[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Thomas Cook UK Ltd -v- Whitley Bay Uncovered [2002] DRS 583_Appeal (15 December 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/583_Appeal.html Cite as: [2002] DRS 583_Appeal

[New search] [Help]

 
UK DISPUTE RESOLUTION SERVICE DRS 00583 DECISION OF APPEAL PANEL

1. Parties

Complainant : Thomas Cook UK Limited

Country : UK

Respondent : Whitley Bay Uncovered

Country : UK

2. Domain Names

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

3. Procedural Background

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

No Response was received. Therefore Mediation was not possible. On 7^th 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 7^th 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 14^th October 2002.

The Expert's Decision, which rejected the Complaint, was issued on 25^th October 2002. A Notice of Appeal was received by Nominet from the Complainant's solicitors on 4^th 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 15^th November 2002.

On 18^th 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 27^th 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 31^st 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 27^th 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 21^st 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.

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 29^th 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 5^th 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 6^th 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 23^rd 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".

The Complainant's solicitors' response of 24^th 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 31^st 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 2^nd 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 30^th August 2002.

The Decision of the WIPO Administrative Panel, dated 26^th 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 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 11^th 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 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' correspondence (as detailed above), in particular in its e-mails of 21^st May 2001 and 23^rd 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 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 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 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.

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. 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.

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.

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.

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

Bob Elliott

Signed by ………………………………… Date: December 2002

Jonathan Turner

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

Tom Thomas