Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS 05184

Large Holiday Houses and IcedIT.com

Decision of Independent Expert

1. Parties

Complainant: Large Holiday Houses

Country: GB

Respondent: IcedIT.com

Country: AU

2. Domain Name

lhhscotland.co.uk

3. Procedural Background

The Complaint was lodged with Nominet on 30 October 2007. Nominet validated the Complaint and notified the Respondent of the Complaint on 5 November 2007 and informed the Respondent that it had until 27 November 2007 to lodge a Response. No Response was received from the Respondent and, on 28 November 2007, Nominet informed the parties that, in the circumstances, Nominet could not provide mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 12 December 2007. On 5 December 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").

On 14 December 2007 the undersigned David King ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of no matters which ought to be brought to the attention of the parties which might appear to call into question his independence and/or impartiality. Nominet appointed the Expert in this matter on 17 December 2007.

4. Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with Paragraph 5a of Nominet's Dispute Resolution Procedure (the Procedure). Nominet has written to the Respondent at the above postal address shown in Nominet's WHOIS query result included in the papers provided by Nominet to the Expert and by e-mail to three different e-mail addresses. Nominet has also endeavoured to contact the Respondent by fax but has received no response to any of its communications.

The Expert is satisfied that the Complaint was properly delivered to the Respondent in

accordance with Paragraph 2 of the Procedure and that, in the absence of a Response from

the Respondent, there are no exceptional circumstances present to prevent the Expert from

proceeding with the Decision of this Complaint.

5. The Facts

The Complainant is a letting agent for holiday properties in Scotland and France.

The Complaint has been made by Large Holiday Houses, whose company name is Large Holiday Houses Limited, a company incorporated in Scotland on 7 October 2003 under company number SC257194.

The Complainant advertises the holiday properties in Scotland on its web-site at www.lhhscotland.com which was registered on 29 June 2000.

The Respondent registered the Domain Name on 30 June 2004.

In August 2005, the Complainant, in the name of LHH Ltd, made a complaint to Nominet under the Dispute Resolution Service regarding the Respondent's registration and use of the Domain Name under Complaint Reference 3626, which led to an Expert's decision under DRS 02823. The Expert in that case found that LHH Ltd did not have Rights in a name which was similar to the Domain Name and rejected the Complaint.

6. The Parties' Contentions

Complainant

The Complaint can be summarised as follows:

Since the Complaint in 2005, the Respondent has continued to gather links for click-through revenue using the same wording as before and listing some of the main competitors of the Complainant.

The Complainant has built up and has used the trading name and trade mark of LHH since 1998. It is registered as a limited company under the name Large Holiday Houses Limited and owns the web-site www.lhhscotland.com which was registered on 29 June 2000.

All the Complainant's stationery, advertising and publications include the logo and/or refer to LHH. Potential and existing customers will attempt to key in the address www.lhhscotland.co.uk just as readily as www.lhhscotland.com. The Respondent is using the Complainant's brand to profit from "click-through traffic" and has attempted to pass off as the Complainant's company by listing some of the properties offered exclusively by the Complainant. Users are then led to a list of business links which are not related to the properties or to the Complainant and to links to third party web-sites including one of the Complainant's main competitors. The Respondent's web-site might indicate to some customers that the Complainant's web-site no longer exists. The Respondent is therefore damaging the Complainant's brand and business.

The Respondent has no obvious business interests in Scotland or in the holiday house industry and it is possible that it is the Respondent's intention to block or otherwise interrupt the Complainant's business. The "HH" in "LHHScotland" does not intuitively stand for "Holiday House" and therefore the Respondent's choice of advertising keywords based on "Holiday Houses" is clearly based on the Complainant's brand.

The Respondent has abused the names of other companies resulting in domain name complaints against the Respondent in the .com registry.

In support of its contentions the Complainant has provided documentation, which the Expert confirms he has perused.

Respondent

The Respondent has not responded to the Complaint.

7. Discussion and Findings:

General

Paragraph 2 of Nominet's Dispute Resolution Policy ("the Policy") requires that, to succeed, the Complainant must prove to the Expert, on the balance of probabilities, both 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 as defined in paragraph 1 of the Policy.

The previous Decision under DRS 02823

As mentioned above, the Complainant made a complaint in August 2005 which resulted in an Expert's Decision under DRS 02823. In that Decision the complaint was rejected. It is not the task of the Expert to review that Decision. The Complainant is entitled to make a new Complaint. The Expert will base his Decision on the new Complaint and the evidence provided to him. The Expert will therefore make no further reference to DRS 02823.

Complainants' Rights

In its submission, the Complainant refers to its trade mark "LHH" but there is no evidence that the Complainant has registered "LHH" as a trade mark. It is therefore necessary to consider whether the Complaint has acquired common law rights in the name "lhhscotland" or a similar name. The Complainant has provided copies of its brochures and stationery all of which include references to "Large Holiday Houses", "Large Holiday Houses Ltd", "LHH Ltd" and "LHH". The Expert is satisfied that they are all the same entity and that the Complainant trades under the name "LHH". The brochures and stationery also bear the logo "LHH" in a stylised form and include reference to the Complainant's web-site www.lhhscotland.com.

The Complainant submits that it has used the trading name "LHH" since 1998. The Complainant registered its web-site www.lhhscotland.com on 29 June 2000. With the Complaint, the Complainant has provided a copy of a letter dated 2 August 2005 to the Complainant from a retired major in Essex in which he states that, knowing that the Complainant's main brand was "lhhscotland", he looked for its web-site by inputting "lhhscotland.co.uk" which, while using the brand and many of its business details (including the same house names), did not lead to its properties but, instead, led to pornographic sites.

Although the full name of the Complainant and its company include generic and descriptive words, the trading name of "LHH" is not, in itself, generic or descriptive. The distinctive component of the Domain Name is "lhh" and the Expert considers that the Complainant has acquired Rights in this name.

The evidence is insufficient to establish exactly when the Complainant commenced trading under the name "LHH" but the Expert considers that the Complainant has built up sufficient goodwill and reputation in the name "LHH" to establish Rights in this name within the terms of the "Policy". The addition of the geographic location "scotland" does not detract from the Complainant's Rights but merely indicates that "lhhscotland" relates to the Complainant's business in Scotland.

The Expert finds that, for the purposes of the Policy, the Complainant has Rights in respect of a name or mark which is similar to the Domain Name.

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 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, is set out in paragraph 3 of the Policy.

Under paragraphs 3 a i B and C, there may be Abusive Registration if circumstances indicate that the Respondent has registered the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights or primarily for the purpose of unfairly disrupting the business of the Complainant. Under paragraph 3 a ii of the Policy, there may be evidence of Abusive Registration if there are 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.

Undoubtedly registration of the Domain Name is preventing the Complainant from registering the Domain Name but that is always a feature of Domain Name disputes. The Respondent has not responded to the Complaint and has, therefore, not given any explanation of its prime motives for registering the Domain Name. Although inferences can be made when there is no Response from a Respondent, the Expert would wish to see some evidence of intent in order to find that the Respondent's primary motive was to block registration by the Complainant.

The Complainant, however, has provided evidence that the Respondent has taken unfair advantage of the Complainant's trading name without its authority. The print-out of the Domain Name web-site provided by Nominet includes references to properties offered by the Complainant, namely, Knockbrex Castle, Law Castle and Cortes House. In the absence of any Response from the Respondent and any evidence to the contrary, the Expert accepts the Complainant's statement that these properties are offered exclusively by the Complainant. When the Expert visited the Domain Name web-site, he found that the home page included Knockbrex House and Morenish House (another property offered by the Complainant) with links to various commercial sites not connected with the Complainant. Consequently, the Respondent is able to earn revenue for each click on a linked advertisement, thereby taking unfair advantage of the Complainant's Rights. The Complainant has provided a copy of the letter dated 2 August 2005, to which I have referred to above. Although there is no longer any suggestion that the Domain Name now leads to pornographic sites, the potential for disruption of and confusion with the Complainant's business as a result of the Respondent's current use of the Domain Name is obvious. It is extremely likely that people and businesses wishing to access the Complainant's web-site, in fact, visit the Respondent's web-site in the belief that the web-site is associated with or authorised by the Complainant.

The Expert concludes that, on the balance of probabilities, the Respondent has registered and used the Domain Name in order to take unfair advantage of the Complainant's name. This is Abusive Registration within the terms of the Policy.

The Complainant has also submitted that the Respondent is "a repeated offender" in other domain name disputes and has referred to WIPO cases in the .com registry. The Complainant has not provided copies or sufficient details of these cases for the Expert to form a view on this submission. The Expert will therefore not consider further this aspect of the Complaint. In any event, for the reasons stated above, the Expert has already found evidence of Abusive Registration in respect of the Respondent's registration and use of the Domain Name.

8. Decision

In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is 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 www.lhhscotland.co.uk be transferred to the Complainant.

David King 3 January 2008