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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Lintran v Morrison [2005] DRS 03021 (6 December 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/3021.html Cite as: [2005] DRS 03021, [2005] DRS 3021 |
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Nominet UK Dispute Resolution Service
DRS 03021
Lintran v Robert Morrison
Decision of Independent Expert
Complainant: Lintran
Country: Great Britain
Respondent: Robert Morrison
Country: MT
lintran.co.uk ("the Domain Name")
The Complaint was lodged with Nominet on 6 October 2005. Nominet validated the Complaint and informed the Respondent on 6 October 2005 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days (until 28 October 2005) to submit a Response. The Respondent did not file a Response. On 15 November 2005, the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 7 of the Nominet DRS Policy Version 2 ("the Policy").
On 22 November 2005 Nominet appointed Andrew Clinton ("the Expert"). The Expert has confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as expert in this case, and further confirmed that he knows 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.
Nominet sent the Complaint to the Respondent by post and also by e-mail to [email protected] (which is the e-mail address given for the Registrant) and [email protected]. The e-mail sent to [email protected] was returned with a delivery failure report. However, the Complaint was sent in accordance with paragraph 2 of the DRS Procedure Version 2 ("the Procedure").
Under paragraph 15c of the Procedure if, in the absence of exceptional circumstances, a party does not comply with any provision in the Policy or Procedure (in this case by declining to file a Response) the Expert will draw such inferences as he considers appropriate.
The Domain Name was registered in the name of the Respondent on 14 January 2005.
Complainant
The Complaint (which was submitted by an authorised representative) is as follows:
The Complainant has rights in the Domain name because: a.) The Domain Name is identical to my clients Trading Name. The Business has traded under this name, as Sole Trader since 1986, evidence VAT Registration document with registration change to Partnership in 2001 evidence VAT Registration Document. Exhibit Number 1. VAT Registration Document b.) My Clients have further evidence of T/A Lintran evidenced by exhibit 2, the front cover of their accounts prepared by Accountants J Nicholson & Co, clearly showing FP Hopkins T/A Lintran Exhibit Number 2. Front Cover Financial Statements for the year ended 2001 c.) The business run by my clients has advertised using the name Lintran since they started trading, evidence advertisements letterheads and compliments slips. Exhibit Number 3. Two copies of advertisement examples, copy of letterhead, copy of compliments slip. d.) My clients provide goods and services under the name Lintran as evidenced by current brochure. Exhibit Number 4. Brochure e.) The Lintran brochure, on Page 19, also contains evidence of Lintran trade back to 1991, as evidenced by a BASC review of that year. Exhibit Number 5 Brochure Page 19 f.) Further evidence of Lintran trade name is offered by exhibit 5, Lintran Price List and Order Form 1997, which also clearly shows the Lintran logo. Exhibit Number 6 Price List & Order Form 1997 g.) Lintran has the following registered Trade Mark registered in October 1998: Lintran Transit Box ADP 0762668001 which is evidenced by the Certificate. Exhibit Number 7 Trade Mark Confirmation Application Certificate h.) Lintran has a 17 year Patent Certificate, evidence Patent Office 'Certificate of Payment of Patent Renewal Fee'. Exhibit Number 8 The Patent Office Certificate of a Renewal Fee.
The Respondent is not known to my Clients. My clients emailed the Respondent earlier this year regarding ownership of the Domain but to date have received no reply.
The Domain Name, in the hands of the Respondent, is abusive because it is being used in such a way which has already confused people into thinking it is controlled by F&I Hopkins T/A Lintran. The site www.lintran.co.uk (which diverts to sedoparking.com is advertising under lintran and competitive products to those produced by my clients business.
Remedy requested: transfer of the Domain Name.
Respondent
The Respondent did not file a Response.
General
Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities: firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and, secondly that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant's Rights
Rights are defined in the Policy as including, but not limited to, rights enforceable under English law. This is usually demonstrated by reference to a trade mark registration or evidence of active trading using the name or mark in question. The Complainant markets and sells a range of Lintran transit boxes and other products, which are primarily used for the transportation of dogs. According to the brochure that the Complainant has supplied, Lintran is a small family run business that has been established since 1988. The Complainant has provided a VAT Certificate of Registration which dates back to 1986. The Complainant says that it has promoted the brand Lintran through advertising and examples of advertisements have been provided. The brochure also contains a number of testimonials from customers, which go back a number of years. It appears from the brochure that the Complainant attends at many of the large country fairs.
The Complainant has a trade mark registration for the mark Lintran Transit Box in class 20 (dog/animal transit boxes). The Trade Mark No. 2179002 was registered on 9 April 1999.
The threshold for establishing rights is not particularly high. The Respondent has not filed a Response and there is therefore no challenge to the Complainant's assertion that it has Rights in the trading name Lintran. On the evidence supplied, and in the absence of any challenge on the point, the Expert is of the view that the Complainant has a business benefiting from a protectable goodwill. The Expert is therefore satisfied that, on the balance of probabilities, the Complainant has Rights in respect of the name Lintran which is identical to the Domain Name (disregarding, for these purposes, the generic domain suffix).
Abusive Registration
Abusive Registration is defined in paragraph 1 of the Policy to mean 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.
Non-exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy 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 Nominet; 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.
The list of factors at paragraph 3 of the Policy is non-exhaustive and a Complainant can succeed in proving Abusive Registration without the need to prove any of those factors. However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.
Non-exhaustive factors – paragraph 4 of Policy
There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy. However, there was no Response to the Complaint.
Discussion and findings regarding Abusive Registration
The Complainant points out that the Domain Name is identical to its trading name. It says that there is no connection with the Respondent (by which I take it to mean that the Respondent's activities were not authorised by the Complainant) and it says that the Respondent failed to respond to an e-mail regarding ownership of the Domain Name, although no copy of that e-mail has been supplied.
The Complainant complains about the use of the Domain Name, which it says, has been used in such a way that it has already confused people into thinking that it is controlled by F&I Hopkins T/A Lintran. The Complainant relies upon the fact that the Domain Name diverts to sedoparking.com and is advertising competing products.
The Complainant does not expressly refer to any of the factors listed in paragraph 3 of the Policy but clearly one factor that may be relevant is paragraph 3aii. Whilst the Complainant refers to confusion there is no evidence before the Expert of actual confusion. The Expert takes the view that paragraph 3aii of the Policy requires evidence of actual confusion. However, as noted above, the list of factors at paragraph 3 is non-exhaustive and the Domain Name may be an Abusive Registration if the definition in paragraph 1 of the Policy is satisfied. This decision turns upon whether the Complainant has shown, on the balance of probabilities, that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Domain Name directs internet users to the website at www.sedoparking.com and the user is presented with a webpage that is headed "Lintran.co.uk" and contains, underneath that heading, the statement "for Lintran try these sponsored links". There are links to 10 different websites, some of which appear to offer products that are in competition with the Complainant's products (by way of example one link is advertised as ""Dog/puppy cages UK"). Those links have now been disabled (probably as a result of the Complaint under the DRS) but the websites listed do offer competing products to those offered by the Complainant. There is also a link to the Sedo website (at www.sedo.com) which states that Sedo is the leading marketplace for buying and selling domain names and websites.
As Sedo makes clear, in its FAQ section, the registrant of a domain name can earn money by parking a domain name with Sedo. Advertisers sponsor the links that appear on the domain name which are relevant to the chosen keyword. According to Sedo "the more advertisers there are that want to place ads for a certain keyword, the higher the click price and, as a result, the higher the domain parker's revenue". "Every time one of the links is clicked, the domain owner earns money. This amount begins at 0.02 € and can go as high as 0.75€ per click". It appears, in the absence of an explanation from the Respondent, that the Respondent parked the domain name with a view to commercial gain.
This is not the first complaint made under the DRS that a domain name, in the hands of this particular Respondent, is an Abusive Registration. There have been two previous complaints under the DRS about the Respondent.
In the case of Guilbert UK Holdings Limited v Robert Morrison (DRS 02775) the Expert directed that the domain name guilbertonline.co.uk be transferred to the Complainant. The complaint in that case was that the Respondent was using the domain name as the address of a website which featured various links to other websites that offered goods in competition with the Complainant. The Respondent did not file a Response in that case. The Expert found that the domain name was, in the hands of the Respondent, an Abusive Registration. The Expert took the view that, in using the domain name as the address of a website that offers links to other sites offering goods that are directly in competition with the Complainant, the Respondent was knowingly using the domain name for a purpose that is unfairly disrupting the Complainant's business and that was the Respondent's primary purpose and intention when registering the domain name.
In the case of Equazen UK Limited v Robert Morrison (DRS 2735) the Expert found that the Complainant did not satisfy the requirements of paragraph 2 of the Policy and the request for the transfer of the domain name was refused. The Expert declined to make a finding in that case that the Complainant had Rights in respect of a name which was identical or similar to the domain name. The Expert also said that there was no evidence in that case that there was an Abusive Registration within the meaning of paragraph 1 of the Policy. The home page of the domain name in that case took internet users to a portal for sponsored links but the Expert was not impressed by the lack of evidence in the case.
Each case must of course be determined on its particular facts. In this case the Expert has considered all of the evidence and has had regard to the following matters in particular:-
• The Domain Name is identical (ie without any adornment) to the Complainant's trading name;
• The Complainant's trading name is distinctive of the Complainant's business;
• There is no explanation from the Respondent as to the reason that he decided to register a domain name using the Complainant's trading name;
• The Domain Name points to a Sedo parking page; and
• The website contained sponsored links to other websites that offer products in competition to the Complainant's products.
The Expert is of the view that the registration of a domain name that is identical to the trading name of the Complainant (which is protectable in law) and the use of that domain name with a view to commercial gain through a domain name parking service takes unfair advantage of or was unfairly detrimental to the Complainant's Rights. The Expert therefore finds, on the balance of probabilities, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert directs that the Domain Name be transferred to the Complainant.
Andrew Clinton
6 December 2005