WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Thomas Cook Holdings Limited v. Matthew Dinham

Case No. D2000-0725

 

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 Matthew Dinham, represented by Birchall Blackburn of Waldorf House, 5 Cooper Street, Manchester M2 2FW, UK.

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is club1830.com

The Registrar is Network Solutions, Inc.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center [the Center] in hard copy 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. On July 14, 2000, the Center issued a Complaint Deficiency Notification to the Complainant's representatives noting that the Complaint had not been submitted in electronic format and inviting the Complainant to remedy the deficiency within 5 days. The Complaint was first submitted in electronic format on July 14, 2000, and was subsequently re-submitted in electronic format for reasons which are not clear from the file, apparently in a corrected form on July 21, 2000. The Panelist has compared the original hard copy of the Complaint and the version later submitted in electronic format and has identified only immaterial, minor format changes. 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 received the requisite Registrar Verification response on July 21, 2000, from Network Solutions, Inc., confirming that the Respondent, Matthew Dinham, is the current registrant of the domain name club1830.com.

Proceedings in this case were formally commenced on July 28, 2000, when the Center sent a copy of the Complaint to the Respondent at mattd@leisuregroup.co.uk, which is the email address for the Respondent as recorded in the Administrative Contact details for the domain name at issue. A hard copy of the Complaint was sent by courier to the Respondent's postal address on the same date.

The notification to the Respondent advised that a Response would need to be submitted to the Center no later than August 16, 2000, to be sure of being considered in these proceedings. A Response was received from the Respondent's representatives on the specified deadline.

On August 25, 2000, the Center invited Mr. Keith Gymer to serve as single Panelist in these proceedings and his Statement of Acceptance and Declaration of Impartiality and Independence was transmitted the same day. The Center appointed Mr. Gymer as Panelist on August 28, 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 club1830.com on December 11, 1999.

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 were not originally provided in the Complaint have been obtained from official 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

A. Complainant

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 club1830.com, registered by the Respondent, is identical or confusingly similar to the Complainantís name and trade mark Club 18-30;

- the Respondent does not appear to have any legitimate interest in the name Club1830;

- the Respondent does not appear to have conducted any commercial enterprise or non-commercial activity under the name Club1830;

- the Respondent is preventing the Complainant from reflecting its rights in a corresponding generic top level domain name and the domain name can only have been acquired to sell it to the Complainant for valuable consideration in excess of the costs of registration; or

- the Respondent has chosen the domain name intentionally to attempt to attract for commercial gain internet users to its web-site by creating a likelihood of confusion with the Complainantís trade mark, or the Respondent has registered the domain name primarily for the purpose of disrupting the business of the Complainant;

- the Respondent has registered the domain name in bad faith and given the passive use of the domain name to date(without any indication of future intended use), it is being used in bad faith.

The Complainant also notes that:

- there is currently no active web-site at the domain name, although it appears to be under construction, and then states that "[t]he domain name is therefore not being used by the Respondent."

- on May 25, 2000, the Complainantís Solicitors wrote to the Respondent asking him to transfer the domain name, club1830.com to the Complainant. On June 16, 2000 the Respondentís solicitors replied to that letter stating that the Respondent had Ďno intentioní of transferring the domain name to the Complainant. The Complainantís solicitors then wrote to the Respondentís solicitors on 16 June 2000 asking them to confirm (amongst other things) what legitimate interest the Respondent had in the name "Club1830". The Respondent's solicitors replied on June 28, 2000, stating (amongst other things) that the Respondentís legitimate interest in the mark "Club18-30" is in the Domain Name. Copies of this correspondence were submitted in evidence and attached as Annex D to the Complaint.

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 club1830.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.]

B. Respondent

The Respondent asserts in particular that:

- the Complainant operates a holiday business and "the Respondent does not operate the holiday business [sic] and has no intention of doing so";

- the Complainantís observation that "the domain name is therefore not being used by the Respondent" implies that the requirement of Paragraph (iv) [sic] of Paragraph (4)(a) of the Policy has not been proven by the Complainant;

- that the Respondent is not using the domain name and is not attempting to attract internet users to its website, and is not a competitor of the Complainant;

- no evidence of bad faith is adduced by the Complainant and, by the Complainantís own admission, the domain name is not being used.

With regard to the similarity of the domain name and the Complainant's mark the Respondent asserts that:

- as the domain name is club1830.com and the Complainantís trade mark is "Club 18-30" the only possible confusion between the domain name and the trade mark arises when the two are pronounced;

- there is no possibility of confusion when the two are compared in written form;

- in written media, pronunciation is a matter for the reader;

- the Complainant's preferred pronunciation of its trade mark is "Club Eighteen Thirty", while the Respondentís preferred pronunciation of its domain name is "Club Eighteen Hundred and Thirty";

The Respondent also expressly states for the benefit of the Administrative Panel that "he intends to develop a web site for people of all ages who are interested in the Wild West, 1830 being a water shed year in many respects."

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 in the mark "Club 18-30", and the domain name is club1830.com.

In domain names, spaces are invalid characters and it is a commonplace and familiar practice to dispense with such dividing elements which may be present when a name or mark is used ordinarily in written form. Such spaces and dividing elements are also frequently not evident in the spoken form. In the present case, therefore, the Panelist considers that the domain name is essentially visually identical to the Complainant's mark. The Panelist is also unimpressed by the Respondent's submissions regarding pronunciation of the domain name. Whether it were to be taken as a time or a year, the Panelist believes it is most likely that "1830" would be spoken as "eighteen-thirty" and so, considering the domain name as a whole, confusion with the Complainant's mark would be inevitable.

However, a finding of identity or confusing similarity alone is insufficient. The Panelist must be satisfied that the Complainant has "rights" in the mark as claimed.

The Complainant has asserted that it owns registered trade mark rights in "Club 18-30". It has provided details of a number of such alleged rights. However, the Complaint did not include sufficient evidence in all cases to confirm ownership and subsistence of those rights to the Panelist's satisfaction. Rather than dismiss the inadequately evidenced claims peremptorily or delay the proceedings by requiring the submission of supplementary evidence, the Panelist sought simply to independently verify the Complainant's claims by reference to the relevant Trade Marks Registry details which are conveniently accessible online. The Panelist has been 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 attached details 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. As it is, 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 held 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. The Panelist doubts that the Respondent would seriously have intended to certify in the Response, for example, " that the assertions in this Complaint [sic] are warranted under the Rules and under applicable law", but that is what was done!

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 (although, in this case, this has not affected the Panelist's decision in any event).

However, UK registration 1285878 for the plain text mark CLUB 18-30 is in the name of the Complainant and is in force. Under Section 72 of the UK Trade Marks Act 1994, (the TMA1994), registration provides prima facie evidence of validity and hence of the registered proprietor's entitlement to the rights conferred under Section 9 of the TMA1994. There is also little doubt that the Complainant certainly has an established reputation, or perhaps more accurately notoriety, in the mark in the UK.

The Panelist therefore concludes that the Complainant does have relevant rights in the mark at issue and that the requirements of Paragraph 4(a)(i) of the Policy are met.

6.2 Does the Respondent have no rights or legitimate interests in respect of the domain name?

On this issue, the Complainant's submissions initially appear somewhat inconclusive and unsatisfactory. However, this is perhaps understandable given the obvious difficulties in trying to prove a negative, as is required here. The Complainant's intention, therefore, appears to be to show by implication that there is no demonstrable right or legitimate interest on the part of the Respondent.

The Respondent for his part has variously claimed that his "legitimate interest is in the Domain Name" and, subsequently, that he "intends to develop a web site for people of all ages who are interested in the Wild West, 1830 being a watershed year in many respects".

Paragraph 4(c) of the Policy helpfully provides some guidance as to some factors, which, if present may serve to demonstrate a legitimate interest in a domain name. Conversely, the absence of such factors may therefore be indicative of a lack of such an interest. The relevant indications are:

(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the Panelist's view, there is no evidence of any of these factors in favour of the Respondent in this case. There have been no demonstrable prior preparations for any bona-fide purpose; the Respondent has not been commonly known by the domain name; and the Respondent is not making any evident fair use.

Furthermore, in the Panelist's view, the question of whether a Respondent has rights or a conceivable legitimate interest in the domain name is not a matter which can be determined in isolation. The scope for finding a legitimate interest must inevitably be circumscribed by the existence of established rights of others, such as the Complainant in particular, and by any evidence indicative of bad faith.

The question of the potential for alternative, legitimate interests in a disputed domain name was one of the many relevant issues addressed at length in the leading UK case British Telecommunications & Ors. v. One in a Million Ltd. & Ors. in the Court of Appeal (the full Court of Appeal judgement is available at http://www.nic.uk/news/legal/oiam-appeal-judgement.html). One of the domain names at issue there was virgin.org and it was contended that possible legitimate uses which would not conflict with the rights of the well-known business (a co-plaintiff in the case) would be in relation to the Virgin Islands or the Virgin Mary.

In the judgement, Aldous L.J. wrote, in consideration of whether a [domain] name may be an illegitimate instrument of fraud:

"In my view there can be discerned from the cases a jurisdiction to grant injunctive relief where a defendant is equipped with or is intending to equip another with an instrument of fraud. Whether any name is an instrument of fraud will depend upon all the circumstances. A name which will, by reason of its similarity to the name of another, inherently lead to passing-off is such an instrument. If it would not inherently lead to passing-off, it does not follow that it is not an instrument of fraud. The court should consider the similarity of the names, the intention of the defendant, the type of trade and all the surrounding circumstances. If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take placeÖ"

Accordingly, by analogy, a decision on the legitimacy of a Respondent's interest should be determined having regard to all the circumstances and the mere contention of conceivably legitimate interests does not necessarily prevent a finding that, on the balance of probability, a Respondent himself has no such legitimate interests.

In this case, the Panelist therefore defers a decision on the existence of a legitimate interest until after discussion of the issue of bad faith.

6.3 Has the domain name been registered and is it being used in bad faith?

Again, the statements and assertions in the Complaint regarding use of the domain name appear somewhat confusing, even contradictory. However, the Complainant does include a claim that there is at least passive use of the domain name and this is in bad faith.

When inspected by the Panelist, the URL www.club1830.com produced a multilingual default parking page, advising that the site is "Under Construction", with the message "Welcome - This site is currently under construction. Please check back at a later time." The domain name is therefore clearly in use.

The WHOIS records for the domain name club1830.com show the Respondent, Matthew Dinham, personally as the registrant with an email address mattd@leisuregroup.co.uk.

This immediately implied to the Panelist that Mr. Dinham's business was likely to be connected with the leisure industry. A check at www.leisuregroup.co.uk brought up the message "Welcome to Leisure Group - Britain's number one for Sunbeds, Tanning Accelerators, Slimming Products, Sauna, Steam Rooms and all related accesories. [sic]". A check of the WHOIS for leisuregroup.co.uk revealed that this domain name is also registered personally to Mr. Dinham.

A further check for registrations in Mr. Dinham's name also revealed that, amongst other domains, the same Mr. Dinham is also the personal registrant of the domain name qualityflights.com - the url www.qualityflights.com also resolves to a multilingual parking page as for www.club1830.com.

It appears, therefore, that the Respondent, even if he is not presently in direct competition with the Complainant, has not been entirely candid about the nature of his business interests. The Leisure Group business is clearly in a related field, with relevance to the travel or holiday business. The registration of qualityflights.com by Mr. Dinham also casts further doubts on the veracity of his assertion to have no interest in the holiday business.

The evidence is clearly that the domain name in dispute is in use. It may not presently be actively directed at interfering with the Complainant's business, but there is an implication from the "under construction" message that something is intended in due course.

As a consequence, and having regard to the notoriety of the Complainant's mark in the UK; the fact that the Respondent is in the UK; that the domain name is registered with an email contact at leisuregroup.co.uk with a business at www.leisuregroup.co.uk, which is in a related field (regardless of the fact that the Respondent has also registered qualityflights.com), the Panelist considers that there is effectively a misrepresentation that the Respondent and/or his associated business(es) are connected or have some commercial relationship with the business of the Complainant.

As Aldous L.J stated in the One in a Million case (supra) first in relation to Marks & Spencer in that case:

"The placing on a register of a distinctive name [Ö] makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of [the registrant] and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered."

And in relation to the other plaintiffs:

"The trade names were well-known "household names" denoting in ordinary usage the respective [Plaintiff]. The appellants registered them without any distinguishing word because of the goodwill attaching to those names. It was the value of that goodwill, not the fact that they could perhaps be used in some way by a third party without deception, which caused them to register the names. Ö

The registrations were instruments of fraud and injunctive relief was appropriate just as much as it was in those cases where persons registered company names for a similar purpose."

The Respondent referred the Panelist to the decision of Dr. Massimo Introvigne dated June 16, 2000, in WIPO Case No D2000-0265 in support of the Respondent's contention that there were no grounds to find evidence of "use" to justify a decision against the Respondent under Paragraph 4(a)(iii) of the Policy. Case D2000-0265 related to the domain name buyvuarnetsunglasses.com. The Panelist in that case found the Complainant had applicable rights and the Respondent evident bad-faith, but declined to find "use" on the basis that the domain name was inactive and not "used" for either a website or email.

In that case, neither party was based in the UK and so Dr. Introvigne did not have the benefit of the guidance provided by the One in a Million judgement in the present jurisdiction. In this Panelist's opinion, and consistent with the views expressed in the High Court and Court of Appeal, which considered the issue of whether an inactive domain name could be considered as "used" for the purposes of trade mark infringement, the fact that a domain name may only be passively "in use" insofar as it is on the register, may still be sufficient. In this case, as the domain name is clearly in use and www.club1830.com resolves to a website, the distinction does not arise and the buyvuarnetsunglasses.com decision is of no assistance to the Respondent.

The Panelist correspondingly concludes in this case that the domain name has been registered and is being used in bad faith and the requirements of Paragraph 4(a)(iii) of the Policy are met.

This leaves the issue of whether the Respondent can reasonably be considered to have any legitimate interests in the domain name. In view of the finding of bad faith, and the fact that any active use of the domain name in the UK would almost inevitably lead to confusion with the Complainant's well-known registered name, the Panelist considers the prospects of the domain name acting as an instrument of fraud outweigh any putative legitimate use which may be contrived by the Respondent. The Panelist considers the Respondent's contention that the domain name was registered for "a web site for people of all ages who are interested in the Wild West, 1830" to be wholly unconvincing. If so, why choose "club1830.com", why not register wildwest1830.com or some more relevant name?

The Panelist therefore also concludes that the Respondent has no rights or legitimate interests in the domain name and the requirements of Paragraph 4(a)(ii) of the Policy are also met.

 

7. Decision

For the reasons explained in Section 6 above, the Panelist concludes that each of the requirements of Paragraph 4(a) have been met. Accordingly, the Panelist requires that the domain name registration club1830.com be transferred to the Complainant.

 


 

Keith F.Gymer
Presiding Panelist

Dated: September 8, 2000