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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Ulster Bank Ltd v Domain Administration Ltd [2007] DRS 4229 (11 January 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4229.html Cite as: [2007] DRS 4229 |
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Complainant: Ulster Bank Limited
Country: UK
Respondent: Domain Administration Limited
Country: NZ
The domain name at issue is
On 20 November 2006, the Complaint was lodged with Nominet UK in accordance with the Dispute Resolution Service Policy (the "DRS Policy") and hard copies of the Complaint were received in full on the same day.
On 21 November 2006, Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the DRS Procedure") had been invoked and allowed the Respondent 15 working days (i.e. until 13 December 2006) within which to file a Response to the Complaint.
On 14 December 2006, as no Response had been received from the Respondent by Nominet UK, the Complainant was advised accordingly.
On 20 December 2006, Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.
On 20 December 2006, James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure.
The Complainant is a Bank carrying on business primarily in Ireland.
The Complainant is the owner of the following registered trade marks and pending applications:
Irish Registered Trade Mark number 203840, ULSTER BANK & Device registered on 5 November 1996 for services in class 36;
Irish Registered Trade Mark number 233669, ULSTER BANK & Device (series) registered on 6 December 2005 for goods and services in classes 9, 16, 35, 36 41, 42;
Community Trade Mark Application number 4411112 ULSTER BANK filed on 24 May 2005 for goods and services in classes 9, 16, 35, 36, 41, 42;
Community Trade Mark Application number 4762761 ULSTER BANK & Device filed on 5 December 2005 for goods and services in classes 9, 16, 35, 36, 41, 42;
Community Trade Mark Application number 4762803 ULSTER BANK & Device filed on 5 December 2005 for goods and services in classes 9, 16, 35, 36, 41, 42;
UK Trade Mark Application number 2408268A filed on 5 December 2006 ULSTER BANK & Device (series) for goods and services in classes 9, 16, 35, 36, 41, 42.
The Complainant is also the owner of the Internet domain names
The Complainant's parent company The Royal Bank of Scotland Plc is the owner of Internet domain name
The Respondent has not filed any Response.
The domain name in dispute was registered by Kwan Jin with an address at Domain Administration Limited, PO Box 37410, Auckland, 1033, NZ on 17 March 2004 and is presently registered in the name of the Respondent.
Complainant's Submissions
The Complainant submits that the domain name
The Complainant was founded in 1836 and has over 150 years of experience in providing financial services to a variety of customers, national and international.
The Complainant is part of The Royal Bank of Scotland Group ("RBS") is the third largest bank on the island of Ireland. It provides a comprehensive range of financial services to the personal, small business, and large institutional customer. It has 213 outlets of branch banking and 32 business centres focusing on business banking, corporate banking, and wealth management activities.
By virtue of the Complainant's role in the financial services industry, its long-standing commitment to the provision of quality financial products and services, and its significant commitment to the marketing and advertising of the ULSTER BANK mark, the Complainant has built up substantial goodwill in this mark in relation to the provision of financial services. The Complainant has submitted materials describing the Complainant's business as an annex to the Complaint.
The Complainant submits that an important part of its business is the provision of online financial services, referred to by the Complainant in its literature and website as ANYTIME INTERNET BANKING or ANYTIME BANKING, through its secure online banking gateway, accessed through its website at
The Complainant's ANYTIME INTERNET BANKING service offers a wide range of online banking services to help its clients manage their finances as efficiently as possible, including money management 24 hours a day, 365 days a year; immediate cash transfers to bank accounts; and bill-pay options. The Complainant has submitted printouts of illustrative pages from its website as an annex to the Complaint.
The Complainant asserts that it has rights in respect of the ULSTER BANK name and mark. The mark on which this Complaint is based is ULSTER BANK. The Complainant is the owner of the above referenced Irish Trade Mark registrations of the ULSTER BANK mark which date back as far as 1996. In addition, the Complainant has applied for the above mentioned additional registrations of its ULSTER BANK mark in the UK Patent Office and the EU Office for Harmonization in the Internal Market. The Complainant has provided the printout of results of a search of the Irish Patents Office, the UK Patent Office and OHIM websites evidencing these registrations and pending applications.
The Complainant also uses the following domain names, among many others:
The Complainant submits that the domain name
The Complainant's mark is the dominant and distinctive element in the domain name in dispute, and the domain name strongly conveys the impression that it is sponsored by, or somehow associated with, the Complainant and that it relates to the Complainant's ANYTIME BANKING services.
The domain name at issue is apparently targeted toward Internet users who, knowing that the Complainant is engaged in the business of offering online financial services, and, more specifically, that the Complainant operates its ANYTIME BANKING services online at the
The domain name in dispute was registered on 17 March 2004, long after the Complainant acquired rights to the ULSTER BANK name and mark.
The Complainant submits that the Respondent has no legitimate rights to the Complainant's ULSTER BANK mark or name. The domain name in dispute, is an Abusive Registration in the hands of the Respondent because it was registered in a manner that, at the time the registration took place, took unfair advantage of and was unfairly detrimental to Complainant's rights and because it has been used in a manner that takes unfair advantage of and is unfairly detrimental to Complainant's rights.
Evidence of this includes the following:
Firstly, it appears that the Respondent has registered the domain name in dispute for the purpose of unfairly disrupting the Complainant's business.
The domain name in dispute appears to be targeted toward Internet users seeking access to Complainant's ANYTIME BANKING services. Such users, however, are taken to the Respondent's website, which contains advertisements for, and links to competitors of the Complainant. For instance, as of 17 November 2006, the domain name resolved to a website providing numerous links relating to banking and other financial services. The Complainant has provided a print out of the website to which the domain name resolved on that day as an annex to the Complaint. The Complainant submits that these links took Internet users to other pages on the Respondent's site containing so-called "sponsored search results" made up of links to the websites of certain of the Complainant's competitors offering, among other things: "Online Banking," "Credit Cards," "Checking," "Investment," and "Personal Finance" – the very services that Complainant promotes and provides under its ULSTER BANK mark and as part of its ANYTIME BANKING business. The Complainant has provided examples of pages from these sites also as an annex to the Complaint.
The Complainant submits that such use constitutes an Abusive Registration under DRS Policy Section 3(a)(i)(C) and cites the decision of the panel in National Westminster Bank plc v. 2catchafly (DRS 3390, 3 April 2006) (finding that using confusingly similar domain name to divert Internet users to the respondent's website which offered links to other sites offering financial services of complainant's competitors unfairly disrupted complainant's business).
Secondly, the Respondent is using the domain name in issue in a way that either has confused people into believing, or is highly likely to confuse people into believing, that the domain name is registered to the Complainant, is operated or authorized by Complainant, or otherwise is connected with Complainant. See DRS Policy, Section 3(a)(ii). Given that the domain name simply combines the mark ULSTER BANK with the term "anytime", and thus strongly suggests that it corresponds to a well-known segment of Complainant's services, an Internet user intending to access the Complainant's Anytime Banking websites could find himself at the Respondent's website without realizing that the Respondent's website is not the Complainant's official website.
Moreover, the content of the Respondent's website, because it consists of information on, and advertising for, products and services that compete with those offered by the Complainant, would not necessarily alert the Internet user to his error.
Furthermore, even if an Internet user realized that he was not at the Complainant's official ANYTIME BANKING website, he still could be confused into believing that the Complainant was in some way associated with the domain name in dispute, given these substantial similarities.
Indeed, creating such confusion was most likely the Respondent's precise goal, as the Respondent is trying to capitalize on his unauthorized use of the ULSTER BANK mark for his own commercial gain.
The Complainant furthermore submits that the Respondent's registration and use of the domain name constitutes an Abusive Registration because the Respondent has no legitimate rights to the Complainant's mark and has not been given permission to use the mark, there is no legitimate purpose to which the Respondent could put the domain name in dispute. Because of this, any realistic use of the domain name in dispute by the Respondent would constitute passing off and/or trade mark infringement.
The domain name is therefore an 'instrument of fraud' in the hands of the Respondent, In this regard the Complainant cites the decision of the panel in Kodak Ltd. v. Brian Robertson DRS 00956 (involving "passive holding" of domain name). Indeed, where a respondent cannot use a domain name without violating the applicable law, the registration is abusive even if the Respondent has done no more than register the name. The Complainant further cites Nokia Corp. v. Just Phones DRS 058 (validating the argument that merely by registering in the Respondent's name a domain name such as the domain name at issue, comprising a famous and distinctive trade mark combined with a mere product description, the registration must necessarily have been made in a manner which took unfair advantage of the Complainant's Rights," and citing the analysis applied in British Telecommunications plc and Others v. One in a Million Ltd and Others [1999] ETMR 61).
Finally, the Complainant notes that, as of 3 November 2006, the WHOIS information listed "Kwan Jin" as the registrant of the domain name in dispute; and while the registrant's name was recently changed to that of the Respondent in casu, the rest of the information – including the listed address and agent information – remained substantially the same, as did the content of the corresponding website.
The Complainant has provided a copy of the 3 November 2006 WHOIS records together with a copy of the current WHOIS records for the domain name in dispute as an annex to the Complaint.
Indeed, the WHOIS information as of 3 November 2006, when Kwan Jin was listed as the registrant, identified "Domain Administration Limited" as part of his address. And a review of previous Nominet UK decisions involving Kwan Jin reveals that his address details were the same as those of the Respondent here. Thus, it appears likely that Kwan Jin remains the actual owner of the domain name.
The Complainant submits that this is significant because Kwan Jin has been found to have made Abusive Registrations in at least six DRS cases in the past two years. See The Royal Bank of Scotland Group Plc v. Kwan Jin DRS 03931 (9 October 2006), Post Office Limited v. Kwan Jin DRS 03894 (24 September 2006), Volvo Trademark Holding Aktiebolag v. Kwan Jin DRS 03700 (12 July 2006), Arcadia Group Brands Limited v. Kwan Jin DRS 03305 (26 March 2006), Cancerbacup v. Kwan Jin DRS 02850 (25 October 2005), Associated Newspapers Ltd. v. Kwan Jin DRS 02181 (14 January 2005).
In Volvo Trademark Holding Aktiebolag v. Kwan Jin, the expert stated that the evidence demonstrated that the respondent [Kwan Jin] was apparently engaged in activities on a commercial scale using simple typographical variants of hundreds of marks. Kwan Jin had plainly been engaged in the pattern of Abusive Registrations as envisaged in Paragraph 3 a (iii) of the DRS Policy. There had also been three previous DRS cases against the same respondent in the preceding two years, which had all been decided against the respondent. Consequently, the expert was in no doubt that the provisions of Paragraph 3c of the DRS Policy should apply in any future case brought against Kwan Jin within the relevant period.
Under these circumstances, the Complainant submits that it would be appropriate to apply a presumption of an abusive registration in this case under DRS Policy Section 3(c). Accordingly, the Complainant respectfully requests that the Expert find that Complainant has rights in respect of a mark that is similar to the domain name at issue and that the domain name, in the hands of Respondent, is an Abusive Registration.
Respondent's Submissions
The Respondent has not filed any Response.
In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. 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.
Complainant's Rights
The Complainant has established that it is the owner of the Irish registered Trade Mark ULSTER BANK & Device. Furthermore the Complainant has a long established reputation in carrying on a substantial banking business under the name ULSTER BANK and as it is now the third largest bank in Ireland it has obvious common law rights in the ULSTER BANK mark.
The domain name at issue is clearly similar to the Complainant's ULSTER BANK name and mark. The dominant element of the domain name
In the circumstances the Complainant has established that the Complainant has Rights in respect of a name and mark which is similar to the domain name at issue and has therefore satisfied the first element in the test in paragraph 2(a) of the DRS Policy.
Abusive Registration
The Complainant had established a presence on the Internet prior to the date on which the domain name in dispute was registered.
The Complainant's domain name
It is also clear from the evidence that the domain name was recently transferred to the Respondent in this case by said Kwan Jin and the details provided in the original registration clearly demonstrate that there is a close connection between the Respondent and the original registrant. They have an identical address.
While there is clearly a close connection between the Respondent and the original registrant Kwan Jin, in the circumstances of the present case, for reasons given below, it is not necessary to consider the submissions made by the Complainant that the said Kwan Jin remains the actual owner of the domain name, or in relation to the alleged pattern of registrations by the said Kwan Jin, or whether there is a presumption of an Abusive Registration in this case under DRS Policy Section 3(c).
The Complainant submits that the domain name in dispute appears to be targeted toward Internet users seeking access to Complainant's ANYTIME BANKING services but does not indicate when the Complainant first used the phrase "anytime banking" in relation to its services.
While the Complainant has submitted that the domain name in dispute is likely to be confused with the
That being said, the Complainant has rested its case on its rights in the ULSTER BANK name and not on any claimed Rights in the use of the word ANYTIME. The domain name in dispute was registered on 17 March 2004, long after the Complainant acquired its Rights in the ULSTER BANK name and mark and the present registrant, the Respondent herein, only acquired and commenced use of the domain name at issue subsequent to registration of each of the domain names used by the Complainant.
There is no evidence or indication that either the original registrant Kwan Jin or the Respondent have any interest in, or connection with, either the province of Ulster, or the banking industry, and there is no indication that there was any bona fide reason for the Respondent to acquire ownership of or to use the domain name in dispute.
The Respondent must be aware of the similarity of the domain name and the Complainant's goodwill in its name and mark. That the Respondent is actually aware of the existence of the Complainant is evidenced by the fact that the Respondent names the Complainant among other banks listed on the website to which the
It follows that when the Respondent recently acquired ownership of the registration of the domain name in dispute, it must also have been aware that the Complainant has an established reputation using the style ANYTIME BANKING for its online banking services.
The Respondent must also be clearly aware that its activities create a real risk that there will be confusion among Internet users that the domain name is connected with the Complainant and its banking business and in these circumstances the Respondent is knowingly using the domain name in dispute as an address of a website that purports to provide links to services that are in direct competition with the Complainant.
The print-out of the web page to which the
Taken together, all of these factors establish that, on the balance of probabilities, the domain name in the hands of the Respondent is an Abusive Registration.
The Complainant has therefore succeeded in proving both elements in the test in paragraph 2(a) of the DRS Policy and is entitled to succeed in its application.
This Expert therefore directs that the domain name
James Bridgeman Date: 11 January 2007
