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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Bank of Scotland Group Plc v Morrison [2006] DRS 3676 (27 September 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3676.html Cite as: [2006] DRS 3676 |
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Complainants: The Royal Bank of Scotland Group Plc, Direct Line Insurance Plc and Privilege Insurance Company Limited
Country: GB
Represented by: Mr William Fultz
Country: USA
Respondent: Robert Morrison
Country: Australia
privalige.co.uk ('the Domain Name')
The original Complaint related to two domain names: rbsint.co.uk and privalige.co.uk. It was lodged with Nominet on 15 May 2006 and hard copies were received on the same day. Nominet validated the Complaint on 17 May 2006.
On 17 May 2006, Nominet sent the Complaint to the Respondent's address by post and e-mail. No Response was received so mediation was not attempted.
On about 20 June 2006, the Complainants paid the fee in order to obtain a decision of an independent expert. The original Expert having confirmed her independence was appointed on 21 June 2006 and subsequently delivered her Decision dated 30 June 2006. This Decision awarded the first disputed domain name, rbsint.co.uk, to the first named Complainant, The Royal Bank of Scotland Group Plc, but dismissed the Complaint relating to the second disputed domain name, privalige.co.uk, on the grounds that the legal entity with Rights to the name, Direct Line Insurance Plc, was not a party to the Complaint.
By 12 July 2006 the Complainants had contacted Nominet to express concern about the process and Decision relating to privalige.co.uk. Nominet extended the appeal deadline, and the Complainants lodged their Appeal against this part of the Decision on 20 July 2006. On 21 July the Respondent was notified that he had 10 working days in which to file a response to the Appeal, but by the deadline of 7 August 2006 no response had been received.
Nominet proceeded to assemble an appeal panel (the "Panel"). Three Experts, having confirmed their independence, were appointed to the Panel on 16 August. After the file was forwarded to the Panel, one Expert became aware of circumstances, which might call into question the Expert's independence in the eyes of one or both of the parties. Those circumstances were notified to both the Complainants and the Respondent. Neither party raised an objection to the matters disclosed and the Expert's appointment to the Panel was confirmed on 21 August 2006.
Nominet has taken the opportunity to refer to the Panel some questions of interpretation of the DRS Policy and Procedure, as it is entitled to do under paragraph 10(b) of the Policy. These questions relate to the corrections of errors in decisions. The Panel has considered these questions and provided its views on them in a separate document.
This is a multiple-Complainant case. The Complainants are The Royal Bank of Scotland Group Plc (the lead Complainant), Privilege Insurance Company Limited and Direct Line Insurance Plc.
The Respondent, Robert Morrison, registered the Domain Name, privalige.co.uk, on 19 July 2004 and renewed it on 19 July 2006. It has been pointing to a parking page (hosted by Sedo) listing links to insurance companies and brokers.
The Respondent named in this case, Robert Morrison, has been found to have made an Abusive Registration in five DRS cases in the two years before the Complaint was filed, as follows:
Sheet Music Direct Ltd. v. Robert Morrison, DRS 03408 (20 March 2006);
Search Press Ltd. v. Robert Morrison, DRS 03035 (6 December 2005);
Harry Corry Ltd. v. Robert Morrison, DRS 03028 (26 November 2005);
Lintran v. Robert Morrison, DRS 03021 (6 December 2005);
Guilbert UK Holdings Ltd. v. Robert Morrison, DRS 02775 (5 September 2005).
Although different contact details were used in different cases, there is no dispute that these are all the same Robert Morrison. Therefore, according to the provisions of the Policy paragraph 3c), there is a presumption of Abusive Registration in this case. As the Respondent has not responded, this presumption has not been rebutted.
The Complainant Direct Line Insurance Plc has trade mark registrations in the UK and elsewhere for the trade mark 'privilege'.
The Complainants cite paragraph 3b) of the DRS Procedure, relating to multiple Complainants, and claim that the Complaint precisely followed the requirements laid down that (i) all Complainants must sign the hard copy of the Complaint (or have it signed on their behalf); (ii) one of the Complainants must be named as the lead Complainant; and (iii) the Complaint must specify which of the Complainants they wished to become sole registrant of the disputed Domain Name. In this regard (i) the Complainants' legal representative signed the Complaint on the Complainants' behalf; (ii) The Royal Bank of Scotland Group Plc was named as the lead Complainant; and (iii) the Complaint specified that the Complainants wished the lead Complainant, The Royal Bank of Scotland Group Plc, to become sole registrant of the disputed Domain Names. In addition, as required by Nominet's online Complaint form, the Complaint included (as Annex V) a list of contact details of all three Complainants.
Moreover, several phrases in the body of the Complaint underline the fact that there were joint Complainants, and some of these phrases were reproduced in the original Decision.
The Complainants contend that the Complainants have rights in the name and mark "privilege", which is similar to the privalige.co.uk domain name, and that the domain name in the hands of the Respondent is an Abusive Registration.
The Complainants claim that the original Expert's conclusion that Direct Line and Privilege were not parties to the Complaint was erroneous. As this conclusion was the only reason for denying the Complaint, the Complaint should now succeed.
The Respondent has made no Response to the Complainants' contentions either in the original Complaint or in the Appeal.
The Nominet Dispute Resolution Service Policy ('the Policy') paragraph 2 requires that for a Complaint to succeed the Complainant must prove, on the balance of probabilities, that both:
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.
With respect to i), Rights, the Panel finds that Direct Line Insurance Plc has UK and community trade mark registrations for the name "privilege", and so like the original Expert finds that Direct Line Insurance Plc has Rights in that name. The Panel also finds that, for current purposes, the mis-spelling 'privalige' is similar to the name or mark 'privilege'. (The use of the holding page to advertise insurance services is enough to dispel any possible doubt on this point).
On the basis of the Respondent's record, as already mentioned, there is a presumption of Abusive Registration. This presumption has not been rebutted, so, like the original Expert, with respect to ii), the Panel has no option but to find Abusive Registration in this case.
The Panel finds that it is clear from the text of the Complaint that there was more than one Complainant. The Complainants have complied with paragraph 3b of the DRS Policy and have listed in Annex V The Royal Bank of Scotland Group Plc as the lead Complainant and Privilege Insurance Company Limited and Direct Line Insurance Plc as additional Complainants.
Thus, the Panel finds that, as both Direct Line Insurance Plc and Privilege Insurance Company Limited were joint Complainants, the Rights requirement is satisfied and the Appeal should succeed.
One remaining point is to which of the Complainants the name should be transferred. The Complainants in both the Complaint and the Appeal have requested the transfer of the Domain Name to the Lead Complainant, The Royal Bank of Scotland Group Plc, even though the relevant Rights belong to another Complainant. We note that under Procedure 3(b)(iii) the Panel is not bound to comply with the Complainants' request regarding the nominated transferee. The Policy does not prescribe that a transfer should necessarily be to the owner of the applicable Rights and the Procedure paragraph 3 (b) (iii) explicitly contemplates that transfer may be made to a nominated Complainant, irrespective of whether that Complainant owns the applicable Rights.
It must also be noted that even if an order for transfer was limited to the relevant Rights owner, that party would thereafter be free to reassign the transferred Domain Name to another without restriction. The evidence submitted with the Complaint indicates that the three Complainants are all part of the Royal Bank of Scotland Group of companies.
The Panel also notes the following recent cases: DRS 03809 – priveledge.co.uk; DRS 03806 – privalege.co.uk; DRS 03744 – privilige.co.uk; and DRS 03719 – privelage.co.uk; where Rights in the name "privilege" were at issue. In each of these cases The Royal Bank of Scotland Group Plc was the lead Complainant and although not owner of the relevant Rights, the disputed domain names were transferred to it as lead Complainant.
In the present case, as the Complainants are members of the same corporate group, the Panel sees no reason to exercise its discretion to refuse the Complainants' request to the transfer to the Domain Name to the lead Complainant, The Royal Bank of Scotland Group Plc.
The Appeal Panel has no doubt that in this case the Expert made a mistake. Particularly given Nominet's interest in this Appeal, it is perhaps worthwhile examining how the mistake arose. Paragraph 3b of the DRS Policy allows for joint Complainants. However the form of the Complaint does not allow multiple parties to be listed on the front page of the Complaint.
Nominet now provide a file note to Experts where there are multiple Complainants. The need for such a note indicates that it may not always be immediately apparent that there are multiple Complainants, and this was the case here. In compliance with paragraph 3b of the Procedure, details of all Complainants were provided; however, they appeared in Annex V, the last of 24 Annexes to the Complaint.
This case has highlighted the need for an unambiguous indication on the face of the Complaint where there are joint Complainants and where their details may be found, as well as the difficulty for experts in reading electronic submissions in block text. We are aware that Nominet has plans for improving the ease of use of its electronic filing of submissions, from the point of view of both parties and experts. The Panel trusts that Nominet will take the Panel's observations into account when implementing those plans.
The Panel finds that the Complainant Direct Line Insurance Plc does have Rights in the mark "privilege", which is similar to the disputed Domain Name, which was registered abusively. As requested, we direct the transfer of the disputed Domain Name, privalige.co.uk, to the lead Complainant, The Royal Bank of Scotland Group Plc.
Signed:
Claire Milne
Veronica Bailey
Keith Gymer
27 September 2006