Tesco Personal Finance Ltd -v- Gethin Nevett
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Tesco Personal Finance Ltd -v- Gethin Nevett

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Tesco Personal Finance Ltd -v- Gethin Nevett Tesco Personal Finance Ltd -v- Gethin Nevett Document Transcript

  • Tesco Personal Finance Ltd -v- Gethin Nevett Nominet UK Dispute Resolution Service DRS 03962 Decision of Independent Expert 1. PARTIES: Complainant: Tesco Personal Finance Ltd Address: Business House F, Gogaburn Post Office Box 1000 Edinburgh Postcode: EH12 1HQ Country: GB Contact Details: Contact: Mr James Thomas Business Name: Parker Poe Adams & Bernstein LLP Address: 150 Fayetteville Street Mall Suite 1400 Post Office Box 389 Raleigh, NC Postcode: 27602 Country: US Respondent: Mr Gethin Nevett Address: 58 Market Street Holyhead Postcode: LL65 1UN Country: GB 2. DISPUTED DOMAIN NAME: tescoestateagents.co.uk (the “Domain Name”) 3. PROCEDURAL BACKGROUND: 3.1 On 1 September 2006 the dispute was entered into the Nominet Dispute Resolution Service (DRS). Hard copies of the Complaint were received in full by Nominet on 4 September 2006. The Complaint was validated by Nominet on 5 September 2006 and a copy of the Complaint was sent to the Respondent the same day. Nominet NOM1-001 Blank Decision
  • 3.2 No Response was filed so the dispute did not go to informal mediation. 3.3 On the 5 October 2006 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 in to question her independence and/or impartiality, was appointed 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 5(a) of the DRS Procedure for the conduct of proceedings under the Dispute Resolution Service (“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 complainant”. 4.3 Nominet appears to have used all the available contact details to try to bring the Complaint to the Respondent’s attention. There do not appear to be any exceptional circumstances involved and in accordance with Paragraph 15(b) of the Procedure a Decision will be made on the Complaint notwithstanding the absence of a Response. 5. THE FACTS: 5.1 The Domain Name tescoestateagents.co.uk was registered to the Respondent on 4th August 2005. 5.2 The Complainant was incorporated on 5 March 1997 (company number SC173199). It operates as the financial services arm of the supermarket chain Tesco Stores Ltd through a joint venture with The Royal Bank of Scotland Group plc. The Complainant provides internet, supermarket and Nominet NOM1-001 Blank Decision
  • telephone banking and personal financial services including insurance, mortgages, loans and savings. 5.3 The Complainant is licensed is use the trade mark “TESCO” in connection with its financial trading business by Tesco Stores Limited, the registered owner of that mark. 5.4 The Complainant owns the UK trade mark registration for TESCO PERSONAL FINANCE in connection with a wide range of financial services including real estate and mortgages. 6. THE PARTIES' CONTENTIONS: Complainant In summary the Complainant contends that: 6.1 The Domain Name in dispute is identical or similar to a name or mark in which it has Rights; and the Domain Name in the hands of the Respondent is an Abusive Registration. 6.2 The Complainant has rights in the marks TESCO” and “TESCO PERSONAL FINANCE” which are similar to the Domain Name. 6.3 The Complainant, through The Royal Bank of Scotland Group plc owns and uses the domain name tescofinance.com (registered 3 March 2000) in connection with the website at www.tescofinance.com where it offers various personal financial services, including home loan and mortgage services. 6.4 The Domain Name merely combines the most distinctive portion of Complainant’s marks, “TESCO” with the generic term “estate agents”. These generic words are descriptive of services closely related to those that Complainant provides and conveys the impression that it the Domain Name is sponsored by, or associated with, Complainant. Nominet NOM1-001 Blank Decision View slide
  • 6.5 The only distinctive part of the Domain Name is the name “TESCO” which when used in conjunction with the generic term “estate agents”, is indicative of, and implies a close association with, Complainant’s home mortgage and home loan services businesses. 6.6 The Domain Name targeted Internet users who, knowing that Complainant is engaged in the business of offering personal financial services, including home mortgage services might enter the name “TESCO” and instead find themselves at Respondent’s web page, which contains a directory to the websites of competitors of the Complainant. 6.7 Respondent’s Domain Name was registered on 4 August 2005, long after Complainant acquired rights to the “TESCO” and “TESCO PERSONAL FINANCE” names and marks. 6.8 The Domain Name in the hands of the Respondent is an abusive registration because it was registered and has been used in a manner that took unfair advantage of and was unfairly detrimental to Complainants rights. In particular: (i) The Respondent is using the Domain Name in a way that either has confused people into believing, or is highly likely to confuse people into believing, that the Domain Name is registered to Complainant, is operated or authorized by Complainant, or otherwise is connected with Complainant. The Domain Name simply combines the mark “TESCO” with the generic term “estate agents”, and thus strongly suggests that it corresponds to a website covering estate agent services provided by the Complainant. An Internet user intending to access Complainant’s website could find himself at Respondent’s website without realizing it is not Complainant’s official website and because the content of Respondent’s website features products and services that compete with those offered by the Complainant the user would not necessarily be alerted to the error. Further, even if a user realized that he was not at Complainant’s official website, he still could be confused into believing that the Complainant was in some way associated with the Domain Name. Indeed, creating such confusion likely was Respondent’s precise goal, as Respondent is trying Nominet NOM1-001 Blank Decision View slide
  • to capitalize on his unauthorized use of the TESCO marks for his own commercial gain. (ii) The Respondent has registered the Domain Name for the purpose of unfairly disrupting Complainant’s business by targeting Internet users seeking access to Complainant’s services. Such users are taken to Respondent’s website, which contains advertisements for, and links to, Complainant’s competitors and so-called “sponsored search results” made up of links to the websites of the Complainant’s competitors offering, among other things: “Loans,” “Credit Cards,” “Mortgages,” “Car Insurance,” “Travel Insurance,” “Home Insurance,” and “Life Insurance” which are the very services that Complainant promotes and provides under the “TESCO” and “TESCO PERSONAL FINANCE” marks. Such use of the Domain Name unfairly disrupts the Complainant’s business by improperly directing its current and prospective customers to the Complainant’s competitors, thus causing the Complainant to suffer loss of business and revenue. (iii) The Domain Name is an abusive registration because Respondent is using it to benefit commercially from his unauthorized and illegitimate use of Complainant’s marks and associated goodwill and thus is using the Domain Names in a manner that takes unfair advantage of and is unfairly detrimental to Complainant’s rights. Specifically, Respondent’s goal in redirecting Internet users searching for Complainant’s products and services, to the websites of Complainant’s competitors is presumably to generate “click-through” revenues based on the amount of traffic he diverts to those sites. The Respondent’s attempt to profit financially from his unauthorized use of Complainant’s marks is commercially exploitive of Complainant’s names and marks and evidences an abusive registration under the DRS Policy. Respondent 6.2 The Respondent has not submitted a Response. 7. DISCUSSIONS AND FINDINGS Nominet NOM1-001 Blank Decision
  • Burden of Proof 7.1 Paragraph 2 of the Policy requires that the Complainant prove 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 (as those capitalised terms are defined in paragraph 1 of the Policy) Rights 7.2 The Complainant is the owner of the United Kingdom trade mark registration for the mark “TESCO PERSONAL FINANCE“, registered on 23 July 1999 and is licensed to use the “TESCO” mark by the owner of that mark, Tesco Stores Limited. The Complainant includes the name “TESCO” in its corporate name. 7.3 In addition, the Complainant uses the domain name <tescofinance.com> (in conjunction with The Royal Bank of Scotland plc to whom that domain name is registered) in connection with its website at www.tescofinance.com where the Complainant offers personal financial services including home loan and mortgages services. 7.4 The Domain Name simply combines the distinctive word “TESCO” with the descriptive term “estate agents” which is closely related to the home loan and mortgage services offered by the Complainant. The dominant element of the Domain Name is the mark “TESCO”, in which the Complainant has rights. 7.5 The requirement to demonstrate rights in a name or mark which is similar to the Domain Name is not a particularly high threshold test. The Complainant has rights in the mark “TESCO” which, excluding the descriptive term “estate agents” and the .co.uk suffix, is the same as the Nominet NOM1-001 Blank Decision
  • Domain Name. Accordingly, I find that the Complainant has rights in the name or mark which is similar to the Domain Name and that the requirements of paragraph 2ai of the Policy are satisfied. Abusive Registration 7.6 Paragraph 1 of the Policy defines an Abusive Registration as a domain name which: 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 Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence of an Abusive Registration. The most relevant are these are set out in paragraphs 3 a i C and 3a ii of the Policy. 7.4 The Complainant has a significant personal finance business including home loans and mortgages and has built up substantial goodwill and reputation in the marks “TESCO” and TESCO PERSONAL FINANCE LIMITED” used in connection with its business. The mark “TESCO” is the distinctive feature of the Domain Name which resolves to a website providing information about mortgages, estate agents and various personal financial services with links to some of the Complainant’s competitors. It is clear that Respondent has intended to benefit from attracting additional traffic to its website by those seeking the Complainant’s services and the Complainant’s website. It appears on the balance of probabilities that the Domain Name was registered primarily for the purpose of unfairly disrupting the business of the Complainant (DRS Policy 3 a i). 7.5 The Domain Name simply combines the mark “TESCO” with the descriptive term “estate agents”. There appears to be no legitimate reason why Respondent should be using the mark “TESCO” in connection Nominet NOM1-001 Blank Decision
  • with a website featuring links to the Complainant’s competitors. Whilst the Complainant has not provided any evidence that people have been confused into believing that the Domain Name is registered to, or operated or authorised by, or otherwise connected with the Complainant, there is clear potential for such confusion. The mark “TESCO” is the dominant element of the Domain Name and the content of the website to which the Domain Name resolves offers services similar to those of the Complainant, and so would not alert a visitor to the site that it was not owned or authorised by the Complainant. The likelihood is that the Respondent is using the Domain Name in a way which has confused people and businesses into believing that the Domain Name is registered to, or operated or authorised or otherwise connected with the Complainant (DRS Policy 3a ii). 7.6 The Respondent has filed no Response to the Complaint’s allegations that that the Domain Name was (a) registered and being used in a manner which confused people into believing that the Domain Name is registered to or operated or authorised by the Complainant; (b) is disrupting the Complainant’s business and (c) is being used by the Respondent to benefit commercially from the unauthorised use of the Complainant’s marks and associated goodwill so taking unfair advantage of the Complainant’s rights. There appears no legitimate reason (and the Respondent has not asserted one) why the Respondent has registered the Domain Name which, excluding the generic term “estate agents” and the .co.uk suffix, is identical to the mark “TESCO” in which the Complainant has rights. The most likely reason why the Respondent is using the Domain Name which incorporates the mark “TESCO” is to benefit financially by generating “click though” revenues based on the amount of traffic to the site. 7.7 Accordingly I find, on the balance of probabilities, that the Domain Name in the hands of the Respondent is an abusive registration and that the requirements of paragraph 2 (ii) of the Policy have been met. 8. DECISION Nominet NOM1-001 Blank Decision
  • For the reasons set out above, the Expert finds that the Complainant has rights in the name or mark which are 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: 18 October 2006 Nominet NOM1-001 Blank Decision