Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS No. 3967 Newbury Building Society v. Owen Webster Decision of Independent Expert
1. Parties

Complainant: Newbury Building Society

Country: GB

Respondent: Owen Webster

Country: AU

2. Domain Name

(the "Domain Name")

3. Procedural Background
3.1      The Complaint entered Nominet's system on 4 September 2006. Hard copies of the Complaint were received by Nominet on 4 September 2006. The Complaint was validated and sent to the Respondent on 5 September 2006. No response was received within the deadline for response of 28 September 2006 and therefore no response was forwarded to the Complainant. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me. I confirmed that I was not aware of any reason why I could not act as an Independent Expert in this case and I was appointed as such on 17 October 2006.
4. Outstanding Formal/Procedural Issues (if any)
4.1      None
5. The Facts
5.1      The Complainant is a building society, incorporated under the laws of the United Kingdom. It has traded for 150 years and its main business is to provide housing finance. The Complainant's core products are mortgages and savings accounts. The Complainant is established as the 32nd largest out of 62 UK societies.
5.2      The Domain Name is held in the name of the Respondent.
5.3      At the time of or shortly prior to this Complaint the Domain Name linked to a website that included graphics and photographs which suggested a connection to financial services. However, on closer examination the site appears to have the tell-tale signs of being produced either by or in conjunction with a "domain name parking" service. There were numerous links to financial services related content, but there are also links to other categories of material under headings such as "Financial", "Entertainment" and "Lifestyle".
5.4      As at the date of this decision the Domain Name resolves to a website that is somewhat less professional in appearance and more obviously forming part of some "domain name parking" service. It contains a similar mix of financial services and non-financial services related links as the earlier website.
6. The Parties' Contentions

Complainant

6.1      The Complainant seeks transfer of the registration of the Domain Name into its name on the grounds that it is identical or similar to a name or mark in which it has Rights and that the registration of the Domain Name in the name of the Respondent is an Abusive Registration.
6.2      The Complainant points to the fact that it has traded as a building society for 150 years. As a building society, the Complainant is owned by members rather than shareholders and so unlike banks does not pay dividends. Furthermore building societies are regulated by the Financial Services Authority who restrict lending criteria. This means that building societies offer a more limited range of products than banks.
6.3      The Complainant is named after the town Newbury, in which it was established. The Complainant has close affiliation with the local community, contributing both time and money to it. As an example, the Complainant is part of the Per Cent Club, an organisation which recognises contributions made by companies, staff time, gifts in kind and management time, that are greater than 1% of pre-tax profits.
6.4      The Complainant contends that the Respondent's registration of the Domain Name is abusive and should be transferred to the Complainant. In support of its contention the Complainant makes the following assertions:

(i) the Respondent registered the Domain Name taking unfair advantage of the Complainant's name and reputation which it has built up over 150 years, causing detriment to the Complainant and other building societies;

(ii) the website is presented as a financial services website, but is most likely to be a directory site where companies pay to advertise. Hyperlinks (such as "mortgage" or "savings") link to competitor's websites. Links to banks mislead customers searching for building societies. The links also highlights products such as credit cards that a building society would not offer;

(iii) the website can easily confuse people, misleading them to think they have reached the Complainant's website and uses their name, brand colours and appear to offer similar services. Since the site uses the Complainant's well established name, customers will assume that the site is connected or authorised by the Complainant;

(iv) the Domain name owner is "blocking [the Complainant's] rights to this name"; and

(v) together all these reasons compromise the Complainant's brand, and potentially drive away potential customers resulting in a loss of business.

Respondent

6.5      The Respondent served no Response in these proceedings.
7. Discussion and Findings:

General

7.1      To succeed under the Nominet Dispute Resolution Service Policy (the "Policy"), the Complainant must prove on the balance of probabilities, first, that it has Rights in respect of a "name or mark" that is identical or similar to the Domain Name (paragraphs 2(a)(i) of the Policy) and secondly, that the Domain Name is an Abusive Registration in the hands of the Respondent (paragraph 2(a)(ii) of the Policy).
7.2      Abusive Registration is defined in paragraph 1 of the Policy in the following terms:

Abusive Registration means 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.

Complainant's Rights

7.3      The Complainant does not claim to be the owner of a registered trade mark. However, such rights are not a requirement of the Policy. Rights in a name which are protectable under the English law of passing off are sufficient.
7.4      Whilst "Newbury" and "building society" individually are not words which one would ordinarily associate with the business of a specific entity, I have little difficulty in accepting that the Complainant has developed goodwill in the words "Newbury Building Society" and has rights in that name under the law of passing off. This is the name under which that the Complainant appears to have traded for 150 years.
7.5      I am, therefore, satisfied that the Domain Name is identical to the trade mark in which the Complainant has Rights, and that the Complainant has made out paragraph 2(a)(i) of the Policy.

Abusive Registration

7.6      Paragraph 3 of the Policy provides "a non-exhaustive list of trading which may be evidence that the Domain name is an Abusive Registration. The Claimant does not expressly refer to any of those factors in its Complaint but appears to be making reference to paragraph 3(a)(i)B and 3(a)(ii) of the Policy i.e.:

"Circumstances indicating that the Respondent has registered or otherwise acquired the Domain name primarily … as a blocking registration against a name or make in which the Complainant has Rights" (3(a)(i)B); and

"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 authorized by, or otherwise connected with the Complainant" (3(a)(ii)).

7.7      The Respondent has not put in a Response nor otherwise attempted to give reasons as to why he has registered the domain name. However, it seems clear from the past and present nature of the website operating from the Domain Name that the Complainant's contention that the Domain Name is being used "as a directory site where companies pay to advertise" is correct. To be more exact, the Respondent is attempting to obtain revenue by using the Domain name in conjunction with a "domain name parking" service. How these services operate was briefly explained in the recent case of The Royal Bank of Scotland Group Plc v John Wilfred [2006] DRS 03952. In that case the panelist stated:

"This website looks to be one of the increasingly popular "domain name parking" type websites which work by paying the owner of the domain name a fee every time the website is accessed. As the Complainant says it is likely that customers or prospective customers of the Complainant will visit this website in error because it contains the Complainant's name "RBS" and because of its similarity to one of the Complainant's actual domain names, rbs-online.co.uk. It follows that the Domain Name is likely to attract a relatively high volume of traffic and will consequently earn the Respondent a good income."

7.8      Although the Complainant does not expressly allege this, the obvious inference from the Complainant is that it was for this purpose that the Domain Name was registered. Indeed, there is no other obvious reason why the Respondent would have chosen to register this Domain Name.
7.9      The Respondent has sought by registering and using the Domain Name in the manner that he has to obtain a financial gain for himself (or others) by trading off the reputation of the Complainant in the Newbury Building Society name. Such registration and use, although it does not obviously fall within any of the "list of factors" set out in paragraph 3 of the Policy, is in my view clearly abusive. I note that a similar conclusion was reached by the panel in the RBS case described above.
7.1     0 This is sufficient to dispose of this matter. I would however, add that the exact manner in which the Domain Name has been used in this case probably also falls within the scope of paragraph 3(a)(ii) of the Policy. In particular, I refer here to the form of the website not at the date of this decision but as it stood at an early date (and copies of which were enclosed with the Complaint). The website at that time had a quite professional and sophisticated appearance. Prominent in the graphics on the site were a "Wall Street" sign, bank notes and what looks like a list of stock prices from a newspaper. The most prominent links on the site were mortgage, interest rate and savings account related. There was a purported link to "branches". The website also contained the following text under the heading "Welcome":

"Make the most of your money. newburybuildingsociety.co.uk is packed with the best and most valuable financial information on the net."

7.1     1 Someone who was familiar with the manner in which domain name parking services operate might on careful examination of the website have concluded from the somewhat less prominent links under headings such as "Travel", "Lifestyle" and "Entertainment" that the Domain Name was being used in this fashion. However, it seems to me that it is likely that a significant proportion of the public would think that this was a website of a legitimate financial services company and therefore connected with or authorised by the Complainant.
7.1     2 There is no evidence provided by the Complainant that any person has been confused by the earlier website into believing that it is connected with the Complainant. However, (notwithstanding the decision in a number of DRS cases that might suggest otherwise) in my view this is not necessary in this case. Paragraph 3(a)(ii) refers to "circumstances indicating" that people have been confused. I believe the form of the website in this case prima facie constitutes such "circumstances" and in the absence of any Response, argument or evidence to the contrary from the Respondent, I conclude that the Complainant makes out its case on this ground.
7.1     3 In conclusion, I find that the Complainant has made out its allegation that the Domain Name is an Abusive Registration.
8. Decision
8.1      I find that the Complainant has Rights in the Domain Name, which is identical to its trade mark, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
8.2      I therefore determine that the Domain Name should be transferred to the Complainant.

Matthew Harris

31 October 2006