Alfendo Ltd (t/a Airline Warehouse)v Karpavicius [2004] DRS 1576 (16 April 2004)

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The Complaint was submitted to Nominet on 19 February 2004, and hard copies of the Complaint were received in full by Nominet on 20 February 2004. On 25 February 2004, the Complaint was validated by Nominet and it was sent to the Respondent by post and e-mail on the same day, with a letter informing the Respondent that it had 15 working days in which to respond to the Complaint.
No response was filed by the Respondent. On 5 April 2004, the Complainant paid the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy (“the Policy”).
On 7 April 2004, Antony Gold, the undersigned, (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept Nominet’s invitation to him to act as an Expert in this case.

There are two minor procedural issues to deal with. First, following formal commencement of proceedings there was an exchange of emails between the Respondent and Nominet. It is evident, however, from consideration of these e-mails that the Respondent has received the Complaint. Accordingly, it is not necessary to consider this exchange further. Second, the Complainant sought to make additional points in correspondence following submission of its Complaint. The expert is not bound to consider additional submissions of this type, nor has he done so for the purpose of determining this Complaint.
So far as the absence of a Response to the Complaint is concerned, paragraphs 15 b and c of the Procedure provide, in summary, that if, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the Complaint. and that if a Party does not comply with any provision in the Policy or this Procedure or any request by the Expert, he or she will draw such inferences from the Party's non compliance as he or she considers appropriate.
There is no evidence before the Expert to indicate the presence of exceptional circumstances that might have prevented the Respondent from submitting a Response to Nominet within the stipulated timeframe. Accordingly, the Expert will proceed to a Decision and draw such inferences from the Respondent’s non-compliance under the Procedure as is appropriate.

The following are accepted facts which, save as indicated, would not appear to be in issue between the parties:-

5.1 The Complainant is a limited company which operates a family travel business based in the UK. It has traded under the name ‘AIRLINE WAREHOUSE’ since 1999. Its principal website is at airline-warehouse.co.uk. The Complainant also trades under a number of other names, including JTA Travel and James Travel.
5.2 The Complainant asserts that the Domain Name was initially registered several years ago by a company, Inter-Direct, which went into liquidation and so no steps were taken by the Complainant to recover the name. The Complainant anticipated that it would be able to register the Domain Name when it expired on about 4 February 2004.
5.3 The registration of the Domain Name by Inter-Direct appears to have expired on around 4 February 2004. However, the Respondent registered the Domain Name before the Complainant could do so.

6.1 The Domain Name is identical or similar to a name or mark in which it has Rights.
The Complainant does not have a registered trade mark for the name AIRLINE WAREHOUSE. However, the Complainant asserts that it has Rights, as defined in the Policy, in the name. To support this assertion, the Complainant refers to its licences with ABTA and ATOL. The Complainant also exhibits a number of advertisements for services provided under the name AIRLINE WAREHOUSE which date back to 2000. The Complainant also submits that the name, AIRLINE WAREHOUSE, is not generic as “there is not, and cannot be, a physical thing as a warehouse containing airlines”.
The Complainant asserts that the Domain Name is identical or similar to the Complainant’s name, AIRLINE WAREHOUSE, in which it has built up goodwill and has a reputation.

6.2 The registration of the Domain Name by the Respondent is an Abusive Registration.
The Complainant asserts that the Respondent registered the Domain Name primarily for the purpose 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 out-of-pocket costs. In support of this assertion, the Complainant refers to a number of emails which have passed between a representative of the Complainant and the Respondent. It appears that the Complainant has not provided copies of all of the e-mail correspondence it has had with the Respondent. It would have been desirable for these to have been made available.
In an exchange of emails on 9 February 2004, the Complainant offered to buy the Domain Name from the Respondent for £150. However, the Respondent replied “As I stated, it was not my intention to sell the name. However, as we are in this situation I would accept £1,000 for this domain.   This would compensate my effort and for ideas I had for this domain with an option to buy other domain name.   You can pay by bank transfer, credit card, or cheque or paypal.   On receipt of the payment almost immediately you would be able to use the domain name with full Registrant change to follow”.
The Complainant says that the Respondent deliberately chose the sum of £1,000 so that, after negotiation, it would be reduced to around £750 which would compete with the cost of the Complainant appointing an Expert under Nominet’s DRS to adjudicate the dispute.
The Complainant also contends that the Respondent registered the Domain Name for the purpose of unfairly disrupting the business of the Complainant. The Complainant submits that the Respondent has used the Domain Name in a way which has confused people into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected to the Complainant. In support of this contention, the Complainant exhibits a page to which the Domain Name resolved shortly after the Respondent had registered it.   The page was for a search engine, beegoo.com, which provided links to operators of airline flights. The Complainant asserts that the links were to its main competitors.
In support of its assertions, the Complainant suggests that the Respondent was aware of Nominet’s Policy and his wrongful use of the Domain Name as, following receipt of an email dated 9 February from the Complainant which referred to the Policy, the Respondent changed the page to which the Domain Name resolved to a holding page. The holding page was then subsequently amended to contain a disclaimer that the site was not connected to the Complainant. The disclaimer stated “Please note, airlinewarehouse.co.uk site is in no way associated or affiliated to Alfendo Ltd, JTA travel, James Travel, JT Air or airline-warehouse.co.uk”. However, the Complainant contends that the disclaimer was not sufficient to reduce confusion.
At the time it submitted the Complaint, the Complainant states that the Respondent redirected the Domain Name to a page which included links to web sites which provided information about airlines, travel, flights, holidays and hotels, although the disclaimer still appeared on the page.
The Complainant also submits that the Respondent is in the habit of making Abusive Registrations and refers to a posting in a chat room which apparently evidences the Respondent’s reputation in this respect. Whilst the Complainant refers to a link to the posting, unhelpfully, a copy of the web page was not exhibited to the Complaint. This is unsatisfactory; it is for the parties to submit their evidence, not for the Expert to find it. Accordingly, the assertion is not considered further.
The Complainant also asserts that the Respondent registered the Domain Name as a blocking registration.

In order to succeed, the Complainant must prove, on the balance of probabilities, that:-
it has Rights in respect of a name or mark which is identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy); and
the Domain Name in the hands of the Respondent, is an Abusive Registration (paragraph 2(a)(ii)).
Paragraph 2b of the Policy provides that “the Complainant is required to prove to the Expert that both elements are present on a balance of probabilities”.

7.1 The Complainant’s Rights
First, it is necessary for the Complainant to show that it has Rights in a name which is identical or similar to the Domain Name. The Policy defines “Rights” as including, but not limited to, “rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or a term which is wholly descriptive of the Complainant’s business”.
Accordingly, it is necessary to consider (1) whether the Complainant has rights in the name, AIRLINE WAREHOUSE, which are enforceable under English law and (2) whether the name is wholly descriptive of the Complainant's business.
Does the Complainant have Rights in a name which is similar or identical to the Domain Name which are enforceable under English law?
As it is usual in domain name disputes to disregard the top level or country code suffix, as being a necessary component of a domain name’s address, it is necessary to consider whether the Complainant has Rights in the name, AIRLINEWAREHOUSE. Because internet addresses do not permit spaces between words, there is no practical distinction to be drawn for these purposes between AIRLINE WAREHOUSE AND AIRLINEWAREHOUSE.
First, it is accepted that the Domain Name is identical or similar to the name AIRLINE WAREHOUSE.
Does the Complainant have rights in this name? It does not have a registered trade mark for the name AIRLINE WAREHOUSE. Accordingly, it will be necessary to consider whether it has built up goodwill in the name, AIRLINE WAREHOUSE, which is sufficient for it to claim Rights.
In support of its assertion that it has Rights in the name AIRLINE WAREHOUSE, the Complainant places reliance on the facts and matters set out at paragraph 6.1 above.   Regrettably, it has not submitted much evidence to support its claim that it has acquired rights in the name, such as, evidence of its turnover or profits which it has generated under the name AIRLINE WAREHOUSE. It has also not submitted any evidence of the amount it has spent advertising and promoting the name or details of the traffic to its website, airline-warehouse.co.uk or even pages from its website. It would have been useful for the Complainant to have submitted this type of evidence.
However, the Complainant has filed some samples of advertisements which have been placed in a number of publications which demonstrate that it has been trading under the name AIRLINE WAREHOUSE since 2000 (as well as its ABTA and ATOL licences, which are of doubtful relevance). It has also produced evidence of its affiliate branding with Beatties Stores. The Complainant is also the registered proprietor of the name airlinewarehouse.com.   The Respondent has not filed any evidence to dispute the Complainant’s assertion that it has Rights in the name AIRLINE WAREHOUSE.
In the DRS appeal decision of Seiko UK Limited v Designer Time/Wanderweb (DRS 00248) it was noted that the requirement to demonstrate “rights” is not a particularly high threshold test.   From the sample advertisements provided, it can be seen that the Complainant has traded under the name AIRLINE WAREHOUSE since at least 2000.   Accordingly, on a balance of probabilities the Expert finds that the Complainant has rights in respect of the name AIRLINE WAREHOUSE.
Is the name, AIRLINE WAREHOUSE, wholly descriptive?

Under the Policy, even if a Complainant has established rights in a name, it cannot rely on rights in a name or term which is wholly descriptive of its business. Is AIRLINE WAREHOUSE wholly descriptive of the Complainant’s business?
The Complainant provides travel agency services to individuals, including the sale of air tickets. It asserts that AIRLINE WAREHOUSE, is not descriptive of the services which it provides, as there is no such thing as a warehouse which contains airlines.
The use of the word ‘warehouse’ may indicate that the Complainant sells the airline tickets at competitive prices. However, it is not inherently descriptive. The word “warehouse” can mean a large, usually wholesale, shop but the Complainant sells tickets and travel services, not airlines. Accordingly, (albeit by a narrow margin) the Expert does not consider that the name AIRLINE WAREHOUSE is wholly descriptive of the services which the Complainant provides under the name and the Complainant is able to rely on its Rights in the name for the purpose of a complaint under the DRS.

7.2 On the basis of the above, the Expert finds that the Domain Name is identical to a name in which the Complainant has Rights.

7.3 Abusive Registration
Is the registration of the Domain Name an Abusive Registration.? An Abusive Registration is defined in paragraph 1 of the Policy as:-

(i) was registered or otherwise acquired in a manner which, at the time 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.”
A non-exhaustive list of factors which may constitute evidence that the Domain Name is an Abusive Registration are set out at paragraph 3 of the Policy. This provides that;
“A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:
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 into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations;”
It is for the Complainant to explain why the Domain Name in the hands of the Respondent should be regarded as an Abusive Registration.

7.4 Paragraph 3.i.A: Sale to the Complainant or competitor
Did the Complainant register the Domain Name for the purpose of selling the Domain Name to the Complainant or a competitor for valuable consideration in excess of its out of pocket costs of registration? The Complainant seeks to rely on an email which it received from the Respondent dated 9th February 2004 in which the Respondent offered the Domain Name for sale to the Complainant for the sum of £1,000.
In this e-mail, a copy of which is appended to the Complaint, the Respondent claims that it was not his intention to sell the Domain Name at the time he registered it. However, he then asks the Complainant to pay £1,000 for the transfer of the Domain Name. Whilst the Respondent does not state how much he paid for the Domain Name, it is likely that he paid less than £1,000, particularly as the Respondent stated in the email that the money “would compensate my effort and for ideas I had for this domain”. This suggests that the Respondent sought to obtain a financial benefit which was more than the direct cost of acquiring and using the Domain Name. The Respondent has not filed any evidence to rebut the Complainant’s assertion that the e-mail is evidence that the Respondent’s registration was Abusive.
At the time the Respondent registered the Domain Name, the available evidence suggests that the Complainant was already operating a mature business through an identical name. On a balance of probabilities, the Expert finds that the Respondent registered the Domain Name with the intention of selling it or renting it to the Complainant or a competitor of the Complainant for in excess of the costs incurred by the Respondent in registering and using the Domain Name.

7.5 Paragraph 3.ii: Use in a way which has caused confusion
The Complainant asserts that the use of the Domain Name by the Respondent has caused confusion no evidence of actual confusion arising on the part of the public is provided.
Paragraph 3.ii of the Policy provides that a factor which may be evidence that the Domain Name is an Abusive Registration are “circumstances indicating that the Respondent is using the Domain Name in a way which has [the Expert’s emphasis] confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant”. The wording of the Policy indicates that actual confusion must have arisen by the registration of the Domain Name. As the Complainant has not submitted any evidence of actual confusion the Expert finds that the Complainant has not satisfied the burden of establishing that the registration of the Domain Name by the Respondent has caused confusion.

7.6 Paragraph 3.i.C: Disruption
The Complainant asserts that the Respondent also registered the Domain Name to unfairly disrupt the business of the Complainant. The wording of paragraph 3a.C of the Policy infers that the Respondent must have had an intention to disrupt the Complainant’s business which suggests that the Respondent would need to have been aware of the Complainant’s activities at the time it registered the Domain Name for the registration of the Domain Name to be found to be Abusive on this basis.
In the complaint, the Complainant asserts that the Respondent had stated to the Complainant in an exchange of e-mails that “he had no prior knowledge” of the Complainant.   However, this assertion is not supported by the exchange of emails between the Complainant and Respondent which are exhibited to the Complaint.
The Complainant also asserts that it is likely that the Respondent was aware of the Complainant at the time he registered the Domain Name “as any reasonable person would have checked for the availability of the domains ‘airline-warehouse.co.uk’ and ‘airlinewarehouse.com’, whereupon they would have discovered the existing company”.
However, other than asserting that the use of the Domain Name by the Respondent has caused confusion, the Complainant has not submitted any evidence to support its assertion that the registration and/or acquisition of the Domain Name has unfairly disrupted its business. It is accepted that such evidence might not always be readily available and there may be circumstances where the likelihood that a domain name was registered or acquired in order to disrupt a complainant’s business is so strong that it might be inferred on the basis of very slender evidence. However, there is no evidence at all presented in this case. In the absence of any such evidence, the Expert finds that the registration and use of the Domain Name, on the balance of probabilities, has not unfairly disrupted the Complainant’s business.

7.7 Paragraph 3.i.B: Blocking registration against a name in which the Complainant has Rights
The Complainant asserts that the Respondent registered the Domain Name as a blocking registration, although it does not expand on this assertion.
In circumstances where it has been found that the Domain Name was registered for the purpose of selling or renting it to the Complainant of a sum in excess of the Respondent’s documented out-of-pocket costs (and therefore that, on the balance of probabilities, the Respondent was aware of the Complainant at the time he registered the Domain Name), it will frequently be the case that the registration is also a blocking registration. This is because it is the Complainant’s inability to use the Domain Name which is intended to provide the necessary incentive for it to acquire it from the Respondent. That is the case on these facts and the Expert finds that the Respondent registered the Domain Name as a blocking registration.

7.8 Paragraph 3iii - Pattern of Abusive Registrations
The Complainant asserts that the Respondent has a habit of “drop-catching” domain names in which he has no interest, although the Complainant accepts that the posting in the chat room is not definitive evidence that the Respondent engages in a pattern of making Abusive Registrations.
The Expert does not consider that there is sufficient evidence to find that the Respondent has engaged in a pattern of making Abusive Registrations.

The Expert finds that the Complainant has shown that it has Rights in respect of a name which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. As a consequence, the Domain Name should be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Alfendo Ltd (t/a Airline Warehouse)v Karpavicius [2004] DRS 1576 (16 April 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1576.html Cite as: [2004] DRS 1576

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