Trader Publishing Ltd v Webster [2008] DRS 6161 (1 October 2008)

[ Home ] [ Databases ] [ World Law ] [ Multidatabase Search ] [ Help ] [ Feedback ] [ DONATE ] Nominet UK Dispute Resolution Service You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Trader Publishing Ltd v Webster [2008] DRS 6161 (1 October 2008) URL: https://www.bailii.org/uk/cases/DRS/2008/6161.html Cite as: [2008] DRS 6161 [ New search ] [ Printable RTF version ] [ Help ] DISPUTE RESOLUTION SERVICE DRS 6161 Decision of Independent Expert Trader Publishing Ltd and Owen Webster The Parties: Complainant : Trader Publishing Limited Address: GB Complainant Representative: Sarah Williamson GB Respondent : Owen Webster Country: Lebanon The Domain Name(s): autotraderni.co.uk Procedural History: This complaint was received on 18 th August. It was validated by Nominet and notified to Respondent on 19 th August 2008. No response having been received within the time specified in the DRS Procedure, Complainant was invited to apply for a summary or full expert decision on 11 September 2008. Complainant elected to apply for a full expert decision in this matter and notified Nominet to this effect on 16 September. After confirming that he was independent of the Parties and knew of no reason why he could not accept appointment as Expert, the undersigned, Peter Davies was appointed as Expert on 16 September, and the appointment confirmed on 17 September 2008. There are no outstanding procedural matters. Factual Background Complainant is the publisher of "Auto Trader" magazine, launched in 1977. It is registrant of a number of domain names incorporating the mark "autotrader" including autotrader.co.uk, auto-trader.co.uk, autotradermagazine.co.uk. and niautotrader.co.uk which links to its Northern Ireland Auto Trader website. Domain Name was registered by Respondent on 23 March 2006 Parties' Contentions Complainant Complainant is the owner of a well-known motoring publication "Auto Trader" which was launched in 1977. The total average net circulation per issue was 251,252 during the period 1 January 2007 to 31 December 2007. Complainant has acquired common law rights and substantial goodwill in the Auto Trader name in the United Kingdom. The magazine's associated website www.autotrader.co.uk was launched in 1996 and has over 400,000 vehicles listed at any one time (source – ABCe, March 2008). It has a 38% share of the automotive classified market (Hitwise, August 2007). Complainant has a Northern Ireland edition of the Auto Trader magazine, launched in approximately 1995, as well as a Northern Ireland Auto Trader website. Complainant is the owner of the following UK and Community trade marks which are similar to the Domain Name: AUTO TRADER, UK Trade Mark number 2019603, registered 18-10-1996 Auto Trader, UK Trade Mark number 2327224, registered 13-05-2005 Auto Trader, CTM number 002410298, registered 30-08-2006 AUTO TRADER, CTM number 002414795, registered 26-06-2006 AUTO TRADER, CTM number 002880821, registered 11-04-2006 Auto Trader.co.uk, CTM number 006645121, filed 25-01-2008 Although the Domain Name does not exactly match Complainant's trade marks, "ni" is an element of the Domain Name which is merely descriptive and stands for Northern Ireland. The fact that the website located at www.autotraderni.co.uk contains a specific reference to Auto Trader Northern Ireland supports this contention. Complainant's assertion follows the reasoning in decision DRS 4596 where the expert accepted that the prefix "Coventry" in the domain name "coventryricoharena.co.uk" was merely descriptive, and consequently that the owners of the trademark "RICOH ARENA" had established rights in a name or mark which was similar to the domain name in dispute. Complainant is the registrant of a number of domain names incorporating the mark "autotrader" including autotrader.co.uk, auto-trader.co.uk, autotradermagazine.co.uk. and niautotrader.co.uk which links to its Northern Ireland Auto Trader website. The Domain Name in the hands of the Respondent is an abusive registration. Respondent has been engaged in a pattern of registrations as registrant of domain names which correspond to well-known names or trade marks in which he has no apparent rights. A WHOIS search of the Domain Name does not reveal an individual name on the register and shows the Registrant as simply "LH", a UK individual with the address 113-5872 Hamra, Beirut, 961 LB. Complainant believes the registrant of the Domain Name to be Owen Webster, who has been the respondent in the following previous DRS cases: DRS 5752 scottishdailymail.co.uk; DRS 5213 monarchholidays.co.uk; DRS 4952 groupamainsurance.co.uk; DRS 4200 nobelmarine.co.uk; DRS 3967 newburybuildingsociety.co.uk; DRS 3811 nationalcountiesbuildingsociety.co.uk. Two of the above decisions (DRS 3811 and DRS 4952) list the same address as the Registrant of the Domain Name in this dispute (ie.113-5872 Hamra, Beirut, 961 LB), and the named Respondent in both of these cases was Owen Webster. Furthermore, the initials "LH" appear at the start of Owen Webster's address in DRS decision 3811. Complainant contends that the Registrant of the Domain Name is Owen Webster and that Owen Webster is the Respondent in this case. In six out of the seven decisions listed above, findings of abusive registrations have been made against Owen Webster. In the remaining decision, the Expert held that the complainant had not proved that it had rights in the domain name in question. Under paragraph 3 of the DRS Policy, there is a presumption of abusive registration where Respondent has been found to have made an abusive registration in three or more DRS cases in the two years before the complaint was filed. There have been at least six successful DRS cases against Owen Webster within the past two years and Owen Webster is listed in Nominet's "3 Cases Respondent Table". Respondent has acquired the Domain Name for the purpose of unfairly disrupting Complainant's business. Respondent is using the Domain Name as a parking page for links to other websites, including websites of competitors of Complainant. This has the effect of moving customers away from Complainant's website and towards other people's websites. There is also a link on the website to autotradernorthernireland but this link leads to a webpage of further website links. Complainant has a publication in Northern Ireland and this link will have the effect of directing people away from Complainant's services, or confusing them into believing that there is a connection between the Respondent's website and Complainant's publication which there is not. Whilst the confusion might only be initial interest confusion, Respondent still makes a commercial gain by initially attracting users to its website and then a further commercial gain by directing users to other businesses which compete with Complainant's business. Respondent is using the Domain Name for its own commercial gain. "Auto Trader" is a well-known brand and registered trademark of Complainant and it is unlikely that the Registrant registered the Domain Name independently of any knowledge of the trademark. Respondent's past history suggests that this registration was in bad faith. Respondent had Complainant's business in mind when registering the Domain Name, evidenced by the fact that the website at the Domain Name includes references to Autotradernorthernireland. Respondent is making a financial gain from users visiting the website of the Domain Name and clicking on the links to other websites. There is no reason why Respondent would host such a website, other than for financial gain. It is likely that users (and particularly users in Northern Ireland) will visit the website in error, as the Domain Name contains Complainant's trademark "Auto Trader". Respondent has acquired the Domain Name as a blocking registration against a name or mark in which the Complainant has Rights. Complainant sent a cease and desist letter to Respondent in September 2007 to advise the Respondent that they consider the Domain Name to infringe their trademark rights, but has received no response. A subsequent letter sent anonymously on Complainant's behalf in March 2008 with a view to buying the Domain Name has similarly received no response. This has had the effect of blocking Complainant from acquiring a Domain Name in which Complainant has Rights. Respondent No response has been received. Discussions and Findings Paragraph 2 a. of the Procedure requires Complainant to show 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. As to the first of these, Complainant can point to significant goodwill in the title of its magazine, to its registrations of several related domain names and to UK and Community trademark registrations for marks identical or similar to the Domain Name. I have no difficulty in accepting that the suffix letters "ni" are descriptive, as Complainant suggests, of Northern Ireland and do not serve to differentiate the Domain Name from names or marks in which Complainant has rights. As to the second part of the complaint, Complainant makes a number of assertions in support of a claim that the registration is abusive in the hands of Respondent: it is as a blocking registration against a name or mark in which Complainant has rights, (section 3 a i B of the Policy), it is a registration made for the purpose of unfairly disrupting the business of the Complainant, (section 3 a i C of the Policy), it is being used in a way which has confused or is likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant, (section 3 a ii of the Policy), it is part of 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, (section 3 a iii of the Policy) and there is a presumption of Abusive Registration (under section 3 c of the Policy) if the Complainant proves that Respondent has been found to have made an Abusive Registration in three or more DRS cases in the two years before the Complaint was filed. I am satisfied that there is sufficient evidence to support the first three of these arguments on the balance of probabilities. Failure or refusal to respond to cease and desist letters or offers to buy the Domain Name support an allegation of blocking on the balance of probability test. The website to which the Domain Name relates shows convincingly that unfair disruption to Complainant's business and likelihood of confusion on the part of potential or actual customers are likely consequences of this registration in the hands of Respondent. Other aspects of Complainant's case turn upon the identity of Respondent. Points four and five above assume, in the absence of a full name in the Whois entry for the Domain Name, that Respondent is the individual named by Complainant. I am satisfied that the evidence submitted by Complainant as to the identity of Respondent supports this assumption and that Nominet has fulfilled its obligations under the Procedure to notify Respondent accordingly. As a finding of an abusive registration has been made on other grounds, I do not intend to address further the arguments put forward under sections 3 a iii and 3c of the Policy. Decision I find that Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Nam; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I direct that the Domain Name be transferred accordingly. Signed Peter Davies Dated 01 October 2008 BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII URL: https://www.bailii.org/uk/cases/DRS/2008/6161.html