Nominet UK Dispute Resolution Service

DRS Number 3332

Royal Mint

v

Lawrence Chard

Decision of Independent Expert

1.	Parties

Complainant:		Royal Mint
Country:		GB		  

Respondent:		Lawrence Chard
Country:		GB		

2.	Domain Name

royalmint.co.uk   -  registered on 6 January 2000.

3.	Procedural Background

The Complaint was lodged with Nominet on 25 January 2006.  Nominet validated the Complaint and notified the Respondent of the relevant Complaint on 26 January 2006 and informed the Respondent that it had 15 days within which to lodge a Response. 

No response was received. No mediation having been possible, on 7 March 2006 the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

David Flint, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as 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)

None

5.	The Facts

The Complainant, (“the Mint”) is a department of Her Majesty’s government. Although the Mint’s primary responsibility remains the provision of the United Kingdom coinage, its reputation for producing the world's finest coins means that more than 100 countries have entrusted the striking of their coinage to the Mint. In addition to circulating coins, the Mint supplies collector and commemorative coins, as well as military and civilian medals to numerous countries across the world. The Mint has a very high reputation for quality and delivery, which has been built up over many years of trading. Indeed, the Mint has a very long history, stretching back over 1100 years. The Mint has been known as “The Royal Mint” since the 16th century. 

6.	The Parties’ Contentions

Complainant

I.	The Mint owns two domain names: <royalmint.gov.uk> and <royalmint.com>. It has owned these domain names since 1997 and 1996 respectively, and has operated websites at internet addresses which incorporate these domain names since 2005 and 1996 respectively. 

II.	The website at <www.royalmint.gov.uk> is the Mint’s “Corporate site”, and contains information on the Mint’s history, heritage, functions and responsibilities. The website at <www.royalmint.com> is the Mint’s “Retail Outlet” or online shop, via which customers can purchase the Mint’s products. These websites link to each other, and together are visited by an average of 109,059 unique visitors per month. 

III.	As a result of the above, the Mint owns the substantial and valuable goodwill and reputation in the ROYAL MINT name, amounting to rights enforceable under English law via the tort of passing-off.
IV.	The Respondent (and registrant of the Domain Name) is an individual, Lawrence Chard. Lawrence Chard is, and has at all relevant times been, a director and shareholder of a company incorporated in England and Wales as company number 01378220: Chard (1964) Limited.

V.	Chard (1964) Limited appear to do business via a website at <www.chards.co.uk>. Lawrence Chard is the registrant of the <chards.co.uk> domain name. There are numerous links from the website at <www.chards.co.uk> to a website (described as one of “Chard’s websites”) at <www.24carat.co.uk>. 

VI.	“Chard Limited” is the registrant of the <24carat.co.uk> domain name. It should be noted that no such company exists (at least not one registered in England and Wales) and it is presumed that Chard Limited is an erroneous reference to Chard (1964) Limited. Until very recently, <www.24carat.co.uk/domainnames.html> was the purported registrant of the Domain Name. Due to the relationships set out above, it is submitted that content of the websites at <www.chards.co.uk> and <www.24carat.co.uk> can be attributed to the Respondent. 

VII.	The Domain Name as an Abusive Registration The Complainant submits that the Domain Name is an Abusive Registration as the Respondent acquired and is using the Domain Name in a way which takes unfair advantage of and is unfairly detrimental to the Complainant’s Rights.

VIII.	This is evidenced by the following: 

a.	It is submitted that the Respondent acquired the Domain Name for the purpose 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. This is evidenced by the presence of the Domain Name on a website (<www.24carat.co.uk>) operated by Respondent’s company (Chard (1964) Limited), where it is advertised, along with many other domain names, as being for sale for the sum of £5,000. Clicking on the <royalmint.co.uk> link takes one to a page where the Domain Name is described as “a great domain name for a number of different businesses”, including “The Royal Mint”, “Coin dealers” and “Mints” . 

b.	 It is submitted that the Respondent acquired the Domain Name for the purpose of a blocking registration (in accordance with paragraph 3.a.i.B of the Policy). Certainly, the Complainant has rights in the ROYAL MINT name, which is unique, particular and well-known. The name is certainly well known to the Respondent, who has apparently worked as a coin dealer since at least 1964 (according to the <www.chards.co.uk> website). That the Complainant would wish to register the Domain Name would have been obvious to the Respondent, given his interest in the collectable coin market and his interest in selling domain names. This is confirmed by the Respondent’s suggestion on his website that the Domain Name would be “a great domain name for a number of different businesses”, including “The Royal Mint”. Accordingly, the Domain Name is a blocking registration within the meaning given in paragraph 3.a.i.B of the Policy and takes unfair advantage of, and is unfairly detrimental to the Complainant’s Rights.

c.	It is submitted that the Respondent is engaged in a pattern of registrations in accordance with 3.a.iii of the Policy. The Complaint contains details of domain names which are listed for sale on the <www.24carat.co.uk> website, as well as showing their sale price and brief details of the names and/or trade marks in which the Respondent has no apparent rights. It should be noted that the names and/or trade marks in question in most cases have some connection with jewellery, gems, precious metals or coin collecting. As such, some of the names and/or trade marks are not well known to the public at large, but are well known within those markets.

IX.	The Complainant seeks transfer of the Domain Name.

Respondent

No response was received from the Respondent.

7.	Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant’s Rights

In this case the first limb of that task is straightforward. The Complainant has been entrusted by statute, by law and by royal appointment with the production of coin of the realm for over 1100 years. Few businesses can boast such a long and uninterrupted lineage.  The Expert is also satisfied that it has very substantial goodwill and reputation in the name as a result of its activities over the centuries.  In those circumstances the Expert is satisfied that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “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.”

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant ‘factors’ in paragraph 3 are to be found in subparagraphs i and ii, which read as follows:

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;

B.	as a blocking registration against a name or mark in which the Complainant has Rights; or

C.	for the purpose of unfairly disrupting the business of the Complainant;

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.”    

The Domain name appears on the Respondent’s website for sale at a price of £5000. This is clearly in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name, which the Respondent helpfully notes on his site to be £94 +VAT were it obtained from Nominet. The Expert therefore considers that the test of paragraph 3.i.A has been satisfied. The Respondent, Lawrence Chard, personally features on this site in the “contact us” page. Tying the Respondent to that page.

The Expert interprets “as” in sub-paragraph 3.i.B as being synonymous with “for the purpose of”. Were it to be interpreted otherwise all domain name registrations would inevitably constitute “blocking registrations” for any later arrival wishing to use the name in question. 

The Expert notes that in his website, the Respondent specifically refers to the Complainant as being a person for whom the domain might be suitable. Given this fact and the fact that the Respondent appears to be a UK jeweller, coin dealer, bullion dealer the Expert considers that the Respondent cannot have been unaware of the Complainant or its rights in the name “Royal Mint”

Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s rights.

8.	Abusive Registration

The expert notes the submission by the Complainant that the Respondent (either directly or through businesses with which he has some connection appear to have been engaged in a pattern of abusive registrations. 

It appears that in this regard, there are associated registrants / websites: -

Lawrence Chard
Chards
www.24.carat.co.uk
www.your-name-here.co.uk
Mr Doug Smith & Mr Lawrence Chard t/a Your Name Here
www.chards.co.uk 

These associated parties have now been the subject of a number of previous Decisions which have found against them: -
DRS -570 Blackpooltower.co.uk
DRS – 2921 Alternate.co.uk
WIPO Case No. D2001-1501 - garrards.com

Additionally, the Complainant has provided a list of .co.uk domains which appear to satisfy the test of paragraph 3.a.iii, namely: -

“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 Expert finds that the Complainant has so demonstrated and that the provisions of paragraph 3c are satisfied.

8.	Decision

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark 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 royalmail.co.uk  be transferred to the Complainant.

Further, the Expert finds that the Respondent, directly or through one or more of the entities specified in paragraph 8 of this decision, is engaged in a pattern of abusive registrations and accordingly finds that the provisions of article 3c of the DRS Policy shall apply to all such entities.

David Flint

19 March 2006