Diageo plc v Chao Investments Limited

Nominet UK Dispute Resolution Service

DRS 04672

Decision of Independent Expert

1.	PARTIES

	Complainant:	Diageo plc
	Country:	GB

	Respondent:	Chao Investments Limited
	Country:	NZ		

2.	DISPUTED DOMAIN NAME

	diagio.co.uk (the “Domain Name”)

3.	PROCEDURAL BACKGROUND

3.1	On 2 May 2007 the dispute was entered into the Nominet Dispute Resolution Service (DRS).  Hard copies of the Complaint were received in full by Nominet on 9 May 2007.  The Complaint was validated by Nominet on 9 May 2007 and sent to the Respondent on the same day.  

3.2	No Response was received from the Respondent and therefore informal mediation was not possible.  On 13 June 2007 the Complainant paid the fee to obtain the Expert’s decision pursuant to paragraph 21 of the Procedure for the conduct of proceedings under the DRS.

3.3	On 26 June 2007, Veronica Bailey, having confirmed to Nominet that she was independent of each of the parties and that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality, was appointed expert (the “Expert”).

4.	OUTSTANDING FORMAL/PROCEDURAL ISSUES

4.1	The Respondent has not submitted a Response to Nominet in time or at all (in compliance with paragraph 5a of the Procedure).

4.2	Paragraph 15(b) of the Procedure provides that “If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint”.

4.3	Nominet appears to have used all of the available contact details to try to bring the Complaint to the Respondent’s attention.  Consequently, there do not appear to me to be any exceptional circumstances involved and I will therefore proceed to a decision on the Complaint notwithstanding the absence of a Response.

5.	THE FACTS:

5.1	The Complainant, Diageo plc is a global drinks company which manufactures and supplies alcoholic drinks and manages a number of leading brands including SMIRNOFF vodka, J&B blended whisky, TANQUERAY gin and GUINNESS beer.

5.2	The Complainant has its headquarters in London and is a FTSE 100 company. It is listed on both the London and New York stock exchanges. 

5.3	The Complainant created the mark DIAGEO when it was formed in 1997, following the merger of Guinness Plc and Grand Metropolitan Plc.  It owns the UK Trade Mark registration No 2148529 and Community Trade Mark registration No 2943892 for the name DIAGEO.
5.4	The Complainant registered the domain name diageo.co.uk in September 1997.  It also uses the domain names diageo.co.uk, diageo.ie; diageo.de and diageo.com.   

5.5	The Domain Name complained of, diagio.co.uk was originally registered to Robert Morrison on 16 November 2004 and subsequently registered to the Respondent, Chao Investments Limited.

6.	THE PARTIES' CONTENTIONS

Complainant

6.1	In summary the Complainant makes the following submissions:

A)	The Complainant has rights in a name or mark which is similar to the Domain Name because:

(a) 	The Complainant is a world famous global drinks company which manufactures and supplies famous brands of alcoholic drinks.  The Complainant trades in over 180 markets around the world.  Its head quarters are in London.  It is listed on both the London and the New York Stock Exchanges.  It has a market capitalisation of approximately £23.4 billion and is a FTSE 100 company.  The Complainant manages 9 of the world’s top 20 distilled spirits brands (including SMIRNOFF vodka, J&B blended scotch whiskey and TANQUERYAY gin) as well as leading beer brands (such as Guinness) and a selection of wines;

(b) 	the Complainant created the mark DIAGEO which is a neologism created from the Latin for day (dia) and the Greek for world (geo) to express the business’ aims and core values; 

(c)	the Complainant has a comprehensive internet presence and operates many websites targeted at specific geographic markets through the use of domain names including diageo.co.uk, diageo.ie; diageo.de and diageo.com.  It registered the domain name diageo.co.uk in September 1997;

(d)	the Complainant owns the UK Trade Mark registration number 2148529 for DIAGEO registered in classes 16, 19, 30, 31, 32, 33, 35 and 42 and Community Trade Mark number 2943892 for  DIAGEO registered in classes 32, 33 and 43;

(e) 	since its creation in 1997 the Complainant has established itself as one of the most famous and recognisable consumer goods companies in the world.  It has a very strong business and commercial presence in the UK and throughout the world and has acquired considerable goodwill and substantial reputation in the UK and throughout the world in the name and mark DIAGEO.  Members of the public in the UK or elsewhere who see the mark or a confusingly similar word in a domain name will invariably associate it, and any website to which it connects, with the Complainant;

B)	History between the Parties

(a)	It appears that the Domain Name was originally registered on or about 16 November 2004.  This registration was made without the knowledge or consent of the Complainant and came to its attention in May 2006 when it was registered to a Mr Robert Morrison (an acknowledged abusive registrant of .co.uk domain names).  The Complainant’s solicitors wrote to Mr Morrison requesting the transfer of the Domain Name but he claimed to have already transferred it to a Mr Bjerking, although no transfer was recorded at Nominet.  Just before filing a complaint at Nominet, the Compliant discovered that the Domain Name had been transferred to the Respondent.  The Complainant’s solicitors wrote to the Respondent on 9 March 2007 at the registrant’s address but did not receive a response.  

(b) 	Neither Mr Morrison nor the Respondent is connected with the Complainant or its business in any way and the Complainant has not licensed or otherwise permitted the Respondent or Mr Morrison to use the name and mark Diageo or any confusingly similar mark in the UK or elsewhere.  

C)	The Domain Name and its use

(a)	The Domain Name is an example of typo-squatting.  It is visually, phonetically and conceptually similar to DIAGEO and a deliberate misspelling of DIAGEO.  The words are identical except that an ‘I’ is substituted for the ‘E’.  The Domain Name is intended to catch members of the public who know of the Complainant but are unsure of the spelling of its name or who mistakenly misspell the name.  As the Complainant has its head quarters in the UK, members of the public expect it to own and use a domain name with a .co.uk suffix.  

(b)	The Domain Name resolves to the Respondent’s website which has in the index on the left side of the homepage five purported links to the Complainant.  These links have no connection with the Complainant or its business and are not authorised, licensed or approved by the Complainant. The layout of the website, however, suggests that these businesses are recommended by the Complainant.  The Complainant also believes that the links on the website are sponsored links such that the operator of the website receives payment whenever anyone clicks on the link or one of the websites.

D)	Presumption of an Abusive Registration

(a)	Pursuant to paragraph 3(c) of the DRS Policy there is a presumption that a registration is an Abusive Registration if the Complainant proves the Respondent has made an Abusive Registration in three or more DRS cases in the two years before the Complaint was filed.  The Respondent has had six DRS decisions against it within this time.  The Complainant therefore contends that the registration of the Domain Name is an Abusive Registration.

(b)	The Respondent’s registration and use of the Domain Name further constitutes an Abusive Registration because DIAGEO is a very distinctive mark with an extensive reputation and goodwill and which may only be used to refer to the Complainant.  There is no legitimate reason for any business not connected to the Complainant to use the mark or any confusingly similar mark in connection with the supply of alcoholic beverages or otherwise, other than to trade off the fame and reputation of the Complainant’s mark.  It is inconceivable that the Respondent did not have the Complainant and its reputation in the mark in mind when “typo-squatting” and using the Domain Name (or permitting its use) to advertise third party websites through hyperlinks purporting to link to the Complainant.

(c)	The Respondent has failed to explain or justify its registration and use of the Domain Name and there is no obvious justification for it.  Accordingly, the Complainant relies upon the presumption established by the Dispute Resolution Service in DRS 00292 Chivas Brothers Limited v David William Plenderleith and subsequently in DRS 00832 Oxford Instruments Plc v Bruinder Singh Dha, that where a Respondent registers a domain name;

(i)	which is identical or similar to a name in respect of which the Complainant has rights; 
(ii)	where that name is exclusively referable to the Complainant; 
(iii)	where there is no obvious justification for the Respondent having adopted that name for the domain name; and 
(iv)	where the Respondent has come forward with no explanation for having selected the domain name 

It will ordinarily be reasonable for an Expert to infer that the Respondent registered the domain name for an abusive purpose.

(d)	Further, a number of cases before the Dispute Resolution Service have established that the misspelling of a well known name and trade mark qualifies it for consideration pursuant to the criteria set out above. 

(e)	As the Respondent owns and uses many domain names and has six DRS decisions against it, it must be well aware that registration and use of the Domain Name amounts to an Abusive Registration.  

E)	Evidence of Abusive Registration

The Complainant contends that there is overwhelming evidence that the registration of the Domain Name is an Abusive Registration and relies on the following factors which it submits fall within the indicia of Abusive Registration set out in paragraph 3 of the Policy:

(a)	Unfairly disrupting the business of the Complainant/Confusing customers.

(i)	The Respondent has been and is using the Domain Name to advertise goods and services not connected to the Complainant.  The reputation of the Complainant is such that web traffic to the Domain Name must intend and expect to find the Complainant’s website.  In registering and using the Domain Name the Respondent can have had no other purpose other than to intend that the Domain Name be confused with the Diageo mark so that the business is diverted from the Complainant.  This clearly dilutes the strength of the mark Diageo and is disruptive to the Complainant’s business by preventing prospective customers from gaining the correct information on the goods and services provided by the Complainant.

(ii)	The Respondent has registered and is using the Domain Name for the purpose of generating revenue based on the amount of click through traffic he diverts to those sites.  The Respondent is therefore profiting at the Complainant’s expense and there appears to be a high risk of confusion on the part of internet users.

(iii) 	The use by the Respondent of the Domain Name amounts to a clear case of passing off, contrary to English law.  Further, because the Complainant’s mark has a reputation in the UK the Respondent’s use of the Domain Name infringes the Complainant’s registered trade marks under section 10(3) of the Trade Marks Act 1994 because the use (in respect of any goods and services) is without due cause and takes unfair advantage of and/or is detrimental to the distinctive character or repute of the mark.

(iv)	The Respondent’s use of the Domain Name fulfils the definition of Abusive Registration as defined in paragraph 1(ii) of the Policy as it is used in a manner which takes unfair advantage of, or is unfairly detrimental to the Complainant’s rights. 

(b)	Pattern of conduct/Registration for the purpose of selling or renting for valuable consideration

(i)	Diageo is a very well known mark.  The Respondent, when registering the Domain Name, must have been well aware of the Complainant’s rights at the time of the registration.

(ii)	Below is a list of domain name registrations held the by Respondent, a large number of which correspond to well known names or trade marks in which the Respondent has no apparent rights.  It is submitted that such registration strongly indicates that the Respondent trades in domain names, including those which unfairly exploit the goodwill and reputation of other famous marks.

•	Riba.co.uk
•	Channel5tv.co.uk
•	Completeangler.co.uk
•	Inware.co.uk
•	Kissradio.co.uk
•	Theodeon.co.uk
•	Weatherspoon.co.uk
•	Thomascookdirect.co.uk
•	Berrybrothers.co.uk
•	Nottinghambuildingsociety.co.uk

Respondent

6.2	The Respondent has not responded to communications from Nominet and has not provided a Response.

7.	DISCUSSIONS AND FINDINGS
	
General

7.1	Under paragraph 2 of the Dispute Resolution Service Policy (“The Policy”) the Complainant is required to show on the balance of probabilities, that:

(i)	it has Rights in a name or mark that 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

7.2	The first question that must be answered is therefore whether the Complainant has proved on the balance of probabilities that it owns rights in a name or mark that is identical or similar to the Domain Name.

7.3	The Policy defines rights as including, but “not limited to, rights enforceable under English law”.  The Complainant has provided evidence of its rights in the distinctive and well known mark DIAGEO.  The Complainant trades worldwide using that name and uses the name DIAGEO in its domain names including diageo.co.uk, diageo.ie, diageo.de and diageo.com.

7.4	The Complainant has clearly acquired considerable goodwill and a substantial reputation in the UK and throughout the world in the name and mark DIAGEO.  The Respondent’s use of the name “diagio” differs only in the alteration of the penultimate letter ‘e’ to the letter ‘i’.  Phonetically the two words sound the same.  The difference of one letter does not change the overall character of the name and is likely to be a common misspelling of the well known brand name DIAGEO  In the circumstances I find that the Complainant has rights in the name DIAGEO which (ignoring the .co.uk suffix) is similar to the Domain Name  

Abusive Registration

7.5	Having concluded that the Complainant has rights in a name which is identical or similar to the Domain Name, it is necessary to consider whether the Domain Name constitutes an abusive registration.  An abusive registration is defined in the Policy 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 factors that may evidence the fact that a domain name is an Abusive Registration. The most relevant of these is Paragraph 3(c) of the Policy which provides that :

There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed.  This presumption can be rebutted (see paragraph 4 (c)).”

7.7	The Respondent has been found to have made an Abusive Registration in six Dispute Resolution Service cases in the last two years as follows:

Respondent	Case Number 	Domain Name	Decision	
Chao Investments Limited	DRS 04353	lurpackbreakfast.co.uk	Transfer	
Chao Investments Limited	DRS 04323	morganstanley.co.uk	Transfer	
Chao Investments Limited	DRS 04297	hotwheels.co.uk	Transfer	
Chao Investments Limited	DRS 0421	wynsors.co.uk	Transfer	
Chao Investments Limited	DRS 04253	papermailshot.co.uk	Transfer	
Chao Investments Limited	DRS 04219	jhdonald.co.uk	Transfer	
7.8	Therefore, in accordance with the provision of paragraph 3(c) of the Policy, there is a presumption of Abusive Registration against the Complainant.  This presumption may be rebutted by the Respondent making out one of the non-exhaustive list of factors set out in paragraph  4 (a) of the Policy which may demonstrate that the Domain Name is not an Abusive Registration.  In this case however, the Respondent has not filed a Response and the presumption that the Domain Name is an Abusive Registration has not been rebutted.

7.9	I therefore find, pursuant to paragraph 3(c) of the Policy, that the Domain Name in the hands of the Respondent constitutes an Abusive Registration.  

7.10	Having concluded that the Doman Name is an Abusive Registration it is not necessary to determine whether the Complainant has established whether the Respondent was guilty of an Abusive Registration for any other reason.  Suffice to say that the registration of the Domain Name appears to be a typical example of typo-squatting where a party seeks to trade off the goodwill and reputation of a well established brand.  There appears to be no legitimate reason, why the Respondent should be using as its domain name a name which, apart from one letter and ignoring the .co.uk suffix, is the same as the Complainant’s distinctive and well known mark DIAGEO.  The Respondent in failing to file a response has not provided a reason for registering the Domain Name nor has the Respondent challenged any of the Complainant’s allegations of abusive registration.

8.	DECISION

For the reasons set out above, I find that the Complainant has proved, on the balance of probabilities, that it has Rights in a name or mark which is identical or similar 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 be transferred to the Complainant.
 
Veronica M. Bailey
Date: 9 July 2007