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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Pensions Advisory Service Ltd v Hall [2007] DRS 4950 (24 September 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4950.html Cite as: [2007] DRS 4950 |
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Nominet UK Dispute Resolution Service
DRS Number 4950
The Pensions Advisory Service Limited v Mark Hall
Decision of Independent Expert
Complainant: The Pensions Advisory Service Limited
Country: GB
Respondent: Mark Hall
Country: GB
pensionadvisoryservice.org.uk; pensionsadvisoryservice.co.uk;
thepensionsadvisoryservice.org.uk ("the Domain Names")
| 8 August 2007: | Complaint lodged with Nominet electronically |
| 9 August 2007: | Hardcopy complaint received by Nominet |
| 9 August 2007: | Nominet forwarded complaint to Respondent |
| 4 September 2007: | No response received by Nominet |
On 24 September 2007 I, Adam Taylor, the undersigned, confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.
None
The Complainant is an independent voluntary organisation that is grant aided by the Department of Work and Pensions. It offers members of the public with information and guidance in relation to State, company, personal and stakeholder pension schemes and helps resolve pension-related disputes. The Complainant's service is free and is provided by a nationwide network of volunteer advisers who are supported and augmented by technical and administrative staff based in London.
The Complainant was formed in 1990 and originally operated under the name "Occupational Pensions Advisory Service". It subsumed the work previously conducted by the Occupational Pensions Advisory Service, a charity which had been in existence since 1983.
The Complainant has been operating under its present name "The Pensions Advisory Service" since 2004 and has been operating a website at pensionsadvisoryservice.org.uk since that date. In 2006/2007, the number of visitors to the Complainant's website was over 400,000, and calls to the Complainant's helpline totalled over 61,000.
The Respondent registered the Domain Names on the following dates: pensionadvisoryservice.org.uk: 26 June 2007; thepensionsadvisoryservice.org.uk: 27 July 2007; pensionsadvisoryservice.co.uk: 1 August 2007.
At some point - the dates are not shown on the Complainant's printouts - the Domain Names resolved to parking pages with lists of sponsored links to pension-related websites.
An entity connected with the Respondent, Validweb.com, was found to have registered and used the domain name glastonburyfestival.com in bad faith in a decision under the Uniform Dispute Resolution Policy: Glastonbury Festivals Limited v Validweb.com Expired Domains, WIPO D2005-0188 (3 May 2005).
The Respondent and Validweb.com are shown as the registrant name and registrant organisation respectively in respect of two further domain names: gbpuatindia.org and taniewakacje.info. The former refers to Govind Ballabh Pant University of Agriculture and Technology in India and the latter refers to Polish discount holiday provider Tanie Wakacje. The domains are used for affiliate links to education and Polish travel sites respectively.
Complaint
Rights
The Complainant has made, and continues to make significant use of the brand in the United Kingdom. The services it provides under its name are well known and sufficient to provide the Complainant with rights under the Policy.
These differences between the Domain Names and Complainant's rights are immaterial variances and so the rights and the Domain Names are identical.
Abusive Registration
The Respondent's use of the Domain Names falls under paragraph 3(a)(i) of the Policy, in that they unfairly disrupts the business of the Complainant. There is a strong likelihood that members of the public who visit any of the websites will associate the Complainant with the various brands whose services are being offered via the sponsored links. As the Complainant is an independent grant-funded organisation providing independent advice to members of the public, any perceived association with, or endorsement of, any of these entities could be very damaging to the reputation of the Complainant.
The Domain Names were also designed to confuse people into believing that the Domain Names were registered to, or otherwise associated with, the Complainant in accordance with paragraph 3(a)(ii) of the Policy.
This is based on the minor differences between the Domain Names and the Complainant's own domain name as well as the clinks to pages containing competing services or at least services within a related business area to that of the Complainant.
This practice of generating click-through revenue by directing members of the public away from the Complainant's website amounts to taking unfair advantage of, and is detrimental to, the rights of the Complainant, and amounts to an abuse of those rights.
In accordance with paragraph 3(a)(iii), the Respondent is engaged in a pattern of registration of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights, and that the Domain Names are part of that pattern.
Response
The Respondent did not file a response.
General
To succeed, the Complainant has to prove in accordance with paragraph 2 of the DRS Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the DRS Policy) in respect of a name or mark identical or similar to the Domain Names and, second, that the Domain Names, in the hands of the Respondent, are abusive registrations (as defined in paragraph 1 of the DRS Policy).
Complainant's Rights
The Complainant invokes common law rights in its name "The Pensions Advisory Service".
Under the Policy, a Complainant cannot rely on rights in a name or term which is wholly descriptive of the Complainant's business. The Complainant's name, on the face of it, is wholly descriptive of its services.
The question, then, is whether the name has acquired a secondary meaning displacing any primary descriptive meaning. See, eg, DRS 2166 (game.co.uk).
While the Complainant has not provided any evidence supporting its assertions as to extensive use of the name since 2004, I have no reason to doubt that the Complainant has become widely known in the UK as a result of the public service which it provides.
The Respondent has not appeared in these proceedings to contest the Complainant's claims as to rights.
Furthermore, I have concluded below that the Respondent set out to divert to itself traffic seeking the Complainant. That presupposes that the Complainant was known and recognised by its name.
It is well established that the threshold as to rights is a low one.
Taking these matters together, I conclude that the Complainant has - narrowly - established rights in respect of the name "The Pensions Advisory Service".
The name is identical to thepensionsadvisoryservice.org.uk, disregarding the domain suffix. The name is similar to pensionadvisoryservice.org.uk (omits "the" and "s") and
pensionsadvisoryservice.co.uk (omits "the").
The Complainant has established rights in a name which is identical and similar to the Domain Names.
Abusive Registration
Is the Domain Name an abusive registration 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 Respondent registered as domain names three variations of the name of the Complainant, a body providing an important public service in relation to pensions, and used those domain names for sponsored links to pension websites.
Furthermore, as indicated above, an entity connected with the Respondent was found to have registered and used the domain name glastonburyfestival.com in bad faith in a case under the Uniform Dispute Resolution Policy. And the Respondent has also registered domains referable to an Indian university and a Polish holiday business and used them for sponsored links to education and Polish travel sites respectively.
In these circumstances, I conclude that the Respondent's purpose in registering the Domain Names was not a genuine one but rather its aim was to divert, confuse and profit from traffic intended for the Complainant.
In my view the Domain Names were acquired and have been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights and they are therefore abusive registrations.
The domain names pensionadvisoryservice.org.uk, pensionsadvisoryservice.co.uk and
thepensionsadvisoryservice.org.uk should be transferred to the Complainant.
Adam Taylor Date
