Nominet UK Dispute Resolution Service

DRS 02932

QSoft Consulting Limited v Phat Tonez Limited

Decision of Independent Expert

1.	Parties

Complainant:		QSoft Consulting
Country:		England

Representative:	Richard Harrison 

Respondent:		Phat Tonez Limited
Country:		England

2.	Domain Name
gadyar.co.uk (the "Domain Name")

3.	Procedural Background
3.1	The complaint was entered on to the Nominet system on 16 February 2005.  Nominet validated the complaint on 22 February 2005 and on the same day despatched a copy of the complaint to the Respondent.  No response was received from the Respondent.  On 22 March 2005 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (the "Policy").  
3.2	I, Stephen Bennett, the undersigned, (the "Expert") have confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and have further confirmed that I know 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.	The Facts
4.1	The Complainant is a company incorporated in England and Wales and is the operator of, among other things, a business operated through the website at www.gaydar.co.uk (the "Complainant's Site").  The Complainant runs a gay personal contact website through the Complainant's Site.
4.2	The Complainant is the registered proprietor of Community Trade Mark No 002127264 for the word "GAYDAR" (filed 13 March 2001, published 29 July 2002 and registered 9 January 2003).
4.3	The Respondent appears to be a company incorporated in England and Wales.  No information about the Respondent has been supplied other than its address.  However, a Google search reveals a site at www.tonez.co.uk apparently run by the Respondent offering mobile phone ring tones, games and images.
4.4	The Domain Name was registered by the Respondent on 5 May 2003.  There is a website at the address www.gadyar.co.uk which states as follows:
""Gadyar!"
Donate to the Tsnuami [sic] Appeal click here!
The new greeting of worldwide fun and friendship.
Thank you for dropping by!"
4.5	There is then a box within the single page which contains links to a site referred to as "KicksMaster".  The text in this box reads as follows:
"New shoes from KicksMaster cost less and look better.
How do you like basketball boots, fresh sneakers and cool kicks?  KicksMaster is the number one site for guys into trainers.
Click here to slip into something warm soft and infinitely pleasing.
Get double the enjoyment wearing a pair of new Kicks! ™ "
4.6	The site then continues as follows:
"Legal disclaimer:  We cannot be held responsible if you reached this website in error, or if our domain name is similar to any other.
The Gadyar Foundation for World Peace"
4.7	The link on the site at www.gadyar.co.uk leads to a site at the address www.kicksmaster.com selling, amongst other things, trainers.
4.8	The content of the site at www.gadyar.co.uk has, however, changed over time.  The most significant change (to the current form described above) took place after the Complainant's solicitors complained to the Respondent in a letter of 20 January 2005. The Complainant has provided copies of the content of this site as it was prior to January 2005.  In this decision, I will refer to the content of the site as it was prior to January 2005 as the "Respondent's Original Site".  
4.9	The Respondent's Original Site appears to have had two forms (at least) prior to the Complainant's letter to Respondent dated 20 January 2005.  The Respondent's Original Site as of 29 June 2003 contained the following content:
" 

Gay, lesbian and bisexual personals and chat.
Do you want to meet new gay men or lesbian women online?
With Gaydar you can create your own profile for free, browse other people's personals and photos and chat to other people who are online now in a Java chatroom.  Gaydar is one of the busiest sites for gay boys and girls in the United Kingdom.
Click here to continue to Gaydar.co.uk.
Disclaimer:  This page is not owned or operated by Gaydar but provided as a convenient helper to people who may mistype the Gaydar.co.uk address in their web browser.  The cost of putting this page online is paid for in part from advertising.  All trade marks are acknowledged."
4.10	The content of the Complainant's Site from 22 June 2002 states as follows:
" 

Gaydarradio.com feel the pulse
We invite you to register yourself for our interactive personals system, its free so don't miss out on this opportunity.
Click here to register"
4.11	The June 2003 version of the Respondent's Original Site and the June 2002 version of the Complainant's Site are remarkably similar visually.  Both have the domain "Gaydar.co.uk" appearing centrally at the top of the page in an oblong text box with a star at the lefthand side and next to that 2 circles (see above).  Both also have what appears to be an identical image of the upper half of a naked man surrounded by three stars of various sizes.
4.12	The content of the Respondent's Original Site as of 7 January 2005 is even more like the Complainant's Site (screen print of 10 February 2005).  It is worth reading the two side by side:
Respondent's Original Site 7/1/2005
"Gadyar.co.uk
What you want, when you want it
Log on to the ultimate gay personal website 

Whatever you are looking for you'll find it here. 
Log on or register for free below.  
Log on
User name
Password

Remember User Name
Don't remember User Name
Today I am looking for " 
There is then a disclaimer at the bottom of the page which states:
"This is a redirection service not affiliated with Gaydar or QSoft Consulting Limited in any way provided for courtesy and sponsored by advertisers."
The page also contains on its righthand side an image of a man.
	Complainant's Site 10/2/2005
"Gaydar.co.uk
What you want when you want it.
Welcome to the ultimate gay personals website.
Whatever you are looking for you'll find it here.
Log on or register for free below
Log on
User Name
Password
Forgot password?
Remember User Name
Don't remember User Name
Today I'm looking for " 

The page at the Complainant's Site also contains an image of a man on the righthand side (although not the same image).	

4.13	The text style, font size and layout of the Respondent's Original Site is identical to that of the Complainant's Site.
5.	The parties' contentions
Complainant
5.1	The Complainant's case in relation to Rights relies upon its Community Trade Mark Registration for the word "GAYDAR" in Classes 35, 38 and 42 (the "Trade Mark").  The Complainant also asserts that "gadyar.co.uk is similar to gaydar.co.uk and that the Respondent's website infringes the Trade Mark".
5.2	In relation to the disclaimer that appears on the Respondent's site, the Complainant states that the Respondent is attempting to exploit the confusion which arises on the part of the public well before the disclaimer is seen. 
5.3	The Complainant also asserts that it has Rights in passing off and that the Respondent has made misrepresentation(s) such as to cause confusion in the minds of the public that there is some connection between the Complainant and the Domain Name, leading to a loss of goodwill by the Complainant.  
5.4	In relation to Abusive Registration, the Complainant relies upon the following:
(a)	when the Domain Name was registered this was done in order to take advantage of web users mistyping the name "Gaydar";
(b)	the domain name is being used in a manner which takes unfair advantage of, and is unfairly detrimental to, the Complainant's rights.  The only conceivable use of the Domain Name is alleged to be to take advantage of a prospective visitor to the Complainant's Site who happens to mistype the word "Gaydar";
(c)	that the Respondent is gaining revenue from links to such sites as KicksMaster;
(d)	the Domain Name was registered for the purpose of unfairly disrupting the Complainant's business and, despite the disclaimers, has been used 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; and
(e)	the subsequent change to the current form of the website at www.gadyar.co.uk cannot affect the case.  Any disingenuous suggestion that it might be inferred that "gadyar" is somehow a "new greeting or worldwide fun and friendship" (as stated on the site at www.gadyar.co.uk at the date of this decision) should be dismissed and appropriate conclusions drawn.  The legal disclaimer is said to be ineffective because it appears after the error has been induced.
5.5	In support of its position, the Complainant refers to the following DRS decisions:  Chivas Brothers Limited v David William Plenderleith DRS 00658 and Oxford Instruments Plc v Bruinder Singh Dha DRS 00832.  The Complainant relies on the following from the Oxford Instruments v Bruinder:
"Where a respondent registers a domain name:
1.	Which is identical (or virtually identical) to a name in respect of which the Complainant has rights; 
2.	where that name is specifically referable to the Complainant and sufficiently distinctive;
3.	where there is no obvious justification for the Respondent having adopted that name for the domain name; and
4.	where the Respondent has come forward with no explanation for having selected the Domain Name;
it will ordinarily be reasonable for an expert to infer first that the Respondent registered the domain name for a purpose and secondly that purpose was abusive."
Respondent
The Respondent has not responded.
6.	General
6.1	The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (the "DRS Procedure”).
6.2	Paragraph 15b of the DRS Procedure provides, among other things, that “If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint.” 
6.3	There is no evidence before me to indicate the presence of exceptional circumstances; accordingly, I will now proceed to a Decision on the Complaint and notwithstanding the absence of a Response.
6.4	Paragraph 15c of the DRS Procedure provides that “If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure …, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.”  I am not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.
7.	Complainant's Rights
7.1	The Complainant has a registered trade mark for the word GAYDAR.  That alone is sufficient to establish Rights in that name.  The Complainant has also provided some evidence of its use of the name Gaydar through the website at www.gaydar.co.uk.  No details of sales or promotion through this website or other means in the UK have been provided.  However, the use of the name on the site over time (as evidenced by the pages supplied from archive) supports the Complainant's claim to rights in the name GAYDAR.
7.2	The name in which the Complainant has rights (GAYDAR) and the Domain Name are not identical.  They do, however, contain the same letters with a transposition of the third (y) and fourth (d).  The result is a word used in the Domain Name which, so far as I am aware, has no meaning.  In terms of sense therefore, Gaydar and Gadyar are not similar.  However, visually the two are very similar.  There is no requirement under the DRS for the two to be "confusingly similar".  In my opinion, the two are sufficiently close to be considered "similar" under the DRS and that is what I find.  
8.	Abusive Registration
8.1	An Abusive Registration is defined as follows:
"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."
8.2	The Complainant's main contention appears to be that www.gadyar.co.uk is something which may be mistyped by someone seeking the site www.gaydar.co.uk and that the Respondent has behaved in such a way as to capitalise upon that confusion by using content at www.gadyar.co.uk which has very closely mimicked the content of the site at www.gaydar.co.uk.  The disclaimer contained on the Respondent's site is not effective, says the Complainant, because the confusion has already occurred by that point.
8.3	The striking feature about the current case is the way in which the Respondent has used the website at www.gadyar.co.uk prior to the complaint made by the Complainant's solicitors.  The Complainant has provided two examples of the content of the site at the Complainant's website and the Respondent's site (the "Original Respondent's Site") prior to the correspondence from the Complainant's solicitors.  In each case, the text is virtually identical to that used in examples of the Complainants site at www.gaydar.co.uk.  Further, in one instance, an image has apparently been copied from the Complainant's Site onto the Respondent's site and the Respondent has used not only the registered trade mark GAYDAR on the site but has also used a logo form which replicates the way in which the Complainant uses its brand and depicts its domain name (gaydar.co.uk).  
8.4	The Respondent's Original Site was clearly intended to mimic extremely closely that of the Complainant.  In my view anyone who happens to type www.gadyar.co.uk into their internet browser by mistake when intending to type www.gaydar.co.uk was extremely likely to think, on arriving at the Respondent's Original Site, that he had arrived at the Complainant's Site.  This applies particularly to the form of site used in January 2005 by the Respondent where the only clue that this is not the Complainant's Site is contained in the small disclaimer which appears below a line at the bottom of the page.   The style of font, size of font, text content, layout and images on the Respondent's Original Site are all the same as one form of the Complainant's Site.  These features all worked to create the impression that the user had arrived at the Complainant's Site.  In my opinion this cannot have been mere coincidence - this is what the Respondent intended.
8.5	There is then the question of the disclaimers.  In both forms of the Original Respondent's Site which have been provided to me, there is a disclaimer which appears in smaller font at the bottom of the screen below a solid line.  In the January 2005 version, the disclaimer stated as follows:
"This is a redirection service not affiliated with Gaydar or QSoft Consulting Limited in any way provided for courtesy and sponsored by advertisers."
8.6	The text of this disclaimer is the same size and font as used by the Complainant on its site at approximately the same time for its legal/copyright notice.  The disclaimer used as of June 2003 by the Respondent stated as follows:
"Disclaimer:  This page is not owned or operated by Gaydar but provided as a convenient helper to people who may mistype the Gaydar.co.uk address in their web browser.  The cost of putting this page online is paid for in part from advertising.  All trade marks acknowledged."
8.7	I do not believe that these disclaimers prevent the Respondent's registration and, particularly, use of the Domain Name from rendering the Domain Name an Abusive Registration in the Respondent's hands.  As the disclaimers effectively acknowledge, individuals seeking the site at www.gaydar.co.uk may mistype the address and, instead, input the address of the Respondent's Site.  Having arrived at that site, those individuals were (prior to the Complainant's Solicitor's letter of February 2005) met by a page which very closely mirrored that of the Complainant's Site.  Any user arriving at that site would have thought he was at the Complainant's Site until he tried to navigate further.  In my view, the close mimicking of the Complainant's Site was intended to sustain this confusion on the part of the user.  Some users might give up at that point, some may have read the small disclaimer.  I believe, however, that a proportion would not see the disclaimer tucked away at the bottom of the page.  By that stage, the damage would have been done.  In my view, this amounts to a use of the Domain Name in a manner which takes unfair advantage of and is unfairly detrimental to the Complainant's Rights. 
8.8	I do not believe that the rather belated change to the Respondent's Site (after the letter from the Complainants solicitors in February 2005) materially changes this aspect of the case.  Firstly, the requirement under the DRS policy is that the Domain Name "has been used in a manner which … [is abusive]".  The requirement is that the use has occurred prior to the complaint being made.  There is no requirement that use which is Abusive continues up to the date of the complaint or thereafter.  Further, in light of the content of the Respondent's Original Site, it is clear that the current content also aims to take advantage of the Complainant's Rights.  The current site at www.gadyar.co.uk contains what appears to be a sponsored link to a commercial site (KicksMaster.com).  If one accepts, as the Respondent's disclaimers appear to do, that a proportion of individuals arriving at the site will have been seeking the Complainant's website it seems the Respondent will be making money from the sponsored link as a result of that confusion.  That is taking advantage of the Complainant's Rights (part of the site traffic is a result of confusion with the Complainant's GAYDAR name) and, accordingly, amounts to Abusive Registration.
9.	Decision
The Complainant has Rights in the name GAYDAR.  The Domain Name is similar to the name in which the Complainant has Rights.  The Domain Name is an Abusive Registration in the hands of the Respondent.  The Domain Name should be transferred to the Complainant as requested.

______________________                                        _________________                                      
Stephen Bennett					Date