Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 3280 Alliance & Leicester plc V Paul's Cameras
Decision of Independent Expert
1. PARTIES

Complainant: Alliance & Leicester plc

Respondent: Paul's Cameras

Country: UK

2. DOMAIN NAME

allianceandleicesterbankplc.co.uk (the "Domain Name")

3. PROCEDURAL BACKGROUND
3.1      A Complaint in respect of the Domain Name under Nominet UK's Dispute Resolution Service Policy (the "Policy") was received from the Complainant on 12 January 2006. Nominet forwarded the Complaint to the Respondent. No Response was received.
3.2      The dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Procedure (the "Procedure") on 24 February 2006. I was appointed as Independent Expert on 2 March 2006 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
4. OUTSTANDING FORMAL/PROCEDURAL ISSUES (IF ANY)
4.1      Under Paragraph 5a of the Procedure the Respondent was required to submit a Response to the Complaint to Nominet by 14 February 2006. The Respondent has failed to do so.
4.2      Paragraph 15b of the Procedure provides as follows: "If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint".
4.3      It is the view of the Expert that there are no exceptional circumstances. The proceedings have been communicated to the Respondent and the Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.
4.4      The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties' submissions (which consists of the Complaint and its Annexes in this case) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as he considers appropriate (paragraph 15c of the Procedure).
5. THE FACTS
5.1      The Complainant is an extremely well known UK financial institution. For present purposes the decision in DRS 1918 summarises sufficiently its nature:

"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. The Complainant supplies a broad range of financial services to personal and commercial customers under the A&L Marks, including through the Internet. Its aggregate operating income for 2001 to 2003 was approximately £3,990 million. The Complainant has around 5.5 million personal customers. ALLIANCE & LEICESTER is a household name in financial services and the Complainant advertises its services widely through the Internet, direct marketing and TV. The Complainant's advertising expenditure for 2003 was approximately £46 million. The ALLIANCE & LEICESTER brand has been awarded "Superbrand Status" by The Brand Council. The Complainant owns at least 41 UK, 4 European Community and 11 other national, including 2 Australian, trade mark registrations for the A&L Marks."

5.2      The Domain Name was registered on 25 May 2004. The Respondent is unconnected with the Complainant. The Domain Name is currently used as part of the url for an "under construction" web site. No response has been received from the Respondent to correspondence from the Complainant's solicitors.
5.3      The Complaint also establishes that the Respondent has registered a number of other domain names associated with financial institutions, such as natwestbankplc.co.uk, abbeynationalbankplc.co.uk, halifaxbankplc.co.uk and lloydsbankplc.co.uk.
5.4      The term "A&L Marks" is used by the Complainant to refer to the various registered and pending trade mark applications it owns for the words Alliance & Leicester and variations thereof. It is used in this sense below.
5.5      The precise legal nature of the Respondent is unclear.
6. THE PARTIES' CONTENTIONS

Complainant

6.1      The Complaint sets out a comprehensive list of points as to the Respondent's activities. These are summarised below.
6.2      The A&L Marks are nearly identical to the Domain Name.
6.3      The dominant element of the domain name allianceandleicesterbankplc is "allianceandleicester". This is identical to the Complainant's famous trade mark. The additional words "bank" and "plc" do nothing to distinguish the Domain Name from the A&L Marks. The word "bank" is descriptive of the Complainant's banking services. The word "plc" is also descriptive and renders the Domain Name identical to the Complainant's corporate name, Alliance & Leicester Plc (with the exception of the added descriptive word "bank"). The use of the descriptive word "and" instead 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 and an ampersand cannot be included in a domain name. The sub-domain .co.uk should also be disregarded.
6.4      The Respondent must have been aware of the Complainant's rights in the marks when it registered the Domain Name because 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 and the Respondent must have been aware of the A&L Marks as a result of the marks' fame, including on the Internet.

Respondent

6.5      As indicated above no response has been filed.
7. DISCUSSION AND FINDINGS:

General

Discussion and Findings

7.1      The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that:

(a) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(b) the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

7.2      "Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law." The Complainant is the proprietor of the A & L Marks. I am also satisfied that it has very substantial goodwill and reputation in the name Alliance & Leicester as a result of its trading activities over many years.
7.3      The Domain Name is clearly similar to the name in which the Complainant has rights. The substitution of "and" for an ampersand and the addition of the generic terms "bank" and "plc" do not remove the similarity.
7.4      Accordingly I find that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Names.

Abusive Registration

7.5      Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:

(a) 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

(b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

7.6      A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy. These include 3(a)(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".
7.7      There is no obvious reason why the Respondent should have any legitimate interest in any name involving a variation of the extremely well known and distinctive combination "Alliance & Leicester". The Respondent is clearly engaging in a pattern of such registrations (see paragraph 5.3 above). In the absence of a Response from the Respondent its reasons for its doing so must remain a matter of inference. It is entirely reasonable in these circumstances to infer that it did so in the hope that the Complainant would pay an amount in excess of the Respondent's costs in order to gain control of a domain name naturally associated with the Complainant, not the Respondent.
7.8      In the circumstances, I consider that the Domain Name was registered 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. The Domain Name, in the hands of the Respondent, is therefore an Abusive Registrations.
8. DECISION

Accordingly, I find that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration. I therefore determine that the Domain Name be transferred to the Complainant.

………………………………

Nick Gardner

9 March 2006