Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 03811

Decision of Independent Expert

1. Parties

Complainant: National Counties Building Society

Country: United Kingdom

Respondent: Owen Webster

Country: Lebanon

2. Domain Name

(the "Domain Name")

3. Procedural Background

The complaint of the Complainant was entered in the Nominet system on 5 July 2006. Nominet validated the complaint on the same day and dispatched a copy of the complaint to the Respondent. No response was received from Respondent by the due date of 28 July 2006. On 28 July Nominet wrote to both parties indicating that no response had been received. On 1 August 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (the "Policy").

On 2 August 2006 Nominet invited Christopher Gibson to act as Expert in the case. The undersigned (the "Expert") has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know 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 undersigned was appointed as Expert in this case on 2 August 2006.

4. Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). Paragraph 15b of the Procedure provides, inter alia, that "[i]f, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or the Procedure, the Expert will proceed to a Decision on the complaint."

There is no evidence before the Expert to indicate the presence of exceptional circumstances. Nominet has attempted to communicate the complaint to the Respondent by email and post. The efforts made by Nominet are in accordance with the Procedure and accordingly, the Expert will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.

Paragraph 15c of the Procedure provides that "i]f, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure . . ., 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 in this case and so will draw inferences as appropriate.

5. The Facts

The Complainant, National Counties Building Society, is one of the UK's oldest building societies, tracing its origins to 1896 when it was incorporated under the name The Fourth Post Office Mutual Building Society. In 1946 "Mutual" was deleted from the name, and in 1965 the Complainant changed its name to National Post Office Building Society. Finally, in 1972 the Complainant changed its name to National Counties Building Society, the name under which it trades to this day. The Complainant supplies a range of mortgage and savings products to personal and commercial customers under the name National Counties Building Society. The Complainant operates a web site at http://www.ncbs.co.uk (this domain name was registered in December 1996).

From the WHOIS records, the Domain Name was registered for Owen Webster on 20 July 2005. The Complainant submitted documentary evidence to show that, at the time of the Complaint, the URL www.nationalcountiesbuildingsociety.co.uk resolved to a web page containing links to third party websites, including the websites of some of the Complainant's competitors and other financial services websites (the Expert visited this web site to confirm this point).

6. The Parties' Contentions

Complainant

The substance of the Complainant's contentions are stated in its Complaint: The Complainant has rights in respect of a name which is identical to the Domain Name, and the Domain Name in the hands of the Respondent is an Abusive Registration because:

(i) by virtue of its established presence over a number of decades in the financial services markets and its longstanding commitment to the provision of quality competitive products and services, the Complainant has built up substantial goodwill in its name, National Counties Building Society;

(ii) the Respondent is not connected to the Complainant in any way, and there is no obvious reason why the Respondent should have any legitimate interest in the name used in the Domain Name;

(iii) the Respondent must have been aware of the Complainant's rights in the name when it registered the Domain Name because the combination of the words "National" and "Counties" is unusual and it is not credible that the Complainant came up with the Domain Name independently;

(iv) use of the Domain Name by the Respondent is unlawful, comprising a breach of Section 107 of the Building Societies Act 1986 which provides that "[n]o person carrying on in the United Kingdom a business of any description shall, unless that person is a building society, use any name or in any other way so describe himself or hold himself out so as to indicate, or reasonably be understood to indicate - (a) that he is a building society, (b) that he, or his business, is connected with one or more building societies, or (c) that he, or his business, is connected with building societies generally." Complainant contends that, by the use of the description "building society" combined with the .co.uk appendage, the Respondent is holding himself out as a UK based building society, which is a breach of Section 107 of the Building Societies Act 1986 and indicative of bad faith;

(v) The Complainant has written to the Respondent requesting that he desist from his use of the Domain Name but no response has been received. In the absence of any response from the Respondent, the Complainant submits that it is reasonable to infer the Domain Name was registered 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;

(vi) The Domain Name was registered for the purpose of unfairly disrupting the business of the Complainant. The web site associated with the Domain Name points to a page containing links to third party websites, including the websites of some of the Complainant's competitors and other financial services websites. This is likely to confuse potential customers of the Complainant. Alternatively, the users may have been frustrated in their attempt to access and/or have been prevented from accessing the Complainant's genuine website, thereby detrimentally affecting the Complainant's business. While the Complainant does not have documentary evidence of such actual confusion, it states that members of its staff have taken telephone calls from customers who have reported that they have accessed the Domain Name mistakenly believing it to be that of the Complainant and asking staff for the correct domain name;

(vii) the Domain Name connects to a domain name parking page on the website of the third party Sedo. The website is headed with the Domain Name, followed by the statement "Sponsored Links for Loans", and contains links to other sites including the websites of some of the Complainant's competitors and other financial services websites. Complainant alleges that this gives or is very likely to give the impression that the Complainant endorses the products on offer from the parking page, which it does not. According to the Sedo website (www.sedo.co.uk), Sedo supplies the Respondent and its other customers with a free domain parking program, under which Sedo hosts the Respondent's website and provides targeted advertisement links on the site. The Respondent earns up to 1.50 Euros every time someone accesses his website and clicks on one of the links. The Complainant alleges that this is a clear abuse of goodwill, in that the Respondent gains a fee each time an inadvertent visitor, who must have been seeking the Complainant's site, clicks through to another site.

With the exception of providing documentary evidence of actual confusion (as noted above), the Complainant has supported the above contentions with appropriate documentary evidence.

Respondent

The Respondent has not responded, and therefore has raised no challenge to any of the facts and statements submitted by the Complainant.

7. Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present:

i. the Complainant 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.

Complainant's Rights

The Complainant has established that it has rights in its name, National Counties Building Society. These rights arise not only from the company registration and operation of a building society in accordance with English law, but also from widespread use of the name in commerce in the United Kingdom for more than 30 years. These rights also pre-date the registration of the Domain Name by the Respondent by more than 30 years. In these circumstances, and without any challenge by the Respondent, the Complainant's submissions are sufficient to establish a basic claim to common law rights in the name National Counties Building Society as a company name and unregistered trade mark. In addition, the substantive part of the Domain Name contains letters identical to the Complainant's name. The Domain Name is therefore identical to a name in which the Complainant has Rights. The Complainant has established the first element of the test in paragraph 2(a) of the DRS Policy.

Abusive Registration

As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS 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 unfairly detrimental to the Complainant's Rights."

The DRS Policy, in paragraph 3(a), includes a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. Those most relevant to the Complainant's contentions are included below:

"i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A. 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;

* * * *

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."

The Expert has seen no evidence to indicate that the Respondent would have any rights in, or legitimate connection with, the Domain Name to justify its registration in July 2005 or use since that time. The Expert weighs the uncontradicted allegations of the Complainant that use of the description "building society" in the Domain Name may be a violation of Section 107 of the Building Societies Act 1986 and indicates bad faith. Such a contention, along with the others made by the Complainant, invites a serious response but the Respondent has provided none. The evidence shows that the Domain Name has been used to redirect Internet users to a web "parking" page containing links which permit users to click-through to other web sites offering competing financial services. In using the Domain Name in this manner, it would appear that the Respondent is, and was at the time he registered the Domain Name, aware of the Complainant's name and wanted to trade on the Complainant's reputation and goodwill. The Expert is of the view that the registration of the Domain Name, which is identical to the well-known name of the Complainant, and the use of that Domain Name with a view to commercial gain through a web site linking to competing web sites, takes unfair advantage of or is unfairly detrimental to the Complainant's Rights.

Accordingly, the Expert finds, on the balance of the probabilities, that the Domain Name in the hands of the Respondent is an Abusive Registration.

8. Decision

The Expert finds that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the disputed Domain Name, , be transferred to the Complainant.

Christopher Gibson

21 August 2006