NOMINET DISPUTE RESOLUTION SERVICE

DRS 05514

Decision of Independent Expert

Tarmac Limited

and

Dariusz Herman

1.	Parties:

Complainant:		Tarmac Ltd
Country:		GB

Respondent:		Dariusz Herman
Country:		DE

2.	Domain Name:

tarmacterrorist.co.uk

3.	Procedural Background:

The Complaint was entered into the Nominet system on 5 March 2008 and was validated on 11 March 2008.  On 12 March 2008 Nominet wrote to the Respondent advising him that the Complainant had invoked Nominet’s Dispute Resolution Service to complain about his registration of tarmacterrorist.co.uk and that he had 15 days to respond.  No response was received within the 15 day time period or at all.  Nominet therefore wrote to the Complainant on 8 April 2008 inviting it to pay the fee to obtain an independent Expert’s decision under Nominet’s Dispute Resolution Service Policy (the ‘Policy’).  The fee was duly paid on 11 April 2008 and Jon Lang was appointed as the independent Expert with effect from 18 April 2008.

4.	Outstanding Formal/Procedural Issues

The Respondent has not responded to the Complaint within the time period set by paragraph 5 of Nominet’s Dispute Resolution Service Procedure (the ‘Procedure’) or at all, despite the Respondent having been properly notified of the Complaint.  Paragraph 15.b. of the Procedure enables the Expert, absent exceptional circumstances, to proceed to give a Decision despite the default of a party.  Paragraph 15.c. enables an Expert, again absent exceptional circumstances, to draw such inferences as are appropriate from a party’s non-compliance. 

5.	The Facts

Given the documentary material submitted on behalf of the Complainant with its Complaint and the absence of any contrary (or indeed any) evidence from the Respondent, the Expert accepts as facts those represented as such by the Complainant.  A summary is set out below.

The Complainant was incorporated in England and Wales on 7 May 1948 and is a wholly owned subsidiary of Anglo American PLC, a publicly traded company.  The Complainant, as an organisation, is over 100 years old.  It was originally known as TarMacadam Syndicate Ltd, changing its name to Tarmac Ltd on 26 May 1905.  The Complainant provides a variety of goods and services such as building aggregates, concrete, asphalt, mortar, precast concrete products, renders, repair and maintenance, screeds, thin joints systems, access roads to a variety of sectors such as agriculture, environment, health, housing, industrial, ports and harbours, rail, road, sports and leisure and utilities.  As at 2006, within the UK, the Complainant was the number one producer of aggregates and asphalt and a leading producer of ready-mixed concrete, mortar and construction materials.  The Complainant operates in the United Kingdom, continental Europe and the Middle East and is leading a number of prestigious projects including the resurfacing of parts of England’s M1 motorway.  Worldwide it employs over 12,500 people and has 521 business units.

The Complainant is the registered proprietor of over 20 UK and Community trade marks for the word mark TARMAC for a wide range of goods and services. The TARMAC mark has been used since 1903.  
The Complanaint has been the registered proprietor of the domain name www.tarmac.co.uk since prior to August 2006.  

The Respondent is an individual residing in Germany and is the registered proprietor of tarmacterrorist.co.uk.  The website to which the Domain Name resolves provides the following services: ‘Adult Dating; Webcam Chat; XXX Movies; Adult Friend Finder; Beauty model; Tarmac terrorist; Adult; Porn; Free Sex; Erotic Pictures; Sex Cams; Amateur; XXX; Gay Dating’.  The website has a number of sponsored links for webcams, pornographic films and pornographic pictures which include: ‘Free Webcam Chat Start Chatting with Naughty Adult Tons of Cam Girls & Sexy couples’, and similar.

The website also contains a number of sponsored links for companies providing construction services (sometimes under the TARMAC mark without consent from the Complainant): ‘Tarmac road repair: HAPAS approved permanent joint-free road, footpath & carpark repair www.asiplc.com … Company in Hull Looking for tarmac? Visit Sangwin Surfacing thomsonlocal.com/sangwinsurfacing … Tarmac – Roads and Drives Glasgow company with over 30 years experience. Call 0141 881 8434 www.weirs.co.uk’. 

Moreover, the website states ‘Buy this Domain: The domain tarmacterrorist.co.uk may be for sale by its owner!’.

The correspondence submitted to Nominet demonstrates that the Complainant has sought to enter into a dialogue with the Respondent in relation to his registration, but without success.  

6.	The Parties’ Contentions

The Complainant

•	The Complainant has significant reputation and goodwill in the TARMAC brand

•	The trade mark TARMAC is the dominant part of the Respondent's Domain Name which is therefore similar to the Complainant’s registered trade mark

•	The use of the Complainant’s trade mark in the Domain Name is an abusive registration in that it ‘... has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights’

o	the Domain Name makes use of the Complainant’s trade mark in conjunction with the word “terrorist”, such word having negative connotations and therefore such use is likely to tarnish the substantial good reputation that the Complainant has in its trade mark
o	The association of the Complainant’s trade mark with an illegal activity such as terrorism is unfairly detrimental to and tarnishes the substantial good reputation that the Complainant has in its trade mark
o	The website to which the Domain Name resolves directs parties to pornographic websites which is unfairly detrimental to and tarnishes the substantial good reputation of the trade mark

•	The Respondent has no rights or legitimate interest in the Domain Name, given that

o	The Complainant has not licensed or otherwise permitted the Respondent to use any of its TARMAC trade marks, nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks
o	There is no relationship between the Complainant and the Respondent that would give rise to any such licence or permission
o	The Respondent is not making a legitimate non-commercial or fair use of the Domain Name 
o	The Respondent is not known by the name TARMAC or anything similar to or derived therefrom

•	The website to which the Domain Name resolves advertises construction services by third parties under the TARMAC mark 

o	Persons searching for “Tarmac” may be diverted to the Domain Name and, therefore, diverted to third party suppliers of construction services 
o	The Domain Name may, therefore, unfairly disrupt the business of the Complainant
o	The Domain Name is similar to both the Complainant’s domain name www.tarmac.co.uk and its TARMAC mark and may therefore confuse people into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

•	In summary, the Complainant contends that the Domain Name should be transferred.

The Respondent

The Respondent did not respond.

7.	Discussion and Findings

In order to succeed in a complaint under the Policy, a Complainant is required to prove, on a balance of probabilities and regardless of any failure of the Respondent to respond to a complaint, 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 noted earlier, a Respondent’s failure to respond does allow the Expert to draw adverse inferences, absent exceptional circumstances.

Complainant’s rights

Having reviewed the documentary material submitted with the Complaint, the Expert is satisfied that the Complainant has rights in the mark TARMAC which, being incorporated in its entirety into the Domain Name, is similar to the Domain Name.  It is significant in the Expert’s view that the two constituent words of the Domain Name are ordered such that the word ‘tarmac’ precedes ‘terrorist’ and can therefore be regarded as the dominant part of the Domain Name.  The first and second level suffixes of the Domain Name have been ignored in analysing similarity.

Abusive Registration

Paragraph 1 of the Policy defines Abusive Registration as a Domain Name which was either ‘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 Complaint’s Rights or ii) which has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complaint’s Rights;’.

A non-exhaustive list of factors which may indicate that the Domain Name is an Abusive Registration is set out in paragraph 3 of the Policy.   A non-exhaustive list of countervailing factors is set out in paragraph 4 of the Policy.

The factors listed in paragraph 3 include where there are ‘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 Complainant expressly alleges that these circumstances (as well as others pointing to an abusive registration), exist.  

The Complainant also refers to an earlier decision under the Policy, Tarmac Limited v Andrew Etches, DRS 00177, which concerned the Domain Name tarmacvandal.co.uk.  In that decision, the Expert found that use of the Complainant’s mark in conjunction with a word commonly used to describe a person who causes deliberate damage to property, is a use that ‘is likely to tarnish the substantial good reputation the Complainant has in their trade mark’.   The Expert went on to say that the ‘association of the Complainant’s trade mark with an illegal activity such as vandalism is clearly unfairly detrimental to the Complainant’s rights’.  The Complainant runs a similar argument in this Complaint.  

Abusive Registration often arises from the use of a name of a well known company or trade mark in a domain name.  Whilst there can be innocent reasons for a third party using a complainant’s name or mark in a domain name, the Respondent has not come forward and advanced any in these proceedings.  On the contrary, there appears to be a variety of uses that can readily be inferred on the part of the Respondent, all of which rightly give the Complainant cause for concern.  

The Domain Name resolves to a site predominately ‘adult’ in nature but, rather incongruously, containing links to other sites (unconnected with the Complainant) providing or advertising similar services to those offered by the Complainant e.g. tarmac road repair.  This in itself takes unfair advantage of the Complainant’s rights, quite apart from any confusion in the minds of internet users which could arise.  Given the predominantly adult nature of the site to which the Domain Name resolves, the Respondent’s use of the Domain Name is also unfairly detrimental to the Complainant’s Rights, as is the conjunction of the Complainant’s mark with the word ‘terrorist’ in the Domain Name itself.  

Could any of the factors present in paragraph 4 of the Policy be present to indicate that the registration is not in fact abusive, or indeed could any other factors so indicate?  None have been advanced and it does seem extremely unlikely that there could be any innocent explanation as to why the Respondent chose to include the Complainant’s mark in the Domain Name.  Accordingly the Expert finds, on a balance of probabilities, that the Respondent registered the Domain Name for an abusive purpose.

8.	Conclusion

Having found that the Complainant has rights in respect of a name or 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 determines that the Domain Name, tarmacterrorist.co.uk, should be transferred to the Complainant.

Signed	Jon Lang
Dated 1st May 2008