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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Alliance & Leicester Plc v Picken [2006] DRS 3453 (29 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3453.html Cite as: [2006] DRS 3453

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NOMINET UK DISPUTE RESOLUTION SERVICE DRS 03453 ALLIANCE & LEICESTER PLC
- and - ANDY PICKEN
RE: ALLIANCE-LECEISTER.CO.UK
Decision of Independent Expert

Parties:

Complainant:	Alliance & Leicester plc
Represented by:	Mr. Tom Carl
Respondent:	Andy Picken
Disputed Domain Name:	alliance-leceister.co.uk

Abbreviations used in this decision:

Abbreviation	Definition
DRS	Nominet UK's Dispute Resolution Service
DRS Policy	Nominet UK's Dispute Resolution Service Policy as applicable after 25/10/04
DRS Procedures	Nominet UK's Dispute Resolution Service Procedures as applicable after 25/10/04
The Expert	Kirsten Houghton

Procedural Background:

1. The Complaint was lodged with Nominet on 21^st February 2006 and hard copies were received on 22^nd February 2006. Nominet validated the Complaint on the same day.
2. On 22^nd February 2006, Nominet sent the complaint to

The Respondent's address by post

By e-mail to the Respondent's email address listed in Nominet's database and

By e-mail to postmaster at the Domain Name. This email was returned, undelivered.

3. No response was received; accordingly, mediation was not attempted.
4. On about 21^st March 2006, the Complainant paid the fee in order to obtain a decision of an independent expert. On 23^rd March 2006, I 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 which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.

Outstanding Formal/Procedural Issues (if any):

5. None.

The Facts:

(1) The Parties – the Complainant

6. The Complainant is a well-known bank and financial services company. I have been provided with a copy of its details registered at Companies House.

(2) The Parties - the Respondent

7. I have not been told anything about Mr. Picken apart from the details held by Nominet. The Complaint states:

13. The Respondent is not connected to the Complainant in any way. He registered the Domain Name without the Complainant's consent on 10 April 2004, around 19 years after the Complainant's rights were acquired.

(3) The Complainant's rights

8. It is obvious that the Complainant is a very well known business in the UK; however, it is worth setting out its description of its Rights under the DRS Policy in full, as a good example of one way in which to prove such rights:

COMPLAINANT'S RIGHTS

1. The Complainant is one of the UK's major financial services companies. Its origins trace back to 1852. Following the merger between the Alliance Building Society and Leicester Building Society, the Complainant (together with its associated companies) has been trading under the trade marks ALLIANCE & LEICESTER and ALLIANCE LEICESTER, and other marks containing these marks (together the "A&L Marks") since 1985 in the UK and other countries. The Complainant has been a member of the FTSE 100 since 1997, when it converted from its original mutual building society status.

2. The Complainant supplies a broad range of financial services to personal and commercial customers under the A&L Marks. Its aggregate operating income for 2000 to 2004 was approximately £6,617 million. A copy of the Complainant's annual report and accounts for 2004 filed at Companies House, including a five year summary, is at Annex 1. The Complainant has around 5.5 million personal customers. Further information about the Complainant is at Annex 2.

3. ALLIANCE & LEICESTER is a household name in financial services, including banking. The Complainant advertises its services widely through direct marketing, TV and the internet. The Complainant's advertising expenditure for 2004 was approximately £45 million, including around £10 million online. The ALLIANCE & LEICESTER brand has been awarded "Superbrand Status" by The Brand Council, together with other famous brands like AMERICAN EXPRESS, COCA-COLA and IBM - see Annex 3.

4. The Complainant owns at least 41 UK, four European Community and 11 other national trade mark registrations for marks containing the words ALLIANCE and LEICESTER. Details of these marks and copies of the official trade marks registry online records for some of the key ones are at Annex 4.

5. The Complainant operates the website www.alliance-leicester.co.uk, a copy of the homepage of which is at Annex 5, and owns at least 131 domain names containing the words ALLIANCE and LEICESTER, as well as variations and misspellings of these words. A list of these domain names is at Annex 6.

6. The Complainant's policy is to register and police the registration by third parties of such domain names because it is aware that its customers commonly use variations of or misspell the words ALLIANCE and LEICESTER when searching for the Complainant on the Internet. For example, the Complainant analysed the search terms patterns of users looking for its services through search engines between 1 February to 21 March 2004 and discovered that around 10,500 users searched under the misspells at Annex 7.

7. The Complainant has taken and continues to take legal action against domain name registrants who infringe the Complainant's rights. For example, the Complainant has brought successful complaints under the DRS against Fuz Pty Ltd/Stinger Web Services and Lucy Willow (see decisions DRS 1918/1919 and 02532) and under the Uniform Domain Name Dispute Resolution Policy against Henao Berenice (see WIPO case No. D2005-0736) at Annex 8. The 25 domain names in those cases were very similar to the Domain Name.

8. As a result of the Complainant's extensive use and promotion of the A&L Marks, it has acquired a substantial reputation and goodwill in the UK and other countries in the marks.

9. The A&L Marks are distinctive inherently and as a result of the fame they have acquired. The A&L Marks are not descriptive of the Complainant's business or of anything else.

10. On the above basis, the Complainant has for many years owned substantial rights in the A&L Marks which are enforceable under English law (under registered trade mark law and the common law of passing off) and in other countries. Decision DRS 1918/1919 held that it was "straightforward" that the Complainant owns the necessary rights.

IDENTITY/SIMILARITY OF MARKS/DOMAIN NAME

11. The A&L Marks are nearly identical to the Domain Name. The domain name alliance-leceister.co.uk is a very close misspelling of the A&L Marks.

12. The absence of an ampersand in the Domain Name should be disregarded because this does nothing to distinguish the Domain Name from the A&L Marks. In any event, a number of the A&L Marks do not contain an ampersand (see Annex 4) and an ampersand cannot be included in a domain name. The sub-domain .co.uk should also be disregarded.

9. Clearly, this is a "Rolls Royce" approach to proving rights, but the manner in which the Complainant has set out its case is complete, and supported by proper evidence. In the case of a complainant as well-known as this one, it was perhaps unnecessary to go to such lengths, and some of the factors cited would not apply to most businesses (e.g. the previous Nominet decisions), but what is striking is the clarity of approach, and the annexing of relevant, complete documents to prove the trademarks in the hands of the Complainant by the provision of the relevant certificates and entries in official databases, and the existence of goodwill by provision of accounts and other evidence showing existing trade and brand recognition.
10. In the light of the above, I find that the Complainant has established Rights in the mark "Alliance & Leicester" and "Alliance Leicester" and various other related marks.

(4) The Complaint

11. The DRS Policy has introduced some new factors which may be considered as evidence of abusive registration, and states:

3. Evidence of Abusive Registration

a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B. as a blocking registration against a name or mark in which the Complainant has Rights; or

C. for the purpose of unfairly disrupting the business of the Complainant;

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;

iii. The Complainant can demonstrate that 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;

iv. It is independently verified that the Respondent has given false contact details to us; or

v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A. has been using the domain name registration exclusively; and

B. paid for the registration and/or renewal of the domain name registration.

b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.

c. There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c)).

4.      How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

a.      A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

i.            Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has

A.      used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;

B.   been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;

C.  made legitimate non-commercial or fair use of the Domain Name; or

ii.     The Domain Name is generic or descriptive and the Respondent is making fair use of it;

iii.    In relation to paragraph 3(a)(v); that the Registrant's holding of the Domain Name is consistent  with an express term of a written agreement entered into by the Parties; or

iv.  In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.

    b.      Fair use may include sites operated solely in tribute to or in criticism of a person or business.

    c.   If paragraph 3(c) applies, to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.

12. The Complaint states:

13. The Respondent is not connected to the Complainant in any way. He registered the Domain Name without the Complainant's consent on 10 April 2004, around 19 years after the Complainant's rights were acquired.

14. The Respondent must have been aware of the Complainant's rights in the marks when he registered the Domain Name because:

(a) The combination of the words ALLIANCE and LEICESTER is unusual and inventive and it is not credible that the Respondent came up with the Domain Name independently.

(b) The Respondent must have been aware of the A&L Marks as a result of the marks' fame, including on the Internet. In this regard, according to the WHOIS record for the Domain Name, a copy of which is at Annex 9, the Respondent is located in the UK, and so will be aware of the well-known A&L Marks here.

(c) Domain name, website, trade mark and company searches would have disclosed the Complainant's rights.

15. The Domain Name connects to a domain name parking page on the website of the third party NameDrive (www.ndparking.de) - see Annex 10. The website is headed with the Domain Name, followed by the statement "Sponsored Links for Loans", and contains links to other sites. These links lead to other third party websites, including the websites of some of the Complainant's competitors and other financial services related sites.

16. According to the NameDrive website – see Annex 11 – NameDrive supplies the Respondent (and its other customers) with a free domain parking program, under which NameDrive hosts the Respondent's website and provides targeted advertisement links on the site. The Respondent earns from $0.02 to $2.50 every time someone accesses its website and clicks on one of the links. The website also states that customers can use NameDrive to sell their domain names for a minimum of 6 months revenue. The sale of a "quality typo" generally achieves "6 to 36 months revenue or higher".

17. None of the factors in Policy paragraph 4 apply. In particular:

(a) the Respondent has:

(i) Not used or made demonstrable preparations to use the Domain Name (or a similar domain name) in connection with a genuine offering of goods or services.

(ii) Not been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name.

(iii) Not made legitimate non-commercial or fair use of the Domain Name.

(b) The Domain Name is not generic or descriptive (see above) and the Respondent is not making fair use of it.

ABUSIVE REGISTRATION

18. The above matters demonstrate that the Domain Name was registered and/or has been used in a manner which took unfair advantage of and/or was unfairly detrimental to the Complainant's rights, including on the basis of these factors:

Policy paragraph 3.a.i.A

19. The Respondent has registered the Domain Name primarily for the purpose of selling the Domain Name to the Complainant, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs associated with acquiring the Domain Name. The Domain Name is so close to the distinctive and well-known A&L Marks that it could only be registered and used legitimately with the Complainant's consent. In these circumstances, although the Respondent has so far been careful not to solicit directly a potential sale of the Domain Name to the Complainant, the only credible motive for his actions is that he is hoping to eventually realise a profitable sale to the Complainant or one of its competitors. This is in particular demonstrated by the Respondent's placing of the Domain Name on the NameDrive website, where a "quality typo" can attract substantial revenue (see above).

Policy paragraph 3.a.i.C

20. Further or alternatively, the Respondent has registered the Domain Name for the purpose of unfairly disrupting the business of the Complainant. Internet users who use the Domain Name are bound to do so only because they are seeking to access the Complainant's official website but have misspelled "leicester". In these circumstances, the Respondent's registration and use of the Domain Name is unfairly disruptive, because Internet users who thereby access the Respondent's website will:

(a) believe mistakenly that the website is operated by or otherwise connected with the Complainant, and so will think less of the Complainant because of the unsophisticated nature of the website; and/or

(b) whether or not they conclude that the website is connected with the Complainant, they will have been frustrated in their attempt to access and/or been prevented from accessing the Complainant's services online. Policy paragraph 3.a.ii

21. Members of the public are bound to have been confused into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant, and it should be inferred that they have.

22. Further, confusion is very likely to occur and, although Policy paragraph 3.a.ii refers to actual confusion (as opposed to a likelihood of confusion), the factors in paragraph 3.a are non-exhaustive, and (as has been held in a number of DRS decisions) a likelihood of confusion is also a relevant factor.

23. In particular, confusion is inevitable because:

(a) The Domain Name is nearly identical to the A&L Marks and contains no indication that it is not connected with the Complainant.

(b) The Respondent's website includes links to financial services websites.

(c) The statement "Sponsored Links for Loans" implies that the Complainant has sponsored or is otherwise connected with the Respondent.

(d) The fact that the Domain Name is connected to the NameDrive website, where a "quality typo" can be sold for substantial revenue, and where the Respondent earns up to $2.50 per click, demonstrates that the Respondent must be counting on the fact that users will at the very least initially access his site in the mistaken belief that the Domain Name is connected with the Complainant. Policy paragraph 3.a.iii

24. The Domain Name is also part of a wider pattern of cybersquatting. The Respondent has registered a range of at least 19 additional .uk domain names corresponding to other well-known third party trade marks, set out in Annex 12, including altontower.co.uk, buttlins.co.uk and tescodirect.co.uk.

25. The Respondent's registration and use of these domains names, in which he has no apparent rights, is also abusive. For example, altontower.co.uk and buttlins.co.uk also link to parking webpages containing third party advertising links (see Annex 13).

Other factors

26. The Domain Name has also been registered and used in a manner which took unfair advantage of and/or was unfairly detrimental to the Complainant's rights because:

(a) As long as the Domain Name is in the Respondent's hands, the Complainant has no control over its ownership or use. This is inherently detrimental. In particular, the Complainant is concerned about the risk of confusion on the part of its customers in view of the current surge in Internet "phishing" scams, under which fraudsters attempt to obtain customer bank details through misleading Internet communications. As well as posing a serious consumer risk, phishing presents a serious threat to the Complainant's reputation. Further information about phishing is at Annex 14.

(b) The Complainant supplies sophisticated financial services and the Respondent's activities are tarnishing the allure of its brand and services in view of the unsophisticated nature of the Respondent's website.

(c) The Respondent's registration and use of the Domain Name will dilute the distinctiveness of the A&L Marks.

(d) By incorporating a common misspelling of the Complainant's household A&L Marks, which denote the Complainant and nobody else, the Domain Name misrepresents inherently that it is registered or otherwise connected with the Complainant, and amounts to an instrument of fraud. This is unlawful under UK law – see the Court of Appeal's judgment in BT v. One in a Million (Annex 15, page 18 in particular).

(5) Abusive Registration?

13. I do not find the complaint under Paragraph 3(a)(i)(A) proved on the balance of probabilities. There is no evidence to suggest that the Respondent's primary purpose in registering the name was to sell it to the Complainant or a competitor. It seems to me that the dominant purpose was more likely to generate an income through parking.
14. I do not find the complaint under Paragraph 3(a)(i)(C) proved on the balance of probabilities; again there is no evidence of primary purpose, and I do not see how the registration and parking of this name could seriously have any disruptive effect on the Complainant's business.
15. I do not find the complaint under Paragraph 3(a)(ii) proved on the balance of probabilities, as there is no evidence of actual confusion, which, it seems to me is necessary to bring that paragraph into operation on the true construction of the words of the DRS Policy.
16. However, I am prepared to accept that there is likely to have been some "initial interest confusion", which is a factor which I take into account, although I am not persuaded that that initial interest confusion is of much weight, since, in my view, any consumer who made the necessary typo in order to lead them to the parking site would very quickly be disabused of their initial confusion since there is no use of the easily recognisable get up of the Complainant on the page.
17. These matters aside, it does seem to me that there are sufficient "other factors" which render this registration abusive in the hands of the respondent, and I so find. In particular:

I accept that this domain name must have been registered by the Respondent in full knowledge of, and with the intention of profiting from, the Complainant's goodwill. This is obvious from the similarity of the name, and also from the fact that the Respondent has at least 19 other similar registrations.

There is a clear abuse of goodwill, in that the Respondent gains a fee each time an inadvertent visitor, who must have been seeking the Complainant's site, clicks through to another site.

Most importantly, the use to which the name has been put, i.e. a parking page with advertising links, coupled with the words "Sponsored Links for Loans", gives or is very likely to give, the impression that the Complainant endorses the products on offer from the parking page, which it clearly does not.

I note, from a printout of the website provided by Nominet, that the Respondent has, since the complaint was made, altered the use of the website to link to a new page, which appears to contain links to the Complainant's website, amongst other products, including products in direct competition to those of the Complainant. I have looked at this "new" version, and, whilst it is clear that some of the "buttons" bear the Complainant's registered text marks, clicking through simply leads to further pages of links to other products. In effect, it seems to be "hidden" parking. In my view, this use is in itself abusive, for the reasons set out above, and, moreover, the fact that the Respondent has taken this step seems to me to be tantamount to an admission of abuse by "open parking".

(6) Decision

18. I find that the Complainant has proved on the balance of probabilities that it has rights in the Domain Name and that the registration is abusive in the hands of the Respondent. Accordingly, I direct that the registration be transferred to the Complainant.

KIRSTEN HOUGHTON FCIARB

29^TH MARCH 2006