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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Grupo Ferrovial SA v Watson [2007] DRS 4867 (18 November 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4867.html Cite as: [2007] DRS 4867 |
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Nominet UK Dispute Resolution Service
DRS Number 04867
Parties: Grupo Ferrovial S.A. v Andy Watson
Decision of Independent Expert
Complainant: Grupo Ferrovial S.A.
Country: Spain
Respondent: Andy Watson
Country: Great Britain
Ferrovialairports.co.uk
This domain name is referred to below as the "Domain Name".
A hardcopy of the Complaint was lodged with Nominet on 11 July 2007. Nominet validated the Complaint on 12 July 2007 and notified the Respondent. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response to the Complaint. A Response was submitted within this time limit on 31 July 2007. The Complainant submitted a Reply in time on 7 August 2007. The dispute was not resolved in mediation. On 18 October 2007 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").
Sallie Spilsbury, the undersigned ("the Expert") has confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as Expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the Parties which might appear to call into question her independence and impartiality.
After filing the Complaint, but before service of the Response, the Complainant submitted a non-standard submission to Nominet on 20 July 2007. The Response was sent to the Respondent on 25 July 2007 and the Response filed by the Respondent takes account of it. The Respondent has not objected to the non-standard submission. Under Clause 13 of the Nominet Dispute Resolution Service Procedure (the Procedure) the Expert is not obliged to consider the non-standard submission. The Expert was initially provided with only the Complainant's explanation for making the non-standard submission (pursuant to clause 13(b) of the Procedure). The first task of the Expert is therefore to decide whether to take the submission into account in her decision.
The Complainant's reason for making a non-standard submission.
After submitting the Complaint on 9 July the Complainant discovered that the Respondent had amended the text on the website to which the Domain Name relates. The non-standard submission makes submissions in relation to the changed text.
Expert's Decision on non-standard submission
The making of a non-standard submission by a Complainant in circumstances in which the use of a disputed domain name has changed is a sensible way to proceed. It enables the Expert to take into account the current circumstances in her decision. The Respondent had sight of the additional submission in time to incorporate it into his Response and has not objected to it. It is therefore appropriate that the Expert takes the non-standard submission into account in her decision. The substantive content of the non-standard submission is discussed below.
The Complainant
According to the following submissions set out in the Complaint (these are unchallenged by the Respondent) the Complainant is one of the world's leading infrastructure groups. Its business areas both in its native Spanish market and abroad are construction, management of infrastructures and services. Its principal activities are focused on the following areas:
• Large-scale civil engineering projects, residential and non-residential buildings and industrial works, such as water treatment facilities and desalination plants.
• Management of public infrastructures. The Complainant is the second largest infrastructure development and management company in the world in terms of number of concessions it manages.
• Public services, integrated water management and facilities maintenance services.
The Complainant has consolidated itself as a multinational company. It has a business presence, inter alia, in Europe (including the UK), USA, Canada and Latin America.
The Complainant is the owner of trade marks in the United Kingdom, the European Union and worldwide based on the name "Ferrovial". The Complaint cites the following trade marks as being particularly relevant to the Complaint (although there are other registrations):
• UK Trade mark "Ferrovial" no. 1523983, with effect since January 12, 1993 and registered under class 37 of the Nice Classification;
• Community trade mark "Ferrovial Agroman" no. 1245786, with effect since July 19, 1999 and registered under class 37 of the Nice Classification;
• Community trade mark "Ferrovial Agroman" no. 2708089, with effect since May 21, 2002 and registered under classes 2, 4, 6, 7, 9, 11, 17, 19, 35, 36, 39, 40 and 42 of the Nice Classification.
It should be noted that the above registrations are for figurative or stylised versions of the FERROVIAL mark. The Community Trade Mark registrations are also for a 2 word mark FERROVIAL AGROMAN. There is however nothing to indicate that there are disclaimers in place which would exclude protection for the FERROVIAL word mark alone. None of the registrations cover airports or air travel related products or services specifically. Trade mark 2708089 is however registered under class 39 for "transport; packaging and storage of goods and travel arrangement".
The Complainant is also the owner of numerous domain names based on the name "FERROVIAL" (for example, FERROVIAL.COM; FERROVIAL.ORG; FERROVIAL.NET; FERROVIAL.INFO; FERROVIAL.BIZ; FERROVIAL.MOBI; FERROVIAL.EU; FERROVIAL.ES; FERROVIAL.COM.ES; FERROVIAL.US; FERROVIAL.CA; FERROVIAL.COM.CN; FERROVIAL.PL; FERROVIAL.IN and FERROVIAL.CH).
Documents evidencing the above trade marks and domain names are provided as ATTACHMENT 2 to the Complaint.
The Complainant submits that, given its extensive and international use of the "FERROVIAL" trade marks and domain names, the marks are strongly perceived as belonging to and identifying the Complainant. The Complainant supports this assertion by citing the results of searches for Ferrovial using well known Internet search engines. By typing the word "Ferrovial" into the Google search engine, more than 1,830,000 references relating to the Complainant were found. By using the Altavista search engine more than 890,000 references relating to the Complainant were found. By using the Yahoo! Search engine more than 900,000 references relating to the Complainant were found. By using Ask.com more than 68,000 references relating to the Complainant were found. By using MSN more than 67,000 references relating to the Complainant were found. A copy of the results for these searches is appended to the Complaint at ATTACHMENT 3.
The Complainant led a consortium of companies which in June 2006 acquired BAA PLC, the company charged with the management of airports in the UK and abroad. The acquisition was covered extensively by UK and international economic and general media at the time of the takeover. ATTACHMENT 4 to the Complaint includes a number of documents reporting on the takeover. Although not mentioned in the Complaint document itself one of the documents at ATTACHMENT 4 is a printout from BBC news dated 20 June 2006 which states that the Ferrovial Group (at the time of the report) owned 50% of Bristol airport, 100% of Belfast City Airport, 20.9% of Sydney Airport and 100% of Cerro Moreno Airport, Chile.
The Complaint points out that the Respondent registered the Domain Name during the BAA takeover period, 2 days after BAA's board of directors had endorsed the Complainant's offer.
The Respondent
In the Response the Respondent states that he was an employee of BAA and subsequently the Complainant for a very short duration following the takeover of BAA. He operates a website at the Domain Name. The purpose of the website is "to provide an environmental commentary looking into best practices and using examples witnessed at the airports owned by Ferrovial through my experience working there." The Respondent goes on to say that "as well as operating a commercial enterprise offering carbon energy efficiency advice and solutions I provide free guidance to individuals to minimise their carbon footprint." He states that much of the guidance provided relates to his experiences working for BAA airports. He acknowledges that he was "fully aware of the takeover of BAA Airports at the time of registration".
The Domain Name
The Respondent registered the Domain Name on 8 June 2006 (a Whois search confirms this position). The website operated by the Respondent has gone through a number of changes since the Complaint was commenced as follows:
9 July
In its non-standard submission the Complainant attaches a printout from the Respondent's website at the date that the Complaint was submitted by it to Nominet (9 July 2007). The text on the website states that the Respondent invites queries about how to be more energy efficient and sustainable. The text states written by the Respondent states; "I expect most of the questions to be around saving energy around the house but I am happy to answer work-related questions as well". A diagram of the inside of what appear to be a kitchen in a house is shown. The Respondent describes himself as having "broad experience in energy engineering and efficiency and climate change". There is no specific mention of the Complainant or indeed of air travel. One of the postings on the site from "CNG" mentions US airports but there is no evidence of the Respondent engaging with this.
19 July
On 19 July the Respondent discovered that the text on the website had been amended to add the following additional text:
Much of my material is based on my experiences working for BAA Heathrow, now owned by Grupo Ferrovial. I hope to draw more conclusions on sustainable living by the examination of industries such as Ferrovial Airports whose diversity allows such an explanation to take place."
A printout of the amended website showing the additional text is attached to the non-standard submission. No other changes to the website appear to have been made at that time. The drawing of the kitchen is still in use alongside the statement that the Respondent expects most of the queries to be about saving energy around the house. There is no specific mention of air travel or of the Complainant save for the matters referred to above.
Date of submission of the Response (31 July)
In its Response the Respondent states that it has made further changes to the website and the amended text is attached. A confirmatory search by the Expert on 17 November 2007 confirmed that the text is in use and that the website now features only the text set out below. The amended text reads as follows:
"Climate Change and the Aviation Industry - A Study
This website was established to provide an environmental commentary based upon activities, strategies and impacts of the airports previously owned by BAA, now owned by Grupo Ferrovial.
Ferrovial Airports group in the UK own seven major airports; Heathrow, Gatwick, Stansted, Southampton, Edinburgh, Glasgow and Aberdeen and hence are the dominant airport owner/operator in the country. Furthermore, Heathrow is the world's busiest international airport serving some 65 million passengers per year.
The impact of the air industry on climate change is considerable and is driven largely by consumer demand for leisure and business travel as well as the import of goods. Furthermore, the airports owned by Ferrovial contain large building facilities which directly and indirectly emit carbon dioxide and thus contribute to climate change.
Since 2001 much work has been undertaken to reduce the amount of energy consumed by the airports and I seek to make a commentary as to the relative successes, challenges and failures these activities have faced. This is in no way meant to highlight Ferrovial Airports as a particularly good or bad example of climate change mitigation but may merely provide examples of how best to tackle energy efficiency and what stumbling blocks to avoid.
I am operating this site in my own time and thus progress will be slow. Please be patient with me."
The Parties' Contentions
The Complaint and non-standard submission
Rights
The Complainant relies on its trade mark and domain name registrations and the extent of its brand recognition (as evidenced by the results of the electronic searches) as giving rise to rights in the FERROVIAL mark.
It asserts that the Domain Name is similar to the FERROVIAL mark for the purposes of the Policy. It includes the name "Ferrovial" followed by the word "airports"; and it is complemented by the suffix ".CO.UK". These differences are not sufficiently relevant to displace the fact that the Domain Name is confusingly similar to the Complainant's trade marks. The first difference consists in the combination within the disputed domain name of the name "Ferrovial" and the word "airports". The addition of a generic term does not operate as a distinguishing feature. By far, the dominant and memorable part of the Domain Name is the Complainant's trade mark. Such a conclusion is especially applicable because the name "Ferrovial" has no meaning in English in contrast to the generic character of the word "airports". The second difference existing between the Complainant's FERROVIAL mark and the Domain Name is that the later includes the suffix ".CO.UK". This difference is due to the current technical set-up of the Domain Name System and should not be taken into account when evaluating the similarity existing between the Domain Name and the Complainant's mark.
Taking into account the above, the Complainant asserts that the only conclusion that can be reached is that the Domain Name is confusingly similar to the Complainant's "Ferrovial" trade marks.
Abusive Registration
The registration of the Domain Name was based on the positive knowledge of the Complainant's takeover of BAA, taking into account the fact that the Domain Name was registered on June 8, 2006 (i.e. shortly after BAA's board of directors publicly endorsed the Complainant's offer on BAA). The only likely explanation of such registration is that the Respondent was aware of the Complainant's success in taking control on BAA and aimed at opportunistically registering a domain name relating to the Complainant's trade marks combined with a word (airports) identifying the activities of BAA. In the non-standard submission the Complainant, having learned that the Respondent is a former employee of BAA, states that this fact indicates that the use of the FERROVIAL mark was not casual but was deliberately aimed at attracting Internet users to the Respondent's website.
Submissions in relation to the original version of the Respondent's website and the version of 19 July (contained in the Complaint and non-standard submission)
It is obvious that there exists a clear "disconnection" between the Respondent's original version of the website and the Complainant. The Complainant has no objection to the Respondent offering advice on energy efficiency and sustainable living by means of a public website. Nonetheless, the unauthorised connection of such a website with the Domain Name (and, hence, with the Complainant's trade marks) constitutes a use in bad faith as it creates a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website or its services. Given the obvious connection existing between the Domain Name and the Complainant's trade marks it is difficult to conceive how the Respondent could make use of the Domain Name without causing confusion with the Complainant's registered trade marks and therefore infringing the Complainant's Rights.
There is no evidence of actual confusion before the Expert to support this submission.
The Response
The Respondent makes the following points in its Response:
Tribute/criticism site
Clause 4(b) of the Policy provides that "Fair use may include sites operated solely in tribute to or in criticism of a person or business."
The Respondent indicates that this is the purpose of the Domain Name registration.
"While I have not yet published my work in the examination of Ferrovial Airports and their impact on climate change, this is central to my line of interest. The purpose of the website is to provide an environmental commentary looking into best practises and using examples witnessed at the airports owned by Ferrovial through my experience working there. In congruence to the item detailed above I plan to both provide fair tribute and criticism where appropriate in order to demonstrate good and poor environmental management practises. I would challenge that Grupo Ferrovial hold a paranoia concerning climate change and the potential deprecating PR which may occur in the future when air travel is properly challenged to make significant contribution to climate change mitigation.
Furthermore as well as operating a commercial enterprise offering energy efficiency advice and solutions, I provide free guidance to individuals to minimise their carbon footprint. Many of the guidance provided relates to my own experiences working for BAA airports and it was my wish that with my reputation known within the company that current and ex-employees may be able to contact me for such guidance. In this instance, registration of the domain name under discussion is beneficial to my interests and represents no commercial value."
Confusing similarity
The Respondent observes:
"The Complainants claim that the domain registration is confusingly similar to its trademarks is missing the point – I am making a commentary on their business, both past and current, and it is no coincidence that I chose that domain name. I wish for this website to have relevance to the complainants company. No confusion was intended by any means….. In this case the Complainant is using the DRS in bad faith because they know that they do not have any valid grounds for complaint but simply wish to have a chance to obtain a desirable domain name."
Abusive Registration
The Respondent submits:
"I was indeed fully aware of the takeover of BAA Airports at the time of registration. The case against me however that the registration took place because of that takeover is complete conjecture. At the time of registration I was considering significant changes to my working life and shortly afterwards set up my own environmental consultancy. Part of that change was a decision to examine the major UK airports to determine their potential for improvements in climate change mitigation and the takeover merely prompted me to begin this project as soon as possible.
The above reasons counter the Complainants case that there exists a disconnection between the domain name use and the Complainant's trademarks. Furthermore the claim that the domain name purchase was set up in bad faith in order to create confusion is unsubstantiated, petty and based on false assumption: given that the Complainant appears to own the vast majority of internet addresses and scores so highly with search engines, I contest that no confusion could credibly occur. In contrast, I challenge that the complainant is seeking a monopoly of domain registrations in order that any internet-based discussion on the company's performance both environmental and non-environmental is made as difficult as possible. With this point I emphasise that with Ferrovial's ownership of the vast majority of UK airport facilities, no significant discussion regarding air transport in the UK can take place without reference to the Complainant's trademarks."
Changes to the website
The Respondent submits:
"Since this case against me has been filed I have felt compelled to make necessary alterations to the website content in order to reflect the proper intention of the website whereas previously it had been linked to a yahoo group as a matter of convenience until such time that I had the time available to develop the site further…..
In response to the complainants case that having worked at BAA, the complainant has indicated that this status would offer me a greater level of awareness of the takeover and thus has influence to change the nature of this case. This argument however is null on the basis that as an employee of low management status:
- I had no involvement in the negotiations of the takeover
- I had no more knowledge of the takeover than was available in the public domain…..
Far in advance of any announcement of takeover, I had already made plans to produce this website and it was a result of the takeover which compelled me to progress this project."
Summary
The Respondent summarises his submissions as follows:
"The registration in the hands of the respondent/registrant is not abusive because: [not all of these will be relevant in each case]
The domain name was being used for an unauthorised tribute or protest site set out the factors which show that the use is fair in the circumstances that my area of knowledge is within the realms of the airports operated and owned by the Complainant.
The use I have made of the name is legitimate, fair and non-commercial in that I have made provision of environmental advice based on my experiences working for BAA airports and I have made genuine preparations to use the name in relation to a genuine offering of goods or services (namely set up a discussion group on environmental issues, the current members of which are all current or prior employess of Grupo Ferrovial)
The Complainant is using the DRS in bad faith because they are clearly seeking a monopoly over internet links to their company and wish for no internet-based discussion to take place which may provide criticism of the way in which they are i) operating their airports and ii) handling their own environmental impacts."
The Reply
The following additional submissions are made by the Complainant in its Reply.
• Taking into account the evolution of the contents linked to the Respondent's website it seems "quite doubtful" that the original aim of the Respondent was to link the Domain Name with a genuine criticism site. No reference to a critical approach can be derived from the composition of the Domain Name. The text included in the original version of the website was far from being critical of the Complainant. The explanation provided by the Respondent about his intentions are therefore "far from being credible" and should not be accepted.
• Even if one were to accept that the Respondent was using the Domain Name for posting critical comments about the Complainant numerous decisions under the Policy have considered that this cannot be considered as a "fair use" when the domain name at issue is identical or confusingly similar to the affected trade marks. Given the obvious infringement of the Complainant's trade marks the Respondent's registration and use cannot be regarded as fair.
• The transfer of the Domain Name to the Complainant should not be considered as an act of censorship against any critical comments posted by the Respondent against the Complainant. The Respondent is free to post any comment it may deem appropriate on environmental issues or about the Complainant. Nonetheless linking such contents to the Domain Name constitutes an obvious infringement of the Complainant's rights. The transfer of the Domain Name would not stop the Respondent posting the content at another address which is not similar to the Domain Name.
6. Discussion and Findings
General
Clause 2a of the Policy provides that a Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts according to the Procedure, that:
i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.
The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities (clause 2b of the Policy).
Complainant's Rights
Rights are defined in clause 1 of the Policy as including but not limited to "rights enforceable under English law".
The Complainant asserts that it has rights in the FERROVIAL mark and that the mark is identical or similar to the Domain Name. It relies on its trade mark registrations, its domain name registrations and the extent of its brand recognition in the UK and elsewhere.
The Complainant's UK trade mark 1523983 features the word FERROVIAL in a figurative form. There is no disclaimer precluding rights in the word alone. The 2 Community Trade Marks on which the Complainant specifically relies are for the mark FERROVIAL AGROMAN. Again there is no disclaimer. Given that a dominant component of each of these marks is the word FERROVIAL the Expert finds that, despite the fact that the registrations are in a slightly different form, the registrations individually and collectively confer Rights in the FERROVIAL mark on the Complainant for the purposes of the Policy.
Even if this finding were incorrect the Expert finds that the extent and success of the Complainant's business as evidenced by the media coverage at ATTACHMENT 4 to the Complaint and the content of the Complainant's website (ATTACHMENT 1) has given rise to goodwill (or unregistered rights) in the FERROVIAL mark which could be enforced by the Complainant under English law through an action for passing off.
The next question is whether the Domain Name is similar to the Complainant's FERROVIAL mark for the purposes of the Policy (it is obviously not identical).
The Expert finds that the addition in the Domain Name of what is in the context of the Complainant's business a neutral or descriptive word, "airports" does not displace the overall impact of the word "FERROVIAL" in the Domain Name. The addition of the suffix ".co.uk" also does nothing to displace this impact. The Domain Name is therefore sufficiently similar to the Complainant's FERROVIAL mark to engage the Policy.
The Complainant has therefore demonstrated that it has Rights in the FERROVIAL mark and that this mark is identical or similar to the Domain Name for the purposes of the Policy. The first criterion under the Policy has been satisfied.
Abusive Registration
Abusive Registration is defined in clause 1 of the Policy 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 [italics for emphasis];
OR
ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
The Complainant's case is based both on the Respondent's registration and use of the Domain Name.
Registration
The Complainant asserts that the registration of the Domain Name by the Respondent was in bad faith and that this amounted to taking unfair advantage of and/or unfair detriment to the Complainant's Rights.
Use
A non-exhaustive list of factors which may be evidence that the use of the Domain Name is an Abusive Registration is given in clause 3a of the Policy. The following is relevant to this Complaint:
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.
The Policy also gives a non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration (clause 4(a). The Respondent relies on 2 of these as follows:
First Ground
4(a)(i)(C) The Respondent has made legitimate non-commercial or fair use of the Domain Name.
Fair use is in turn partially defined in clause 4(b) which provides that;
"Fair use may include sites operated solely in tribute to or criticism of a person or business".
The fair use on which the Respondent relies is the fact that the Domain Name is used in connection with a tribute or criticism site connected to the Complainant.
Second Ground
Secondly the Respondent mentions the following factor listed in the Policy as an indication that his use of the Domain Name is not abusive:
4(a)(i)(A) The Respondent has used or made demonstrable preparations to use the Domain Name ….in connection with a genuine offering of goods and services.
The preparations on which the Respondent relies is the fact that he has made preparations to use the name in relation to setting up a discussion group on environmental issues, the current members of which are all current or prior employees of the Complainant. He also refers to the use of the Domain Name in relation to the provision of environmental advice.
The first question the Expert must decide is whether the Complainant has made out a prima facie case for Abusive Registration. If it has not, the arguments put forward by the Respondent will be irrelevant. In deciding this issue the Expert is able to take into account the past use to which the Domain Name has been put (i.e. the original version of the website) and the current use. It should also be remembered that the question whether the registration of the Domain Name was abusive is to be decided at the time that the registration took place (June 2006).
Registration
The registration of the Domain Name at a time when the Complainant's takeover bid for the Respondent's employee (BAA) was generating publicity gives rise to an inference that the Respondent's intention was to take advantage of the proposed takeover. This is the case whether or not the Respondent had, as an employee of BAA, access to information about the bid which was not general public knowledge. The media interest in the proposed takeover in itself would have given the Respondent information about the possibility that the Complainant's bid would be successful. The choice of Domain Name "Ferrovial" and "Airports" really only makes sense in the context that the Respondent intended to exploit the takeover. The Respondent acknowledges this but explains that his purpose was not to take unfair advantage of the Complainant or to cause detriment to its Rights but rather to operate a website commenting on the Complainant (positively and negatively) as part of a general commitment to campaigning for environmental issues and sustainable living.
The difficulty for the Respondent is that he only moved towards this use of the Domain Name once on notice of this Complaint. His submissions that this was his intention at the time of registration have no real credibility. Before the Complaint was commenced the Domain Name was used for a website discussing energy saving and sustainable living. But this website had no content generated by the Respondent that related to the Complainant or even to air travel generally. The dominant feature is a drawing of a cross section of a kitchen. The Respondent has provided no evidence that he was making preparations to adapt the website to become the tribute/criticism site he says that he had in mind. Even when the website was changed to its latest version the text is sketchy and reads simply as a statement of future intent rather than as a site operating in any meaningful sense solely as a tribute/criticism site.
Disregarding the Respondent's submissions about his intention, the question under the Policy is whether the original registration in June 2006 was achieved in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. There are no submissions from the Complainant to indicate that the Respondent has tried to sell the Domain Name at an inflated price or that the purpose of the registration was to block the Domain Name from the Complainant's reach. Nor is there anything to indicate that the Respondent wished to unfairly disrupt the Complainant's business save for a submission in the Complaint that the Respondent's intention must have been to use the Domain Name to attract visitors to his website. This would not necessarily cause disruption to the Complainant. All of these factors are set out in clause 3 of the Policy as non-exhaustive factors which would indicate that a registration is abusive. There is nothing to indicate that the factors exist here.
The Expert makes NO finding that the registration of the Domain Name in June 2006 took unfair advantage of the Complainant's Rights in its FERROVIAL mark. Although the timing of the registration and the choice of the word "airports" in conjunction with FERROVIAL indicate an intention on the part of the Respondent to take advantage of the forthcoming takeover, the submissions and evidence before the Expert do not discharge the Complainant's burden to show on the balance of probabilities that the manner of registration (disregarding the use to which the Domain Name was put) in itself took unfair advantage or caused unfair detriment to the Complainant's Rights.
Use
The Complainant submits that the Respondent's use of the Domain Name created a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's website or its services. There is no evidence that confusion has occurred. The Expert must therefore draw inferences based on the website content.
It is the view of the Expert that anyone who is aware of the Complainant on seeing the Domain Name –for example in a list of Internet search results- would associate it with the Complainant. However should visitors to the Respondent's website read through the full text of the various versions of the Respondent's website they would not remain under any mistaken impression that the Respondent's website was connected to the Complainant. The text makes clear that the Respondent is an individual rather than a multinational corporation and it does not feature the corporate professionalism that is found in the Complainant's own publicity (as evidenced in the website content at ATTACHMENT 1 to the Complaint).
However a member of the public paying cursory attention to the website content may well be-and remain- under a mistaken impression that the Complainant has authorised or approved the content of the website. This situation is potentially detrimental to the Complainant's Rights as a mistaken association could lead to a tarnishing of the Complainant's brand and goodwill. The conventional test for determining the likelihood of members of the public being confused in these circumstances would be to determine the matter from the perspective of the average consumer for the Complainant's services. How likely are they to scrutinise the content of the Respondent's website and so displace the impression created by the Domain Name of a connection with the Complainant? On this point the Expert is simply unable to make a finding on the (lack of) evidence before her. It follows that the Complainant has NOT made out its case on the balance of probabilities that the Respondent's use of the Domain Name has caused confusion.
It should be kept in mind that the overall consideration for Abusive Registration under the Policy is that the Domain Name has been used in a manner that took unfair advantage of or was unfairly detrimental to the Complainant's Rights (clause 1ii of the Policy). This can be the case even where no confusion has occurred. It is the view of the Expert that on this wider concept of abusive use the Complaint does succeed. The Expert agrees with the Complainant that the Respondent is seeking to attract visitors to his website by playing on the brand recognition of the FERROVIAL mark and the strong reputation and awareness of the Complainant among members of the public/business community with an interest in airport management and maintenance. The Domain Name consists entirely of the FERROVIAL mark, a description of the Complainant's business (airports) and the suffix ".co.uk". There is no attempt by the Respondent to distinguish his website from the Complainant by including extra text in the Domain Name. This situation is taking advantage of the Complainant's mark and status. It is unfair because it is both parasitical and potentially damaging to the Complainant's mark and goodwill. Even if visitors to the Respondent's website were to realise that the site has no connection to the Complainant, detriment is caused to the value of the FERROVIAL mark as the exclusivity of the connection between the FERROVIAL mark and the Complainant is diluted or blurred. The Complainant's mark comes to be in part associated with the Respondent. This is not fair use by the Respondent.
The Respondent's submissions that he is using the Domain Name for a site operated solely in tribute to or criticism of the Complainant is rejected. The previous use of the Domain Name was not for the purposes of such a site. The latest version of the website is a statement of intent rather a substantive site. In any event, for the reasons discussed above, the Domain Name has not been used in a fair manner. It is "piggy backing" or taking advantage of the brand recognition enjoyed by the Complainant. If a Domain Name is being used to take unfair advantage of the Complainant's Rights or to cause unfair detriment to them the fact that the use relates to a protest/criticism site will not in itself change that situation.
The Respondent refers to the environmental advice services he has been providing under the Domain Name. The Policy states that use of a Domain Name in connection with a genuine offering of goods and services is an indication that the use is not abusive. As with the criticism site submission discussed above this has to be read in conjunction with the definition of abusive use. Where the use of the Domain Name takes unfair advantage or causes unfair detriment the fact that the Respondent is offering goods and services under the Domain Name cannot alter that position. In any event the advice services offered by the Respondent appear to have ceased under the latest version of the website.
It therefore follows that the use of the Domain Name by the Respondent amounts to Abusive Registration under the Policy.
The Respondent's submission that he has made preparations to use the Domain Name as a chat room to discuss environmental issues is not supported by evidence. His suggestion that the Domain Name will enable the website to be identified by former employees of BAA/the Complainant is not understood and in any event there are other domain names which could perform the same function without taking advantage of the Complainant's Rights. The assertion that the Complainant is motivated by a desire to acquire a valuable domain name is not supported. In any event the finding that the Respondent is taking unfair advantage of the Complainant's Rights when using the Domain Name indicate that the Complainant had other reasons for bringing the Complaint.
The Respondent states that it is not possible to criticise the Complainant without using its trade marks. This is not the case. The law will permit a party to make fair use of a trade mark in order to identify goods and services as originating from the trade mark owner. But the Respondent has done more than that here. He is drawing on the associations of the Complainant's trade mark and goodwill for his own benefit. The Respondent is free to comment on the activities of the Complainant and on environmental issues generally provided that he does not infringe the rights of others in doing so. What he must avoid is drawing in visitors to his website on the sole basis of the brand recognition associated with the Complainant. If his domain name were more descriptive of the website content- or if it were to otherwise make it explicit on its face that the name is not a domain name operated by the Complainant- that may well avoid a charge of abusive registration in the future, should he decide to progress his current plans for the website.
8. Decision
The Expert finds that the Complainant has proved on the balance of probabilities that it owns Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.
Accordingly the Expert finds in favour of the Complainant and directs that the Domain Name is transferred to the Complainant.
Sallie Spilsbury
18 November 2007