Nominet UK Dispute Resolution Service

 


NOMINET UK DISPUTE RESOLUTION SERVICE

DRS 03912

DECISION OF INDEPENDENT EXPERT

Jaguar Cars Limited –v- Keith Szlamp

1. Parties

Complainant : Jaguar Cars Limited

Country : GB


Respondent : Keith Szlamp

Country : GB

2. The Domain Name

wwwjaguar.co.uk

3. Procedural Background

3.1 On 9 August 2006 the Complaint was lodged with Nominet in accordance with the Nominet Dispute Resolution Service Policy (the "Policy"). Hard copies of the Complaint and its attachments were received in full by Nominet on 11 August 2006.

3.2 On 11 August 2006 Nominet validated the Complaint. On the same day it sent a copy of the Complaint to the Respondent, and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service ("the Procedure") had been invoked and allowed the Respondent 15 working days within which to respond to the Complaint.

3.3 By 6 September 2006 no Response had been received from the Respondent by Nominet and the Complainant was advised accordingly. 

3.4 On 11 September 2006 the relevant fee was received by Nominet from the Complainant in order for the matter to be referred to an independent expert for a decision.

3.5 On 11 September 2006 Bob Elliott was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the Procedure.

4. Outstanding Formal/Procedural Issues

4.1 None.

5. The Facts

5.1 The Complainant is a world famous car manufacturer, information about which can be found on its website at www.jaguar.co.uk.

5.2 The JAGUAR mark has been amongst the most well-known in the United Kingdom for many decades, and the Complainant spends millions of pounds per year promoting its trade marks. As a result, the JAGUAR name is a household name, and is amongst the Complainant's most valued assets.

5.3 The Complainant has developed substantial reputation and goodwill in its trade marks as a result of their extensive use in the car industry and related goods and services. It owns numerous famous trade marks registered worldwide and in the United Kingdom, details of some of which are attached to its Complaint. Those marks include the JAGUAR word mark in classes 12, 36 and 37.

5.4 The Respondent is a director of a company called Pocket Lolly Limited, a UK registered company under number 5159113.

5.5 The website attached to the Domain Name features a copyright notice at the bottom of the main page "copyright © 2004 Pocket Lolly Limited" and has a particular Pocket Lolly branded get-up. The website is a portal featuring links to websites that offer goods and services related to, and in many cases competing with, those of the Complainant. By way of example, the link entitled "Jaguars for Sale" is a link to the website www.carsbymail.co.uk, with a search facility for old Jaguar cars for sale. The link entitled "Jaguar" is to the website at www.carcraft.co.uk, to a page detailing search results for the Jaguar S-type car.

5.6 The website attached to the Domain Name does not, however, include a link to the Complainant's main official website at www.jaguar.co.uk.

5.7 The Respondent registered the Domain Name on 7 June 2005. The Complainant first became aware of the registration in September 2005, when it was contacted by a member of the public, pointing out to it that the Domain Name had been registered by a third party and was currently being used.

5.8 A cease and desist letter was sent from the Complainant's solicitors to the Respondent on 5 December 2005. No response was received. A further letter was sent on 21 December 2005. This was followed up by a telephone enquiry, which was answered by a recorded message, stating that 2Catchafly Limited was now in charge of the Respondent's Domain Names. A further telephone number for 2Catchafly Limited was provided. On ringing that number, the Complainant's solicitors were informed that 2Catchafly Limited had taken over a number of Domain Names from Keith Szlamp, the Respondent. However, the list of those Domain Names did not include the Domain Name.

5.9 A director of 2Catchafly Limited, Geraldine Robinson, is also a director of Pocket Lolly Limited.

5.10 A final warning letter was sent on 13 April 2006 from the Complainant's solicitors to the Respondent, but again no response was received.

6. The Parties' Contentions

Complainant's Submissions

Rights

6.1 The Complainant asserts that it has that it has registered and common law trade mark rights in the JAGUAR mark, which is identical and/or similar to the Domain Name. The Complainant refers to the previous decision of a Nominet Expert in DRS Complaint number 03306, wwwdorothyperkins.co.uk, to the effect that domain names which include the "www" characters (a generic reference to the World Wide Web) plus a word, are indistinguishable from the word on its own, and that on that basis the Domain Name is identical to JAGUAR.

Abusive Registration

6.2 The Complainant relies upon four of the illustrative heads set out in paragraph 3 of the Policy which may be evidence that the Domain Name is an Abusive Registration.

6.3 In relation to paragraph 3.a.i.B (blocking registrations), the Complainant merely asserts without elaboration that the Domain Name has been registered as a blocking registration against a mark in which the Complainant has rights.

6.4 In relation to paragraph 3.a.i.C (unfair disruption of business), the Complainant states that the Respondent has registered the Domain Name to unfairly disrupt its business, by incorporating the JAGUAR mark with the generic characters "www" descriptive of the Internet, in the Domain Name. The Complainant relies upon initial interest confusion, even though users searching for the Complainant's website and finding the Respondent's website instead will be disabused upon reviewing the latter.

6.5 In relation to paragraph 3.a.ii (confusion), the Complainant says that the Respondent has registered the Domain Name to attract Internet users who mistype the Complainant's website URL by omitting the "." (full stop) after the generic "www" characters. The Complainant believes that the Respondent generates income from the sponsored links featured on its website, and is free-riding on the coat-tails of its goodwill, for commercial gain. The Complainant asserts that the Respondent has registered the Domain Name and is using the attached website in a way which is likely to confuse people or businesses into believing that it is authorised by or otherwise connected with the Complainant, when this is not the case. The Complainant believes that there will have been numerous instances of confusion (including the individual who first drew the registration of the Domain Name to its attention).

6.6 In relation to paragraph 3.a.iii (pattern of registrations) the Complainant asserts that the Respondent is engaged in a pattern of registering a multitude of domain names which incorporate famous and mis-spelled trade marks. It refers to two previous Nominet DRS Decisions involving the Respondent, DRS Complaint number 02297 whitards.co.uk and Complaint number 02974 carfonewharehouse.co.uk. In both cases the Domain Names were transferred to the respective Complainants. The Domain Names in those cases were also attached to websites featuring the Pocket Lolly get-up. The Complainant also refers to the Respondent being the current owner of the Domain Name "llodystsb.com" (which is a deliberate mis-spelling of the well known UK bank, Lloyds TSB).

6.7 The Complainant also asserts that the use of the Domain Name is not in connection with a genuine offering of services, and cannot be generic, descriptive or fair. There is no legitimate connection with it or its marks, and there is no legitimate non-commercial or fair use, given that the Domain Name has been used for commercial gain by obtaining revenue from the sponsored links featured on its website.

6.8 The Complainant requests that the Domain Name is transferred to itself.

Respondent's Submissions

6.9 The Respondent has not filed a Response.

7. Discussion and Findings:

General

7.1 In order to succeed in these proceedings, paragraph 2.b of the 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 namely that

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

7.2 The Complainant has clearly established that it has a significant reputation and goodwill in the United Kingdom in the use of the name JAGUAR. The Expert agrees with the approach of the expert in the DRS Complaint number 03306 wwwdorothyperkins.co.uk decision, namely that a domain name which includes the "www" characters plus a word is indistinguishable from the word on its own. The Expert therefore finds that the Domain Name is identical to the Complainant's mark JAGUAR, and that the Complainant has succeeded in establishing the first element of the test as set out in paragraph 2.a.i of the Policy.

Abusive Registration

7.3 This appears to the Expert to be a typical case of typo-squatting and there is no explanation provided by the Respondent as to the choice of the Domain Name. It is inconceivable that the Respondent was unaware of the Complainant's reputation at the time he registered the Domain Name. The use to which the website attached to the Domain Name is currently being put clearly demonstrates such awareness.

7.4 The Expert is not persuaded by the Complainant's unsupported assertions in relation to the Domain Name being registered as a blocking registration under paragraph 3.a.i.B of the Policy.

7.5 However, the Expert agrees with the Complainant in respect of its submissions as regards paragraphs 3.a.i.C and 3.a.ii of the Policy concerning unfair disruption of business, and confusion. In the Expert's view, there cannot have been any intention on the part of the Respondent other than unfair disruption of business, when the likely effect of the use of the Domain Name is that customers or potential customers could easily incorrectly type the website address, and be taken to the Respondent's website, instead of the Complainant's. That would be likely to result in financial and/or other detriment to the Complainant, and therefore to disrupt the Complainant's business unfairly.

7.6 Further, the nature of this type of typo-squatting is to seek to take advantage of typing errors by Internet users, and it is natural to conclude that the Respondent intended there to be confusion which would lead a customer or potential customer into believing that the Domain Name is registered to, operated or authorised by the Complainant, because there is no other reason for the website to exist other than for people to visit it in the expectation that there will be a connection with the Complainant.

7.7 The Expert further agrees with the Complainant's contention that the evidence demonstrates a pattern of registrations, within the meaning of paragraph 3.a.iii of the Policy. Although only three instances are expressly cited, all were or are apparently abusive registrations, and similar instances of typo-squatting to the registration in this case.

7.8 In the circumstances, the Expert finds that the three factors set out above namely at paragraphs 3.a.i.C, 3.a.ii and 3.a.iii of the Policy are made out and that the Complaint therefore succeeds.

7.9 The Expert also notes that there may in any event be a presumption of Abusive Registration, in respect of this Respondent. The Complainant has not specifically mentioned this (and perhaps has felt it unnecessary to do so in view of the strength of the Complaint against the Respondent). In accordance with paragraph 3.c of the Policy, that presumption arises where the Complainant proves that the Respondent has been found to have made an Abusive Registration in three or more DRS cases in the 2 years before the Complaint was filed. The Complainant has referred to two reported cases in 2005 under the Nominet DRS (see paragraph 6.6 above). There is a further reported Nominet case DRS 03291 National Westminster Bank Plc v Harry Planet, ntawest.co.uk, natwext.co.uk and nawtest.co.uk in March 2006. In that case, the Respondent, nominally "Harry Planet" provided contact details c/o Keith Szlamp. The name "Harry Planet" was the name of a caricature who appeared on each of the websites under discussion in that case (a cartoon description of a boy holding a lolly), as is the case in the website in question here. The website in this case claims "Harry Planet" as a trade mark of Pocket Lolly Limited. In the circumstances, it would appear very likely that "Harry Planet" does not exist, and is a pseudonym for Mr Szlamp. Therefore, if the Complainant had raised the issue, the Expert would have been prepared to find that such a presumption applied.

7.10 In the event, given the overwhelming nature of the case against the Respondent in relation to the Complaint, no decision in that respect is necessary.

8. Decision

8.1 The Expert finds that the Complainant has Rights in the name JAGUAR, which is identical to the Domain Name. The Expert further finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8.2 The Expert therefore decides that the Domain Name should be transferred to the Complainant.

Bob Elliott

15 September 2006