Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS 5752

DECISION OF THE INDEPENDENT EXPERT

Associated Newspapers Limited v Owen Webster

1. Parties

Complainant's Details

Complainant Type: Business

Complainant: Associated Newspapers Limited

Country: GB

Respondent's Details

Respondent: Owen Webster

Country: GB

and Unit 5, 29 Wood Street Lane

Cove West, Sydney, NSW 2066, Australia

2. Disputed Domain Names

scottishdailymail.co.uk ('the Domain Name')

3. Procedural Background

3.1 The Complainant lodged the Complaint on 28 May 2008 and validated on the 29^th May by Nominet. Nominet contacted the Registrant and the Claimant's representative by letter dated 29^th May advising that a Complaint had been received and requesting the Registrant to respond by 20^th June 2008.

3.2 No response was received from the Registrant. On 25^th June the Complainant paid

the fee for expert determination. On 27^th June 2008 following a conflict check Margaret Briffa was appointed from the panel of experts.

4. Outstanding Formal Procedure.

None

5. The Facts

5.1     The Complainant was incorporated on 1 April 1905 and is the management company and publisher of a range of publications in the UK including two national newspapers: the Daily Mail and The Mail on Sunday. The Complainant's turnover was £797 million in the year to 1 October 2006 and £818 million to 1 October 2005. Documents proving the date of incorporation and the turnover of the business have been provided with the Complaint.

5.2    . The Complainant owns a range of registered trade marks for DAILY MAIL dating back to 1978 including: (i.) UK trade mark 1090555 dated 6 February 1978: stylized word DAILY MAIL class 16 (newspapers) (ii.) UK trade mark 1207666 dated 22 November 1983: word only DAILY MAIL class 16 (newspapers) (iii.) UK trade mark 1355361 dated 19 August 1988: device and word DAILY MAIL class 16 (newspapers) (iv.) UK trade mark 2009646 dated 1 February 1995: word only DAILY MAIL classes 9 (computer software) and 41 (newspapers) (vi.) Community trade mark E193433 dated 1 April 1996: word only DAILY MAIL classes 9, 16, 35, 38, 41, 42 (ii.) UK trade mark 2190496 dated 22 November 1983: word only DAILY MAIL class 36 (sponsorship and credit card services). (vii.) Community trade mark E1201367 dated 4 June 1999: stylized word DAILY MAIL classes 9, 16, 35, 36, 38, 39, 41, 42. Copies of documents evidencing these trade mark registrations have been provided with the Complaint.

5.3     The Daily Mail is alleged to be the Complainant's flagship publication launched in 1896. The Complainant has submitted a document from the National Readership Survey for 2006 and 2007 showing a readership of over five million per issue.

5.4    . Further documents submitted by the Complainant evidence that the Audited Bureau of Circulations ('ABC') show the Daily Mail's average circulation from 31 March to 27 April 2008 was approximately 2.3 million per issue, making it the second highest-selling UK daily national newspaper.

5.5     The Scottish edition of the Daily Mail is much more recent. It was launched in 1995 and the Complainant's papers include a masthead of the Scottish Daily Mail. The Scottish Daily Mail prioritises Scottish news and sport whilst still providing news from the UK and around the world.

5.6    . The Audited Bureau of Circulations certificate submitted with the Complaint shows circulation of the Scottish Daily Mail from 31 March to 27 April 2008 at approximately 126,000. A graph taken from the Complainant's website shows the growth in circulation from 1995 as growing every year since 1995.

5.7. The Domain was registered on 28 May 2005.

5.8    . As of 22 May 2008, there was a website available at the Domain prominently branded "Scottishdailymail.co.uk" and which comprised a directory of commercial affiliate links, the most prominent which were to other media sites (e.g. The Independent newspaper). Furthermore according to a print out of the source code for the site provided with the Complaint, the Domain Name appears in the metatext.

5.9    . The Complainant's solicitor sent a cease and desist communication letter on 23 May 2008 by recorded signed for delivery care of the physical address of the registrar, Webfusion (as the Respondent opted out of providing his address on the whois information) a copy of which was provided with the Complaint, together with proof of posting. The registrar responded to advise that it did not host the site in question and did not therefore have access to remove the material. The Registrar suggested that the Complaint file a complaint with Nominet.

5.10    . The Respondent has been found to have registered and used domain names in bad faith in at least the following previous DRS cases: Owen Webster DRS 05213 monarchholidays.co.uk, Decision Transfer; Owen Webster DRS 04952 groupamainsurance.co.uk, Decision Transfer; Owen Webster DRS 04200 nobelmarine.co.uk, Decision Transfer; Owen Webster DRS 03967 newburybuildingsociety.co.uk Decision Transfer; and Owen Webster DRS 03811 nationalcountiesbuildingsociety.co.uk Decision Transfer.

6. The Parties Contentions

Rights

6.1     The Complainant claims extensive common law rights through use of the name Daily Mail having traded using the name for over 100 years. The Complainant claims to have common law rights and substantial reputation and goodwill in the marks DAILY MAIL and SCOTTISH DAILY MAIL, which are household names in the UK and indeed well known internationally.

6.2    . The Complainant also relies on its registered trade marks for DAILY MAIL referred to above.

6.3     The Complainant submits that the name Scottish Daily Mail is not wholly descriptive of the Complainant's business. It consists of a distinctive and non-obvious combination of words specific to the Complainant's newspaper in Scotland. In any case, the Complainant contends that the name has become distinctive by virtue of the Complainant's extensive use mentioned above.

6.4     The Complainant contends that the Domain Name is identical to the Complainant's SCOTTISH DAILY MAIL trade mark, disregarding the domain suffix. Alternatively that the Domain Name is similar to the Complainant's DAILY MAIL trade mark, disregarding the domain suffix in that the Domain name wholly incorporates this trade mark and differs only by addition of the generic word SCOTTISH. It is the Complainant's case that term fails to dispel the connection between the Domain and the trade mark; indeed it reinforces the link as the word SCOTTISH in conjunction with the mark DAILY MAIL equates to the name of the Complainant's newspaper in Scotland.

Abusive Registration

6.5     The Complainant points out that there is a presumption of abusive registration under paragraph 3c of the Policy as the Respondent has been found to have made an abusive registration in three (3) or more DRS cases in the two years before the Complaint was filed. There have been at least five successful DRS cases (see above) against the Respondent within the past two years, who duly appears in Nominet's "3 Cases Respondent Table".

6.6     The Complainant further contends that the Registrant intended by registering the Domain Name to prevent the Complainant from reflecting its trade mark in the Domain, which corresponds to that trade mark. The Complainant alleges that the Respondent was clearly aware of the Complainant and its business when it registered the Domain Name. Further, its is claimed that the Respondent must also have known that the Complainant would have wanted to acquire the Domain Name for itself.

6.7     The Complainant submits that the Respondent registered the Domain Name for the purpose of unfairly disrupting the business of the Complainant by attracting its business and diverting it, inter alia, to affiliate websites competing with the Complainant. See, eg, DRS 1919 (allianceandleicester.co.uk). The website at the Domain is essentially a scheme adopted by the Respondent to confuse, attract and profit from internet users who are searching for the Complainant's business in search engines, web browsers and otherwise on the internet. This has not been denied by the Respondent.

6.8     It is clear from the following that the Respondent had the Complainant and its business in mind when registering and using the Domain: a. the Respondent has not denied this assertion by the Complainant in correspondence; b. the Domain comprises the Complainant's unique and distinctive trade mark – it is inconceivable that the Respondent registered the Domain independently of that trade mark; c. the website at the Domain Name includes references to the Complainant's Scottish Daily Mail newspaper; and d. the titles of the Complainant's daily newspapers are household names in the UK.

6.9     The use of the Domain Name which comprises the Complainant's trade mark is intended by the Respondent to create a likelihood of confusion in the minds of the public as to an association between the Respondent and the Complainant.

6.10    . Furthermore the name of the Domain Name appears prominently on the top of the home page and in the metatitle visible in search engines, thereby adding to likely confusion on the part of internet users. A copy of the relevant page is included in the papers submitted by the Complainant.

6.11    . The likelihood of confusion is not diminished by the possibility that at some point users arriving at the Respondent's site will realize that they have reached the wrong destination. It is well established under the DRS that it is abusive for the Respondent to intentionally attract the Complainant's traffic by creating "initial interest confusion" and thereby achieve "a business opportunity that in most cases he would not otherwise have had". (See Appeal Panel decision in DRS 389. See also, eg, DRS 2282 and DRS 3044.)

6.12     As indicated above, in using the Domain Name the Respondent intended to confuse the public into believing that the Domain was connected with the Complainant. Such use should suffice for the purposes of paragraph 3aii, whether or not there is evidence of actual confusion. In any event, such intention is a factor evidencing an abusive registration independently of 3aii, as has been held in many DRS cases. See, e.g. the Appeal Panel decisions in DRS 2802 (ruggedcomlco.uk) and 3027 (epson-ink-ink.co.uk)

6.13     The Respondent had a motive to attract the Complainant's business. As stated above, the Respondent was clearly intent upon commercial gain by means of affiliate / sponsored links and advertising. Indeed it is difficult to conceive that the Respondent would engage in a scheme such as this for a non commercial purpose.

6.14     The Respondent has also engaged in a pattern of similar behaviour.

6.15     The Respondent has been found to have acted in bad faith in at least 5 previous DRS complaints concerning domain names reflecting other well-known trade marks.

6.16     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 / using the Domain it would have said so. The Complainant invokes as further evidence of abusive registration the fact that the Respondent opted out of providing his address on the Whois information although he was clearly using the Domain Name for a business purpose and therefore not entitled to. The Complainant contends that this was clearly an attempt to evade responsibility for its abusive registration.

6.17     Finally the Complainant contends that Domain Name registration is part of a pattern of abusive registrations.

The Respondent's Contentions

6.18     The Respondent submitted no formal response under the DRS, nor did he respond to the letter of 29^th May 2008 from Nominet advising him that a Complaint had been lodged.

7. Decision and Findings

7.1     According to 2(a) of the Dispute Resolution Services Policy ('the Policy'), in order to succeed in a Complaint, the Complainant has to prove that on the balance of probabilities:

i. the Complainant has Rights in respect of the name or the mark which is identical or similar to the disputed domain name; and

ii. the disputed domain name, in the hands of the Respondent is an Abusive

Registration.

Does the Claimant have Rights?

7.2     I refer to the facts set out in paragraphs 5.1 to 5.6 above inclusive. Under the Policy the test as to when a Complainant has Rights is a deliberately low hurdle. Rights include but are not limited to, rights enforceable under English Law. Based on all the evidence submitted I have no doubt that the Complainant does have rights.

7.3     The Domain Name is identical to the Complainant's common law trade mark 'Scottish Daily Mail' bearing in mind that domain names are usually rended in lower case letters and disregarding the generic.co.uk. I do not consider the words 'Scottish Daily Mail to be descriptive. It consists of a non obvious combination of words which is specific to the Complainant's newspaper in Scotland. Alternatively the words 'Scottish Daily mail' have acquired distinction through use.

7.4 I turn therefore to examine the allegations of Abusive Registration.

Abusive Registration

7.5     Paragraph 1 of the Policy states that an 'Abusive Registration' means 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 unfair or detrimental to the Complainant's Rights.

7.6     The Domain Name was registered on 28^th May 2008. In the absence of a response to the Complainant it falls to the Complainant to explain why it believes the registration of the Domain Name to be abusive.

7.7     The Respondent has filed no response to the Complaint. The Respondent's intention must therefore be assessed by reference to the evidence filed by the Complainant. It is possible that the Domain Name was registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. The Complainant certainly suggests this is the case. However without any contact with the Respondent it is difficult to know what was in his mind at the time of registration. In any event it is not necessary to know what was in his mind because it is clear that since registration the Domain Name has been used in a manner which took unfair advantage or was unfair or detrimental to the Complainant's Rights.

7.8     Paragraph 3(a) C (ii) of the Policy refers to circumstances in which the use of a Domain Name has confused people or businesses into believing that the Domain Name is registered to or operated by, or otherwise connected with the Complainant.

7.9     The Complainant has adduced no evidence of actual confusion. It is accepted however that even where internet users quickly appreciate that the site to which the Domain Name is linked is unconnected with the Complainant, a consumer nevertheless may well find themselves in receipt of information about a business which may compete with the Complainant. In this way the particular use being made of the Domain Name by the Respondent could operate to deprive the Complainant of future business. If this were the case the Respondent could be said to be taking advantage of the Complainant's brand recognition and goodwill. Under the Policy this amounts to taking unfair advantage of the Complainant's Rights.

7.10     Finally there is a presumption of Abusive Registration if the Complainant proves that the 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. Details of previous decisions were set out in the Complaint. This presumption can be rebutted on any of the grounds set out in paragraph 4 (c) but has not been in this case.

8. Conclusion

The Domain Name is an Abusive Registration in the hands of the Respondent and should be

transferred to the Complainant.

Margaret Briffa

16th July 2008