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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Random House Inc v Strong [2006] DRS 3270 (7 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3270.html Cite as: [2006] DRS 3270 |
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Nominet UK Dispute Resolution Service
DRS 03270
Random House Inc. v. James Strong
Decision of Independent Expert
Complainant: Random House Inc
Country: US
Respondent: James Strong
Country: AU
primagames.co.uk2.1 primagames.co.uk ("the Domain Name").
3.1 Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively)
3.2 Nominet received the Complaint on 6 January 2006. On 11 January 2006 it validated it and sent it to the Respondent, with a letter advising the Respondent that it had 15 working days, until 5 February, to submit a response.
3.3 The Respondent failed to submit a Response by 5 February, or at all. The parties were informed on 7 February 2006 that if the Complainant paid the requisite fees by 21 February 2006, the dispute would be referred to an independent expert and the fees were paid.
3.4 After confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I, Victoria McEvedy, was appointed as an independent expert in this dispute on 22 February 2006.
4.1 Service
4.1.1 I need to say something briefly about service. The DRS derives its jurisdiction from the terms and conditions of the contract of registration between the Respondent and Nominet ("the Contract"), clause 14 of which incorporates the Policy and Procedure by reference. The Contract requires a registrant's details to be entered in the Register (clause 4.1), and the registrant agrees to ensure that Nominet has its correct postal address, telephone and fax number and email address. Certain details are also posted on the public WHOIS database. Failure to provide correct details, or to keep them up-to-date, may be grounds for cancellation or suspension of a domain name (clause 17.2).
4.1.2 The relevance of this, is §2(a) of the Procedure provides a Respondent will be served with a Complaint, at Nominet's discretion, by any of: first class post, fax or email to the contact details in the Register; by email to postmaster@; or to any email addresses shown on any active web pages the domain name resolves to. Other communications are also by fax, first class post or email (§2(b)).
4.1.3 Nominet has provided me with a copy of the Respondent's Register entries and WHOIS details. On the Register for the Domain Name, the postal address given for the Respondent is the Melbourne address set out at the top of this decision. The Respondent's email address is given as fuzza@fuzza.com and a fax number +61 345 434 322 is also provided.
4.1.4 Nominet served the Complaint on the Respondent on 11 January 2006, by:
(a) fax to the fax number +61 345 434 322; and
(b) by email to fuzza@fuzza.com;
(c ) by email to [email protected].
The fax confirmation sheet on file shows that the fax was not sent successfully. Further, a delivery failure report was received for the email to postmaster@ primagames.co.uk. No delivery failure report was received for the fuzza address so that appears to have been delivered.
4.2 Default4.1.5 In any event, the Procedure stipulates that the postmaster@style will be used for service, §2(a), and the Contract renders the Respondent responsible for any failure to notify Nominet of changes to his details. The Complaint is therefore deemed by the Procedure to have been served on 11 January 2006, the date of the email to fuzza@fuzza.com.
4.2.1 Although the Respondent has failed to submit a Response, the Procedure does not provide for a default decision in favour of the Complainant. The Complainant must still prove its case to the requisite standard, see §15(b) of the Procedure. However an expert may draw such inferences from a party's default as appropriate, see §15(c), and I indicate below where I am drawing inferences.
5.1 The Complainant is the US division of the famous book publisher and part of the Bertelsmann group. In addition to books, the Complainant also publishes games under the name Prima Games which it has registered as a trade mark in various forms and used since 1998 internationally and in the UK since late 1999. It has registered primagames in the .com, .net, .org and .biz generic top level domains. It has published over 900 games and sold them under the Prima Games name. The UK gross revenue for Prima Games products in 2004 was over USD$2 million.
5.2 The Domain Name appears in the WHOIS database as having been registered by the Respondent on 14 September 2004.
5.3 The Complainant has submitted as enclosure H to the Complaint, a printout from a website to which the Domain Name resolved as of 20 December 2006. That is a website which the Complainant describes as a domain parking service. When I typed the Domain Name into a browser on 2 March 2006, I was directed to a similar site, although different from that at enclosure H, with various links under a variety of headings, eg. Travel, Business, Finance, Entertainment etc. Under Entertainment, it had games, casino, music etc. Games took me to another page with both sponsored links and top sites. There was also on the site a list of related links starting with games.
5.4 The Complainant wrote what it describes as a "cease and desist" letter to the Respondent and sent it by 2 separate couriers to the Respondent's Melbourne address, however neither was able to deliver it.
Complainant's Case:6.1 The Complainant claims that it has Rights in respect of a name or mark identical or similar to the Domain Name and that in the hands of the Respondent, the Domain Name is an Abusive Registration.
6.2 In particular, (and I have largely retained the Complainant's own words here) as to Rights:
6.2.1 The Complainant is the registered proprietor of Community Trade Mark no. 219519 PRIMA'S SECRETS OF THE GAMES, UK no. 2208533 PRIMA GAMES (logo) and CTM no. 1307875 PRIMA GAMES (logo). These registrations date from 1996, 1999 and 1999 respectively. Details are attached at enclosure A.
6.2.2 The Complainant adopted the trade mark PRIMA GAMES in February 1997. PRIMA GAMES was first used in the United Kingdom in September 1999 in the form as registered under trade mark no. 2208533.
6.2.3 PRIMA GAMES is used in relation to books, publishing and games not only in the United Kingdom but also throughout the European Union, Australia, United States of America and several other countries around the world. The Complainant has a UK marketing budget for PRIMA GAMES in the region of US$75,000 per annum. Examples of use of the trade mark PRIMA GAMES in the United Kingdom are attached at enclosure B. The Complainant also offers their goods over the internet. For example, on www.amazon.co.uk, PRIMA GAMES products can be purchased as is evidenced by the attachment at enclosure C.
6.2.4 The Complainant is the registered owner of various other domain names containing PRIMA GAMES. These include primagames.com, primagames.net, primagrames.org and primagames.biz. Attached are printouts from the Network Solutions WHOIS search database confirming these at enclosure D.
6.2.5 Since 1998 PRIMA GAMES has published over 900 titles totalling more than 50 million printed guides in six languages. The PRIMA GAMES brand has been used on all game guides and on the Complainant's marketing materials including catalogues, store flyers, point of sale material, posters, trading cards, stickers, tattoos, DVDs, CDs, calendars, wall scrolls, t-shirts, hats, business cards, letterhead, promotional videos and magazine advertisements.
6.2.6 Online, the PRIMA GAMES logo and name is present on every page of the complainant's website at www.primagames.com and has been used for marketing purposes consistently since 1998. Examples are attached at enclosure E.
6.2.7 The Complainant's UK gross revenues for products sold under the PRIMA GAMES brand in 2004 were in excess of US$2million. The gross revenues for 2005 are also anticipated to exceed US$2million.
6.3 Abusive registration. The Complainant contends that in the hands of the Respondent, the Domain Name is an Abusive Registration for the reasons set out below:6.2.8 The Complainant and its subsidiaries and associated companies have continuously traded under and by reference to the trade mark PRIMA GAMES from at least as early as 1998. The Complainant's PRIMA GAMES name and trade mark are well known in the United Kingdom to the relevant purchasing public. The PRIMA GAMES brand is an important asset of the Complainant which enjoys a significant and substantial goodwill. The Complainant's business has been and continues to be promoted under and by reference to the PRIMA GAMES name. The UK market is one of the Complaint's largest markets.
6.3.1 Registration of the Domain Name was Abusive
6.3.1.1 The Respondent's primary purpose in registering the Domain Name falls within paragraphs 3.a.i. B and C and 3.a.iii of the Policy.
6.3.1.2 The Respondent registered the Domain Name long after the Complainant established its rights in the PRIMA GAMES name in the United Kingdom.
6.3.2 The Domain Name is likely to confuse Internet users.
6.3.2.1 Disregarding the generic .co.uk suffix, the Domain Name is identical or virtually identical or confusingly similar to the Complainant's PRIMA GAMES name and trade mark.
6.3.3 No explanation for choice of the Domain Name
6.3.3.1 The Complainant wrote to the Respondent at the address provided; however, the letter was returned both by Federal Express and UPS as being not delivered. As the Respondent did not answer this cease and desist letter, there is no explanation as to the circumstances in which the domain name was registered.
6.3.4 Blocking Registration
6.3.4.1 The Complainant wishes to register and use the Domain Name for their UK activities and to assist in their marketing and sales of PRIMA GAMES products in the United Kingdom. The existence of the registration in the name of the Respondent acts as a blocking registration against the name in which the Complainant has a legitimate and valid right.
6.3.5 One of a pattern of Abusive Registrations
6.3.5.1 Under paragraph 3.a.iii it is noted that the Respondent also owns a large number of other domain names registered with the .co.uk suffix. Many of these are typo squatting names relating to well known businesses or organisations in the United Kingdom. The existence of these registrations would lead any independent person to assume that many of them are Abusive Registrations. The Complainant contends this includes the Domain Name. Details of the domain names in question are attached at enclosure F.
6.3.5.2 Nominet's DRS has already dealt with two cases of typo squatting domain names owned by the Respondent. These are DRS1918/1919 and DRS02352. These cases were brought by Alliance & Leicester PLC and Hayes & Jarvis (Travel) Ltd. Copies of the decisions of the independent experts are attached at enclosure G.
6.3.5.3 Taking all of the relevant circumstances and factors into account, the Respondent is involved in a pattern of Abusive Registrations of Domain Names which correspond to well known names and/or trade marks in which the Respondent has no apparent rights.
6.3.6 Abusive Use of the Domain Name
6.3.6.1 The Domain Name is linked to Sedo's domain parking service. It is clear from the website at www.sedo.com that its domain parking service is powered by Google and generates sponsored links provided by Google AdWords. According to Sedo's answer to FAQs about its service: "The advertising keywords selected for each domain determines which advertising banners will be displayed on your domain parking. The advertising keyword is automatically assessed and optimised by Sedo to maximise, click through and per-click rates". The Sedo domain park service generates payment to domain name holders using this service. Further details are attached at enclosure H.
6.3.6.2 The registration and use of the Domain Name in this way not only blocks the Complainant from registering the Domain Name but also takes an unfair advantage of the Complainant's rights and is unfairly detrimental to those rights. It does so by making a commercial gain accruing from the per-click payments which is driven by the attractive force of the Complainant's reputation in the well known name, PRIMA GAMES.
6.4 Respondent's Case:6.3.6.3 It is unfairly detrimental in that visitors who intended to visit the Complainant's website may be drawn instead to a competitor's site. For example, by clicking on Play Station 2 under the gambling headline on the homepage at primagames.co.uk and then clicking on the link to www.play.com there are offered for sale products which compete directly with those offered by the Complainant under the trade mark PRIMA GAMES.
6.4.1 As noted above, no Response has been received.
Discussion and Findings:
7.1 .Co.uk domain names are registered on a first come, first served, basis and a registration will only be disturbed if it is an Abusive Registration, as defined in the Policy—paragraph 2(a) of which requires a complainant to prove 2 elements:
"i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
7.2 A Complainant bears the burden of proof and must prove both elements on the balance of probabilities. If the scales are evenly balanced, doubts should be resolved in favour of the current registrant, see the decision of the DRS Appeal Panel in Seiko v Designer Time, DRS 00248 at §9.ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration."
7.3 The DRS is concerned solely with Abusive Registration. The DRS does not decide issues of trade mark infringement or passing-off, which are matters for the courts. I will not therefore make any finding as to those. The Policy is a "stand alone" one -and I am to decide this Complaint on the basis of the parties' submissions, the Policy and the Procedure, see §16(a) of the Policy. It is however permissible to refer to, and consider, trade mark authorities but they are persuasive, not binding. The same is true of decisions by other DRS experts and appeal panels.
8.1 Rights under the Policy include but are not limited to rights enforceable under English law and this extends to rights to registered and unregistered trade marks and contractual rights in relation to the same. This is not a high threshold, see DRS Appeal Panel in Seiko v Designer Time, DRS 00248 at §9.
8.2 The Complainant has submitted at enclosure A printouts from a trademark search system evidencing its registrations of 2 Community Trade Marks (CTM) and one UK national mark -all Device marks. The first CTM is a logo for "PRIMA'S SECRET OF THE GAMES" and the second is a logo which includes a large P in a box and the name PRIMA GAMES. The national mark is the same as this boxed logo. In addition to its rights in these registered marks, the Complainant has rights in the name that would be enforceable in passing-off as a result of its actual use of the name in the UK. The Complainant has Rights in the name Prima Games.
8.3 As to whether those names or marks are identical or similar to the Domain Names; suffixes are to be ignored, see Appeal in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359, as are hypens, see Appeal in Hanna-Barbera v Graeme Hay, DRS 00389. Spaces can also be ignored. The name is clearly identical to the Domain Name.
8.4 I am satisfied that the Complainant has Rights in a name which is identical to the Domain Name.
9.1 The second element a complainant must prove under paragraph 2(a) of the Policy, is that the domain name is an Abusive Registration, defined in paragraph 1, as follows:
"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
9.2 Factors which evidence Abusive Registration are set out in §3 of the Policy. The corollary of that is that if one of the factors in §4a is satisfied by a respondent, so that a domain name is not an Abusive Registration, the Complaint must fail. The factors at both §§3 and 4 are non-exhaustive.was unfairly detrimental to the Complainant's Rights"
10.1 The Complainant's case includes extensive evidence of other registrations by the Respondent at enclosure F –an astonishing 102 registrations of well-known names in the .co.uk top level domain. Some are correctly spelt eg. nhshealth.co.uk and others are misspellings of well known names eg. toshop.co.uk. In addition, at enclosure G, I have the two DRS decisions referred to in §6.3.5.2 above, both of which ordered the Respondent to transfer domain names. In the later decision, Hayes & Jarvis (Travel) Ltd v. M Strong (trading as Fuz Pty Ltd), DRS 02352, the expert, Mr. Ian Lowe had this to say:
"Finally I note that the Respondent has apparently been the subject of an earlier decision under the Policy (based on two complaints), which concerned the registration of nine domain names all of which represented slight misspellings of the household name of Alliance & Leicester plc. Although the Complainant has only been able to point to this one instance in which such a finding was made against the Respondent, I consider that the Respondent's involvement in nine abusive registrations in that case and the present case is at least indicative of a pattern of registrations of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights."
I agree with Mr Lowe and find that the registration is an Abusive Registration under §3aiii of the Policy.
11.1 Even if I had not found the registration was one of a pattern, I would have found that this was an Abusive Registration under §3aiC of the Policy. The name was exclusively referable to the Complainant. In Chivas Bros. Ltd –v- D. W. Plenderleith, DRS 00658, the Expert, and founding father of the DRS, Mr. Tony Willoughby, laid down the following 4 part test which can be usefully applied here. Where a respondent registers a domain name: 1) identical to a name in respect of which a complainant has rights; 2) that name is exclusively referable to the complainant; 3) there is no obvious justification for the respondent having adopted that name; and 4) the respondent has come forward with no explanation for having selected the domain name; it will ordinarily be reasonable to infer that the respondent registered the domain name for a purpose and that that purpose was Abusive. Clearly this is applicable here.
12.1 I find that the Complainant has Rights in a name which is identical to the Domain Name which is an Abusive Registration in the hands of the Respondent. Accordingly, the Domain Name should be transferred to the Complainant.
Victoria McEvedy
7 March 2006
