Nominet UK Dispute Resolution Service

 
DISPUTE RESOLUTION SERVICE DRS 06361
Decision of Independent Expert
Miles-Bramwell Executive Services Limited and Ian Shaw
1. The Parties:

Complainant: Miles-Bramwell Executive Services Limited

Country: GB

Respondent: Ian Shaw

Country: GB

2. The Domain Name:

slimming-world-guide.co.uk

3. Procedural History:

The Complaint was received by Nominet on October 22, 2008. On October 23, 2008, Nominet validated the Complaint and took appropriate steps to notify the Respondent of the Complaint.

No Response was received from the Respondent so informal mediation was not possible.

On November 28, 2008, the Complainant paid the fee to obtain the expert decision pursuant to paragraph 21 of the procedure for the conduct of proceedings under the Nominet Dispute Resolution Service ("the Procedure").

On December 4, 2008, Alan L. Limbury, the undersigned ("the Expert"), was selected as the Expert. I confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as Expert in this case and further confirmed that I knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.

4. Factual Background

The Complainant is one of the U.K.'s leading weight control and dietary organisations. It and its predecessors have traded as Slimming World in the U.K. since 1969. It is the proprietor of several European Community trade mark registrations and the following U.K. trade mark registrations, all for SLIMMING WORLD: Nos. 2294917, 2368649, 2294930 (stylised), 2297799, 1939511 (stylised), 1322734 and 257732) (stylised).

The Complainant is the registrant of the following domains: slimmingworld.com, slimming-world.com, slimmingworld.co.uk, slimming-world.co.uk, slimming-world.org.uk, slimmingworld.org.uk, slimming-world.net, slimming-world.org, slimmingworld.org, slimming-world.info, slimmingworld.info, slimming-world.biz and slimmingworld.biz.

The Respondent's domain name slimming-world-guide.co.uk was registered on April 2, 2005. It resolves to a 'click-through' slimming portal site, with links related to slimming and weight control. Some links lead to the Complainant's website. Some of the websites reached through sponsored links on the Respondent's website belong to competitors of the Complainant.

5. Parties' Contentions

Complainant

As a consequence of the use made of the SLIMMING WORLD trade mark and the substantial reputation enjoyed by the Complainant, particularly in the U.K., the SLIMMING WORLD trade mark is readily recognised by members of the public.

The Respondent's domain name registration is abusive because it is almost identical to the Complainant's SLIMMING WORLD trade mark and because the Respondent's website appears calculated to divert business away from the Complainant to its competitors and to allow the Respondent unfairly to make commercial gain through sponsored links.

The Respondent does not have any affiliation with the Complainant and has not been authorised by the Complainant to register and use the disputed domain name nor the SLIMMING WORLD trade mark. The Respondent has no trade mark rights in the term SLIMMING WORLD as far as the Complainant can establish.

The Respondent in all likelihood knew of the existence of the Complainant's trade mark and of its relevance in its field when it registered the disputed domain name and set it up as a 'click-through' site to related fields of commerce. The Respondent's registration and use of the slimming-world-guide.co.uk domain to divert users seeking the Complainant to websites selling various goods and services, some of which belong to competitors of the Complainant, establish bad faith registration and use to take unfair advantage of the Complainant's rights.

Respondent

As mentioned, no response has been received.

6. Discussions and Findings

Under paragraph 2 of the Dispute Resolution Service Policy ("the Policy") the Complainant is required to show, on the balance of probabilities, that;

(1) it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(2) the Domain Name in the hands of the Respondent is an Abusive Registration.

Abusive Registration is defined in the Policy as:

"…a domain name which either;

(a) was registered or otherwise acquired in the 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

(b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

Under paragraph 3(a)(ii) of the Policy, the non-exhaustive factors which may be evidence that the Domain Name is an Abusive Registration include circumstances indicating that the Respondent is using or threatening to use the Domain Name in

a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

The Complainant clearly has rights in the SLIMMING WORLD trademark. The disputed domain name slimming-world-guide.co.uk is similar to that mark since it reproduces that mark in its entirety, the differences being inconsequential. I therefore find that the Complainant has Rights in a name or mark that is similar to the Domain Name.

The term "guide" serves to strengthen the likelihood of confusion with the Complainant's trade mark with the result that consumers are likely mistakenly to assume that the Respondent's website is operated by, authorised by or otherwise connected with the Complainant.

Further, given the reputation of the Complainant's mark, the similarity of many of the Complainant's domain names to the domain name selected by the Respondent, and the presence on the Respondent's website of some links to the Complainant's website, I find that the Respondent had the Complainant and its business in mind when registering the disputed domain name and using it in the field of slimming. The Respondent thus intentionally induced the abovementioned assumptions by the use of the disputed domain name and thereby took unfair advantage of the Complainant's trade mark rights.

7. Decision

I find that the Complainant has proved, on the balance of probabilities, that it has Rights in a mark which is similar to the Domain Name and that the Domain Name is an Abusive Registration in the hands of the Respondent. I therefore direct that the Domain Name be transferred to the Complainant.

Signed Alan Limbury Dated: December 12 , 2008