Associated Newspapers Ltd v Jin [2005] DRS 02181 (07 January 2005)

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Cite as: [2005] DRS 2181, [2005] DRS 02181

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    Associated Newspapers Ltd v Jin [2005] DRS 02181 (07 January 2005)

    NOMINET UK DISPUTE RESOLUTION SERVICE
    DRS 02183, 2184 and 2185
    ASSOCIATED NEWSPAPERS LIMITED
    - AND -
    FUZ PTY. LTD

    RE:
    (1)
    THIISLONDON.CO.UK

    (2)
    DAILMAIL.CO.UK

    (3)
    DAILYMAI.CO.UK

    (4)
    DAIYMAIL.CO.UK

    (5)
    DAILYLMAIL.CO.UK

    (6)
    DAILTMAIL.CO.UK

    (7)
    DIALYMAIL.CO.UK

    (8)
    DAILYMAILL.CO.UK

    Decision of Independent Expert

    Parties:

    Complainant:

    Associated Newspapers Limited

    Represented by:

    Mr. Adam Taylor

    Respondent:

    (2183)

    Mark Twist

    )

    (2184)

    M. Strong

    )

    t/a Fuz Pty Ltd

    (2185)

    Aaron Maddely

    )

    All at

    Australia

    Disputed Domain Names:

    2183

    Thiisislondon.co.uk

    2184

    Dailmail.co.uk

    2185

    Dailymai.co.uk

    Daiymail.co.uk

    Dailylmail.co.uk

    Dailtmail.co.uk

    Dialymail.co.uk

    Dailymaill.co.uk

    Abbreviations used in this decision:

    Abbreviation

    Definition

    DRS

    Nominet UK's Dispute Resolution Service

    DRS Policy

    Nominet UK's Dispute Resolution Service Policy as applicable after 25/10/04

    DRS Procedures

    Nominet UK's Dispute Resolution Service Procedures as applicable after 25/10/04

    The Expert

    Kirsten Houghton

    Procedural Background:

  1. The Complaints were lodged with Nominet on 16th November 2004 and hard copies were received on the same day.

  2. Nominet validated the Complaints on 22nd November 2004.

  3. On 22nd November, Nominet sent the complaints to

    4. (a) The Respondent's address by post;
    (b) By e-mail to the Respondent's email address listed in Nominet's database (all the same) and
    (c) By e-mail to postmaster at all the various Domain Names.
  4. No response was received and, accordingly, mediation was not attempted.

  5. On 22nd December 2004, the Complainant paid the fee in order to obtain a decision of an independent expert.

  6. On 22nd December 2004, 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.

    7. Outstanding Formal/Procedural Issues (if any):

  7. None

    8. The Facts:

    (1) The Parties – the Complainant
  8. The Complainant is a well known newspaper publisher in the UK.

    9. (2) The Parties - the Respondents
  9. The Respondents each give the same address and trading name.

  10. The registration information provided to me by Nominet from its database shows that the contact for each one is "James Strong".

  11. The Complainant makes the following allegations concerning the Respondents:

    12. … it is likely that the same entity controls the Domain and those other domains.
    It seems inherently unlikely that the Respondent[s'] personal name[s] [are] genuine given that there are four different persons shown as trading under Fuz Pty Ltd: Mark Twist…. James Strong t/a Fuz Pty Ltd - and others (see DRS 1918/1919) M Strong t/a Fuz Pty Ltd - and others, Aaron Maddely t/a Fuz Pty Ltd - , , , , and and others …
    There is no limited company by the name of Fuz Pty Ltd in Australia … or the UK … and it is a criminal offence in both jurisdictions to trade under such a name …
  12. It is not necessary for me to decide whether these allegations are well founded; however, it does appear to me that the person(s) behind "Fuz Pty Ltd." at the given address are engaged in a concerted plan of action which, on the evidence provided to me by the Complainant, involves registering large of "misspelled" domain names bearing a striking resemblance to well-known trademarks for the purpose of parking them at sedo.co.uk and deriving an income from clicks generated on those pages.

    13. (3) The Complainant's rights

  13. The Complainant is the holder of the registered trade marks:

    14. (a) "This is London" (Community trademark 0005539330)
    (b) "Daily Mail" (various UK and Community trademarks).
  14. The Complainant also has considerable goodwill in both marks. Daily Mail is obvious, although I have been provided with substantial evidence of sales etc. In relation to "This is London", I have been provided with substantial evidence of advertising and website hits, and it is well known that "This is London" is the domain name of the website associated with the London Evening Standard.

  15. In the circumstances, I find that the Respondent has rights enforceable under English Law the marks.

  16. Further, it is plain that each of the Domain Names is a deliberate minor misspelling of one or other of the marks and that the dispute is based on an allegation of typosquatting.

    17. (4) The Complaint
  17. These Complaints were issued after 25th October 2004, and, accordingly, the amended DRS Policy and Procedures apply to it. The submissions made on behalf of the Complainant have not taken these changes into account.

  18. The amended DRS Policy and Procedures has introduced some new factors which may be considered as evidence of abusive registration, and states:

    19. 3. Evidence of Abusive Registration

    a. A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

    i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
    A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
    B. as a blocking registration against a name or mark in which the Complainant has Rights; or
    C. for the purpose of unfairly disrupting the business of the Complainant;
    ii. 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;
    iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;
    iv. It is independently verified that the Respondent has given false contact details to us; or
    v. The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:
    A. has been using the domain name registration exclusively; and
    B. paid for the registration and/or renewal of the domain name registration.

    b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.

    c. There shall be a presumption of Abusive Registration if the Complainant proves that 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. This presumption can be rebutted (see paragraph 4 (c)).

  19. Each of the Complaints relies upon allegations of:

    20. (a) Disruption (3(a)(i)(C));
    (b) Confusion (3(a)(ii));
    (c) "Pattern" (applying the test under OLD 3(a)(iii)) and
    (d) Provision of false contact details (3(a)(iv)).
  20. In addition, the matters referred to in Paragraph 11 above are relied upon as evidence of abusive registration.

  21. I do not consider that the Complaints have proved on the balance of probabilities either that

    22. (a) the Domain Names were registered "primarily" "for the purpose of unfairly disrupting the business of the Complainant" (rather, it seems to me on the balance of the evidence I have that the primary motive is that set out in Paragraph 12 above)or
    (b) there are circumstances which indicate that the Respondents are using the Domain Names in such a manner as has confused others into believing that the Domain Names are registered to, operated or authorised by or otherwise connected with the Complainant (rather, it seems to me that the Domain Names themselves (being misspellings of the "proper" marks) and the use to which the Domain Names have been put) probably have the very opposite effect.)
  22. Further, it does not appear to me that there is any "independent" verification that the Respondents have provided false contact details to Nominet. There is no guidance provided as to the meaning of "independent verification", but, at the least, it seems to me that, whilst the information provided by the Complainant does cast some doubt of the veracity of the names and information, that information is, in the main, a matter of conjecture rather than fact, and cannot be said to be "independent".

  23. Pattern

    24. Under the "old" DRS Policy and Procedure, the Complainant had to show that the Respondent had been engaged in a pattern of making "Abusive Registrations". The Complainant in these complaints has attempted to do so by reference to DRS 1918 & 1919 (a complaint against "James Strong" (referred to in Paragraph 10 above) and "Stinger Web Services t/a Fuz Pty Ltd." of New Zealand) in connection with various misspellings of "Alliance & Leicester"). If I had had to decide these Complaints using the "old" test, I would be driven to find against the Complainant because I do not consider that it would have satisfied the requirement for "identity of respondent" on the balance of probabilities.

  24. However, the amended DRS Policy and Procedures adopt a different test, namely:

    25. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern;
  25. In relation to the "Daily Mail" related Domain Names, in my judgment the Complainant has demonstrated on the balance of probabilities that :

    26. (a) "M. Strong" is engaged in a pattern of registrations of domain names which are all misspellings of well known marks (I have been provided with a 5 page list of urls relating to .co.uk alone) and
    (b) "Aaron Maddely" is engaged in a similar pattern (I have been provided with a list of 48 other such names).
  26. However, it does not appear to me that this obvious pattern satisfies the test set out in Paragraph 3(a)(iii) of the amended DRS Policy, which requires the names complained of to "correspond" to well known names or marks. The whole point of the names registered by these registrants is that the names do not correspond with the marks, they are designed to be and are subtly different.

  27. Nevertheless, the list set out in Paragraph 3 of the DRS Policy is expressly stated to be non-exhaustive, and I find that, on the entirety of the substantial evidence provided to me by the Complainant, that the registrations of the Daily Mail related domain names are abusive in the hands of the respective Respondents.

  28. I am particularly influenced by the fact that, at the top of each parking page, there appears the sentence:

    29. "Daily Mail – we recommend these sponsored links:"
  29. Whilst there is no evidence that anyone has actually been confused by the registration of the misspelled name into believing that the sedo.co.uk sites were connected with or endorsed by The Daily Mail, this statement is clearly designed (probably by sedo.co.uk rather than the Respondents, who benefit collaterally) to try to promote such a link between The Daily Mail and the links contained on the page, and could, in my view, lead unsuspecting visitors to believe that The Daily Mail did endorse (and indeed sponsor) the links set out below. In my view, this is taking unfair advantage of the Complainants' Rights, since more (paying) clicks are likely to be generated if the visitor believes that the product on offer is endorsed or sponsored by a household name.

  30. So far as "thiislondon.co.uk" is concerned, there is no evidence of any pattern of registrations by "Mark Twist" (it is possible that the name is itself a pun), and the parking page does not contain a similar endorsement to that set out in Paragraph 28 above (it merely says "newspaper" in the equivalent place).

  31. In the circumstances, I do not consider that the Complainant has proved, on the balance of probabilities, that registration of thiislondon.co.uk is abusive in the hands of the Respondent.

    32. Decision

  32. I find:

    33. (a) 2183:
    (i) the Complainant has rights in a name or mark which is similar to the Domain Name.
    (ii) However, I do not find that the registration is abusive in the hands of the Respondent and, accordingly, I refuse to order its transfer.
    (b) 2184:
    (i) the Complainant has rights in a name or mark which is similar to the Domain Name and
    (ii) the registration is abusive in the hands of the Respondent and, accordingly, I order the transfer of dailmail.co.uk to the Complainant.
    (c) 2185:
    (i) the Complainant has rights in a name or mark which is similar to the Domain Name and
    (ii) the registration is abusive in the hands of the Respondent and, accordingly, I order the transfer of
    (A) Dailymai.co.uk
    (B) Daiymail.co.uk
    (C) Dailylmail.co.uk
    (D) Dailtmail.co.uk
    (E) Dialymail.co.uk
    (F) Dailymaill.co.uk
    to the Complainant.

    KIRSTEN HOUGHTON

    7th January 2005

    NOMINET UK DISPUTE RESOLUTION SERVICE
    DRS 02183, 2184 and 2185
    ASSOCIATED NEWSPAPERS LIMITED
    - AND -
    FUZ PTY. LTD

    RE:   THIISLONDON.CO.UK
        DAILMAIL.CO.UK
        DAILYMAI.CO.UK
        DAIYMAIL.CO.UK
        DAILYLMAIL.CO.UK
        DAILTMAIL.CO.UK
        DIALYMAIL.CO.UK
        DAILYMAILL.CO.UK

    Decision of Independent Expert

    KIRSTEN HOUGHTON

    Quadrant Chambers

  33. Fleet Street

    34. London EC4Y 1AU

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URL: http://www.bailii.org/uk/cases/DRS/2005/02181.html