Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service
DRS 4200
Noble Marine (insurance Brokers) Ltd –v- Owen Webster
Decision of Independent Expert
1. Parties:

Complainant: Noble Marine (Insurance Brokers) Ltd.

Country: UK

Respondent: Owen Webster

Country: Australia

2. Domain Name:

nobelmarine.co.uk ("the Domain Name")

3. Procedural Background:

Nominet received the Complaint in electronic form on 10 November 2006 and in hard copy form on 13 November 2006. Nominet validated it on 16 November 2006. The same day the complaint was sent by Nominet to the Respondent by airmail and email to the postal and email addresses provided to Nominet by the Respondent for Nominet's Whois database.

No response was received so mediation was not possible.

On 13 December 2006, the appropriate fee having been paid to Nominet by the Complainant, and Tony Willoughby, the undersigned Expert, having indicated to Nominet that there was no reason why he should not handle the case, the case was referred to the Expert for a decision.

4. Outstanding Formal/Procedural Issues (if any):

None.

5. Factual Background

The Complainant was incorporated in England under the name Noble Marine (insurance Brokers) Ltd on 24 February, 1989 and, as its name implies, is engaged in the business of marine insurance.

The Complainant has produced to the Panel samples of its advertising demonstrating that it conducts business under and by reference to a logo, the most prominent elements of which are the words 'Noble Marine', and that it conducts business online via its website at www.noblemarine.co.uk.

The Respondent registered the Domain Name on 17 May, 2005. The Domain Name is connected to a directory service parking page featuring links to various providers of goods and services mainly related to sailing and insurance.

Earlier this year the Respondent was on the wrong end of a WIPO complaint under the UDRP (WIPO Case No. D2006-0165) filed against him by some French banks.

The Complainant has produced evidence (not challenged by the Respondent) to demonstrate that on three occasions this year (in June, September and October) persons seeking to email the Complainant have misdirected their emails using the Domain Name.

5. The Parties' Contentions:

Complainant's Contentions

The Complainant contends that it is the owner of rights in the name, Noble Marine, by virtue of its registration of its corporate name in 1989 and its subsequent use of the name in the course of business.

The Complainant contends that its name is identical or similar to the Domain Name.

The Complainant contends that in the hands of the Respondent the Domain Name is an Abusive Registration because (a) it has been used by the Respondent in a manner which has confused people into believing that it is in some way associated with the Complainant and (b) the Respondent has made a habit of registering domain names featuring the trade marks of others.

The Complainant contends that the Domain Name registration should be transferred to the Complainant.

Respondent's Contentions

The Respondent has not responded to the Complaint.

6. Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant's Rights

The Complainant has no registered trade mark rights of any kind in the name 'Noble Marine'. Instead it claims unregistered rights derived from its registration of its corporate name and its subsequent use of 'Noble Marine' as the abbreviation of its corporate name as appearing in its logo and its domain name, , which it uses both for its web address and its email address.

Manifestly the Domain Name is substantially identical to the name, Noble Marine, but does the Complainant have rights in that name?

The Expert would have preferred to have seen more substantial evidence from the Complainant to demonstrate unregistered rights. The evidence put before the Expert is sparse in the extreme. The sample advertisements and business literature, to the extent that they feature any dates, seem to be material in current use. There is nothing apart from the company registration certificate pre-dating the registration of the Domain Name and a company registration certificate is proof of nothing other than that the company was registered under the certified name on the certified date. There is nothing before the Expert to demonstrate the extent of the Complainant's trading.

On the other hand it seems plain (for the reasons given below) that the Domain Name was selected deliberately as a mis-spelling of the Complainant's trading name and the links on the parking page feature a reference to the Complainant correctly spelt. Accordingly, the Respondent and those responsible for the selection of the advertising links on his parking page are clearly aware of the Complainant and its business. Moreover, for it to be worth anyone's while to select for a domain name a mis-spelling of a business name, the underlying name is likely to be one with a goodwill likely to attract traffic. In such circumstances, it does not lie in the mouth of the Respondent to deny the existence of the Complainant's unregistered rights in respect of 'Noble Marine'. Nor in fact does the Respondent challenge the Complainant's claimed rights.

The Expert finds that the Complainant has rights in respect of a name or mark identical or similar to the Domain Name.

Abusive Registration

This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the 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."

Paragraph 3 of the Policy contains a non-exhaustive list of what may constitute an Abusive Registration for these purposes. The examples in that list, which are claimed by the Complainant to be of relevance here are the following sub-paragraphs:

(a)(ii), which reads:

"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"

(a)(iii), which reads:

"The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well-known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern."

In the Expert's view sub-paragraph (a)(ii) does not bite unless at the time of the allegedly abusive use in question the Respondent had the Complainant and/or its name or mark in mind.

The Expert has no doubt that in this case the Respondent had the Complainant in mind all along. The name 'Nobel Marine' is not a common name, nor is it a name that one would be likely to adopt by accident. Had the Respondent's name been Nobel, the connection would be obvious. In the absence of an obvious connection of that kind, an explanation is called for, for the irresistible conclusion (for the reasons set out below) is that the Domain Name is a deliberate mis-spelling of the Complainant's domain name, .

The Respondent has not responded. While the absence of a response is not necessarily fatal to a respondent, in this case it has to be fatal to the Respondent and not least because (i) virtually all the links on the Respondent's parking page relate to the general business area in which the Complainant operates and (ii) one of the links entitled 'Noble Marine' takes the visitor to a link to the Complainant's website at www.noblemarine.co.uk as well as, it should be pointed out, to links to websites of the Complainant's competitors.

Having concluded that the Domain Name is a deliberate mis-spelling of the Complainant's domain name, it is but a short step to conclude that the Respondent's object was to cause confusion of the kind contemplated by sub-paragraph 3(a)(ii) of the Policy and that such confusion will have occurred. However, it is unnecessary to speculate on the latter, because the Complainant has produced evidence of three people on separate occasions having addressed emails to the Complainant using the Domain Name in error.

The Complainant has satisfied the Expert 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.

In light of that finding it is unnecessary for the Expert to consider the allegation relating to sub-paragraph 3(a)(iii) of the Policy. Certainly, the Domain Name is not the only domain name which the Respondent has registered featuring the name or mark of a third party without apparent justification.

The Expert finds that the Domain Name is an Abusive Registration on the basis that it has been used in a manner, which has taken unfair advantage of or was unfairly detrimental to the Complainant's rights.

7. Decision:

Having concluded that the Complainant has rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, nobelmarine.co.uk, should be transferred to the Complainant.

Tony Willoughby 20 December, 2006