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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Joie de Vivre Holidays v Sabloff [2007] DRS 5122 (15 November 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/5122.html Cite as: [2007] DRS 5122 |
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Decision of Independent Expert
Complainant: Joie de Vivre Holidays
Country: GB
Respondent: Ms Sandi Sabloff
Country: Canada
2.1 joiedevivreholidays.co.uk
3.1 The Complaint was entered onto the Nominet system on 8 October 2007 and validated on the same day. The complaint papers were sent to the Respondent on 8 October 2007, and no response was received by the deadline of 31 October 2007. At a date which has not been made clear to the Expert, a Paragraph 13b non-standard submission was submitted by the Complainant. The Complainant paid the required Nominet fee on 5 November 2007 and the Expert was appointed that same day.
4.1 The Complainant has submitted a non-standard submission under Paragraph 13b of the Dispute Resolution Procedure. The Expert has considered the summary of the content of that submission, but does not believe that the additional information the Complainant has sought to put forward alters the position as regards either the facts, the substance of contentions put forward by the Complainant, or the whether or not the Domain Name is an Abusive Registration.
4.2 The role of Paragraph 13b is clearly set out in the Procedure. It is to allow additional information to be put to the Expert where there is an "exceptional need" to do so. Furthermore, the basis of this need must be set out in the introductory paragraph made available to the Expert.
4.3 Accordingly, and given that the Expert believes that the additional information will not alter the ultimate position, there can be no "exceptional need", and so the threshold is not met.
5.1 The Complainant has been working within the French holiday accommodation market for a number of years. It operates as a business whereby clients wishing to rent holiday accommodation in France can use the Complainant's website to search for a property that interests them. Once the user finds one, they can arrange the booking with the property owner via the Complainant.
5.2 The Complainant is an unincorporated business run by Mr Bowles, and owns two pieces of property that are relevant to this complaint. The first is a UK trade mark registration for JOIE DE VIVRE, and the second is the domain name, the primary domain name under which the Complainant trades. I note that the UK trade mark is registered personally to Mr Bowles, and the domain name is owned by Joie De Vivre Holidays. No issue is taken with this.
5.3 For approximately the first three years of trading, the business traded under the name of Property Provençal. It then underwent a rebranding, and was subsequently renamed Joie De Vivre Holidays in September 2006.
5.4 The Respondent organised holiday accommodation via Joie De Vivre Holidays. The date of this is not supplied by the Complainant, but on the basis of uncontested information supplied on the website appearing at the Domain Name, I believe it was during June and July 2007.
5.5 The Respondent was dissatisfied with the quality of the accommodation they received, and made a complaint to the Complainant. I understand that this dispute between the parties is ongoing, and is yet to be resolved to the satisfaction of either party.
5.6 The Respondent, presumably as part of their dispute with the Complainant, took it upon themselves to register the Domain Name. The website hosted at that domain features various statements and details relating to the complaint between the parties.
The Complainant
6.1 The Complainant contends that the Domain Name is an Abusive Registration under the Dispute Resolution Policy and should be transferred to it.
6.2 This contention is on the basis that the Domain Name is confusingly similar with or identical to Rights that the Complainant owns, and therefore the Respondent is infringing these rights.
6.3 The Complainant asserts that this conclusion is supported by:
(a) the fact there is an ongoing dispute between the parties;
(b) the content of the website hosted at the Domain Name is acting to unfairly disrupt the Complainant's business; and
(c) the fact that customers have become aware of the Domain Name, and, will become confused.
The Respondent
6.4 The Respondent has not entered a Response.
General
7.1 For the Complainant to succeed in this Complaint, it must prove on the balance of probabilities both that:
(a) it has Rights in respect in respect of a name or mark which is identical or similar to the Domain Name; and
(b) the Domain Name, is an Abusive Registration in the hands of the Respondent.
7.2 Each of these elements will be dealt with separately.
Rights
7.3 The definition of Rights is wide, and includes, but is not limited to, rights enforceable under English law. Rights will not extend however to a name or term which is wholly descriptive of the Complainant's business.
7.4 The Complainant is the owner of a UK registered trade mark for JOIE DE VIVRE covering various aspects of Class 43 relating to holiday accommodation services and services ancillary thereto.
7.5 The Complainant is also the owner of the domain name. This is the principal domain through which the Complainant conducts and carries on business under the name JOIE DE VIVRE HOLIDAYS.
7.6 No information has been provided by the Complainant as to the size of its business, or the number of page impressions its website receives in a given period of time, and therefore it is difficult to say anything conclusive about the reputation it may have in its JOIE DE VIVRE HOLIDAYS name.
7.7 What is apparent though is that the Complainant, albeit under a different name, traded for three years. During that time it will have built up goodwill and reputation in that name. It then underwent a rebranding a little over a year ago and became "Joie De Vivre Holidays". It notified all its previous customers and other people for which it had an email address of this change. It then continued to trade for a year under this new name, and, whilst no statements or figures as to additional advertising during this period have been provided, its prominent search engine listings results (for example, when the terms "accommodation" and "vivre" are used with Google) suggest effort has been successfully expended here.
7.8 The hurdle to establish Rights is a relatively low one, and on the basis of the above, I consider that the Complainant has Rights in both JOIE DE VIVRE and JOIE DE VIVRE HOLIDAYS.
Abusive Registration
7.9 The Dispute Resolution Policy defines an Abusive Registration as one where the registration:
(a) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition too place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or
(b) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
7.10 The Policy sets out a non-exhaustive list of factors which may tend to indicate that a registration is abusive, as well as factors which may suggest that is it not. The Complainant has, raised a number of these abusive-indicating factors in the case it puts forward, namely:
(a) 3(a)(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 by or authorised by, or otherwise connected to the Complainant.
(b) 3(a)(i)(C) Circumstances indicating that the Respondent has registered or acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.
7.11 I also consider that the Complainant has put forward the case that the fact the Domain Name was registered as part of an ongoing complaint, and that this should be considered a relevant factor. This is not a factor highlighted in the Policy, but the list is non-exhaustive so and is certainly not a bar to relevance.
7.12 Of the factors which may tend to suggest a registration is non-abusive, the one which must be considered in this instance is set out at Paragraph 4(b). That is that the Respondent is making fair use of the domain which "may include sites operated solely in tribute to or in criticism of a person or business".
7.13 The interplay between these various factors is complex, and so I will deal with the issue raised by Paragraph 3(a)(ii) first, which will in turn lead into Paragraph 3(a)(i)(C) and 4(b). The fact that the Domain Name was registered as part of, or subsequent to a dispute between the parties will not be dealt with separately. This is because it's relevance in this instance is limited to its impacts on the issues of "fairness", a theme which runs strongly through paragraphs 3 and 4.
Paragraph 3(a)(ii) - using the Domain Name in a way to confuse people
7.14 The fact that people may be confused by one thing or another is not sufficient to satisfy Paragraph 3(a)(ii). Indeed it has been suggested elsewhere that some people walk around in permanent state of confusion.
7.15 When the Policy was drafted, it dealt with "confusion" and its impact on registrations being Abusive or not in two places, namely Paragraph 3(a)(ii), and, obliquely, in Paragraph 3(a)(i)(C). Paragraph 3(a)(ii) has been carefully crafted to encompass a wide range of scenarios, and yet omit others. This is perhaps most easily understood by setting out the Paragraph "in full". It subsequently becomes:
"Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that:
(a) the Domain Name is registered to the Complainant;
(b) the Domain Name is operated by the Complainant;
(c) the Domain Name is authorised by the Complainant; or
(d) the Domain Name is otherwise connected to the Complainant"
7.16 There is no evidence before me to suggest that the Domain Name has featured anything but the website that it showed when the complaint was filed. It is possible that it has been updated as developments have taken place in the dispute between the parties, but that is undetermined and makes no difference to the point. Accordingly I will have to assess it as it stood when the complaint was filed.
7.17 When you visit the Respondent's website hosted at the Domain Name one of the first, if not the first, thing you notice is the large, red, bold, prominently placed, statement which reads "Warning: Do not use this company or deal with the owner Colin Bowles." On this basis we need to consider the question, is the Respondent really using the Domain Name in a way which confuses people of businesses to believe any of the four statements above are true? I believe not. As a disclaimer, this is very effective.
7.18 There is however another type of confusion that needs to be considered, so-called "initial interest confusion". This is the phenomenon whereby visitors to the Domain Name, in the moment before they actually reach the website, or see the "Warning" disclaimer, believe that the Domain Name is in some way connected to the Complainant. In other words, this initial confusion causes some advantage to the Respondent, and it is the gaining of that advantage, that is unfair. The advantage referred to does not need to be monetary, indeed it could simply be a disadvantage to a third party, perhaps the Complainant.
7.19 There is a line here though, and it needs to be trod very carefully. The concept of initial interest confusion is not some sort of panacea to Rights holders. Frequently domain names are registered which feature the Rights of a third party, but because they are not being used, and instead perhaps resolve to a blank page, the Rights-holder cannot bring their Complaint under Paragraph 3(a)(ii). In other words, the mere registration of a Domain Name does not, under that part of the Policy, allow initial interest confusion to step in and find what could be termed actionable confusion, where there is none.
7.20 The concept of initial interest confusion is a useful addition to the non-exhaustive list of factors which might evidence an Abusive Registration, but whether or not it exists, and whether its existence suggests an Abusive Registration, will always be heavily dependant on the facts in a given case.
7.21 If, for instance, a Respondent was gaining a monetary or reputational advantage in some way, then these factors may count against the Respondent. In the case before me there is no such advantage, and to the extent there is an advantage, it is to get the Respondent's dispute with the Complainant noticed, and potentially to cause disruption to the Complainant's business.
7.22 The Respondent has chosen not to respond to the Complaint, as indeed they are entitled to do, and so I cannot know for certain what advantage they are gaining, or indeed hoped to gain when they registered the Domain Name. For a moment, let us assume the worst case scenario from the Respondent's perspective, that is, that I believe that the advantage they hoped to gain, and indeed are gaining, is publicity for their complaint, and disruption to the Complainant's business. Does that amount to confusion that satisfies Paragraph 3(a)(ii) ?
7.23 To answer this we need to step back and look at the Policy, and in particular Paragraph 4(b), which I have referred to above. It states that "fair use may include sites operated solely in tribute to or in criticism of a person or business". The Domain Name is clearly being used for criticism in this instance. The effect of criticism on the person or business being criticised can vary from benefit at one end of the scale, to detriment at the other.
7.24 What this tells me is that the Policy clearly allows a Domain Name to be used in a way which adversely effects the business or dealings of another, and so, to take the scenario I set out above, using a Domain Name in the hope to gain publicity for a complaint and to disrupt a business can, in some circumstances, be acceptable, and not fall foul of initial interest confusion-type arguments.
Paragraph 3(a)(i)(C) - registered primarily to unfairly disrupt
7.25 This contention overlaps with the issues raised by Paragraph 3(a)(ii) and discussed above. Once again the important distinction to be drawn here is that mere disruption of a business is not necessarily unfair, indeed, this is what happens every day between any set of competing business.
7.26 Having established that not all disruption is unfair, attention needs to be turned to the present case, and whether the disruption in this case is unfair.
Paragraph 4(b) - fair use
7.27 The relevant issues raised by Paragraphs 3(a)(ii) and 3(a)(i)(C) both ultimately come down to whether or not the Domain Name is being used "fairly". If it is not, then any initial interest confusion is likely to play a relevant role on behalf of the Complainant, and similarly, any disruption to the Complainant's business is likely to be unfair disruption.
7.28 One point to make clear is that, in assessing fairness, the role of the Independent Expert is not one of assessing the detail of any dispute outside the bounds of this complaint, or the merits of any ongoing disputes between the parties. This is particularly relevant for the case before me now. The website hosted at the Domain Name contains a detailed series of statements relating to the background of the dispute between the two parties.
7.29 Taken as a whole, and if believed, these statements would not reflect well in the mind of the reader upon the Complainant, and so could be disruptive to its business. Indeed, the Complainant has alleged that an existing customer came across the website hosted at the Domain Name, and brought it to the Complainant's attention. I can well imagine that existing, future and potential customers may do the same, and may even ask the Complainant about the dispute to give them some piece of mind regarding their existing or potential bookings.
7.30 It should be noted that the Complainant has not sought to challenge the information put forward by the Respondent on the website hosted at the Domain Name. There is of course a dispute as to what is acceptable and whether a refund should be given or not, but if what was being stated by the Respondent was manifestly untrue, then of course this would certainly impact on the fairness of the use. I have not been provided with any information which leads me to pursue this line of enquiry, and so I cannot take it any further. Certainly the website contains language which could be seen as inflammatory, for example, "we were cheated", but that is the worst of it, and a reader would expect such things from a criticism website, and afford it the 'salt' it may require.
7.31 As I have already explained, there are many types of fair use which can result in disruption to a person's business, and there is also express provision in the Policy relating to fair criticism, however, before coming to a conclusion on where this Complaint stands, it would be helpful to turn to some of the relevant Nominet decisions in recent times, and see how they deal with these matters.
The impact of other relevant Nominet decisions
7.32 The Policy makes it clear that each Independent Expert when assessing the cases before them is not bound by the decisions which have gone before, be they first instance, or Appeal decisions. That said, all decisions, particularly those of the Appeal Panel, are useful and can be highly persuasive.
7.33 The cases of particular relevance are those in which the Domain Name and the Rights are identical, and where the Domain Name has been used to host a tribute or criticism website. There are a number of these, including those relating to <mossandcoleman.co.uk> (DRS 04198), <jrrtolkein.co.uk> (DRS 03665), <ryainair.org.uk> (DRS 03655), and ultimately the Appeal Panel's decision in Hanna-Barbera Productions, Inc v Graeme Hay (DRS 00389) which related to a website hosted at.
7.34 The <scoobydoo.co.uk> decision, despite dealing with a tribute site, is both the most authoritative, and in a number of ways, the closest to the scenario in this Complaint. Furthermore, many of the subsequent decisions on this point have quoted from it, and followed the points it makes. It should be noted that the Policy wording has changed since this decision was made. However, this makes no difference for the present purposes.
7.35 The sections most commonly quoted state that "the majority of the Panel… [believe]… the vice is in selecting a domain name, which is not one's own name, but which to one's knowledge is identical to the name of another…", and "impersonation can rarely be fair", and that "For a tribute or criticism site, it is not necessary to select the precise name of the person to whom one wishes to pay tribute or criticise". These statements are invariably true, but quoted out of context, they can be misleading. The Appeal Panel then went on to look at in some detail all the various factors that came into play in that case, and it is clear that they are looking at the matter in the round. So as not to overplay the importance of any section of this, I think it would be helpful to set out the relevant text in full below:
"In the view of the majority of the Panel, in the context of a tribute site, the vice is in selecting a domain name, which is not one's own name, but which to one's knowledge is identical to the name of another, which one has selected precisely because it is the name of that other and for a purpose which is directly related to that other. For a tribute or criticism site, it is not necessary to select the precise name of the person to whom one wishes to pay tribute or criticise. In this case the domain name could have been 'ilovescoobydoo.co.uk', for example.
Taking the Domain Name in these circumstances arguably amounts to impersonation of the owner of the name or mark. Substantial numbers of people will have visited the Respondent's website (the Respondent admits to a total of over 37,000 visitors to his site) believing that they were visiting the site of the Complainant, a phenomenon sometimes referred to as 'initial interest confusion'. Prior to the posting of the disclaimer, those visitors might well not have been disabused. The fact that the Respondent was selling official merchandise may have encouraged those visitors in their belief that they were visiting an authorised/licensed site. Notwithstanding the Respondent's denial of any advantage, the Panel is of the view that on the balance of probabilities there must have been an advantage to the Respondent of some kind. Whether or not that 'advantage' has led to financial gain is irrelevant. The question is as to whether the advantage he has taken has been fair.
Even if there has been no advantage to the Respondent, the Domain Name can still represent an Abusive Registration if it has been used so as to have been unfairly detrimental to the Complainant's rights.
The Panel is unanimous in taking the view that, taking all that into account, such a use as the Respondent has made of the Domain Name cannot be fair. Impersonation can rarely be fair. Additionally, the existence of a network of 550+ email users (including the Respondent) using the Domain Name as part of their email addresses exposes the Complainant to risk. In the hands of the Respondent and his network of 550+ email users the Complainant's name and mark is out of the Complainant's control. To that extent its goodwill is outside its control. An email user may bring the name into disrepute. The widespread unauthorised use of the Domain Name in this way may well dilute the distinctiveness of the Complainant's trade mark rights. In the Panel's view these are all matters, which the Panel is entitled to take into account when considering whether registration and/or use of the Domain Name has taken unfair advantage of or has been unfairly detrimental to the Complainant's rights. The risk is a present risk and arises both from what the Respondent has done and will, to a greater or lesser extent, continue to do, if permitted to retain the Domain Name.
Accordingly, it is the Panel's view (irrespective of where the burden of proof lies) that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights and, accordingly, that the Domain Name constitutes an Abusive Registration within the meaning of paragraph 3.a.ii. of the Policy and generally. The burden of proof in this case is upon the Respondent pursuant to clause 4.b. of the Policy, but the Panel would have come to the same conclusion in any event.
For the avoidance of doubt, the Panel has not found that, in registering the Domain Name and in using the Domain Name, the Respondent intended to take unfair advantage of or cause unfair detriment to the Complainant's rights, but honest intentions are not enough."
7.36 There are some important facts to highlight from the <scoobydoo.co.uk> decision.
(a) from registration until Hanna-Barbera's lawyers contacted the respondent, almost three years later, thewebsite did not feature a disclaimer of any sort;
(b) during this initial period, the respondent sold Scooby Doo-related merchandise via the <scoobydoo.co.uk> website;
(c) the respondent allowed people to register for "scoobydoo.co.uk" email addresses; and
(d) the respondent used the complainant's trade marks in both hyphenated and un-hyphenated formats as meta-tags on the <scoobydoo.co.uk> website's homepage to try to increase search engine rankings and general awareness of the website. The Panel ultimately decided that these actions were not inconsistent with the offering of a tribute website.
7.37 The majority of the Panel decided that the disclaimer was ineffective. This was no doubt in part due to the fact it was a late addition to the website, and also in part due to the fact that by the time users had landed on the website, the respondent had gained an advantage that it would not have had otherwise. In this case the advantage caused by the initial interest confusion was a very real one - the opportunity to sell merchandise, something the Panel viewed was clearly of importance to the Respondent.
7.38 As can be seen from the section of the decision reproduced above, the Panel were particularly concerned by the fact that "scoobydoo.co.uk" email addresses were being offered to the public by the respondent. It is clear to see why. Goodwill and reputation is a precious commodity to any enterprise, and, whilst the respondent may have been in safeguarding the complainant's goodwill and reputation on the website hosted at the domain name, it was also allowing the general public to use email addresses which not only feature the complainant's Rights, but also look almost the same as any emails the complainant might have sent from its owndomain. This, the Panel noted, could bring the SCOOBY-DOO name into disrepute, and may dilute the distinctiveness of the complainant's trade marks.
Use of the JOIE DE VIVRE HOLIDAYS map
7.39 I have noticed that the Domain Name features a map of France with Provence and the Languedoc highlighted. This is the same map as features on the Complainant's website. The Complainant does not use this graphic as a logo or designator of origin, but rather as a way in which a user may choose in which part of France to search for holiday accommodation.
7.40 In all likelihood the Respondent has copied the image from the Complainant's website. There are two important points here. First, I do not see the Complainant using the map as an indicator of origin. It is being used as most maps are, for geographic assistance. Secondly, I query whether or not the Complainant is the owner of any rights which exist in the map. Nothing has been shown to me to indicate this is the case. If the JOIE DE VIVRE logo had been used, then this misuse of the Complainant's Rights would certainly have been a highly relevant factor.
Conclusion
7.41 The Respondent has chosen not to respond to the Complaint. I do not believe they have anything in particular to hide, and, whilst it means that some of the points that could have potentially been put forward in their favour are omitted, I will draw no adverse inference from it.
7.42 In short, the Respondent and the Complainant have become involved in a dispute, the merits of which are apparently currently being reviewed by the relevant credit card companies. As a result of this dispute, the Respondent has registered a domain name for the purposes of criticism. This was no doubt intended to cause a reaction from the Complainant, which of course, by virtue of the Complaint currently before me, it has
7.43 What I believe the Respondent has not done though is:
(a) cause people to believe that the Domain Name or the Respondent is connected to or otherwise authorised by the Complainant, or that the Complainant owns the Domain Name. A very effective disclaimer on the website hosted at the Domain Name deals with that;
(b) seek to make a profit from the Domain Name. It would have been very easy for the Respondent to place sponsored advertising on the webpage they have placed at the Domain Name. They have not done this. To do so would certainly harm their cause, as actively seeking to make a profit by trading off another's Rights will seldom be fair;
(c) put the Complainant's goodwill and reputation in jeopardy in such as way that is outside the Respondent's control. This is an important distinction with the <scoobydoo.co.uk> decision. Whilst the content hosted at the Domain Name, and the way the Domain Name is used (eg. for email addresses) is within the control of the Respondent, as long as the way they exercise that control is fair and otherwise not indicative of an Abusive Registration, it will be difficult for the Complainant to take issue with it. The point being that if the Complainant's business is disrupted, this is not unfair disruption.
However, once the Respondent uses the Domain Name in such a way which is not fair, or is indicative of an Abusive Registration, or (and this is the point with respect to the "scoobydoo.co.uk" email addresses) puts the Complainant's goodwill and reputation in harm's way such that the way it is doing it is outside the Respondent's control, or is of itself unfair, then it is likely that these actions will be seen as Abusive.
7.44 The three factors set out immediately above are all important differentiators between the case before me, and the <scoobydoo.co.uk> Appeal decision. Tribute, and even more so criticism, websites, are an important part of the Internet community, and business generally. This has been acknowledged by Nominet by virtue of the inclusion of Paragraph 4(b).
7.45 There has been comment by various Independent Experts before me that where the Domain Name exactly matches the Rights, then the criticism or tribute will not be fair, and so forth. I believe this is a misinterpretation of the guidance delivered in the <scoobydoo.co.uk> Appeal decision, and could result in an unintended interpretation of the Policy. I think it is clear that there are times where a Domain Name which is identical to a Complainant's Rights can be fairly used by a Respondent, and this is one of those times.
8.1 I find that the Complainant has Rights in the JOIE DE VIVRE HOLIDAYS name, and that this is identical to the Domain Name. I also find, on the balance of probabilities that the Domain Name, and more specifically the website hosted at it, have the ability to disrupt the business of the Complainant. Indeed they may be doing so now. However, I find that this is fair disruption in accordance with the narrow fair use criticism exemption of the Policy, and therefore no action should be taken.
Stephen Bennett Date
