Norton Finance (UK) Ltd v 4 Names Ltd [2008] DRS 5266 (11 February 2008)

NOMINET.UK DISPUTE RESOLUTION SERVICE

DRS 05266

B E T W E E N:

NORTON FINANCE (UK) LIMITED

Complainant
– and -

4 NAMES LIMITED

Respondent

Domain Names:

<nortonloan.co.uk>

<norton-loan.co.uk>

<nortoncredit.co.uk>

<norton-credit.co.uk>

<norton-financial.co.uk>

<nortonloans.co.uk>
<norton-loans.co.uk>

DECISION OF INDEPENDENT EXPERT

1. The Parties

The Complainant

1.1 The Complainant is Norton Finance (UK) Limited

The Respondent

1.2 The Respondent is 4Names Limited

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2. The Domain Name

2.1 The disputed domain names (“the Domain Name”) are:

<nortonloan.co.uk>

<norton-loan.co.uk>

<nortoncredit.co.uk>

<norton-credit.co.uk>

<norton-financial.co.uk>

<nortonloans.co.uk>

<norton-loans.co.uk>

3. Procedural Background

3.1 This Complaint falls to be determined under the Nominet UK Dispute Resolution
Service Procedure (“the Procedure”) and the Nominet UK Dispute Resolution
Service Policy (“the Policy”).

3.2 The Complaint entered Nominet’s system on 21 November 2007. It was
validated on 26 November 2007 and Complaint documents were generated the
following day. A Response was filed on 20 December 2007 and a Reply on 27
December 2007. Mediation not being possible and the Complainant having paid
the relevant fee on 28 January 2008, the matter was referred to me for a
Decision on 29 January 2008. I have confirmed that I am independent of the
parties and that I am not aware of any matters that might call my impartiality or
independence into question.

4. Outstanding Formal/Procedural Issues

4.1 There are no such issues in this case.

5. The Facts

5.1 The Respondent registered the first five of the seven Domain Names listed above
on 25 March 2004. It registered the last two such names on 2 August 2004.

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6. The Parties’ Submissions

The Complaint

6.1 The Complainant makes submissions in its Complaint that may be summarised
as follows:

6.1.1 The Complainant has carried on business as a finance broker under the
name ‘Norton Finance’ since 1988. It owns the UK registered trade marks
NORTON FINANCE and NORTON, registered on 11 March 2005 for financial
services in Class 36. It operates websites at: www.nortonfinance.com and
www.nortonfinance.co.uk. In 2007 there were 4,007,112 unique visits to
the latter website and over 54 million hits in total.

6.1.2 The Complainant is registered with the Finance Industry Standards
Association and is a member of the Association of Finance Brokers. It
receives approximately 9,000 customer applications per months for loans
totalling over £200 million. Its turnover in 2005 was over £12 million and
in the period 2004 to 2006 it spent over £50 million marketing the ‘Norton
Finance’ name. This has included national press and TV advertising.

6.1.3 The Respondent is using all of the Domain Names to resolve to identical
websites. These are in the form of directory sites offering links to financial
services websites that offer mortgages, loans and other services
competitive with those of the Complainant, as well as a link to the
Complainant’s own website. They include the words ‘This website is for
sale!’.

6.1.4 The Respondent failed to respond to a ‘cease and desist’ letter from the
Complainant’s solicitor.

6.1.5 The Complainant relies on both registered and unregistered trade mark
rights in the names ‘Norton Finance’ and ‘Norton’. By reason of the
distinctive name ‘Norton’ its marks are not wholly descriptive. The Domain
Names are similar to the Complainant’s marks, including the distinctive
name ‘Norton’ together with generic terms that relate to financial services.

6.1.6 The Complainant has no association with the Respondent and has never
authorised it to use its marks. It was clearly aware of the Complainant
when it registered the Domain Names.

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6.1.7 By offering the websites linked to the Domain Names for sale, the
Respondent is seeking to elicit an offer from the Complainant to buy the
Domain Names for a sum in excess of its out-of-pocket costs (paragraph
3(a)(i)(A) of the Policy).

6.1.8 The Respondent also registered the Domain Names for the purpose of
disrupting the Complainant’s business (paragraph 3(a)(i)(C) of the Policy)
by attracting its customers and diverting them to websites offering
competing products.

6.1.9 The Respondent’s registration of the Domain Names was intended to
confuse internet users into believing that the names were connected with
the Complainant (paragraph 3(a)(ii) of the Policy). In particular, the
Respondent has sought to take advantage of ‘initial interest confusion’ on
the part of internet users looking for the Complainant’s own website.

6.1.10 The Respondent has also engaged in a pattern of similar behaviour. It has
been found guilty of abusive registration under the Policy on at least one
other occasion (domain name <faral.co.uk>) and is the registrant of
numerous other domain names reflecting well-known finance companies,
including <virgin-credit.co.uk> and <ocean-loan.co.uk>.

6.1.11 The Complainant seeks a transfer of the Domain Name.

The Response

6.2 The Respondent’s submissions in opposition to the Complainant’s claims may be
summarised as follows:

6.2.1 The Complainant has quoted an incorrect number in respect of its trade
mark registration. In any event, all of the Domain Names were registered
at least six months before the Complainant’s trade marks were registered.

6.2.2 The Complainant does not have registered trade marks for any of the
names ‘Norton Loan’, ‘Norton Loans’, ‘Norton Credit’ or ‘Norton Financial’
and the Complainant has provided no evidence that it has traded under
any of these names. None of the Domain Names includes the term ‘Norton
Finance’.

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6.2.3 The Domain Names were registered over three and a half years ago when
they were freely available through Nominet. Had the Complainant wished
to register them first it could have done so.

6.2.4 The name ‘Norton’ is a surname derived from a town in Yorkshire and
means ‘north town’. There are over 587 UK domain names that include the
term ‘Norton’. The Complainant cannot claim the rights to all such names.

The Reply

6.3 The Complainant has filed a reply to the Response in which it disputes each of
the Respondent’s arguments. It admits that the Domain Names predate the
registration of its registered trade marks but submits that the relevant date for
assessment of the Respondent’s conduct is the date of filing of the Complaint.
The Complainant also relies on its unregistered rights going back to 1988. It
points out that the Respondent has not denied that it was aware of the
Complainant at the time it registered the Domain Names, nor that it has
specifically targeted the Complainant’s customers.

7. Discussion and Findings

Relevant Provisions of the Policy

7.1 Under paragraph 2 of the Policy:

“(a) A Respondent must submit to proceedings under the Dispute

Resolution Service if a Complainant asserts to [Nominet], according
to the Procedure, that:

(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.

(b) The Complainant is required to prove to the Expert that both
elements are present on the balance of probabilities.”

7.2 Under paragraph 1 of the Policy the term “Rights”:

“includes, but is not limited to, rights enforceable under English law…”

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7.3 Also under paragraph 1 of the Policy, the term “Abusive Registration” means 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.”

7.4 Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be
evidence that a domain name is an Abusive Registration. Paragraph 4 sets out a
non-exhaustive list of factors that may be evidence that it is not. However, all
these factors are merely indicative of, and subject to, the overriding test of an
Abusive Registration as set out above.

Rights

7.5 I am satisfied on the evidence submitted by the Complainant that the
Complainant is the owner of the UK registered trade marks NORTON FINANCE
and NORTON for financial services. I am also satisfied that its has unregistered
trade mark rights in the names ‘Norton Finance’ and ‘Norton’ in the field of
financial services, based on substantial trade in the UK in that sector over a
number of years.

7.6 I am also satisfied that the marks ‘Norton Finance’ and ‘Norton’ are similar to
each of the Domain Names. Each such name includes a distinctive term,
‘Norton’, and also a descriptive term relating to loans, credit or finance which
reflects the term ‘Financial’ as used by the Complainant. In the circumstances,
the Complainant has established its case on Rights for the purposes of the
Policy.

Abusive Registration

7.7 The Respondent is correct to say that the Complainant does not have a
monopoly in the name ‘Norton’. However, the Complainant’s rights in that name,
even if not exclusive, are sufficient to entitle it to the protection against abusive
registration afforded by the Policy.

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7.8 Because the name ‘Norton’ is distinctive and not merely a generic or ‘dictionary’
term, the Respondent’s choice of that name for domain names relating to
financial services gives rise to a case to answer. It is not sufficient for the
Respondent simply to explain the derivation of the name ‘Norton’, as that fact
neither detracts from the Complainant’s acquired rights in the name nor explains
the Respondent’s choice of it. There is no suggestion, for example, that the
Respondent has ever been known by the name ‘Norton’ or, for example, that it
has registered a whole series of domain names based on towns of which ‘Norton’
is only one. Nor is it an answer that the Complainant could have registered the
names itself but chose not do so: that fact is not a licence to others to make
abusive registrations.

7.9 In the circumstances, I infer that the Respondent chose each of the Domain
Names in the knowledge of the Complainant and its services and with the
intention of unfairly taking advantage of its goodwill. I also find on the balance
of probabilities that the Respondent registered the Domain Names primarily for
the purpose of:

7.9.1 selling them to the Complainant for a sum in excess of its
documented out-of-pocket expenses (paragraph 3(a)(i)(A) of the
Policy), as evidenced by the statement “This website is for sale!”;
and/or

7.9.2 unfairly disrupting the business of the Complainant by diverting
customers intending to find the Complainant’s website and directing
them to websites offering competing services (paragraph 3(a)(i)(C)
of the Policy); and/or

7.9.3 using the Domain Names in a way which has confused internet users
into believing they are connected with the Complainant (paragraph
3(a)(ii) of the Policy). The nature of each of the Domain Names is
such as clearly to give rise to ‘initial interest confusion’ on the part of
internet users looking for the Complainant’s website and services.

7.10 I therefore conclude that each of the Domain Names was registered and/or has
been used in a manner that took unfair advantage of, or was unfairly detrimental
to, the Complainant’s rights and that each of the registrations is abusive.

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8. Decision

8.1 The Complainant has established on the balance of probabilities that it has
Rights in respect of names or marks which are similar to each of the Domain
Names. It has also established that each of the Domain Names in the hands of
the Respondent is an Abusive Registration. The Complaint therefore succeeds
and I direct that each of the Domain Names be transferred to the Complainant.

Steven A. Maier
11 February 2008

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Norton Finance (UK) Ltd v 4 Names Ltd [2008] DRS 5266 (11 February 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5266.html Cite as: [2008] DRS 5266



	NOMINET.UK DISPUTE RESOLUTION SERVICE	DRS 05266

	B E T W E E N: NORTON FINANCE (UK) LIMITED Complainant – and - 4 NAMES LIMITED Respondent Domain Names: <nortonloan.co.uk> <norton-loan.co.uk> <nortoncredit.co.uk> <norton-credit.co.uk> <norton-financial.co.uk> <nortonloans.co.uk> <norton-loans.co.uk>

	DECISION OF INDEPENDENT EXPERT

	1. The Parties *The Complainant* 1.1 The Complainant is Norton Finance (UK) Limited *The Respondent* 1.2 The Respondent is 4Names Limited

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	Page 2 2. The Domain Name 2.1 The disputed domain names (“the Domain Name”) are: <nortonloan.co.uk> <norton-loan.co.uk> <nortoncredit.co.uk> <norton-credit.co.uk> <norton-financial.co.uk> <nortonloans.co.uk> <norton-loans.co.uk> 3. Procedural Background 3.1 This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure (“the Procedure”) and the Nominet UK Dispute Resolution Service Policy (“the Policy”). 3.2 The Complaint entered Nominet’s system on 21 November 2007. It was validated on 26 November 2007 and Complaint documents were generated the following day. A Response was filed on 20 December 2007 and a Reply on 27 December 2007. Mediation not being possible and the Complainant having paid the relevant fee on 28 January 2008, the matter was referred to me for a Decision on 29 January 2008. I have confirmed that I am independent of the parties and that I am not aware of any matters that might call my impartiality or independence into question. 4. Outstanding Formal/Procedural Issues 4.1 There are no such issues in this case. 5. The Facts 5.1 The Respondent registered the first five of the seven Domain Names listed above on 25 March 2004. It registered the last two such names on 2 August 2004.

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	Page 3

	6. The Parties’ Submissions *The Complaint* 6.1 The Complainant makes submissions in its Complaint that may be summarised as follows: 6.1.1 The Complainant has carried on business as a finance broker under the name ‘Norton Finance’ since 1988. It owns the UK registered trade marks NORTON FINANCE and NORTON, registered on 11 March 2005 for financial services in Class 36. It operates websites at: www.nortonfinance.com and www.nortonfinance.co.uk. In 2007 there were 4,007,112 unique visits to the latter website and over 54 million hits in total. 6.1.2 The Complainant is registered with the Finance Industry Standards Association and is a member of the Association of Finance Brokers. It receives approximately 9,000 customer applications per months for loans totalling over £200 million. Its turnover in 2005 was over £12 million and in the period 2004 to 2006 it spent over £50 million marketing the ‘Norton Finance’ name. This has included national press and TV advertising. 6.1.3 The Respondent is using all of the Domain Names to resolve to identical websites. These are in the form of directory sites offering links to financial services websites that offer mortgages, loans and other services competitive with those of the Complainant, as well as a link to the Complainant’s own website. They include the words ‘This website is for sale!’. 6.1.4 The Respondent failed to respond to a ‘cease and desist’ letter from the Complainant’s solicitor. 6.1.5 The Complainant relies on both registered and unregistered trade mark rights in the names ‘Norton Finance’ and ‘Norton’. By reason of the distinctive name ‘Norton’ its marks are not wholly descriptive. The Domain Names are similar to the Complainant’s marks, including the distinctive name ‘Norton’ together with generic terms that relate to financial services. 6.1.6 The Complainant has no association with the Respondent and has never authorised it to use its marks. It was clearly aware of the Complainant when it registered the Domain Names.

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	Page 6 7.3 Also under paragraph 1 of the Policy, the term “Abusive Registration” means 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.” 7.4 Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a domain name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above. *Rights* 7.5 I am satisfied on the evidence submitted by the Complainant that the Complainant is the owner of the UK registered trade marks NORTON FINANCE and NORTON for financial services. I am also satisfied that its has unregistered trade mark rights in the names ‘Norton Finance’ and ‘Norton’ in the field of financial services, based on substantial trade in the UK in that sector over a number of years. 7.6 I am also satisfied that the marks ‘Norton Finance’ and ‘Norton’ are similar to each of the Domain Names. Each such name includes a distinctive term, ‘Norton’, and also a descriptive term relating to loans, credit or finance which reflects the term ‘Financial’ as used by the Complainant. In the circumstances, the Complainant has established its case on Rights for the purposes of the Policy. *Abusive Registration* 7.7 The Respondent is correct to say that the Complainant does not have a monopoly in the name ‘Norton’. However, the Complainant’s rights in that name, even if not exclusive, are sufficient to entitle it to the protection against abusive registration afforded by the Policy.

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	Page 8 8. Decision 8.1 The Complainant has established on the balance of probabilities that it has Rights in respect of names or marks which are similar to each of the Domain Names. It has also established that each of the Domain Names in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds and I direct that each of the Domain Names be transferred to the Complainant.

	Steven A. Maier 11 February 2008

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Nominet UK Dispute Resolution Service