Thomas Cook UK Ltd -v- Lily Chambers [2003] DRS 769 (31 January 2003)

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Complainant: Thomas Cook UK Ltd

Represented by: Mr. Stuart Goldberg
GB

Respondent: Lily Chambers
GB

Represented by: Unrepresented.

Disputed Domain Name: Club-1830.co.uk

Abbreviation Definition
The Domain Name Club-1830.co.uk
Thomas Cook The Complainant
The Website www.club-1830.com
The Marks The trade marks registered on behalf of Thomas Cook
DRS Nominet UK's Dispute Resolution Service
DRS Policy Nominet UK's Dispute Resolution Service Policy
DRS Procedures Nominet UK's Dispute Resolution Service Procedures
The Expert Kirsten Houghton

1. The Complaint was lodged with Nominet on 16th December 2002 and hard copies were received on the same day.

3. Nominet sent the complaint to
(a) The Respondent’s address (the address given in the complaint form by Thomas Cook) by post on 19th December 2002 and
(b) To the Respondent’s hotmail address (the admin contact address referred to in Nominet’s records) by e-mail on 19th December 2002
(c) And to postmaster@club-1830.co.uk by e-mail on 19th December 2002, which was returned citing “Unknown local part postmaster”

4. There is no evidence in the file that the complaint has not been received by or on behalf of the Respondent

6. Accordingly, on 20th January 2002, Dechert on behalf of Thomas Cook paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the DRS Policy.

7. On 22nd January 2003, I confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.
Outstanding Formal/Procedural Issues (if any):

8. None. I consider that Nominet has taken adequate steps to ensure that the Respondent has been made aware of the Complaint.
The Facts:
(1) The Parties - Thomas Cook

9. Thomas Cook is Thomas Cook UK Limited, represented by solicitors, Dechert. Thomas Cook is an English company.
(2) Thomas Cook’s rights

10. Thomas Cook 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 Thomas Cook. 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.
(3) The Trade Marks

11. Thomas Cook has registered a portfolio of trade marks related to CLUB-1830 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.

12. 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 25th July 2002 many years after Thomas Cook commenced trading using the CLUB18-30 name;
(g) Thomas Cook trades from a website at www.club18-30.co.uk using its CLUB 18-30 trademark; and
(h) Thomas Cook 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.

13. Thomas Cook 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) Thomas Cook’s rights in the Domain Name

14. In the light of the above, I accept that the Thomas Cook has common law rights in the name Club 18-30 which are capable of protection. I also accept that the Domain Name 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” and the removal of the hyphen between “18” and “30” in the Domain Name does not fundamentally alter the identical or similar nature and of no effect.
(5) The Parties - the Respondent

15. The Complaint tells me very little about the Respondent, other than that she is not licensed to use the Trade Marks and that she has not responded to a letter sent by Dechert requesting her to transfer the Domain Name and to give certain undertakings (Annex C), in default of which, Thomas Cook would consider issuing proceedings against her.
(6) The Respondent’s rights in the Domain Name

16. The Respondent has given no reason why she registered the Domain Name, nor what her 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.
(7) The Website

17. There is a partially constructed website linked to the www.club-1830.co.uk, purporting to be that of what appears to be a steel fabrication business, with a UK phone number.

18. Apart from the Domain Name, the Website could not possibly be confused with any part of the business of Thomas Cook.
(8) The Complaint

19. Thomas Cook complains that 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.

20. Thomas Cook relies on the definition of the Nominet Expert in Peoplesoft UK Limited v Kane (DRS 120) (“Peoplesoft”) and 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. It is a domain registration that is:
a. designed to prevent a legitimate owner of rights in a name from registering and using the associated domain name; and
b. carried out in circumstances when Respondent is unable to demonstrate a prima-facie right in the name or valid reason to make the registration.”

21. Thomas Cook submits 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 could possibly be made by the Respondent, particularly as the Domain Name is identical to the mark CLUB18-30 apart from the addition of one hyphen and the removal of another.

22. Thomas Cook further relies on the decision in Thomas Cook UK Ltd -v- Paul Bryant (DRS 655) concerning the domain name “club-18-30.co.uk”. The latter domain name is identical to the current domain name in dispute apart from these two minor changes.

23. In that case, the Nominet Expert stated that:
“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”.

24. Thomas Cook submits that the Domain Name in dispute and the similar lack of explanation by the Respondent for its registration can only lead to the conclusion that this is also a blocking registration. Thomas Cook further relies on 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.”

25. Thomas Cook submits that the registration of the Domain Name is an abusive registration because it is being and has been used in a manner which takes unfair advantage of or is unfairly detrimental to Thomas Cook’s Rights.

26. Accessing the web site at the Domain Name redirects an Internet user to a web site at “www.gatesandgrills.co.uk”. A sample of pages from that web site were attached to the hard copy of the Complaint at Annex D. This web site proclaims itself as the web site of a business called Secure Fabrications, whose business activity appears to be manufacturing wrought ironwork.

27. Thomas Cook submits that there is no logical explanation for the Respondent to use the Domain Name, as the Respondent has no rights in the mark CLUB18-30 nor any business activity that could conceivably involve using the words “club” “18” and “30” in combination. Thomas Cook submits that the Domain Name can only have been registered to capitalise on the goodwill in and reputation of the mark CLUB18-30 in order to attract visitors to the Respondent’s web site at “www.gatesandgrills.co.uk”. A single misplaced hyphen by an internet user would take them to the web site at the Domain Name and to the Respondent’s business.

28. Thomas Cook accepts that this does not fall squarely within any of the list of factors evidencing an Abusive Registration at paragraph 3(a) of the Policy. However, this list is stated to be “non-exhaustive” and a list only of the ways to evidence an Abusive Registration as defined in paragraph 1. It is submitted that nevertheless, the use of the Domain Name in this way takes clear advantage of Thomas Cook’s Rights in the mark CLUB18-30 and is detrimental to those rights and is therefore an Abusive Registration.

29. It is submitted by Thomas Cook 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 use of the Domain Name. Thomas Cook submits that this was the finding of the Expert in DRS 655 cited above, where the Expert went on to declare 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”

30. Thomas Cook submits that not only is the Domain Name in the current Complaint almost identical to that in DRS 655 (as already stated), but that in DRS 655, there was no web site at the Domain Name, while in the present case there is a web site which provides further evidence of the Respondent’s Abusive Registration. It is therefore submitted that the Domain Name in dispute should be transferred to Thomas Cook.
(9) Discussion and findings:

31. Abusive Registration: Thomas must establish, on the balance of probabilities, that the Domain Name, in the hands of the Respondent, is an abusive registration. Abusive Registration is defined in the DRS Policy as:
"… 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 Thomas Cook's Rights; OR
(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to Thomas Cook's Rights."

32. Clause 3 of the DRS Policy sets out a non-exhaustive list of factors to which I may have regard in determining whether the registration of the Domain Name is abusive in the hands of the Respondent. They include:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B as a blocking registration against a name or mark in which the Complainant has Rights; or
C primarily for the purpose of unfairly disrupting the business of the Complainant;
(ii) 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…"

34. I accept 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. I also accept that the Respondent has failed to provide any explanation or reason for registration and in these circumstances.

35. I accept that, in the absence of any obvious generic use of the Domain Name, it is possible to find that that the registration is a blocking registration within the meaning of paragraph 3(a)(i)(B) of the Policy.

36. However, I do not consider that it is possible to stigmatise a domain name registration as “abusive” merely because of the two coincidental factors described in Paragraph 34 above – as the Expert in Peoplesoft made clear, the registration must be “designed” to prevent the legitimate owner from registering and using the domain name. In Bryant, it was possible to infer easily from the fact that the respondent had also registered approximately 300 other domain names with possible commercial uses, that the domain name in that instance had been registered so as to prevent the legitimate owner from doing so.

37. No such factor exists in this instance. I find the suggestion that Secure Fabrications is trying to capitalise on the goodwill in Club 18-30 fanciful.

38. In the circumstances, there is very from which to draw the inference required by the Claimant. However, bearing in mind the complete lack of response from the Respondent, the extremely well known character of the Trade Marks and their use, and the quite bizarre attachment of the Website to the Domain Name, I am just prepared to do so. It appears to me that there is a case to answer, and I am prepared and authorised to draw adverse inferences from the respondent’s failure to respond.

39. This finding depends upon my acceptance that the recognition of the Trade Marks is widespread and obvious, because it is quite possible for example, that, in the case of a less well-known trade mark or trading name, a respondent might have registered a domain name innocently, in the absence of any knowledge that it was claimed by another. Such registration could not, in my view, be said to have been “designed” to block the legitimate owner.

40. In my opinion, where there is no other evidence available, inferences of this kind should only be drawn against the respondent where the name which is sought to be protected can properly be regarded as a “household” one, such that the expert may properly infer that the respondent cannot have been unaware of the abuse. To that end, in such cases, in my view, the name sought to be protected must be high profile, highly visible and easily recognised as attaching to a particular class of goods or services – “Hoover” or “Mercedes” or “Vodafone” would be obvious examples.

41. I am not prepared to find that the registration is an instrument of fraud. I do not believe that I am seriously asked to do so by Thomas Cook. The conduct of the respondent in the Bryant case was substantially different from the conduct which has been shown to me in this.

42. I am also not prepared to draw any conclusions based on the passage cited in Paragraph 24 above, and I note that the Mr. Lockett, the expert in both Peoplesoft and Bryant has indicated, in a note to the decision in Bryant that he did not intend that statement to become a new ground for the test of abusive registration.

43. In light of the foregoing findings, namely that Thomas Cook has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, I direct that the Domain Name, club-1830.co.uk, be transferred to Thomas Cook or its nominee.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Thomas Cook UK Ltd -v- Lily Chambers [2003] DRS 769 (31 January 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/769.html Cite as: [2003] DRS 769

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