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Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Marks & Spencer Plc v Sup [2005] DRS 02719 (9 August 2005)
URL: http://www.bailii.org/uk/cases/DRS/2005/2719.html
Cite as: [2005] DRS 2719, [2005] DRS 02719

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    Nominet UK Dispute Resolution Service

    DRS 02719

    marksandspenceronline.co.uk

    Decision of Independent Expert

  1. PARTIES:

    2. Complainant: Marks and Spencer plc

    Country: GB

    Complainant's Authorised Representative: Mrs Carol M Swann

    Respondent: Ligang Sup

    Country: Singapore

    Respondent's Authorised Representative: None

  2. DOMAIN NAME:

    3. marksandspenceronline.co.uk ("the Domain Name")
  3. PROCEDURAL BACKGROUND:

    4. 3.1      The Complaint was received in full by Nominet on 9th June 2005. Nominet validated the Complaint and notified the Respondent of the Complaint on 14th June 2005. No response has been filed to the Complaint.

    3.2      On 18th July 2005, the Complainant paid the fee to obtain the Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy (version 2) ("the Policy").

    3.3      On 21st July 2005, Nick Gardner, the undersigned ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an Expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

  4. OUTSTANDING FORMAL/PROCEDURAL ISSUES (IF ANY):

    5. None.
  5. THE FACTS:

    6. 5.1      The Complainant is the well known United Kingdom retailer. Its history dates back to 1884 and it has existed as a public company since 1926. It has over 375 stores in the UK and its turnover exceeds 7 billon pounds per annum. It owns various UK and Community Marks for the word or words MARKS&SPENCER (e.g. CTM 211,078). It has filed extensive evidence as to its name, business, trademark rights and the extent of its reputation. The Expert does not propose to repeat that evidence here but accepts that evidence.

    5.2      The Respondent registered the Domain Name on 26 December 2004. The Domain name has been used to host a site which offers links to various sites offering clothing and other items for sale, none of which are those of the Complainant. The site also indicates (or at least at one stage indicated - it appears the relevant text may have been removed after the Complainant objected to the Domain Name) that the Domain Name is for sale.

    5.3      The Respondent has offered to sell the Domain Name to the Complainant for £650. The Complainant has declined to accept this offer, indicating that as a matter of principle it does not make payment in respect of names which it believes infringe its rights.

  6. THE PARTIES' CONTENTIONS:

    7. Complainant
    6.1      The Complainant says that the Domain Name is the same as or at least similar to a name in which it has Rights. It says the registration is abusive both by reason of the fact that it was registered for the purpose of selling it for more than the out of pocket costs involved; and it is been used in a manner which has confused Internet users into believing it is associated with the Complainant. The Complainants evidence includes details of, and copies of relevant pages from the web site which is found at www.marksandspenceronline.co.uk.

    Respondent

    6.2      No Response has been filed

  7. DISCUSSION AND FINDINGS

    8. 7.1      As indicated above no Response has been filed. The relevant file record shows that Nominet have provided details of this Complaint to the Respondent by both e mail (to postmaster at the Domain Name), and by post (to the address provided by the Respondent when registering the Domain Name). There is no acknowledgment of any kind on file by the Respondent. The Respondent has however corresponded via e mail with the Complainant.

    7.2      In these circumstance the Expert takes the view that on the balance of probabilities the Respondent has been notified of the Complaint and has, for whatever reason, chosen not to respond. The Expert is allowed by Rule 15 of the Nominet Rules applicable to the Policy to proceed to determine the Complaint.

    Complainant's Rights

    7.3      The Complainant clearly has rights within the meaning of the Policy. As indicated above it is the proprietor of UK and Community registered trademarks. Those rights are in a name which is clearly similar to the Domain Name. In those circumstances it is not necessary to decide whether the "online" element of the Domain Name can be disregarded, and hence conclude that the Domain Name is identical, as the Complainant submits.

    7.4      Abusive Registration

    7.5      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."
    7.6      Paragraph 3 of the Policy provides a non exhaustive list of matters which may be evidence that a Domain Name is an Abusive Registration. These include:

    a(i). Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily (A) for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name; or…..
    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…..
    7.7      In the absence of any Response from the Respondent the Expert takes the view that it is manifestly improbable that the Respondent derived the Domain Name independently, or as anything other than a name which clearly reflected the Complainant's well known name and combined that name with elements which do no more than indicate the name is being used in an online environment.

    7.8      The Expert thinks it likely that the offer to sell the Domain Name for £650 was an offer to sell for more than the Respondent's out of pocket costs. However it is not necessary to decide this issue, as it is clear from the evidence that has been submitted, that if there is any doubt about this, other reasons also exist for finding the Domain Name is an Abusive Registration. Specifically the Expert accepts the evidence showing that the Domain Name has been used as part of the URL which resolves to a web site which offers clothing for sale, and/or which links to other such sites. The Expert accepts that this use is likely to confuse people into believing the Domain Name is associated with or authorised by the Complainant. The Expert is therefore satisfied the Domain Name is an Abusive Registration (see 3(a)(ii) of the Policy).

  8. DECISION

    9. 8.1      The Complaint succeeds. The Domain Name should be transferred to the Complainant.

    Nick Gardner

    9th August 2005

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URL: http://www.bailii.org/uk/cases/DRS/2005/2719.html