Nominet UK Dispute Resolution Service

DRS Complaint No 03938

Decision of Independent Expert

1.	Parties

Complainant:	Santa Monica Airlines Ltd 	
Country:	GB	  

Respondent:	David Allan

2.	Domain Names

(1) 	appolloduck.co.uk
(2)	appoloduck.co.uk

3.	Procedural Background

The Complaint was validated by Nominet on 22 August 2006 and sent to the Respondent on that date.  Nominet informed the Respondent that it had 15 working days, i.e. until 14 September 2006, to respond to the Complaint.

By 15 September 2006, no formal Response having been received from the Respondent, Nominet wrote to the Complainant’s representative confirming that no Response had been filed and invited the Complainant to request an Expert Decision.

The Complainant paid the fee within the relevant time limit.  On 21 September 2006 I was contacted by Nominet and asked to confirm that I was able to provide an Expert Decision.  I responded to Nominet on the same date confirming that I was able to provide a decision.  

On 22 September, the matter was duly referred to me, Simon Chapman, (“the Expert”) for an Expert Decision.

4.	Outstanding Formal/Procedural Issues (if any)

The Respondent has not submitted a formal response to the Complaint.  From the papers that have been submitted to me by Nominet, it is apparent that they have sent the Complaint to the Respondent by post and e-mail to the contact details held on Nominet’s register.  

When registering a .uk domain name applicants agree to be bound by Nominet’s Terms and Conditions.  Clause 4.1 of those terms and conditions states that the registrant of the domain name shall:-

“4.1   give and keep us notified of your correct name, postal address and any phone, fax or e-mail information and those of your contacts (if you appoint any, see condition 5.2).  This duty includes responding quickly and correctly to any request from us to confirm or correct the information on the register”

In addition paragraph 2(e) of the Dispute Resolution Service Procedure (the “Procedure”) states that:- 

“e. Except as otherwise provided in this Procedure or as otherwise decided by us or if appointed, the Expert, all communications provided for under this Procedure shall be deemed to have been received:
i.     if sent by facsimile, on the date transmitted; or
ii.    if sent by first class post, on the second Day after posting; or 
iii.   if sent via the Internet, on the date that the communication was transmitted;
iv.  and, unless otherwise provided in this Procedure, the time periods provided for under the Policy and this Procedure shall be calculated accordingly.” 

In light of the above it is my view that Nominet has done everything that it is obliged to do to bring the Complaint to the attention of the Respondent.  

I now move on to consider the consequences of the Respondent not submitting a response.
The Procedure envisages just such a situation and provides in Paragraph 15 that:-

“c.	If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure or any request by us or the Expert, the Expert will draw such inferences from the Party's non compliance as he or she considers appropriate.”

I am not aware of any exceptional circumstances to explain why the Respondent should not have responded to the Complaint, and as such believe it appropriate to proceed to a Decision. 

I will draw such inferences from the Respondent’s failure to respond as I think appropriate, but must keep in mind that there may be a number of reasons why a respondent might fail to serve a response, for example that they have nothing useful to say.

5.	The Facts

The Complainant operates an internet advertising service under the name “Apollo Duck”, which specialises in the advertising of boats for sale.  The service was launched in the spring of 2000 with a single website located at <apolloduck.co.uk>.  It has expanded and now consists of a network of 45 international boat advertising websites.  In the UK alone, there are 12 ‘Apollo Duck’ branded websites, and the brand has had coverage through a number of different mediums.

The Complainant is the proprietor of a UK registered trade mark (No 2353943), registered in classes 35 (including advertising services via the internet) and 42. 

The Domain Names were registered on 15 June 2004 (appolloduck.co.uk) and 30 June 2005 (appoloduck.co.uk) by the Respondent, and are pointed to websites that provide what are described as “Sponsored Links” for a number of boat related services, some of which are competitors of the Complainant.

The use being made of the Domain Names has led to an instance of confusion, that being a mistaken reference by a participant in a chat room service to the <appolloduck.co.uk> website, when he clearly intended to refer to the Complainant’s website. 

The Parties’ Contentions

Complainant

The Complainant asserts that it has Rights in respect of a name and mark which is identical or similar to the Domain Names and the Domain Names in the hands of the Respondent are  “Abusive Registrations” as defined in the Dispute Resolution Service Policy (the “ Policy”).

In support of the claim to Rights, the Complainant says that it is the proprietor of the trade mark referred to above.  

In support of the claim that the Domain Names are Abusive Registrations the Complainant says that -   

i)	the Respondent’s use is an infringement of its registered trade mark rights, and a deliberate attempt to pass itself off as a service operated by the Complainant; 

ii)	the use being made by the Respondent is an example of ‘typo-squatting’;

iii)	the use is leading to confusion amongst users of the Complainant’s services;

iv)	the diversion of those people who seek to locate the Complainant’s services, but mistakenly type one of the Domain Names held by the Respondent is undermining the trade mark rights of the Complainant and damaging the Complainant’s business by diverting its customers to competitors.

Respondent

As indicated above, the Respondent has not filed a Response.

6.	Discussion and Findings:

General

To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that:

(i)	it has Rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Disputed Domain Name; and

(ii)	the Disputed Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

Despite the absence of a response from the Respondent, the Complainant must make out its case to the Expert on the balance of probabilities.  It is still incumbent on the Expert to assess the admissibility, relevance, materiality and weight of the evidence as presented in the Complaint (see Paragraph 12b of the Procedure).

Complainant’s Rights

The DRS Policy defines Rights as follows –

“Rights includes, but is not limited to, rights enforceable under English law.  However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business”

The Complainant is the proprietor of registrations for the trade mark ‘APOLLO DUCK’, and has used that mark such that it is likely to have created extensive goodwill therein.  It is clear that the Complainant therefore qualifies as having the necessary rights in that mark.  

The Policy requires such rights to be in a name or mark identical or similar to the Disputed Domain Name.  The Domain Names are <appolloduck.co.uk> and <appoloduck.co.uk>.  For the purpose of analysing whether the Domain Name is identical or similar to the name or mark in which rights are claimed, one must ignore the .co.uk suffix.  The comparison is therefore between ‘APOLLO DUCK’ on the one hand, and ‘APPOLLODUCK’ and ‘APPOLODUCK’ on the other.  In my opinion the addition of the extra ‘P’, the absence of an extra ‘L’ or the absence of a gap in the Domain Names makes little difference to the overall impression or impact of them, and I determine that the Complainant has established that it has Rights in a name or mark similar to the disputed Domain Name.   

Abusive Registration

I now go on to consider the extent to which the disputed Domain Name is an Abusive Registration.

The Complainant asserts that the registration of the Domain Name is an Abusive Registration for the reasons identified above.

The Policy sets out a (non-exhaustive) list of factors which may be evidence that a domain name is an Abusive Registration.  One of the factors is contained in Paragraph 3(a)(ii) of the policy and provides as follows –

	“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 by, or otherwise connected with the Complainant.”

The paragraph referred to requires there to have been actual confusion insofar as it uses the word ‘has’.  The evidence that has been presented to me confirms that there has been actual confusion resulting from the Respondent’s use of the Domain Names.  That evidence has not been rebutted by the Respondent.  

Notwithstanding the evidence of confusion, I also find that the registration of domain names by the Respondent, that are nearly identical to the highly distinctive marks of the Complainant and which have been used in conjunction with a website promoting services which compete with those of the Complainant would take unfair advantage of or be unfairly detrimental to the Complainant’s Rights.

I therefore have little difficulty in determining that the use of the Domain Names by the Respondent is Abusive. 

7.	Decision

For the reasons set out above, I find that the Complainant does have Rights in respect of a name or mark which is similar or identical to the Domain Names <appolloduck.co.uk> and <appoloduck.co.uk>, and that the Domain Names in the hands of the Respondent are Abusive Registrations.  The Complaint therefore succeeds. 

The disputed Domain Name <appolloduck.co.uk> and <appoloduck.co.uk> should be transferred to the Complainant.

Simon Chapman

11 October 2006