WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Your Golf Travel Limited v. Hardelot Holidays Limited

Case No. D2007-1058

 

1. The Parties

The Complainant is Your Golf Travel Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Onside Law, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Hardelot Holidays Limited, Brentwood, Essex, United Kingdom of Great Britain and Northern Ireland, represented by Wortley Byers Solicitors, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrar

The disputed domain names, <yourgolfholiday.com> and <yourgolfholidays.com> (the “Domain Names”), are registered with Tucows Inc. (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2007. On July 20, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 23, 2007, 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.

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 July 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2007. The Response was filed with the Center on August 13, 2007.

The Center appointed Tony Willoughby as the sole panelist in this matter on August 20, 2007. 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 Complainant was incorporated in England on October 5, 2004. It registered its domain name, <yourgolftravel.com>, on November 29, 2004. It is engaged in the business of selling golfing holidays.

The Complainant has traded under the names YourGolfTravel and YourGolfTravel.com since December 1, 2004. In the sixteen month period from December 1, 2004 to March 31, 2006 the Complainant’s turnover is claimed to have been (and the Panel accepts it as fact) 395,148. The business has continued to grow and is now running at a turnover level of in the region of 1m per quarter.

On May 18, 2007 the Complainant filed application for two Community Trademarks covering golf-related goods and services. One application is for the word mark YOUR GOLF TRAVEL and the other is for a stylized rendering of the Complainant’s domain name, <yourgolftravel.com>.

The Respondent was incorporated in England on October 9, 1990 to acquire the business of Hardelot Holidays, which is claimed to have commenced in 1981. The Respondent is engaged in the business of selling golfing holidays.

Up until 2005, the Respondent traded (directly or indirectly through its associated companies) under a variety of names including Hardelot Holidays, French Golf Holidays, Play and Stay and GolfPlanet Holidays.

In 2005, the Respondent decided to re-brand under the umbrella name Your Golf Holiday and subsequently changed to Your Golf Holidays. It registered one of the Domain Names, <yourgolfholiday.com>, on November 28, 2005 and the other, <yourgolfholidays.com>, on February 7, 2006.

At some stage in early 2007 the Respondent advertised on television under the Your Golf Holidays name, as a result of which the Complainant received a number of misdirected enquiries. The Complainant has also produced evidence of other confusion arising out of the similarity of the parties’ trading names.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to common law trademarks or service marks, YOUR GOLF TRAVEL and YOURGOLFTRAVEL.COM, in which it has rights.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant contends that in adopting the Domain Names for its business, the Respondent is committing the tort of passing off. The Complainant exhibits evidence of confusion.

The Complainant goes further and contends that when the Respondent registered the Domain Names it was aware of the Complainant and registered the Domain Names with the intention of disrupting the Complainant’s business; moreover it has been using the Domain Names with the intention of exploiting the Complainant’s goodwill.

Thus the Domain Names are not being used in relation to a bona fide business offering and the Respondent cannot have acquired rights or legitimate interests thereby.

Moreover, the Domain Names were registered and are being used in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. The facts and matters upon which the Complainant relies to support these allegations are dealt with in Section 6 below

B. Respondent

The Respondent denies that the Complainant can have acquired common law rights in respect of its claimed marks, YOUR GOLF TRAVEL and YOURGOLFTRAVEL.COM, on the grounds that those marks are inherently descriptive and incapable of giving rise to any goodwill protectable under English law.

The Respondent denies that confusion is likely because the parties operate at different ends of the spectrum, the Respondent operating at the top end and the Complainant at the other.

The Respondent also alleges that the Complainant is trading unlawfully in not complying with various regulatory provisions relating to bonding insurance.

The Respondent claims a legitimate interest in respect of the Domain Names on the basis that they are ordinary English words apt to describe its business, which is a substantial and highly respected business.

The Respondent denies that it registered and is using the Domain Names in bad faith. Crucially, it denies that it was aware of the Complainant and its activities at the time that it registered the Domain Names.

Much of the Response is devoted to dealing with the Complainant’s bad faith allegations. The Panel will refer to the Respondent’s submissions on this topic in Section 6 below when dealing with the Complainant’s allegations.

 

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:

(i) The Domain Names are 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 Names; and

(iii) The Domain Names have been registered in bad faith and are being used in bad faith.

B. Identical or Confusingly Similar

At some stage in the early part of this year the Respondent had a series of television advertisements running on Setanta. It featured Peter Alliss, the well-known English golf commentator. The advertisements promoted the Respondent’s golf holidays under the Your Golf Holidays brand.

The Complainant has produced substantial evidence to support the contention that some viewers of those advertisements, imperfectly recollecting the Respondent’s brand, contacted the Complainant. When members of the public make online enquiries of the Complainant, they use an online form, which invites them to identify how they had come to hear of the Complainant. The Complainant has exhibited 8 such forms where the enquirer has cited TV in answer to that question. The Complainant has not used TV advertising, so it is reasonable to infer that the TV advertisements to which they refer are the TV advertisements of the Respondent. The fact that that confusion involved people contacting the Complainant, believing the Complainant to be the Respondent, rather than the other way round, is neither here nor there. It resulted from confusing similarity of the names. There is likely to have been confusion going the other way, but the Complainant is less likely to come to hear of it.

Further, the Complainant has asserted that on a regular basis it receives calls from people who were evidently trying to contact the Respondent. The Panel would be astonished if that were not the case. Both parties use their trading names as brands. The Respondent refers to its adoption of YOUR GOLF HOLIDAYS as a re-branding. Both names commence with “YOUR GOLF” and both names finish with a purely descriptive word. Confusion and deception in the golfing holiday field in which both companies operate seems to the Panel to be inevitable.

Accordingly, the Panel has no hesitation in finding that the Domain Names are confusingly similar to the Complainant’s trading name.

However, to overcome the first hurdle under paragraph 4(a) of the Policy, the Complainant has to prove that it has trademark or service mark rights in its name.

There are no registered rights. Are there unregistered rights? Under English law unregistered trademark or service mark rights exist where the putative rights owner can successfully restrain a competitor from using his mark (or something similar to it) by way of a passing off action.

To succeed in a passing off action one must be able to prove (a) a goodwill under the name in issue, (b) a misrepresentation (e.g. that the defendant is in some way associated with the plaintiff) and (c) consequential damage or a likelihood of such damage. The courts will ordinarily infer damage or a likelihood of damage if the first two elements are established.

Plaintiffs able to establish those three elements (known as ‘the classic trinity’) may nonetheless be refused relief by the courts if the goodwill is in a wholly descriptive term, the rationale being that nobody should be permitted to monopolise ordinary English words or expressions, which other traders might reasonably wish to use to describe their goods or services.

In the view of the Panel, the term Your Golf Travel is not wholly descriptive. While highly suggestive, it is not a combination of English words that one would ordinarily be expected to use. The Panel happens to be a golfer of some longevity (if not distinction) and cannot recollect having heard the expression before except perhaps as part of a longer expression referring to one’s ‘golf travel arrangements’, for example, but even that must be a very rare occurrence. The words do not sit happily alongside each other in ordinary parlance. More significantly, the Respondent has not produced one other example of the term in use. It has referred to two domain names, <yourgolf.com> and <yourgolftrip.com> dating back to 1999 and 2003 respectively, which it has found from searching a register, but no information is provided as to the use (if any) being made of those domain names.

Accordingly, the Panel finds that the Complainant’s brand name is not wholly descriptive and is capable of giving rise to common law rights in passing off. The Panel is in no doubt that, subject to what is said below, if a competitor started up in trade using the Your Golf Travel name, an English court would grant the Complainant injunctive relief in a passing off action. Indeed, the Panel imagines that the Respondent would be somewhat surprised if it could not restrain an unauthorized third party using its precise name in precisely the same field of activity.

The Respondent in its submissions appears to believe that if a name is unregistrable as a trademark, it cannot give rise to a protectable goodwill in passing off. That is a misconception and the Panel commends to the Respondent’s attention the judgment of Lord Justice Jacob in the case of Phones4u Limited & anor. v. phone4u.co.uk Limited and ors. [2006 EWCA Civ. 244], which addresses this topic. The Panel would put the Complainant’s trading name into broadly the same category as PHONES4U.

However, another potentially relevant issue is the question as to whether or not the Respondent’s trade is an unlawful trade. A goodwill built up on an unlawful trade is unlikely to be given any protection by way of a passing off action before an English court.

While the Respondent has asserted that the Complainant’s trade is unlawful, it is merely an unsupported allegation. The Panel must therefore ignore it.

In the result, for the purposes of this administrative proceeding the Panel finds that the Complainant does have relevant trademark or service mark rights (i.e. it could restrain a competitor from trading under the YOUR GOLF TRAVEL name or any colourably similar name). In the view of the Panel YOUR GOLF HOLIDAY(S) is a colourably/confusingly similar name.

In so finding, the Panel acknowledges that an English court could conclude that the Complainant’s mark is of such a suggestive nature that the effective monopoly afforded to it by way of a passing off action should be very narrow indeed. The court might conclude (although the Panel doubts it) that the Domain Names are sufficiently far away, even though confusion has resulted. However, that is not the test under paragraph 4(a)(i) of the Policy.

The Panel finds that the Domain Names are confusingly similar to the Complainant’s unregistered trademark, YOUR GOLF TRAVEL.

C. Rights or Legitimate Interests

Whether or not the Respondent has rights or legitimate interests in respect of the Domain Name turns to a large extent upon whether what the Respondent is doing under and by reference to its principal trading name and the Domain Names constitutes the tort of passing off. If it does constitute passing off, the Respondent’s business can hardly be said to be a genuine or bona fide offering of goods and services within the meaning of paragraph 4(c)(i) of the Policy.

However, it is unnecessary for the Panel to make a finding under this head in light of his finding under the next head (bad faith registration and use).

D. Registered and Used in Bad Faith

To succeed under this head the Complainant must prove both that the Domain Names were registered in bad faith and are being used in bad faith.

A non-exhaustive list of examples of what constitutes registration and use in bad faith for the purposes of paragraph 4(a)(iii) of the Policy is set out in paragraph 4(b) of the Policy.

That list features four examples, the first three of which require that when registering the domain name in issue, the respondent must have had the complainant or its trademark specifically in mind (i.e. with a view to selling the domain name to the complainant or a competitor of the complainant; with a view to blocking the complainant; and with a view to disrupting the business of the complainant).

The fourth example (paragraph 4(b)(iv) of the Policy) does not in terms talk of a respondent’s intentions at time of registration of the domain name in issue, merely the respondent’s intentions in relation to an objectionable use of the domain name in issue. Nonetheless, the preponderance of panelists approach this example in similar fashion to the others. In other words, they will not make a finding of bad faith registration and use unless satisfied that the domain name in issue was registered in bad faith as well as being used in bad faith.

Accordingly, as a general rule, complaints under the Policy will only succeed where the respondent can be shown to have formed a bad faith intent directed at the complainant at time of registration of the domain name in issue. The Panel will adopt the same approach here.

The Complainant has produced significant evidence to support its contention that the Domain Names are being used in bad faith. For some time now (and well in advance of the launch of this administrative proceeding), the Respondent has been aware that the Complainant set up in business under the name YOUR GOLF TRAVEL well ahead of the Respondent’s adoption of its name and that the Complainant has developed a goodwill under and by reference to its name. The Respondent is also aware (or ought to be aware) that the Respondent’s adoption of its name has led to deception and confusion. Nonetheless, the Respondent has continued to use its confusingly similar name.

Knowingly continuing to use a confusingly similar name in circumstances where it is obvious that that use is causing or very likely to be causing damage to the Complainant will ordinarily constitute bad faith use within the meaning of paragraph 4(a)(iii) of the Policy.

However, as indicated, to succeed under this head of the Policy bad faith use on its own is not enough. In addition the Complainant has to prove bad faith registration (i.e. that when the Respondent registered the Domain Names it intended to take unfair advantage of the Complainant’s rights in some way.

Were the Domain Names registered in bad faith? The Complainant contends that they were.

The Complainant contends that the Respondent registered the Domain Names with knowledge of the existence of the Complainant and its activities and with intent to damage the Complainant. The Respondent expressly denies that it was aware of the Complainant at the relevant time and denies any bad faith intent.

The key date is November 28, 2005 when the first of the Domain Names, <yourgolftholiday.com>, was registered. The second name, <yourgolfholidays.com>, is so similar to the first that its registration date is barely relevant. If the first of the Domain Names is not an abusive registration under paragraph 4(a)(iii) of the Policy, nor is the second.

Why should the Respondent’s denial be disbelieved? The Complainant puts forward the following reasons:

1. The Complainant started trading on December 1, 2004. Even now the online golf tourism industry has relatively few major operators. The Respondent must have come to learn of the Complainant very quickly and in any event before the Respondent registered the first of the Domain Names on November 28, 2005.

2. Since April 2005, a director of the Complainant has been on the Respondent’s French Golf Holidays newsletter and distribution lists and his contact details feature his email address ‘@yourgolftravel.com’.

3. On October 7, 2005, the Complainant made a booking through the Respondent under the latter’s French Golf Holidays brand. The Complainant identified itself as Your Golf Travel and the Complainant’s name appears in the Respondent’s record of the transaction.

4. The source text behind the Respondent’s website includes the following wording: “YourGolfHolidays.com organize your golf holidays, your golf travel and your golf breaks worldwide”. The Complainant contends that these are deliberate references to, respectively, the Respondent, the Complainant and another competitor, Golf Breaks Limited.

5. A number of other matters are mentioned in the Complaint, but they all post-date November 28, 2005, the date of registration of the first of the Domain Names and have no bearing on the Respondent’s intentions at time of registration of the Domain Names.

For the Panel the real issue is the first of the above reasons.

The second and the third reasons certainly show that the Respondent was in possession of the relevant information on its database prior to registration of the first of the Domain Names, but there is nothing to show that that information will have registered with anyone above a basic clerical level. The Panel’s experience of databases is that they contain a wealth of detailed information much of which is not ‘known’ in any real sense to anyone responsible for the database. Certainly, the Panel cannot conclude from those two instances that they had any bearing at all on the Respondent’s decision to register the first of the Domain Names.

The fourth of the reasons, which could be indicative of the Respondent’s intentions at time of registration of the Domain Names, is somewhat devalued by the fact that one of the Complainant’s own advertisements uses very similar terminology: “Your Golf Travel.com offers discount golf holidays and short golf breaks …. “. At all events, the Panel is not prepared to draw adverse inferences from the Respondent’s metatags. For one thing the Panel is not told when the Respondent commenced use of these metatags.

That leaves the first reason. Is it conceivable that an online golfing holiday service could re-brand without conducting online searches (e.g. Google or Yahoo searches) against its name or at any rate the primary element of its name, i.e. “Your Golf”?

Had the Respondent done so, what would it have found as at November 28, 2005? Neither party offers a suggestion, still less any evidence.

All that the Panel has before him in relation to the Complainant’s goodwill as at November 28, 2005 is that in the sixteen month period from December 1, 2004 to March 31, 2006 the Complainant’s turnover amounted to just under 400,000. A year later the quarterly turnover amounted to nearly 1m. What was the position at November 28, 2005. The rate of increase seems to have been a steeply rising one. The Panel guesses that as at November 28, 2005 the Complainant’s turnover stood at under 200,000.

While the Panel has sympathy for the position of the Complainant, the Panel simply does not have enough before him to conclude that the Respondent has been untruthful in denying all knowledge of the Complainant when it registered the first of the Domain Names.

Moreover, the Panel is of the view that this is a case, which can only be decided satisfactorily by a court having access to full discovery and witness evidence. The Respondent’s evidence may demonstrate that for one reason or another the Complainant does not in fact have a protectable goodwill under and by reference to its trading name and the Complainant’s evidence and/or the Respondent’s discovery may establish a clearer case of passing off.

However, a significant difference between the Policy and the tort of passing off is that the former calls for a bad faith intent, whereas the tort of passing off does not.

The Respondent has not proved to the satisfaction of the Panel that the Domain Names were registered in bad faith. As to the Respondent’s use of the Domain Names, given the Panel’s finding in relation to bad faith registration, it is unnecessary for the Panel to come to any concluded view and he does not do so.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


Tony Willoughby
Sole Panelist

Dated: August 27, 2007