Nominet UK Dispute Resolution Service

 
Nominet.uk Dispute Resolution Service DRS 04292 Ufi Limited –v- Domain Administration Ltd t/a Fuz Pty Ltd Domain Names: , Decision of Independent Expert

1. The Parties

The Complainant

1.1      The Complainant is Ufi Limited of GB, represented by McGrigors.

The Respondent

1.2      The Respondent is Domain Administration Ltd t/a Fuz Pty Ltd of New Zealand.

2. The Domain Names

2.1      The disputed domain names ("the Domain Names") are ("the First Domain Name") and ("the Second Domain Name").

3. Procedural Background

3.1      This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure ("the Procedure") and the Nominet UK Dispute Resolution Service Policy ("the Policy").
3.2      The Complaint entered into Nominet's system on 13 December 2006. It was validated on 14 December 2006 and Complaint documents were generated on the same day. A Response was due by 11 January 2006 but no Response was received. Mediation not being possible and the Complainant having paid the relevant fee on 15 January 2007, the matter was referred to me for a Decision on 22 January 2007. On that date I confirmed that I was independent of the parties and not aware of any matters that might call my impartiality or independence into question.

4. Outstanding Formal/Procedural Issues

4.1      Having reviewed the file I am satisfied that Nominet took all proper steps to bring the Complaint to the attention of the Respondent, including sending the Complaint by first class post and by fax to the contact address and fax number shown in its domain name database and by email to the addresses provided by the Respondent for both Registrant and Administrative Contact.
4.2      Under Nominet's terms and conditions of registration, it is the responsibility of the registrant of a domain name to provide Nominet with accurate contact details and to keep such details updated.

4.3 Paragraph 15b of the Procedure provides:

"If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down by the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."

I am aware of no such exceptional circumstances in this case.

5. The Facts

5.1      The Complainant has made assertions of fact in this case which, in the absence of any Response, are undisputed by the Respondent. I therefore accept as facts the matters set out below.
5.2      The Complainant offers education and training services under remit from the UK government. It was incorporated in 2000 but has offered such services under the brand name "learndirect" since 1999. Its services and products include courses, learning materials, careers guidance and learning centres.
5.3      The Complainant is the proprietor of numerous registered trade marks for the name LEARNDIRECT. These include a UK trade mark, number 2288654, in Classes 09, 16 and 41, registered on 20 December 2001 and two Community Trade Marks, number 1353374, in Classes 09, 16, 21, 25, 26 and 41, registered on 18 October 1999, and number 1673433, in Classes 28, 35 and 42, registered on 17 May 2000. It also has registrations in the US, Australia, South Africa and Mexico.
5.4      The Complainant is the world's largest online learning provider. It operates over 1,000 UK learning centres, based primarily on high streets and in other public and community locations. It also has locations in various other countries throughout the world, based primarily in British consular offices or on army bases. Since its launch it has provided more than 580 different "learndirect" branded courses to over 2.1 million learners.
5.5      The Complainant operates a website at www.learndirect.co.uk. Its courses are available only by registering online at that website. The total number of visitors to the website stood at 56 million in December 2005.
5.6      The Complainant has invested heavily in the "learndirect" brand and has spent approximately £10m per annum on promotion. Its promotional activities have included both sponsorship and the sale of branded merchandise.
5.7      As a result of these matters, the name and mark "learndirect" is widely known to the UK general public and is synonymous with the Complainant's goods and services.
5.8      The Domain Names were registered by the Respondent on 25 May 2004.
5.9      The Complainant has had no prior dealings with the Respondent and has not licensed or otherwise permitted the Respondent to use its trade marks. The Respondent is not known as "learndirec" or "lerandirect" and an internet search against either of these terms would have revealed the Claimant's use of its name and mark.
5.10      The Respondent has used the Domain Names to connect to websites at www.learndirec.co.uk and www.lerandirect.co.uk. The Respondent has used the term "learn direct" both as a link on these websites and as a metatag to attract internet users to them. The Respondent's websites use a colour scheme similar to that used on the Claimant's websites.
5.11      Existing and potential customers of the Complainant have been redirected from the Respondent's websites to third-party websites including those of the Claimant's competitors. The Respondent benefits financially from these redirections on a "pay per click" basis.
5.12      The Respondent has been engaged in a pattern of Abusive Registrations. It was found to have made a total of 21 Abusive Registrations in four previous DRS proceedings, namely:

(i) Alliance & Leicester plc –v- Fuz Pty Ltd: DRS 01918-01919 (September 2004)

(ii) Associated Newspapers Limited –v- Fuz Pty Ltd: DRS 02183-02185 (January 2005)

(iii) Hayes & Jarvis (Travel) Limited –v- M Strong (t/a Fuz Pty Ltd): DRS 02352 (March 2005)

(iv) Random House, Inc –v- James Strong: DRS 03270 (March 2006)

5.13      The domain name registrant in the last case is believed to be the Respondent. The contact address for the registrant in that case was 1 Majorize Street, Melbourne 3000, Australia, which was also the previous contact address for the Respondent in this case. The Respondent has been found in the above cases to have used a number of different pseudonyms.
5.14      The Respondent currently has 248 domain names registered of which a substantial number are typographical variations of well-known UK business names.

6. The Parties' Submissions

The Complainant

6.1      On the basis of the facts set out above, the Complainant makes submissions which may be summarised as set out below.
6.2      The Complainant has both registered and unregistered trade mark rights in the name "learndirect", which amount to Rights for the purposes of the Policy.
6.3      The Domain Names are similar to the Complainant's name and mark.
6.4      The Respondent's use of the Domain Names described above amounts to abuse as contemplated by paragraph 3(a)(ii) of the Policy, namely:

"Circumstances indicating that the Respondent is using the Domain Name in a manner 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."

6.5 Further, as contemplated by paragraph 3(a)(iii) of the Policy:

"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."

6.6      In that regard, this case falls within 3(c) of the Policy, which provides that:

"There shall be a presumption of Abusive Registration if the Complainant proves that 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))."

6.7      Further, the Respondent registered or acquired the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant.

6.8 The Complainant seeks the transfer of the Domain Names.

The Respondent

6.8      No Response has been filed in this case.

7. Discussion and Findings

Relevant Provisions of the Policy

7.1      Under paragraph 2 of the Policy:

"(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, 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.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities."

7.2      Under paragraph 1 of the Policy the term "Rights":

"includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."

Rights

7.3      The Complainant is the owner of UK and Community registered trade marks for the name LEARNDIRECT. On the evidence, it is also the owner of substantial reputation and goodwill attaching to the name "learndirect" such as would enable it to protect that goodwill by means of an action for passing off (i.e. unregistered trade mark rights).
7.4      The Complainant's name and mark is similar to each of the Domain Names. Indeed, they would be identical but for the obvious typographical "errors" that the Domain Names contain.
7.5      Accordingly, the requirements of paragraph 2(a)(i) of the Policy are satisfied.

Abusive Registration

7.6      I am satisfied on the evidence that this case falls within paragraph 3(c) of the Policy. Of the four cases cited by the Complainant only the last three were decided in the two years before the Complaint was filed. In the last of these cases the respondent is named as James Strong. However, the Complainant contends that Mr Strong's address is the same as the previous address of the Respondent and that they are one and the same. The Respondent has declined the opportunity to deny this (or any other) allegation and, in the absence of any other contrary evidence, I therefore accept it.
7.7      In the circumstances, there is a presumption under paragraph 3(c) of the policy that the Domain Names in the hands of the Respondent are Abusive Registrations. However, the application or otherwise of that presumption will make no difference to the outcome of this particular case.
7.8      This is a clear and obvious case of "typosquatting". The Respondent has registered two domain names that are identical to the Complainant's name and mark but for a simple typographical "error" in each case. I readily infer that, by so doing, the Respondent has deliberately sought to attract to its websites internet users who are attempting to access the Complainant's website and make a simple typing error in so doing. That is in itself to take unfair advantage of the Complainant's Rights in the manner contemplated by paragraph 3(a)(ii) of the Policy.
7.9      Moreover, once attracted to the Respondent's websites, internet users are offered links to other websites, including those operated by competitors of the Complainant. The evidence, which is again undisputed, is that the Respondent is remunerated by the owners of such websites on a "pay per click" or similar basis and therefore gains a direct financial benefit from the diversion of individuals seeking the Complainant's site. Plainly, such actions take further unfair advantage of the Complainant's Rights.
7.10      However, it is not my view that the Respondent registered or acquired the Domain Names primarily for the purpose of unfairly disrupting the business of the Complainant as the Complainant has further alleged.
7.11      The Respondent has made no attempt to rebut the presumption set out in paragraph 3(c) of the Policy or otherwise to dispute that its registration and use of the Domain Names is abusive.
7.13      In the circumstances, I am satisfied that both Domain Names were registered and/or have been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and that both registrations are Abusive Registrations for the purposes of paragraph 2(a)(ii) of the Policy.

8. Decision

8.1      The Complainant has established on the balance of probabilities both that it has Rights in respect of a name or mark which is similar to each of the Domain Names and that each of the Domain Names, in the hands of the Respondent, is an Abusive Registration. The Complaint therefore succeeds and I direct that each of the Domain Names be transferred to the Complainant.
Steven A. Maier 31 January 2007