 04135

Alliance & Leicester PLC v Yorgi Brawn

Decision of Independent Expert

1. Parties

Complainant: Alliance & Leicester PLC

Country: United Kingdom

Respondent: Yorgi Brawn

Country: France

2. Domain Names

There are 67 domain names at issue ("the domain names"):

1	aliance-leicestercommercialbank.co.uk
2	allance-leicestercommercialbank.co.uk
3	alliace-leicestercommercialbank.co.uk
4	allianc-leicestercommercialbank.co.uk
5	alliance-eicestercommercialbank.co.uk
6	alliance-keicestercommercialbank.co.uk
7	alliance-leecestercommercialbank.co.uk
8	alliance-leicastercommercialbank.co.uk
9	alliance-leiceatercommercialbank.co.uk
10	alliance-leicedtercommercialbank.co.uk
11	alliance-leicesrercommercialbank.co.uk
12	alliance-leicestarcommercialbank.co.uk
13	alliance-leicesteecommercialbank.co.uk
14	alliance-leicesterc0mmercialbank.co.uk
15	alliance-leicestercimmercialbank.co.uk
16	alliance-leicestercommecialbank.co.uk
17	alliance-leicestercommeecialbank.co.uk
18	alliance-leicestercommercalbank.co.uk
19	alliance-leicestercommercealbank.co.uk
20	alliance-leicestercommerciabank.co.uk
21	alliance-leicestercommerciakbank.co.uk
22	alliance-leicestercommercialank.co.uk
23	alliance-leicestercommercialbabk.co.uk
24	alliance-leicestercommercialbak.co.uk
25	alliance-leicestercommercialbamk.co.uk
26	alliance-leicestercommercialban.co.uk
27	alliance-leicestercommercialbanj.co.uk
28	alliance-leicestercommercialbanl.co.uk
29	alliance-leicestercommercialbnk.co.uk
30	alliance-leicestercommercialbsnk.co.uk
31	alliance-leicestercommercialnank.co.uk
32	alliance-leicestercommercialvank.co.uk
33	alliance-leicestercommercilbank.co.uk
34	alliance-leicestercommercislbank.co.uk
35	alliance-leicestercommercoalbank.co.uk
36	alliance-leicestercommercualbank.co.uk
37	alliance-leicestercommerialbank.co.uk
38	alliance-leicestercommersialbank.co.uk
39	alliance-leicestercommervialbank.co.uk
40	alliance-leicestercommerxialbank.co.uk
41	alliance-leicestercommetcialbank.co.uk
42	alliance-leicestercommrcialbank.co.uk
43	alliance-leicestercommrrcialbank.co.uk
44	alliance-leicestercommwrcialbank.co.uk
45	alliance-leicestercomnercialbank.co.uk
46	alliance-leicesterconmercialbank.co.uk
47	alliance-leicesterconnercialbank.co.uk
48	alliance-leicestercpmmercialbank.co.uk
49	alliance-leicestervommercialbank.co.uk
50	alliance-leicesterxommercialbank.co.uk
51	alliance-leicestetcommercialbank.co.uk
52	alliance-leicestrrcommercialbank.co.uk
53	alliance-leicestwrcommercialbank.co.uk
54	alliance-leicesyercommercialbank.co.uk
55	alliance-leicrstercommercialbank.co.uk
56	alliance-leicwstercommercialbank.co.uk
57	alliance-leisestercommercialbank.co.uk
58	alliance-leivestercommercialbank.co.uk
59	alliance-leixestercommercialbank.co.uk
60	alliance-leocestercommercialbank.co.uk
61	alliance-leucestercommercialbank.co.uk
62	alliance-liicestercommercialbank.co.uk
63	alliance-lricestercommercialbank.co.uk
64	alliance-lwicestercommercialbank.co.uk
65	alliane-leicestercommercialbank.co.uk
66	allianse-leicestercommercialbank.co.uk
67	allince-leicestercommercialbank.co.uk

3. Procedural Background

On 19 October 2006 Nominet received signed hard copy of the complaint dated 17 October and checked that it complied with the Nominet Dispute Resolution Service Policy ("the Policy") and Procedure ("the Procedure"). The complaint was supported by material in a series of annexes:

Annex 1 the Complainant's annual report and accounts for 2005

Annex 2 information about the Complainant from its own website at alliance-leicester-group.co.uk

Annex 3 printouts from the Superbrands organisation website, listing Alliance & Leicester as a 'superbrand'

Annex 4 printouts showing the Complainant's registrations for its 'Alliance & Leicester', 'Alliance + Leicester' and 'Alliance & Leicester Commercial Bank' marks with the UK Patent Office and the EU Office for Harmonization in the Internal Market – together with other details of the Complainant's marks registered in Europe, Canada and Australia

Annex 5 printouts from the Complainant's websites at alliance-leicester.co.uk and alliance-leicestercommercialbank.co.uk at 17 October 2006

Annex 6 a list of the Complainant's domain name registrations containing the words 'Alliance' and 'Leicester' plus variations and misspellings of these words

Annex 7 a list of common misspellings used by customers when searching for the Complainant online

Annex 8 copies of Nominet Dispute Resolution Service expert decisions 1918/9, 02532 and 3280 and of World Intellectual Property Organisation Administrative Panel decision D2005-0736 - all of which involved the Complainant

Annex 9 details of the domain names taken from Nominet's register

Annex 10 a copy of the website at alliance-licestercommercialbank.co.uk to which, the Complainant asserts, the domain names linked at 17 October 2006

Annex 11 material on 'phishing' from the Financial Times, the BBC News internet site and a briefing note from the Complainant

Nominet notified the Respondent of the complaint on 23 October pointing out the time limit of 15 working days for lodging a response. No response was received. Informal mediation not being possible, on 16 November Nominet wrote to the parties to say that its file would be closed unless it received the applicable fees from the Complainant, on or before 30 November, for the matter to be referred for an expert decision. Nominet subsequently granted an extension to that deadline while the level of the fees was set. The fees were received on 1 December.

On 8 December I, Mark de Brunner, agreed to serve as an expert under Nominet's Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties and that there are no facts or circumstances that might call into question my independence.

4. Outstanding Formal/Procedural Issues

Email delivery failures

There are email delivery failure reports on file, generated in connection with Nominet's attempts to notify the Respondent of the complaint and, subsequently, of the fact that the case would be referred to an expert if the applicable fees were paid. I need to decide what to make of those reports.

My starting point is that those registering domain names with Nominet agree to keep Nominet up to date with their contact details. The Procedure says that Nominet will send a complaint to the Respondent by, at its discretion, any one of a range of means – including

- email using the contact details shown as the registrant or other contacts in the domain name register database entry for the domain name in dispute

- email to postmaster@

In the event, Nominet sent the complaint and subsequent correspondence to both [email protected] (the contact address in the register entry for the domain names) and to postmaster@. The delivery failure reports relate to three of the postmaster addresses for the original complaint notification and to one of those addresses for notice of the fees deadline. Nominet also sent the material to the Respondent by fax.

Given that it is the Respondent's obligation to keep his contact details with Nominet up to date, that most of the emails did not result in delivery failure reports and that Nominet attempted to send the correspondence by fax, I am satisfied that Nominet did what it could to notify the Respondent of the complaint and of how that complaint was being handled. I therefore propose to proceed on the basis that the Respondent has been properly notified of proceedings under the Dispute Resolution Service.

5. The Facts

I have visited the Complainant's websites at alliance-leicester.co.uk and alliance-leicestercommercialbank.co.uk. In use, most of the 67 domain names at issue resolved to a parking page of assorted links, though in some cases I did receive a 'page cannot be displayed' message. From those successful and attempted visits, from the complaint and from the administrative detail supplied routinely by Nominet, I accept the following as facts.

The Complainant is a provider of financial services. Tracing its history back to 1852, it has been trading as 'Alliance & Leicester' since 1985, following a merger between the Alliance Building Society and the Leicester Building Society. Since its demutualisation in 1997, the Complainant has been a member of the FTSE100 group of companies. Operating income in the years 2001 – 2005 totalled around £6,750 million. It has around 5.5 million personal customers. In 2004 it spent around £45 million on advertising, including around £10 million online. (Annexes 1 and 2)

'Alliance & Leicester' is listed as a 'superbrand' by The Brand Council (annex 3). The Complainant owns at least 41 UK, 4 European Union and 11 other national registrations for marks containing the words 'Alliance' and 'Leicester' (annex 4). These include a UK registration for 'Alliance & Leicester Commercial Bank'. The Complainant has registered the domain names alliance-leicester.co.uk and alliance-leicestercommercialbank.co.uk as well as at least 131 domain names containing the words 'Alliance', 'Leicester' and variations and misspellings of these words (annex 6). The Complainant has a policy of registering such variations and misspellings because it is aware that its customers often use them when searching for it on the internet (annex 7).

The Respondent registered the domain names on 20, 25 and 26 September 2006. The registration details held by Nominet show the same address for the Respondent for each of the domain names, except that the country is shown at some times as France and at others as Afghanistan. The table below shows the dates of registration for each of the domain names, whether the details held by Nominet list the address as being in France or in Afghanistan and whether – at the time of writing – the domain name resolved to a parking page or whether using it simply returned a 'page not found' message.

	Domain name	Date registered	Address registered: Afghanistan (A) or France (F)	X = page not found
1	aliance-leicestercommercialbank.co.uk	25.9.06	A
2	allance-leicestercommercialbank.co.uk	25.9.06	A
3	alliace-leicestercommercialbank.co.uk	25.9.06	A
4	allianc-leicestercommercialbank.co.uk	25.9.06	A
5	alliance-eicestercommercialbank.co.uk	25.9.06	A
6	alliance-keicestercommercialbank.co.uk	25.9.06	A
7	alliance-leecestercommercialbank.co.uk	20.9.06	F
8	alliance-leicastercommercialbank.co.uk	20.9.06	F	X
9	alliance-leiceatercommercialbank.co.uk	25.9.06	A
10	alliance-leicedtercommercialbank.co.uk	25.9.06	A
11	alliance-leicesrercommercialbank.co.uk	25.9.06	A
12	alliance-leicestarcommercialbank.co.uk	20.9.06	F
13	alliance-leicesteecommercialbank.co.uk	26.9.06	A
14	alliance-leicesterc0mmercialbank.co.uk	20.9.06	F
15	alliance-leicestercimmercialbank.co.uk	26.9.06	A
16	alliance-leicestercommecialbank.co.uk	20.9.06	F
17	alliance-leicestercommeecialbank.co.uk	26.9.06	A	X
18	alliance-leicestercommercalbank.co.uk	20.9.06	F
19	alliance-leicestercommercealbank.co.uk	26.9.06	A
20	alliance-leicestercommerciabank.co.uk	20.9.06	F
21	alliance-leicestercommerciakbank.co.uk	26.9.06	A
22	alliance-leicestercommercialank.co.uk	20.9.06	F
23	alliance-leicestercommercialbabk.co.uk	26.9.06	A
24	alliance-leicestercommercialbak.co.uk	20.9.06	F
25	alliance-leicestercommercialbamk.co.uk	26.9.06	A
26	alliance-leicestercommercialban.co.uk	20.9.06	F
27	alliance-leicestercommercialbanj.co.uk	26.9.06	A
28	alliance-leicestercommercialbanl.co.uk	26.9.06	A
29	alliance-leicestercommercialbnk.co.uk	20.9.06	F
30	alliance-leicestercommercialbsnk.co.uk	26.9.06	A
31	alliance-leicestercommercialnank.co.uk	26.9.06	A
32	alliance-leicestercommercialvank.co.uk	26.9.06	A
33	alliance-leicestercommercilbank.co.uk	20.9.06	F
34	alliance-leicestercommercislbank.co.uk	26.9.06	A
35	alliance-leicestercommercoalbank.co.uk	26.9.06	A
36	alliance-leicestercommercualbank.co.uk	26.9.06	A
37	alliance-leicestercommerialbank.co.uk	20.9.06	F
38	alliance-leicestercommersialbank.co.uk	20.9.06	F
39	alliance-leicestercommervialbank.co.uk	26.9.06	A
40	alliance-leicestercommerxialbank.co.uk	26.9.06	A
41	alliance-leicestercommetcialbank.co.uk	26.9.06	A
42	alliance-leicestercommrcialbank.co.uk	20.9.06	A
43	alliance-leicestercommrrcialbank.co.uk	26.9.06	A
44	alliance-leicestercommwrcialbank.co.uk	26.9.06	A
45	alliance-leicestercomnercialbank.co.uk	26.9.06	A	X
46	alliance-leicesterconmercialbank.co.uk	26.9.06	A
47	alliance-leicesterconnercialbank.co.uk	26.9.06	A	X
48	alliance-leicestercpmmercialbank.co.uk	26.9.06	A
49	alliance-leicestervommercialbank.co.uk	26.9.06	A
50	alliance-leicesterxommercialbank.co.uk	26.9.06	A
51	alliance-leicestetcommercialbank.co.uk	26.9.06	A
52	alliance-leicestrrcommercialbank.co.uk	26.9.06	A	X
53	alliance-leicestwrcommercialbank.co.uk	26.9.06	A
54	alliance-leicesyercommercialbank.co.uk	25.9.06	A
55	alliance-leicrstercommercialbank.co.uk	25.9.06	A
56	alliance-leicwstercommercialbank.co.uk	25.9.06	A
57	alliance-leisestercommercialbank.co.uk	20.9.06	F
58	alliance-leivestercommercialbank.co.uk	25.9.06	A
59	alliance-leixestercommercialbank.co.uk	25.9.06	A
60	alliance-leocestercommercialbank.co.uk	25.9.06	A
61	alliance-leucestercommercialbank.co.uk	25.9.06	A
62	alliance-liicestercommercialbank.co.uk	20.9.06	F	X
63	alliance-lricestercommercialbank.co.uk	25.9.06	A
64	alliance-lwicestercommercialbank.co.uk	25.9.06	A
65	alliane-leicestercommercialbank.co.uk	25.9.06	A
66	allianse-leicestercommercialbank.co.uk	20.9.06	F
67	allince-leicestercommercialbank.co.uk	25.9.06	A

In total, then, 18 of the domain names were registered on 20 September 2006, 20 were registered on 25 September and 29 were registered on 26 September. All the domain names registered on 25 and 26 September have Afghanistan as part of the registrant's contact details held by Nominet. All bar one of the domain names registered on 20 September have France as part of the registrant's contact details held by Nominet. The exception is alliance-leicestercommrcialbank.co.uk (number 42), where – though it was registered on 20 September - Nominet's records show the registrant's contact address as being in Afghanistan.

The Complainant says that the 67 domain names all resolved to a website at alliance-licestercommercialbank.co.uk (annex 10). That domain name is not itself on the list of domain names in dispute and those names did not resolve there at the time of writing. But the evidence put forward by the Complainant – which the Respondent has chosen not to challenge – is that the domain names resolved to a set of webpages made to look like the Complainant's own website at alliance-leicestercommercialbank.co.uk (annex 5). I accept that evidence.

6. The Parties' Contentions

Complainant

The Complainant says that the facts confirm its well-established rights in names that are similar to the domain names.

It says that these are abusive registrations because:

(i) the Respondent acquired the domain names for the purpose of 'phishing' – that is, fraudulently obtaining key personal details from users of the webpages to which those domain names resolved (annex 11)

(ii) the Respondent intended to cause unfair disruption to the Complainant's business

(iii) internet users must have been confused into thinking that the domain names were connected with the Complainant

The Complainant also argues that the Respondent cannot demonstrate that the domain names are not abusive registrations because

(iv) there has been no use of the domain names in connection with a genuine offering of goods or services

(v) the Respondent is not commonly known by names that are identical or similar to the domain names

(vi) the Respondent has not made legitimate non-commercial or fair use of the domain names

(vii) the domain names are not generic or descriptive and the Respondent is not making fair use of them

Respondent

There has been no reply.

7. Discussion and Findings:

General

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that

- it 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.

No reply

The Procedure says (paragraph 15) that, in the absence of exceptional circumstances, if a party does not comply with any provision (including any time limits) laid down in the Policy or Procedure, the expert will proceed to a decision on the complaint, drawing such inferences from the non-compliance as he considers appropriate. I am not aware of any exceptional circumstances here.

There is a long-established approach to be taken by experts in cases where there is no reply to a complaint. The Complainant must make out at least a prima facie case that the domain name is an abusive registration. Such a case demands a reply. If there is no reply, the complaint will ordinarily succeed. The question therefore becomes whether the Complainant has established a prima facie case.

Complainant's Rights

I have reviewed the three Dispute Resolution Service and one Uniform Domain Name Dispute Resolution Policy decisions to which the complaint refers (annex 8). While they may underline the Complainant's claim about the nature of its rights, those decisions turn on their own facts and I have not drawn any conclusions from them about the relationship between the names in which the Complainant asserts rights and the domain names at issue here.

Any such conclusions would be superfluous even if they were appropriate. The Complainant offers ample evidence of its substantial investment in the names 'Alliance & Leicester' and 'Alliance & Leicester Commercial Bank'. It has clearly built up goodwill in those names and established both registered and unregistered rights in them. Each of the domain names at issue is similar to a name in which the Complainant has rights.

For each of these registrations, therefore, I accept that the Complainant has rights in respect of a name which is similar to the domain name.

Abusive Registration

The Dispute Resolution Service rules define an abusive registration as a domain name which either

- 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

- has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.

The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. These factors include circumstances indicating that the Respondent

- registered the domain name primarily for the purpose of unfairly disrupting the business of the Complainant

- 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

These are two of the main claims of the Complainant here and I can start by taking each in turn.

There is no direct evidence of the Respondent's motives in registering the domain names. Looked at narrowly, those motives may not have included the disruption of the Complainant's business. It is, though, indisputable that disruption was an inevitable consequence of the Respondent's actions.

Again, reading the list of factors in the Policy narrowly, there is no evidence that the Respondent's use of the domain names has confused anyone. As the Complainant points out, however, the list is not exhaustive. I regard the likelihood of confusion as a material factor in deciding on the character of the registration. Here, the Respondent set up a website clearly intended to look just like the Complainant's own web pages and registered domain names evidently designed to hook internet users who are looking for the Complainant but who make a small mistake in typing in the search term. It seems plain from this that the Respondent set out to confuse people into believing that the domain names were connected with the Complainant and I accept that confusion is bound to have occurred.

The list in the Policy of factors that may be evidence of an abusive registration also refers to situations in which

the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of the domain names…which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the domain name is part of that pattern

There is little evidence before me about the Respondent. But, from the details I have, it seems to me at least arguable that the systematic registration of domain names here amounts to such a pattern.

The Policy refers, as well, to circumstances where 'it is independently verified that the Respondent has given false contact details'. No claims are made about the accuracy of the contact details given by the Respondent but, once again, the list of factors is non-exhaustive and I find it significant that a set of otherwise-identical addresses on Nominet's register vary between showing the country as France and recording it as Afghanistan.

The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. I agree with the Complainant that none of these applies. The Respondent has not used the domain names in connection with a 'genuine' offering of any kind and is not commonly known by a name identical or similar to them. The use of the domain names is not 'legitimate' or 'non-commercial' and the names themselves are not generic or descriptive. Whether their use is 'fair' is for me to decide in the present dispute.

On the evidence I have seen, the only reasonable conclusion is that the Respondent set up a 'phishing' operation. That operation relied on the Complainant's rights and can only have taken unfair advantage of them. The Complainant had simply to establish a prima facie case that the domain names are abusive registrations. It has done so. I conclude that, both in acquiring and in using the domain names, the Respondent took unfair advantage of the Complainant's rights.

8. Decision

In relation to each of the 67 registrations, I find that the Complainant has rights in respect of a name which is similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.

In the light of that, I direct that the domain names be transferred to the Complainant.

Mark de Brunner

18 December 2006