Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service
DRS No. 03836
AER ARANN -V- ROBERT MORRISON trading as DHG
Decision of Independent Expert
1. Parties

Complainant: Aer Arann

Country: Ireland

Respondent: Robert Morrison trading as DHG

Country: Australia

2. Domain Names

aerarann.co.uk

aeraran.co.uk

(referred to as the "Domain Names").

3. Procedural Background

The Complaint was submitted to Nominet on 14 July 2006 and hard copies of the Complaint were received in full by Nominet on 31 July 2006. On 1 August 2006, the Complaint was validated by Nominet. On the same day, the Complaint was sent to the Respondent, by post, to a Post Office box address in Australia provided in the WHOIS information and by e-mail. The Respondent was informed that it had 15 working days, that is, until 23 August 2006, in which to respond to the Complaint.

The Respondent did not file a response and so mediation was not possible. On 29 August 2006, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").

On 5 September 2005, Nominet wrote to the parties regarding the appointment of an expert. Antony Gold, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept Nominet's invitation to him to act as an Expert in this case although the Expert said that his firm had previously encountered a Robert Morrison based in Australia in the course of a domain name dispute. The Complainant and the Respondent were given until 4.00pm on Wednesday 6 September 2006 to notify Nominet if either party had an objection to Antony Gold being appointed as the Expert. No such notification was received.

On 5 September 2006, the Respondent replied to Nominet by e-mail stating that he had sought to transfer the Domain Names as part of a mass transfer to a third party which had not been effected due to a delay on the part of this other party. On 6 September 2006, Nominet replied to the Respondent explaining that, pursuant to paragraph 13 of the Policy, a Respondent may not transfer a domain name whilst a Dispute Resolution Service ("DRS") case is live and that, accordingly, the Respondent remained the registrant of the Domain Names. The Respondent replied on 6th September indicating that he had no interest in the Domain Names. His response is set out more fully in Section 6 below. The Respondent made no formal response to, and raised no challenge to, any of the facts and statements submitted by the Complainant in the Complaint other than the comments he made in e-mail correspondence with Nominet on 5 and 6 September 2006.

Nominet sent transfer forms by e-mail to the Respondent on 6th September with a deadline for completion by the Respondent of 12.00pm on 7 September 2006. The transfer forms were not returned and no further correspondence was received from the Respondent.

On 11 September 2006, Antony Gold, was appointed as the Expert.

In summary, then, the Respondent is not objecting to the Complainant's request for transfer but, for the reasons outlined above, it has been necessary to proceed with and determine the Complaint.

4. Outstanding Formal/Procedural Issues

There are e-mail delivery failure reports on file, generated in connection with Nominet's attempts to notify the Respondent of the Complaint. Experts in previous DRS decisions, including Harry Corry Limited -v- Robert Morrison (DRS 03028) and Sheet Music Direct Limited v Robert Morrison (DRS 03408), have previously considered the appropriate course to take in these circumstances.

The decisions referred to above draw attention to the fact that those registering domain names with Nominet agree to keep Nominet up to date with their contact details. The Dispute Resolution Service Procedure ("the Procedure") states that Nominet will send a Complaint using, at their discretion, a range of means including:

(i) e-mail to the Respondent at the contact details shown as the registrant or other contacts in the domain name register database entry for the domain name in dispute.

(ii) e-mail to postmaster@

Nominet sent the Complaint and subsequent correspondence regarding the appointment of an expert by mail to the postal address held on file for the Respondent and sent copies of this correspondence to admin@melitaweb.net and toscawan@mailpace.com (e-mail addresses for the Respondent held on Nominet's records) and also to postmaster@aeraarann.co.uk and postmaster@aeraran.co.uk. The e-mail addresses postmaster@aerarann.co.uk and postmaster@aeraran.co.uk recorded delivery failure. Given that:

(i) it is the Respondent's obligation to keep his contact details with Nominet up to date;

(ii) the postal communications sent to the Respondent's postal address were not returned; and

(iii) the Respondent clearly received an email sent by Nominet via the e-mail address admin@melitaweb.net as he telephoned Nominet in response to it

the Expert is satisfied that Nominet did what it could to notify the Respondent of the Complaint and matters relating to it.

No response

The Respondent failed to submit a formal response to Nominet within the time stipulated in paragraph 5a of the Nominet UK Dispute Resolution Service Procedure (the "Procedure"). Paragraph 15b of the Procedure states that where a party (in the absence of exceptional circumstances) does not comply with any time period laid down in the Policy or the Procedure, the Expert will decide the dispute based upon the Complaint. Paragraph 15c of the Procedure states that if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or the Procedure, the Expert will draw such inferences from the party's non-compliance as he or she considers appropriate. The Expert is not aware of any exceptional circumstances. In the circumstances, the Complainant's assertions of fact are unchallenged by the Respondent and have been accepted by the Expert unless otherwise indicated.

5. The Facts

The Complainant is registered at the Company's Registration Office in Ireland under the name Comhfhorbairt Gaillimh and was incorporated on 15 May 1969. The Complainant trades under the name AER ARANN and has done so since 1970.

The Complainant operates an airline across routes in Ireland, the United Kingdom and France and carried over one million passengers in 2005. Information supplied by the Complainant shows that it employs 376 people and operates over 500 flights per week. In February 1998, Aer Arann established a base at Dublin Airport and now has bases in Dublin, Galway, Cork and the Isle of Man. The Complainant operates a website located at www.aerarann.com. Bookings for flights can be made through travel agents and on-line through the Complainant's website.

Figures supplied by the Complainant show its turnover to be in excess of 94 million Euros. Advertising spend since 1970 amounts to about £10 million.

The Complainant is the registered proprietor of a number of stylised marks in Ireland for the word AER ARANN.

The Complainant asserts that since 2003 (and although not stated, presumably only until 22 July 2005 when the Respondent registered the Domain Names), the Complainant traded via a website located at www.aerarann.co.uk which it used to sell tickets for Aer Arann flights. No documentary evidence has been supplied to support this assertion.

The Domain Names at issue were both registered on 22 July 2005. The Domain Names both resolve to directory pages headed respectively "aerarann.co.uk" and "aeraran.co.uk" with the sub-title "Sponsored Links for Travel Ireland". The page on both websites contains links to other businesses which appear to be travel companies offering flights and accommodation both to and within Ireland.

From the WHOIS records, the Domain Names were registered by Robert Morrison trading as DHG.

6. The Parties' Contentions

Complainant:

The Complainant's submissions may be summarised as follows:

The Complainant has Rights in the Domain Names arising from the following:

(i) the Complainant has traded under the name AER ARANN since 1970 and has expended considerable amounts of money in advertising the brand;

(ii) it has registered trade marks in Ireland corresponding to the word AER ARANN. This is evidenced by various copy trade mark registration details which were appended to the Complaint;

(iii) the Complainant has passing off rights in the Domain Names by virtue of its reputation in the names arising through its marketing and sales via the aerarann.co.uk domain name which it previously used (and presumably also through marketing and sales via its existing website located at www.aerarann.com although this is not asserted); and

(iv) the Complainant does not have a relationship with the Respondent.

The Domain Names in the hands of the Respondent are Abusive Registrations because:

(i) they were primarily registered for the purposes of selling, renting or otherwise transferring them to the Complainant for a price greater than the Respondent's costs and as the Domain Names are so particular and specific to the Complainant, they should not be used by any entity other than the Complainant. The Complainant has not approached the Respondent to purchase the domain name aerarann.co.uk (under which the Complainant previously traded) because it believes that the registration is Abusive. Given the obvious value of the Domain Name in monetary terms to the Complainant, it believes that it may be charged an exorbitant price for the transfer;

(ii) the Domain Names were registered by the Respondent to stop the Complainant re-registering aerarann.co.uk despite its rights in the name AERARANN which the Complainant asserts it has had since 1969;

(iii) the Domain Names were registered to unfairly disrupt the Complainant's business because it needs its UK website to enable passengers to book flights and to become aware of the Complainant's existence insofar as they are not already aware of it. The Complainant is prevented from developing its existing UK and European customers because it does not have this Domain Name;

(iv) the Domain Names are used by the Respondent in a way which has already confused people into believing that the Domain Names were controlled by the Complainant given its reference to cheap flights and other travel deals. The Complainant asserts that it has had many enquiries from passengers about the website, presumably the websites to which the Domain Names resolve although no evidence of customer confusion was submitted with the Complaint;

(v) the Respondent has engaged in a pattern of registrations of domain names which correspond to trade marks or other well known names in which the Respondent has no apparent interest. As such, the Complainant contends that the Domain Names in the hands of the Respondent are automatically abusive because the registrant has had three or more DRS cases against him in the last two years in which Experts have found Abusive Registration. Abusive cases in which the Respondent has been involved include case numbers DRS 03408, DRS 03035, DRS 03028, DRS 03021 and DRS 02775. Given the abusive history of the Respondent, the Domain Names were deliberately registered to unfairly disrupt their businesses, which are entirely dependent upon the customer using the correct domain name. The Complainant contends that the Respondent's registrations has and will continue to damage the Complainant financially.

Respondent:

As indicated above, the Respondent has made no formal response to, and raised no challenge to, any of the facts and statements submitted by the Complainant in the Complaint. In response to Nominet's e-mail of 5 September 2006 informing the parties of its intention to appoint Antony Gold as the Expert, the Respondent replied by asserting the following:

(i) that the Domain Names are nothing to do with him;

(ii) that he does not live in Australia;

(iii) he has not had control of these Domain Names for a long time; and

(iv) the tag was changed and the new owner has taken many months to complete the mass transfer forms.

7. Discussion and Findings

In order to succeed, 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 Names (paragraph 2 (a)(i) of the Policy); and

(ii) the Domain Names in the hands of the Respondent constitute an Abusive Registration (paragraph 2 (a)(ii) of the Policy).

The Complainant's Rights:

The definition of "Rights" for the purposes of the Policy covers rights including but not limited to rights enforceable under English law.

In the light of the evidence provided of trade mark registrations coupled with evidence of the extensive promotion it has undertaken, the Expert is satisfied that the Complainant has rights in AER ARANN and AER ARAN.

The question of whether the name Aer Arann is identical to or similar to each of the Domain names is not dealt with in the Complaint. However, the Expert accepts that the words AER ARANN are identical and similar to the names AER ARANN and AER ARRAN respectively. Ignoring the "co" and "uk" suffixes (as generic features of the Domain Name Registry itself). The requirements of paragraph 2 (a) i of the Policy are accordingly satisfied.

Abusive Registration:

The Dispute Resolution Service rules 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.

The Policy contains a non-exhaustive list of factors which may be evidence that the Domain Names amount to an Abusive Registration.

(i) In this Complaint, the Complainant relies upon paragraph 3(a) of the Policy which provide a non-exhaustive list of factors which might indicate that a Registration is Abusive.

In addition, the Complainant relies upon paragraph 3(c) of the Policy which states 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 (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4(c))".

In support of this contention, the Complainant refers the Expert to Sheet Music Direct Limited v Robert Morrison (DRS 03408) [decided 20 March 2006]; Search Press Limited v Robert Morrison (DRS 3035) [decided 6 December 2005]; Harry Corry Limited v Robert Morrison (DRS 3028) [decided 26 November 2005]; Lintran v Robert Morrison (DRS 3021) [decided 6 December 2005]; and Guilbert UK Holdings Limited v Robert Morrison (DRS 2775) [decided 5 September 2005].

Having considered these decisions, the Expert is satisfied that each decision related to the Respondent in this Complaint. Accordingly, in the absence of evidence to the contrary submitted by the Respondent, the Expert finds there to be a presumption of an Abusive Registration. Further, in the light of the evidence submitted by the Complainant, the Expert concludes that on the balance of probabilities the Domain Names were registered or acquired and are being used in a manner which amounts to an Abusive Registration.

8. Decision

The Complainant has Rights in respect of the name AER ARANN which is identical and similar respectively to the Domain Names aerarann.co.uk and aeraran.co.uk and the Domain Names in the hands of the Respondent are an Abusive Registration.

In the light of the above, the Expert directs that the Domain Names be transferred to the Complainant.

Antony Gold

27th September 2006