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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Catherine Cookson Charitable Trust v Domain Names Direct [2008] DRS 5840 (15 August 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5840.html Cite as: [2008] DRS 5840 |
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The Catherine Cookson Charitable Trust –v- Domain Names Direct
Nominet UK Dispute Resolution Service
DRS 05840
The Catherine Cookson Charitable Trust –v- Domain Names Direct
Decision of Independent Expert
Complainant: The Catherine Cookson Charitable Trust
c/o Thomas Magnay & Co
Gateshead
Respondent: Domain Names Direct
Ireland
catherinecookson.co.uk ("the Domain Name")
The Complaint was received by Nominet on 27 June 2008. Nominet validated the Complaint and sent a copy to the Respondent.
No Response was received by Nominet.
On 29 July 2008 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to the Nominet UK Dispute Resolution Service Policy ("the Policy").
Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and duly appointed the undersigned as the Expert with effect from 5 August 2008.
Complainant:
The Complainant's submissions can be summarised as follows:
1. The Complainant has rights in trade marks/names which are identical or similar to the Domain Name:
(1) The Complainant is a UK registered charity. "Catherine Cookson" is the personal name of the late author Dame Catherine Cookson who established the Complainant with her professional advisers in 1977 to use, for charitable purposes, the proceeds arising from her literary works.
(2) Catherine Cookson lived from 1906 to 1998 and wrote 99 novels under the name Catherine Cookson during her lifetime. Total worldwide sales of those works now exceed 100 million. They have been translated into more than 20 languages and sold in 26 countries. 18 of the novels have been adapted into television mini series in the United Kingdom and between 1956 and 1988 there were 12 further adaptations of the author's work for stage, film and television in the UK.
(3) On the death of the author in 1998, the copyright in her literary works passed under her will to the Complainant. The Complainant has continued to trade under the name Catherine Cookson since that time. The Complainant has commissioned sequels to Catherine Cookson's original works from ghost writers. Three of these books have been published so far, each selling approximately 12,000 copies. Further, part works of Catherine Cookson's original novels have been sold through a deal with the specialist publisher, Planet 3 which resulted in sales of in excess of £2.5 million. In addition, following the success of the three sequels, Catherine Cookson's original publisher, Transworld Publishing, has re-jacketed and reissued twelve of the original works.
(4) The Complaint exhibits samples of promotional materials produced by Catherine Cookson's publishers between 1996 and 2001. The Complainant has derived income arising solely from sales of books and merchandise under the Catherine Cookson name for the period 2000 to 2006 of more than £1 million per year. During 2006-2007 Catherine Cookson was 56th in the list of most borrowed authors from British libraries. For the period 1990 to 2006 Catherine Cookson's novels appear in the top 20 most borrowed authors list for adult fiction and for the 1990 to 2002 Catherine Cookson was the author most borrowed from British libraries. In 1998, Catherine Cookson's was the best selling author in paperback in the UK.
(5) The Complainant owns registered Community trade number 5832076 for the word mark CATHERINE COOKSON.
2. The Domain Name is an Abusive Registration in the hands of the Respondent:
(1) There is no pre-existing relationship between the Complainant and the Respondent. The Complainant's representative wrote to the Respondent on 5 June 2008 requesting transfer of the Domain Name to the Complainant and received no response. There has been no further communication between the Complainant and the Respondent.
(2) The Domain Name is abusive because it was registered as part of a pattern of registrations undertaken by the Respondent where the Respondent has no apparent rights in the domain names in question. The Complaint exhibits:
(a) a screen print of a Google search for the disputed Domain Name which shows the domain name casinosdirect.co.uk. as the top ranked result.
(b) a screen print of the www.casinosdirect website which includes a list of domain names including catherinecookson.co.uk, barbaracartland.co.uk, maddona.co.uk, franksinatra.co.uk, chubbybrown.co.uk, ruperthebear.co.uk, returnofthejedi.co.uk, venuswilliams.co.uk, serenawilliams.co.uk, anna-kournikova.co.uk all of which are owned by the Respondent as evidenced by WHOIS searches (which are also exhibited).
(3) The Respondent does not to the Complainant's knowledge have any rights in respect of any of the famous names incorporated into these domain names and its registration of the domain names clearly shows a pattern of registrations of such names of which the registration of the disputed domain name is a part.
(4) It is the Complainant's belief that the Respondent is taking unfair advantage of the reputation the Complainant has acquired in the name Catherine Cookson by using the Domain Name simply to attract traffic to the casinosdirect.co.uk website, which contains pay per click advertising, to generate income for the Respondent.
(5) The Claimant and its licensees are involved in the sale of books and other merchandise under the name Catherine Cookson. Due to the high profile of .co.uk domain names and the exact reproduction of the name Catherine Cookson in the Domain Name potential customers are likely to believe that www.catherinecookson.co.uk is the official website for Catherine Cookson goods and damage will be done to the Complainant's reputation and sales may be lost since the Domain Name does not point to any website connected with Catherine Cookson. Further the apparent link between the website connected with the Domain Name and the provision of on-line gambling services is strongly at odds with the image of the late author Catherine Cookson and the objectives of the Complainant charity and is damaging to the reputation of the Catherine Cookson name.
Respondent:
No Response has been filed by the Respondent.
The Nominet Records show that the Domain Name was registered on 1 June 1999.
Based on the Complainant's submissions and a review of the materials annexed to the Complaint, set out below are the main facts which I have accepted as being true in reaching a decision in this case:
(1) The Complainant is a charitable body set up by the late Dame Catherine Cookson to use the revenue from her literary works for charitable purposes.
(2) Catherine Cookson is a famous name in the literary field, and the rights in that name belong to the Complainant.
(3) The Complainant also owns a registered Community trade mark for CATHERINE COOKSON.
(4) If one enters the Domain Name in a Google search, the top-ranked result is www.casinsosdirect.co.uk.
(5) The home page for www.casinsosdirect.co.uk lists various domain names, all of which are owned by the Respondent, including several domain names consisting of the names of famous people, such as barbaracartland.co.uk, franksinatra.co.uk, venuswilliams.co.uk and anna-kournikova.co.uk. The home page also includes pay-per-click advertising.
General
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).
Complainant's Rights
Catherine Cookson is a famous name, to which legally protectable goodwill attaches. In light of this, and the fact that the Complainant also owns a registered trade mark for CATHERINE COOKSON, it is clear that the Complainant has rights in the "Catherine Cookson" name. Disregarding the generic .co.uk suffix, the Domain Name is identical to the Catherine Cookson name.
I therefore find that the first limb of paragraph 2 of the Policy is satisfied.
Abusive Registration
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."
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. The factors under paragraph 3a on which the Complainant relies in this case are as follows:
"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;"
The Complainant relies first on paragraph 3aiii. The Respondent has registered a significant number of .co.uk domain names and several of these consist of famous names followed by the .co.uk suffix. The Respondent has no apparent rights in such marks and has not availed himself of the opportunity to make any submissions to the contrary. Taking all of this into account, I find that the Respondent is engaged in a pattern of registrations of the nature described under paragraph 3aiii of the Policy, and that the Domain Name is part of that pattern.
Paragraph 3aii of the Policy (set out above) refers to actual confusion having occurred, namely people or businesses having believed that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant. Nevertheless paragraph 3 is a non-exhaustive list of factors. It has been held in previous Nominet decisions that a likelihood of such confusion arising in the future is also relevant, and I agree with this.
As things stand, there is no active website at www.catherinecookson.co.uk. The Complainant refers to what happens if one searches for the Domain Name (i.e. catherinecookson.co.uk) on Google, namely that the top-ranked result is www.casinosdirect.co.uk. However, the Complainant is not suggesting that a Google search for just "Catherine Cookson" produces such search results, and in fact it does not.
In my view, someone looking for a Catherine Cookson website using Google is likely to use the search term "Catherine Cookson" and unlikely to use the search term "catherinecookson.co.uk". In other words, it is unlikely that someone with an interest in Catherine Cookson will end up at the www.casinosdirect.co.uk website. In my opinion, it is therefore unlikely, as things stand, that the sort of confusion and harm relating to the www.casinosdirect.co.uk website, which the Complainant submits will occur, will in fact happen to any material extent.
On balance, I am therefore not willing to find that paragraph 3aii of the Policy applies.
Nevertheless, I have found that paragraph 3aiii of the Policy does apply and I therefore find that the Domain Name is an Abusive Registration.
Having found that the Complainant has rights in respect a of 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 catherinecookson.co.uk be transferred to the Complainant.
Jason Rawkins 15 August 2008