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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Financial Times Ltd v Reed [2007] DRS 4214 (1 February 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4214.html Cite as: [2007] DRS 4214 |
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The Financial Times Limited -v- Mr Kevin Reed
Nominet UK Dispute Resolution Service
DRS 04214
Decision of Independent Expert
1. PARTIES:
Complainant: The Financial Times Limited
Country: GB
Respondent: Mr Kevin Reed
Country: GB
2. DISPUTED DOMAIN NAME:
ftalphaville.co.uk (the "Domain Name")
3. PROCEDURAL BACKGROUND:3.1 On 14 November 2006 the dispute was entered into the Nominet Dispute Resolution Service (DRS). Hard copies of the Complaint were received in full by Nominet on 15 November 2006. The Complaint was validated by Nominet on 17 November 2006. A hardcopy Response with annexes was received on 22 November 2006 and was forwarded to the Complainant on the same day. A Reply was received on 24 November 2006 and a copy was sent to the Respondent on 27 November 2006. At the request of the Complainant, informal mediation was delayed. The mediation documents were generated on 3 January 2007 but mediation failed to resolve the dispute and the Complainant paid the fee for an expert decision in this case.
3.2 On the 17 January 2007, Veronica Bailey, having confirmed to Nominet that she was independent of each of the parties and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call in to question her independence and/or impartiality, was appointed expert.
4. OUTSTANDING FORMAL/PROCEDURAL ISSUES:4.1 There are no outstanding formal or procedural issues.
5. THE FACTS:5.1 The Domain Name 'ftalphaville.co.uk' was registered to the Respondent on 2 November 2006.
5.2 The Complainant, The Financial Times Limited (company number 00227590) was incorporated on 26 January 1928.
5.3 The Complainant owns the UK trade mark registrations for 'FT' in classes 9, 16, 18, 36, 38 and 41.
5.4 The domain name 'ftalphaville.com' was registered to the Complainant on 7 September 2006 and is used in connection service FT Alphaville which was launched by the Complainant in October 2006.
6. THE PARTIES' CONTENTIONS:
Complainant
6.1 It owns the trade mark 'FT' in classes 9, 16, 18, 35, 36, 38 and 41 in the UK and in many other countries throughout the world.The Complainant makes the usual submissions that the Domain Name in dispute is identical or similar to a name or mark in which it has Rights; and the Domain Name in the hands of the Respondent is an Abusive Registration and further contends that:
6.2 The Complainant has owned the domain name ft.com since 1994 and has built up substantial goodwill in the name and the FT.com website is recognised as one of the world's leading business news websites.
6.3 The Complainant registered the domain name ftalphaville.com on 7 September 2006 and launched the service FT Alphaville on 23 October 2006 through the websites at www.ft.com/alphaville and at www.ftalphaville.com.
6.4 The Respondent registered the Domain Name on 2 November 2006 following significant press coverage of the launch of the Complainant's service FT Alphaville and the Complainant asserts that the Respondent registered the Domain Name in response to this publicity.
6.5 The Respondent was pointing the Domain Name to a "For Sale" page on Friday 10 November 2006. The Complainant wrote a letter to the Respondent on Friday 10 November 2006 which was received by him on Saturday 11 November 2006. On Monday 13 November 2006 the "For Sale" element of the holding page had been removed.
6.6 The use of the Domain Name is likely to cause confusion, if only momentarily, to the Complainant's customers and the Respondent is appropriating the Complainant's goodwill.
6.7 The Complainant further contends that the Respondent has a history of registering domain names in bad faith that incorporate well known brand names and refers to two previous cases where although the Respondent's details differ slightly the addresses are identical.
6.8 In its Reply to the Response, the Complainant further asserts that:
6.8 .1 According to the FAQ section of the website of NameDrive.co.uk, to offer a domain name "For Sale" it is necessary to activate the "Enquire about this domain name" option. This may be activated by email request which implies that that the "Enquire about this domain name" link is an offer to sell.
6.8 .2 The Complainant holds numerous trade marks for FT in the UK, EU and around the world but does not own a trade mark for ALPHAVILLE. Although the FT mark is held by others this relates to classes not used by the Complainant or for completely different products and services from those of the Complainant. The Respondent does not hold a trade mark for either FT or ALPHAVILLE.
6.8 .3 The Complainant launched its website using the domain name ftalphaville.com just prior to the Respondent registering the Domain Name ftalphaville.co.uk.
6.8 .4 The Complainant received an email in early November 2006 from a person having the same address as the Respondent offering to sell the domain name 'alphaville.co.uk' (i.e. without the FT element) to the Complainant for the sum of £600. The Complainant asserts that receipt of such an email and the registration of the Domain Name 'ftalphaville.co.uk' by two separate parties with the same address is very peculiar.
6.8 .5 Whilst the Complainant does not own a trade mark for ALPHAVILLE it has built up substantial goodwill and market share using the trade mark FT which it uses in connection with its service FT Alphaville.
Respondent
6.9 The Domain Name was not offered for sale. The Domain Name was and always has been parked on the name servers of NameDrive. The "Enquire about this domain" seems standard for NameDrive.In summary the Respondent contends that:
6.10 The Complainant owns the UK trade marks for FT. However, others also own UK trade marks for FT and the Complainant does not have a monopoly right over the FT mark. Other parties own trade marks for FT and ALPHAVILLE, therefore the Complainant whilst complaining about the Domain Name is walking over some else's trade mark in making this Complaint. The Complainant does not own any rights stronger than the Respondent's for the word ALPHAVILLE. The Complainant does not have rights in FTALPHAVILLE that are any stronger than the rights enjoyed by the Respondent.
6.11 The word "ftalphaville" cannot in anyway confuse someone into believing it is the Complainant.
6.12 That the registration of the Domain Name is not an abusive registration as it has been purchased for the Respondent's use and does not to take advantage of any Rights that the Complainant may have.
6.13 The Domain Name was not offered for sale as alleged by the Complainant. The words 'enquire about this domain' may have appeared on the Domain Name page, but this was through no positive act by the Respondent. Any such offer was put in place by the host and is a standard feature.
6.14 The Respondent denies that he is the same respondent in the DRS caesars-wembley.co.uk and caesarswembley.co.uk domain name dispute. The Respondent asserts having the same address as the respondent in that case may be explained because he uses 'pay as you go' computer and fax facilities for shared facilities based at Unit 6 Kingsgate, 21-23 Kingsway, Woking, Surrey, GU21 6JE.
6.15 The Respondent asserts that he lost the tamiflu-vaccine domain name case because he did not respond to the Complainant.
6.16 The Domain Name was acquired for a legitimate purpose and was not offered for sale and it does not cause confusion with any trade mark for FT.
7.1 Paragraph 2 of the Policy requires that the Complainant prove on the balance of probabilities that:Burden of Proof
(i) it has Rights in a name or mark that is identical or similar to the Domain Name; and
(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration (as those capitalised terms are defined in paragraph 1 of the Policy)
7.2 Paragraph 1 of the Dispute Resolution Procedure defines Rights as those which include but are "not limited to, rights enforceable under English law".Rights
7.3 The Complainant is the owner of several United Kingdom trade mark registrations for the mark FT, the earliest of which was registered on 7 February 1984. This mark is used in connection with its service FT Alphaville which it launched in October 2006.
7.4 The Complainant uses the domain name ftalphaville.com in connection with its FT Alphaville service. The Complainant also owns the domain name ft.com and the website to which that domain resolves also refers to FT Alphaville.
7.5 FT is a both a trade mark, which the Complainant owns in several classes, and a well known abbreviation used to refer to the Complainant's name. The Domain Name combines the Complainant's mark FT with the word "Alphaville". The Domain Name (excluding the co.uk suffix) is the same as the Complainants domain name ftalphaville.com (excluding the com suffix) which the Complainant uses in connection with its FT Alphaville service.
7.6 The requirement to demonstrate rights in a name or mark which is similar to the Domain Name is not a particularly high threshold test. The Complainant has rights in the mark FT which forms part of the Domain name; uses the name FT Alphaville in connection with its FT Alphaville service and owns the domain name ftalphaville.com which, ignoring suffixes, is the same as the Domain Name. Accordingly, I find that the Complainant has rights in a name or mark which is similar to the Domain Name and that the requirements of paragraph 2(a)(i) of the Policy are satisfied.
Abusive Registration
7.7 Paragraph 1 of the Policy defines an Abusive Registration as a domain name which:
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.
7.8 Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence of an Abusive Registration.
7.9 The Complainant has unquestionably built up substantial goodwill and reputation in the mark FT due to the use of its trade marks over a period of over 20 years.
7.10 The Complainant has recently launched a website at www.ftalphaville.com, amid much publicity, to comment and analyse the latest developments in the financial markets. Accordingly the Complainant has begun to build up goodwill and reputation in the name 'FT Alphaville'. It was only after the launching of the FT Alphaville service with its attendant publicity that the Respondent registered the Domain Name.
7.11 The Domain Name contains the Complainant's distinctive and well known registered trade mark together with the term "alphaville". Use of the suffix "alphaville" does not alter the fact that that the Domain Name is similar to the Complainant's trade mark. The Respondent has no licence to use the Complainant's trade mark or to incorporate it in a domain name using that mark.
7.12 The Respondent, admits that he lost the domain name 'tamiflu-vaccine'. The case the Respondent appears to be referring to is WIPO Case Number D2005-1255 F. Hoffmann-La Roche v. Kevin Reed (tamiflu-vaccine.com), a copy of which is included as part of the evidence submitted by the Complainant. The Respondent in that decision was Kevin Reed, c/o SN Pepin, Woking, Surrey. Also enclosed with the Complaint was DRS decision 02582 Caesars Entertainment Inc v S N Pepin. S N Pepin, the respondent in that case shares a common address with the Respondent. The Complainant has provided evidence that a John Pepin approached it in early November offering to sell the domain name 'alphaville.co.uk'. John Pepin's contact details are also at the same address as the Respondent. The Respondent denies that he is the same person as Pepin but offers no explanation of the common address other than he uses pay by use fax and computer facilities and implies that the shared facilities are shared office accommodation. This appears unlikely as the registry address for the Registrant of the Domain Name is stated as Flat 6 Kingsway which suggests a residential rather than a business address. Further, the Respondent has given his address in the tamiflu-vaccine.com case as C/O SN Pepin. It is clear that the Respondent is in some way connected to SN Pepin and John Pepin who share the same address as the Respondent.
7.13 The Respondent claims that that the Domain Name, which "was and always has been parked on the name servers of Name Drive", was not offered for sale but has not explained why the Domain Name which incorporated the Complainant's well known trade mark was chosen. The Respondent acknowledges that the web page where the Domain Name is parked may have stated "enquire about this domain". Evidence submitted by the Complainant clearly shows that the Name Drive "For Sale" option may be activate by emailing [email protected] and states that: "This will place a link on your domains saying "Enquire about this site" ". Accordingly, it is clear that the Respondent (or someone acting on his behalf) activated the "For Sale" option and in so doing is seeking to make commercial gain by selling the Domain Name.
7.14 The Respondent gives no explanation for choosing a Domain Name which includes the Complainant's trade mark, is the same as the Complainant's FT Alphaville service, and (excluding suffixes) is the same as the Complainant's ftaphaville.com domain name, other than a bare assertion that the Domain Name has been acquired for a legitimate purpose.
7.15 There appears to be no reason why the Respondent should be using the Complainant's mark FT in connection with the Domain Name or why the Respondent choose as its Domain Name a name which was used by the Complainant in connection with its FT Alphaville and its ftalphaville domain name. On the balance of probabilities, it would seem that the Respondent has intended to benefit from attracting additional traffic to its website to which the Domain Name resolves by those seeking the Complainant's services and the Complainant's website.
7.16 The website to which the Domain Name resolves is currently advertising holiday accommodation and insurance products. Whilst the Complainant has not provided any evidence that people have been confused into believing that the Domain Name is registered to, or operated or authorised by, or otherwise connected with the Complainant, there is clear potential for such confusion, given that the Complainant is the owner of websites at www.ft.com and www.ftaphaville.com. The likelihood is that the people and businesses have been confused into believing that the Domain Name is registered to, or operated or authorised or otherwise connected with the Complainant, even if such confusion is only momentary.
7.17 The Respondent has offered no explanation to rebut the assertion of an abusive registration and I can find no plausible explanation for registering the Domain Name other than for abusive purposes.
7.18 Accordingly I find, on the balance of probabilities, that the Domain Name in the hands of the Respondent is an abusive registration and that the requirements of paragraph 2 (ii) of the Policy have been met.
For the reasons set out above, the Expert finds that the Complainant has rights in the name or mark which are 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 be transferred to the Complainant.
Veronica M Bailey
Date: 1 February 2007
