Nominet UK Dispute Resolution Service

Nominet UK Dispute Resolution Service DRS 3291 National Westminster Bank Plc v. Harry Planet Decision of Independent Expert
1. Parties

Complainant: National Westminster Bank Plc

Country: GB

Respondent: Harry Planet

Country: GB

2. Domain Name

The domain names in dispute are ntawest.co.uk, natwext.co.uk and nawtest.co.uk ("the Domain Names").

3. Procedural Background
3.1      The Complaint was received in full (including annexes) by Nominet on 16 January 2006. Nominet validated the Complaint and sent a copy to the Respondent on 20 January 2006, informing the Respondent that he had until 13 February 2006 to lodge a Response.
3.2      Since no Response was received by the deadline (or at all), the dispute did not proceed to Informal Mediation. On 20 February 2006 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the Nominet UK Dispute Resolution Service ("DRS") Policy ("the Policy").
3.3      Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and 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, Nominet appointed me as Expert on 20 February 2006.
4. Outstanding Formal/Procedural Issues (if any)
4.1      Since the Respondent has not submitted a Response, I have checked the Complaint file to determine whether there are any exceptional circumstances which should lead to my taking any action other than proceeding to a decision, pursuant to paragraph 15(b) of the DRS Procedure ("the Procedure"). In particular, I have looked at the methods used to notify the Respondent of the Complaint.
4.2      The details in Nominet's database entry for the Registrant and Administrative Contact for all of the Domain Names are inter alia as follows:

Registrant: Harry Planet

Contact: Keith Szlamp

Address: 2nd Floor

43 Market Street

Hoylake

Wirral

CH47 2BG

Country: GB

Email: keith@szlamp.com

The WHOIS search result for the Domain Name also names Harry Planet as the Registrant and Keith Szlamp (t/a NUKES) as his Agent, but gives no contact details for the Registrant on the basis that he is a non-trading individual who has opted to have his address omitted from the WHOIS service.

4.3      On the face of the Complaint, the Complainant has used a slightly different address for the Respondent, as follows:

Respondent: Harry Planet, c/o Keith Szlamp

Address: The Old Bank, The Quadrant

Hoylake

Wirral

Merseyside

Postcode: CH47 2EE

4.4      From the Complaint file, it appears that Nominet attempted to notify the Respondent of the Complaint by the following means:

i. by e-mail to keith@szlamp.com (the e-mail address in Nominet's database entry for the Domain Name) and to postmaster@ntawest.co.uk, postmaster@natwext.co.uk postmaster@nawtest.co.uk (in accordance with paragraph 2(a)(ii) of the Procedure); and

ii. by post to the postal address given for the Respondent in Nominet's database entry and to the postal address given on the face of the Complaint.

4.5      These are almost all of the various appropriate means of communicating the Complaint to the Respondent which are provided for in paragraph 2(a) of the DRS Procedure, and any one of them should have been sufficient.
4.6      The file reveals that Nominet received automatic delivery failure reports in respect of all of the e-mails, with the message: "Unknown address error…sorry, that domain isn't in my list of allowed rcpthosts". However, the letters sent by post were not returned.
4.7      Nominet quite correctly used the details that had been provided by the Respondent on registration of the Domain Name (among other contact details). Pursuant to Nominet's standard form registration contract, the Respondent will have agreed to keep Nominet informed of its correct contact details. In these circumstances, it is appropriate that Nominet should take the contact details at face value. I therefore proceed to decide this case on the basis that the Respondent has been properly notified of the Complaint and, if he has not, he has only himself to blame.
5. The Facts
5.1      The Complainant is a well-known English public limited company which provides banking and other financial services to individuals and businesses. The Complainant operated under the name "National Westminster Bank" from about 1970, and in the 1990s adopted the abbreviated name "NatWest" under which it still operates. In 2000, the Complainant was acquired by the Royal Bank of Scotland Group, which is the fifth-largest financial services group in the world.
5.2      The Complainant operates its business through bank branches and through a website found at www.natwest.com. The Complainant is the registrant of the domain name natwest.co.uk and The Royal Bank of Scotland PLC is the registrant of the domain name natwest.com, both of which point to the Complainant's website. The Complainant is the registered proprietor of various UK registrations for the trade mark "NatWest" in respect of inter alia financial services.
5.3      The Respondent is an individual calling himself Harry Planet, who has a contact address in the UK. Little is known about the Respondent from the file, except that he is the registrant of over 200 .co.uk domain names, registered on 20 September 2004 and 19 September 2005, including several (particularly those registered on the later date) that are close variants of trade marks and trading names of well-known entities.
5.4      The Respondent registered the Domain Names on 19 September 2005. The Domain Names resolve to websites at the web addresses www.ntawest.co.uk, www.natwext.co.uk and www.nawtest.co.uk respectively, which list and promote the products and services of a range of financial services companies other than the Complainant, and which appear to be operated by a company called Pocket Lolly Limited.
6. The Parties' Contentions

Complainant

6.1      The Complainant's contentions can be summarised as follows:

(1) The Complainant has rights in respect of the "NatWest" name and trade marks.

(2) The Domain Names are similar to the Complainant's "NatWest" name and trade marks and to its natwest.co.uk domain name.

(3) The Respondent has no apparent rights to the "NatWest" name.

(4) The Domain Names, in the hands of the Respondent, are Abusive Registrations because they were registered in a manner that, at the time the registrations took place, took unfair advantage of and were unfairly detrimental to NatWest's rights and because the Domain Names have been used in a manner that takes unfair advantage of and is unfairly detrimental to NatWest's rights.

(5) The Domain Names threaten to disrupt the Complainant's business by improperly directing current and prospective customers to the Complainant's competitors.

(6) The Respondent is using the Domain Names in a way that has confused people into believing, and has the potential to confuse people into believing, that the Domain Names are registered to the Complainant, are operated or authorised by the Complainant, or are otherwise connected with the Complainant.

(7) The Respondent is engaged in a pattern of registrations of domain names corresponding to well-known names and trade marks in which the Respondent has no apparent rights.

6.2      I have read the detail of these contentions as set out in the Complaint, as well as the supporting evidence, and I shall refer to such detail and evidence which I take into account in my discussion and findings below.

Respondent

6.3      The Respondent has not filed a Response.
7. Discussion and Findings:

General

7.1      Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:

i. it 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 (as defined in paragraph 1 of the Policy).

7.2      In the absence of a Response from the Respondent, I must consider whether the Complainant has established a prima facie case.

Complainant's Rights

7.3      Under paragraph 1 of the Policy, "Rights includes, but is not limited to, rights enforceable under English law". Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off in the United Kingdom and similar rights in jurisdictions elsewhere.
7.4      The Complainant clearly has UK registered trade mark rights in respect of the name "NatWest", which directly cover inter alia financial services and which pre-date the Domain Names.
7.5      It is also clear that, through its extensive use of the name "NatWest" in connection with its financial services business, which includes banking services (high street and on-line), mortgage-related services, loan services and the provision of other financial products, the Complainant has built up a substantial goodwill in relation to such services, such that it could rely on the common law of passing off in the UK to prevent the unauthorised use of the "NatWest" name in relation to banking and other financial services. It is also likely to have similar common law or unregistered trade mark and/or unfair competition rights in other jurisdictions. These rights all pre-date the Domain Names.
7.6      Ignoring the suffix .co.uk, the "NatWest" name and mark is very similar to each of the Domain Names. Specifically:

(1) in relation to ntawest.co.uk, "ntawest" is identical to "NatWest" except that the adjacent letter "t" and "a" have been transposed;

(2) in relation to nawtest.co.uk, "nawtest" is identical to "NatWest" except that the adjacent letters "t" and "w" have been transposed; and

(3) in relation to natwext.co.uk, "natwext" is identical to "NatWest" except that the latter "s" has been replaced by the letter "x" (which, as the Complainant points out, is immediately below the "s" on a computer keyboard).

7.7      The first limb of the test in paragraph 2 of the Policy is therefore satisfied.

Abusive Registration

7.8      Paragraph 1 of the Policy defines an "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 unfairly detrimental to the Complainant's Rights."

7.9      I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.
7.1     0 Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are brought into play by the Complainant are as follows:

"3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

(A) …(B)…; 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;..."

7.1     1 Starting with paragraph 3(a)(i)(C), the Respondent is using the Domain Names to point to websites which contain directories of and advertising for financial products and services offered by competitors of the Complainant. These websites are all branded "Pocket Lolly". The Respondent appears to be taking advantage of the fact that users of the internet sometimes make typographic or keystroke errors when they type in their target web address or keyword search. His aim is that anyone who mis-types the Complainant's web address into an address field will be directed to the relevant Pocket Lolly website rather than to the Complainant's website.
7.1     2 Does this have the purpose or effect of unfairly disrupting the Complainant's business? The Complainant has not provided any evidence of actual disruption to its business, or even evidence of diversion of business. Indeed, one would expect that most internet users searching for the Complainant's website would immediately realise that they had made a mistake when they arrived at the Pocket Lolly website and would re-type the desired address. However, it is at least arguable that the user would stop to have a look at what is on offer on the Pocket Lolly website and decide to look into an offer advertised there rather than continuing with its search for the Complainant's website. This could at least in theory result in a lost customer to the Complainant.
7.1     3 As far as paragraph 3(a)(ii) is concerned, the Complainant argues that an internet user who arrives at the Pocket Lolly website, having originally set out to visit the Complainant's website, might not realise that he had made an error and would therefore be confused into believing that it was the Complainant's website. This may seem unlikely for anyone who is already aware of the Complainant's financial offering, but is not wholly improbable for a newcomer to the field of financial services. Furthermore, as argued by the Complainant, even if a user realises that he is not at the Complainant's official website, he could still be confused into believing that the Complainant was still in some way associated with the Domain Names. In the absence of an explanation from the Respondent as to why this is not the case, I accept that there is a prima facie case for the potential for confusion.
7.1     4 As to 3(a)(iii), as I mentioned above, the Respondent is the registrant of over 200 .co.uk domain names, including several that are close variants of trade marks and trading names of well-known trading entities. In a similar vein to the domain names in this case, these domain names tend to differ from the known names by the swapping around of pairs of letters or the substitution of a single letter by another letter or digit that is close by on the computer keyboard, or other variations reflecting typical typographic errors. Examples include: ba4clays.co.uk and bafclays.co.uk (for "Barclays"), balifax.co.uk and halivax.co.uk) (for "Halifax"), lloydstssb.co.uk and lloydstsg.co.uk (for "LloydsTSB") and sainsburyz.co.uk and sainsgurys.co.uk (for "Sainsburys"). (I should add that these may not all still be live registrations.)
7.1     5 There is no reason to believe that the Respondent has any rights or legitimate connection with any of the entities or brands concerned and therefore I conclude that the Respondent's registration and use of the Domain Names in this case is part of a pattern of registration of domain names corresponding to well known names or trade marks in which the Respondent has no apparent rights.
7.1     6 As evidence of bad faith on the part of the Respondent, I rely on the fact that he has taken advantage of the option offered by Nominet for his contact details to be kept confidential. This option is only available to non-trading individuals. Given the Respondent's obvious connection with the Pocket Lolly websites, which are active websites that must generate click-through and/or advertising revenue, he must have made a false statement in order to take advantage of the exemption from publication.
7.1     7 I have considered whether there are any factors in the Respondent's favour which demonstrate that the Domain Names are not Abusive Registrations, some examples of which are given in paragraph 4 of the Policy. The Respondent has not submitted a Response, and therefore I have no explanation from its side as to any justification for adopting the Domain Names. However, there is nothing in the circumstances of which I am aware which assists the Respondent under paragraph 4 or otherwise.
7.1     8 In all the circumstances set out above, I conclude that both limbs of the definition of "Abusive Registration" are satisfied in this case.

Presumption of Abusive Registration in Future Cases

7.1     9 Paragraph 3(c) of the Policy provides that there shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three or more DRS cases in the two years before the Complaint was filed.
7.2     0 The Complainant drew my attention to an earlier DRS decision against Mr Keith Szlamp, who is named as the agent and administrative contact for the Respondent in this case. This was the case of Whittard of Chelsea Plc v Keith Szlamp (DRS no. 02297), involving the domain name whitards.co.uk (incorporating an obvious mis-spelling of the "Whittards" brand name), which pointed to a "Pocket Lolly" website that contained links to other pages. I have also found another case against Keith Szlamp, The Carphone Warehouse Ltd v Keith Szlamp (DRS no. 02974) in respect of the domain name carfonewharehouse.co.uk, which again diverted internet users to a website offering information about competing goods and services to those of the complainant in that case. The experts in both of those cases found that the domain names were Abusive Registrations.
7.2     1 The Complainant in this case submitted a printout of domain names that have in the past been registered by Keith Szlamp. These were all in the .com domain rather than .co.uk. However, I believe that it is relevant background that Keith Szlamp has previously registered as domain names a number of variants on the name "LloydsTSB", being the name of a substantial and well-known UK bank, including llodystsb.com and looydstsb.com.
7.2     2 There is a clear link between the two mentioned DRS cases and the current case, as well as between Keith Szlamp and the Respondent in this case. The cases also all appear to be linked to the activities of Pocket Lolly Limited, which is likely to be the ultimate beneficiary of the Abusive Registrations through click-through revenue created from the visits to its websites. The links that are evident are as follows:

(1) Keith Szlamp is named as the Respondent's Contact in Nominet's records and as his Agent in the WHOIS records.

(2) The address given for the Respondent in Nominet's records is that of Keith Szlamp.

(3) At the bottom of the front page of the websites to which the Domain Names point appears the following text: "Copyright © 2004 Pocket Lolly Ltd. The Pocket Lolly™
 


(4) Logotype and Caricature [Harry Planet] are Trademarks of Pocket Lolly Ltd".

(5) According to a company search printout provided to me by Nominet, Keith Szlamp is a director of Pocket Polly Limited and was from 21 June 2004 until 30 November 2005 the company secretary. The address listed for Mr Szlamp during the time that he was company secretary was the same address as that in Nominet's records for the Respondent. (Mr Szlamp now lists another address in Hoylake, Merseyside.)

7.2     3 I am unable in the context of this case to make any further investigations or findings on the evidence as to the identity of the Respondent. However, I draw attention to the reference to "Harry Planet" in sub-paragraph (3) above, which I take as an indication that the name of the caricature who appears on each of the websites under discussion (a cartoon depiction of a boy holding a lolly) is "Harry Planet". I leave Nominet and other readers to draw their own conclusions as to whether Harry Planet is a real person. He may be.
7.2     4 In my opinion, this case and the two previous cases mentioned above should be taken together to raise a presumption under paragraph 3(c) of the Policy that, in future cases (within the time period specified) where a Complainant establishes that it has rights in a name or mark that is identical or similar to a domain name registered by Keith Szlamp or Harry Planet, either as Registrant or as main contact, the domain name is an Abusive Registration.
7.2     5 Based on the links that I have identified above, I also suggest that, although the strict requirements of the presumption may not be met in the case of other domain names registered by Pocket Lolly Limited or by anyone else who operates out of the address of Pocket Lolly Limited or is otherwise clearly connected with the company or its websites, any such registrations should be regarded with a particularly cynical eye where a Complainant establishes that it has relevant rights.
8. Decision

I find that the Complainant has Rights in respect of a name and mark which is similar to each of the Domain Names and that the Domain Names, in the hands of the Respondent, are all Abusive Registrations. I therefore direct that the Domain Names ntawest.co.uk, natwext.co.uk and nawtest.co.uk should be transferred to the Complainant.

Anna Carboni

7 March 2006