Nominet UK Dispute Resolution Service

 
DRS DISPUTE NUMBER: 05844
DECISION OF THE INDEPENDENT EXPERT (the 'Decision')

1. Parties:

Complainant: McCarthy & Stone Plc

Respondent: John Tziviskos

2. Domain Name:

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

3. Procedural Background:

3.1     This dispute was entered into the Nominet system on 27 June 2008 (the 'Complaint'). A hard copy of the Complaint was received in full by Nominet on 30 June 2008.

3.2     Nominet validated the Complaint on 2 July 2008 and sent a copy of the Complaint to the Respondent the next day. No response to date has been received by Nominet from the Respondent.

3.3     On 4 August 2008, the Complainant paid the fee to obtain the expert decision pursuant to paragraph 21 of Nominet's Dispute Resolution Service ('DRS') Procedure (the 'Procedure').

3.4     On 5 August 2008, Dr Russell Richardson was selected as the expert (the 'Expert'). He subsequently confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as the Expert in this case and further confirmed 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.

4. Outstanding formal/procedural issues

4.1     The Expert notes that Nominet has a new DRS procedure and policy.^[1] However, complaints made up until 28 July 2008, are to be processed under the Procedure and Policy.^[2] Thus, as the Complaint was received by Nominet prior to this date, the Expert has considered the Complaint in accordance with the Procedure and Policy (i.e. version 2, September 2004).

4.2     In addition, although Nominet sent the Complaint to the Respondent on 3 July 2008, as mentioned in paragraph 3.2 above, no response has been provided by the Respondent as per paragraph 5 (a) of the Procedure.

4.3     No exceptional circumstances have been raised by the Respondent as to why no response has been received. As such, the Expert has proceeded to a decision as per paragraph 15(b) of the Procedure.

4.4     It is important to note that the Complainant does not automatically receive the remedy it has requested merely because the Respondent has not responded to the Complaint (see for example Nominet decision equazen.co.uk DRS 02735).

4.5     While noting paragraph 15(c) of the Procedure, the Expert has drawn no inferences from the Respondent's failure to respond in this case, and has based the Decision on the facts and evidence before him.

5. The Facts:

5.1     The Complainant, McCarthy & Stone Plc, is a public limited company incorporated in the United Kingdom on 21 November 1973.

5.2     The Complainant owns various registered trade marks including UK registered trade mark nos: 1269919 for "MCCARTHY & STONE" mark text (class 19, filed 25 June 1986);^[3] 2245566 for "MCCARTHY & STONE" mark text (classes 35 and 37, filed 14 September 2000);^[4] and, 2441488 for "MCCARTHY & STONE" mark text (classes 36, 37, 43 and 44, filed 14 December 2006 1986).^[5]

5.3     In addition, the Complainant has been voted winner or runner-up for various "Britain's Best Builder" awards, in the annual Daily Express Business House Builder Awards, for the last five years.

5.4     The Respondent registered the Domain Name on 9 July 2004, up-dating it on 8 July 2008 (WHOIS query - 26 August 2008) and has set up a website under the Domain Name (the 'Website') which has resolved to a parking site. The Website contained a number of links to retirement homes and development websites.^[6]

6. The Parties' Contentions:

Complainant:

6.1     In summary, the Complainant argues that the Respondent has no legitimate rights to the Domain Name because:

the Domain Name differs from the Complainant's brand only by omission of the descriptive word "and". This minor change does not change the overall impression of the Domain Name; which conveys the impression that it and the retirement homes and development websites 'parked' on the Website are sponsored by, or associated with, the Complainant. This difference is not sufficient to distinguish the Domain Name from the Complainant's trade marks.

The Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the Complainant's business by interfering with the ability of users to reach the Complainant's legitimate website, thereby causing it loss of business and revenue as well as damage to the Complainant's goodwill and reputation.

Contrary to paragraph 3 (a) (ii) of the Policy, the Respondent is using the Domain Name in a way which has confused, or is likely to confuse,^[7] people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

In any event, the Respondent has intended to confuse the public into believing that the Domain Name was in some way associated, connected with or endorsed by the Complainant.

The Domain Name constitutes a blocking registration (paragraph 3 (a) (i) (B) of the Policy).

The potential diversion of business which arises through use of the Domain Name is an unauthorised activity and amounts to the taking of an unfair advantage.

There can be no possible legitimate use of the Complainant's brand and associated goodwill. The Respondent was intent upon commercial gain by means of affiliate/sponsored links and advertising.

The Complainant requests the transfer of the Domain Name from the Respondent to it.

6.2     In support of the Complaint, the Complainant submitted exhibits giving evidence of: advertising material (for the purchase of retirement homes); its trading presence in England, Scotland and Wales; its Group profile; its Group profit and loss account; its trade marks; and, a print out of the Website (undated, but the Complaint refers to the date as being, 13 May 2008).

Respondent:

6.3 No response to the Complaint was provided by the Respondent.

7. Discussion and Findings:

General

7.1     To succeed, the Complainant has to prove pursuant to paragraph 2 of Nominet's DRS Policy (the 'Policy'), on the balance of probabilities (that the Complainant's case is more likely than not to be the true version), that:

(i) it has Rights (Paragraph 1 DRS Policy) in respect of a name or mark identical or similar to the Domain Name; and,

(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration (Paragraph 1 DRS Policy).

7.2     Taking each limb in turn:

i) Complainant's Rights

7.3     Paragraph 1 DRS Policy defines "Rights" as including, but not being limited to: "rights enforceable under English law." Also, the Complainant must have the rights at the time of the complaint (see Nominet appeal panel decision, ghd DRS 03078).

7.4     Disregarding the generic .co.uk suffix, the Domain Name is essentially identical to the Complainant's registered trade marks (the 'additional' text is the "&"). As set out in para. 5.2 above, the Complainant has trademarked the mark text "McCarthy & Stone" for, among other things, enabling customers to view and purchase goods from magazines/catalogue/Internet websites.^[8]

7.5     Further, the Expert was provided evidence by the Complainant that it: has been trading for more than thirty years under its registered company name; has won various Building awards; and, has a presence throughout England, Wales and Scotland. On this basis, the Expert considers that at the time of the Complaint, the Complainant had goodwill and reputation in its registered company name; which is essentially identical to the Domain Name (the 'additional' text is the "Plc" and "&").

7.6     Given these factors, as well as the fact that the requirement to demonstrate "Rights" is not a particularly high threshold (Nominet appeal panel decision, seiko-shop DRS 00248), the Expert considers that the Complainant has Rights in the name mccarthystone, i.e. in the Domain Name.

ii) Abusive Registration

7.7     Paragraph 1 DRS 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."

7.8     In relation to (i) above - The Expert has no evidence before him that there was an Abusive Registration at the time the Domain Name was registered. In particular, the Expert has no evidence before him that the registration of the Domain Name was a blocking registration for the purpose of paragraph 3 (a) (i) (B) of the Policy, as claimed by the Complainant. (While it is inherent in each complaint brought to Nominet that the possible registration of a domain name has been blocked, there is no evidence that the Respondent registered the Domain Name to block the Complainant's registration.^[9])

7.9     In relation to (ii) above - This said, the Expert considers that the Domain Name has been used in a manner which took unfair advantage of, and was unfairly detrimental to, the Complainant's Rights.

7.10     While it may be helpful to consider the Respondent's intentions in its use of the Domain Name in this way, as the Respondent has not explained its intention in its use, the evidence available to the Expert is the Website itself (see Nominet appeal panel decision, Guidestar DRS 02193).

7.11     The Expert accessed the Website as of the date of the Decision but no content appeared (i.e. there was only a blank screen). (The Expert has made no assumptions as to why this is the case.) Therefore, the Expert has relied on the content print-outs of the Website provided to him by the Complainant (as at 13 May 2008) and Nominet (as at 2 July 2008); and the links contained therein (the Expert has checked a reasonable selection of the links given in the print-outs).

7.12     The Policy at paragraph 3, sets out a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. The Complainant refers specifically to paragraph 3 (a) (ii) of the Policy in its complaint, which states that

"[there may be evidence of an Abusive Registration if there are c]ircumstances 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."

7.13     It is clear from the print-outs of the Website provided, and the links that the Expert has checked, that the Domain Name has been used as a parking site for click-through links to retirement home and development websites (such as "Stunning Retirement Homes"^[10] or "New Retirement Properties"^[11]); which are not owned by or run on behalf of the Complainant. In addition, the Expert notes that the Complainant's current Internet homepage is at www.mccarthyandstone.co.uk; different to the Domain Name only by virtue of a missing "and" in between "mccarthy" and "stone".

7.14     There is no evidence before the Expert that the Respondent gained financially from these click-throughs. This said, the Expert considers that, given the Complainant's Rights (in its trade marks/business goodwill and reputation), users accessing the Website (through for example missing the 'and' in the domain name) would have been confused into thinking that the Website and links were associated in some way with the Complainant. ^[12]

7.15     Further, on the evidence before him, the Expert considers that by choosing links of a similar business nature to the Complainant, the Respondent intended that the links on the parking site would be assumed to be associated with the Complainant by a user accessing the Website; and in this way, the use of the Domain Name to link to the Website took unfair advantage of the Complainant's Rights.

7.16     In doing so, and regardless of whether the Respondent received money for any additional Internet traffic generated by providing such links, the Website would likely have taken possible business away from the Complainant. In this way, the Expert considers that the use of the Domain Name to link to the Website disrupted unfairly the Complainant's business. (See also Nominet decision, Ryanair, DRS 3655.)

7.17     Therefore, by reference to paragraph 3 (a) (ii) of the Policy, the Expert considers that the Respondent has been using the Domain Name in a way which has, or is likely to have,^[13] confused people or businesses into believing that the Domain Name is registered to the Complainant. In any event, the Expert considers that more generally there has been an Abusive Registration by the Respondent for the reasons set out above; not least in paragraphs 7.14 to 7.16.

7.18     The Policy at paragraph 4, sets out a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration. This includes that: (paragraph 4 (a) (i) (A)) the Respondent has used the Domain Name in connection with a genuine offering of goods or services; or, (paragraph 4 (a) (i) (C)) the Respondent has made fair use of the Domain Name.

7.19     In assessing what is a genuine or fair use, the Expert does not consider it genuine or fair for the Respondent to take advantage of the goodwill and reputation attached to the Complainant's Rights. The Respondent has used the Domain Name in a way that is at the least detrimental to the Complainant through the loss of potential revenue; by directing users accessing the Website to websites run by companies competing with the Complainant.

8. Additional issues

8.1     None.

9. Decision

9.1     The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name which is essentially identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Therefore, the Expert directs the Respondent to transfer the Domain Name to the Complainant.

Signed:

Dr Russell Richardson Date: 26 August 2008

Note 1   http://www.nominet.org.uk/news/latest/?contentId=5478. A summary of the principal changes are at: http://www.nominet.org.uk/disputes/drs/policyprocedurechanges/new.    [Back]

Note 2   For a definition of Policy, please refer to para. 7.1 below.    [Back]

Note 3   Class 19 relates to: Buildings being dwellings.    [Back]

Note 4   Class 35 relates to: Bringing together goods, enabling customers to conveniently view and purchase such goods from magazines/catalogue/Internet websites. Class 37 relates to: Building homes.    [Back]

Note 5   Class 36 relates to: Real estate brokers. Class 43 relates to: Building Homes. Class 44 relates to: Convalescent homes.    [Back]

Note 6   See para 7.11 below, which explains that, as of the date of this decision, such content has been taken down from the Website.    [Back]

Note 7   In reference to Nominet DRS decision 05265, Norton Finance (UK) Limited v James Robinson.    [Back]

Note 8   Trade mark Class 35.    [Back]

Note 9   See Nominet decision, QVC Inc & QVC v Sticky Dickys, DRS Case 0784.    [Back]

Note 10   Stunning Retirement Homes link is at www.Goldenliving.co.uk, and on WHOIS Register, the owner is Golden Living Limited. (WHOIS query – 26 August 2008.)    [Back]

Note 11   New Retirement Properties link is at www.NewHomesForSale.co.uk, and on WHOIS Register, the owner is Property Papers Limited. (WHOIS query – 26 August 2008.)     [Back]

Note 12   See Nominet decision,clydesdaleconservatories, DRS Case 3161.     [Back]

Note 13   See Nominet decision, Norton Finance (UK) Limited -v- James Robinson,DRS Case 05265.    [Back]