WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BAA plc v. Bob Larkin
Case No. D2004-0555
1. The Parties
The Complainant is BAA plc of London, United Kingdom, represented by Mr. Stephen Bennett of Lovells Solicitors, of London, United Kingdom.
The Respondent is Mr. Bob Larkin of Worcester, United Kingdom. He is represented by Mr. Nick Lockett of DL Legal LLP of Broomfield Park, London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <gatwick.com> is registered with Intercosmos Media Group Inc. of New Orleans, Louisiana, United States of America (‘the Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2004. On July 28, 2004, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On July 28, 2004, the Registrar 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 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 August 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2004. The Respondent submitted a response and requested a three-member panel.
The Center appointed the Honourable Sir Ian Barker Q.C. (Presiding Panelist), Mr. Antony Gold and Professor David Sorkin as Panelists in this matter on October 8, 2004.
The Complainant requested leave to file a Reply. On October 22, 2004, a Reply was filed. The Respondent was given leave to file a rebuttal, dealing only with new matters covered in the Reply. After an extension of time granted because of Respondent’s personal circumstances, the further documents from the Respondent were filed on November 3, 2004. Because of the delays occasioned by the extra filings, the date for the rendering of a decision by the Panel was extended to November 12, 2004.
The Panel finds that it was properly constituted. The Panel has submitted Statements of Acceptance and Declarations of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the operator of several large airports in the United Kingdom including the airport known as Gatwick, situated in West Sussex, which airport serves London and South-East England. It is the busiest single-runway airport in the world, the second largest airport in the UK, and the sixth busiest international airport in the world. It handles 30 million passengers per year providing facilities for 80 airlines and services to around 200 destinations.
The Complainant owns registered UK trademark 2136626 for the words BAA GATWICK and BAA LONDON GATWICK. The mark consists of two words and a device and three words and a device. The word BAA represents British Airport Authority followed by the word ‘Gatwick’: the word ‘London’ is in lower case. The device is a representational image of an aircraft taking off from a runway. The filing date was June 20, 1997, and the registration date, January 30, 1998.
There is a trademark for the word GATWICK, registered on December 1, 1999, by Gatwick Fusion Ltd in respect of friction welding machines and electrical upsetting machines. There is also a trademark registration for GATWICK EXPRESS registered by Strategic Rail Authority in respect of rail services to Gatwick Airport. This registration of this mark contains a disclaimer that the marks shall give no rights to the exclusive use, separately, of the words “Gatwick” and “Express”.
Under the disputed domain name, the Respondent operates a website which shows a page configured to appear as a search results page. This contains links to businesses operated by third parties offering services in the vicinity of Gatwick Airport, such as, for example, ‘Gatwick Airport Hotels’, ‘Gatwick Airport Car Parking’, ‘London Gatwick Airport Chauffeur Service’.
Documents produced by the Respondent show (a) some 321 domain names currently registered, which include the word “Gatwick”. Many of these refer to services associated with the airport such as parking, accommodation, car hire and ground transport and (b) a list of numerous company registrations where the word “Gatwick” is part of the registered name. All sorts of businesses are covered by this category; including businesses unconnected with airport-associated services - such as. “Gatwick Demolition Limited” and “Gatwick Heating and Plumbing Limited”.
In September 2003, an intermediary, acting as undisclosed principal for the Complainant, initiated e-mail correspondence with the Respondent with a view to purchasing the disputed domain name. After a series of offers and a counter-offer, the negotiations terminated. At no stage was the Respondent made aware by the intermediary of the Complainant’s interest.
On June 4, 2004, the Complainant’s Solicitors wrote a “cease and desist” letter to the Respondent. They accused him of “passing off” the substantial goodwill and reputation of the name “Gatwick” and provided him with a copy of the English Court of Appeal decision in British Telecommunications PLS & Others v. One In A Million Limited. In that letter they made no claim based on the existence of a registered trademark.
5. Parties Submissions
Identical or Confusingly Similar
The Complainant claims (a) that the disputed domain name is confusingly similar to its registered mark and (b) that the long-established use of the name “Gatwick” in relation to the operation of the airport is sufficient to establish a common law mark to which the disputed domain name is identical.
The airport has traded under the Gatwick name since 1936. The enlarged airport was opened in 1958. There is no town or village called Gatwick. No town is shown on official maps. The name can be traced back to a family who owned the land in the 14th Century. The site of the current airfield incorporates the site of the former Gatwick racecourse.
Even if the name Gatwick were descriptive of a geographical area, it is still possible to have registered rights in a mark corresponding to the place name. For example, ‘Buxton’ for Spring Water and ‘Halifax’ for Financial Services. The name Gatwick is found on the websites of two large travel agents, detailing information about flights from Gatwick Airport.
By using the name Gatwick, the Respondent is committing the tort of passing-off. The letters BAA in the registered trademark merely reinforce the fact that the Airport is owned by the Complainant and do not prevent any use of the disputed domain name being found to be confusingly similar to the name Gatwick.
Rights or Legitimate Interests
The Respondent is neither licensed nor authorised by the Complainant to use its mark. Neither has the Complainant authorised the contents of the Respondent’s website, nor is the Respondent known by the name Gatwick. There is a risk that the links to the sites providing services on the Respondent’s website could mislead consumers into believing that the site is the official site of the Complainant, authorised by it and connected with its business.
The Respondent’s offering on his website is not bona fide, nor is it a bona fide offering of goods and services nor a legitimate, non-commercial or fair use. The Respondent could have chosen to offer these services through a website which did not incorporate the Complainant’s mark.
As a United Kingdom resident, the Respondent must have known of the existence and reputation of Gatwick Airport at the date of registration of the disputed domain name. There is no legitimate purpose to which he could have put the name when he registered the disputed domain name. A high proportion of persons searching the disputed domain name website would expect to find a site operated and authorised by the Complainant. There is, therefore, a likelihood of confusion.
The operators of businesses at the linked sites are likely to gain a commercial advantage from increased traffic generated by that confusion. The Respondent’s purpose in registering the disputed domain name must have been either to disrupt the Complainant’s business or to divert traffic for his own gain to himself.
In the course of correspondence with the Respondent, initiated by an intermediary on behalf of the Complainant to negotiate the purchase of the disputed domain name, the Respondent refused an offer of ₤8,000. He was prepared to rent the name for two years for ₤100 per week. The last offer of the Complainant, unaccepted by the Respondent, was to purchase the disputed domain name for ₤15,000. This correspondence is said by the Complainant to be evidence that the Respondent’s intention in registering the domain name was primarily for the purpose of selling or renting it for valuable consideration.
The Complainant further alleges that the Respondent has registered the domain names <bankofengland.com> and <amey.com>. The Bank of England is well recognised throughout the world and in the United Kingdom. Amey plc is a support services organization which provides a broad range of support services as well as being the owner of a large scale transportation infra-structure. One of the largest companies of its type in the UK, it owns the registered trademark AMEY.
The sites at “www.bankofengland.com” and “www.amey.com” are not those of the operators of the respective businesses. The Complainant submits that the registrations of these well-known names show a lack of good faith by the Respondent.
Identical or Confusingly Similar
The Respondent claims that he first registered and used the disputed domain name in July 1996. Its use has been unopposed for 8 years. The Complainant has sought to introduce changeover notices in order to deceive the Panel about the registration date and to apply for trademark registration at a date later than that of the Complainant’s registered mark. The Complainant was aware that the Respondent has held the domain name since July 11, 1996.
The word GATWICK was registered as a trademark by Gatwick Fusion Limited, three years after the Respondent had registered the disputed domain name. The mark GATWICK EXPRESS has been registered by another party.
The Respondent disputes that there are common law trademark rights in the name ‘Gatwick’. The Complainant identifies its subsidiary as “Gatwick Airport Limited” as evidenced by the fact that, in 1987, a public share offering was for Gatwick Airport Limited, its wholly-owned subsidiary.
The claim for an unregistered mark must fail because there are numerous other uses of the word “Gatwick” by third parties, as shown in the exhibits to the Response. The Complainant’s website shows the clear use of Gatwick as an airport, with photographs. Gatwick is an Anglo-Saxon name originating from the word “goat farm” and is found in settlements and family names throughout Sussex. There is also a Gatwick Manor in the vicinity and there was previously a Gatwick Zoo.
The websites from the travel agents cited by the Complainant, indicate that Gatwick is an abbreviation for the full name of Gatwick Airport. Moreover, Respondent contends that Gatwick is a regional area known as one of nine sub-regional locations within the South-East area of England as designated by the South-East England Assembly Regional Local Government and Planning Authority. Ordinance survey maps provided by the Respondent show features like Gatwick Stream. The Complainant has been selective in removing references of this nature.
A trademark which consists principally of geographical terms should not be registered if the effect is to allow monopoly to arise in a geographical designating region (section 3(1)(c) Trademarks Act 1994, UK). The Gatwick area co-exists alongside the Airport and is undergoing further definition by the relevant local authorities.
The Respondent was providing a directory of regional area services until the Complainant threatened legal proceedings to the Respondent’s hosting company. The Complainant has not provided evidence to show that its common law rights extend to the exclusive usage of the word Gatwick. The Complainant has a registered trademark for HEATHROW but the Respondent claims that the Complainant was unable to register a similar mark for Gatwick.
The Complainant’s trademark was registered after the Respondent had acquired the domain name. The Respondent refutes any accusation of passing-off. He does not claim to be an airport operator but merely an operator of a directory of services for the Gatwick regional area.
Rights or Legitimate Interests
The Respondent has never used the Complainant’s trademark. His website content is controlled by him and his US associates as an independent business, operating separately from the Complainant’s airport business. Using his own proprietary rights, he is therefore providing a legitimate directory of services in the Gatwick sub-regional area. He receives an income from this business, which he has the right to operate.
There is no risk of consumers being misled into believing that his site is an official BAA website. It does not display the BAA name nor indicate to those searching the Internet that they have arrived at the Gatwick Airport site. The Complainant cannot prove that the Respondent deliberately selected the name with the sole intention of gaining Internet traffic intended for the Complainant. He has had honest and fair use of the website address for 8 years without opposition from the Complainant.
The Respondent is a software engineer who registered the disputed domain name to provide a directory for a large variety of businesses in the area, initially through emails and public information sites. Later a US citizen, Mr. Chuck Feathers, suggested a business arrangement with Dotzup, a reputable search engine operator. For such purposes, the Respondent is known by the domain name <dotzup.com>.
The Respondent makes essentially the same submission, as above i.e. he did not register the disputed domain name in bad faith. The Complainant does not have a proper trademark. The Complainant is deliberately vague so as to confuse the Panel over what mark had been registered. He denies that consumers coming to the <gatwick.com> website would expect a site operated only by the Complainant. The Complainant’s site gives the option of what may be of interest to consumers, with no attempt to deceive or to offer spurious advertisements only links to genuine companies.
The Respondent presented his version of the discussions, lengthy correspondence between him and the Complainant’s intermediaries or agents concerning a possible sale. The Panel finds it unnecessary to go into the detail of these discussions and correspondence in view of its ultimate decision on the complaint.
As to the Respondent’s prime purpose being to rent the domain name, he denies this completely. He claims that because the Complainant went to an extraordinary length of deception to offer to purchase the name, no account should be taken of this evidence. Essentially, the Respondent claims a conspiracy to use several parties to obtain the domain name from him in a malicious fashion, selecting cuttings of headers from web pages, and latterly, URL information from the Complainant and its documents.
The Respondent seeks to have the Complaint dismissed on the grounds of bad faith by the Complainant. The Respondent claims bad faith by the Complainant as follows:
(a) A conspiracy using several parties to obtain the domain name in a malicious fashion.
(b) Selective cutting of headers from web pages and lack of URL information in the documents annexed to its Complaint.
(c) Tampering of evidence submitted in the Annexures to the Complaint by removing selective mail headers, changing the context of the body of the message.
(d) Knowledge via the intermediaries, that the Respondent had owned the domain name since 1996.
domain name <bankofengland.com> in 1996. Within a year, he was contacted by a representative of the Bank of England who accepted the information he supplied. He has used the public information site to date with the implied consent of the Bank.
With regard to the domain name <amey.com>, Amey plc contacted the Respondent in 2000 but no further contact has been received. This name was registered “… for a friend … under legitimate rights”. No further details were supplied. The Respondent denies a pattern of registering domain names.
He claims that the Complainant’s lawyers sent a ‘cease and desist’ letter to his Internet Service Provider and that this letter constituted ‘other legal proceedings’ which should have been but were not referred to in the Complaint.
The Complainant did not disclose in its Complaint a ‘cease and desist’ and follow-up letter, written to him by the Complainant’s lawyers in April 2004. Therefore, this deliberate omission was an abuse of the administrative proceedings. On the authority of G.A. Modefine S.A. v. Mani, WIPO Case No. D2001-0537, the Complaint should be dismissed. He also claims that the electronic version of the Complaint was not sent to him in a timely fashion.
Because he claims that the Complainant followed a pattern of unreasonable deceptive or misleading conduct towards him, the Respondent asks that the Panel make a finding reverse domain name hijacking against the Complainant.
C Complainant’s Reply
The Complainant strongly denies bad faith in the approach by an intermediary on its behalf to purchase the disputed domain name. It also denies the Respondent’s allegation of tampering with an e-mail on October 30, 2003. It denies any intent to deceive the Panel in the respects alleged by the Respondent.
It denies sending a ‘cease and desist’ letter to the Respondent’s Internet Service Provider during the period of the complaint. It has not communicated with any Service Provider. As required by the Center, it sent a copy of the Complaint to the Registrar but made no ‘cease and desist’ request.
It denies deliberate failure to transmit an electronic copy of the Complaint to the Respondent in a timely manner.
The Complainant has applied to the UK Patent Office recently to register both GATWICK and GATWICK AIRPORT in appropriate trademark classes. This is part of its global IP strategy.
The ‘cease and desist’ letters to the Respondent merely outlined the Complainant’s rights and did not need to be included in the Complaint.
D Respondent’s Rebuttal
The Respondent’s rebuttal consisted of a 22 page “Response” with some 11 attachments including a personal declaration. This documentation was far in excess of what the Panel envisaged when it granted him the indulgence of commenting solely on new matters raised in the Complainant’s Reply.
Essentially, he took issue with the Complainant’s rejection of his earlier allegations that several parties were used to try to purchase the disputed domain name from him. This submission arose because the person who first approached him, a Ms. Miller, was said to have come from a firm called Houxou. The Respondent claims she represented a “hard-up” company called aviators.net. On this basis, the Respondent spoke to a Mr. Ogbe, said to be a Director of aviators.net.
The Respondent claims that Houxou and aviators.net were represented to him as different entities. The Complainant says that these were both trading names for Isoact.ltd. The Respondent claims that relevant e-mail headers had been removed to hide the involvement of aviators.net when he thought he was dealing with Houxou.
The lengthy traverse by the Respondent of iterations relating to the approach by an intermediary to purchase the disputed domain name show just how unsuitable it is for this Panel to attempt to resolve these factual issues about which the Respondent complains. For a start, one would have to hear the versions of Ms. Miller and Mr. Ogbe as well as the Respondent’s who has expanded in his latest submission on what he had stated earlier in his Response. Such expansion was hardly envisaged by the procedural order. The Panel, in the absence of any mechanism under the UDRP to resolve hotly contended disputes of fact, declines to draw any inference of bad faith against either party arising out of the approach to purchase the disputed domain name.
Other matters covered in the Rebuttal are:
(a) The Respondent’s ISP claims it received a ‘cease and desist’ notice.
(b) The original registration of the disputed domain name in 1996 was by a company, as alleged by the Complainant. However the Respondent was the beneficial owner of the company and as director and shareholder acted under his discretion.
(c) The deficient e-mails (relating to the intermediary’s approach and tactics) and the unmentioned letters (the ‘cease and desist’ letters) all point to the Complainant’s bad faith.
(d) The Respondent himself did not display bad faith, as alleged by the Complainant, in making challenges to proposed presiding Panelists (see 6(A) below). Any public criticism of the Center was the work of a journalist. The Respondent’s solicitor commented to a journalist about alleged procedural bias in the Presiding Panelist selection process. The Respondent claims that neither he nor his Solicitor commented on individual proposed Panelists.
(e) The Aberdeen Airport case, BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717 (decided since the original Response had been filed) assists his submissions. The disputed domain name in that case had the word ‘airport’ added to the geographical name.
6. Preliminary Issues
There was an unusually long delay in this administrative proceeding between the date of filing of the Response and the appointment of the Panel. From a perusal of the numerous items of e-mail correspondence between the parties and the Center, the delay was caused by challenges by the Respondent to some of the candidates nominated by the Center to be Presiding Panelist. These issues took some time to resolve. It is no business of this Panel to comment on the reasons for this delay and it declines to do so. There has been no challenge by either party to any of the members of the Panel ultimately appointed by the Center.
The second reason for delay stems from the request of the Complainant to file a Reply. This request was brought to the attention of Panel members when they received the whole file (after their appointments). The Panel resolved to give the Complainant the right to file a Reply confined to new matters raised in the Response, with a further right to the Respondent to file matters in rebuttal arising out of new matters in the Reply. The Respondent’s personal circumstances have added to the delay. Cumulatively, these delays have meant that the projected decision date has had to be extended to November 12, 2004. The Panel considers that there has been no injustice caused to either party by the delay. As noted, the Respondent’s rebuttal goes far beyond what was envisaged by the Panel.
The Respondent requested the Panel to dismiss the case for alleged inaccurate certification by the Complainant. He points to the failure of the Complainant to refer to the ‘cease and desist’ letters from its lawyers to him. He alleges there are three letters missing from the correspondence between the parties and also tampering with an e-mail. He alleges that the electronic Complaint was not sent to him in a timely manner.
The Respondent claims that because the certification was allegedly defective, there is no jurisdiction for a Panel to consider the case. He claims, that because there is no cross-examination possible under the UDRP process, the process is undermined when material is not disclosed and certifications are incorrect. He referred to WIPO D2001-0537, GA Modifine S.A. v. Mani. There, the Complainant had certified the Complaint was correct and accurate, knowing that it was otherwise. The Panel held that this constituted abuse of the proceedings and resulted in the Complainant displaying bad faith under Rule 15(e) of the Policy.
The Complaint in the Mani case was dismissed. The Panel found that the Complainant could not succeed on the merits. It also found an abuse of process. The Panel considers that it has jurisdiction to consider the Complaint. The matters referred to by the Respondent even if proved, cannot deprive the Panel of jurisdiction. They may be relevant to other aspects of the issues for consideration. The Panel sees nothing in (a) the failure of the Complainant to refer to its lawyers’ ‘cease and desist’ letters and (b) the alleged failure promptly to send an electronic copy of the Complaint. No prejudice to the Respondent has been shown.
The Panel is in no position to determine the allegations of misconduct by the Complainant by way of tampering with documents. Such a determination could only be made after a hearing at which the adjudicator saw and heard witnesses. It is not necessary to address this question in view of the Panel’s ultimate decision.
(c) Correspondence Between Complainant, Intermediaries and Respondent
The Panel has considered the disputed correspondence. In view of the ultimate decision made by the Panel, it is not considered necessary to rule on the host of pejorative allegations, particularly the alleged tampering. The Panel does emphasise the need for complete disclosure by both parties to an administrative proceeding.
The Panel considers that the correspondence was, overall, an approach initiated by the Complainant through an intermediary, to purchase the disputed domain name from the Respondent. The situation here differs from cases where the Respondent has either offered to sell the name to the Complainant or posted a ‘for sale’ notice on a website. The Respondent’s offer to rent the name for a year was a counter-offer to the original offer to buy. He had some commercial reasons for that stance. He subsequently turned down a substantial offer to sell the name for £15,000.
The Respondent did nothing to solicit an enquiry to purchase the name. It was not made clear to him that the principal for whom the intermediary was acting was in fact the Complainant. Why the Complainant chose to engage with the Respondent in this roundabout matter was not made clear. Respondent made no counter-offer to the £15,000 offer – the last offer from the Complainant’s agent.
(d) ‘Cease and Desist’ Letter
The Respondent claims that the Complainant has issued the Respondent’s Internet host (dotsup) with a ‘cease and desist’ letter. The alleged proof of this allegation is an e-mail from ‘Chuck’ of dotsup to the Respondent dated August 23, 2004, stating that a “cease and desist Order from the trademark holder” had been received 5 days earlier.
The Complainant denies sending any ‘cease and desist’ letter to any provider. It sent only a copy of the Complaint to the Registrar as required by the Rules with a bare covering letter. Better proof of a legal proceeding than that tendered by the Respondent, would be required.
The requirement to disclose other ‘legal proceedings’ in the Rules, must surely refer to actually commenced litigation in a Court or Tribunal and not just to lawyers’ letters which may never lead to litigation.
(e) Date of Registration of Domain Name
The Respondent alleges he first registered the disputed domain name in July 1996. The Complainant relied on information provided by the Registrar which showed a later ‘record created’ date of September 2000. Contrary to the Respondent’s assertion that he had told the intermediary of the 1996 date, the Complainant denies all knowledge of prior knowledge of the Respondent’s assertion.
The Complainant has conducted a WHOWAS search which shows that the first registration of the disputed domain name in July 1996 by a company called New Way Limited. The Respondent is not shown as being involved in this company, although two persons with the same surname were.
The Respondent’s claim is that New Way Limited was his alter ego. The Panel considers that the register of domain names must be taken at its face value, since it is notice to the world of the identity of the registrant. The register can show no trusts, nor disclose beneficial interests as distinct from legal owners. Consequently, the Panel concludes that the Respondent registered the disputed domain name in 2000 and not in 1996.
7. Discussions and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
“decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable.”
The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:
- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no legitimate rights or interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant’s case is that the disputed domain name is confusingly similar to (a) its registered marks “BAA GATWICK” and “BAA LONDON GATWICK” and (b) identical to its unregistered trademark, the word “Gatwick”. Each of these contentions must now be separately discussed.
In relation to the registered trademark, the Respondent submits, that because the disputed domain name was first registered in 1996 – before application had been made to register the Complainant’s trademarks the Policy does not apply to the name. Although the Panel has held that the Respondent’s registration was in 2000, even if it were in 1996, this submission must be rejected.
In Audiopoint INV v. C Corp, aka Folkening, WIPO Case No. D2001-0509 the Panel held that a Complainant’s trademark rights are determined at the time a Complaint is filed and not at the time a domain name is registered. In that case, the Complainant had applied for trademark registration in June 1999, after the domain name had been registered by the Respondent in February 1999. The Panel found that the Complainant was using the mark in connection with the sale of goods and services as at the date the Complaint was filed. It rejected the Complaint because the Complainant had not been able to prove bad faith registration. The Respondent swore that it had not heard of the Complainant or its mark at the time of registration. The Complainant did not develop any protectable common law trademark rights until well after registration of the domain name.
In Document Technologies Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, the domain name was registered in April 1999. The first use of the trademark in commerce and the application for trademark registration occurred in May 1999 and the Complainant was filed in April 2000. These authorities were adopted by the majority of the Panel in R.E. Ted Turner and Ted Turner Film Properties LLC v. Mazem Fahmi, WIPO Case No. D2002-0251.
In the view of the Panel, if the disputed domain name is confusingly similar to a registered trademark (no matter when registered), then a Complainant can succeed under the first criterion of the Policy. However, the fact that the trademark was registered after the domain name was registered, must be relevant on the question of good faith and is often conclusive against a Complainant.
The Panel therefore proceeds to consider whether the disputed domain name is confusingly similar to the registered marks of the Complainant. These marks consist of a device indicating an aircraft taking off from a runway in addition to the words “BAA Gatwick” or “BAA London Gatwick”. The device invites the viewer to concentrate on the fact that this is the airport called “Gatwick” operated by BAA, a major provider of services in the UK. If anything it is a mark in favour of “Gatwick Airport” or “Gatwick London Airport” rather than just of the word “Gatwick”.
The Panel follows the reasoning of the learned Panelist in Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047. There, the Complainant had a registered trademark for “Brisbane City Works” and the disputed domain name was <brisbanecity.com>. The Panelist considered that the trademark registration (which consisted of an image and the words “Brisbane City Works”) was not confusingly similar to the disputed domain name. The word “Brisbane” was on the left of the diamond image while the words “City Works” were on the right of the image, slightly run-together. Visually “Brisbane City” was not considered confusingly similar to the registered mark. The distinguishing feature (if any) was the conjunction of the word “Works” with the words “Brisbane City”. The words “Brisbane City” themselves were not considered distinctive.
In this case the distinguishing feature of the registered marks is the conjunction of the word “Gatwick” with the word “BAA” (well known as denoting an airport authority) plus the image of an aircraft taking off. In the Panel’s view the disputed domain name is not confusingly similar to the registered trademarks. A similar view was taken of the registered device mark, owned by the same Complainant, in BAA plc & Aberdeen Airport Limited v. Hashimi,WIPO Case No. D2004–0717. The disputed domain name was <aberdeenairport.com>. In that case, the learned Panelist said:
“The Panel is not persuaded that the domain name is confusingly similar to the device mark. There is clearly no visual similarity, as the only common component of the device mark and the domain name is the name of the city Aberdeen. Also, it is to be remembered that the device mark is not a word mark – in addition to the words BAA ABERDEEN, there is the small box/departing aircraft device, which of course could not be replicated in any domain name but which provides another significant difference when one undertakes a visual comparison of the device mark and the domain name.
“Nor in the Panel’s view is there sufficient aural, or phonetic similarity between the domain name and the device mark to constitute ‘confusing similarity’.
“It is when one considers the ‘idea’ of the mark that the Complainant’s case based on the device mark comes closest to establishing confusing similarity. The Panel is prepared to accept that a significant number of consumers in the United Kingdom would understand that the First Complainant was formerly known as British Airports Authority, and that that body was (and as ‘BAA plc’ is) responsible for the management and operation of major airports in the United Kingdom. While the letters ‘BAA’ are not contained within the domain name, the generic word ‘airport’ is contained within both the ‘translation’ of the initials ‘BAA’ and the domain name.
“But in the Panel’s view, any similarities in the respective ideas, or impressions, of the domain name and the device mark, do not come close enough to meet the ‘confusingly similar’ test in paragraph 4(a)(i) of the Policy. The device mark conveys the impression of an Aberdeen branch of the corporation which undertakes the management and operation of major airports in the United Kingdom. In other words, the name of a branch of a trading entity. That seems to the Panel to be a different ‘idea’ from the domain name’s more general reference to the package of services and facilities which Internet users would associate with an ‘airport’ serving the city of Aberdeen.”
The present Panel agrees with that analysis. In a sense, the case for the Complainant was stronger in the Aberdeen case because the disputed domain name was <aberdeenairport.com> and not just <aberdeen.com>.
The next question is whether the Complainant has a common law trademark in the word “Gatwick”. If it has, then any common-law mark was established long before the date in 1996 on which the Respondent claims registration of the disputed domain name.
It is useful to reflect on what is a common-law trademark. As was noted by the Panelist in Julian Barnes v. Old Barnes Studios Limited, WIPO Case No. D2001-0121 …“This involves understanding what is meant by “passing off” because the easiest way of defining a common law trademark is to say that it is an unregistered mark used by its proprietor in the course of trade, the unauthorised use (or imitation) of which by another trader will lead to “passing off”.”
Passing off is a tort based upon the proposition that it is unlawful to represent contrary to fact that one’s goods or services are the goods or services of another. “Commonly, such misrepresentations are made by using a name or mark which identifies the Claimant was otherwise a symbol of his goodwill.” (ibid). The above quotations are taken from one of the numerous cases where the common-law mark attached to a popular author. There are similar cases in respect of pop stars and sporting personalities.
See similar comments about common-law marks in Luis Cobos v. West, North, WIPO Case No. D2004-0182. “To succeed the Complainant would have to establish a reputation and goodwill in the United Kingdom under his name. He would have to prove that the third party’s use of his name would be likely to lead to deception in the market place, and he would have to prove a likelihood of consequential damage to his goodwill.”
The cases on common law trademarks in relation to the name of a place are apposite. In paragraph 6.3 of the Brisbane decision (supra), the learned Panelist considered other decisions under the UDRP concerning trademarks with geographical locations. Apart from those cases concerning registered trademarks, he considered Port of Helsinki v. Paragon International Projects Ltd., WIPO Case D2001-0002 (<portofhelsinki.com>) and City of Hamina v. Paragon International Projects Ltd.,WIPO Case D2001-0001 (<portofhamina.com>) which were concerned with unregistered marks claimed for the names of two ports in Finland.
The Panel in the Helsinki case considered that the Policy did not apply to conflicts between domain names and geographical terms not supported by trademarks. A unique geographical name should not be considered as belonging to the legal authority of the geographical area in question. “Protection for geographical names can be provided through other means, such as the special protection for geographical indications are not per se under trademark law.”
However as was noted in paragraph 6.5 of the Brisbane case, in certain circumstances, a common-law mark for a geographical area might exist depending on the actual facts. “Thus, the important issue in a case such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark – that is to say whether the unregistered mark is distinguishing the goods or services of the Complainant in trade and the goods or services of any other person in trade.” The Finnish Ports cases show that market research or similar evidence could establish distinctiveness and establishment as a service mark relating to services originating from the city or port in question.
In the Hamina case, the Panel found that there was such a mark on the evidence. In the Brisbane case, the Panel found that the unregistered mark “Brisbane City” had not acquired such distinctiveness as to be able to perform the function of a trademark in respect of the goods and services of the Brisbane City Council. The Panelist in the Brisbane case took into account the discussion relating to the geographical indications at source and other geographical terms contained in “the recognition of rights and the use of names in the Internet domain name system”. He quoted the interim report of the Second WIPO Internet Domain Process of April 12, 2001. The report confirmed the view, expressed by the Panelist in the Brisbane case, that unless the name of a geographical location is in fact performing the function of a trademark, such a name should not be considered a trademark for the purposes of the UDRP.
There are cases where a disputed domain name is the name of a city plus the word “airport”. In, Manchester Airport plc v. Club Club Ltd, WIPO Case No. D2000–0638 the three-member Panel was divided on whether the Complainant had established rights in the expression “Manchester Airport”. The majority held that it had not provided sufficient evidence to establish a common-law mark.
In the Aberdeen case (supra) the Panel took the view that if an authorised third party were to use the expression ‘Aberdeen Airport,’ in respect of services provided by one of the Complainants, the Complainant would probably succeed on a passing-off action. Amongst the reasons for this conclusion, the Panelist noted that Aberdeen Airport Limited’s services substantially consist of a facility unique to the Aberdeen region which has been provided by a company known as Aberdeen Airport Limited over many years. Also, various Flight Guides and airport information made frequent references to ‘Aberdeen Airport’.
The Respondent in that case had created a website with the primary focus of opposing the landing fees charged at Aberdeen Airport. The Panel inferred that the Respondent chose the disputed domain name <aberdeenairport.com> because he regarded it as an appropriate identifier for the Complainant’s services or as a pointer to a website giving information as to those services. This tended to support the view that the Complainant’s services at the airport had been provided under the expression ‘Aberdeen Airport’.
The cases where the word ‘airport’ has been added to the name of the city in the domain name could make a common-law mark easier to infer where the city concerned is well-known in its own right. In both the Manchester and Aberdeen cases, the names of the cities taken alone conveyed vastly more significance than just an airport. Both are cities which had existed and which were well-known nationally and internationally for centuries. The name of the locality of ‘Gatwick’ would not be generally known, other than in a small geographical area, were it not for Gatwick airport. The name would certainly not have any universal connotation without the airport.
In the present case, the Respondent’s submission is that the name refers to the confined geographical district of “Gatwick”. The Complainant relies on the inference that the name ‘Gatwick’ must be known to the millions of people who fly in and out of or visit the airport. Most of the world must know of Gatwick as one of London’s two major airports.
Following the Port of Hamina case, the Panel is prepared to hold that the unregistered mark “Gatwick” has the required distinctiveness, not in respect of a small geographical area, but for an airport which is the name of one of the principal airports in the United Kingdom and indeed the world.
The establishment of Gatwick as a large and successful international airport has meant the flourishing of many businesses incorporating the name “Gatwick”. That fact does not reduce the effect of the common law mark in respect of airport services. However that fact may have considerable bearing on whether the Respondent has a legitimate right to use the name.
Under the “passing-off” test, in a hypothetical situation, if the Respondent were to set up another airport called “Gatwick”, then that conduct would clearly be “passing off” the Complainant’s rights as an airport operator.
The Panel considers that the first limb of the criterion has been made out in respect of the common law mark for the name “Gatwick” in connection with airport services. The fact that an engineering firm has a registered trademark for limited purposes emphasises the boundary of the Complainant’s common law mark. It is restricted to airport services.
Legitimate Rights and Interests
As noted above, the success of “Gatwick” as an airport has spawned many businesses which use the name in a company registration or in a domain name. Some of these businesses are accessible through the Respondent’s website. Others are found in the lists of organisations produced by the Respondent.
Because the Complainant gave the Respondent no rights in respect of the disputed domain name. It is for the Respondent to demonstrate that he comes within one or other of the limbs of Paragraph 4(c) of the UDRP. His only viable claim is in respect of Paragraph 4(c)(i). The Respondent has to demonstrate: “Before any notice to you of the dispute, use by you 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.”
The Respondent has shown that he has operated a business, since at least 2000, offering through means of the website, links to various businesses associated with the Gatwick airport such as car hire and accommodation. It is difficult to see how this use of the website address would mislead consumers into believing the site is an official BAA site. The Complainant says that the Respondent’s use is not bona fide use of the common law mark because of an inference that any use of the mark in the website will indicate that the site is licensed by or approved of by the Complainant.
The Respondent claims that the website content is controlled by him and his US associate and hosted by Dotzup – a legitimate search engine. He provides a legitimate directory of services in the Gatwick sub-regional area and he receives an income from this business. He does not mislead consumers into believing that his site is an official site. He does not display the BAA name nor indicate that the browser has arrived at a Gatwick airport site, or indeed, any airport site. Until ‘cease and desist’ letters were received from the Complainant’s Solicitors in 2004, he has never had any challenge to his use of the website. When he registered the domain name for use within the geographical regional area known as Gatwick, that word was used extensively by a variety of businesses; therefore, he believed it could be used as a future portal for the area.
The Panel considers that the Respondent has made out a case for operating a legitimate business. He has therefore discharged any burden on him under paragraph 4(c)(i) of the policy.
Given the limitations of the current procedure under the Policy, it is not for the Panel to say whether his claim would be successful in a Court of law in an action for “passing-off”. This is a case where the Panel considers that the respective rights of the parties are better dealt with in a Court than through the procedures under the Policy. Accordingly, the Complainant has not proved the second criterion.
It is not necessary for the Panel to consider the arguments concerning bad faith registration and use since the Complainant has failed on the second criterion.
8. Reverse Domain Name Hijacking (RDNH)
The Panel does not consider that any of the proven allegations against the Complainant are sufficient to justify a declaration of RDNH. The Panel has found that the Complainant has a common-law mark which justified the bringing of the Complaint, although that Complaint was denied after the Respondent had been heard and the merits of his defence examined.
The Respondent bases his claim on the decision in IKB Deutsche Industriebank v. Bob Larkin, WIPO Case No. D2002-0420. There a claim of RDNH succeeded because the Complainant had instituted the administrative proceeding without any real prospect of success.
To succeed on a claim of RDNH, the Respondent must show that the Complainant knew of the Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, but nevertheless brought the Complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty Limited, WIPO Case No. D2000-1224. The Panel must consider both “malicious intent and recklessness or knowing disregard that the Respondent possessed legitimate interests”. Gold Line International Inc v. Gold Line, WIPO Case No. D2000-1151.
The Panel does not consider that the proved conduct of the Complainant justifies such a finding. As indicated, it is not in a position to make a definitive finding on the items of bad faith alleged by the Respondent against the Complainant.
The Panel denies the complaint and makes no orders for transfer of the disputed domain name.
Hon. Sir Ian Barker QC
Mr. Antony Gold
Professor David Sorkin
Dated: November 11, 2004