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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Colliers CRE plc v Reliance Resource Investments Ltd [2008] DRS 5557 (7 May 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5557.html Cite as: [2008] DRS 5557

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Nominet UK Dispute Resolution Service

DRS 5557

Colliers CRE plc v. Reliance Resource Investments Limited

Decision of Independent Expert

1. Parties

Complainant: Colliers CRE plc

Country: GB

Respondent: Reliance Resource Investments Limited

Country: AU

2. Domain Name

The domain name in dispute is colliercre.co.uk ("the Domain Name").

3. Procedural Background

3.1     The Complaint was received in full (including annexes) by Nominet on 19 March 2008. Nominet validated the Complaint and sent a copy to the Respondent on 20 March 2008, informing the Respondent that it had until 15 April 2008 to lodge a Response.

3.2     Since no Response was received by the deadline (or at all), the dispute did not proceed to Informal Mediation. On 16 April 2008 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the Nominet UK Dispute Resolution Service ("DRS") Policy ("the Policy").

3.3     Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and 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, Nominet duly appointed me as Expert on 23 April 2008.

4. Outstanding Formal/Procedural Issues (if any)

4.1     Since the Respondent has not submitted a Response, I have checked the Complaint file to determine whether there are any exceptional circumstances which should lead to my taking any action other than proceeding to a decision, pursuant to paragraph 15(b) of the DRS Procedure ("the Procedure"). In particular, I have looked at the methods used to notify the Respondent of the Complaint.

4.2     The details in Nominet's database entry lists the Respondent's address in Queensland, Australia that is set out on the front of this decision. The Administrative Contact is listed as William Vaughan, with an e-mail address of [email protected]. No fax number is given.

4.3     From the Complaint file, it appears that Nominet attempted to notify the Respondent of the Complaint by the following means:

i. by e-mail to [email protected] and to [email protected]; and

ii. by post to the postal address given for the Respondent in Nominet's database entry.

4.4     The e-mail address used, [email protected], contains a typographical error, missing out the 'a' in 'wvaughan'. The same error appears on the front of the Complaint, which may be why Nominet used this e-mail address. Indeed, the Complaint mis-spells Mr Vaughan's name as "Vaughn" throughout, whereas the exhibits that refer to Mr Vaughan always use the spelling that includes the 'a'.

4.5     Paragraph 2(a) of the Procedure permits Nominet to send Complaints by using any of a number of different means, as follows:

2.      Communication

a.    We will send a complaint (see paragraph 3) to the Respondent by using, in our discretion, any of the following means:

i.           sending the complaint by first class post, fax or e-mail to the Respondent at the contact details shown as the registrant or other contacts in our Domain Name register database entry for the Domain Name in dispute;

ii.          sending the complaint in electronic form (including attachments to the extent available in that form) by e-mail to;

A.   postmaster@; or

B.   if the Domain Name resolves to an active web page (other than a generic page which we conclude is maintained by an ISP for parking Domain Names), to any e-mail address shown or e-mail links on that web page so far as this is practicable; or

iii.         sending the complaint to any addresses provided to us by the Complainant under paragraph 3(b)(iii) so far as this is practicable.

b.    Except as set out in paragraph 2(a) above, all written communication to a Party or a Party's representative under the Policy or this Procedure shall be made by fax, first class post or e-mail.

[c.   ....  d. ...]

e.      Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:

i.             if sent by facsimile, on the date transmitted; or

ii.            if sent by first class post, on the second Day after posting; or

iii.          if sent via the Internet, on the date that the communication was transmitted;

iv.          and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.

4.6     Although the Complaint was sent to the Respondent by post to the correct postal address provided by the Respondent, this method of communication to an address in Australia does not seem to be covered by paragraph 2(a)(i) of the Procedure. One would normally assume that "first class post" means first class post within the United Kingdom. This assumption is confirmed by paragraph 2(e)(ii), which deems communications by first class post to have been received on the second working day after posting, which would certainly be inappropriate to assume for even the speediest airmail to Australia.

4.7     However, it does seem to be open to me under paragraph 2(a)(iii) to accept postal communication to an overseas address provided in the Complaint. (It should be noted that the cross-reference in this paragraph to "paragraph 3(b)(iii)" is itself a typographical error, which should say "paragraph 3(c)(iii)".) Furthermore, Nominet also used the method of communication provided for under paragraph 2(a)(ii)(A) - postmaster@.

4.8     I have concluded that there is sufficient evidence that the Complaint was communicated to the Respondent within the terms of the Procedure. Although it would have been preferable if the error in the e-mail address had not been made, I do not intend to ask Nominet to re-send the Complaint by e-mail and start the process again. In the circumstances of this case, it would be particularly pointless to do so, and it would be harsh on the Complainant.

5. The Facts

5.1     Having read the Complaint and its exhibits, visited the website to which the Domain Name resolves, reviewed the file received from Nominet, and checked Nominet's
"3 Cases Respondent Table", I accept the facts set out below.

5.2     The Complainant is part of a group of companies known as Colliers International Property Consultants ("Colliers International"), an affiliation of independent companies with over 267 offices in more than 57 countries and a combined annual turnover of more than US$1.6 billion.

5.3     The Complainant was incorporated on 6 April 2001 in the United Kingdom as a result of the merger in 2000 of two well-known property companies, Conrad Riblat and Colliers Erdman Lewis. "Colliers CRE" is the principal trading name used by Colliers CRE Plc for its property-related services. Colliers CRE Plc is quoted on the Alternative Investment Market of the London Stock Exchange and employs over 850 people with 16 offices throughout the UK.

5.4     The turnover of Colliers CRE Plc has increased significantly over the last five years. The turnover of the company increased from £79,575,000 (approximately $160 million) for the year ending December 2005 to £92,013,000 (approximately $180 million) in 2006. In the second half of the year the company completed a fully subscribed rights issue which raised £14.9 million gross.

5.5     Colliers CRE Plc is one of the top 10 companies in its field in the UK. In July 2006 the "Estates Gazette" ranked Colliers CRE Plc 8th by UK turnover, rising from 13th in 2002.

5.6     The Complainant is the registrant of the domain name collierscre.com and has operated its main website at www.collierscre.com since approximately 2000.

5.7     The Complainant markets its business by reference to the name COLLIERS CRE in a number of ways including advertising in national and trade newspapers and magazines; outdoor campaigns such as advertising on the side of taxi cabs; appearing in Colliers International publications; and producing various research and other publications. The Complainant's activities have also generated extensive press coverage.

5.8     An affiliated company of the Complainant, Colliers International Property Consultants, Inc., owns the following registered trade mark(s): Community trade mark no. 832733 for "COLLIERS" (word only) and Community trade mark no. 832758 "COLLIERS" (word and device), both as of 19 May 1998 in classes 35, 36 and 37 for property related services.

5.9     The Respondent is a company with a contact address in Queensland, Australia. Its business includes the registration of domain names that incorporate minor variants of well-known brand names (see below) and the use of these to generate income from internet advertising and sponsored links.

5.10     The Respondent registered the Domain Name on 19 December 2005. The Domain Name resolves to a website at www.colliercre.co.uk. As of 10 January 2008, there was a website available at the Domain comprising a directory of subject links, the most prominent of which were property-related links which generated lists of property websites competing with the Complainant, as well as links referring to "Colliers", "Colliers Cre", "Colliers international" and "Cre". The domain name was prominently displayed on the homepage of the website, in the phrase "Welcome to colliercre.co.uk", and also appeared in the metatitle which is visible in search engines. This remains the position at the date of this decision.

5.11     The Complainant's solicitor sent a cease and desist letter by recorded delivery to the physical address of the Respondent on 10 January 2008, to which no response was received. On 30 January 2008, the Complainant's solicitor sent a chaser e-mail, reproducing the text of the letter, to the email address, [email protected], which was intended for the Administrative Contact for the Domain Name, William Vaughan. As explained in section 4 above, this e-mail address was incorrect, so I do not rely on this chaser or the lack of response to it in my decision.

5.12     The Respondent owns at least 15 domain names which contain minor typographical variants or combinations of well known brands or trade names, including bangandoulfsen.co.uk, disneychannei.co.uk, northernrocl.co.uk and barclaysvisa.co.uk.

5.13     The administrative and technical contact for two of these domains (multimpa.com and ituns.com) is William Vaughan, located at the same address as the Respondent. William Vaughan has been found to have registered and used domain names in bad faith in the following previous UDRP cases:

Royal Bank of Canada v William Vaughan (WIPO Case No. D2007-1752)

American International Group Inc v Domain Administration Limited c/o William Vaughan (National Arbitration Forum Claim No. FA0711001106369)

5.14     Mr Vaughan is the registrant of the domain name metropolitanmusuem.org in his own name (in conjunction with a company called "smtm investments ltd"), again located at the same address in Australia.

5.15     Mr Vaughan is also listed as the administrative contact for the domain name unitedpostalservices.com, registered by Domain Administration Ltd, using the same address in Springfield, Australia as the Respondent.

5.16     Domain Administration Ltd has been found to have made abusive registrations in the following 11 DRS decisions:

DRS 05400 laithewaites.co.uk

DRS 04437 healthcarecomission.org.uk

DRS 04389 electoralcommision.org.uk

DRS 04415 robertdyass.co.uk

DRS 04344 michalepage.co.uk

DRS 04298 hotwheel.co.uk

DRS 04293 fisherpice.co.uk

DRS 04292 learndirec.co.uk, lerandirect.co.uk

DRS 04245 myt-mobile.co.uk

DRS 04229 ulsterbankanytime.co.uk

DRS 04646 hotelconect.co.uk

6. The Parties' Contentions

Complainant

6.1     The Complainant claims to have Rights by virtue of:

(1) its registered trade marks; and

(2) its extensive trading and marketing activities, by virtue of which the Complainant has acquired substantial reputation and goodwill in the name "Colliers CRE" such that it is recognised by the public as distinctive of the Complainant's property services business.

6.2     The Complainant states that the name "Colliers CRE" is not wholly descriptive of the Complainant's business, but consists of a distinctive and non-obvious combination of words and in any event has become distinctive by virtue of the Complainant's extensive use of it.

6.3     The Complainant points out that the Domain Name differs from "Colliers CRE" only by removal of the letter "s" thus creating a misspelling of the Complainant's trading name, "Colliers CRE". The trade mark is therefore similar to the Domain.

6.4     In relation to the question of whether the Domain Name is an Abusive Registration, the Complainant has conveniently set out its contentions by reference to specified provisions of the Policy. For reasons which will be clear from section 7, I do not think it is worth spending time summarising these and instead simply reproduce them below, with grateful thanks to the Complainant's representatives for the clarity of the submissions:

C. ABUSIVE REGISTRATION

23. The Complainant has no association with the Respondent and has never authorised or licensed the Respondent to use its trade marks.

24. The Complainant further relies on the following:

Disruption – 3aiC

25. The Respondent registered the Domain for the purpose of unfairly disrupting the business of the Complainant by attracting its business and diverting it, inter alia, to affiliate websites competing with the Complainant. See, eg, DRS 1919 (allianceandleicster.co.uk)

26. As explained below, the Respondent was clearly aware of the Complainant and its business when it registered the Domain.

27. The Respondent has also engaged in a pattern of similar behaviour – see below.

Confusion – 3aii

28. The website at the Domain is essentially a scheme adopted by the Respondent to confuse, attract and profit from internet users who mistype the Complainant's name or are searching for the Complainant's business in search engines, web browsers and otherwise on the internet. This has not been denied by the Respondent.

29. It is clear from the following that the Respondent had the Complainant and its business in mind when registering and using the Domain:

a. the Respondent has not denied this assertion by the Complainant in correspondence;

b. the Domain is explicable only as a deliberate misspelling of the Complainant's trade mark;

c. the purpose in registering / using a Domain comprising the words COLLIER CRE in relation to property related services can have only have been to target the Complainant's business;

d. the website at the Domain includes a number of links which comprise variations of the Complainant's trade mark / ;

e. the Complainant is internationally well-known as a major player in the property industry;

30. The use of the Domain which is a misspelling of the Complainant's trade mark is intended by the Respondent to create a likelihood of confusion in the minds of the public as to an association between the Respondent and the Complainant.

31. Furthermore, the name of the Domain appears prominently on the top of the home page, thereby adding to likely confusion on the part of internet users. (See website printout at exhibit 12). The Complainant's trade mark is prominently displayed amongst the subjects listed on the home page, and the domain appears in the metatitle which is visible in search engines.

32. The likelihood of confusion is not diminished by the possibility that at some point users arriving at the Respondent's site will realize that they have reached the wrong destination. It is well established under the DRS that it is abusive for the Respondent to intentionally attract the Complainant's traffic by creating "initial interest confusion" and thereby achieve "a business opportunity that in most cases he would not otherwise have had". (See Appeal Panel decision in DRS 389. See also, eg, DRS 2282 and DRS 3044.)

33. As indicated above, in using the Domain the Respondent intended to confuse the public into believing that the Domain was connected with the Complainant. Such use should suffice for the purposes of paragraph 3aii, whether or not there is evidence of actual confusion. In any event, such intention is a factor evidencing an abusive registration independently of 3aii, as has been held in many DRS cases. See, eg, the Appeal Panel decisions in DRS 2802 (ruggedcomlco.uk) and 3027 (epson-ink-ink.co.uk)

34. It is obvious that the Respondent was intent upon commercial gain as it provides commercial services at the website at the Domain by means of affiliate / sponsored links and advertising. Indeed it is difficult to conceive that the Respondent would engage in a scheme such as this for a non commercial purpose. It is evident that at least one of the Respondent's purposes was to attract and profit from internet users seeking the Complainant's website.

35. The Respondent has also engaged in a pattern of similar behaviour – see below.

Pattern – 3aiii

36. William Vaughn and/or Domain Administration Ltd (both closely connected with the Respondent) have been found to have acted in bad faith in at least 12 previous DRS/UDRP complaints concerning domain names reflecting other well-known trade marks. See the cases referred to above.

37. The Respondent also owns or owned numerous other domain names reflecting well-known trade marks as explained above and in which the Respondent has no apparent rights.

38. The Domain is part of this pattern because it comprises a misspelling of the Complainant's trademark and trading name as in the case of many other domain names owned by the Respondent, eg ituns.com and multimpa.com.

Other factors

39. The Complainant also relies on the fact that the Respondent has not responded to, let alone denied, the assertions of abusive registration in the pre-action communications by the Complainant.

Respondent

The Respondent has not filed a response.

7. Discussion and Findings:

General

7.1     Paragraph 2 of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that:

i. it 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 (as defined in paragraph 1 of the Policy).

7.2     Where there is no Response to a Complaint, in most cases the Complainant merely needs to make out a prima facie case in order to succeed.

Complainant's Rights

7.3     Under paragraph 1 of the Policy, "Rights includes, but is not limited to, rights enforceable under English law". Previous cases have established that this broad definition extends to registered trade mark rights and unregistered rights in names and marks, such as rights in passing off in the UK and similar rights in jurisdictions elsewhere.

7.4     The Complainant has established that it has reputation and goodwill in respect of the name "Colliers CRE" through its extensive use in trade in the property services arena, which would be sufficient to found a passing off action in the United Kingdom.

7.5     So far as the registered trade marks for COLLIERS are concerned, the Complainant itself is not the registered proprietor. The registrations belong to a United States corporation that appears to be related to the Complainant, which presumably licenses the Complainant to use the marks in the Colliers CRE business. However, I do not need to decide whether or not this is the case since the unregistered rights in relation to "Colliers CRE" are sufficient as the basis for the Complainant's claim to have Rights.

7.6     The name "Colliers CRE", in which the Complainant has Rights, is very similar to the Domain Name. Ignoring the suffix .co.uk and the space between the two words (which it is appropriate to do since both would be ignored by internet users), the only difference is the 's' at the end of "Colliers". The first limb of the test is therefore satisfied.

Abusive Registration

7.7     Paragraph 1 of the 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."

7.8     I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.

7.9     Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are expressly brought into play by the Complainant are as follows:

"3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

(A) …(B)…; 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; ..."

7.10     In relation to the factors under paragraphs 3(a)(i)(C) and 3(a)(ii), I accept the Complainant's submissions in their entirety and I do not see the point in re-formulating them here. The evidence and submissions supporting these factors point strongly towards the Domain Name being an Abusive Registration.

7.11     Turning to paragraph 3(a)(iii), the Whois printouts presented by the Complainant show that the Respondent itself is the registrant for fifteen .co.uk domain names which bear remarkable similarity to well-known brand or trade names (see paragraph 5.12 above), in which it is hard to imagine that the Respondent can have any rights or legitimate interest. They were registered by the Respondent over a period between September 2004 and August 2007, with some clusters of registrations on particular days, including two on 19 December 2005, the date the Domain Name was registered. As submitted by the Complainant, the Domain Name is part of the pattern, and I take this as further strong evidence that the Domain Name is an Abusive Registration.

7.12     Although not strictly falling under paragraph 3(a)(iii), which only refers to domain names of which the Respondent is registrant, I also take into account the fact that the Respondent uses Michael Vaughan as its administrative contact, and that Michael Vaughan has himself registered domain names that he has been required to transfer to complainants under the UDRP.

7.13     Michael Vaughan is also the common link to another company, Domain Administration Ltd, that has been required to transfer domain names to at least eleven different complainants under the DRS, all since January 2007. If Domain Administration Ltd were the respondent in this case, there would have been a presumption of Abusive Registration pursuant to paragraph 3(c) of the Policy, which would not have been rebutted in the absence of a Response.

7.14     I have considered whether there are any factors in the Respondent's favour which demonstrate that the Domain Name is not an Abusive Registration, some examples of which are given in paragraph 4 of the Policy. The Respondent has not submitted a Response, nor did he reply to the original letter of complaint from the Complainant's solicitor, so I have no explanation from his side as to any justification for adopting the Domain Name. However, there is nothing in the circumstances of which I am aware which assists the Respondent under paragraph 4 or otherwise.

7.15     In all the circumstances, I cannot think of any justification for the Respondent's registration or use of the Domain Name and I conclude that both the registration and use of the Domain Name took unfair advantage of and were unfairly detrimental to the Complainant's Rights.

7.16     I cannot tell from the file whether Michael Vaughan was the administrative contact for all or any of the domain names which Domain Administration Ltd was required to transfer in the earlier DRS proceedings referred to. If he was the administrative contact for two or more of them, then I recommend that his name be added to Nominet's "3 Cases Respondent Table" which lists "cases in which the respondent is or may be a party found to have made an Abusive Registration in 3 or more DRS cases". Serious consideration should also be given to whether the Respondent should be included in the table, even though this is the first DRS decision against it. The links between the Respondent, Mr Vaughan and Domain Administration Ltd are such that it should not be necessary to wait until Mr Vaughan or the Respondent have been found guilty of filing Abusive Registrations twice more before a presumption of abuse applies to the next case brought by an aggrieved brand owner.

8. Decision

I find that the Complainant has Rights in respect of a name, "Colliers CRE", which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Domain Name colliercre.co.uk should be transferred to the Complainant. I have also made a recommendation designed to assist later complainants against the Respondent in the last paragraph of section 7 above.

Anna Carboni

7 May 2008