WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thomas Cook Holdings Limited v. Sezgin Aydin
Case No. D2000-0676
1. The Parties
The Complainant is Thomas Cook Holdings Limited, represented by Titmuss Sainer Dechert [now DECHERT] of 2 Serjeants' Inn, London EC4Y 1LT, UK.
The Respondent is Sezgin Aydin, represented by Mark Lloyd & Co., 10 The Lux Building, Hoxton Square, London N1 6NU UK.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is hot18to30.com
The Registrar is Namesecure.com.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center [the Center] in hard copy on June 26, 2000. This was acknowledged on July 3, 2000. In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules] as approved by ICANN on October 24, 1999, and the Center's own Supplemental Rules in effect as of December 1, 1999 [the Supplemental Rules], the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24, 1999 [the Policy], the Rules and the Supplemental Rules. The Center subsequently noted that the Complaint had not been submitted in electronic format and evidently invited the Complainant to remedy this deficiency. The Complaint was eventually submitted in electronic format on August 3, 2000. The Complaint was submitted in English and, both parties being located in England, the proceedings have been conducted in English. The Complainant has paid the specified fee to the Center.
The Center first sent a Registrar Verification Request to email@example.com on July 3, 2000 and subsequently received a Registrar Verification response on August 3, 2000, noting that the domain name was registered in the name SEZGIN with contact details at Recep Aydin, 34 Buckland, London and email firstname.lastname@example.org.
Proceedings in this case were formally commenced when the Center duly sent notification of the Complaint to "SEZGIN" on August 3, 2000 by email to email@example.com and firstname.lastname@example.org and by post to Recep Aydin, 34 Buckland Court, St Johns Est., London N1 5JJ, which was the apparently more complete contact address provided in the Complaint. The notification to the Respondent advised that a Response would need to be submitted to the Center no later than August 22, 2000 to be sure of being considered in these proceedings.
On August 9, 2000 the Center received an email advice from Mark Lloyd & Co., solicitors giving notice that they had been instructed to represent Mr. Sezgin Aydin (thereby properly identified as the Respondent in these proceedings), and expressing the intention to file a Response in due time.
A Response was received by the Center from the Respondent's representatives by email on August 17, 2000.
On August 23, 2000 the Center invited Mr. Keith Gymer by email to serve as single Panelist in these proceedings and his Statement of Acceptance and Declaration of Impartiality and Independence was transmitted on August 25, 2000. The Center appointed Mr. Gymer as Panelist on August 29, 2000 and notified the Respondent and the Complainant's representatives of this appointment by email on the same day.
4. Factual Background
The Complainant is Thomas Cook Holdings Limited.
According to the undisputed WHOIS records, the Respondent registered the domain name hot18to30.com on January 2, 2000.
The Complainant has operated a holiday business under the name Club 18-30 for over 15 years and claims to be the proprietor or applicant for registration of a number of trade marks. Specifically:
Country/No. Mark Classes Registered/Filed Status
UK 1285878 CLUB 18-30 42 October 1, 1986 Registered
UK 1427422 Club 18-30 (Stylised) 18, 25, 39, 42 May 10, 1990 Registered
UK 2169954 Club 18-30 (Stylised) 39, 42 June 18, 1998 Registered
EC 207365 CLUB 18.30 (Stylised) 18, 25, 39, 42 April 1, 1996 Registered
EC 207381 CLUB 18-30 18, 25, 39, 42 April 1, 1996 Pending
US 75/468695 Club 18-30 39, 42 April 16, 1998 Allowed
(Some of the details above, which were not originally provided in the Complaint, have been obtained from official on-line Registry records for completeness)
The Complainant also trades from its existing website at www.club18-30.co.uk.
Otherwise, the Complainant and the Respondent made a number of further contentions by way of the Complaint and Response respectively. These are summarised below.
5. Partiesí Contentions
In addition to the trade mark registrations and applications specifically identified above, the Complainant asserts that it advertises Club 18-30 holidays extensively in a number of media and that as a consequence of its use of the mark Club 18-30 it has acquired and owns goodwill and reputation in the name in the UK the EC and the USA. No evidence was provided specifically supporting these claims.
The Complainant further asserts that:
- the domain name hot18to30.com, registered by the Respondent, is confusingly similar to the Complainantís trade mark Club 18-30;
- "18to30" and "18-30" are distinctive of the Complainant.
- the Respondent proposes to use the domain name hot18to30.com for a web-site offering information on holidays including those operated by the Complainant, although at the time of the complaint it is alleged there was no active web-site at the domain name;
- the Respondent does not appear to have any legitimate interest in the name "Hot18to30" and/or the relevant part of the Complainantís mark, "18-30" (pronounced, eighteen to thirty or eighteen thirty);
- the Respondent does not appear to have previously conducted any commercial enterprise or non-commercial activity under the name, "Hot18to30";
In support of its contentions, the Complainant refers to a letter the Respondent wrote to the Complainant on March 9, 2000 (a copy of which was attached in evidence as Annex D to the Complaint), in which the Respondent wrote:
"We at hot18to30.com are setting up a website that will give out information on "hot" holiday resorts & restaurants, advice on last minute deals and club 18 to 30 holidays.
We have chosen your company as our main travel agents, we are willing to advertise your holidays from the site that offer the best deals for our visitors which are mainly 18 to 30 year olds.
We would like to utilise online booking facilities and as such the only requirement that we have is that visitors from our site have a preferential rate of some kind.
We would do all technical work, but will require your links URL addresses etc, for our technical staff to complete the links to your sites effectively.
Hot18to30.com will be online by the middle of April this year with a strong advertising campaign in local newspapers. radio and billboards.
If this will be of interest to your company (there will be no costís involved for Thomas Cook) we would appreciate a letter confirming this and any requests or points you may need to raise."
On May 25, 2000 the Complainantís representatives claim to have written to the Respondent asking him to transfer the domain name, hot18to30.com to the Complainant. No copy of this correspondence was included in evidence nor was there any reference to a reply from the Respondent.
The Complainant additionally asserts that:
- although the domain name was not then being used by the Respondent, it is clear that once a web-site was set up, the Respondent would use it for commercial purposes in respect of goods and/or services for which the Complainant has registered trade mark rights;
- the domain name appears to have been deliberately chosen to attract Club18-30 internet users which is evidenced by:
- its confusing similarity to the name, "Club18-30";
- the fact that the proposed web-site content at the domain name would include editorial and advertisements concerning the Complainantís holidays; and
On the basis of its evidence and assertions, and "[i]n accordance with Paragraph 4(b)(i) of the Policy" [sic] the Complainant requests that the domain name hot18to30.com should be transferred to the Complainant. [Note: Paragraph 4(b)(i) of the Policy refers to certain circumstances which are evidence of the registration and use of a domain name in bad faith - the Panelist assumes the Complainant actually meant to refer to Paragraph 3(b)(i) of the Rules which is relevant to submission for a decision.]
The Respondent asserts in particular that the domain name hot18to30.com cannot be considered as confusingly similar to Club 18-30 because:
- it does not use the word "club";
- it uses the adjective "hot" which has no connection with the Complainant and is nothing to do with Club18-30;
- it uses the word "to" rather than a hyphen;
- a number of the Complainant's registrations carry a disclaimer that the registration of the mark "shall give no right to the exclusive use, separately of the word and the numerals "club", "18" and "30"", and that the Respondent's use of "18" and "30" falls within the provision of that disclaimer;
- the words "18to30" are not distinctive of the Complainant because they are words that are commonly used to describe the boundaries of young adulthood.
The Respondent admits that his brother wrote the letter to the Complainant of March 9, 2000 but claims that he would not have taken this action if he wanted to take advantage of the Complainant's name unlawfully. The Respondent merely claims that he saw a degree of synergy between what he was planning to do and what the Complainant was doing and was simply offering to provide the Complainant with free advertising.
The Respondent alleges that he does not propose to use the web-site solely for the purpose of offering information on holidays, but for general information about anything "hot" that would interest the age group concerned. The Respondent claims to have a legitimate interest in the name, which is sufficiently different from the Complainant's name to have its own rights and interests.
The Respondent denies that the name has been deliberately chosen to attract Club18-30 internet users and, in particular, denies:
- that the name is confusingly similar,
- that the website will include advertisements from the Complainant unless the Complainant agrees to advertise;
- the website will link to the Complainant's website unless the Complainant agrees to it.
The Respondent further denies that he chose the domain name intentionally to attract for commercial gain internet users who might mistake the Respondent's domain for the Complainant's to the Respondent's website; the Respondent wants to attract users to its website, but he does not want to be associated with any other commercial entity because it wants to be seen as an independent source of information. The Respondent does not think that the name will make people think that it is associated with "Club18-30" and that was not his intention when he registered the name.
The Respondent asserts that he has not registered the domain name in bad faith. The Respondent only offered to advertise the Complainantís business free of charge because it was the travel company that was most likely to provide the goods and services that would interest the Respondentís users.
The Respondent submits that the Complainant has overreacted to a situation, which it only became aware of through the entirely innocent and reasonable approach of the Respondent.
The Respondent consequently opposes the request for transfer of the domain name to the Complainant.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy that:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6.1 Is the domain name identical or confusingly similar to a trademark or service mark in which the Complainant has rights?
In the present case, the Complainant claims rights principally in the mark "Club 18-30", and the domain name is hot18to30.com.
The two are plainly not identical, but share an obvious similarity insofar as they both contain a reference to the range 18-30 in equivalent terms. It is commonplace in written form to replace the conjunctive use of "to" with a hyphen (-) or slash (/) to indicate the connection. The Panelist, therefore, does not consider the Respondent's use of "18to30" makes any significant difference to this particular similarity between the Complainant's trade mark and the domain name. However, the similarity is between parts of the respective trade mark and domain name which, considered alone, are inherently descriptive, as the Respondent observes, of significant ages in early adulthood.
As the Respondent has also correctly observed, the Complainant's UK trade mark registrations 1285878 and 1427422 are each subject to the explicit disclaimer:
"Registration of this mark shall give no right to the exclusive use, separately, of the word and the numerals "Club", "18" and "30"."
The Complainant's later UK registration 2169954 does not include this disclaimer explicitly, but is stated as "Proceeding because of prior rights in Registration No 1285877 and 1285878". i.e. registration was only allowed on the basis of the earlier registrations which are themselves subject to the express disclaimer. Accordingly, in the absence of evidence to the contrary, the later registration must implicitly be subject to the same limitation.
As the European Court of Justice adjudged in Sabel B.V. v. Puma A.G. (Case C-251/95):
".... the appreciation of the likelihood of confusion "depends on numerous elements and, in particular, on the recognition of the trade mark on the market, of the association which can be made with the used or registered sign, of the degree of similarity between the trade mark and the sign and between the goods or services identified". The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case."
"That global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The wording of Article 4(1)(b) of the Directive - "..... there exists alikelihood of confusion on the part of the public ....." - shows that the perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details."
"Ö the mere association which the public might make between two trade marks as a result of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of confusionÖ"
Taking the marks as a whole, even given the common descriptive element ("18-30"; "18to30"), the fact is that "Club" and "hot" are neither visually nor phonetically similar, nor are they synonymous, so the overall perception is that the two are different and readily distinguishable.
Consequently, and consistent with the analysis specified in the Sabel case, the Panelist concludes that the domain name is neither identical nor confusingly similar to the Respondent's trade mark "Club 18-30".
The Panelist is reinforced in this conclusion by the presence of the disclaimer in the most relevant UK registration 1285878 (which is for the Complainant's mark in plain text rather than in a logo form).
In March 2000, the UK Trade Marks Registry itself issued a Practice Amendment Circular (PAC 3/00) on the relevance of disclaimers to considerations of objections to registrability on the grounds of alleged confusing similarity with an earlier registered mark, in which the Registrar stated:
"Where the only component of the earlier trade mark which could be regarded as creating a similarity with a later trade mark is the subject of a disclaimer to any exclusive right, the examiner will not consider the marks to be similar enough to create a likelihood of confusion."
This Practice was established following a decision by one of the Registrarís Principal Hearing Officers in an opposition by Paco Rabanne Parfums to applications by Paco Holdings Ltd for marks including the name "Paco".
(The decision is available in full at http://www.patent.gov.uk/decisions/tmarks/1999/pdf99/0_359_99.pdf).
The Hearing Officer reviewed the effect of disclaimers, both under applicable UK and Community legislation, in detail, and concluded:
"Öthat the entry of the disclaimer should be regarded as an admission by the proprietor that - in any proceedings based upon the registration with the disclaimer - the disclaimed matter is not to be regarded as in itself distinctive of the trade origin of the proprietorís goods or services. In these circumstances, use of the disclaimed matter by another party, as a trade mark, cannot, without other similarities, be sufficient to give rise to a likelihood of confusion with the registered trade mark concerned."
There being no "other similarities" in the present case, the Panelist considers that the presence of the disclaimers serves to confirm the view that the Complainant's allegation that the domain name is confusingly similar to the "Club 18-30" mark is not justified.
The Complainant has also asserted that it owns registered trade mark rights in "Club 18-30" other than in the UK. The Complaint included only basic details of a number of such alleged rights. Although the Respondent's representatives indicated, perhaps prematurely, in the Response that the Respondent was prepared to accept the existence of the claimed registrations, the Complaint did not provide sufficient evidence to confirm ownership and subsistence of those rights to the Panelist's satisfaction, and the Panelist would not have been prepared to accept them on that basis.
The Panelist has also previously had to consider the Complainant's claims in respect of the same alleged rights in WIPO Case D2000-0725 (Thomas Cook Holdings Ltd. v. Matthew Dinham), where the supporting evidence presented with the Complaint was also inadequate to confirm the Complainant's claims. Rather than dismiss the claims peremptorily or delay the proceedings by requiring the submission of supplementary evidence, the Panelist had previously sought simply to independently verify those claims by reference to the relevant Trade Marks Registry details, which are conveniently accessible online. The Panelist was unimpressed to find that the information provided in the Complaint was apparently not accurate or complete in a number of salient aspects.
UK registrations 1427422 and 2169954 relate to stylised logo forms of the Club 18-30 mark. Copies of the logo marks as registered were not included in the details provided with the Complaint and the fact that these registrations were not for the mark in plain text was not admitted in the body of the Complaint. The Panelist has checked the form in which each mark is actually registered. In each case, the stylisation amounts to presentation of Club 18-30 in a frame and a particular font, which does not change the dominant textual impression of the mark. 1427422 is evidently for an older logo, which may therefore no longer be in use. 2169954 is for the logo in the form currently in use on the Complainant's own established website.
Community registration 207365 is for the older, stylised logo.
Community application 207381 is for the text mark CLUB 18-30.
The Community Trade Mark Office online records show that 207381 has not yet been registered because it has evidently been under opposition - a fact not disclosed in the Complaint. More pertinent, and also not disclosed in the Complaint, is the fact that both Community marks are presently recorded in the name of The Thomas Cook Group Limited and NOT the Complainant in these proceedings. The Panelist is prepared to accept that there is some obvious relationship between the two, but if the Complainant expected to benefit from reference to these Community marks then it needed to explain how the Complainant derives its entitlement to rights officially recorded in another company's name.
Similarly, upon inspection, it transpires that the US application 75/468695 cited in the Complaint is also not in the Complainant's name, but was filed and is presently officially held by one Flying Colours Leisure Limited, whose possible relationship with the Complainant is certainly not readily apparent.
It may be that there is an assignment which is yet to be recorded in the official Registry records, but since the relevant official records show that the Complainant's representatives (and their US affiliate) are directly responsible for the prosecution of all the cited trade marks, the Panelist considers the failure to address and explain the apparent inconsistencies and inaccuracies in the representations made in the Complaint, and identified above, is not acceptable in evidentiary proceedings of this nature.
In proceedings under the Policy, both the Complainant and Respondent are required to provide certification pursuant to Paragraph 3(b)(xiv) and Paragraph 5(b)(viii) of the Rules respectively. Paragraph 4(k) of the Policy specifically contemplates that a decision based on evidence in proceedings under the Policy may be subject to action in a Court of law. Accordingly, in the Panelist's submission, certification in these proceedings should be considered equivalent to the giving of a Statement of Truth in a Witness Statement or the swearing of an affidavit or Statutory Declaration and treated with the same seriousness.
In the light of the apparent inconsistencies and inaccuracies identified above, and the absence of further substantive evidence, the Panelist is unable to accept the Complainant's assertion of rights, goodwill or reputation in the Community as a whole, or in the US, and the claims to Community and US trade marks have been disregarded (they would not have influenced the Panelist's decision in any event).
The Complainant has also asserted that ""18to30" and "18-30" are distinctive of the Complainant", with the implication that the Complainant has rights in the designations "18to30" and "18-30" separately from its actual mark "Club 18-30", and that the Respondent's domain name is therefore confusingly similar to such designation.
The existence of the express disclaimers in the relevant UK registrations is clearly substantially prejudicial to the Complainant's assertion by itself. As has been noted above, the designations "18to30" and 18-30" are directly descriptive of key ages in young adulthood. Consequently, if the Complainant seriously expects any credence to be given to its assertion of distinctive rights in such designations it would have to provide substantial and convincing evidence to support such a claim. It has provided none. Accordingly, the Panelist considers such a claim to be overreaching and unsupported in these proceedings.
The Panelist therefore finds that the domain name is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
6.2 Does the Respondent have no rights or legitimate interests in respect of the domain name?
In the Panelist's view the evidence suggests that the Respondent has a reasonable claim to have a legitimate interest in the domain name, even if the Respondent could be said to have been somewhat naive in its initial approach to the Complainant.
However, in view of the finding in 6.1 above, it is not necessary for the Panelist to come to any formal decision on this requirement of the Policy.
6.3 Has the domain name been registered and is it being used in bad faith?
As the domain name is not confusingly similar to the Complainant's mark, and the evidence suggests the Respondent has been open about its intentions (if not perhaps as "entirely innocent" as the Respondent claims), the Respondent's actions appear more indicative of foolish and unrealistic expectations than bad faith.
However, as for 6.2, in view of the finding in 6.1 above, it is not necessary for the Panelist to come to any formal decision on this requirement of the Policy.
For the reasons explained in Section 6 above, the Panelist decides that the requirements of Paragraph 4(a)(i) of the Policy have not been met. Accordingly, the Panelist dismisses the Complaint.
Dated: September 11, 2000