The Complainants are CentralR Reservations Management Limited and CentralR Group Management Limited of Ireland, represented by Brooks and Lee Solicitors, Ireland.
The Respondents are Online Central Reservations Ltd, Richard Cole of Ireland, represented by Maxwells Solicitors, Ireland.
The disputed domain name <centralreservations.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2009. On January 12, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the Disputed Domain Name. On the same date, eNom transmitted by email to the Center its verification response disclosing the registrants' and contact information for the Disputed Domain Name which differed from the named Respondent in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on January 21, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on January 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2009. The Response was filed with the Center on February 9, 2009.
Supplemental filings were submitted by the Complainants on February 17, 2009, and by the Respondents on February 18, 2009. The Center acknowledged the receipt of these filings, and informed the parties that such will be brought to the Panel's attention, upon its appointment. Further, the parties were informed that it will be in the Panel's sole discretion to determine whether to consider and/or admit the supplemental filings, and whether to order any further procedural steps.
The Center appointed Mr. Adam Taylor as the sole panelist in this matter on February 23, 2009. However, on March 5, 2009, Mr. Taylor withdrew as Panelist due to a potential conflict which came to light after his appointment. On March 6, 2009, the Center notified the parties of Mr. Taylor's recusal and informed them that an alternate panelist would shortly be appointed.
On March 12, 2009, Mr. Alistair Payne was appointed as the alternate sole panelist in this matter. 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.
The first-named Complainant was incorporated on February 23, 2006. The second- named Complainant was incorporated on February 15, 2006.
The first-named Complainant CentralR Reservations Management Limited is a wholly- owned subsidiary of the second-named Complainant CentralR Group Management Limited.
The Complainants are engaged in the business of online hotel reservations. The Complainants contract with hotels to sell hotel rooms for a fee or commission to businesses and the general public. The Complainants operate a website at <centralr.com> for the purpose of conducting their business activities.
The first-named Respondent is an online reservations company and was incorporated on May 2, 2008. The Respondents operate a website which resolves from the Disputed Domain Name. The Respondents conduct their business activities from this website.
The Disputed Domain Name was first registered on January 12, 2000 and was subsequently purchased by the Respondents on August 14, 2008.
The Complainants are seeking a transfer of the Disputed Domain Name to the first- named Complainant.
The Complainants assert that they have unregistered usage rights in CENTRAL RESERVATIONS and in CENTRALR.COM.
The Complainants contend that since incorporation in 2006 they have established a substantial business in both the domestic and international market for online hotel reservations.
The Complainants submit that in 2006 they changed their primary brand name from CENTRAL RESERVATIONS to CENTRALR.COM to heighten public customer identification with their product and their website “www.centralr.com”. The Complainants contend that they have continued to use CENTRAL RESERVATIONS as a secondary brand.
The Complainants contend that the Disputed Domain Name is identical to their CENTRAL RESERVATIONS mark and confusingly similar to their CENTRALR.COM mark.
The Complainants contend that the Respondents do not have any rights or legitimate interests in respect of the Disputed Domain Name.
The Complainants submit that the Disputed Domain Name was registered and is being used in bad faith.
The Complainants contend that the Disputed Domain Name was registered by the Respondents primarily for the purpose of selling, renting or otherwise transferring the Disputed Domain Name.
The Complainants contend that the Disputed Domain Name was registered by the Respondents in bad faith in order to piggyback on the reputation and goodwill of the Complainants.
The Complainants contend that the Respondents have caused, permitted or allowed the Disputed Domain Name to be used without the Complainants' consent.
The Complainants contend that by purchasing and registering the Disputed Domain Name the Respondents have intentionally attempted to attract for commercial gain Internet users to the Respondents' website or other online location by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation or endorsement of the Respondents' website or location or of a product or service on the Respondents' website or location.
The Respondents deny the allegations put forward by the Complainants.
The Respondents contend that the Disputed Domain Name is not identical or confusingly similar to any trademark or service mark in which the Complainants have rights.
The Respondents contend that the Complainants do not possess unregistered usage rights in the terms “CENTRAL RESERVATIONS” and “CENTRALR.COM”
The Respondents contend that they have rights and legitimate interests in the Disputed Domain Name.
The Respondents contend that they use the Disputed Domain Name to offer bona fide goods and services.
The Respondents contend that the Disputed Domain Name was registered and is being used in good faith.
The Respondents contend that the Disputed Domain Name was registered because of its descriptive quality.
The Respondents refute the Complainants' contention that the Respondents purchased the Disputed Domain Name for the purposes of selling it.
The Respondents contend that they have not used the Disputed Domain Name to attract Internet users to their website by creating a likelihood of confusion with the Complainants.
The Respondents also note that Complainants have engaged in reverse domain name hijacking, since the Complainants did not conduct a reasonable investigation that would have revealed the Respondents' rights in the Disputed Domain Name.
If the Complainants are to succeed, they must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainants have rights; and
(ii) the Respondents have 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.
The Panel will proceed to establish whether the Complainants have discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy.
There are two separate elements that the Complainants must prove under paragraph 4 (a)(i) of the Policy. First, that the Complainants have rights in a trade mark or service mark and second, that the Disputed Domain Name is identical or confusingly similar to the trade mark in which the Complainants have rights.
In this case, the Complainants do not rely on any registered trade mark. The Complainants claim that they have unregistered trade mark rights, derived from their use of the names “CENTRAL RESERVATIONS” and “CENTRALR.COM”. There is no doubt that unregistered trade mark or service mark rights may qualify as “rights” in a trade mark or service mark, for the purposes of paragraph 4(a)(i) of the Policy. To establish such unregistered (or common law) rights, a complainant must show that the claimed mark has acquired a “secondary meaning”, as an indicator of an association with the complainant or a business operated by the complainant (see, for example, Universal City Studios Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784, followed in Maritime-Ontario Freight Lines Limited v. Magic Domain, WIPO Case No. D2007-0202, and in ProCPR, LLC v. Name Administration Inc. (BVI), WIPO Case No. D2007-0823).
In Dreamstar Cash S.L v. Brad Klarkson, WIPO Case No. D2007-1943 the panel held as follows:
“A complainant must show that, through long association of the claimed mark with its business, the mark and the business have become synonymous in the minds of the public, submerging any primary meaning of the claimed mark in favour of its meaning as a word identifying the complainant's business.”
In Above All Advertising Inc. v. Belize Domain Whois Service Lt, WIPO Case No. D2007-0775, the panel stated:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”
The onus is therefore upon the Complainants to establish that they have established the necessary degree of secondary meaning in CENTRAL RESERVATIONS.
Without secondary meaning the Panel considers that the term “CENTRAL RESERVATIONS” is generic and descriptive. The Respondents have provided considerable evidence from the Internet which shows that this term is habitually used worldwide by parties involved in the hospitality industry. The Panel also notes that from a search of Irish company listings, aside from the Respondents, two Irish registered companies incorporate the term “Central Reservations” in their name: “Lansdowne Central Reservations Limited” and “Dublin Central Reservations Limited”.
The Complainants need to demonstrate very substantial and ongoing use of CENTRAL RESERVATIONS. See for example: Country Bookshops Limited v. Guy Loveday, WIPO Case No. D2000-0655. In Essential Travel Ltd v. essentialtravel.com and Underground Digital Media Ltd, WIPO Case No. D2004-0205, the complainant failed to establish unregistered usage rights in the term “Essential Travel”. The panel noted: “to acquire common law trademark rights, both under English law and under the case law which has developed under the Policy, a complainant must establish evidence of acquired distinctiveness. The burden in this respect is particularly high where the mark comprises words in common usage- namely, Essential Travel-as it does in this case.”
The Panel considers that the evidence provided by the Complainants to support their contention that CENTRAL RESERVATIONS has developed the required secondary meaning in relation to their goods and services is in the circumstances inadequate for the reasons set out below.
The Complainants admit that prior to a television advertising campaign in 2007 they changed their primary brand name from CENTRAL RESERVATIONS to CENTRALR.COM. The Complainants contend that they have continued to use CENTRAL RESERVATIONS as a secondary brand on their website and in other promotional material, however relatively little evidence of such usage whether before or after 2007 has been submitted.
The Complainants' evidence of marketing and advertising comprises mainly of copy invoices from 2005 until 2009. From a review of this material the Panel finds it difficult to decipher which portion of this expenditure relates to the use of the name or mark CENTRAL RESERVATIONS or to the use of the name or mark CENTRALR.COM during this period. In order to support its case the Panel would have expected the Complainants to be in a position to file more substantial evidence of its advertising of the CENTRAL RESERVATIONS mark.
Evidence of consumer and trade recognition of the Complainants' reputation in the CENTRAL RESERVATIONS name or mark essentially amounts to references in historical third party trade industry brochures, undated promotional information, various third party invoices, old business cards, stickers and an undated photograph depicting an advertisement on a Dublin bus. A sample of a standard contract made between the Complainants and hotels does contain the term “Central Reservations”, however this document dates from 2006.
The Panel also notes that usage of the name or mark CENTRAL RESERVATIONS on the Complainants' website is at best minimal.
It is notable that it is the Respondents who have provided evidence of the Complainants' television advertisement from 2008. This advertisement neither makes a verbal nor a written reference to the name or mark CENTRAL RESERVATIONS which could have been expected if it really is currently being used by the Complainants as a secondary brand. Neither is there evidence of such substantial use of the CENTRAL RESERVATIONS name or mark prior to 2007 to suggest that a residual reputation subsists in the name or mark, following re-branding. Overall, the Panel considers that in all the circumstances there is insufficient evidence before the Panel of the use by the Complainants of the name or mark CENTRAL RESERVATIONS to support their contention that they have developed the requisite degree of secondary meaning.
The Panel notes that the Complainants also assert unregistered rights in the term CENTRALR.COM although even in relation to this name or mark there is relatively little supporting evidence of secondary reputation. In any event the Panel does not consider that CENTRALR.COM is confusingly similar to the Disputed Domain Name.
As the Complainants have failed to adduce sufficient evidence to establish that they have unregistered usage rights in CENTRAL RESERVATIONS the Complainants have not passed the first hurdle under the Policy and the Panel need not consider the other elements of the Policy further.
For the reasons provided above the Panel considers that the Complainants have failed to satisfy the requirements of Paragraph 4(a)(i) of the Policy.
The Panel does not consider that a decision based on paragraph 4(a)(ii) of the Policy is required as the Complainants fail under paragraph 4(a)(i) of the Policy for the reasons provided above.
The Panel does not consider that a decision based on paragraph 4(a)(iii) of the Policy is required as the Complainants fail under paragraph 4(a)(i) of the Policy for the reasons provided above.
A finding of Reverse Domain Name Hijacking may be made if “the Complainant knew or should have known at the time that it filed the Complaint that it could not prove that the domain name was registered in bad faith”, see Futureworld Consultancy (Pty) Limited. v. Online advice, WIPO Case No. D2003-0297.
Reverse domain name hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name”. The onus of proving bad faith is on the Respondent, and mere lack of success of the Complaint is not of itself sufficient to constitute reverse domain name hijacking, see Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001.
In all the circumstances the Panel does not consider that the Complaint was made in bad faith such as to justify a claim of reverse domain name hijacking.
For all the foregoing reasons, the Complaint is denied.
Dated: March 26, 2009