Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

[DRS Complaint No. 04118]

National Coll for School Leadership Limited

v.

Dave Allan

Decision of Independent Expert

1. Parties

Complainant: National Coll for School Leadership Limited

Country: U.K.

Respondent: Dave Allan

Country: Australia

2. Domain Name
3. Procedural Background

The Complaint was lodged with Nominet UK ("Nominet") on October 11, 2006 and hard copies were received in full on October 12, 2006. Nominet validated the Complaint on October 13, 2006 and notified the Respondent of the Complaint giving him 15 working days within which to lodge a Response. No Response was filed and so Nominet did not initiate its Informal Mediation procedure. On November 20, 2006 the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of Nominet's Dispute Resolution Service Policy ("the Policy").

On November 21, 2006 the undersigned, Mr. David H Tatham ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality and he was selected by Nominet as the Expert for this case on the same day.

4. Outstanding Formal/Procedural Issues (if any)

There are no outstanding Formal/Procedural Issues, although the Expert notes that the Complaint was filed in the name of the "National Coll for School Leadership Limited" while it is clear from the papers filed with the Complaint that the actual name of the Complainant is the" National College for School Leadership Limited". He has assumed that this discrepancy is because there was insufficient room in the box on Nominet's electronic Complaint Form to enter the Complainant's full name.

5. The Facts

The Complainant is a company limited by guarantee set up by the Department for Education and Employment (now the Department for Education and Skills) which uses as its working name the National College for School Leadership as well as the acronym NCSL. The Complainant provides learning and development opportunities and professional and practical support for school leaders (head teachers, deputy heads, middle leaders and bursars) at every stage of their career. The Complainant's main purpose is to develop individuals and teams to lead and manage their own schools and to work collaboratively with others across England. Its website, located at , provides over 1000 pages of information directed at school leaders and the education sector, and a representative selection of these pages was annexed to the Complaint. This website is used by over 200,000 people, and has (on average) 600,000 page-views per month. The Complainant has operated the site since November 2000.

The Complainant offers programmes for school leaders that provide flexible learning and combine national standards with the opportunity to tailor learning to an individual's development needs and to the needs of schools. The programmes are offered in both paper and online formats. In addition, the Complainant offers through its website an online community learning environment, called talk2learn, to an increasingly wide range of school leaders. This provides access, on a confidential basis, to an extensive network of colleagues, experts and policy-makers with whom users can debate, discuss and share ideas.

The Complainant's programmes are commissioned to a number of organisations to run throughout the world. The Complainant has developed 28 different programmes in total, and a list of them was included with the Complaint.

The Complainant also produces a range of booklets and fact sheets associated with its programmes and activities, a selection of which was annexed to the Complaint.

The Complainant uses a logo in green, black and grey which is dominated by the letters NCSL in capital letters. It appears on the Complainant's website, on its marketing literature, and on all of ite published materials. Examples of some of these documents were annexed to the Complaint.

The Complainant has registered the domain name in addition to .

The Complainant owns 2 UK trade mark registrations for NCSL Nos. 2335109 and 2335110 both covering goods and services in Classes 16, 41 and 45. The Complainant also owns 7 UK trade mark registrations for its various programme titles and acronyms, 3 of which include the letters NCSL. The Complainant has used the NCSL mark and its associated logo since its incorporation in 2000.

The Complainant employs approximately 200 staff either at its main office and learning and conference centre in Nottingham, or at its associated offices in London.

The table below identifies the Complainant's overall expenditure and its significant expenditure in relation to advertising and marketing for the last 3 financial years –

2006/07 (YTD) 2005/06 2004/05

Advertising & Marketing £858,784 £2,752,194 £1,627,816

Percentage of Total budget 2.85% 3.07% 1.40%

Total Spend £30,089,793 £89,552,865 £115,953,050

As an annex to the Complaint showed, the first two search results on a Google search for "ncsl" are links to the Complainant's website.

6. The Parties' Contentions

Complainant

The Respondent registered the domain name ncls.org.uk ("the Disputed Domain Name") on 30 June, 2005 but it was not until August 2006 that the Complainant became aware of it. The website to which it resolves refers to the Complainant and includes a number of references to the Complainant's programmes and online services including NPQH, Talk2Learn, and Leading from the Middle. The website includes sponsored links whereby the Respondent receives a payment each time a user accesses a link. The Complainant contends that the title at the top of the home page is "Sponsored Links for Learning Gateway, National College for School Leadership UK, talk2learn Sign On, Leadership Development". The Complainant confirms that it has not granted consent for the Respondent to include such references or links.

Several of the links under the "Related Searches" section refer to the names of programmes developed by the Complainant such as Leading from the Middle and NPQH. Generally, if a user clicks on one of the "Related Links", such as the one for NPQH Accreditation, it is directed to another page of search results, none of which leads to the Complainant's website, and which is entitled "Sponsored Links for… [NPQH Accreditation]" . The Complainant has not granted consent to the Respondent to include any such links or references to its programmes and services.

The hypertext links on the website link to third party websites which provide information regarding leadership development and educational services but also links to sites which are wholly unconnected with NCSL, including cheap flights.

By typing in "ncls" rather than the Complainant's acronym "ncsl", most web users searching for the Complainant's website would assume the site was connected to the Complainant and that NCSL had registered ncls.org.uk as a misspelling of its name.

On 10 August 2006, the Complainant's solicitor wrote to the Respondent. The letter was sent by airmail and DHL. No response to the letter was received and the courier returned the letter as it was unable to deliver it to the address provided by WHOIS. A copy of the letter was annexed the Complaint

The Complainant contends that because it has acquired significant goodwill in the NCSL name, because it also has a significant online reputation in NCSL, and because it owns UK trade marks for NCSL it has Rights in the name NCSL. The Complainant also contends that the Disputed Domain Name is confusingly similar to NCSL because the substantive part of the Disputed Domain Name contains identical letters to the Complainant's name. The complainant also claims that it is usual to ignore the .org.uk designation.

Due to the Complainant's reputation in NCSL for providing educational programmes, and the fact that the Respondent's website contains links to other sites relating to similar services, the Complainant contends it is likely that the Respondent knew of NCSL (and its online information and services) when he registered the Disputed Domain Name .

The Complainant contends that the Respondent does not trade as NCLS nor does he use NCLS in relation to his services. The Domain Name is almost identical to the Complainant's current trading name and trade marks. It appears that the Respondent registered the Disputed Domain Name as a misspelling of the well-known NCSL name and has no legitimate interest in ncls.org.uk.

The Complainant contends that registrants of misspellings of names are often doing so in an attempt to attract browsers who misspell the name, and the Complainant contends that there have been a number of disputes under Nominet's DRS concerning misspellings of well-known names (e.g. British Board of Film Classification -v- Bulletin Board for Film Censorship).

The Complainant contends that the Disputed Domain Name in the hands of the Respondent is Abusive Registration within paragraph 1(i) of the Policy because it has been used –

•    For the purposes of unfairly disrupting the business of the Complainant (paragraph 3(a)(i)C of the Policy): The Disputed Domain Name resolves to a page containing links to other providers of educational, leadership and development services and, although it contains links to products and services which have the same names as some of the Complainant's services, it does not link to the Complainant's website. This is potentially misleading to customers. It is clear that the Respondent acquired the Domain Name primarily for the purpose of unfairly disrupting the Complainant's business, since the provision of online information is a core activity of the Complainant. By registering a misspelling of NCSL, the Respondent is diverting traffic from and disrupting the Complainant's business. The Complainant has a reputation for providing quality programmes. Certain websites accessible through the Disputed Domain Name such as those for cheap flights could damage the Complainant's reputation. There is a substantial risk that visitors to the Respondent's website will, incorrectly, assume a connection between the links available through and the Complainant.

•    In a way which has confused people or businesses into believing that the name is registered to, authorised by, or otherwise connected with the Complainant (Part 3(a)(ii) of the Policy): NCLS is a misspelling of the Complainant's name. Many users trying to access the Complainant's site may have been directed to the Respondent's site due to typographical error. Those accessing the Respondent's site may be confused into thinking that the Respondent is connected with the Complainant, or that the Complainant does not have a website. Due to the similarities between the Complainant's services and those available through the Respondent's website, many people accessing the Disputed Domain Name are likely to be trying to locate the Complainant's website at . Having been directed to a site offering information which, at first sight, may appear to come from the Complainant, many users may have obtained information from alternative sources. Such users would not benefit from the Complainant's services. They may also use services or information believing that they are endorsed by the Complainant, when in fact they are not. Accordingly, users will have been confused by the registration of the Domain Name.

Respondent

As noted above, the Respondent did not file a response and so nothing is known about him.

7. Discussion and Findings:

General

According to paragraph 2(a) of the Policy, in order to succeed in a Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities –

i the Complainant has Rights in respect of a name or mark which is identical or similar to the disputed domain name; and

ii the disputed domain name, in the hands of the Respondent is an Abusive

Registration.

The absence of a response from a Respondent does not mean that he has no answer to the Complaint. A Complainant must still make out its case and, having done so, the burden is on a Respondent to prove otherwise. In this case, the Complainant has made out a prima facie case, so the burden of proof has shifted to the Respondent, but he has chosen to remain silent.

Complainant's Rights

It is clear to the Expert that the Complainant has rights in the acronym NCSL. It has 2 trade mark registrations for NCSL, one of them in plain block capital letters, the other as a logo. It has made significant use of this acronym since it was incorporated as a limited company in 2000. Its turnover figures are impressive.

As the Complainant points out, when comparing for similarity a domain name and an earlier right under the Policy, it is customary to disregard suffixes such as, in this case, ".org.uk". Consequently, since the Disputed Domain Name uses the same letters as the Complainant's trade mark, but with just the two final letters reversed, there can be no doubt that NCLS is similar to NCSL. Therefore, the first requirement of paragraph 2(a) of the Policy is proved.

Abusive Registration

In the Policy, an "Abusive Registration" is defined in the following terms –

An 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

It is clear to the Expert that these requirements have been met, because the present case is an obvious example of 'typosquatting'. This is sometimes referred to as 'typo-piracy' or 'URL hijacking' and is defined in the online encyclopaedia Wikipedia as "a form of cybersquatting which relies on mistakes such as typographical errors made by Internet users when inputting a website address into a web browser." In this context, the Complainant refers to the Decision in the case of British Board of Film Classification v. Bulletin Board for Film Censorship (Case DRS 00104). However in that case, the domain name complained of was identical to Complainant's trade mark and acronym, and the website at it contained what was described as "sustained criticism of the Complainant". More relevant, in the opinion of this Expert, is the case of Direct Line Insurance PLC v. Snoop4.com Limited in which the domain name complained of was while the Complainant owned a registration of the trade mark JAMJAR and the domain name . The Expert in that case was critical of the manner in which the Complaint had been presented but found that the situation was "obviously a case of typo-piracy" and decided the case in favour of the Complainant.

Paragraph 3 of the Policy sets out a non-exhaustive list of factors that define what may be an Abusive Registration, and the following would appear to be relevant in this case:

3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

B. as a blocking registration against a name or mark in which the Complainant has rights; or

C. for the purpose of unfairly disrupting the business of the Complainant.

3(a)(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;

There is no direct evidence that anyone has been confused into thinking that the Disputed Domain Name belongs to the Complainant. However it would be surprising if they had not been because of the very close similarity between the Disputed Domain Name and the acronym by which the Complainant is known. The website at the Disputed Domain name is a click-per-view site i.e. one in which the registrant earns money every time someone clicks on one of the links at the site. These links include, among many others, references to the Complainant's programmes and services. Most of the links are learning or leadership related i.e. subjects in which the Complainant specialises, so the existence of such a site could clearly have unfairly disrupted the Complainant's business and the disputed domain name and/or proved to be a blocking registration.

The Complainant contends that he Respondent neither trades as NCLS nor uses NCLSin relation to his services, but offers no proof thereof. Nevertheless, the Expert has had little hesitation in concluding that the Disputed Domain Name is an Abusive Registration.

Final Remark

One of the factors which is evidence of a domain name being an Abusive Registration is contained in paragraph 3(a)(iv) of the Policy, namely "It is independently verified that the Respondent has given false contact details to us".

The Complainant provided a copy of a letter which its solicitors had written to the Respondent. This received no response and, according to the Complainant, "the courier returned the letter as it was unable to deliver it to the address provided by WHOIS". The Complainant has not referred to the above paragraph in the Policy in its Complaint, nor is there is any independent evidence that the address supplied by the Respondent is false. However the evidence points in this direction, and if so it would be yet more evidence that the Disputed Domain Name is an Abusive Registration.

8. Decision

The Expert finds that the Complainant has clear and indisputable rights in the name and acronym NCSL and that this is similar to the Domain Name .

The Expert further finds that the disputed Domain Name is an Abusive Registration in the hands of the Respondent.

The Expert therefore directs that the disputed Domain Name be transferred to the Complainant.

David H Tatham

December 4, 2006