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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Coutts & Company v Adams [2007] DRS 4288 (28 January 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4288.html Cite as: [2007] DRS 4288

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Nominet UK Dispute Resolution Service

DRS 04288

Coutts & Company v Kevin Adams

Decision of Independent Expert

1. Parties

Complainant: Coutts & Company

Country: United Kingdom

Respondent: Kevin Adams

Country: United Kingdom

2. Domain Name

coutts.co.uk ("the domain name")

3. Procedural Background

On 13 December 2006 Nominet received hard copy of the complaint dated 11 December and checked that it complied with the Nominet Dispute Resolution Service Policy ("the Policy") and Procedure ("the Procedure"). The complaint was supported by material in a series of annexes:

A information about the Complainant from its website at coutts.com and the website of the Royal Bank of Scotland Group (to which the Complainant belongs) at rbs.com

B information about the Complainant from the website at Companies House

C printouts showing the Complainant's registrations for its 'Coutts' mark with the UK Patent Office and the EU Office for Harmonization in the Internal Market

D a listing of the Complainant's worldwide registrations and trademark applications for its 'Coutts' and related marks

E WHOIS registry information for coutts.com, coutts.eu, couttsandcompany.co.uk, couttsandcompany.com and coutts-and-co.co.uk

F printouts from the website to which the coutts.co.uk domain name resolved on 27 November 2006 and from some of the webpages to which the site offered links

G WHOIS registry information for coutts.co.uk

H a printout of email correspondence between the Respondent and Stephen Wilde

I a printout from the website to which the coutts.co.uk domain name resolved at 24 May 2006

J printouts of WHOIS registry information for arup.co.uk, audiotek.co.uk, colourtech.co.uk, compucentre.co.uk, comsec.co.uk, icnet.co.uk and themusicstore.co.uk as well as printouts from the websites to which these domain names resolve

Nominet notified the Respondent of the complaint on 13 December and informed him that he had 15 working days within which to lodge a response. No response was received. Informal mediation not being possible, on 10 January 2007 Nominet notified the parties that an expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 11 January.

On 15 January I, Mark de Brunner, agreed to serve as an expert under Nominet's Dispute Resolution Policy and Procedure. I confirmed that I am independent of each of the parties and that there are no facts or circumstances that might call into question my independence.

4. Outstanding Formal/Procedural Issues

There are no outstanding formal or procedural issues.

5. The Facts

I have visited the Respondent's website at coutts.co.uk and the Complainant's websites at coutts.com, coutts.eu, couttsandcompany.co.uk, couttsandcompany.com and coutts-and-co.co.uk. From those visits and the complaint I accept the following as facts.

The Complainant traces its roots back to 1692 and was incorporated in 1892. It joined the Royal Bank of Scotland Group in 2000 as part of NatWest (Annexes A and B). Coutts is the Royal Bank of Scotland's private banking arm, providing financial services to nearly 100,000 clients worldwide. It has numerous registrations worldwide for 'Coutts' and related marks (Annexes C and D) and it has registered the domain names coutts.com, coutts.eu, couttsandcompany.co.uk, couttsandcompany.com and coutts-and-co.co.uk (Annex E).

The Respondent registered the domain name at issue on 6 October 2005 (Annex G). For at least seven months from then it resolved to a webpage displaying simply the name '100 Acre Design' and the email address [email protected] (Annex I).

In February 2006 one of the Complainant's customers, Stephen Wilde, used the email address to ask whether the domain name was for sale and, if it was, the price. The Respondent replied a few days later in the following terms:

The domain www.coutts.co.uk was recently purchased for a customer who wishes to set up their business online, however we would be willing to accept an offer of £15,000 or very near this figure to transfer the name. I expect this is way beyond your budget but should this be of interest please let us know and we can proceed from there. (Annex H)

No negotiations were entered into.

By November 2006 the domain name resolved to a directory site containing links to various providers of financial services (Annex F).

The Respondent has registered other domain names, invariably resolving to directory sites, as follows (Annex J):

Domain name	Links	Registered
comsec.co.uk	camera and video	9 August 2005
colourtech.co.uk	interior design and decoration	22 August 2005
compucentre.co.uk	miscellaneous, from computers to car rental	21 September 2005
themusicstore.co.uk	music and ringtone downloads	9 December 2005
audiotek.co.uk	miscellaneous	11 December 2005
icnet.co.uk	healthcare	14 December 2005
arup.co.uk	miscellaneous	28 December 2005

6. The Parties' Contentions

Complainant

The Complainant says that it has rights in respect of a name which is identical to the domain name.

It says the domain name is an abusive registration because

(i) in drawing internet traffic to the Complainant's competitors, the Respondent's use of the domain name is causing unfair disruption to the Complainant's business

(ii) internet users will be confused into thinking that the domain name is connected with the Complainant

(iii) the Respondent registered the domain name in order to sell it for more than his out-of-pocket costs

(iv) the Respondent's stated reason for registering the domain name (bought for a customer wishing to set up its business online) is implausible, given the length of time it remained effectively unused

(v) the Respondent has registered 'dozens' of domain names resolving to similar directory sites

Respondent

There has been no reply.

7. Discussion and Findings:

General

To succeed in this complaint the Complainant must prove, on the balance of probabilities, that

- it has rights in respect of a name or mark which is identical or similar to the domain name; and that

- the domain name, in the hands of the Respondent, is an abusive registration.

Approach where there has been no reply

There is a long-established approach to be taken by experts in cases where there is no reply to a complaint. The Complainant must make out at least a prima facie case that the domain name is an abusive registration. Such a case demands a reply. If there is no reply, the complaint will ordinarily succeed. The question therefore becomes whether the Complainant has established a prima facie case.

Complainant's Rights

The Complainant's use of the name 'Coutts' is long established, as well as being recognised in a series of trademark registrations and applications worldwide. It clearly has both registered and unregistered rights in the name 'Coutts'.

Ignoring the .co.uk suffix as simply a characteristic of the Nominet registry, the domain name is 'coutts'. The host name element of a web address is not case sensitive so, in this context, 'Coutts' and 'coutts' are identical.

I conclude that the Complainant has rights in respect of a name which is identical to the domain name.

Abusive Registration

The Dispute Resolution Service rules define an abusive registration as a domain name which either

- 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

- has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.

The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. These factors include circumstances indicating that the Respondent

- registered the domain name primarily for the purpose of unfairly disrupting the business of the Complainant

- 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

- registered the domain name primarily 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 expenses directly associated with acquiring or using the domain name

These are three of the Complainant's main claims. The first and third of them turn on the Respondent's motive in registering the domain name. Direct evidence of motive is usually hard to come by. Here the Respondent says he acquired the domain name for a customer wanting to create an online presence. The Complainant argues that this is unlikely, given that the domain name pointed merely to a 'parking' page for seven months, and that the email address on the page itself ([email protected]) implied that the domain name was for sale. It is not self-evident to me that the gap of seven months is inconsistent with the Respondent's explanation, nor does it seem to me possible to draw any sure conclusions from the nature of the email address appearing on the webpage.

The Complainant is on firmer ground with a more direct claim that the domain name must have been registered in order unfairly to disrupt its business. Given the Complainant's rights and the absence of any obvious legitimate reason for the Respondent's registering a domain name identical to the name in which the Complainant has those rights, it seems to me reasonable to infer that the aim was disruption to the Complainant's business. That reasoning is supported by the use to which the domain name has been put, in resolving to a directory site of links to competitors of the Complainant. Such disruption can only have been unfair.

No evidence of confusion is offered, but the list of factors in the Policy is not exhaustive, the likelihood of confusion appears to me a highly relevant consideration and the potential for such confusion – both before and after internet users arrive at the page of links - seems very great. In my judgement, visitors to the Respondent's website are likely to be confused into believing that the domain name is in some way connected with the Complainant.

By contrast, the Respondent's response to an unsolicited enquiry about whether the domain name was for sale seems singularly inconclusive. The question was asked and a price was named. The figure suggested may well have exceeded the Respondent's costs in acquiring or using the domain name, but it does not follow that the Respondent must therefore have set out to make a profit in this way. The bald facts seem to me to cast no light on the character of the registration.

The Complainant argues, finally, that the Respondent has registered many other domain names on a similar basis. This recalls another of the factors mentioned in the Policy as possible evidence that a domain name is an abusive registration:

where the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of the domain names…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

The other registrations to which the Complainant draws attention may constitute a pattern, but there is no evidence before me that the domain names in point correspond to well known names or marks and I draw no conclusion from the possibility.

The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration, but none of them applies here.

The Complainant seems to me to have a strong claim that the domain name was registered in order unfairly to disrupt its business and that people will have been confused into thinking that the Complainant is somehow connected to the domain name. At the very least, the Complainant has made out a prima facie case that the domain name was registered and has been used in a manner that takes unfair advantage of its rights. That case demands an answer. In the absence of an answer, the Complainant's case succeeds.

8. Decision

I find that the Complainant has rights in respect of a name which is identical to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.

In the light of that, I direct that the domain name be transferred to the Complainant.

Mark de Brunner

28 January 2007