DISPUTE RESOLUTION SERVICE

DRS 6184

Decision of Independent Expert

The Panel on Takeovers and Mergers 

and

Hi-res

1.	The Parties

Complainant:		The Panel on Takeovers and Mergers
Country:		Great Britain

Respondent:		hi-res
Country:		Israel

2.	The Domain Names

takeoverpanel.org.uk (“the .org.uk Domain Name”) and thetakeoverpanel.co.uk (“the.co.uk Domain Name”) collectively referred to as “the Domain Names”.

3.	Procedural History

The Complaint was filed with Nominet on 26 August 2008.  Nominet validated the Complaint on 27 August 2008 and notified the Respondent by post and by email, informing it at the same time that it had until 19 September 2008 to file a Response. 

The Respondent did not submit a Response.  Accordingly, Nominet notified the Respondent’s default on 22 September 2008.  The Complainant paid the requisite fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy (“the Policy”). 

On 10 October 2008 David Taylor, the undersigned (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept Nominet’s invitation to him to act as an Expert in this case and further confirmed that he knew 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.  

On 10 October 2008, the Respondent wrote an email to Nominet indicating that one of the Domain Names had expired four months ago.  The Respondent also stated that the other Domain Name could be transferred to the Complainant as it was worthless.  

On 13 October 2008, the Complainant informed Nominet that it wished to proceed to a fully reasoned decision.  A formal appointment of the Expert was made on 15 October 2008.  

4.	Factual Background

The Complainant is an independent body that was established in 1968.  In brief it supervises and regulates takeovers and mergers for companies that have their registered offices in the United Kingdom, the Channel Islands or the Isle of Man.  Its statutory functions are set out in Chapter 1 of Part 28 of the Companies Act 2006. 

The Complainant administers the City Code on Takeovers and Mergers and gives rulings on its interpretation, application and effect.  The Complainant also co-operates with the UK Financial Services Authority and other regulatory bodies in relation to its regulatory activities.  

The .org.uk Domain Name was registered on 13 January 2006 and the .co.uk Domain Name was registered on 25 June 2006.  The .co.uk Domain Name expired on 25 June 2008 although it may be renewed by the Respondent up until the date of cancellation, which is usually 90-97 days after the renewal date.  

On 30 July 2008, the Domain Names were pointing to parking sites with sponsored links to third parties’ websites.  As of the date of this decision, the .co.uk Domain Name no longer resolves to a website.  

5.	Parties’ Contentions

The Complainant

The Complainant submits that it has Rights in the “The Takeover Panel” (“the Name”) and that the Domain Names are identical or confusingly similar to the Name.

The Complainant argues that, although its full title is “The Panel on Takeovers and Mergers”, it is commonly known as by the Name, which it has apparently used since at least 1988.  The Complainant publishes many documents under the Name such as statements, consultation papers and annual reports and has submitted extensive evidence of this.  In addition, the Complainant argues that it is commonly referred to by the Name in the media.  In support of this allegation, the Complainant has submitted copies of articles which have been published in, amongst others, The Economist (2007), The Guardian (2003) and The Independent (2004).  According to the Complainant, it has invested money in developing its reputation and raising public awareness of itself and its regulatory role under the Name.  

The Complainant also states that it registered the domain name <thetakeoverpanel.org.uk> on 18 April 2000, to which it has linked its main website.  The evidence submitted with the Complaint shows that the homepage and all subsidiary webpages of this website contain the name “The Takeover Panel” at the top in a prominent typeface.  

The Complainant asserts that it has built up substantial goodwill and reputation in the Name and that as a consequence it has unregistered trade mark rights in the Name under the English law of passing off.  The Complainant states that under English law professional associations and charitable institutions have sufficient standing to sue to prevent others imitating their name.  The Complainant submits that bodies discharging public or official functions are protected by the action for passing off in so far as their activities generate goodwill, and submits two English Court judgements in support of this contention.  

The Complainant underlines that it has received statutory recognition pursuant to Chapter 1 of Part 28 of the Companies Act 2006, which is entitled “The Takeover Panel”. Part 28 designates the Complainant as the supervisory authority responsible for carrying out certain regulatory functions in relation to takeovers.  

The Complainant states that the .co.uk Domain Name is identical to the Name.  The Complainant also states that the .org.uk Domain Name is either identical or very similar (if the deletion of the prefix ‘the’ is not taken into account) to the Name.  

The Complainant further submits that there is no relationship between the Complainant and the Respondent.  The Complainant has not licensed or otherwise permitted the Respondent to use the Name or to register a domain name incorporating the Name.  

The Complainant asserts that its Rights in the Name predate the registration of the Domain Names and that the Respondent must therefore have been aware of the Complainant’s Rights in the Name when he registered the Domain Names.  

The Complainant further submits that the Domain Names in the hands of the Respondent are Abusive Registrations.   

The Complainant points out that he website linked to the .org.uk Domain Name features links that purport to relate to financial services generally, and the Code specifically.  One of the links is entitled “Rule 8.3”, which is a well known rule contained in the Code.  However, when clicking on this link or on any of the other links to financial services websites, no information regarding the Complainant or the Code is provided.  

The Complainant also submits that the website which was previously linked to the .co.uk Domain Name contained sponsored links to other pages and sites which purported to relate both to financial services and to the activities of the Complainant.  The website also contained links to other services, such as online dating and hotel reservations, as well as indirect links to adult content.  

The Complainant refers to the Nominet decision in Chivas Brothers Limited v David William Plenderleith, DRS 292, where the expert found that it would ordinarily be reasonable for an expert to infer that a respondent registered a domain name for an abusive purpose if the following circumstances were present:

(a)	the respondent has registered a domain name that is identical to a name in 	respect of which the complainant has rights;
(b)	that name is exclusively referable to the complainant;
(c)	there is no obvious justification for the respondent having adopted that name 	for the domain name; and
(d)	the respondent has come forward with no explanation for having selected 	that 	domain name.  

The Complainant submits that the Chivas Brothers test applies to both Domain Names, even though the .org.uk Domain Name is only arguably identical to the Name.

In light of the use to which the Domain Names have been put, the Complainant argues that the Respondent has been using the Domain Names in a way that is likely to confuse the public into thinking that the websites linked to the Domain Names are operated or authorised by, or otherwise connected with, the Complainant.  

Firstly, the Domain Names are identical or confusingly similar to the Name and the domain name <thetakeoverpanel.org.uk>, which is registered to and used by the Complainant in connection with the services it offers.  Secondly, the websites attached to the Domain Names contain links which purport to have a connection with the Complainant.  Furthermore the risk of confusion for the .org.uk Domain Name is elevated because the suffix ‘.org.uk’ gives the false impression that the website is somehow affiliated with an official organisation.  

In order to demonstrate that actual confusion has occurred, the Complainant submits an email exchange which was sent erroneously by a third party to an email address ending in “@thetakeoverpanel.co.uk” in 2007.  The Complainant also submits internet searches for the Domain Names which show that the Domain Names have been mistakenly used by third parties who intended to refer instead to the Complainant’s website.  

The Complainant also submits that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names that are identical or confusingly similar to well known names or trade marks in which the Respondent has no apparent rights, and that the Domain Names are part of that pattern.  

The Complainant states that a reverse WHOIS search carried out on 28 July 2008 against the Respondent’s name suggests that the Respondent has registered over 4,000 top level domain names, many of which are confusingly similar to those of well known companies or educational institutions.  The Complainant highlights, amongst others, the domain names lycosuk.com and lvcos.com as examples of domain names which are registered to the Respondent and which infringe the rights of third parties.  

In the Complainant’s opinion, the Respondent has not used or made demonstrable preparations to use the Domain Names in connection with a genuine offering of goods or services, nor has it made a legitimate, non-commercial or fair use of the Domain Names.  It is (or was) using the Domain Names to link to parking pages, which in turn link to financial services-related or adult content, including pornography (in the case of the website previously linked to the .co.uk Domain Name).  

The Complainant requests that the Domain Names be transferred to it.

The Respondent

The Respondent did not reply to the Complainant’s contentions.  

6.	Discussions and Findings

Although the Respondent has failed to submit a Response, the Nominet Dispute Resolution Service Procedure (“the Procedure”) does not provide for a default decision in favour of the Complainant. The Complainant must still prove its case to the requisite standard, see paragraph 15(b) of the Procedure.  However, an expert may draw such inferences from a party’s default as appropriate.

Under paragraph 2(a) of the Policy, the Complainant is required to demonstrate, on the balance of probabilities, that:

(i)	The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Names; and
(ii)	The Domain Names, in the hands of the Respondent, are Abusive Registrations.

Complainant’s Rights

Rights under the Policy means rights enforceable by the Complainant, whether under English law or otherwise (see paragraph 1 of the Policy), and may therefore include rights to registered marks and unregistered trade marks protected by the law of passing-off. 

Amongst other things, the Complainant has submitted press releases in which it was referred to as “The Takeover Panel”.  The Expert is therefore satisfied that the Complainant is entitled to assert unregistered trade mark rights in the name “The Takeover Panel”.  

Furthermore the Expert is satisfied that the .co.uk Domain Name is identical to the name “The Takeover Panel” and the .org.uk Domain Name is confusingly similar to the name “The Takeover Panel” (discounting the suffixes for these purposes). 

Accordingly, the Expert finds that the Complainant has Rights in respect of a name or mark which is identical or confusingly similar to the Domain Names. 

Abusive Registration

Paragraph 1 of the Policy defines an 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 has taken unfair advantage of or has been unfairly detrimental to the Complainant's Rights.

The Policy at paragraph 3 sets out a non-exhaustive list of factors which may be evidence that the Domain Names are Abusive Registrations.

Registration of the Domain Names

There is no obvious justification for the Respondent’s registration of the Domain Names and the Respondent has failed to come forward with an explanation for having selected the Domain Names.  Under such circumstances, as the Complainant points out, it will ordinarily be reasonable for an expert to infer that a respondent registered a domain name for a purpose that was abusive, see Chivas Brothers Limited v David William Plenderleith (DRS 292).  Based on the record before it the Expert so finds.

Use of the Domain Names

Because the Respondent has not explained its intention at the time of the registration of the Domain Names, the only evidence available to the Expert is the content of the websites themselves.  The website linked to the .org.uk Domain Name directs internet users to a parking site featuring sponsored links, some of which relate to the Complainant and its activities.  The website previously linked to the .co.uk Domain Name contained sponsored links to other websites which purported to relate to financial services, the activities of the Complainant and adult content.  

Although parking pages are not of themselves objectionable under paragraph 4(e) of the Policy, the Policy indicates that the nature of the Domain Names and the nature of the links shall be taken into account in deciding whether the Domain Names constitute Abusive Registrations.  The Expert finds that the Domain Names, although comprised of a combination of generic words, are inherently referable to the Complainant.  As the Complainant points out, only few other regulatory bodies carry names which are similar to the Name (for example The Irish Takeover Panel and the Takeovers Panel in Australia).  Based on the use to which the Domain Names have been put, the Expert considers that the Respondent’s aim in registering and using the Domain Names was to generate advertising income from click through traffic, and thus to profit from the Complainant’s goodwill.  

Based on the evidence submitted by the Complainant, the Expert also finds that the circumstances of paragraph 3(a)(ii) of the Policy are present and that the Respondent is using the Domain Names in a way which has confused or is likely to have confused people or businesses into believing that the Domain Names are registered to, operated or authorised by or otherwise connected with the Complainant.  Indeed, the Complainant has supplied evidence of actual confusion.

The Expert also finds that the Complainant has established 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 or trade marks in which the Respondent has no apparent rights, and the Domain Names are part of that pattern (see paragraph 3(a)(iii) of the Policy).  However, it is worth noting that only a small handful of the 4,000 or so domain names registered by the Respondent appears to be infringing.  

For completeness’ sake, the Expert notes that none of the circumstances of paragraph 4 of the Policy, which sets out factors which may be evidence that the Domain Names are not Abusive Registrations, is present. 

Accordingly, the Complainant has established that the Domain Names, in the hands of the Respondent, constitute Abusive Registrations.

7.	Decision

The Complainant has proved, on the balance of probabilities, that it has Rights in a name which is similar to the Domain Names and that the Domain Names are Abusive Registrations.  The Expert therefore directs that the Domain Names be transferred to the Complainant.

Signed David Taylor				Dated 5 November 2008