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Norton Finance (UK) Limited -v- James
Robinson |
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Nominet UK Dispute Resolution
Service
DRS 05265
Norton Finance (UK) Limited -v-
James Robinson
Decision of Independent
Expert |
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1. Parties:
Complainant:
Norton Finance (UK) Limited
145 Wellgate Rotherham South
Yorkshire S60 2NN
Respondent:
James
Robinson
17 Alastair Crescent
Prenton
Wirral
CH43 0UR
2. Domain
Name: wwwnortonfinance.co.uk ("the Domain Name")
3. Procedural
Background:
The Complaint was received by
Nominet on 22 November 2007. Nominet validated the Complaint and sent a
copy to the Respondent.
No Response was received by Nominet.
On 28 December 2007 the Complainant
paid Nominet the required fee for a decision of an Expert pursuant to the
Nominet UK Dispute Resolution Service Policy ("the Policy").
Nominet invited the undersigned,
Jason Rawkins ("the Expert"), to provide a decision on this case and duly
appointed the undersigned as the Expert with effect from 11 January
2008.
4. The
Parties' Contentions:
Complainant:
The Complainant's submissions can be
summarised as follows:
1. The Complainant has rights in
trade marks/names which are identical or similar to the Domain
Name:
(1) The Complainant owns UK trade
mark registration number 2374663, filed on 2 October 2004, for the word
marks NORTON FINANCE and NORTON (in series). |
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UKMAT:6289341.1 |
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(2) The
Complainant was incorporated on 4 January 1988 and commenced carrying on
the business of finance brokerage in the UK under the name "Norton
Finance" around that time.
(3) The
Complainant operates its main websites at www.nortonfinance.com
and www.nortonfinance.co.uk.
Between 15 September 2006 and 31 December 2006 there were 1,129,918 visits
to the latter website. In 2007, up to the date when the Complaint was
filed (21 November 2007), there were 4,007,112 visits and 54,394,821 page
impressions recorded.
(4) The
Complainant is registered with the Finance Industry Standards Association
and is a member of the Association of Finance Brokers. In an average month
it receives approximately 9,000 customer applications for loans totalling
over £200 million and arranges loans totalling over £21 million for over
1,000 customers.
(5) The
Complainant's turnover for the years ending 2003, 2004 and 2005 was
£10,731,806, £9,372,350 and £12,069,000 respectively.
(6) During the
period between 2004 and 2006, over £50 million was spent marketing the
"Norton Finance" name. The marketing has included advertising in national
and trade newspapers, magazines and directories, television campaigns and
internet advertising.
(7) In light of
the above, the Complainant relies on its trade mark registration. It also
relies on common law rights, having acquired substantial reputation and
goodwill relating to the "Norton Finance" and "Norton" names by virtue of
its extensive trading and marketing activities.
(8) The Domain
Name is similar to the Complainant's Norton Finance and Norton trade
marks, disregarding the .co.uk suffix. The Domain Name differs only
by the inclusion of the generic abbreviation "www" for the world
wide web. It is also similar to the Complainant's Norton name as the only
further difference is the descriptive word
"finance". |
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2. The Domain Name is an Abusive Registration in the hands of
the Respondent:
(1) As at 18
January 2006, there was a website available at the Domain Name comprising
a directory of affiliate links to financial service websites, including
websites offering loans competing with the Complainant, as well as a link
to the Complainant's own website www.nortonfinance.co.uk.
(2) The
Complainant's solicitors sent a cease and desist letter to the
Respondent's address on 25 January 2006. No response was received. A
reminder letter was sent by post on 6 February 2006, and again no response
was received.
(3) The
Respondent has been found guilty of abusive registration in at least one
previous Nominet DRS case: National Westminster Bank plc -v-James Robinson
(DRS 03377) in relation to the domain name
natwestcreditcards.co.uk.
(4) The
Respondent also owns numerous other domain names reflecting well-known
trade marks, including halufax.co.uk, halyfax.co.uk,
mbna-cards.co.uk, mbna-creditcards.co.uk, eegg.co.uk
and sainsburys-bank.co.uk (a print-out of the website at www.halyfax.co.uk
being exhibited to the Complaint, as well as a list of the
Respondent's other financial services-related domain names mentioned in
the decision in DRS 03377). |
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(5) The
Complainant has no association with the Respondent and has never
authorised or licensed the Respondent to use its trade marks.
(6) The
Respondent registered the Domain Name for the purpose of unfairly
disrupting the business of the Complainant (see paragraph 3aiC of the
Policy).
(7) The
Respondent was clearly aware of the Complainant and its business when it
registered the Domain Name. It is clear from the following that the
Respondent had the Complainant and its business in mind when registering
and using the Domain Name:
(a) the Respondent has not denied this
assertion by the Complainant;
(b) the Domain
Name comprises the Complainant's distinctive trade mark and it is
inconceivable that the Respondent registered the Domain Name independently
of that trade mark;
(c) the Domain
Name is explicable only as a deliberate misspelling of the address of the
Complainant's website;
(d) the purpose
in registering and using the Domain Name in relation to financial services
can only have been to target the Complainant's business; and
(e) the website
at the Domain Name includes links to the Complainant's own
website.
(8) The
Respondent has also engaged in a pattern of similar behaviour relating to
Domain Names (see paragraph 3aiii of the Policy). The Respondent has been
found to have acted abusively in at least one previous DRS complaint
concerning a domain name reflecting another well-known trade mark (DRS
03377). The Respondent also owns (or owned) numerous other domain names
reflecting well-known trade marks and in which the Respondent has no
apparent rights (see above). The Domain Name is part of this pattern
because the Respondent's domain names are similar to (including
misspellings of) well-known businesses which have a substantial internet
presence including many in the financial services sector. In addition, the
domain names resolve to the same "Pocket Lolly" affiliate website as the
Domain Name does. In DRS 03377, the Respondent's financial
services-related domain names were held to have been an abusive
pattern.
(9) In using the
Domain Name the Respondent has intended to confuse the public into
believing that the Domain Name was connected with the Complainant. Such
use should suffice for the purposes of paragraph 3aii of the Policy,
whether or not there is evidence of actual confusion. In any event, such
intention is a factor evidencing an abusive registration independently of
paragraph 3aii. The website at the Domain Name is essentially a scheme
adopted by the Respondent to confuse, attract and profit from internet
users who omit the dot after "www" when typing the Complainant's
trade mark into search engines, web browsers and otherwise on the
internet. This has not been denied by the Respondent. Furthermore, the
Domain Name appears prominently at the top of the website home page,
thereby adding to likely confusion on the part of internet
users.
(10) The Respondent had
a motive to attract the Complainant's business. The Respondent was clearly
intent upon commercial gain by means of affiliate/ |
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sponsored links and advertising. It
is difficult to conceive that the Respondent would engage in a scheme such
as this for a non-commercial purpose.
(11) The Complainant also relies on
the fact that the Respondent has not responded to, let alone denied, the
assertions of abusive registration in the pre-action communications by the
Complainant. It is reasonable to assume that, if the Respondent did have
legitimate purposes in registering and using the Domain Name, he would
have said so.
Respondent:
No Response has been filed by the
Respondent.
5. The
Facts:
The Nominet Records show that the
Domain Name was registered on 9 June 2004.
Based on the Complainant's
submissions and a review of the materials annexed to the Complaint, set
out below are the main facts which I have accepted as being true in
reaching a decision in this case:
(1) The
Complainant owns a UK trade mark registration for the word marks NORTON
FINANCE and NORTON.
(2) The
Complainant has traded on a significant scale under the "Norton Finance"
name for several years, and has spent a substantial amount on promoting
itself under that name. As a consequence, the Complainant has established
goodwill, and therefore unregistered trade mark rights, in the "Norton
Finance" name.
(3) The Domain
Name directs to a website consisting of links to various financial
services websites, including websites of business which compete with the
Complainant.
(4) The
Respondent owns numerous other domain names which incorporate well-known
third party trade marks.
6. Discussion and
Findings:
General
Paragraph 2 of the Policy provides
that, to be successful, the Complainant must prove on the balance of
probabilities that:
i it 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 (as defined in paragraph 1
of the Policy).
Complainant's Rights
Based on the above, it is clear that
the Complainant has rights in the "Norton Finance" name. Disregarding the
generic .co.uk suffix, the Domain Name is very similar to the
Norton Finance name, the only difference being the "www"
prefix.
I therefore find that the first limb of paragraph 2 of the
Policy is satisfied. |
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Abusive
Registration
Paragraph 1 of 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."
Paragraph 3 of the Policy sets out a
non-exhaustive list of factors which may be evidence that a Domain Name is
an Abusive Registration. The factors under paragraph 3a on which the
Complainant relies in this case are as follows:
"i. Circumstances indicating that
the Respondent has registered or otherwise acquired the Domain Name
primarily: |
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C for the purpose of unfairly disrupting the business of
the Complainant;
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;"
The Domain Name directs to a website
containing links to financial services-related websites directly competing
with the Complainant. Paragraph 3aii of the Policy (set out above) refers
to actual confusion having occurred, namely people or businesses having
believed that the Domain Name is registered to, operated or authorised by,
or otherwise connected with the Complainant. Nevertheless paragraph 3 is a
non-exhaustive list of factors. It has been held in previous Nominet
decisions that a likelihood of such confusion arising in the future is
also relevant, and I agree with this.
The question is whether the
Respondent's use of the Domain Name has caused such confusion, or is
likely to do so in the future. The fact that the Respondent is using the
Complainant's name to direct visitors to competing websites means, on the
balance of probabilities, that it will already have caused confusion to
occur and/or that it will occur in the future, whether just "initial
interest confusion" or also confusion of a more long-lasting nature. As a
consequence, paragraph 3aii of the Policy applies.
The Complainant also relies on
paragraph 3aiii. The Respondent has registered a significant number of
.co.uk domain names and several of these are very similar to well-known
third party trade marks (including several in the financial services
field). The Respondent has no apparent rights in such marks and has not
availed himself of the opportunity to make any submissions to the
contrary. The Respondent has also had at least one decision made against
him under the Nominet dispute resolution service (DRS 03377). Taking all
of this into account, I find that the Respondent is engaged in a pattern
of registrations of the nature described under paragraph 3aiii of the
Policy, and |
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that the Domain Name is part of that
pattern. I note that the expert reached the same view in the DRS 03377
case. |
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Because of the findings which I have
made, it is clear to me that the Domain Name was registered, and has been
used, in a manner which took unfair advantage of, and/was unfairly
detrimental to, the Complainant's Rights; and that it is therefore an
Abusive Registration.
7. Decision:
Having found that the Complainant
has rights in respect of names which are identical or 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
wwwnortonfinance.co.uk be transferred to the
Complainant.
________________________________________________________________ |
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Jason Rawkins
15 January
2008 |
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