Complainant: Norton Finance (UK) Limited
Country: UK
Respondent: Colin Newcombe
Country UK
Nortonfiance.co.uk, nortnfinance.co.uk, nortofinance.co.uk, nortonfinanc.co.uk, nortonfinane.co.uk, nortonfinacne.co.uk, notronfinance.co.uk, nortonfinnce.co.uk
06/11/08 Dispute entered into system
06/11/08 Hard copies received in full
06/11/08 Complaint validated, complaint documents generated
07/11/08 Electronic communication of complaint to Respondent
07/11/08 Electronic communication to postmaster@ each disputed
domain returned "Delivery Status Notification (Failure)"
11/11/08 Hard copy complaint returned as "Returned Mail"
17/11/08 Electronic response received
19/11/08 Reply received
21/11/08 Suzanne Begley appointed mediator
04/12/08 Dispute status changed to expert decision
12/12/08 Michael Silverleaf selected as expert
29/12/08 Michael Silverleaf appointed as independent expert
3.1 I confirm that I have no connection with either of the parties. I know of no reason why I cannot properly accept the invitation to act in this case and know of no matters which ought to be drawn the attention of the parties which might appear to call into question my independence and/or impartiality in this case.
4.1 The only material I have to determine the facts is contained in the Complaint and attachments. The Respondent has responded to communications about this complaint from Nominet only by an e-mail received by Nominet on 17 November 2008 indicating that he wishes the disputed domains to be transferred to the Complainant. Accordingly, I can treat the following facts as undisputed.
4.2 The Complainant, Norton Finance (UK) Limited was incorporated in 1988 and commenced trading that year as a finance broker under the name Norton Finance. It has two main websites, nortonfinance.com and nortonfinance.co.uk. Those sites had received over 4 million unique visits in 2008 by the date of the complaint. The Complainant receives approximately 9000 applications from prospective customers for loans totalling over £200 million and arranges loans to about 10% of this value in a typical month's trading. The Complainant is the proprietor of registered trade mark number 2 374 663 for the word marks "NORTON" and "NORTON FINANCE" registered as of 2 October 2004 for a range of financial services in Class 36 of the Trade Marks Register.
4.3 The Complainant's turnover for the years 2003, 2004 and 2005 was £10,731,806, £9,372,350 and £12,069,000 respectively. The Complainant claims to have expended greater sums than this in advertising its services. This claim clearly cannot be correct. I suspect that the claim arises from a misunderstanding by the Complainant's representatives of the term "marketing spend" in a letter attached to the Complaint from the Complainant's advertising agency. Nevertheless, I am prepared to accept that it has expended substantial sums on advertising its services in a wide variety of media.
4.4 The Respondent is an individual who claims to be non-trading and has chosen to keep his address off the WHOIS register for each of the Disputed Domains. He registered the Disputed Domains between March and June 2006. According to prints of the homepages of the sites hosted at each of the Disputed Domains, between September and October 2008 there were websites at all of them giving links to variety of financial service websites. Some of these are to sites of financial services organisations offering loans competing with those of the Complainant. According to my personal researches, these websites remain active at the date of this decision. Amongst the links found in September and October were some to the Complainant's own website nortonfinance.co.uk. It no longer appears to be the case that links to the Complainant's website are present.
4.5 As the Respondent's address was not listed on the WHOIS register, the Complainant's solicitor wrote to Nominet seeking the release of the Respondent's address on the ground that the active website on the disputed domain nortonfiance.co.uk (the only one of which the Complainant was then aware) indicated that the Respondent is trading. Having obtained the address the Complainant's solicitor wrote a letter of complaint to the Respondent and sent it to the address given (which I have set out above) on 6 August 2008 by recorded delivery. The letter was returned by the postal service on 18 August 2008. The markings on the returned copy indicate that a form P739 (the form used by the Royal Mail to inform the addressee that there has been an unsuccessful attempt to deliver a recorded delivery item) was left at the delivery address at 12:15 on 8 August 2008 and that the item was subsequently not called for. It would therefore appear that the delivery address exists but that the Respondent either does not reside there or does not wish to receive recorded delivery mail sent there.
4.6 The Respondent also owns other domains which are closely similar to the domain names of well-known trading organisations. A number of examples have been attached to the complaint including northernrrock.co.uk and citi-bank.co.uk. It would therefore seem that the Respondent is engaged in a practice of registering domain names which are typographical errors for the websites of established traders.
5.1 The version of the DRS Policy relevant to the present dispute is version 3 which relates to complaints lodged after 29 July 2008. Clause 1 of that 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"
5.2 Clause 1 of the DRS Policy also defines "Rights" for the purposes of this procedure as including but not limited to those enforceable under English law. Under Clause 2 of the DRS Policy a complainant must show on the balance of probabilities
(a) that it has Rights in a name or mark identical or similar to the Domain Name; and
(b) that the Domain Name in the hands of the Respondent is an Abusive Registration.
5.3 Clause 3 of the DRS Policy identifies a non-exhaustive list of factors which may be evidence that the domain name is an Abusive Registration. I have accordingly taken these into account in reaching my conclusions.
5.4 Clause 3(a) sets out a non-exhaustive list of factors which may be evidence that a domain name is an Abusive Registration. Sub-clause (ii) provides that these include circumstances indicating that the Respondent is "using the disputed 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 to the Complainant". Sub-clause (iii) provides that where the Complainant can show that the Respondent is engaged in a pattern of registering domain names which correspond to well known names or trade marks and that the disputed domains form part of that pattern shall also be evidence of abusive registration. Sub-clause (iv) specifies as a further circumstance independent verification that the Respondent has given false contact details to Nominet.
5.5 The Dispute Resolution Service procedure is one in which the parties provide written evidence and submissions. There are no oral proceedings and no testing of the evidence. The expert accordingly has to evaluate the written material and give it such weight as is appropriate in order to reach a conclusion on the balance of probabilities.
5.6 According to the Appeal Panel decision in the Seiko case (DRS 00248) whether a registration is an abusive registration under the DRS Policy is independent of whether a Domain Registration is an infringement of trade mark and should be decided under the terms of the DRS Policy alone. The same decision also makes clear, however, that the relevant principles of English law should be applied in determining whether the Complainant has Rights under the Policy and that the Policy is founded on the principle of intellectual property rights which should be taken into account.
6.1 As noted in section 4 of this decision I have only submissions from the Complainant. I take the view that I must, therefore, take additional care to ensure that my findings are based only on facts and circumstances which can properly be shown to be established by those submissions. I do, however, also have an e-mail which appears to contain the Respondent's consent to the relief sought by the Complainant. I have accordingly taken into account in reaching my decision the fact that the Respondent does not dispute the relief sought.
6.2 There is no doubt in my view on the material provided that Norton Finance has a reputation and goodwill in the field of financial services. The facts set out above demonstrate that this is so. The existence of the UK trade mark registration in the name of the Complainant for the names NORTON and NORTON FINANCE covering financial services provides registered rights in the same field. Accordingly, I conclude that the Complainant has rights within the meaning of Clause 1 of the Dispute Resolution Policy in the name Play.
6.3 The names of all the Disputed Domains are similar to the name Norton Finance. The Complainant's rights under its trade mark registration are in my view infringed by the use of each of those names on the Respondent's websites. It is plain that each of the disputed domains is intended to incorporate a likely misspelling of the Respondent's website nortonfinance.co.uk by persons using the internet and thus to attract business away from the Respondent to the sites whose links appear on the Respondent's websites. Accordingly, it in my judgment the Complainant has rights under English law in a name or mark identical or similar to the disputed domain name, that those rights have been infringed by the Respondent and that the first limb of the test under Clause 2 of the DRS Policy is satisfied. It remains to be considered whether the registration by the Respondent is an abusive registration as defined by Clause 1.
6.4 The Respondent was plainly fully aware of the existence of the Complainant's website and business when he registered the Disputed Domains. There can have been no other reason for registering them. He has used the domains to create links to financial services websites. This leads to an inevitable inference that his intention was to confuse members of the public using his sites into thinking that there was a connection between them and the Complainant. A purchaser taking ordinary care when using the Respondent's websites could easily be confused into thinking that they were connected with that of the Complainant. They offer similar financial services on sites which appears unless read carefully to be that of the Complainant. I therefore conclude that the disputed domain names have been used in a way which has confused people into believing there is a connection between them and the Complainant's website, nortonfinance.co.uk.
6.5 The Complainant has also shown that the Respondent is engaged in a pattern of registering domain names corresponding to well known names or trade marks and that the disputed domains are part of this pattern. It may well be that the Respondent's indication of consent to the relief sought by the Complainant reflects his knowledge that his activities are wrongful and that, once spotted by their objects, he must surrender the disputed domains.
6.6 Finally, it seems to me that the circumstances of the attempt by the Royal Mail to deliver the letter of complaint may demonstrate that the Respondent does not reside at the address he has given to Nominet. Equally, they may demonstrate simply that he is the kind of individual for whom a recorded delivery letter is not likely to contain anything he wishes to receive. Accordingly, he does not accept such letters or collect them. As it is not clear which is the case, I have not taken this factor into account in reaching my conclusion.
6.7 On the basis of the facts set out in section 4 above and the grounds set out in paragraphs 6.3 to 6.5 above I conclude that the registrations of the Disputed Domains are abusive and should be transferred to the Complainant.
Michael Silverleaf
12 January 2009