Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Complaint No 04956

Decision of Independent Expert

1. Parties

Complainant: Sainsbury's Bank Plc.

Country: GB

Respondent: Laurent Girault

Country: GB

2. Domain Name

sainsburysfinance.co.uk

3. Procedural Background

The Complaint was validated by Nominet on 13 August 2007 and sent to the Respondent on the same date by both post and email to the respective addresses set out in the Registry details. Nominet informed the Respondent that it had 15 working days, i.e. until 5 September 2007, to respond to the Complaint.

The email notification proved to be undeliverable.

By 6 September 2007, no formal Response having been received from the Respondent, Nominet wrote to the Complainant's representative confirming that no Response had been filed and invited the Complainant to request an Expert Decision.

The Complainant paid the fee within the relevant time limit and thereafter I was contacted by Nominet and asked to confirm that I was able to provide an Expert Decision. I responded to Nominet confirming that I was able to provide a decision.

The matter was thereafter duly referred to me, Simon Chapman, ("the Expert") for an Expert Decision.

4. Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a response to the Complaint. From the papers that have been submitted to me by Nominet, it is apparent that they have sent the Complaint to the Respondent using the contact details held on Nominet's Register.

When registering a .uk domain name applicants agree to be bound by Nominet's Terms and Conditions. Clause 4.1 of those terms and conditions states that the registrant of the domain name shall:-

"4.1   give and keep us notified of your correct name, postal address and any phone, fax or e-mail information and those of your contacts (if you appoint any, see condition 5.2). This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register"

In addition paragraph 2(e) of the Dispute Resolution Service Procedure (the "Procedure") states that:-

"e. Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:

i.  if sent by facsimile, on the date transmitted; or

ii.  if sent by first class post, on the second Day after posting; or

iii. if sent via the Internet, on the date that the communication was transmitted;

iv. and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly."

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.

I now move on to consider the consequences of the Respondent not submitting a response.

The Procedure envisages just such a situation and provides in Paragraph 15 that:-

"c. If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate."

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision.

I will draw such inferences from the Respondent's failure to respond as I think appropriate, but must keep in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say.

5. The Facts

The Complainant is a joint venture company, between Sainsbury's Plc (the well known UK supermarket) and the Governor and Company of the Bank of Scotland (a subsidiary of HBOS Plc). It commenced trading in 1997. The product range of the Complainant includes savings and loan products, credit cards, travel services and a number of insurance products. It has over 1.5 million customers and receives over 400,000 visitors a month to its website (found at ). In 2006 £12m was spent on advertising, with many more millions to be spent in 2007 and 2008.

The Complainant is the proprietor of a number of UK and Community registered trade marks, including those for "SAINSBURY'S BANK" in a number of classes relevant to their activities, the earliest of which appears to take effect from 1996. It is also the proprietor of a number of domain names incorporating its name.

The Domain Name was registered in April 2005, some 10 or so years after the Complainant commenced business. At the time of the Complaint itwas directed to a Sedo parking site, a result of which is that the site offers advertisements/links to the Complainant's competitors.

The Respondent has been a respondent to a previous compliant concerning the domain names and (Case No 03806). The expert in that case determined that the registrations were abusive.

The Parties' Contentions

Complainant

The Complainant asserts that it has Rights in respect of a name and marks which are similar to the Domain Name and that the Domain Name in the hands of the Respondent is an "Abusive Registration" as defined in the Dispute Resolution Service Policy (the "Policy").

In support of the claim to Rights, the Complainant asserts the extent of its use of its name, and also the various trade mark and domain name registrations that it owns.

In support of the claim that the Domain Names are Abusive Registrations the Complainant says that -

i) the Respondent registered the Domain Name after the creation of the Complainant's Rights, and the Respondent has no rights in the name "Sainsbury's", nor does it have the Complainant's permission to use the name;

ii) the use of the name "Sainsbury's" in conjunction with the word "Finance" creates a likelihood of confusion on the part of potential customers and gives the impression that there is a connection between the Respondent's website and the Complainant.

Respondent

As indicated above, the Respondent has not filed a Response.

6. Discussion and Findings:

General

To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that:

(i) it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and

(ii) the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

Despite the absence of a response from the Respondent, the Complainant must make out its case to the Expert on the balance of probabilities. It is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

Complainant's Rights

The DRS Policy defines Rights as follows –

"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"

The Complainant, is the proprietor of registrations for the trade mark 'SAINSBURY'S BANK' and has used that mark such that they have created extensive goodwill therein. It is clear that the Complainant therefore qualifies as having the necessary rights in that mark.

The Policy requires such rights to be in a name or mark identical or similar to the Disputed Domain Name. The Domain Name is For the purpose of analysing whether the Domain Name is identical or similar to the name or mark in which rights are claimed, one must ignore the .co.uk suffix. The comparison is therefore between 'SAINSBURY'S BANK' on the one hand, and 'SAINSBURYSFINANCE' on the other. In my opinion the DOMINANT AND DISTINCTIVE PART OF BOTH THE TRADE MARK AND THE Domain Name is the word SAINSBURY'S, and in both cases the additional descriptive words, "BANK" and "FINANCE" have similar connotations. I determine that the Complainant has established that it has Rights in a mark similar to the disputed Domain Name.

Abusive Registration

I now go on to consider the extent to which the disputed Domain Name is an Abusive Registration.

The Complainant asserts that the registration of the Domain Name is an Abusive Registration for the reasons identified above.

The Policy defines an 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"

and goes on to set out a (non-exhaustive) list of factors which may be evidence that a domain name is an Abusive Registration.

The Complainant has set out specific grounds of complaint, which marry up broadly with certain grounds set out in the Policy, namely (a) unfairly disrupting the business of the Complainant, and (b) use such that will create the likelihood of confusion. In my opinion both grounds of complaint succeed. The adoption of a domain name that incorporates the Complainant's well known mark, in conjunction with a further descriptive term will inevitably lead to some disruption to the Complainant's business, and probably confusion by those that come across the Respondent's site. I can think of no good reason why the Respondent would have adopted the Domain Name other than to benefit from the reputation of the Complainant. The previous registrations and circumstances of Case No 03806 lend support to this finding. In the present case, the Respondent has failed to take the opportunity of explaining its conduct. I have little difficulty in determining that the use of the Domain Name by the Respondent is Abusive.

7. Decision

For the reasons set out above, I find that the Complainant does have Rights in respect of a name and marks which are similar or identical to the Domain Name , and that the Domain Name in the hands of the Respondent is an Abusive Registration. The Complaint therefore succeeds.

The disputed Domain Name should be transferred to the Complainant.

Simon Chapman

1 October 2007