Automated Summary
Key Facts
Gumtree.com Limited, a subsidiary of eBay Inc., operates an online classified advertisements platform under the GUMTREE mark. Searl Derman registered the domain name guntree.org.uk on 9 May 2013, using it for a website offering classified ads for guns and accessories. The expert determined that 'guntree' is visually and aurally similar to 'gumtree', creating confusion. The domain was transferred to the Complainant on 26 September 2017 due to abusive registration.
Issues
- The issue of whether the Complainant holds valid and enforceable rights in the GUMTREE mark, which is similar to the disputed domain name guntree.org.uk, under the Nominet Dispute Resolution Service Policy.
- The determination of whether the domain name guntree.org.uk was registered or used in a manner that takes unfair advantage of or is detrimental to the Complainant's rights in the GUMTREE mark, as per the Policy's definition of abusive registration.
Holdings
The Expert found that the Complainant has rights in a similar mark and that the Domain Name constitutes an abusive registration. The Domain Name is to be transferred to the Complainant.
Remedies
The Expert directs that the Domain Name (guntree.org.uk) be transferred to the Complainant, Gumtree.com Limited, as the primary remedy for the Abusive Registration.
Legal Principles
The expert applied the burden of proof to determine that the Complainant satisfied the requirements under the Nominet Dispute Resolution Service Policy (DRS Policy) for (1) establishing rights in a similar mark ('GUMTREE' vs. 'guntree') and (2) proving the Domain Name constitutes an abusive registration. The analysis focused on similarity of the terms, likelihood of confusion, and the Respondent's lack of credible explanation for the registration.
Precedent Name
- Experts' Overview Version 2
- HRworks GmbH v. Garth Piesse
Cited Statute
Nominet's Dispute Resolution Service Policy Version 4
Judge Name
Andrew D S Lothian
Passage Text
- In the absence of a more credible explanation, the Expert considers that the selection of the 'guntree' term for substantively the same use as the already demonstrably popular use of the GUMTREE mark in connection with classified advertising is simply too much of a coincidence to have been the result of an unconnected choice based on 'gun' and 'tree'.
- The Expert finds that the Complainant has proved that it has Rights in 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 therefore directs that the Domain Name be transferred to the Complainant.