Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

J. Sainsbury plc

–v–

Mr. John Morrison

Decision of the Independent Expert

1. Parties:

Complainants:	J. Sainsbury plc
Country:	GB
Respondent:	Mr. John Morrison
Country:	MT

2. Domain Name: sainsburysentertainment.co.uk ("the Domain Name").

3. Procedural Background:

3.1      The complaint was received by Nominet in full on 14 February 2007. Nominet validated the complaint and informed the Respondent, by both letter and by email on the same date, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 9 March 2007. As informal mediation was not an option in this situation, the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ('the Policy'). The fee was duly paid on 21 March 2007.
3.2      Nominet invited the undersigned, Andrew Murray (the Expert), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as Expert with effect from 28 March 2007.

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

4.1      There are email delivery failure reports on file, generated in connection with Nominet's attempts to notify the Respondent of the complaint and, subsequently, of the fact that the case would be referred to an Expert if the appropriate fees were paid. Following the guidance of the Expert in Harry Corry Limited. v Robert Morrison [2005] DRS 3028 I need to decide what to make of those delivery failure reports.
4.2      Following the guidance of that decision my starting point is that those registering domain names with Nominet agree to keep Nominet up to date with their contact details. The Dispute Resolution Service Procedure then says that Nominet will send a complaint using, at their discretion, any of a range of means including:

- email to the Respondent at the contact details shown as the registrant or other contacts in the domain name register database entry for the domain name in dispute

- email to postmaster@

4.3      In the event, Nominet sent the complaint by mail to the postal address held on file for the Respondent and sent copies of this correspondence to both jmorrison@keyworld.net (an email address for the Respondent held on Nominet's records) and postmaster@sainsburysentertainment.co.uk. It appears only the message sent to the postmaster@sainsburysentertainment.co.uk recorded delivery failure.
4.4      Given that:

(1) it is the Respondent's obligation to keep his contact details with Nominet up to date; and that, in any event,

(2) the email communication sent to the jmorrison@keyworld.net address and the postal communication sent to the Respondent's postal address were not returned.

I am satisfied that Nominet did what it could to notify the Respondent of the Complaint and of how that Complaint was being handled. I therefore propose to proceed on the basis that the Respondent has been properly notified of proceedings under the Dispute Resolution Service.

5. The Facts

5.1      The Complainant is a leading UK food retailer with 769 supermarkets and 153,300 employees throughout the UK.
5.2      The Complainant first started using the 'Sainsburys' trade mark in 1869. Over the years, an increasing range of goods and services have been sold, advertised and promoted under and by reference to the trade mark 'Sainsburys'.
5.3      The Complainant's turnover is some £17,317 million as shown by its most recent published accounts.
5.4      The Complainant is the proprietor of a number of UK and Community registered trade marks including UK trade mark no. 1107277, 'Sainsburys', Community trade mark no. 1027002, 'Sainsburys' and Community trade mark no. 1812957 'Sainsbury's'.
5.5      The Complainant and group companies are the proprietors of over seventy domain names that include the 'Sainsburys' trade mark including sainsburys.com, sainsburys.co.uk and sainsburysentertainyou.co.uk.
5.6      The Complainant used to own the Domain Name. For approximately two years, the Domain Name was linked to the Complainant's primary site - sainsburys.co.uk. The Complainant now wishes to launch an entertainment promotion and to use the Domain Name again.
5.7      The Respondent is John Morrison. The Respondent registered the Domain Name on 13 January 2006.
5.8      On 2 October 2006, the Complaint wrote to the Respondent highlighting their rights in the trade mark 'Sainsburys'. The Complainant requested that the Domain Name be transferred to them. To date, no response has been received from the Respondent.

6. The Parties' Contentions

Complainants:

The Complainant contends that:

The Complainant has rights in the Domain Name because:

6.1      The 'Sainsburys' trade mark is a trade mark with a particular reputation in the UK within the meaning of Section 10(3) of the Trade Mark's Act 1994.
6.2      The Complainant is the proprietor of a number of UK and Community registered trade marks including UK trade mark no. 1107277, 'Sainsburys', Community trade mark no. 1027002, 'Sainsburys' and Community trade mark no. 1812957 'Sainsbury's'.
6.3      The Policy defines Rights as including but not limited to 'rights enforceable under English law'. This has always been treated in decisions under Nominet's DRS as a test with a low threshold.
6.4      The Domain Name is similar to a name in which the Complainant has rights. The Complainant is so well known that use of the word 'Sainsburys' with a descriptive term such as 'entertainment' would be recognised by members of the public as being connected with, or endorsed by, the Complainant.

The use of the Domain Name by the Respondent shows that it is an Abusive Registration as:

6.5      The Respondent has no legitimate interests in the Domain Name.
6.6      It is difficult to imagine any reason for the choice of the Domain Name other than an intention to take unfair advantage of, and/or, to use the Domain Name to the detriment of the Complainant's rights. The Complainant's name is very well known in the UK and the Respondent must have been aware of the Complainant's name and rights when he chose the Domain Name.
6.7      There is currently no active site under the Domain Name and the Domain Name is currently being pointed to the domain name www.quigibo.com/?sainsburysentertainment.co.uk; this domain name does not support an active website. As far as the Complainant is aware, there has not been an active site under the Domain Name since it was registered by the Respondent on 13 January 2006.
6.8      Paragraph 3(a)(iii) of the Policy states that a factor which may constitute evidence that the Domain Name is an Abusive Registration is if the 'Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names 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'. The Respondent has been engaged in a pattern of registrations where the Respondent is the Registrant of Domain Names which correspond to well known names or trade marks in which the Respondent has no apparent rights. The Complainant refers to the domain names morgamstanley.co.uk, morganstanlet.co.uk, guilbertonline.co.uk, lintran.co.uk, harrycorry.co.uk, searchpress.co.uk and morganstanlry.co.uk which the Registrant had registered.
6.9      The Complainant contents that the Registrant's registration of these domain names demonstrates, under Paragraph 3(a)(iii) of the Policy, that the Respondent is engaged in a pattern of registrations which correspond to well known names in which he has no apparent rights. The Complainant contends that the Domain Name is part of that pattern and therefore that the Domain Name is an Abusive Registration.
6.10      A Robert Morrison has been an unsuccessful Respondent in the DRS cases 02775, 03021, 03028 and 03035. In all of these cases Mr Robert Morrison gives his address as being an address in Malta.
6.11      In the decision Morgan Stanley v John Morrison [2006] DRS 3189, the Expert states at paragraph 7.17

'It seems to me extremely likely that the Respondent in this case who gave his name as John Morrison here and simply "Morrison" in the earlier Morgan Stanley typo-squatting case and who has an address in Malta is likely to be either the same or closely connected to the Robert Morrison who has been the Respondent in these four earlier DRS cases … I do not need to decide whether they are the same in this case and indeed the Complainant has not asked me to. I do however raise this point here because it may well be that the next complainant who finds himself faced with a Mr Morrison, with an address in Malta, who has registered that complainant's company name or a variation of it may wish to avail himself of the provisions of Paragraph 3(c) of the Policy.'

The Complainant contends that under Paragraph 3(c) of the Policy there shall be a presumption that the Domain Name is an Abusive Registration. The Complainant notes that in the DRS cases 03189 and 02961 too, Mr John Morrison was held to have registered the domain names in question abusively.

6.12      In addition, the Complainant contends that the Domain Name constitutes a blocking registration under paragraph 3(a)(i)(B) of the Policy. The Complainant contends that the Respondent was opportunistic in registering the Domain Name and has no legitimate interests in it.

Respondent:

The Respondent made no Response to, and raised no challenge to, any of the facts and statements submitted by the Complainant.

7. Discussion and Findings

7.1 General

7.1.1      According to Paragraph 2 of the Policy, in order to succeed in this 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 Domain Name; and

ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.

7.2 Complainant's Rights

7.2.1      Rights are defined in the Policy as including, but not limited to, rights enforceable under English law.
7.2.2      The Complainant clearly has UK registered trade mark rights in respect of the name 'Sainsburys', which pre-date the registration of the Domain Name by the Respondent.
7.2.3      It is also clear that, through its extensive use of the name 'Sainsburys'in connection with its supermarket business, the Complainant has built up a substantial goodwill in relation to its business, (as is clear from the Decision of the Court of Appeal in British Telecommunication and ors. v. One in a Million [1999] 1 WLR 903) such that it could rely on the common law of passing off in the UK to prevent the unauthorised use of the 'Sainsburys' name in relation to the sale of goods to the public. It is also likely to have similar common law or unregistered trade mark and/or unfair competition rights in other jurisdictions. These rights all pre-date the Domain Names.
7.2.4      Ignoring the suffix .co.uk, the only distinguishing element of the Domain Name is the addition of the phrase 'entertainment'.
7.2.5      The distinctive element of the Domain Name is the name 'Sainsburys'. 'Entertainment' is merely descriptive of one of the services which the Complainant provides through its supermarkets, and its online site sainsburysentertainyou.co.uk, that being the sale of entertainment products such as CDs, DVDs and computer games.
7.2.6      I therefore believe the first limb of the test in paragraph 2 of the Policy is satisfied.

7.3 Abusive Registration

7.3.1 To be an Abusive Registration the Domain Name must be one which either:

"...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 has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights" (Paragraph 1 of the Policy)

7.3.2      In making this claim the Complainant relies firstly upon paragraph 3(a)(iii) of the Policy which states:

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;

7.3.3      In addition the Complainant relies upon paragraph 3(c) of the Policy which states:

'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)).'

7.4      Paragraph 3(a)(iii)
7.4.1      The Complainant contends that: 'The Respondent has been engaged in a pattern of registrations where the Respondent is the Registrant of Domain Names which correspond to well known names or trade marks in which the Respondent has no apparent rights. The Complainant refers to the domain names morgamstanley.co.uk, morganstanlet.co.uk, guilbertonline.co.uk, lintran.co.uk, harrycorry.co.uk, searchpress.co.uk and morganstanlry.co.uk which the Registrant had registered.' (above. 6.8)
7.4.2      In making this claim the Complainant is incorrect. While the Respondent is responsible for the registration of the domain names 'morganstanlry.co.uk', 'morgamstanley.co.uk' and 'morganstanlet.co.uk', he was not responsible for the registration of the domain names 'guilbertonline.co.uk', 'searchpress.co.uk' 'linrtan.co.uk' or 'harrycorry.co.uk', all of which were registered buy his brother Robert Morrison (below 7.5.6). Thus I will only consider the three variations on the Morgan Stanley name to be evidence of an abusive pattern of registrations.
7.4.3      Is this sufficient evidence of a 'pattern'? I turn here to guidance from earlier decisions. In National Westminster Bank Plc v. James Robinson [2006] DRS 3377, an eventual list of nineteen domain names was sufficient to establish a pattern under paragraph 3(a)(iii). In eharmony.com Inc v. Brett Donavan [2007] DRS 4202, a list of four, as yet unchallenged, domain names was insufficient to establish a pattern under paragraph 3(a)(iii). On the basis of these, the claim against the Respondent seems weak.
7.4.4      I believe though the most widely applied guidance on paragraph 3(a)(iii) is that of Mr. Lowe in the decision Hayes & Jarvis (Travel) Limited v. M Strong (trading as Fuz Pty Ltd) [2005] DRS 02352. Here the Expert found that:

'The Respondent has apparently been the subject of an earlier decision under the Policy (based on two complaints), which concerned the registration of nine domain names all of which represented slight misspellings of the household name of Alliance & Leicester plc. Although the Complainant has only been able to point to this one instance in which such a finding was made against the Respondent, I consider that the Respondent's involvement in nine abusive registrations in that case and the present case is at least indicative of a pattern of registrations of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights.'

7.4.5      How should one apply this guidance in the instant case? The Respondent has only been found to have been engaged to date in three abusive registrations, all variants of the Morgan Stanley name. Are three such registrations enough to form a pattern? Given that the Respondent has been subject to two successful claims dealing with three separate domain names in the past eighteen months, further given that an automatic presumption of an abusive registration is raised under paragraph 3(c) of the Policy upon three successful complaints being raised against the Respondent in two years, I believe it is not unreasonable to hold that a pattern of two successful claims, involving three domain names, in an eighteen month period is sufficient to raise the presumption that the Respondent is engaged in a pattern of abusive registrations under paragraph 3(a)(iii).
7.4.6      I therefore find that the Complainant has raised a presumption of abusive registration under paragraph 3(a)(iii) of the Policy.

7.5 Paragraph 3(c)

7.5.1      Although the above declaration has already found the actions of the Respondent to be Abusive under paragraph 3(a)(iii), I will examine the claim under paragraph 3(c) in the hope it may give guidance in future disputes.
7.5.2      The Complainant refers the Expert to only two adverse decisions: Morgan Stanley v John Morrison [2006] DRS 3189 (decided 2 February 2006) and Morgan Stanley v Morrison [2005] DRS 2961 (decided 6 November 2005). To qualify under paragraph 3(c), the Complainant would have to establish that on at least one further occasion in the preceding two years Mr. John Morrison was subject to a finding of abusive registration under the DRS Procedure.
7.5.3      There is no other decision outstanding against either Mr. John Morrison, or against an individual or business registered at the address given. Ordinarily this would render the claim under this paragraph ineffective, but the Complainant relies upon the judgement of Mr. Phillips in Morgan Stanley v John Morrison [2006] DRS 3189 (above at 6.11 and repeated here) the he states at paragraph 7.17

'It seems to me extremely likely that the Respondent in this case who gave his name as John Morrison here and simply "Morrison" in the earlier Morgan Stanley typo-squatting case and who has an address in Malta is likely to be either the same or closely connected to the Robert Morrison who has been the Respondent in these four earlier DRS cases … I do not need to decide whether they are the same in this case and indeed the Complainant has not asked me to. I do however raise this point here because it may well be that the next complainant who finds himself faced with a Mr Morrison, with an address in Malta, who has registered that complainant's company name or a variation of it may wish to avail himself of the provisions of Paragraph 3(c) of the Policy.'

7.5.4      Paragraph 3(c) requires that the Complainant prove the Respondent has been engaged in a pattern of abusive registration. Has the Complainant produced enough evidence to do so in the instant case?
7.5.5      The Complainant, obviously wishes to suggest that Mr. John Morrison is the same person as Mr. Robert Morrison who has been subject to several adverse DRS decisions in the last two years. On the face of it all they have in common is the surname 'Morrison' and an address in Malta. This is clearly not enough to establish they are the same person.
7.5.6      By doing a search of archived materials in relation to Melitaweb (a Company linked to Mr. Robert Morrison and listed as the Tag Holder for the Domain Name) I find that in a post to a technical support forum dated 18 June 2003, Mr. Robert Morrison explains that Mr. John Morrison is his brother. Therefore in terms of paragraph 3(c), the Respondent and Mr. Robert Morrison cannot be treated as the same person and I must therefore dismiss the claim under this head, although it should be noted that this decision, will form the third adverse decision against Mr. John Morrison should another complainant wish to avail himself of the provisions of Paragraph 3(c) of the Policy.

7.6 Abusive Registration

7.6.1      Having found the Complainant to have made out a prima facia case under paragraph 3(a)(iii) the Policy the burden under paragraph 4 now shifts to the Respondent to demonstrate their use is not an Abusive Registration.
7.6.2      The Expert having found the Respondent has a case to answer, the Respondent must make that answer. Here the Respondent has failed to answer and therefore cannot rebut the presumption of Abusive Registration.
7.6.3      Accordingly, the Expert finds that the Domain Name is an Abusive Registration as defined by paragraph 1 of the Policy on the basis that it is being used in a manner which takes unfair advantage of the Complainant's rights.

8. Decision:

In light of the foregoing findings, namely that the Complainants have rights in respect of name which are identical 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, sainsburysentertainment.co.uk, be transferred to the Complainant.

Andrew Murray Date: 29 March 2007