Nominet UK Dispute Resolution Service
DRS 5815
Bertelsmann AG v. Global Publications Ltd
Decision of Independent Expert
Complainant: Bertelsmann AG
Country: DE
Respondent: Global Publications Ltd
Country: GB
bertelsmann.co.uk ("the Domain Name")
The Complaint was submitted to Nominet on 18 June 2008. Hardcopies were received in full on 19 June 2008 and the Complaint was validated by Nominet and sent to the Respondent by post and by email both to postmaster@[the Domain Name] and to the email address which Nominet held for the Respondent on the register database. The Respondent was informed in this correspondence that he had 15 working days, that is, until 11 July 2008 to file a response to the Complaint.
The Respondent did not file a response and the case did not proceed to the mediation stage. On 17 July 2008, the Complainant paid the fee for referral of the matter for an expert decision pursuant to paragraph 8 of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service Version 2 ("the Procedure") and paragraph 7 of the corresponding Dispute Resolution Service Policy Version 2 ("the Policy"). On 21 July 2008, Andrew D S Lothian, the undersigned, ("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 that he knew 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 Expert with effect from 24 July 2008.
No response
The Respondent has failed to submit a response to Nominet in time in accordance with paragraph 5(a) of the Procedure.
Paragraph 15(b) of the Procedure provides inter alia that "If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint."
Paragraph 15(c) of the Procedure provides that "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." In the view of the Expert, if the Respondent does not submit a Response, the principal inference that can be drawn is that the Respondent has simply not availed himself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration. This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration, nor does it in the Expert's view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.
The Complainant is a well known media company operating worldwide in television and radio, book publishing, magazines and newspapers, music labels, print media services and book and music clubs. It is the proprietor of two UK registered trade marks for the word mark BERTELSMANN; first, no. 1524163 (class 41), filed on 13 January 1993 and registered on 7 October 1994; and secondly, no.1548790 (classes 39 and 42) , filed on 27 September 1993 and registered on 28 April 1995. The Complainant is also the owner of Community trade mark registration no. 2251635; this is a figurative mark containing the words BERTELSMANN MEDIA WORLDWIDE registered on 29 August 2002 in classes 9, 16, 35, 36, 38, 41 and 42.
The Respondent registered the Domain Name on 9 September 2004. As at the date of this Decision, the website associated with the Domain Name contained links provided by an online advertising service (Domain Parking International LLP) relating to music, shopping, gambling and others.
Complainant
The Complainant has rights in the domain name because:-
The domain name in the hands of the Respondent is an abusive registration because:
Respondent
The Respondent has not filed a response.
General
In terms of paragraph 2(b) of the Policy the primary onus is on the Complainant to prove to the Expert on balance of probabilities each of the two elements set out in paragraph 2(a) of the Policy, namely that:
(i) The Complainant 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.
Complainant's Rights
Paragraph 1 of the Policy provides that 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". Accordingly there are three questions to consider - (1) whether the Complainant has Rights; (2) if the Complainant does have Rights, whether the name or term in which the Complainant has these is wholly descriptive of its business; (3) if not wholly descriptive, whether the name or mark is identical or similar to the Domain Name.
Complainant's Rights in the mark BERTELSMANN
The requirement to demonstrate Rights under the Policy is not a particularly high threshold test. Under English Law, rights in a name or mark can be protected by registered trade marks, or unregistered rights such as the entitlement to bring a claim for passing off to protect goodwill inherent in any such name or mark.
The Complainant is the proprietor of two UK registered trade marks in respect of the word BERTELSMANN. In these circumstances, the Expert finds that the Complainant has Rights in the name or mark BERTELSMANN.
The second question for the Expert is whether this name or mark is wholly descriptive of the Complainant's business. The Complainant's business is the production, serving and marketing of various types of media and the name BERTELSMANN is not wholly descriptive of such a business.
The remaining question therefore is whether the name or mark is identical or similar to the Domain Name. The first (.uk) and second (.co) levels of the Domain Name can be disregarded as being wholly generic. The Expert is then left with a comparison between the name or mark BERTELSMANN and the third level part of the Domain Name 'bertelsmann'. Accordingly, the Expert finds that the Domain Name is identical to a name or mark in which the Complainant has Rights. In light of this finding the Expert determines that there is no requirement to consider the similarity between the Complainant's Community trade mark and the Domain Name.
Abusive Registration
Is the Domain Name, in the hands of the Respondent, 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 constitute evidence of Abusive Registration is set out in paragraph 3 of the Policy.
The Complainant asserts that the Respondent's purpose in registering the Domain Name was to sell or transfer it to the Complainant for a price greater than the cost of registration. This submission broadly follows the terms of paragraph 3(a)(i)A of the Policy, albeit that to make a case out under this paragraph a sale or transfer must have been the Respondent's primary purpose. In the present case, the Expert does not consider that the Respondent's primary purpose was to sell or transfer the Domain Name to the Complainant. Indeed, the evidence points to the Respondent's primary purpose being revenue generation arising from the advertising links provided on the associated website.
With regard to the advertising links, the Complainant points out that the first group is for music websites. Music is one of the Complainant's major areas of business activity. The Complainant goes on to assert that this may confuse people into thinking the Domain Name is controlled by the Complainant bearing in mind the use of the Complainant's mark in the Domain Name. The Policy at paragraph 3(a)(ii) calls for 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. There is no evidence produced by the Complainant that the use of the Domain Name has caused such actual confusion in this case. However, many decisions under the Policy have recognised that a demonstration by a complainant of a likelihood of confusion caused by the use of a domain name may be sufficient to constitute Abusive Registration (bearing in mind that the factors in paragraph 3 of the Policy are expressed to be non-exhaustive).
In the Expert's view the present use of the Domain Name inevitably gives rise to a strong likelihood of confusion among Internet users. The Respondent has registered a domain name that is identical to the Complainant's long established and well known brand and business name. The Respondent has extended this apparent association with the Complainant's name and business by way of the relative website content which includes hyperlinks to sites devoted to similar products to those offered by the Complainant. The various hyperlinks are likely to confuse consumers looking for the Complainant's products and divert them to other locations online. In addition to the likelihood of confusion, it is probable that the Respondent is receiving or intends to receive per-click revenue from the website associated with the Domain Name and thereby intends to benefit financially from any confusion caused. The Expert considers that the use of the Domain Name in this manner takes unfair advantage of the Complainant's Rights. Furthermore, the Expert also considers that the use of the Domain Name is likely to disrupt the Complainant's business in a manner which is unfairly detrimental to the Complainant's Rights.
The Respondent has failed to provide any alternative explanation for its conduct in registering and using the Domain Name. Considering the principal non-exhaustive factors in paragraph 4 of the Policy, by which the Respondent might demonstrate that the Domain Name is not an Abusive Registration, there is no evidence that the Respondent has used the Domain Name in connection with a genuine offering of goods and services (the present offering cannot be considered as genuine given that it appears to be directly targeting the Complainant's Rights). There is no evidence that the Respondent has been commonly known by or legitimately connected with an identical or similar name to the Domain Name. Clearly the present use of the Domain Name could not be described as non-commercial and the Domain Name is neither generic nor descriptive.
In these circumstances, The Expert finds that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Having concluded that the Complainant has proved that it has Rights in respect of a name or mark which is identical 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 be transferred to the Complainant.
Andrew D S Lothian
24 July 2008