BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!
 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> National Westminster Bank Plc v Robinson [2006] DRS 3377 (17 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3377.html Cite as: [2006] DRS 3377 |
||
[New search] [Printable RTF version] [Help]
Nominet UK Dispute Resolution Service
DRS Number 03377
National Westminster Bank Plc -v- James Robinson
Decision of Independent Expert
Complainant Type: Business
Country: GB
Respondent: James Robinson
Country: GB
natwestcreditcards.co.uk ('the Domain Name')
The complaint has been handled on behalf of the Complainant by Mr James Thomas, of Parker Poe Adams and Bernstein LLP in Raleigh, North Carolina. It was lodged electronically with Nominet on 30 January 2006. Hard copies were received on the same day.
The Respondent was duly notified of the complaint by written correspondence to the above postal address, and email to three separate email addresses, one of which returned 'undeliverable' messages. Nominet received no response.
Accordingly, on 27 February 2006, the complainant was invited to pay the fee for an expert decision. The fee was received on 8 March 2006. On 10 March Claire Milne was appointed to act as expert in the case, having confirmed that she knew of no reason why she could not properly do so; and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.
Nominet's staff have confirmed to the expert that the Respondent is no longer eligible to opt out of having his address revealed by a WHOIS query, as the Domain Name is being used for trading purposes.
The following account is based on material supplied to me in the complaint file, supported by evidence and which I have no reason to question.
National Westminster Bank was formed as the result of a merger in 1968. It adopted the 'NatWest' title in the 1990s, since when it has been trading continuously under this name. The company is part of a large international financial services group, has more than 1,600 branches including a High Street presence in the UK, and offers a range of financial services including credit cards to both individual and business customers.
On 3 December 1973 the company filed to register the UK trademark NATWEST in class 16 (paper, printed matter, books and stationery). This registration is currently valid until 3 December 2014. On 29 January 1990 it registered UK trademarks NATWEST, NAT WEST, NatWest and Nat West in classes 35 (consultancy and information services related to business and commerce) and 36 (financial services).
NatWest and its affiliates' domain name registrations include natwest.co.uk (registered before August 1996) and natwest.com (created 11 February 1997).
On 7 July 2004 the domain name natwestcreditcards.co.uk was registered with Nominet UK under the name of James Robinson. Nominet's WHOIS query form shows the registrant as a non-trading individual, whose agent is Chris Clare trading as 2catchafly.co.uk.
At the date of the complaint, and still today, the domain name points to a web page headed 'pocket lolly @ natwestcreditcards.co.uk' which mainly consists of a set of links to credit card suppliers and comparison sites, briefly described. NatWest itself is not mentioned on this page, although it was mentioned on a linked comparison website.
There has been no response. The complainant's contentions follow.
Rights
1. The Complainant has Rights in respect of the 'NatWest' name and marks.
2. The disputed domain name natwestcreditcards.co.uk is similar to the Complainant's name and marks 'NatWest' and to its domain name natwest.co.uk, because it differs only by the generic term 'creditcards', which is associated with the Complainant's business.
3. The Respondent has no apparent rights to the NatWest name.
Abusive registration
4. The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant's business. The 'pocket lolly' webpage to which it now leads is evidence of this, because it leads users to websites of competitors of NatWest.
5. Some users who visit the 'pocket lolly' natwestcreditcards website are likely to be confused into believing that this is NatWest's official website, or at least that it is in some way associated with NatWest. This view is supported by the expert in the recent case DRS 02297 Whittard of Chelsea Plc vs Keith Szlamp in which the name whitard.co.uk resolved to a 'pocket lolly' website.
6. The Respondent is engaged in a pattern of registering domain names that correspond to well-known names and trademarks in which the Respondent has no apparent rights. Lists of domain names and their registrants are provided as evidence for this contention. Again, DRS 02297 is cited in support.
7. Discussion and Findings:
The Nominet Dispute Resolution Service Policy ('the Policy') paragraph 2 requires that for a complaint to succeed the Complainant must demonstrate, on the balance of probabilities, that both:
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.
Complainant's Rights
The Complainant has provided ample evidence of its Rights in the name NatWest. I agree that the name natwestcreditcards is similar to the name NatWest for the purposes of Nominet's Policy, because the generic addition 'creditcards' is a product closely associated with financial services providers like NatWest. So the first of the two tests has been passed.
Abusive Registration
Paragraph 1 of the Policy defines Abusive Registration to be 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.
Paragraph 3 of the Policy lists various factors which may be evidence of Abusive Registration, and the Complainant has invoked three of these, which I shall consider in turn:
3.a i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant
3.a ii Circumstances indicating that the Respondent 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.
3.a iii The Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) 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.
Unfair disruption
The only evidence available to me of the Respondent's motives in registering the Domain Name is its current 'pocket lolly' use. The usual purpose of this type of holding page is to generate 'click through' revenues for its owner. Disruption to NatWest's business is likely to be marginal. If the Respondent's primary motive had been to cause disruption then he could very likely have used the Domain Name more effectively to that end. This appears to be a case of taking unfair advantage rather than of causing unfair detriment.
Confusion
In the event of a user typing 'natwestcreditcards' into his browser window in search of NatWest credit cards and arriving instead at the 'pocket lolly' page, I accept that there would be a degree of confusion, leading to detriment (albeit marginal) to NatWest's business. Detriment could arise through the user being diverted to a competitor, or through some (probably subliminal) damage to NatWest's brand image in the user's mind.
Pattern of registrations
On the whole this Complaint has been carefully prepared. However, I can find no explanation of the relevance of many of the domain names listed in support of the contention of a pattern of registrations. 13 pages of domain names have been supplied. Of these, 7 pages are names registered to people whose names are not James Robinson (including in particular 2catchafly, Harry Planet and Keith Szlamp). The Complaint asserts that these names "seem to be connected" with the Respondent, but does not support this assertion, other than through the claims that "many of the domain names pointed to 'pocket lolly' directory websites" and that Harry Planet had registered 26 variant mis-spellings of NatWest. These claims do not persuade me that these other names are connected with James Robinson – different people may well use 'pocket lolly', and register mis-spelled well-known names, quite independently of each other.
Looking only at the remaining 6 pages of domain names which were registered to James Robinson, I immediately note several variants of this name and eliminate all those which are not simply 'James Robinson'. This leaves me with 5 pages attributed to this name. Of course, the combination of a common given name and a common surname is likely to be shared by a great many individuals, many of whom may register domain names. No evidence has been offered that these are all, or largely, the same James Robinson. However, I feel it is more likely than not to be the case, so I shall proceed on that assumption.
In particular, nearly a page of the list relates to registrations made on 7 July 2004, the same day as the disputed Domain Name, and it seems highly likely that these were all made by the same person. Unlike most of the earlier and later registrations by James Robinson, many of these use well-known names in UK financial services. The Complainant has included printouts to show 'pocket lolly' websites for the following domain names registered by James Robinson:
nomenet.co.uk registered 7 June 2004
mastercreditcard.co.uk registered 26 April 2004
hsbccreditcards.co.uk registered 7 July 2004
mbna-cards.co.uk registered 9 June 2004
mbna-creditcards.co.uk registered 9 June 2004
capital1card.co.uk registered 7 July 2004
wwwcapital-one.co.uk registered 7 July 2004
halifax1card.co.uk registered 7 July 2004
halifaxonecards.co.uk registered 7 July 2004
lloydstsbcards.co.uk registered 7 July 2004
wwwbarclay-card.co.uk registered 7 July 2004
and also mentions that 4 other domain names registered by him resemble lloyds.co.uk and another 4 resemble barclays.co.uk. The supplied list of domain names does include such registrations, mostly made on 7 July 2004. To my mind this constitutes a clear (albeit short-lived) pattern of registrations corresponding to well-known names, with the disputed Domain Name being part of that pattern.
There is no evidence before me that the Respondent had or has any rights in relation to these names, and from his failure to respond I think it likely that no evidence exists. I conclude that for a short period the Respondent was engaged in a pattern of registrations of domain names under .uk 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.
So the Complainant has also succeeded in showing abusive registration, on grounds of a pattern of registrations, with elements of confusion and unfair advantage.
The complaint succeeds and the domain name should be transferred to the Complainant as requested.
Claire Milne
17 March 2006
