Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 04546 NEWSQUEST MEDIA GROUP LIMITED v. CHAO INVESTMENTS LIMITED Decision of Independent Expert
1. Parties:

Complainant: Newsquest Media Group Limited

Country: GB

Respondent: Chao Investments Limited

Country: NZ

2. Domain Names:

(1) telegraphandargus.co.uk; (2) oxfordmail.co.uk ("the Domain Names")

3. Procedural Background:

The Complaint was received by Nominet electronically and in hardcopy on 14 March, 2007. Nominet validated the complaint and informed the Respondent, (at the registrant's recorded address in New Zealand) on 15 March, 2007, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 6 April, 2007) to submit a Response. No substantive Response or other reply of any sort was received. Nominet informed the Complainant accordingly on 12 April, 2007, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly received by Nominet on 24 April, 2007.

Nominet invited the undersigned, Keith Gymer ("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 as of 1 May, 2007.

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

None.

5. The Facts:

The Complainant, Newsquest Media Group Limited, was incorporated (under a previous name) in 1982 and adopted its present name in 1996. It is the second-largest UK publisher of local newspapers, publishing over 300 local daily and weekly papers. These include the Telegraph and Argus (established in 1926 and covering the Bradford area) and the Oxford Mail (established in 1928 and covering the Oxford area).

From the WHOIS records, the Domain Name telegraphandargus.co.uk was first registered on 11 August, 2004 and the Domain Name oxfordmail.co.uk was first registered on 23 May, 2004. Both Domain Names were subsequently transferred to the Respondent, Chao Investments Limited, as part of a mass transfer on or about 24 July, 2006. At the time of the Complaint, for both Domain Names, the Nominet Register shows "David Halstead" as the registrant (Respondent's) named contact, "David Halstead (Domain Administration Limited)" as the named Admin. Contact, and "Robert Morrison" as the Billing Contact. The WHOIS record also shows the "Registrant Type" in both cases as supposedly a "Non-UK Corporation".

6. The Parties' Contentions:

Complainant:

The Complainant has asserted that:

1. The Complainant has Rights in respect of a names or marks which are identical or similar to each of the Domain Names (Policy Paragraph 2a(i)); and

2. Each of the Domain Names, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).

The Complainant made supporting submissions as follows:

"The domain names in dispute are identical to the names in which we have rights. These rights are enforceable under English law.

Newsquest Media Group publishes the Oxford Mail (established in 1928) and the Telegraph and Argus (established in 1926, the Telegraph and Argus was formed by newspapers prominent in the 19th century). These are well established and highly respected newspapers in the United Kingdom. Both newspapers have built up a strong regional identity and valuable goodwill in the communities they serve.

The registrant of both domain names is Chao Investments Limited, of New Zealand, a non-UK registrant, which has taken an unfair advantage of our rights by opting to use domain names identical to the names in which we hold the rights and the .co.uk UK specific suffix.

We refer you to numerous Nominet DRS decisions found against this registrant in 2006 and 2007. In January and February 2007 alone, the references are DRS 4219, DRS 4297, DRS 4323, DRS 4253 and DRS 4271. In all these decisions, the registrant did not reply to the complainant if the complainant attempted to contract the registrant, nor did the registrant respond to Nominet's notifications.

We submit that both registrations are an exploitation of our rights and abusive. We are particularly disturbed that the Registrant is utilising the websites to host and profit from sponsored links with commercial organisations on www.oxfordmail.co.uk, there is a link entitled "News in the Oxford Mail Paper" which then leads to a webpage which contains more sponsored links. This is a flagrant misuse of the Oxford Mail's name and unjust enrichment from Newsquest's hard-won reputation. In our submission the abuse causes confusion to the general public and amounts to an actionable passing-off under UK law.

We submit that readers of the Oxford Mail and the Telegraph and Argus are likely to believe that these websites are operated by or in some way connected to the newspapers themselves. Furthermore, we rely upon the presumption of abusive registration (Paragraph 3 (c) of the Nominet UK Dispute Resolution Service Policy ("Policy")) due to the fact that the registrant has a history of registering domain names which are identical or similar to registered and unregistered trademarks (please see the reference numbers listed in this complaint).

We refer you to the penultimate paragraphs of the independent expert adjudicator's decision in DRS 04271 (Courtesy Shoes Limited v. Chao Investments Limited). It has been suggested by the adjudicator appointed by Nominet that Nominet seeks "appropriate confirmation of the legal existence of "Chao Investments Limited" particularly in relation to any other .uk domain names for which it is named registrant and, in the absence of proof of identity, should consider invoking sanctions under Paragraph 16 of Nominet's Terms and Conditions" which states Nominet may cancel or put the domain name into a special status by notifying the registrant if (a) Nominet receives independent proof that the registrant has provided significantly inaccurate, not correct, unreliable or false contact details (including names), failed to keep contact details up to date, or failed to give Nominet those details at all or (b)if the registrant has broken any part of condition 7 which stipulates that the registrant promises that it is not infringing the intellectual property rights of anyone else.

We submit that the registrant, Chao Investments Limited, is infringing our common law trademark rights.

We hereby request that the domain name[s] be transferred to Newsquest Media Group, the proprietors of the Oxford Mail and Telegraph and Argus."

Respondent:

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

7. Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to each of the Domain Names; and that each of the Domain Names, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

Complainant's Rights

The Complainant in this case has asserted that it has rights (1) in the name TELEGRAPH AND ARGUS, and that this name is identical or similar to the Domain Name telegraphandargus.co.uk; and (2) in the name OXFORD MAIL, and that this name is identical or similar to the Domain Name oxfordmail.co.uk.

The Complainant has not provided any evidence of trade mark registrations for its newspaper names. However, as the Complainant has pointed out, both papers have been published for around 80 years and will plainly have established community recognition and goodwill in their names over that period. The Telegraph & Argus operates a website at www.thetelegraphandargus.co.uk and the Oxford Mail operates a website at www.oxfordmail.net. Both websites also have online archives dating back to at least 1998 well before the dates of registration of the Domain Names.

The Expert is satisfied that the Complainant would have substantial unregistered common law rights in each of the newspaper names. The distinctive element of the Domain Names "telegraphandargus.co.uk" and "oxfordmail.co.uk", in each case, is identical to the Complainant's respective newspaper name. Consequently, the Expert concludes that the Complainant does have Rights in each case in respect of a name or mark, which is identical to each of the Domain Names.

Abusive Registration

The Complainant also has to show that each of the Domain Names is 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.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy. Potentially applicable in the present case in particular are the examples in Paragraph 3a(ii), (iii) and (iv):

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."

iii 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;

iv It is independently verified that the Respondent has given false contact details to us [Nominet];

However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

The Complainant has also asserted that the Respondent, having been previously cited as the losing Respondent in at least three previous DRS Decisions within the last two years, is subject to the presumption under Paragraph 3 (c) of the Policy.

Paragraph 3 (c) of the Policy states 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))." [Paragraph 4 (c) puts the onus on the Respondent to prove that the registration of the Domain Name is not an Abusive Registration.].

At the time of the Complaint, Chao Investments Limited has been named as the losing Respondent in six recent DRS cases in all of which the relevant domain names were held to have been Abusive Registrations:

DRS 04353 lurpackbreakfast.co.uk

DRS 04323 morganandstanley.co.uk

DRS 04297 hotwheels.co.uk

DRS 04271 wynsors.co.uk

DRS 04253 papermillshop.co.uk

DRS 04219 jhdonald.co.uk

The Expert is therefore prepared to accept that Paragraph 3 (c) of the Policy does apply and the Domain Names at issue in the present case are presumed to be Abusive Registrations in the absence of any rebuttal by the Respondent.

Even if the presumption in Paragraph 3 (c) were not to be applicable, the Expert is satisfied that the evidence demonstrates that both the Domain Names have been used to redirect surfers seeking the Complainant's newspapers to websites with links, which, if clicked through, would generate income for the Respondent, with no reference to, and not connected with, the Complainant or its businesses.

The Respondent has offered no honest explanation for its adoption and use of the Domain Names. As is typically the case in such circumstances, the Respondent has simply misappropriated the Complainant's property – their goodwill in the respective newspaper's names, with the undisguised intention of unfairly profiting from use of the Domain Names with complete disregard for the rights of the Complainant.

In the Expert's view, this evidence is sufficient to substantiate the Complainant's assertion that the Domain Names are Abusive Registrations for the purposes of the Policy.

However, it is not just the nominal Respondent itself, Chao Investments Limited, in this case which has repeatedly been the losing Respondent in previous DRS cases.

From the WHOIS records, the original registrant of the Domain Names was evidently Robert Morrison. Mr Morrison has been the Respondent in at least eleven previous DRS cases, generally involving a similar fact pattern of incorporating or adapting (in typographically close variants) the brand names of genuine businesses as domain names and exploiting them in a manner that has repeatedly put Mr Morrison on the losing side in such disputes. As noted above and although apparently having transferred the registrations of the Domain Names to "Chao Investments Limited", Mr Morrison remains specified as the Billing Contact for both, which also suggests he may retain at least some financial interest in both these Domain Names.

Additionally, and also as noted above, the Respondent's named Admin. Contact for both Domain Names is actually identified as "David Halstead (Domain Administration Limited)". At the date of this Decision, Domain Administration Limited has now been the losing Respondent in at least eight similar previous DRS cases.

In previous case DRS 04271, as the Complainant in the present case has observed, there was some evidence to suggest that the registrant "Chao Investments Limited" might even have no real existence, leading to the possibility that it might only have a virtual presence on the Nominet domain register. It was suggested that Nominet might have had grounds to seek confirmation of the Respondent registrant's existence and status in that case.

From the evidence in the present case, it would appear that the Respondent is arguably making common cause with an Administrative and a Billing contact who have also been found to have made multiple Abusive Registrations in previous DRS Decisions, and the three together have now totted up over twenty between them. In the Expert's submission, in circumstances like these, Nominet might consider some future amendment to the DRS to allow reversal of the costs burden, such that, for example, where the same Respondent has lost in three preceding cases, it would be for the Respondent to pay the fee for a Decision if it wanted to defend any subsequent case, otherwise the Decision should go by default.

Presently, for the reasons previously given above, the Expert concludes that the Domain Names were both originally registered or otherwise acquired, and have been used by the Respondent, in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and that they are Abusive Registrations for the purposes of the Policy.

8. Decision:

Having concluded that the Complainant has Rights in respect of a name or mark which is similar to each of the Domain Names and that the Domain Names, in the hands of the Respondent, are Abusive Registrations, the Expert orders that the Domain Names, telegraphandargus.co.uk and oxfordmail.co.uk, should be transferred to the Complainant.

Date May 1, 2007

Keith Gymer