696
Nominet UK Dispute Resolution Service
DRS 00696
Northern Bank Limited -v- Gortfoyle Developments Ltd
Decision of Independent Expert
1. Parties:
Complainant: Northern Bank Limited
Country: GB
Respondent: Gortfoyle Developments Ltd
Country: GB
2. Domain Name:
The domain name in dispute is northernbank.co.uk
3. Procedural Background:
The Complaint was lodged with Nominet on 15 November 2002. Nominet validated the Complaint and notified the Respondent of the Complaint on 21 November 2002 and informed the Respondent that it had until 13 December 2002 to lodge a Response. A Response was received on 13 December 2002 and forwarded to the Complainant on 16 December 2002 with an invitation to make any further submission in reply to the Response by 23 December 2002. A Reply was received on 19 December 2002. On 16 January 2003, Nominet informed the parties that it had not been possible to achieve a resolution of the dispute by Informal Mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 30 January 2003. On 27 January 2003, the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”)
On 29 January 2003, David King, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties, which might appear to call into question his independence and/or impartiality.
4. Outstanding Formal/Procedural Issues (if any):
None.
5. The Facts
The Complainant is a large retail bank in Northern Ireland with a network of branches, business centres and Automated Teller Machines in the Province. It was established over 178 years ago and is part of the National Australia Bank Group.
A printout of the web-site of the Domain Name, included in the bundle of papers supplied by Nominet to the Expert, shows that the web-site has been “detagged” and is, therefore, unavailable.
The Respondent is unconnected with the Complainant.
On 17 June 1999 the Respondent registered the Domain Name of
northernbank.co.uk. On 7 July 1999, the Complainant’s sister bank
Clydesdale Bank Plc (“Clydesdale”) requested that Nominet act under its
Rules (then in force) in relation to the registration of the Domain Name. At
that time, Nominet had the discretionary power to cancel the registration or
suspend the delegation of the Domain Name under the terms of its contract
with the Respondent. Under the Rules, then in force, Nominet could exercise
it’s discretionary power 1) if the name was being used in manner likely to
cause confusion to Internet users 2) where Nominet had been informed that
legal action had been commenced regarding use of the name or 3) where
Nominet was of the opinion that one of the above events was likely to
occur. On 7 December 1999 Nominet notified Clydesdale of
its decision. In summary, Nominet decided that, as the Domain Name was
not being used at that time, it was not open to Nominet to find that the
Domain Name was being used in a manner likely to cause confusion to
Internet users and there was little evidence as to the proposed nature of any
intended future use of the Domain Name; that no legal action had been
commenced against any party in connection with the registration of the
Domain Name. It was Nominet’s decision not to take any action in this
instance. The Expert has included these details because the parties have
referred to Nominet’s decision of 7 December 1999 in their submissions.
6. The Parties Contentions
Complainant:
The substantive part of the Complaint reads as follows:
“This Complaint is based on the following grounds:
The Complainant’s activities and trading name. The Complainant is the largest retail bank in Northern Ireland with a network of 95 branches, 11 business centres and 200 Automated Teller Machines spread across the province. Established in 1824, Northern Bank Limited is the oldest member of the National Australia Bank Group, a group which is ranked in the world's top 50 banks. Sister companies include National Irish Bank, Yorkshire Bank and Clydesdale Bank in the British Isles, as well as banking operations in North America, Australia, New Zealand and Asia Pacific. The Complainant has a strong position on the market with 2,122 employees and a 37% market share of business accounts in Northern Ireland. Copies of this information are provided as Annex 3.
The complainant’s trademarks The Complainant is the proprietor of the following trademarks: · Community Trademark, Registration No.: 000097022, NORTHERN TAILORING BANKING TO YOUR NEEDS, applied for 1 April 1996 and registered 24 March 1998 for all goods in international class 36. See Annex 4. · Community Trademark, Registration No.:000097055, NORTHERN and N logo, applied for 1 April 1996 and registered 24 March 1998 for all goods in international class 36. See Annex 5. · United Kingdom, Registration No.:2140224, NORTHERN 24 TELEPHONE BANKING (series of 3), applied for 24 July 1997 and registered 21 August 1998 for all goods in classes 16 and 36. See Annex 6. · United Kingdom, Registration No.:1326831, N NORTHERN BANK LIMITED, applied for 13 November 1987 and registered 9 November 1990 for all goods in class 36. See Annex 6. · United Kingdom, Registration No.:1576544, NORTHERN DIRECT, applied for 25 June 1994 and registered 12 January 1996 for all goods in class 36. See Annex 6. · United Kingdom, Registration No.:2002183, N NORTHERN, applied for 10 November 1994 and registered 9 September 1996 for all goods in class 36. See Annex 6. · United Kingdom, Registration No.:2014919, N NORTHERN TAILORING BANKING TO YOUR NEEDS, applied for 22 March 1995 and registered 29 December 1995 for all goods in class 36. See Annex 6. The Complainant also has Rights in respect of the name northernbank due to usage of the name Northern Bank during a period of 178 years. The Complainant’s name and business are very well known and associated with high quality services and goodwill. In the period July 2001 – June 2002, a total of 6025 members of the general public in Northern Ireland were interviewed on a face to face basis by the market research agency Mori MRC, of which 4521, or 75%, spontaneously mentioned Northern Bank as a financial institution operating in Northern Ireland. The Complainant therefore relies upon a common law trademark right to the name in question. A copy of this market research is provided as Annex 7.
The Complainant’s domain names and web sites. The Complainant also uses its trademarked name and logotype in connection with the promotion and marketing of its services on its Internet web sites found at http://www.nbonline.co.uk. Further, the Complainant or National Australia Bank Group is the registrant of 7 domain names identical with the trademark NORTHERN BANK and 5 domain names containing the word NORTHERN. Copies of the printouts of the database searches conducted on 14 October 2002 are provided as Annex 8.
Legal grounds. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name. The Domain Name northernbank.co.uk, registered by the Respondent, is identical or confusingly similar to the Complainant’s trademark Rights. In previous decisions such as DRS 0001, Eli Lilly and Company v. David Clayton, the domain suffix corresponding to the United Kingdom ccTLD has not been considered relevant. The Domain Name is also identical or confusingly similar to a name to which the Complainant has a common law trademark Right. The Domain Name, in the hands of the Respondent, is an Abusive Registration. The Domain Name was registered on behalf of the Respondent on 17 June 1999. The tag holder in respect of the Domain Name at the time of registration was "Xoom". As of the date of today, the Domain Name has been "detagged”. On 7 July 1999, in response to the Respondent’s actions the Complainant requested Nominet to act under its Rules then in force in relation to the registration. At the time of Nominet’s decision, 7 December 1999, the domain name was not being used, and hence, Nominet could not take any action, according to its rules then in force. A copy of Nominet’s decision is provided as Annex 9a. The Respondent is not a licensee, nor in any other way authorized by the Complainant to use the name Northern Bank or to apply for or use any domain name incorporating any of the trademarks held by the Complainant.
According to Article 3(a)(i)(A) of the Policy, a factor which may be evidence that the Domain Name is an Abusive Registration is that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose 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. Previous verbal attempts to sell the Domain Name to the Complainant had been made by the Respondent and 16 January 2001 the Complainant was addressed by email by a relative of the directors of the Respondent, Mr. Gregory McCormick, on behalf of the Respondent, and the Complainant was given an offer to buy the Domain Name for £50.000. (A copy of the Companies Office Search showing that two of the directors of the Respondent are related to Gregory McCormick is enclosed as Annex 9b.) The Complainant declined the offer and in turn offered the amount of £1000 for the Domain Name to cover the Respondent’s out-of-pocket expenses. The Respondent, through Gregory McCormick, rejected this offer on 1 June 2001, and instead threatened to sell the Domain Name to a competitor or put it to auction. The offer of £50.000 clearly exceeds the Respondent’s out-of-pocket expenses directly associated with acquiring or using the Domain Name. A copy of the above-mentioned correspondence by email is provided as Annex 10. The above shows that the Respondent was well aware of the value of the Complainants trademark at the time the registration was made and that the registration was made primarily with the purpose of selling the Domain Name to the Complainant for valuable consideration in excess of out-of-pocket costs directly related to the Domain Name.
As to the opinion of the Complainant, there is no doubt that the Respondent registered the Domain Name specifically with the Complainant in mind. The Respondent claims that the Domain Name was registered in order to promote a sale of property (“land banks”) in the northern part of the country. The Complainant’s view of the matter is that this explanation is a reconstruction after the event to try to justify what is a pure name-napping situation in order to seek financial gain. To use the word “bank” in connection with the promotion of property is most uncommon and by no means a natural expression. The Complainant does not understand how a domain name such as northernbank.co.uk in any way would help promoting a sale of property. On the contrary, this would rather be confusing to potential customers who most certainly would connect the Domain Name with the Complainant’s business and not at all with a sale of land. Somebody interested in acquiring property will not type the keyword “bank” in a search engine, since the word “bank” generally is being understood as a reference to banking and financial services. Further, the Respondent has not acted in any way to develop the registered web site. To the Complainants knowledge, the Domain Name has never been used, which indicates that the single intention of the Respondent was to register the Domain Name in order to sell it to the Complainant or to a competitor of the Complainant. A copy of the printout of the URL search is provided as Annex 11.
Blocking registration. According to Article 3(a)(i)(C) of the Policy, a factor which may be evidence that the Domain Name is an Abusive Registration is that the Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant. At the time of the registration of the Domain Name by the Respondent, Northern Bank Limited was the largest retail bank in Northern Ireland and commonly known by the greater part of the population in Northern Ireland, as shown by the market research agency Mori MRC, provided as Annex 7. It is highly likely that people who are looking for the Complainant’s web site might try the Domain Name as their first guess at the likely address. When customers and potential customers do this, an error message is displayed, (see Annex 11) with no further information as to where to turn. The website visitors cannot easily realise that it is not the Complainant’s website, but may assume that the website is not working. The website visitors may decide not to search further for Northern Bank’s website at www.nbonline.co.uk following this confusion, thereby disrupting the business of the Complainant. Further, the registration stops the Complainant from marketing its business on the Internet and to start its Internet banking activities under a name to which the Complainant has Rights.
The Complainant is aware of that the exact purposes of the Respondent are somewhat subjective and therefore difficult to determine, but it must nevertheless have been clear to the Respondent at the time of the registration that the registration would result in an unfair disruption of the business of the Complainant in said ways. All of this concluded shows that the Domain Name was registered in a way which was unfairly detrimental to the Complainant’s Rights and hence abusive. The Respondent has not used or made demonstrable preparations to use the Domain Name in a connection with a genuine offering of goods or services. The Respondent is not and has not been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name. The Domain Name is neither generic nor descriptive and the Respondent has not made legitimate non-commercial or fair use of the Domain Name. In conclusion, all the above clearly shows that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name northernbank.co.uk and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Complainant therefore requests that the Domain Name be transferred from the Respondent to the Complainant. Respectfully submitted, Northern Bank Limited.”
The Expert confirms that he has read all the documentation annexed to the Complaint.
Respondent:
The Respondent’s response reads as follows:
“I am very disappointed that Complainants have come trying to force Gortfoyle Ltd to give up a domain name that they register through all the proper channels of Nominet.
It was clearly indicated the last time the Complainants contacted Nominet about this that the resolution service granted Gortfoyle as owners of this name as they were not causing any confusion on the Net.
We feel as proper owners of the name that we can decide what we want to do with it in future. When we decide to set up a webpage to advertise our large land bank in Northern Ireland we certainly will not be going out to confuse the public into thinking that we are a Financial service. Gortfoyle are not in business of offering any financial services as the complainants suggest.
In relation to the Complainant’s annex 5 they do seem to have a lot of trade marks registered. Surely from this they should be able to provide a web address which their customers would recognise.
As stated previously we bought the domain name through the proper channels. We feel that we are not causing any confusion to the Complainant’s customers. Should we decide to use the domain name we will certainly not be looking to confuse the web users as we are interested in customers buying land not customers taking use of Financial services.”
Complainant’s reply
The Complainant’s reply to the Respondents’ response reads as follows:
“Re: Case number 00696 In response to Gortfoyle Developments Ltd’s (“the Respondent”) reply, Northern Bank Ltd. (“the Complainant”) would like to state the following: Firstly, even though the Respondent registered the Domain Name “through all the proper channels of Nominet” the registration is still abusive. When the Respondent registered the Domain Name, Nominet did not consider whether the registration violated the trademark Rights or other Rights held by the Complainant since the Respondent in the registration agreement assured that no such Rights would be violated. In this case, the Complainant’s Rights have been infringed, and this is solely the responsibility of the Respondent, not Nominet. Secondly, the Respondent claims that “it was clearly indicated the last time the Complainant contacted Nominet about this that the resolution service granted Gortfoyle as owners of this name as they were not causing any confusion on the Net”. At the time of Nominet’s decision, 7 July 1999, different rules applied. These rules did not make it possible for Nominet to take action against the Respondent, since the rules then in force only applied if a domain name was being used, which was not the case at the time. However, different rules apply today, which enables the Complainant to submit a new complaint. Thirdly, the Complainant’s opinion is still that the Respondent registered the Domain Name with the sole purpose of selling it to the Complainant, a fact to which the Respondent has not made any objections. As to the rest the Complainant refer to the previously submitted complaint. The Complainant requests that the Domain Name be transferred to the Complainant. Since, the Complainant has Rights in respect of a name or mark, which is identical or similar to the Domain Name northernbank.co.uk and that the Domain Name in the hands of the Respondent is an abusive registration. Respectfully submitted Northern Bank Ltd.”
7 Discussion and Findings:
General
This dispute must be decided under the provisions of the Policy now in force.
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it
must prove to the Expert, on the balance of probabilities, both 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 as defined in Paragraph 1 of the Policy.
Complainant’s Rights
The Complainant has asserted that it has rights in a name or mark, which is
identical or similar to the Domain Name. The main issue at this stage is to
establish whether, on the balance of probabilities, the Complainant has rights in respect of the name or mark of northernbank.co.uk. The name “northernbank” is identical to the name in which the Complainant asserts it has Rights. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to discount the domain suffix <co.uk> which is of no relevant significance and wholly generic.
The Complainant has lodged detailed evidence of its trademark rights and the trademark rights of other members of the National Australia Bank Group.
Whilst some of the names might not be considered particularly similar to the Domain Name (for example, “Northern Tailoring Banking to Your Needs”), UK Registration No. 1326831 “N Northern Bank Limited”, which was applied for in 1987 and registered in 1990, is almost identical to the Domain Name. It is also apparent that the Complainant has acquired goodwill in the name “Northern Bank” over a long period of time, which is sufficient to establish Rights under the Policy.
The Expert finds that, for the purposes of the Policy, the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive Registration
Is the Domain Name, in the hands of the Respondent, an Abusive
Registration? Paragraph 1 of the Policy defines “Abusive Registration” as 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 detrimental to the Complainant’s Rights.”
A non-exhaustive list of factors, which may be evidence that a Domain Name is an Abusive Registration, is set out in Paragraph 3 a of the Policy and reads as follows:
“i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A 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 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 primarily 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 In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv It is independently verified that the Respondent has given false contact details to us”
Paragraph 3 b of the Policy provides:
“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”
First the Complainant relies on paragraph 3 a i A. It says that previous verbal
attempts had been made to sell the Domain Name to the Complainant by the
Respondent and that, on 16 January 2001, the Complainant received an e-
mail offering to sell the Domain Name to the Complainant for £50,000. A
copy of the e-mail is attached to the complaint. The e-mail is from Mr
Gregory McCormick who says that, further to a telephone conversation on
January 2001, he has met with the directors of Gortfoyle Developments to
discuss a figure/sum for the Domain Name; that, as explained, they feel that,
if the web address/Internet site was marketed properly, it may be of great
benefit by way of sales to their property land bank in Northern Ireland.
However, at this stage they are willing to listen to offers of around £50,000.
The Complainant rejected this offer and made a counter offer of £1,000. Mr
McCormick replied that there might be a person out on the web who would
have an interest maybe a competitor and that it might be worth putting it to
auction.
In its response to the complaint, the Respondent makes no comment on the
offer to sell the Domain Name to the Complainant. The Respondent gives
little indication as why it registered the Domain Name. It takes the view that,
as proper owners of the name, it can decide what it wants to do with it in
future and refers to the possibility of setting up a web-page to advertise its
large land bank in Northern Ireland. What is clear is that a) the Respondent
chose to register a name which is identical to the name of the Complainant (it
is appropriate to discount the word “Limited” for this purpose), b) the
Respondent is situated in Northern Ireland and, at the time of registration,
must have been aware of the Complainant, which has a large presence in
Northern Ireland. The Expert is not convinced by the Respondent’s stated
intention to use the web-site to market its land bank in Northern Ireland. The
Domain Name does not seem to be ideal for this purpose and, more than
three and a half years after registration, the Respondent has made no use of
the Domain Name. The Expert concludes that, on the balance of
probabilities, the Respondent did register the Domain Name with the
Complainant in mind and that it did so primarily for the purposes of selling it to
the Complainant or 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.
The Expert has also considered the other grounds submitted by the
Complainant and the other factors under the Policy. The Complainant
submits that the Respondent’s registration is blocking it from registering the
Domain Name and that the Respondent registered the Domain Name
primarily for the purpose of unfairly disrupting the business of the
Complainant. This submission relates to two separate factors in paragraph 3
a i B and C No doubt the registration is blocking registration by the
Complainant but that will always be the case in a dispute under the Policy. It
is necessary to establish some deliberate intent on the part of the
Respondent at the time of registration. The Expert prefers to rely on 3 a i A
dealt with above in the circumstances of this case. No evidence has been
produced that the Respondent registered the Domain Name primarily for the
purposes of unfairly disrupting the business of the Complainant and, indeed, it
would appear to be inappropriate to make such a finding as the Expert is
satisfied that, on the balance of probabilities, he has established the primary
intention of the Respondent.
With regard to paragraph 3 a ii, it is necessary to establish that the
Respondent is using the Domain Name in a way which has actually caused
confusion to Internet users. As the Respondent is not using the Domain
Name, no finding can be made under this heading.
Paragraph 3 a iii does not need to be considered in this case as there has
been no suggestion that the Respondent is engaged in a pattern of Abusive
Registrations.
Paragraph 3 a iv does not need to be considered as there is no suggestion
that the Respondent has given false contact details.
Paragraph 3 b provides that “ Failure on the Respondent’s part to use the
Domain Name for the purposes of e-mail of a web-site is not in itself evidence
that the Domain Name is an Abusive Registration”. In the view of the Expert,
non-use of the Domain Name might amount to Abusive Registration if there
are other circumstances, which, combined with non-use, would justify such a
finding of Abusive Registration. The Respondent’s failure to us the Domain
Name reinforces the Expert’s finding under paragraph 3 a i A.
Paragraph 4 a sets out a non-exhaustive list of factors which may be
evidence that the Domain Name is not an Abusive Registration. The only
relevant factor in this case is contained in paragraph 4 a i A, which provides
that, “Before being informed of the Complainant’s dispute, the Respondent
has 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”. Despite the Respondent’s stated
intentions, the Expert does not consider that any evidence has been
produced to show that the Respondent has made demonstrable preparations
to use the Domain Name as envisaged in paragraph 4 a i a.
The other provisions of Paragraph 4 are not relevant in this case and need not be considered in this Decision.
8 Decision
In light of the above findings, namely that the Complainant 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, the Expert directs that the Domain Name be transferred to the Complainant.
David King
10 February 2003