Nominet UK Dispute Resolution Service
DRS Complaint No 03716
Decision of Independent Expert
Complainant: Skipton Building Society
Country: GB
Respondent: UK Financial Directory
Country: MY
skiptonintermediaries.co.uk
The Complaint was received in full by Nominet on 31 May 2006. The Complaint was validated by Nominet and sent to the Respondent on 1 June 2006. Nominet informed the Respondent that it had 15 working days, i.e. until 23 June 2006, to respond to the Complaint.
On 22 June 2006, Nominet received an electronic copy of a Response, with a hard copy being received on 26 June 2006. The Response was forwarded to the Complainant on 26 June 2006, and Nominet informed the Complainant that it had until 3 July 2006 to file a Reply.
The Complainant filed a Reply on 3 July 2006.
Informal Mediation followed but no resolution of the Complaint was possible. As it was not possible to resolve the Complaint, Nominet wrote to the Complainant confirming that no Response had been filed and invited the Complainant to request an Expert Decision, requesting that it pay the requisite fee on or before 7 August 2006.
The Complainant paid the fee within the relevant time limit and the matter was duly referred to me, Simon Chapman, ("the Expert") for an Expert Decision, 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.
The Response has been completed by Mr Chris Holland of CHC Internet, who asserts that he is the "Authorised Representative" of the Respondent, and has signed the Declaration at the end of the Response on the Respondent's behalf. Notwithstanding his position as representative, the Response is written in the first person, which seems curious.
Nominet served the Complaint on the Respondent by post, and email to the addresses set out in the Registrant's details on their records. I am satisfied therefore that Nominet has done everything it should have done to bring the Complaint to the attention of the Respondent.
On 6 June 2006, Nominet received an email from a gentleman by the name of Bill Richards, who purported to be writing on behalf of 'Specname'. The email was in response to the earlier email sent by Nominet to the Registrant's email address, and was sent from that same email address. The email said that "We have retained Chris Holland of CHC Internet to handle this case and he will be responding and conducting the case on our behalf". This email had little impact until after the exchange of statements of case, when Nominet realised that the email referred to above, was form 'Specname' rather than the Registrant of the domain 'UK Directory'. As a result, Nominet sent an email to Mr Richards on 1 August 2006 to the same address asking him to confirm that Specname was properly connected to the Registrant, and explaining that without clarification the Response may not be valid. This email failed to be delivered, and the present position is that no confirmation has been given as to Specname's status, or that of Chris Holland or CHC Internet.
As a result of the above circumstances I have to determine whether the Response is indeed valid. In my opinion the Response has been served properly on the Respondent and as a result, I believe that the Declaration contained in the Response stands scrutiny. In that Declaration, Mr Holland asserts that he is the authorised representative of the Respondent, and I see no reason to ignore that assertion. To the best of my knowledge, many complaints are made by authorised representatives, and I am unaware that any efforts are usually made to verify the appointment of those representatives. If the email from Mr Richards of Specname had not been received, the issue would simply not have arisen, and although it is unfortunate that no response was received from him once Nominet queried the position, I do not think that this undermines the validity of the Response.
It is therefore my opinion that the Response shall stand, and there is no administrative defect in the statements of case of either party or the Complaint process.
The Complainant is a UK financial institution, which trades under the brand 'SKIPTON'. It is the 7th largest building society in the UK, with 79 branches and assets of over £8.6bn. As well as the Skipton Building Society, it has a number of incorporated subsidiaries which also trade under the 'SKIPTON' brand. It has traded under the Skipton name since 1853.
It first registered a trademark for the word 'SKIPTON' in 1987, and has referred me to a UK registration No 1292804 in Class 36 for various financial services. The registration is stated to only apply to the relevant services beyond a 50 mile radius of Skipton (a town in Yorkshire).
The Complainant has invested significant sums of money on promoting its services under the 'SKIPTON' mark, and spent £2.3m doing so in 2004.
The Complainant relies heavily on introduced business, which made up 70% of its mortgage lending in 2005, when £1.1bn was introduced through intermediaries. The Complainant operates its own web presence directed at intermediaries located at, which it registered in February 2003.
The Respondent operates a network of information portals that provide access to information. They registered the Domain Name in June 2005 and it is directed to a website which provides links to third party websites that appear to provide services identical to or similar to those provided by the Complainant. Some of the links are titled 'Skipton Mortgages', 'Skipton Building Society' or the like, and these link through to a page of further links all of which are directed to third party sites, none of which appear to be associated with the Complainant.
The Respondent's domain name has been listed on third party websites (and ) as a contact under descriptions of the Complainant's products. It is unclear why this happened, or who is responsible for the listing.
On 29 July 2005, the Complainant wrote to the Respondent, sending the correspondence by both mail and email to the contact details on Nominet's whois records, setting out details of its rights and complaining about the registration of the Domain Name and demanding that it be transferred to the Complainant. The email was returned as undeliverable. No response was received to that correspondence. The Respondent denies having received any such correspondence.
Complaint
The Complainant asserts that it has Rights in respect of a name and mark which are identical or 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) The Respondent is the registered proprietor of a UK Trade Mark.
ii) The Respondent has legally protectable rights in its reputation and goodwill in the UK through the tort of passing off.
iii) Its name is protected by Section 107(1) of the Building Societies Act 1986, which prohibits the use of a building society's name or indications of a connection other than in certain circumstances.
In support of the claim that the Domain Name is an Abusive Registration the Complainant says that -
iv) The Respondent has no legitimate interest in the Domain Name, as it has no business interest in or geographical connection with the Skipton area and is not authorised by the Complainant.
v) The Respondent has no bona fide intention of using the Domain Name. It is not making real and fair use of the Domain Name and its use will mislead the public, tarnish the Complainant's reputation and be detrimental to its business.
vi) The Domain Name is misleading and it is unclear who owns the site that it is directed to.
Response
The Respondent denies that the Complainant has Rights in the Domain Name or that the registration of the Domain Name is Abusive.
In support of its claim that the Complainant does not have rights, the Respondent says that –
i) The Complainant does not have any trade mark registrations for the term 'Skipton Intermediaries'.
ii) The Complainant's registration of the word 'SKIPTON' does not allow them to protect words, phrases or expressions containing that word under the Dispute Resolution Policy ("the Policy"), even by the "most biased corporate intellectual property solicitor".
In support of the claim that the Domain Name is not an Abusive Registration the Complainant says that -
iii) The domain names used by it are generic names that are wholly descriptive of the geographical location and genre of the product or services being referenced, for example; and .
iv) The Respondent had never heard of the Complainant.
v) The Respondent has not purchased the domain name with the intent of selling it to the Complainant.
vi) The Complaint has been brought in bad faith in an attempt to steal the domain from the Respondent.
Reply
The Complainant says the following –
i) The Respondent must have been aware of the Complainant given the references to the Complainant on the home page of the Respondent's website.
ii) The Complainant denies that it is attempting to hijack the Domain Name and says that (a) it made efforts to contact the Respondent before instigating the Complaint, (b) was using the domain namesome 2 years before the Respondent registered the Domain Name, and (c) that the Domain Name incorporates its registered trade mark, and is the same as its un-registered trade mark 'SKIPTON INTERMEDIARIES', which the Complainant has used since July 1992.
General
To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of 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 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).
Complainant's Rights
Does the Complainant have 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"
It is clear to me that the Complainant has extensive rights in the word 'SKIPTON' arising from its trade mark registration, and the goodwill that it has generated in that word. It has also generated goodwill from its use of the words 'SKIPTON INTERMEDIARIES'. In addition and by virtue of the statutory protection afforded by the Building Societies Act 1986, the entitlement of a third party to hold itself out as being connected with the Complaint is restricted, such that in my opinion the Complainant has 'Rights' as defined in the Policy to prevent the unauthorised use of any description that would suggest a connection with Skipton Building Society.
Insofar as the Domain Name consists of the word 'SKIPTON' with the addition of the descriptive word 'INTERMEDIARIES', I am satisfied that the Complainant has proven that it does have Rights in respect of a mark identical or similar to the Domain Name.
Abusive Registration
I now go on to consider the extent to which the Domain Name is an Abusive Registration.
The Policy defines an Abusive Registration as a domain name that –
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.
The Policy contains a non-exhaustive list of factors that may be evidence that the Domain Name is an Abusive Registration. The Complainant does not make its Complaint by reference to these specific factors, but rather by reference to more general factors, namely
- no legitimate interest in the Domain Name
- no bona fide intention of using the Domain Name, and no real and fair use
- the Domain Name is misleading.
On the evidence that I have seen, it is clear to me that the Domain Name was registered by the Respondent with the likely intention that it would generate traffic to its website from internet users that were seeking to locate information or services relating to the Complainant. The Respondent has asserted that it registers "generic names that are wholly descriptive of the geographical location and genre of the product or service being referenced…". It seems to me that this explanation with regard to the Domain Name in dispute is wholly incredible. There seems little likelihood that anyone would use or combine the words 'SKIPTON' and 'INTERMEDIARIES' unless it was intended that by doing so they would be referencing the Complainant. In addition, the homepage of the Respondent s website specifically references the Complainant and the whole nature of the website is related to identifying services that are identical or similar to those provided by the Complainant.
Notwithstanding the representations of the Respondent, I have little doubt that the purpose of the Respondent's registration of the Domain Name was to take advantage of the Complainant's reputation and goodwill, and to divert the Complainant's customers or parties interested in the Complainant to the Respondent' site, and from their drive that 'traffic' to third party sites, presumably for the financial benefit of the Respondent.
It is my view that such an activity falls squarely within the definition of an Abusive Registration.
For the reasons set out above, I find that the Complainant does have Rights in respect of a name or mark which is similar or identical 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.
As described above, there was some uncertainty over whether the authorised representative of the Respondent, Mr Chris Holland of CHC Internet, was properly authorised by the Registrant of the Domain Name.
To recap, the Registrant is UK Financial Directory, which purports to be based in Malaysia. Authority for Mr Holland to act was received from Mr Richards of Specname which gave no address details. CHC Internet give their address details in the Response as being in the US. When Specname was asked by Nominet to clarify the position between Specname and UK Financial Directory, no response was forthcoming.
In a previous complaint in which I gave an expert decision (dispute number 03214 relating to), Mr Holland of CHC Internet was identified in that complaint as the registrant's agent. His address at that time was in Manchester. In fact CHC Internet had been the registrant of the disputed domain in that complaint, although the domain was transferred to the respondent to that complaint shortly after the complainant threatened CHC Internet.
The complainant in those proceedings identified Mr Holland and CHC Internet as being the registrant of over 4,000 domain registrations, several of which incorporated famous trade marks belonging to third parties.
It seems to me to be highly likely that UK Financial Directory, Specname and Mr Holland/CHC Internet, are closely related parties, if not the same party. I am also aware that Mr Holland purported to act as agent for the Respondent in dispute number 01869 relating to the domain.
I make the observations above, not because they had any effect on the decision that I reached in the present Complaint because the Complainant provided no evidence of their previous activities, but simply to share my concern that there is a reasonable likelihood that there is a registrant or registrants of domain names that appear to be engaged in the activity of registering domain names incorporating well know trade marks, and which are seemingly attempting to distance themselves from previous adverse decisions against them, no doubt in order to avoid the consequences of being found to be a serial registrant of abusive registrations.
I would like to think that the same conclusion would be reached by anyone with sound judgement, and not only 'biased corporate intellectual property solicitors'.
Simon Chapman
10 August 2006