NOMINET UK DISPUTE RESOLUTION SERVICE

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					                   UK DISPUTE RESOLUTION SERVICE

                                 DRS 00583


                     DECISION OF APPEAL PANEL

1.   Parties

     Complainant          :             Thomas Cook UK Limited

     Address              :             Thomas Cook Business Park
                                        Unit 17
                                        Coningsby Road
                                        Peterborough
     Postcode             :             PE3 8SB
     Country              :             UK

     Respondent           :             Whitley Bay Uncovered

     Address              :             58 Percy Road
                                        Whitley Bay
                                        Tyne and Wear
     Postcode             :             NE26 1AY
     Country              :             UK

2.   Domain Names

     club1830uncovered.co.uk and club18-30uncovered.co.uk

3.   Procedural Background

     The Complaint was received by Nominet on 2nd September 2002. Nominet
     validated the Complaint and sent a copy to the Respondent on 5th September
     2002, informing the Respondent that it had until 1st October 2002 to lodge a
     Response.

     No Response was received. Therefore Mediation was not possible. On 7th
     October 2002 the Complainant paid Nominet the required fee for a decision of
     an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution
     Service Policy (“the Policy”).

     On 7th October 2002 Nominet invited David Blunt (“the Expert”) to provide a
     Decision on this case. 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 Expert with effect from 14th October
     2002.
     The Expert’s Decision, which rejected the Complaint, was issued on 25th
     October 2002. A Notice of Appeal was received by Nominet from the
     Complainant’s solicitors on 4th November 2002. The undersigned panelists
     were invited by Nominet to form the Panel of Appeal (“the Panel”), and all
     three have confirmed their independence and acceptance of the appointment.
     Nominet duly appointed the Panel with effect from 15th November 2002.

     On 18th November 2002 the Panel, through Nominet, invited the Respondent
     to comment upon the Complainant’s Appeal, although the Respondent did not
     respond to the original Complaint. Comments were requested by 27th
     November 2002. At the Panel’s request, Nominet sent that communication
     not only to the contact details given to Nominet, but also to another e-mail
     address in Spain which had been given by the Respondent to the Complainant
     in earlier correspondence.

     No response has been received from the Respondent.

4.   Introduction

     The case concerns the Domain Names club1830uncovered.co.uk and club18-
     30uncovered.co.uk. Both Domain Names were registered on 31st January
     2001. The Domain Names were registered on behalf of the Respondent by
     Firevision Limited, an Internet Service Provider. The Domain Names both
     currently link to Firevision’s Home Page and there is no suggestion that the
     Domain Names have been actively used by the Respondent in any way since
     registration.

     On 27th April 2001 solicitors on behalf of the Complainant wrote to the
     Respondent, Whitley Bay Uncovered. That letter cited a list of registered
     trade marks owned by the Complainant being CLUB18-30, in a variety of
     jurisdictions, and pointed out that the Complainant traded from a website at
     www.club18-30.co.uk. The letter claimed that the Domain Names, and the
     further domain names club1830uncovered.com and club18-30uncovered.com
     owned by the Respondent must have been registered and were being used in
     bad faith. The letter claimed that the link to firevision.net was likely to result
     in members of the public initially being confused believing that the website at
     the Domain Names is in some way associated with the Complainant (contrary
     to the fact), and an infringement of the Complainant’s rights. The letter
     invited the Respondent to transfer the Domain Names to the Complainant, and
     sought undertakings within 14 days.

     In response, Zara Waterston of the Respondent sent an e-mail to the
     Complainant’s solicitors on 21st May 2001. The letter indicated that the
     Respondent was slightly confused by the requests in the Complainant’s
     solicitors’ letter. It pointed out that “in no way were these names purchased:

     1.     To make any attempts to sell them to your clients or a third party.

     2.     To disrupt your client’s business.



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3.     To use any of your client’s trade marks.

4.     To retail holidays.

5.     To confuse visitors to our site that we are Club18-30Holidays”.

The e-mail went on to claim that the Respondent had “a legitimate use for the
Domain Names we have purchased and our plans are honourable and
legitimate. As you are probably aware we operate another highly successful
website that uncovers people out clubbing in the party town of Whitley Bay.
Our plans for club 18-30 uncovered are to uncover worldwide the night life
antics of the 18 to 30 year old market whilst out clubbing. We do not have
any plans to emulate your client’s website neither do we plan to sell holidays
on club 18-30 uncovered”.

The e-mail further claimed that the Respondent had already invested time and
money into setting club 18-30 uncovered into motion, and sought “correct
information regarding the legalities of this issue in question” from the
Complainant’s solicitors.

The Complainant’s solicitors’ response by e-mail of 29th May 2001 declined
to give advice, claimed that the use by the Respondent of the name CLUB18-
30 constituted infringement of the Complainant’s trade marks, and repeated a
request for undertakings (this time by 5th June 2001).

No further response was received at that time from the Respondent. The
Complainant’s solicitors repeated their demand for transfer of the Domain
Names by letter dated 6th August 2001, and for the undertakings requested, but
offered “to pay your reasonable transfer costs to a maximum of £200 on
completion of the transfers”. The letter referred not only to the Domain
Names, but also to the .com domain names referred to above.

The Respondent replied by e-mail on 23rd August 2001. It repeated that the
intentions of the Respondent “have been wholly honourable”, and that the
Domain Names lie dormant “until this matter is appropriately dealt with”. In
response to the Complainant’s offer of £200, the Respondent indicated that
“this in no way would cover the time and expense that we have incurred
during the development period of the setting up of these websites. We have
been abroad now for over 4 months researching and developing the uncovered
websites and incurred obvious expenses. It would be financially unviable for
us to simply pass the domain names over to your client without seeking
further legal advice. We would stress again that these domain names were
never purchased with the intention of causing any detriment to your client. If
your client feels that they have no alternative but to consider proceedings
against us then this may have to be the case”. The Respondent also
questioned what the Complainant’s proposed use would be of the Domain
Names, and implied that it had its own “intellectual property” in the “concept
of the uncovered names”.




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     The Complainant’s solicitors’ response of 24th August 2001 repeated the claim
     of trade mark infringement, repeated the offer of “reasonable transfer costs up
     to a maximum of £200” indicated that that offer would not be increased, and
     repeated the demand for undertakings by 31st August 2001, failing which
     complaints would be pursued through WIPO and Nominet UK to have the
     names suspended or transferred to their client.

     In the event, it would appear that a Complaint was first filed by the
     Complainant with WIPO under the Uniform Domain Name Dispute
     Resolution Policy on 2nd May 2002, in respect of the domain names
     club1830uncovered.com and club18-30uncovered.com.              As previously
     discussed, the Complaint with Nominet was not filed until 30th August 2002.

     The Decision of the WIPO Administrative Panel, dated 26th June 2002, was in
     favour of the Complainant. This Panel does not propose to have further
     regard to that decision, save to note that according to the Decision, the
     Respondent filed a Response to the Complaint to WIPO.

5.   What needs to be proved?

     To succeed in a Complaint under the Policy the Complainant must prove, on
     the balance of probabilities, first, that he has rights in respect of a name or
     mark which is identical or similar to the Domain Names and, secondly that the
     Domain Names, in the hands of the Respondent, are an Abusive Registration.

     Abusive Registration is defined in paragraph 1 of the Policy in the following
     terms:-

     “Abusive Registration means 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”.

6.   The Parties’ contentions

     These are set out at some length by the Expert. In summary, the respective
     contentions are as follows:

     Complainant:

     (1)    The Complainant is the owner of the goodwill and reputation and
            trademarks in the name CLUB18-30, which was first used in the
            United Kingdom in 1965. The Complaint provides extensive detail as
            to the extent of the use and promotion of the trade mark in the United



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      Kingdom and elsewhere, together with details of trade mark
      registrations.

(2)   The Complainant trades from a site www.club18-30.co.uk which was
      registered on 11th July 1996, and also trades from websites which are
      pointed to www.club18-30.co.uk, namely www.club18-30.net and
      www.club18-30.com. The Complainant has also registered the
      following     further    domain    names      club18-30holidays.co.uk,
      club18to30.co.uk, club18to30.org, and club18-30.org.uk.

(3)   The Domain Names are similar to the trade marks and domain name in
      which the Complainant has rights, and confusingly similar because
      they incorporate the Complainant’s trade mark together with the suffix
      “uncovered”. The removal of the hyphen between “18” and “30” is of
      no effect. The addition of the word “uncovered” is merely descriptive
      and insufficiently distinctive to make the Domain Names distinctive
      from the Complainant’s trade mark.

(4)   The Respondent has no rights or legitimate interests in respect of the
      Domain Names. It has not been licensed or otherwise permitted or
      authorised to use the Complainant’s trade marks. No valid reason has
      been provided as to why the Respondent chose to limit its site to the
      “antics” of 18 to 30 year olds rather than the youth market generally, or
      that of a wider age-bracket.

(5)   The Respondent deliberately chose the ages “18-30” to take advantage
      of the reputation and goodwill established and acquired in the
      CLUB18-30 trade mark in the knowledge when it registered the
      Domain Names that the trade mark CLUB18-30 had a great deal of
      goodwill and reputation amongst the youth market in the United
      Kingdom.

(6)   If the Domain Names were indeed not intended to capitalise on the
      Complainant’s trade marks, then the more appropriate word to use
      would have been “clubbing” rather than “club”. “Club” suggests a
      group defined by its membership, and is distinct and separate from the
      notion of “clubbing”.

(7)   The registration of the Domain Names is an Abusive Registration as
      the Respondent has no legitimate reason for registering the Domain
      Names. The Complainant relies on the case of BMW v Deenik (Case
      C-63/97, 23/2/1999) in which the European Court of Justice held that
      there could be no honest use where “the mark is used in a way that may
      create the impression that there is a commercial connection between
      the undertaking and the trade mark proprietor, and in particular that the
      re-seller’s business is affiliated to the trade mark proprietor’s
      distribution network or that there is a special relationship between the
      two undertakings”. Anyone accessing the Domain Names would
      reasonably expect the company offering services at the website to be



                                  5
       either the Complainant itself, or at least a commercially connected
       undertaking.

(8)    The addition of the word “uncovered” is a merely descriptive term, and
       not a trade mark. The Respondent has no Intellectual Property Rights
       in the name “club1830uncovered” nor in “club18-30uncovered”.

(9)    The Complainant operates approximately 400 night club events
       promoting the trade mark CLUB18-30 annually throughout the United
       Kingdom. The Respondent has actual, if not constructive knowledge,
       of these events. The Respondent’s alleged intended use can only have
       been intended to capitalise on these events.

(10)   Therefore, the Respondent purchased the Domain Names to attract
       Internet users to the Respondent’s website for financial gain by
       creating a likelihood of confusion with the Complainant’s mark. Such
       registration takes unfair advantage of or is unfairly detrimental to the
       Complainant’s rights.

(11)   The use of the word “uncovered” in association with the Complainant’s
       trade mark shows that the intention of the Respondent can only have
       been to produce an expose or behind-the-scenes documentary, possibly
       of a salacious nature, capitalising on the Complainant’s goodwill in the
       mark and/or as a result of filming or taking photographs at the
       Complainant’s resorts.

(12)   The Complainant points to a successful television programme called
       “Club Reps”, similar to various “uncovered” programmes, in which the
       lives of young representatives and agents of the Complainant’s
       business at various holiday resorts are detailed. The Complainant has
       as a result applied for the trade mark “Club Reps” in the United
       Kingdom. This is said to be further evidence that the intention of the
       Respondent in registering the Domain Names can only have been to
       produce a similar or identical product to that in which the Complainant
       already has trade marks, or to create a likelihood of confusion with the
       Complainant’s marks.

(13)   In addition, the registration of the Domain Names constitutes a
       blocking registration, as the Respondent must have been aware of the
       success of the “Club Reps” programme and the “uncovered”
       programmes, as a result of which the Respondent decided to block
       registration of the Domain Names which were likely to become
       desirable for use by the Complainant.

(14)   The Domain Names should be transferred to the Complainant.

Respondent:

The Respondent has not replied to these proceedings or to this Appeal.
However, the Respondent has replied to the Complainant’s solicitors’


                                  6
correspondence (as detailed above), in particular in its e-mails of 21st May
2001 and 23rd August 2001. In summary, the contentions in those e-mails are
as follows:-

(1)    There was no intention in purchasing the Domain Names to make any
       attempts to sell them to the Complainant or a third party.

(2)    There was no intention in purchasing the Domain Names to disrupt the
       Complainant’s business.

(3)    There was no intention in purchasing the Domain Names to use any of
       the Complainant’s trade marks.

(4)    There was no intention in purchasing the Domain Names to retail
       holidays.

(5)    There was no intention in purchasing the Domain Names to confuse
       visitors to the Respondent’s site that it is club 18-30 holidays.

(6)    The Respondent has a legitimate use for the Domain Names, namely to
       use the Domain Names to uncover worldwide the night life antics of
       the 18 to 30 year olds market whilst out clubbing, in a similar fashion
       to the highly successful website already run by the Respondent which
       uncovers people out clubbing in the party town of Whitley Bay.

(7)    The Respondent does not have any plans to emulate the Complainant’s
       website, nor does it plan to sell holidays on club 18-30 uncovered.

(8)    The offer of £200 for transfer costs does not cover the time and
       expenses incurred during the development period of setting up the
       websites.

Further Submissions by the Complainant

In response to a specific request from the Expert the Complainant confirmed
that it had no plans to use the Domain Names at the present time, but would, if
they were transferred, hold them to prevent any further Abusive Registrations
of the Domain Names, but that it may also wish to have the option to marry
the “uncovered” style of documentaries with its own trade mark CLUB18-30,
essentially because club 18-30 holidays and the “uncovered” style of
documentaries, are aimed at the same core audience with the same hedonistic
philosophy.

In addition to the above, the Complainant’s contentions have been
supplemented by the following additional arguments in its Notice of Appeal,
as follows:-

(1)    The Complainant has rights in the Domain Names, in the same way in
       which it has rights in any name which incorporates its trade marks with



                                  7
            words which are non-distinctive or merely descriptive (as is the case
            with “uncovered”).

     (2)    The Complainant’s intentions in respect of the use of the Domain
            Names for an “uncovered” concept is irrelevant to establishing the
            Respondent’s motive in registering the Domain Names. The
            “uncovered” concept was a popular television concept at the time of
            registration of the Domain Names, of which the Respondent was
            aware. It is also inconceivable that the Respondent was not aware of
            the Complainant’s trade mark CLUB18-30 and the activities operated.
            Therefore the evidence shows that the Respondent would have
            appreciated that the Domain Names were likely to be or become
            desirable for use by the Complainant.

7.   The Decision under Appeal

     Having reviewed the original submissions of the parties the Expert held as
     follows:-

     1.     The Complainant has Rights in respect of a name which is similar to
            the Domain Names.

     2.     Having recited the non-exhaustive list of factors set out in paragraph 4
            of the Policy under which a Respondent may demonstrate that the
            Domain Names are not an Abusive Registration, the Expert concluded
            that there was no evidence of use prior to being informed of the
            Complainant’s dispute which would bring the Respondent within
            paragraph 4 (a) (i) of the Policy, the Domain Names are neither generic
            nor descriptive, and no “fair use” by the Respondent had been
            established. Therefore, none of those factors is made out.

     3.     As to the non-exhaustive list of factors provided in paragraph 3.2 of the
            Policy, which may be evidence of an Abusive Registration, the Expert
            concluded as follows:-

            3.1    This is not a case falling within paragraph 3 (a) (i) A of the
                   Policy as there has been no request by the Respondent to the
                   Complainant for payment and the Complainant’s offer of
                   compensation did not provoke a counter-offer naming a higher
                   figure.

            3.2    As to the claim that the registration was intended as a “blocking
                   registration” within paragraph 3 (a) (i) B of the Policy the
                   Expert disagreed with the way in way that term was defined in
                   Peoplesoft UK Limited v Kane (DRS00120). The Expert
                   concluded that there are two critical features of a “blocking
                   registration”. The first is that it must be against a name or
                   mark in which the Complainant has rights. The second is one
                   of motivation, where the Complainant, if it is to succeed, must
                   prove on the balance of probabilities that a Respondent’s


                                        8
            principal objective in registering or retaining the disputed
            Domain Name was to prevent the Complainant from doing so.
            As to these, although the Expert accepted that the Complainant
            undoubtedly has rights in the name Club18-30 or Club1830 he
            was not satisfied that it had rights in the name CLUB 18-30
            UNCOVERED. In addition, as to motivation, the Expert was
            not satisfied that the Respondent appreciated that the Domain
            Names were likely to be or become desirable for use by the
            Complainant, finding that he did not think that it was
            established that the Respondent would have been aware that the
            Complainant would want to establish a website of an “expose”
            nature about the Complainant’s activities. The Expert indicated
            that it was not clear to him what the Respondent’s objectives
            were in relation to its existing website or in registering the
            Domain Names, but in any event, he was not satisfied that the
            Respondent had been motivated by a desire to prevent the
            Complainant from registering the Domain Names and has no
            alternative legitimate purpose of its own. Therefore, the
            registrations did not constitute a blocking registration.

     3.3    To the extent that the Complainant alleges that the Respondent
            registered the Domain Names “primarily for the purpose of
            unfairly disrupting the business of the Complainant”, within
            paragraph 3 (a) (i) C of the Policy the Expert concluded that
            there was no evidence of such intent.

     3.4    The Complaint contains a number of suggestions of confusing
            similarity, or likelihood of confusion. However, paragraph 3
            (a) (ii) of the Policy refers to 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. In the absence of any
            evidence of actual use of Domain Names by the Respondent,
            the Expert concluded that this requirement of the Policy had not
            been established, and further went on to say that, although the
            list of factors which may be evidence of Abusive Registration
            is non-exhaustive, he did not consider that the Respondent had
            any intention to confuse, or that there was any substantial risk
            or likelihood of confusion. The use of the word “uncovered” in
            the context described in the Complaint is immediately
            suggestive of authorship by someone other than those whose
            activities are being uncovered.

4.   In addition to addressing to the non-exhaustive list of factors under the
     Policy which can be relied upon by the Complainant and Respondent
     respectively, the Expert also considered what he regarded as “Other
     Grounds", which might nevertheless suggest that the Registrations are
     Abusive. In this connection, the Expert addressed the Respondent's
     purpose in registering the Domain Names. The Expert considered the


                                 9
            Complainant's suggestions, firstly, that the intention of the Respondent,
            in registering the Domain Names, can only to have been to produce a
            similar or identical product to that in which the Complainant already
            had trade marks. Secondly, that the intention of the Respondent can
            only been to produce a style of documentary similar to the photo-diary
            of the “legendary night life of Whitley Bay” revealed at its site
            whitleybayuncovered.com, capitalising on the Complainant’s goodwill
            in the mark and/or as a result of filming or taking photographs at the
            Complainant’s resorts.

            As to these, the Expert concluded that there was no evidence that the
            Respondent had produced goods or services of the type provided by the
            Complainant, and therefore the first suggestion was unsubstantiated as
            a matter of fact.

            As to the second suggestion, the Expert hypothesized that the
            Respondent might use the Domain Names in respect of a website
            which uncovered the “night life antics” of 18 to 30 year olds, in
            alternative situations, namely (1) only events organised by the
            Complainant, or (2) events aimed at the 18-30 year old market
            irrespective of who the organisers were. The Expert concluded that the
            Registrations would not be Abusive even in the case of his first
            hypothesis, namely in respect of portraying only events organised by
            the Complainant.        Assuming an event was organised by the
            Complainant, to write an article about that event or to photograph or
            film the event would not be taking “unfair advantage” of the organisers
            of the event. The Expert further considered that a website devoted
            entirely to events organised by the Complainant would not necessarily
            be “unfairly detrimental” to the Complainant. The Complainant itself
            in its Complaint apparently regarded the Club Reps programme as
            being beneficial to it, in which case there would no “unfair detriment”
            to the Complainant if there were in fact use as postulated by the Expert.
            As to the second hypothesis, the Expert concluded that the position
            would be “a fortiori” ” unless there were an intent to misrepresent as
            the Complainant’s events in fact organised by others, but there was no
            evidence of any such intent.

     The Expert therefore declined to order the transfer of the Domain Names to
     the Complainant.

8.   The Standard of Review

     Paragraph 9 (a) of the Policy provides that the Appeal Panel will consider
     Appeals both on the basis that a matter be examined on the facts, and that
     procedure has not been correctly followed. This Panel is addressing an
     Appeal which involves a request for re-examination, not that the procedure
     has not been correctly followed. The Panel therefore proposes to adopt the
     approach of the Panel in Hanna-Barbera Productions Inc v Graeme Hay,
     DRS00389, scoobydoo.co.uk, and has approached this case on the basis of a
     full review of the facts before the Expert, without tying its hands in any way.


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9.   Discussion and Findings

     The Complainant’s Rights

     The Panel agrees with the Expert in this respect. The presence or absence of a
     hyphen between “18” and “30” is immaterial. “Uncovered” is primarily a
     descriptive word. Although the Domain Names include the word “uncovered”
     the Panel nevertheless finds that the Complainant clearly has Rights in respect
     of a name or mark which is similar to the Domain Names.

     Abusive Registration

     Introduction

     It of course needs to be borne in mind (as the Expert did) that, in addressing
     the central issue as to whether the Domain Names are Abusive Registrations
     within the meaning of paragraph 2 of the Policy, the Panel has to assess
     whether registration of the Domain Names or the subsequent use made of
     them “took unfair advantage of or was unfairly detrimental to the
     Complainant’s Rights”. It is also clear from paragraph 3 of the Policy that the
     intended use of the Domain Names has to be taken into account.

     Paragraph 3 of the Policy

     In the absence of any evidence of use or confusion, the Complainant is not
     able to make out paragraph 3 (a) (ii) of the non-exhaustive list of factors in the
     Policy, namely “circumstances indicating that the Respondent is using the
     Domain Name in a way which has confused businesses or people into
     believing that the Domain Name is registered to, operated or authorised by, or
     otherwise connected with the Complainant”.

     As to whether the Domain Names were registered as blocking registrations
     (paragraph 3 (a) (i) B of the Policy) the Panel does not consider that it can
     sensibly assume that anyone in the position of the Respondent could have
     expected the Complainant to have any interest in using the Domain Names.
     The Panel treats the Complainant’s submissions in this respect with some
     scepticism, but even if there were some intention on the part of the
     Complainant to produce an expose or “fly on the wall” documentary in respect
     of its own holidays, it could (as it suggests of the Respondent) use another
     name, and the Complainant’s submissions and evidence do not establish any
     legitimate pre-existing rights in the name “uncovered”. Blocking registration
     is of course not defined in the Policy. The Expert’s Decision points to a
     difference of view between the Expert and the Expert in Peoplesoft UK
     Limited v Kane. The Panel does not find it necessary in this instance to
     decide whether either of the two respective approaches is correct – in respect
     of this case the Complainant has not shown any legitimate interest in the
     Domain Names themselves, and there is also no cogent evidence of intention
     on the part of the Respondent to block the Complainant in the way suggested.



                                        11
In the Panel’s view, the Complainant has failed by some margin to establish
that the registrations amounted to a blocking registration in this case.

There may be more room for debate regarding the other two factors set out in
paragraph 3 (a) (i) of the Policy, namely that the registrations were primarily
for the purposes of transferring the Domain Names to the Complainant and/or
of unfairly disrupting the business of the Complainant. In response to the
Complainant’s solicitors’ first letter, Zara Waterston asserted “I have already
invested time and money into setting club 18-30 uncovered into motion and
would appreciate this matter being dealt with as quickly as possible.” The
Complainant’s solicitors’ reply insisted on the undertakings previously
requested and stated that the Complainant was willing to pay the Respondent’s
reasonable transfer costs up to a maximum of £200. Ms Waterston further
replied “This in no way would cover the time and expenses that we have
incurred during the development period of the setting up of these websites.
We have been abroad now for over four months researching and developing
the uncovered websites and have incurred obvious expenses. It would be
financially unviable for us to simply pass the domain names over to your
client without seeking further legal advice.” The Complainant’s solicitors
replied pointing out that the majority of the website could be used at an
alternative domain name. It appears that there was no response to this letter
and that the Domain Names have still not been used by the Respondent even
though more than a year has passed since this correspondence.

In the view of one of the Panellists it could be inferred from the Respondent’s
registration of a series of domain names containing the Complainant’s well-
known mark, together with its intimation that it should be paid a substantial
sum for their transfer on grounds which were unsubstantiated and unjustified,
and the absence of any legitimate use or specific evidence of preparations for
legitimate use, that the Respondent registered them for the purposes of sale to
the Complainant for valuable consideration in excess of out-of-pocket costs,
with the threat of disruptive use if the Complainant did not pay up. On another
view, this would be mere speculation, unwarranted by the actual evidence. On
balance, the majority of the Panel prefers the latter view.

However, in view of the Panel’s conclusion below on “Other Grounds”, it is
not necessary to resolve this point.

Paragraph 4 of the Policy

As to the non-exhaustive factors in paragraph 4 of the Policy which may
demonstrate that the Domain Name is not an Abusive Registration, although
the Expert has specifically dealt with the individual items, in the Panel’s view
this matter can be comparatively simply dealt with: there is no evidence or
intention on behalf of the Respondent to suggest that any of the factors is
made out, and therefore, the Panel agrees with the Expert’s conclusions in this
respect.




                                  12
Other Grounds

As the Expert noted, the factors set out in paragraphs 3 and 4 of the Policy are
not exhaustive and it is necessary to consider whether it has been shown on
other grounds that the registrations are abusive.

In its e-mail correspondence with the Complainant’s solicitors the Respondent
has disavowed any intention to use the Domain Names for anything other than
what it regards as being a “legitimate use”. Its stated intention is to use the
Domain Names to uncover worldwide night life antics of the 18 to 30 year old
market whilst out clubbing. The Respondent says that it does not have any
plans to emulate the Complainant’s website. It does not plan to sell holidays
through the intended website. It has no intention of confusing visitors to any
of its websites, nor in any way to suggest association with CLUB18-30
package holidays.

The question therefore arises, if one takes these statements by the Respondent
at face value, what was the Respondent’s intention in registering the Domain
Names? Was it indeed, as it suggests, a convenient description of its intended
subject matter, namely “to uncover worldwide night life antics of the 18 to 30
year old market whilst out clubbing”? If so, then there are undoubtedly many
other names which the Respondent could have chosen (some of which, as the
Complainant suggests, may well have been more accurately descriptive of its
intentions). Why then, choose these particular Domain Names?

It seems to the Panel that, given the extent and renown of the Complainant’s
trade mark, it is stretching credulity beyond breaking point to suggest that the
Respondent did not know of the trade mark in question when it sought
registration of the Domain Names. Indeed, it is perhaps instructive that there
is no suggestion in the communications from the Respondent that it was in
fact unaware of the reputation of the Complainant’s trade mark CLUB18-30.
Although the Respondent is careful to suggest that the Complainant’s
proposed use of the Domain Names is open to question (referring to “our
concept of the uncovered names”) there is no suggestion that the club18-30
part of the Domain Names was chosen by it for any other reason than it was
the Complainant’s trade mark.

The Panel therefore finds that upon the balance of probabilities the
Respondent was aware of the Complainant’s trade mark at the time of
registration of the Domain Names, and consciously chose to use that trade
mark.

The onus is, of course, upon the Complainant to show on the balance of
probabilities that the registration of the Domain Names is Abusive. However,
it should not be forgotten that the Respondent has not filed a formal Response
to these proceedings, nor accepted a further opportunity, in the context of the
Appeal, to make submissions. If it had chosen to do so, it could have
provided a fuller and more convincing explanation of its choice of the Domain
Names. It has chosen not to do so.


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      This Panel considers that the only conceivable reason for the Respondent’s
      conscious adoption in the circumstances of this case of a Domain Name which
      incorporates a well known trade mark of another is to take advantage of the
      accrued goodwill in that name. There is no suggestion that the Respondent is
      authorised to use the name in any way. There is no suggestion that the
      Respondent intends to use the name for the purposes of criticism or other fair
      use (indeed, the Respondent has indicated to the contrary). On the balance of
      probabilities, the Respondent must have intended to gain an advantage of
      some kind. The question is whether the advantage is “unfair”.

      There is, of course, no evidence of actual use. However, the Panel has
      difficulty conceiving of any use which could be made by the Respondent of
      the Domain Names in accordance with its stated intentions which would not
      be “unfair”. Even if such a site were to appear with prominent disclaimers as
      to the use of the CLUB18-30 mark, it is unlikely, in the Panel’s view, to dispel
      entirely the suggestion that there is some kind of connection with the
      Complainant. Such confusion would be detrimental to the Complainant’s
      Rights, and in the Panel’s view, unfairly so. It follows that the Panel disagrees
      with the Expert in his conclusion in respect of his second hypothesis about the
      possible use of CLUB18-30, in which he postulated its use in respect of events
      aimed at the 18-30 year old market whose organisers were not the
      Complainant. The Expert considered that such use would only take “unfair
      advantage” of the Complainant if there were an intention to misrepresent as
      the Complainant’s events those which were in fact organised by others.
      Whatever the Respondent’s intentions may be, it seems to the Panel that such
      use of the Complainant’s trade mark would in fact be likely to suggest to the
      public some sort of connection with the Complainant, contrary to the fact,
      which the Panel does regard as taking unfair advantage of the Complainant’s
      Rights.

10.   Decision

      Taking all the circumstances of this case into account, the Panel finds that the
      Complainant has rights in respect of a name or mark which is similar to the
      Domain Names, and that the Domain Names, in the hands of the Respondent,
      are an Abusive Registration.

      However, the Panel does not accept the Complainant’s submissions that it has
      rights itself in the club18-30uncovered name, and in the circumstances the
      Panel considers the appropriate order to be cancellation.

      Accordingly, the Appeal succeeds in part. The Panel vacates the Decision of
      the Expert, upholds the Complaint and directs that the Domain Names be
      cancelled.




                                         14
Signed by   ………………………………….    Date:   December 2002
            Bob Elliott

Signed by   …………………………………     Date:   December 2002
            Jonathan Turner

Signed by   …………………….……………    Date:   December 2002
            Tom Thomas




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