Nominet UK Dispute Resolution Service
DRS Complaint No 03647
Decision of Independent Expert
Complainant: The Edrington Group Limited
Country: GB
Respondent: D Lynch
Country: GB
www.edringtongroup.co.uk
The Complaint was received in full by Nominet on 3 May 2006. The Complaint was validated by Nominet and sent to the Respondent on 4 May 2006. Nominet informed the Respondent that it had 15 working days, i.e. until 26 May 2006, to respond to the Complaint.
By 30 May 2006, no formal Response having been received from the Respondent, Nominet wrote to the Complainant's representative confirming that no Response had been filed and invited the Complainant to request an Expert Decision.
The Complainant paid the fee within the relevant time limit. On 1 June 2006 I was contacted by Nominet and asked to confirm that I was able to provide an Expert Decision. I provided such confirmation on the same day.
On 8 June 2006, the matter was duly referred to me, Simon Chapman, ("the Expert") for an Expert Decision.
Upon inspecting the file of papers forwarded to me by Nominet, it became apparent that the Complainant (or their Authorised Representative) had failed to sign the Compliant. By this omission, the Complainant had failed to comply with paragraph 3 of the Dispute Resolution Procedure ("the Procedure") which obliges Complainant's to conclude the Compliant with specified wording which includes a statement that the information in the Complaint is true and complete to the best of the Complainant's knowledge, with such statement being signed. The inclusion of the specified wording and signature is an important addition to the complaint process. There is little opportunity for experts to test much of the evidence submitted in the dispute resolution process, however the statement and signature imposes an obligation on the Complainant to tell the truth when submitting its evidence. The absence of a signature is therefore not a minor matter, and in my opinion it would be inappropriate for an expert decision to be given without such a signature being provided.
For this reason, I contacted Nominet and advised them that the signature was missing from my copy of the Complaint, and asked them to check their records to see if a signed copy had been received. They confirmed that it had not. I therefore directed pursuant to paragraph 12 of the Procedure that the Complainant should be asked to submit a signed copy of the Complaint within 3 working days of being requested to do so. This should then be forwarded to the Respondent, who should be given 7 working days to submit a Response if he so wished. I would thereafter provide my decision a further 5 working days later (i.e. by 10 July 2006).
A signed copy of the Complaint was provided by the Complainant before the revised deadline. No Response was filed by the Respondent.
From the papers that have been submitted to me by Nominet, it is apparent that they have sent the Complaint to the Respondent by post and e-mail to the contact details held on Nominet's register.
When registering a .uk domain name applicants agree to be bound by Nominet's Terms and Conditions. Clause 4.1 of those terms and conditions states that the registrant of the domain name shall:-
"4.1 give and keep us notified of your correct name, postal address and any phone, fax or e-mail information and those of your contacts (if you appoint any, see condition 5.2). This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register"
In addition paragraph 2(e) of the Procedure states that:-
"e. Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i. if sent by facsimile, on the date transmitted; or
ii. if sent by first class post, on the second Day after posting; or
iii. if sent via the Internet, on the date that the communication was transmitted;
iv. and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly."
In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.
I now move on to consider the consequences of the Respondent not submitting a response.
The Procedure envisages just such a situation and provides in paragraph 15 that:-
"c. If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate."
I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision.
I will draw such inferences from the Respondent's failure to respond as I think appropriate, but must keep in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say.
The Complainant is a major private group in the Scottish whisky industry. The origins of the group date back to the 1850's, and they have been trading under their present name 'The Edrington Group' since 1961. The Complainant asserts that it is commonly known in its industry and by the public under the name 'The Edrington Group', and that as a result it has acquired goodwill in that name and rights arising therefrom. The Complainant has produced evidence by way of marketing materials, Google searches and a Companies House report, which show substantial use of the name 'The Edrington Group'. The Complainant sells a number of well known products including those sold under the following brands:- 'The Famous Grouse', 'The Macallan' and 'Highland Park.
In addition to the above, the Complainant is the registered proprietor of a Community Trade Mark for the word 'EDRINGTON' in Class 33 (alcoholic beverages), which was registered with effect from 8 September 1997.
The Complainant's primary corporate website is located at.
The Domain Name was registered by the Respondent on 16 April 2005. When the Complainant became aware of the Domain Name in April 2006, it resolved to a 'pay-per-click' advertising service offered by a company by the name of SEDO. The website provided links to various websites, all of which were advertising or connected to the whisky industry. None of which on the face of it appear to be operated by the Complainant. The Complainant contacted SEDO prior to the submission of its Complaint, and asked it to withdraw the website. SEDO complied and at the time of the Complaint, the Domain Name does not resolve to any website.
The Complainant wrote to the Respondent prior to instigating its complaint, asserting its rights and requesting that the Respondent transfer the Domain Name. The Respondent declined to do so.
The Parties' Contentions
Complainant
The Complainant asserts that it has Rights in respect of a name and mark which are similar to the Domain Name and the Domain Name in the hands of the Respondent is an "Abusive Registration" (as defined in the DRS Policy).
In support of the claim to Rights, the Complainant says that -
i) it has considerable goodwill in the trading name 'The Edrington Group'; and
ii) it is the registered proprietor of the Community Trade Mark 'EDRINGTON'.
In support of the claim that the Domain Name is an Abusive Registration the Complainant says that -
iii) the Respondent has blocked the Complainant from registering their corporate name in the .uk space;
iv) the Registrant registered the Domain Name to unfairly disrupt the Complainant's business;
v) the Respondent is using the Domain Name in a way that has confused people or businesses;
vi) the Domain Name is part of a pattern of registrations; and
vii) there are no factors showing that the Domain Name is not an Abusive Registration.
Respondent
As indicated above, the Respondent has not filed a Response.
General
To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Dispute Resolution Service Policy ("the Policy"), prove to the Expert on the balance of probabilities that:
(i) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and
(ii) the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).
Despite the absence of a response from the Respondent, the Complainant must make out its case to the Expert on the balance of probabilities. It is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).
Complainant's Rights
The Policy defines Rights as follows –
"Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business"
The Complainant is the proprietor of a Community Trade Mark registration for the word 'EDRINGTON', and has extensively used the name 'The Edrington Group' such that it will have created extensive goodwill therein. It is clear that the Complainant therefore qualifies as having the necessary rights in those marks. The Policy requires such rights to be in a name or mark identical or similar to the Disputed Domain Name. The Domain Name is. For the purpose of analysing whether the Domain Name is identical or similar to the name or mark in which rights are claimed, one must ignore the .co.uk suffix. The comparison is therefore between 'EDRINGTON' and 'The Edrington Group' on the one hand, and 'edringtongroup.co.uk' on the other. Given that the only distinctions between the Domain Name and the mark/name in which rights are claimed, are the additional word 'Group' in the first comparison, and the word 'The' in the second comparison, in my opinion the Complainant has established that it has Rights in a name or mark similar to the disputed Domain Name.
Abusive Registration
I now go on to consider the extent to which the disputed Domain Name is an Abusive Registration.
(a) The Respondent has blocked the Complainant from registering their corporate name in the .uk space
The Complainant asserts that the Respondent has blocked it from registering their corporate name in the .uk space, and supports this assertion by saying that as a UK-based company the most appropriate domain space for the Complainant may be the .uk space. The assertion mirrors the ground set out in paragraph 3(a)(i)(B) of the Dispute Resolution Policy ("the Policy").
The difficulty that I have with this ground of complaint, is that the term "blocking" would suggest that the Complainant has been prevented from gaining access to the internet, or at least its relevant market or audience. In fact the Complainant asserts in the Complaint, when it sets out its claim to Rights, that "the Complainant's primary corporate web site can be found at www.edringtongroup.com". Given that this domain appears to have been registered by the Complainant in 2001 some 5 years before the Complainant became aware of the Respondent's registration of the Domain Name, and that the .com site is claimed by the Complainant to be its "primary corporate web site", I do not think the Complainant can realistically be said to have been blocked. This ground of complaint therefore fails.
(b) The Registrant registered the Domain Name to unfairly disrupt the Complainant's business
It is submitted by the Complainant that the mark 'The Edrington Group', is a significant and important gateway to the Complainant's brand websites. By way of example, the websiteadvertises and links to the online shop at .
The Complainant says that the Respondent's use of the Domain Name, by which it directed users to a website which provided links to websites offering products that competed with those of the Complainant, was an unfair disruption of its business. This ground mirrors that set out in paragraph 3(a)(i)(C) of the Policy.
In my opinion the Complaint on this ground is justified. The Respondent has registered a domain name that is clearly intended to be used by internet users who may be seeking information concerning the Complainant or its products, and is seeking to divert those users to other sites, for the financial gain of the Respondent. I can think of no legitimate reason why the Respondent should wish to register the Domain Name. He clearly understood that the Domain Name would be used by internet users seeking to locate the Complainant, given the nature of the website operated by him under the Domain Name. Given that the Respondent has chosen not to explain his actions, and given my views as to the legitimacy of the registration, I conclude that the Domain Name is an abusive registration under this ground of complaint.
(c) The Respondent is using the Domain Name in a way that has confused people or businesses
Under this ground of complaint, the Complainant asserts that the conduct of the Respondent was such that users of the Domain Name were likely to be mislead into believing that the links on the Respondent's website were affiliated with or endorsed with the Complainant. The Complainant identifies paragraph 3(a)(ii) of the Policy as being an appropriate reference point for this ground of complaint, but acknowledges that there is a distinction between what the Policy requires, namely that confusion "has" arisen (in other words actual confusion), as opposed to that which is available, namely a submission as to the likelihood of confusion. The Complainant acknowledges that its ground of complaint falls outside paragraph 3(a)(ii) of the Policy, but also refers to other decisions made under the DRS where the fact of the Policy being non-exhaustive has been acknowledged, and a finding has been made that a domain name registration is abusive because there is a likelihood of confusion.
In the present circumstances, there is no actual evidence of confusion. However, the use being made of the Domain Name, was such in my opinion, that there was a strong likelihood of at least initial confusion occurring. I therefore find that this ground of complaint succeeds.
(d) The Domain Name is part of a pattern of registrations
The Complainant has identified that the Respondent is the registrant of a large number of domain names (over 1,500), many of which relate to trade marks and names in which the Respondent does not appear to have rights. The Complainant asserts that the registration of the Domain Name as part of this pattern, is such that the registration is an Abusive Registration, and refers to paragraph 3(a)(iii) of the Policy.
Paragraph 3(a)(iii) of the Policy says as follows –
"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"
Amongst the many domain names registered by the Registrant are those for, , , , , , , , and . In my opinion, the Complainant has demonstrated that the Respondent is engaged in a pattern of registrations that fall fowl of the relevant paragraph of the Policy. I believe it reasonable to assume in the absence of any evidence to the contrary, that the Respondent does not have any legitimate reason or right to use the domain names listed. As a result, I find that the registration of the Domain Name is Abusive.
(e) There are no factors showing that the Domain Name is not an Abusive Registration
In addition to the grounds relied upon by the Complainant, it also runs through some of those factors that are listed in paragraph 4 of the Policy as being factors that might be evidence that the Domain Name is not an Abusive Registration. The factors covered by the Complainant are (1) use for a genuine offering of goods/services, (2) the respondent being commonly known by the name, (3) use for a tribute or criticism site; and (4) the Domain Name is generic or descriptive. The Complainant submits that none of the factors apply to the Domain Name. I agree with that submission.
For the reasons set out above, I find that the Complainant does have Rights in respect of a name or mark which is similar to the disputed Domain Name, and that the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds.
The disputed Domain Nameshould be transferred to the Complainant.
Simon Chapman
10 July 2006