WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Royal Yachting Association v. Baron Kurtz
Case No. D2010-0927
1. The Parties
Complainant is Royal Yachting Association of Hamble, Hampshire, United Kingdom of Great Britain and Northern Ireland, represented by Bond Pearce LLP, United Kingdom.
Respondent is Baron Kurtz of Vienna, Austria, represented by John Brown, Edinburgh, United Kingdom of Great Britain and Northern Ireland (hereafter “UK”).
2. The Domain Name and Registrar
The disputed domain names <ryabooks.com> and <ryacourses.com> (jointly, the “Domain Names”) are registered with CSL Computer Service Langenbach GmbH dba Joker.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on June 8, 2010. On June 8, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 11, 2010, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing its contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on June 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2010. The Response was filed with the Center on July 5, 2010.
The Center appointed Assen Alexiev as the sole panelist in this matter on July 29, 2010. 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.
On July 6, 2010, the Complainant sent an email to the Center requesting leave to file supplemental submissions in reply to the Response. The Center informed the Complainant that it would be at the Panel’s discretion whether or not to consider or admit supplemental filings in the matter. The Panel has confirmed that it does not require any additional material from either party in order to decide the case.
4. Factual Background
Complainant is the United Kingdom’s national body for all forms of recreational and competitive boating. It represents dinghy and yacht racing, motor and sail cruising, RIBs and sports boats, powerboat racing, windsurfing, inland cruising and personal watercraft, and is recognised by all UK government offices as being the negotiating body for the activities it represents. Complainant also manages the British sailing team. Currently, Complainant has over 100,000 personal members; in addition, there are an estimated 500,000 boat owners nationally who are members of over 1,500 RYA affiliated clubs and class associations.
Complainant also sets and maintains an international standard for recreational boat training through a network of over 2,200 RYA Recognised Training Centres in 20 countries. On average, approximately 160,000 people per year complete RYA training courses. RYA training courses form the basis for the small craft training of lifeboat crews, police officers and the Royal Navy and are also adopted as a template for training in many other countries throughout the world.
In 1952, Complainant was granted permission to use the prefix “Royal” and became the Royal Yachting Association. From this time, Complainant has referred to itself as the RYA. The RYA trade mark has been used continuously since this time. In 1970, Complainant started offering training courses and qualifications all of which are promoted under the RYA trade mark. In 1973, Complainant took over from the UK Board of Trade the Yachtmaster scheme that is now widely referred to as the RYA Yachtmaster qualification. At this time Complainant also started to offer RYA training and RYA recognised training centres with qualified RYA instructors. Books and other publications soon followed in support of the training syllabus all of which are promoted under the RYA brand. There are now over 60 books published by Complainant themselves. In 2002, the RYA Yachtmaster qualifications were extended to United States of America, Australia, and New Zealand.
Complainant’s annual turnover is some GBP 17.7 million for the year ended March 31, 2009.
Complainant is owner of the following registered trademarks:
- United Kingdom trademark registration number 1522964 for RYA in Classes 6, 16, 18, 24, 25, 26 and 41, which is registered with effect from December 29, 1992;
- Community trade mark registration number 003314002 for RYA and Device in Classes 9, 16 and 41, which is registered with effect from August 18, 2003;
- New Zealand trade mark registration number 700314 for RYA and Device in Class 41, which is registered with effect from August 25, 2003;
- South African trade mark registration number 2003/14266 for RYA and Device in Class 41, which is registered with effect from August 25, 2003;
- Thailand trade mark registration number SM25149 for RYA and Device in Class 41, which is registered with effect from September 10, 2003; and
- United States of America registration number 3043265 for RYA and Device in Class 41, which is registered with effect from August 26, 2003.
Over the years, an increasing range of books, manuals and publications have been sold, advertised and promoted under and by reference to the RYA trademark.
Complainant is also the owner of the domain name <rya.org.uk>.
5. Parties’ Contentions
Complainant contends that as a result of extensive usage, advertising and promotion, Complainant has acquired substantial goodwill and reputation in the RYA trademark. Such goodwill and reputation exists throughout the United Kingdom. Accordingly, Complainant has acquired common law trademark rights in the RYA trade mark in addition to its above-detailed registered marks.
Complainant contends that the Domain Names are confusingly similar to Complainant’s trademark. The predominant element of the Domain Names is “rya”. Complainant is well known, so the use of “rya” with a wholly descriptive term such as “books” or “courses” (for which Complainant is also well known) would be recognised by members of the public as being connected with, or endorsed by, Complainant.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Names. Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant’s mark in a domain name or in any other manner. Respondent’s use is little more than the use of a well known trademark to divert traffic to itself. Registrant’s only true interest in the Domain Names is to use them to illegitimately benefit commercially from Complainant’s brand and goodwill. Respondent has no trademark or other rights to the Domain Names. Respondent does not hold itself out as, and is not otherwise known as RYA and has no common law rights in RYA. Respondent is not making a bona fide commercial or fair use of the Domain Names.
Complainant has made the following specific contentions in relation to the domain name <ryabooks.com>:
The domain name <ryabooks.com> resolves to a website headed “RYA Books”. This website includes images of the covers of a large number of Complainant’s publications which appear to be offered for sale. Only once a prospective customer decides they wish to purchase a specific title, by clicking on the relevant image, does a separate page appear listing various third party suppliers who, invariably purport to offer the publication for a cheaper price than Complainant. By this stage however, the confusion and damage has already occurred. Complainant contends that Respondent’s actions are intentionally deceptive and are part of a scheme to mislead consumers.
In December 2009 and January 2010, Complainant wrote to Respondent (initially via Respondent’s website at “www.ryabooks.com”), notifying them of Complainant’s trademark rights and their concern with Respondent’s use of the Domain Names. Complainant did not receive a satisfactory response.
In February 2010, Complainant instructed the corporate investigation company Cerberus Investigations Limited (“Cerberus”), to conduct investigations on Respondent. Cerberus carried out extensive searches through a variety of sources but has not been able to definitively identify Respondent. Respondent has gone to great lengths to maintain anonymity and has provided false contact details. Cerberus has confirmed that the address details provided by Respondent (Albertinaplatz 2, Vienna), is in fact the address of a café in Vienna called Café Mozart. Further, the telephone contact number provided does not exist and the first part of the given number corresponds with Café Mozart’s number.
The use of the <ryabooks.com> Domain Name gives rise to a likelihood of confusion and deception. Complainant’s “RYA” trade mark is well known and the Domain Name consists entirely of the Complainant’s trademark with a term describing Complainant’s key commercial products for which it is well known. Complainant contends that the fame and reputation of Complainant’s mark is persuasive in determining Respondent’s bad faith. Complainant is world renowned for the quality and expertise of their training manuals and publications. A person looking on the Internet for an authorised representative of Complainant is likely to assume that the Domain Name resolves to a website that is operated or endorsed by Complainant. This is further supported by the fact that the home page of the website prominently displays Complainant’s trademarks (including their stylised trademark) and their publications. Potential customers will be led to Respondent’s website by the confusing and deceptive nature of the Domain Name.
Complainant contends that Respondent has intended to attract potential customers for their own commercial gain. Cerberus’ investigations have confirmed that Respondent has an affiliate relationship with the third party sites linked to Respondent’s site. Respondent is benefitting commercially from sales made by these third parties. Respondent’s commercial gain from the use of Complainant’s well known trademark demonstrates that Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Further, Respondent’s use of this Domain Name will inevitably tarnish Complainant’s trade mark and detrimentally affect the integrity of the RYA brand. Respondent’s use of the Domain Name suggests that they are in some way associated with or endorsed by Complainant. Whilst this is not the case, members of the public are likely to be misled and believe that there is such an association or endorsement. As a result, Complainant’s substantial reputation and goodwill built up over a number of years will suffer damage.
Complainant’s contentions in relation to the Domain Name <ryacourses.com> are the following:
The domain name <ryacourses.com> formerly resolved to a single webpage that stated:
Manually edited Directory of RYA Course providers, reviews and recommendations.
Find courses run by registered training facilities close to you.”
According to Complainant, this domain name has been registered with the intent that it would be sold or transferred to Complainant for a sum considerably in excess of Respondent’s out of pocket costs directly related to the Domain Name. Alternatively, given Respondent’s conduct identified above, this Domain Name would be used in a similar manner to the domain name <ryabooks.com> to benefit commercially from the unauthorised and illegitimate use of Complainant’s brand and goodwill.
Respondent makes the following contentions in relation to the domain name <ryabooks.com>:
There is no likelihood of confusion since there is a disclaimer at the top and bottom of each page clearly disclosing the site’s relationship with Complainant. The disclaimers are visible to all prospective visitors coming from search engines. Complainant’s trademarked logo is not used on any part of the website. Any use of the initials RYA is purely descriptive of the products advertised on the site, images showing the RYA logo in the form of books is descriptive and fair use. The website’s design in look and feel is such that there could be no confusion between it and Complainant’s website.
The domain name <ryabooks.com> purely identifies the subject matter of the associated website. The latter displays only Complainants’ products, all sourced in good faith from official resellers, including Amazon, Waterstones, ABE Books and Zavvi. The website has been operated since 2008 without the registration of any complaint. All text, images and descriptions used on the website are checked and updated to ensure that all information displayed is factually correct. Errors in the source documents are regularly passed back to Complainant’s customer service department. Every page of the website also links back directly to the exact product of Complainant’s website to allow visitors an opportunity to purchase items directly from Complainant. The website contains comments sections allowing customers to submit questions and reviews of Complainant’s products. All these comments are checked for accuracy and fairness before being allowed to be viewed by other visitors. The website does not “corner the market” in relation to domain names. The RYA has operated an online shop presence since 2002, but domains such as <ryashop.com> and <ryastore.com> have remained un-registered by Complainant to this day.
With these arguments, Respondent does not consent to the remedy requested by Complainant regarding the domain name <ryabooks.com>.
Respondent explicitly states that it does not submit any response in relation to the domain name <ryacourses.com>. Respondent consents to the remedy requested by Complainant and agrees to transfer the domain name <ryacourses.com> on the basis of party agreement, without need for a decision being rendered by the Panel.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Names:
(i) That the Domain Names registered by Respondent are identical or confusingly similar to trademarks or service marks in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That Respondent has registered and is using the Domain Names in bad faith.
By the Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with the Rules, paragraph 2(a), and Respondent was given a fair opportunity to present its case.
In this administrative proceeding, Respondent has chosen to submit a response only in relation to the Domain Name <ryabooks.com>, and not to submit any Response in relation to the other Domain Name <ryacourses.com>. Therefore, the Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the RYA trademarks, registered for the territories of various jurisdictions around the world, including the European Union and particularly the United Kingdom and Austria, where Respondent and its contact person are situated.
It is a common practice under the Policy to disregard gTLDs such as the “.com” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the domain name <ryabooks.com> is its “ryabooks” element. Its first part – “rya” – is identical to Complainant’s RYA trademarks and to the distinctive element of its “RYA and device trademarks, and the second part – “books” – is a generic word of no distinctiveness, which describes some of the products of Complainant. In the Panel’s view, the combination is dominated by the “rya” element, which makes it confusingly similar to Complainant’s trademarks, especially in combination with the “books” element.
The same reasons apply in respect of the domain name <ryacourses.com>. Here, the “courses” element again describes an aspect of Complainant’s business, and the combination is confusingly similar to Complainant’s trademarks.
For these reasons, the Panel finds that the Domain Names are confusingly similar to trademarks in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant claims that Respondent has no rights or legitimate interests in the Domain Names, stating various arguments in this regard. Thus, Complainant has established a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In relation to the Domain Name <ryabooks.com>, Respondent has submitted that it simply identifies the subject matter of the associated website, which displays only Complainants’ products offered by third party resellers. Respondent also alleges that the website at this Domain Name has been operated since 2008 without the registration of any complaints, and that the information on the website is regularly checked and updated.
Thus, Respondent admits that the purpose of the registration and use of the Domain Name are directly related to Complainant and its products only. While contending that all information on the website at this domain name is correct, Respondent has advanced no arguments or evidence in support of any rights or legitimate interests it may have in the Domain Name. Respondent is not itself an authorized reseller of the Complainant’s goods.
In the Panel’s view, the above activities of Respondent cannot be regarded as establishing rights or legitimate interests in the Domain Name, as they appear to directly exploit the goodwill of Complainant without the consent of the latter. In light of the domain name being confusingly similar to Complainant’s trademarks, even if the products offered on Respondent’s website are genuine, no plausible explanation is brought before the Panel to justify the attempt of Respondent to receive profit from sales of these products by third party suppliers Respondent is affiliated to, without having received authorisation by Complainant to do so. Therefore, the Panel does not find Respondent’s activity as being a fair use of Complainant’s trademarks, as alleged by Respondent. Additionally, the Panel notes that both of the Domain Names now re-direct to a website at “www.sail-books.com”, indicating that Respondent is able to carry on its activities without the use of Complainant’s trademark in a domain name.
For these reasons, the Panel finds that the prima facie case established by Complainant has not been rebutted by Respondent, and the latter has no rights or legitimate interests in the Domain Name <ryabooks.com>.
In relation to the domain name <ryacourses.com>, Respondent has chosen not to present to the Panel any allegations or documents in his defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any justification for registering or using this Domain Name, he could have provided it. In particular, Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in his favour.
As submitted by Complainant and not denied by Respondent, the website associated to the Domain Name contains a reference to a directory of training courses offered by Complainant. This makes it obvious that Respondent had Complainant’s trademarks and business in mind at the time of registration of this Domain Name and the creation of the associated website. It is likely these actions to have been carried out with the aim to generate some commercial benefit for Respondent, and Complainant has not given its consent for it.
In the Panel’s view, the above circumstances appear to confirm Complainant’s prima facie case. In the lack of any evidence or allegations to the contrary, the Panel finds that Respondent has no rights or legitimate interests in Domain Name <ryacourses.com> within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Names are confusingly similar to Complainant’s RYA trademarks, and Respondent has been found to have no rights or legitimate interests in them, while positively being aware of Complainant and of the commercial value of its trademarks.
Respondent appears to have used the Domain Names for commercial gain without the consent of Complainant. Such conduct exploits with a commercial purpose the reputation of Complainant and its trademarks. The inclusion of a disclaimer on Respondent’s websites of any affiliations with Complainant is not sufficient to preclude a finding of bad faith, as by the time Internet users reach this disclaimer (situated at the bottom of the website), they have already been attracted to the website as a result of the confusing similarity between Complainant’s trademarks and the Domain Names, and Respondent has gained an opportunity to benefit from any purchases they may make through its website. Also, there is no rebuttal or plausible explanation by Respondent as to the provision by it of incorrect contact details for the purposes of the registration of the Domain Names. The silence of Respondent on this issue makes it difficult for the Panel to associate the concealment of Respondent’s identity to legitimate activities.
Taking into account all above, the Panel is prepared to accept that the Domain Names have been registered and used by Respondent in an attempt for commercial gain to attract Internet users to the Domain Names by creating a false association with Complainant and its trademarks. These actions amount to bad faith registration and use of the Domain Names under the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <ryabooks.com> and <ryacourses.com> be transferred to Complainant.
Dated: August 12, 2010