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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Jupiter Investment Management Group Ltd v Domain Administration Ltd [2008] DRS 05264 (22 January 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5264.html Cite as: [2008] DRS 05264, [2008] DRS 5264 |
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Complainant: Jupiter Investment Management Group Ltd
Country: GB
Represented by: Nabarro, Solicitors, London, GB
Respondent: Domain Administration Limited
Country: NZ
jupitoronline.co.uk ("the Domain Name")
The Complaint was received by Nominet electronically on 21 November, 2007 and in hardcopy on 22 November, 2007. Nominet validated the complaint and informed the Respondent, (at the registrant's recorded address in New Zealand) on 26 November, 2007, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 18 December, 2007) to submit a Response. No substantive Response or other reply of any sort was received. Nominet informed the Complainant accordingly on 19 December, 2007, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly received by Nominet on 3 January, 2008.
Nominet invited the undersigned, Keith Gymer ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and 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, Nominet duly appointed the undersigned as Expert as of 10 January, 2008.
None.
The Complainant, Jupiter Investment Management Group Limited, is the parent company of one of the UK's leading fund management groups ("Jupiter"). It was incorporated in 1964. Jupiter and its predecessor companies have carried on business under names including the word JUPITER since 1985. Group companies Jupiter Asset Management Limited and Jupiter Unit Trust Managers Limited are authorised and regulated by the Financial Services Authority
The Complainant is also the proprietor of a number of registered trade marks including: -
a) Community trade mark No. 641712 JUPITER registered as of 25 September 1997 in Classes 35 and 36 in respect of a range of services including asset management, fund management and investment trust management; and
b) UK trade mark No. 2449502 JUPITER registered as of 14 March 2007 in Classes 35 and 36 in respect of similar services.
The Respondent, Domain Administration Limited, is a company incorporated in New Zealand. From the WHOIS records, the Domain Name jupitoronline.co.uk was first registered on 14 October, 2004. The record was updated as of 15 October, 2007. The Respondent is the current registrant of record.
Complainant:
The Complainant has asserted that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).
The Complainant made various supporting submissions, edited extracts from which are reproduced here:
The Complainant has Rights (as defined in the Nominet Dispute Resolution Policy (the"Policy")) in the name JUPITER.
As a result of its carrying on business under the JUPITER name for over 20 years, the Complainant has established a very substantial goodwill and reputation in the name JUPITER. Jupiter currently manages more than £19 billion worth of assets, spread across a range of UK and offshore funds and investment trusts. (A copy of the unaudited accounts of the Complainant for the six-month period to June 2007, from which it appears that as at 15 June 2007 it had net assets of £192 million, was exhibited to the Complaint.)
The Complainant is the proprietor of a number of registered trade marks for the trade mark JUPITER. (Details of these trade mark registrations are as noted above.)
The Complainant operates a number of websites including www.jupiteronline.co.uk and www.jupiterassetmanagement.co.uk.
The Complainant also has Rights in the name JUPITERONLINE. Its group company, Jupiter Asset Management Limited, registered the domain name
Leaving aside the generic suffix ".co.uk", the contested domain name
In the circumstances, the Complainant has clearly established Rights in names that are similar to the Domain Name.
The Domain Name in the hands of the respondent is an Abusive Registration.
As appears from the table published by Nominet on its website, the Respondent has been found to have made an Abusive Registration in 10 Dispute Resolution Service cases in the previous two years. These are as follows:
DRS 04437 healthcarecomission.org.uk
DRS 04389 electoralcommision.co.uk
DRS 04415 robertdyass.co.uk
DRS 04344 michalepage.co.uk
DRS 04298 hotwheel.co.uk
DRS 04293 fisherpice.co.uk
DRS 04292 learndirec.co.uklerandirect.co.uk
DRS 04245 myt-mobile.co.uk
DRS 04229 ulsterbankanytime.co.uk
DRS 04646 hotelconect.co.uk
Accordingly, pursuant to paragraph 3c of the Policy there is a presumption of Abusive Registration in this case.
The listed cases in which the Respondent was found to have made an Abusive Registration include a number of cases where the domain name comprised misspellings of well-known names including
Domain name panelists have also determined in 12 cases under the ICANN Uniform Dispute Resolution Policy that the Respondent has made bad faith registrations of domain names:
D2007-1332 ebm-pabst.com
D2007-1026 eldersrealestate.com
D2007-0950 amercanfunds.com
D2007-0883 scotiarewards.com
D2007-0647 ezrentacar.com
D2007-0093 icebergclothing.com
D2006-1490 nationwid.com
D2006-1259 compasbank.com
D2006-1207 fifth-third.com
D2006-1173 gettimages.com
D2006-1147 hibbettssports.com
D2006-0921 americandiabetesassociation.com
The Domain Name resolves to a webpage that comprises a portal of links to other websites generated by automated Internet searches. The home page includes a link named "Unit trust". Clicking on this link generates five sponsored links not only to websites providing information on unit trusts but also to competitors of the Complainant including Standard Life. The homepage also includes a "related search" named "Income bond" which in turn generates sponsored links to competitors of the complainant including Barclays International, Scottish Widows and Aberdeen Asset Management. (Copies of these various web pages were annexed to the Complaint.)
It is apparent that the Domain Name and the website to which it resolves have been established in order to take advantage of Internet users who mistype the address of the Complainant's website. The Respondent's intention is that when users arrive at www.jupitoronline.co.uk they will in turn click on the links to a range of other websites, including the competitors of the Complainant, thus generating income for the Respondent from click-through advertising payments. In this way, the Respondent is taking advantage of the name and reputation of the Complainant.
Furthermore, it is clear from the other cases in which the Respondent has been found to have made an Abusive Registration that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well-known names in which the Respondent has no apparent rights. The Domain Name is a part of that pattern. This amounts to a factor included in paragraph 3a(iii) of the Policy that constitutes evidence that the Domain Name is an Abusive Registration.
In addition, Internet users who believe they have correctly typed the Complainant's web site address are bound, at least initially, to believe that the Domain Name is registered to, authorised or operated by the Complainant. This is further evidence of Abusive Registration (paragraph 3a(ii) of the Policy).
The Respondent can have no conceivable legitimate rights in JUPITORONLINE. The Domain Name was registered and has been used in a manner, which takes unfair advantage of and is detrimental to the Complainant's Rights.
The Complainant seeks the transfer of the Domain Name jupitoronline.co.uk to it.
Respondent:
The Respondent made no Response to, and raised no challenge to, any of the facts and claims asserted by the Complainant.
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of 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 as defined in Paragraph 1 of the Policy.
Complainant's Rights
The Complainant in this case has asserted that it has rights (1) in the name JUPITER, and (2) in JUPITERONLINE and that each of these is identical or similar to the Domain Name jupitoronline.co.uk.
The Complainant has provided evidence of trade mark registrations for its JUPITER mark, and of registration and use of the domain name JUPITERONLINE.co.uk by a related group company, predating the registration of the Domain Name.
The Expert is satisfied that the Complainant has relevant registered trade mark rights in JUPITER and has at least unregistered common law rights in JUPITERONLINE. The distinctive element of the Domain Name "jupitoronline.co.uk", is closely similar to the Complainant's mark and name, differing only by a minor spelling variation, which is characteristic of a so-called "typosquatting" infringement. Consequently, the Expert concludes that the Complainant does have Rights in each case in respect of a name or mark, which is similar to the Domain Name.
Abusive Registration
The Complainant also has to show that the Domain Name is 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 are set out in Paragraph 3a of the Policy. Potentially applicable in the present case in particular are the examples in Paragraph 3a(ii), and (iii):
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."
iii 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;
However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.
The Complainant has also asserted that the Respondent, having been previously cited as the losing Respondent in at least three previous DRS Decisions within the last two years, is subject to the presumption under Paragraph 3(c) of the Policy.
Paragraph 3(c) of the Policy states 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))." [Paragraph 4(c) puts the onus on the Respondent to prove that the registration of the Domain Name is not an Abusive Registration.].
The Expert has confirmed that, as asserted by the Complainant at the time of the Complaint, Domain Administration Limited had been named as the losing Respondent in at least ten recent DRS cases in all of which the relevant domain names were held to have been Abusive Registrations. The factors in Paragraph 3a(iii) are effectively demonstrated, and the Expert also accepts that Paragraph 3(c) of the Policy is plainly applicable, so that the Domain Name at issue in the present case is presumed to be an Abusive Registration in the absence of any rebuttal by the Respondent.
Even if the presumption in Paragraph 3(c) were not to be available, the Expert is satisfied that the evidence demonstrates that the factors in Paragraph 3a(ii) apply, in that the Domain Name has been used to redirect web users seeking the Complainant's business to websites with links, which, if clicked through, would generate income for the Respondent, with no reference to, and even in competition with, the Complainant or its business.
The Respondent has offered no defence for its adoption and use of the Domain Name in this fashion. As is characteristic of a so-called "domainer", with no respect for the rights of others, the Respondent has simply made parasitic use of the Domain Name as a deliberately chosen, typographically-close variant of the Complainant's mark and name, to skim off a profit from the goodwill and reputation established by the Complainant.
In the Expert's view, the evidence provided by the Complainant would be quite sufficient to substantiate the Complainant's assertion that the Domain Name is an Abusive Registration for the purposes of the Policy.
For the reasons given above, the Expert concludes that the Domain Name was originally registered or otherwise acquired, and has been used by the Respondent, in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and that it is an Abusive Registration for the purposes of the Policy.
Having concluded that the Complainant has Rights in respect of a name and mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert orders that the Domain Name, jupitoronline.co.uk, should be transferred to the Complainant.
January 22, 2008
Keith Gymer Date