Thomas Cook UK Ltd -v- Bryant [2002] DRS 655 (19 November 2002)

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3. PROCEDURAL BACKGROUND
The complaint was lodged with Nominet on 9th October 2002. Nominet validated the complaint and notified the Respondent of the complaint on 14th October 2002, and informed the Respondent that he had 15 days' within which to lodge a Response. The Respondent failed to respond. Mediation not being possible in those circumstances, Nominet so informed the Complainant and on 12th November 2002, the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

Nick Lockett, the undersigned, (“the Expert”) has confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

3.1 FORMAL/PROCEDURAL ISSUES
The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the DRS Procedure”).

Paragraph 15b of the DRS Procedure provides, inter alia, that “If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint.” There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the Complaint, notwithstanding the absence of a Response.

Paragraph 15c of the DRS Procedure provides that “If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure …, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.” The Expert is not aware of any exceptional circumstances in this case and so will draw inferences as appropriate.

4.1 THE COMPLAINANT
The Complainant is Thomas Cook UK Limited, represented by solicitors, Dechert. The Complainant is an English company.

Complainant Rights
The Complainant is the owner of goodwill and reputation and trade mark rights in the name CLUB 18-30 which has been used in the United Kingdom since 1965 in relation to holiday services by the Complainant. The turnover of goods and services provided under the trade mark CLUB 18-30 internationally in 2001 was between £30 -£35 million and used in relation to provision to about 105,000 UK holiday makers of vacations.

Registered Rights
The Complainant has registered a portfolio of trade marks related to CLUB_18-30 full details of which are annexed to the complaint and including:
a) “CLUB 18-30” Number 1285877 of 01.10.86
b) “CLUB 18-30” (badge logo) Number 2169954 of 18.06.98
c) “CLUB 18-30” (brick device) Number 1427422 of 10.5.90
d) “CLUB 18-30 (logo) Number 2159643A of 28.02.98.

The Claimant states that in addition to registered rights:
a) the name Club 18-30 is recognised and respected by the general public of the United Kingdom as being one of the market leaders in the field of holidays for the 18-30 age group;
b) The services under this trade mark are extensively advertised on television, at the cinema, on the radio and in national publications;
c) there are approximately 400 night-club events promoting the trade mark annually held throughout the United Kingdom;
d) CLUB 18-30 operates holiday resorts under the mark and promotes the mark at night-club events throughout Europe, including Greece, Turkey, Spain and Cyprus;
e) the amount spent annually on advertising goods and services provided under the trade mark CLUB 18-30 internationally in 2001 was over £1million;
f) The Domain Name was registered on 26 January 2000 and after the Complainant commenced trading using the CLUB18-30 name;
g) the Complainant trades from a website at www.club18-30.co.uk using its CLUB 18-30 trademark; and
h) the Complainant has not licensed or otherwise permitted or authorised the Respondent to use its trade marks or to apply for a domain name incorporating any such marks, nor been able to establish any rights or legitimate interests in respect of the Domain Name in the hands of the Respondent.

The Complainant has also submitted evidence to support its reputation including:
a) an article in the national newspaper, The Guardian, concenning Club18-30 as “Britain’s most successful youth tour operator” and “one of the success stories of the (Nineties)”; and
b) Details of a nationally successful television programme, “Club Reps” about Club 18-30 including broadcasts in January 2002, attracted an audience of 4.7 million viewers, a 31% audience share.

4.2 THE RESPONDENT
The Respondent is Paul Bryant who has advised Nominet that the current address associated with the domain name is no longer valid but has failed to provide an alternative address. The Respondent has not responded to the complaint and is not represented.

Domain Names Registered by Respondent
The Complainant’s solicitors commissioned a search for other Domain Names also held by the Respondent. The results of this search were attached to the hard copy of this Complaint and consisted of approximately 300 domains. The names varied from “flight-deals.co.uk” to “ecarwarehouse.co.uk” to “surreyinvestmentproperty.co.uk” and included many obviously generic names and assorted medical domain names

5.1 Complainant:
The Complainant confirms that the Domain Name in dispute is identical or similar to a name or mark in which the Complainant has Rights and asserts that in the hands of the Respondent is an Abusive Registration for the following reasons:
a) The registration of the Domain Name by the Respondent prevents the legitimate owner of rights in the trade mark CLUB18-30 from registering and using the Domain Name and is therefore a blocking registration within the meaning of paragraph 3(a)(i)(B) of the Policy. The Complainant relies on the definition of the Nominet Expert in Peoplesoft UK Limited v Kane (DRS 120) (“Peoplesoft”) and the endorsement of this definition by the Nominet Expert in Harrods Limited v Mr George Wilson (DRS 426). In Peoplesoft, a blocking registration was defined as one that: “is unwarranted at the time of registration.

5.2 The Complainant complains that:
a) the domain registration was designed to prevent a legitimate owner of rights in a name from registering and using the associated domain name and where the domain was registered in circumstances when Respondent is unable to demonstrate a prima-facie right in the name or valid reason to make the registration”; and
b) in view of the huge amount of goodwill in the mark CLUB18-30 in the United Kingdom, the domain was registered without any legitimate purpose for its use, particularly as the Domain Name is identical to the mark CLUB18-30 apart from a single additional hyphen.
c) Consistent with the decision in Peoplesoft, which said that: “. . . cyber-squatters are becoming increasingly aware that an attempt to sell, rent or transfer the domain name for money may be evidence of bad faith and therefore that cyber-squatters are simply registering domain names and sitting on them as blocking registrations hoping that a legitimate owner may offer to buy the domain”, the registration was abusive as an attempt to sell, rent or transfer the domain name for money and that this is evidence of bad faith; and
d). The registration of the Domain Name was made or the domain name otherwise acquired primarily for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket expenses directly associated with acquiring or using the Domain Name. In evidence in reliance on this submission, the Complainant relies on the email correspondence referred to above in “Background”. (detailed below); and
e) The Respondent has made no active use of the Domain Name and there has never been, to the Complainant’s knowledge, any web site operating from the Domain Name address; and
f) The Respondent has registered nearly 300 domain names in total, varying from examples such as “flight-deals.co.uk” to “ecarwarehouse.co.uk” to “surreyinvestmentproperty.co.uk” and other examples including many assorted medical domain names commencing “treat(illness).co.uk). The Complainant asserts that these registrations, combined with the request by the Respondent for £5,000 for transfer of the Domain Name, are evidence that the Respondent is engaged in the business of registering and acquiring domain names for sale or rental, and that the registration of the Domain Name was for the same purpose. The Complainant also asserts that the variety of businesses covered by the Respondent’s many domain name registrations could not possibly be a representation of the Respondent’s business or line of work.

6.1 General
The Respondent has not made any response. Accordingly, the Expert is entitled to draw inferences as appropriate from the Respondent's failure to respond (DRS Procedure 15(c)).

6.2 Correspondence:
The Complainant’s solicitors wrote to the Respondent on 29 August 2002 requesting, amongst other things, that the Respondent cease all use of the Domain Name and transfer it to the Complainant. A copy of all correspondence passing between the Complainant and the Respondent was attached to the hard copy of this Complaint.

The reply is marked “without prejudice” and was not reviewed by the adjudicator prior to making the decision.

6.3 Complainant's Rights
The adjudicator accepts that the Complainant has common law rights in the name Club 18-30 which are capable of protection. The adjudicator also accepts that the Domain Name(s) in dispute is identical or similar to a name or mark in which the Complainant has Registered Rights. These rights are extensive and well-known within the United Kingdom. The addition of a hyphen between the words “club” and “18” in the domain name does not fundamentally alter the identical or similar nature and of no effect.

6.4 The Respondent’s rights in CLUB-18-30.
The Respondent has given no reason why he registered the Domain Name, nor what his use or intended use of the Domain Name is. The Respondent has not claimed or demonstrated any rights in the Domain Name or in the trade mark CLUB 18-30 or similar name.

6.5 Blocking Registration
The adjudicator takes the view that the registration of the Domain Name by the Respondent prevents the legitimate owner of rights in the name CLUB18-30 from registering and using the Domain Name. The Respondent has failed to provide any explanation or reason for registration and in these circumstances and in the absence of any obvious generic use of the domain the registration is a blocking registration within the meaning of paragraph 3(a)(i)(B) of the Policy.

6.6 Instrument of Fraud
It is submitted by the Complainant that in view of the huge amount of goodwill in the mark CLUB18-30 in the United Kingdom, there can be no legitimate purpose for which use of the Domain Name. The adjudicator agrees that there is no legitimate purpose for the use of the domain name and that in the circumstances, the domain name in the hands of the Respondent constitutes an instrument of fraud within the meaning of BT et al v One in a Million 1998.

6.7 Excessive Out of Pocket Expenses
The adjudicator finds no admissible evidence that the Domain Name was an abusive registration in circumstances that it was “registered or otherwise acquired primarily for the purpose of selling the Domain Name to the Complainant or a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket expenses directly associated with acquiring or using the Domain Name”. Accordingly this ground is not made out.

6.8 No Active Use of Domain
In support of the claim for abusive registration, the Claimant asserts that the Respondent has made no active use of the Domain Name and that there has never been, to the Complainant’s knowledge, any web site operating from the Domain Name address. The adjudicator considers that, as the Nominet policy makes it clear that neither the failure to actively use the Domain Name nor the failure to operate a web site from the Domain Name address is evidence of abusive registration, this ground is not made out.

The Expert finds:
a) that the Complainant has extensive Rights in respect of a name and mark which is identical or similar to the Domain Name in question; and
b) that the Respondent has not demonstrated any competing rights; and.
c) that the registration of the Domain Name in the hands of the Respondent is an Abusive Registration, being both a blocking registration and, within the meaning of BT v One-in-a-Million 1998, an instrument of fraud.

Accordingly the adjudicator recommends a transfer of the domain to the Complainant.

Nick Lockett Date: 19 November 2002

Following his decision, the adjudicator reviewed the “without prejudice” correspondence. The Respondent replied to the Complainant’s solicitors threat that “our client will have no choice but to consider proceedings”. He stated that he was prepared to settle the Complainant’s claim “subject to a fee of £5000 to cover reasonable expenses”, which he later stated to be “costs are primarily for my time.” The Complainant’s solicitors wrote again to the Respondent making a counter offer of “£100 to cover. . . reasonable expenses and (the) costs of acquiring and using the . . . domain name”. It is clear that each party considered the other’s claim to be “unrealistic”.

In the opinion of the adjudicator, it is unclear whether these matters were genuine negotiations with an attempt to settle the case. They are however marked “without prejudice” correspondence. In the opinion of the adjudicator, this benefit of doubt must be given to the party claiming the “without prejudice” status. As such the correspondence is not admissible but would not have affected the adjudicators opinion.

In the view of the adjudicator, an offer to settle a threat of “proceedings” does not provide evidence that the Registrant registered the Domain Name to sell it for valuable consideration in excess of his documented out-of-pocket expenses. The problem with assessing whether this is a genuine settlement offer highlights the problems of assessing “without prejudice” material. Settlement offers may reflect the costs of registering a domain name which may include the cost of acquiring the domain from any third party and the wasted costs of use, advertising the domain, etc, as well as costs of re-coding links in a number of other web-sites and costs to find alternative suitable domain names and to re-advertise addresses. The costs in settlement may therefore be significantly different to the costs which are properly assessable if the Registrant makes an offer to sell the domain prior to a threat of action. It is the adjudicator’s view that assessing “without prejudice” material should only be permitted where there is evidence of abuse of the Nominet complaint procedure and policy.

Comment on reliance on the Peoplesoft case by the Complainant.
The adjudicator notes that the Nominet policy states that appeal decisions (and inherently also first-instance decisions) are not intended to have precedential value. The policy also indicates that Appeal decisions may be of persuasive value, but this will normally be where an appeal panel determines how the rules should be applied or interpreted. In this complaint, the Complainant relied upon the decision in Peoplesoft, which said that: “. . . cyber-squatters are becoming increasingly aware that an attempt to sell, rent or transfer the domain name for money may be evidence of bad faith and therefore that cyber-squatters are simply registering domain names and sitting on them as blocking registrations hoping that a legitimate owner may offer to buy the domain” (cited with approval in Harrods Limited v Mr George Wilson (DRS 426)). By co-incidence, this adjudicator was also the adjudicator in Peoplesoft and can confirm that the Peoplesoft citation was an observation about cybersquatter tactics and not intended to create a new ground of test for abusive registration.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Thomas Cook UK Ltd -v- Bryant [2002] DRS 655 (19 November 2002) URL: http://www.bailii.org/uk/cases/DRS/2002/655.html Cite as: [2002] DRS 655