Halifax plc v Burgess [2005] DRS 02686 (31 July 2005)

[ Home ] [ Databases ] [ World Law ] [ Multidatabase Search ] [ Help ] [ Feedback ] [ DONATE ] Nominet UK Dispute Resolution Service You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Halifax plc v Burgess [2005] DRS 02686 (31 July 2005) URL: https://www.bailii.org/uk/cases/DRS/2005/02686.html Cite as: [2005] DRS 02686, [2005] DRS 2686 [ New search ] [ Printable RTF version ] [ Help ] Halifax plc v Burgess [2005] DRS 02686 (31 July 2005) Halifax plc = v = Ms K Burgess Nominet UK Dispute Resolution Service DRS 02686 Decision of Independent Expert Dated this 31 day of July 2005 Complainant's Details Complainant: Halifax plc Country: GB Contact Details Contact: Mr Scott Greenwood Country: GB Reference: CL/6/LS-RD/SG Respondent's Details Respondent: K Burgess Country: Canada Disputed Domain Name halifaxsharedealing.co.uk This domain name is referred to below as the "Domain Name". Procedural Background The Complaint was lodged with Nominet on 6 June 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on 7 June 2005. In this correspondence Nominet informed the Respondent that it had 15 working days within which to lodge a Response. The Respondent failed to respond. Nominet informed the Complainant that mediation was not possible in these circumstances. On 12 July 2005 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 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. Formal/procedural issues Under Paragraph 5a of the Dispute Resolution Service Procedure ("the Procedure") the Respondent was required to submit a Response to the Complaint to Nominet by 29 June 2005. The Respondent has failed to do so. Paragraph 15b of the Procedure provides as follows: If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint. It is the view of the Expert that there are no exceptional circumstances relevant to this matter. The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties' submissions (which consist of the Complaint and supporting documents) and the Policy and Procedure. The facts The Complainant The Complainant is a well known banking company. It was incorporated on 31 March 1989 with company number 02367076. The Complainant is the proprietor of the following registered trade marks: UK trade mark in the name "HALIFAX SHAREDEALING SERVICE" under number 1534846 for financial and insurance services within class 36, which was registered on 23 September 1994, A number of registered UK trade marks in the name "HALIFAX" including trade mark 1289571 registered on 4 March 1994 and 1514707 registered on 20 December 1996, both for financial and insurance services within class 36. Community Trade Mark in the name "HALIFAX" under number E42788 in Classes 9 (including computer and computer software for conducting financial transactions and making financial enquiries) and 36 (financial and insurance services)which was registered on 19 October 1998. Copies of printouts of the above trade marks are exhibited to the Complaint at Exhibits 1- 4 respectively. Although not directly named as a Complainant, Halifax Share Dealing Limited "(HSDL)" is a relevant sister company. HSDL, was formerly a subsidiary of the Complainant, however following the formation of the HBOS group of companies, the Complainant and HSDL are now subsidiaries of HBOS plc. The Complaint does not record the date for the formation of the HSBOS group but this information is nor relevant to the determination of the Complaint. HSDL is registered at Companies House with company number 03195646 and was incorporated on May 8th, 1996. A copy printout from the Companies House website is exhibited to the Complaint as Exhibit 5. The Complaint states that HSDL has done business under the name Halifax Share Dealing since its incorporation. The Complaint records that the records of documentation printed since 2001 show over 1.5 million items of literature produced using the Halifax Share Dealing name at a cost of £282,075.75. Copies of relevant documentation are exhibited as Exhibit 6 to the Complaint and include marketing literature for the share dealing service. It is notable that the literature makes prominent us of the HALIFAX word mark as well as referring to the share dealing service. The Respondent A Nominet "WHOIS" search shows that the Respondent registered the Domain Name on 30 September 2004. The Complainant asserts that the Respondent is using the Domain Name for a website which directs customer traffic to competitors of the Complainant. Printouts of the web page that appears when users type in the Domain Name are exhibited at Exhibit 7 to the Complaint. The printouts are dated 26 May 2005 and show the Respondent's home page and the pages reached when the links for "Online Banking", "Deal" and "Stock Market" are followed. The Expert notes from the printouts that these pages contain links to other banking and investment organisations such as HSBC, the Co-operative Bank and ING Direct Savings. A printout of the Complainant's own home page at www.halifax.co.uk is exhibited at Exhibit 8 of the Complaint. The Complainant speculates that the Respondent may have been earning money from linking to the other sites through affiliate programs. It explains that such affiliate programs work by the company to whom the link refers paying the affiliate, i.e. the owner of a third party site, for each referral or sale that it receives from a customer directed from the affiliate's website. The Complainant puts forward no evidence in support of this assertion. The Parties' Contentions Complainant The Complainant asserts that the Domain Name is an Abusive Registration (as defined in the Policy- see below) on the following grounds: The Domain Name is identical or similar to the Complainant's trade marks and its rights in the trade marks predate the Respondent's registration of the Domain Name. The Respondent has no right or legitimate interest in the Domain Name. There is no legitimate or fair use of the Domain Name that could be made by the Respondent without confusing and misleading users or abusing the Complainant's trade mark rights. The Respondent has registered the Domain Name as a blocking registration against a name or mark in which the Complainant has Rights. The Respondent has no legitimate connection with the HALIFAX or HALIFAX SHAREDEALING names and is not making a legitimate or fair use of the Domain Name. On the other hand the Complainant would legitimately desire to register the Domain Name and this would have been obvious to the Respondent at the time of registration due to the Complainant's long standing goodwill and reputation in the names HALIFAX and HALIFAX SHAREDEALING. The Complainant also asserts that the Respondent is using the Complainant's trade mark without authority to direct customer traffic to direct competitors of the Complainant. There is no evidence of any confusion or loss of business. Respondent The Respondent has made no submissions. Discussion and findings Clause 2 of the Policy provides that a Complainant must prove 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 onus of proving the above is borne by the Complainant who must prove this on the balance of probabilities (Clause 2b of the Policy). In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as she considers appropriate (paragraph 15c of the Procedure). The Expert has not been made aware of any exceptional circumstances. Rights The term "Rights" is defined by the Policy to include, but not be limited to, rights enforceable under English law. The Complainant's trade mark registration for the word mark HALIFAX SHAREDEALING SERVICE (UK registration 1534846) confers rights which are enforceable under English law. Similarly its trade marks registrations for the mark HALIFAX (UK registrations 1289571 and 1514707 and CTM registration E42788) confer rights enforceable under English law. Clearly none of the marks are identical to the Domain Name. The differences being: the extra word "service" in registration 1534846 which does not appear in the Domain Name and the fact that the trade marks consist of 3 separate words (Halifax Sharedealing Service) whereas the Domain Name, as one would expect, consists of a single word, and the omission of "sharedealing" in registrations 1289571, 1514707 and E42788 which all consist simply of the word "Halifax". It is the view of the Expert that under the Policy the omission of the word "service" in the Domain Name is not likely to be significant for the average UK consumer for financial investment services. The appearance of the word is superfluous in registration 1534846, the service element being already implied by the words "Halifax Sharedealing". The Expert therefore finds that the Domain Name is similar to the Complainant's HALIFAX SHARDEALING SERVICE registration for the purpose of the Policy. The Expert also finds that the Domain Name is similar to the Complainant's HALIFAX registrations. The marketing literature exhibited with the Complaint demonstrates that the mark HALIFAX has been used as a discrete entity in relation to the Complainant's share dealing service. Consequently the addition of the word "sharedealing" to the Domain Name would do nothing to differentiate the Domain Name from the HALIFAX brand in the eyes of the average UK customer for investment services. The Complainant has therefore demonstrated that it has rights in the Halifax Share Dealing mark and that its trade mark registrations are 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 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. Registration or Acquisition Clause 3 of the Policy provides a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration. More generally under clause 1 of the Policy the Expert must ask whether the registration of the Domain Name took unfair advantage of or was unfairly detrimental to the Complainant's Rights. The Complainant relies on Ground (B) of the non exhaustive list of factors. Ground B provides that there are circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights (italics for emphasis). In support of this submission the Complainant states that it "would legitimately desire to register the Domain Name and this would have been obvious to the Respondent at the time of registration due to the Complainant's long standing goodwill and reputation in the names HALIFAX and HALIFAX SHAREDEALING". The initial consideration for the Expert is whether the Complainant enjoyed Rights on 30 September 2004 (the date on which the Domain Name was registered). As noted above, the trade mark registrations in which the Complainant has Rights were all registered before this date. The Rights accordingly predate the registration of the Domain Name. The next question is whether at the time of its registration the Domain Name took unfair advantage of or was unfairly detrimental to the Complainant's Rights. There is no direct evidence before the Expert as to the Respondent's motivation for registering the Domain Name nor is there evidence of any approaches by the Respondent to transfer the Domain Name. In the absence of such evidence the Expert is not prepared to infer a finding that the primary intention of the Respondent at the time when the Domain Name was registered was to take unfair advantage of or cause detriment to the Complainant's Rights whether by securing a blocking registration or for any other improper motive. The Complainant has not shown on the balance of probabilities that the registration per se of the Domain Name was abusive. Use The next consideration is whether the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. The Policy includes the following in its non exhaustive list of factors that might demonstrate Abusive Use at clause 3(a) (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. This is a non exhaustive example. The overall question is whether the Domain name is used in a manner taking unfair advantage or detrimental to the Complainant's Rights. The Domain Name has been used by the Respondent. It operates a website at www.halifaxsharedealing.co.uk . The Complaint asserts that "the Respondent is using the Complainant's trade mark without authority to direct customer traffic to direct competitors of the Complainant". The Expert finds that customers familiar with the Complainant's services would be likely to type in the Domain Name in the mistaken expectation that it would give access to the Complainant's website. To this extent the Domain Name is confusing. The printout for the Respondent's website itself shows little similarity to the Complainant's own home page and in fact contains no references to the Complainant. In the absence of any evidence of actual confusion the Expert finds that the customer who visits the Respondent's website would not remain under the impression that the Respondent's website is connected with the Complainant. However causing confusion is not the only way in which the use of a Domain Name can be abusive. The Respondent's home page contains links to financial services providers, some of whom are competitors of the Complainant. The Expert finds that these links would be likely on the balance of probabilities to encourage customers seeking information about share dealing services to be redirected to the services of competitors of the Complainant. The initial interest in the site having been generated by the Complainant's brand, the website could easily result in a loss of business for the Complainant. The Expert finds that this potential redirection of business takes unfair advantage of the Complainant's Rights. This is the case whether or not the Respondent is involved in an affiliate program arrangement. For the sake of completeness the Expert makes no finding on whether an affiliate program is in existence. An unsupported assertion by the Complainant of the possible existence of an affiliate program does not discharge the Complaint's burden of proof in this regard. However, as stated above, the Expert's findings do not turn on whether affiliate programs are in operation. The Expert is satisfied on the balance of probabilities that the Respondent's use of the Domain Name is taking advantage of or causing unfair detriment to the Complainant's Rights. The use is accordingly abusive. Decision The Expert finds that the Complainant has proved on the balance of probabilities that the two elements in paragraph 2 of the Policy are present, namely that there are 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 that the Complaint succeeds and directs that the Domain Name be transferred to the Complainant. Sallie Spilsbury 31 July 2005 BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII URL: https://www.bailii.org/uk/cases/DRS/2005/02686.html