WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Thomas Cook UK Limited v. Edward Gibson

Case No. D2003-0182

 

1. The Parties

The Complainant is Thomas Cook UK Limited, Peterborough, Cambridgeshire PE3 8SB, United Kingdom of Great Britain and Northern Ireland, represented by Dechert of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Edward Gibson of Gibson, Morgan & Hall at Leicester LE3 6DZ, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <club1830reunited.com> ("the disputed domain name") is registered with Register.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 5, 2003. On March 5, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name(s) at issue. On March 6, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint and the proceedings commenced on March 10, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2003. The Response was filed with the Center on April 1, 2003.

The Center appointed Michael David Cover as the sole panelist in this matter on April 8, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Respondent has not disputed the following facts:

The Complainant is the owner of goodwill and reputation and trade mark rights in the name "CLUB 18-30." This is as a result of the substantial business built up by the Complainant in the youth holiday market in the United Kingdom to the Mediterranean (and Tenerife) since 1965.

The Complainant is the proprietor of a considerable number of registered trade marks consisting of or including the element, CLUB 18-30, for a range of goods and services in countries in Europe and beyond. The Complainant trades from two websites which are relevant, "www.club18-30.co.uk" and "www.club18-30reunited.com."

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the name and trade marks in which the Complainant has extensive rights because it incorporates the Complainantís trade mark together with the wholly descriptive prefix (sic) reunited. The Complainant also maintains that the absence of the hyphen between "18" and "30" is of no effect.

It further contends that that the disputed domain name was registered many years after the Complainant commenced use of the CLUB 18-30 name and after the CLUB 18-30 trade mark was first registered in the UK and also after the Complainant registered its own domain name <club18-30reunited.com>.

The Complainant goes on to state that the Respondent is not licensed to use its trade marks or to apply for a domain name incorporating the mark CLUB 18-30, that the Respondent has no rights or legitimate interest in respect of the disputed domain name and refers to former correspondence between the Complainantís lawyers and the former lawyers of the Respondent.

The Complainant further submits that the disputed domain name was registered and is being used in bad faith and states that the Respondent admits that it will intentionally attempt to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainantís mark. The Complainant also submits that the mere registration and possession of the disputed domain name by the Respondent constitutes an "instrument of fraud," in the sense set out by Aldous LJ in the UK Court of Appeal in the "One in a Million" case, British Telecommunications plc v. One in a Million Limited and related cases.

The Complainant submits that the Respondent is in breach of its agreement signed with the Registrar, Register.com, and could have easily visited the Complainantís website at "www.club18-30.co.uk" to see that the Complainant already operated a "reunited" website at a domain name almost identical to the disputed domain name. The Complainant therefore submits that the disputed domain name was registered and is being used in bad faith and requests a decision that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent submitted a letter to the Center in which he makes various requests, including for an extension of time. This was because Annexes F and G apparently had not come through. Annexes F and G to the Complaint are in fact print outs from various websites, including "www.club18-30reunited.com." These would of course have been publicly available and the panel finds that the Respondent has not been prejudiced in any way. In any event, the Respondent's above letter was received after the deadline but the Panel admits such letter as the Response of the Respondent. The decisions in this paragraph are in accordance with paragraph 10, General Powers of the Panel, of the Rules and sub-paragraph 10(c), which empowers the panel to conduct the administrative proceedings in such a manner as it considers appropriate, and sub-paragraph 10(b), which requires that each party is given a fair opportunity to present its case.

The Respondent goes on to make the following points:

- Gibson, Morgan & Hall is the trading name of Edward Gibson, the Respondent.

- The Complainant states that it is not using the disputed domain name, although it is registered. It is also, so the Respondent states, not clear whether the requirement of the relevant paragraph of the mandatory administrative proceeding is met by trade or service mark registration anywhere in the world or just in the United States.

- With regard to evidence and registration of the disputed domain name and bad faith, the Respondent submits that none of the four alternative requirements are met, in that he has not offered the domain name to the Complainant and has no intention of so doing, he has never engaged in a pattern of conduct to prevent the owner of the mark from reflecting the mark in a corresponding domain name, that he is not a competition of the Complainant; and fourth that he has not used the disputed domain name and was totally unaware that the Complainant had already registered "www.club18-30reunited.com," even having looked at the main Club 18-30 website.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Respondent, as registrant of the disputed domain name, submits to a mandatory administrative proceedings in the event that the Complainant establishes:

(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name incorporates in whole the Complainantís famous registered trade mark CLUB 18-30. The only deviation is that the hyphen has been removed between the figures "18" and "30," which is of no significance, and that "reunited" has been added as a suffix. Reunited is clearly a generic term and it is well established that the addition of such a generic term does not distinguish the disputed domain name from the Complainantís registered trade mark (see for example Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406). Accordingly, the disputed domain name is confusingly similar to the Complainantís famous registered trade mark CLUB 18-30.

B. Rights or Legitimate Interests

The Complainant has asserted that the Respondent has not licensed or authorised the Respondent to use its trade marks and that the Respondent has no legitimate interest in the disputed domain name. The disputed domain name has not been used by the Respondent before notice of the dispute, the Respondent has not demonstrated that it has been commonly known by the disputed domain name and nor has it demonstrated that use of the disputed domain name is fair without intent to tarnish the Complainantís famous registered trade mark CLUB 18-30.

Whilst preparation for use appear to have been made (see letter at tab E of the Complaint), such preparations cannot be shown to be bona fide, in that the Respondent has not demonstrated that these are non-commercial and they are unfair, as they are in clear contravention of the Complainant's rights.

The Respondent has not specifically addressed, these points. Its only submission points in the other direction, in that it states "As regards" Gibson, Morgan & Hall "this is my trading name" (emphasis added).

C. Registered and Used in Bad Faith

The relevant head for this case is that the following circumstances shall be evidence of the registration and use of the disputed domain name in bad faith:

- By using the domain name, the Respondent has intentionally attempted to attract, for a commercial gain, internet users to its website by creating a likelihood of confusion with the Complainantís famous trade mark CLUB 18-30 as to the source, sponsorship, affiliation or endorsement of its website or product or service on its website.

It is also to be noted that the circumstances of bad faith are not limited to those set out in paragraph 4b(i) Ė (iv) of the Policy. This can also occur when a domain name is "obviously connected with such a well-known product that it is used by someone with no connection with the product which suggests opportunistic bad faith" (see Ė Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000Ė0163).

In this instance, it is clear, including from the Respondentís own submissions, that he was well aware of the Complainantís CLUB 18-30 trade mark and also of the Complainantís website at "www.club18-30.co.uk." The Panel finds that the Respondentís bad faith is evidenced by the overwhelming fame and reputation of the Complainantís which is widely registered in Europe and beyond, famous trade mark CLUB 18-30, and by the obvious connection between the Respondentís unauthorised disputed domain name and the Complainantís famous registered trade mark CLUB 18-30. The intention is clearly to attract Internet users to the website by creating an association and hence in legal terms a likelihood of confusion with the Complainantís trade mark CLUB 18-30. The only issue is whether it can be said that this is for commercial gain. The Respondent submits this is not for commercial gain. This is contradicted as found by the Respondentís own submission about his trading name "Gibson Morgan Hall." Accordingly, whilst the Panel does not find that the disputed domain name is an "instrument of fraud," the Panel finds that the registration (and intended use) of the disputed domain name is in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <club1830reunited.com> be transferred to the Complainant.

 


 

Michael David Cover
Sole Panelist

Dated: April 17, 2003