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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Thomas Cook UK Ltd v PX Publishing Ltd [2005] DRS 02568 (1 July 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2568.html Cite as: [2005] DRS 2568, [2005] DRS 02568 |
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Complainant: Thomas Cook UK Limited
Country: GB
Respondent: P.X. Publishing Ltd
Country: GB
club1830.co.uk
The Complaint was lodged with Nominet on 20 April 2005. Nominet validated the Complaint and notified the Respondent (for the attention of Mr T Healy, the Respondent's contact) of the Complaint on 29 April 2005 and informed the Respondent that he had 15 until 24 May 2005 to lodge a Response. A response was received on 3 May 2005 and forwarded to the Complainant on 6 May 2005 with an invitation to make any further submission in reply to the Response by 13 May 2005. The Complainant did not file any further submission by 13 May 2005 and, on 2 June 2005 Nominet informed the parties that it had not been possible to achieve a resolution of the dispute by Informal Mediation and invited the Complainant to pay the fee to obtain an Expert Decision by 16 June 2005 On 9 June 2005 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
On 22 June 2005, David King, the undersigned, ("the Expert") 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 brought to the attention of the parties, which might appear to call into question his independence and/or impartiality.
Following the submissions referred to in paragraph 3 above, the parties made
"non-standard submissions" to Nominet under paragraph 13 of the Nominet's
Procedure. When the Complainant paid Nominet's fee on 9 June 2005, it
said that it would like the expert to consider a further piece of evidence and
attach the submission on a separate sheet. In a letter to Nominet on 13 June
2005, the Complainant stated that, at the time of submitting the Complaint, it
was not aware that Mr Healy was a director of P.X. Publishing Limited and
asked that a further submission be allowed to be made under Section 13B of
Nominet's DRS Procedure. It appears that Nominet received the further
submission from the Complainant and forwarded a copy to the Respondent,
who submitted a response, which did not comply with Paragraph 13.
Paragraph 13 of the Procedure reads as follows:
"13 Further Statement
a. In addition to the complaint, the response and if applicable the reply and any appeal, the Expert may request further statements or documents
from the Parties. The Expert will not be obliged to consider any statements or documents from the Parties which he or she has not received according to the Policy or this Procedure or which he or she has not requested.
b. Any communication with us intended to be passed to the Expert which is
not part of the standard process (e.g. other than a complaint, response, reply, submissions requested by the Expert, appeal notice or appeal notice response) is a "non-standard submission". Any non-standard submission must contain as a separate, first paragraph, a brief explanation of why there is an exceptional need for the non-standard submission. We will pass this explanation to the Expert, and the remainder will only be passed to the Expert at his or her sole discretion. If there is no explanation, we may not pass on the document or information."
The Complainant wished to make a further submission out of time because it
said it was not aware that Mr Healy was a director of P.X. Publishing Limited.
case. Although the response to the Complaint was made by Mr Healy,
Nominet's WHOIS search (a copy of which is included in the papers supplied
to the Expert by Nominet) clearly shows that the registrant of the Domain
Name is P.X. Publishing Limited. Furthermore, in e-mail correspondence
between the parties (to which the Expert makes reference in paragraph 7
below) Mr Healy uses an e-mail address at "pxpublishing". In the view of the
Expert, the Complainant ought to have been aware from the outset that the
registrant was, and that the Respondent is, P.X. Publishing Ltd
notwithstanding that the Complainant and Nominet have been corresponding
with Mr Healy.
As far as the Respondent's request to make a further submission is
concerned, Mr Healy has declined to give any explanation as to why there is
an exceptional need for a further submission to be passed to the Expert.
In the circumstances, the Expert does not consider that it is appropriate to
Request from Nominet details of the parties' non-standard submissions.
The Complainant is a well-known travel services company and owns a
number of trade and service marks for the mark CLUB 18-30 in the UK and
other countries.
On the internet, the Complainant operates from its website at
www.club18-30.com and has registered various domain names incorporating
the name.
The Expert notes that, when notifying the Respondent of the Complaint,
Nominet addressed the correspondence "FAO Mr Terry Healy PX Publishing
Limited" at the same address which Mr Healy has used subsequently. In the
circumstances, and bearing in mind the comments made in paragraph 4
above, the Expert regards the Respondent as P.X. Publishing Ltd and Mr
Healy as an officer of the company with authority to represent the
Respondent.
The Respondent registered the Domain Name on 14 July 2004.
Complainant:
The Complaint reads as follows:
"I confirm that the domain name in the hands of the Respondent is identical to a trade mark in which Thomas Cook has rights. Club 1830 is a trading name used by Thomas Cook UK Limited .(previously called Thomas Cook Holdings Limited ) Club1830 has been arranging holidays for the public since 1965. Club1830 acts as a tour operator putting packages together and selling holidays to the public through a range of brochures branded Club1830. A copy of the most recent brochure is enclosed. As club1830 operates in the UK, Europe, USA, Canada and other countries goodwill and brand recognition have been established in the name. In our view it is a well known brand. A portfolio of trade and service marks has been registered for the name in the UK and other countries, details of which are set out in the attached schedule 1. We also trade from a website club18-30.com and have registered a number of domain names which incorporate the name, including those shown on schedule 2. The complainant is a member of the Association of British Travel Agents and has registered club1830 with them as a trading name. This is an abusive registration since the name is a well known brand and in our view the domain was purchased with the object of setting up a site and benifiting from the goodwill/ rights which the complainant has built up in the name or selling the name to our company or third party for an amount in excess of the cost of registration or indeed the cost of arranging the transfer. Before purchasing the domain from another party the Respondent was made aware of the rights that the complainant has in the name. Attached- schedule 3 is a copy of e-mail exchanges between the complainants agent (netnames) and the respondent in which the domain name was offered for sale for a sum of £1500. The respondent has set up a travel website -club1830.com -trading on the goodwill of our name and infringing our trade mark rights."
The Expert confirms that he has perused the schedules to the Complaint supplied by the Complainant with the hard copy of the Complaint.
Respondent:
The Response reads as follows:
"I purchased the domain name www.club1830.co.uk in good faith from a domain seller for an over 18 UK online dating project that I intend to start working on as soon as this situation is resolved. My company operate a number of adult websites (PX Publishing Ltd) in the USA. www.projectvoyeur.com www.thetruevoyeur.com www.ipostnaked.com Club1830.co.uk is going to be our new UK online dating community site. I believe Thomas Cook have the rights to -> Club18-30.co.uk My domain is different -> club1830.co.uk In support of my case I urge you to examine the latest US domain dispute decisions most notably the www.voyeur.com v's www.voyuer.com typo dispute. The domain market is so competitive and tight that it seems unfair that such a large organisation should have blanket rights for any domain name containing the word "club" and the numbers "1830" .... I look forward to a favourable decision."
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it
must prove to the Expert, on the balance of probabilities, both that it has
Rights in respect of a name or mark which is identical or similar to the
Domain Name and that the Domain Name, in the hands of the Respondent, is
an Abusive Registration as defined in paragraph 1 of the Policy.
Complainant's Rights
The Complainant has provided extensive evidence of its use of the name
"CLUB 18-30" including details of trade mark registrations for various forms of
the CLUB 18-30 mark in the UK and other countries. It is also apparent that
the Complainant is the owner of goodwill and reputation in the name "CLUB
18-30", which it has used for arranging holidays for the public since 1965.
On the basis of the evidence submitted, it is clear that the Complainant has
substantial rights in the name "CLUB 18-30" within the meaning of the Policy.
The Domain Name is identical or similar to the name used by the
Complainant. In assessing whether or not a name or mark is identical or
similar to a domain name, it is appropriate to discount the domain suffix
which is of no relevant significance and wholly generic. It is also
appropriate to discount whether or not there is a hyphen between "18" and
"30", which is immaterial and does not alter the identical or similar nature of
the name; this was confirmed by the Decision of the Appeal Panel in DRS
00583 regarding a complaint made the Complainant in respect of the domain
name "club1830reunited.co.uk.
The Expert finds that, for the purposes of the Policy, the Complainant does
have Rights in respect of a name or mark which is identical or similar to the
Domain Name.
Abusive Registration
Is the Domain Name, in the hands of the Respondent, an Abusive
Registration? Paragraph 1 of the Policy defines "Abusive Registration" 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 the Complainant's Rights; OR
ii has been used in a manner which took unfair advantage of or was detrimental to the Complainant's Rights."
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy.
The Complainant submits that the Respondent purchased the Domain Name with the object of setting up a site and benefiting from the goodwill/ rights which the Complainant has built up in the name or selling the name to the Complainant or third party for an amount in excess of the cost of registration or indeed the cost of arranging the transfer.
The Respondent submits that it purchased the Domain Name in good faith for an over 18 online dating project that it intends to start working on as soon as the dispute is resolved. The Respondent refers to a number of adult websites it operates in the USA and urges the Expert to examine the latest US domain name dispute decisions most notably the www.voyeur.com v www.voyuer.com typo dispute. The Expert has made basic searches for disputes involving these two names, which have produced no result. The Expert does not consider it part of his task to make exhaustive searches or to speculate on the grounds on which the Respondent relies to support its case. It is for Respondents to set out their own case and provide evidence to support it, when making their submissions. In any event the Expert has already found that the presence or absence of a hyphen between "18" and "30" is immaterial. Furthermore, Nominet's DRS Policy differs from the policy applied in other domains. The Expert is therefore satisfied that he should proceed with his decision without further reference to the cases referred to by the Respondent.
The Respondent has not explained why it chose the Domain Name for the web-site, which it states it intends to develop. The Domain Name is quite different from the names of the web-sites operated by the Respondent in the USA. The Respondent must have been aware of the Complainant's rights in the name "CLUB 18-30" when it registered the Domain Name in July 2004 and it is likely that it was aware of a number of earlier Nominet DRS Decisions involving the Complainant, including the Decision of the Appeal Panel in DRS 00583 referred to above as Decisions made under Nominet's DRS are readily accessible on Nominet's web-site. The Expert wonders why the Respondent decided to acquire the Domain Name to which the Complainant was likely to object when it could have easily have registered or acquired some other suitable name. The Expert concludes that, on the balance of probabilities, the Respondent chose the Domain Name in order to take unfair advantage of the goodwill attaching to it and, thereby attract business to its new web-site. Accordingly, the Expert upholds the Complaint on this ground alone.
The second ground on which the Complainant relies falls to be considered in paragraph 3 a i A, under which there may be evidence of Abusive Registration if circumstances indicate that the Respondent has registered or otherwise acquired the Domain Name 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".
With the Complaint, the Complainant has submitted copies of an exchange of e-mails between Helen McKean of Netnames, who represented the Complainant, and Mr Healy on 8 February 2005. In summary, Ms McKean requested that the Domain Name be transferred to the Complainant, who had rights in the name; Mr Healy replied that he had purchased the Domain Name for a proposed project; Ms McKean informed Mr Healy that, if he proceeded, the Complainant would file a DRS case at Nominet; Mr Healy replied that the Complainant could proceed with the DRS or, alternatively, it could offer to purchase the Domain Name; Ms McKean enquired the price which Mr Healy would be willing to sell for and Mr Healy told her that he had recently sold two other domain names for £1500 each and that a similar offer would save the time and cost of a potential legal fight.
To succeed under paragraph 3 a i A, the Complainant must prove to the Expert that, on the balance of probabilities, the Respondent registered the Domain Name primarily for the purpose of selling it for a profit. In the view of the Expert, on the basis of the available evidence, the Complaint might be under some difficulty in proving that this was the primary purpose of the Respondent in this case. In any event, the Expert does not consider it necessary to make a finding under paragraph 3 a i A, as he has already decided to uphold the Complaint for the reasons mentioned above.
The Expert has considered paragraph 4 of the Policy headed "How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration". The Expert does not consider that paragraph 4 of the Policy would assist the Respondent in this case. The Expert finds that the Respondent's registration of the Domain Name took unfair advantage of the Complainant's Rights. Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.
In light of the above findings, namely that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name www.club1830.co.uk be transferred to the Complainant.
David King 1 July 2005
