WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
First ScotRail Limited v. Mark Thomson
Case No. D2013-1623
1. The Parties
The Complainant is First ScotRail Limited, of Scotland, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Mark Thomson, of Scotland, United Kingdom of Great Britain and Northern Ireland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <scotrail.com> (the “Domain Name”) is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2013. On September 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 16, 2013, 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” 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 Respondent of the Complaint, and the proceedings commenced on September 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2013. The Response was filed with the Center on October 14, 2013.
The Center appointed Ian Lowe as the sole panelist in this matter on November 15, 2013. 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 Center received a supplemental filing from the Complainant on October 18, 2013, which it duly acknowledged. The Panel has reviewed the further filing and does not consider that there is any exceptional reason why the filing should be admitted. Accordingly, the Panel has not taken it into account in reaching its decision.
The Center received a supplemental filing from the Respondent on October 18, 2013, which it likewise duly acknowledged. The supplemental filing by the Respondent purported to cure a deficiency in the original Response, which did not conclude as required by Rule 5(b)(viii) of the Rules with a statement certifying amongst other things that the information in the Response was complete and accurate. In the circumstances, the Panel is prepared to accept the supplemental filing and to treat the Response as complying with Rule 5.
4. Factual Background
The Complainant is the operator of the ScotRail franchise for the provision of passenger train services throughout Scotland under a Franchise Agreement with the Scottish Ministers. The current franchise commenced on October 17, 2004 and will continue until March 31, 2015.
By virtue of a statutory scheme made under the Transport Act 2000 on the commencement of the current franchise, the Complainant is entitled as transferee to the benefit of an exclusive licence of UK registered trademark number 1528473 “SCOTRAIL” and “ScotRail” registered as of March 4, 1993. The trademark is registered in the name of the Scottish Ministers and the licence was originally entered into between the Scottish Ministers and ScotRail Railways Limited, the Complainant’s predecessor as franchisee of the ScotRail franchise.
“ScotRail” has been the brand name used for Scottish regional and commuter rail services since 1983. Since at least 2004, “ScotRail” has been displayed at over 340 stations throughout Scotland. In 2007/2008 the Complainant carried approximately 74.4 million passengers on “ScotRail” branded trains. It operates a website at “www.scotrail.co.uk” which had 1,256,119 unique visitors in the period August to December 2008.
The Domain Name was first registered on February 9, 2000 in the name of “Scottish Trail Company (Sco Trail)”. From around May 2, 2007 the Domain Name was registered in the name of Registercom, the Registrar. It was registered in the name of the Respondent on about June 21, 2008. From 2008 the Respondent was registered as an affiliate of thetrainline.com through the TradeDoubler affiliate marketing programme. Thetrainline.com is an online (and telephone) service selling tickets for travel on British train services. From this time, the Domain Name was used primarily for a website with some information about the railway industry, with links to other railway businesses not connected with the Complainant, but also carrying advertising links for buying train tickets through thetrainline.com. It was also used for a time simply to redirect an Internet user to the website at “www.thetrainline.com”, via the TradeDoubler affiliate programme. From 2008, the Respondent has listed the Domain Name for sale on “www.sedo.com”.
At the time of filing the Complaint, the Domain Name resolved to a website at “www.cyclescotland.co.uk” where Cycle Scotland is described as a business “established in 1995 to offer cycling tours within Scotland”.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the SCOTRAIL trademark, of which it is the exclusive licensee; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant emphasizes that for the purposes of this Complaint and the determination of this dispute under the UDRP the relevant registration of the Domain Name is that by the Respondent in about June 2008. It maintains that there is no question of the Respondent having any authority from the Complainant (or the Scottish Ministers, the proprietors of the SCOTRAIL UK registered trademark) to use the Domain Name.
The Complainant also notes that the source code of the web pages for the website at “www.scotrail.com” to which the Domain Name resolved from 2008 included not only code for the TradeDoubler and Google AdSense marketing programmes, but also keyword metatags including “firstscotrail”, “the trainline”, “directrail”, “scotrail” and “first”. Accordingly, the Complainant maintains that the Respondent clearly had the Complainant in mind when he registered the Domain Name.
The Respondent has used the Domain Name throughout the relevant period either for a website with links to thetrainline.com or to redirect Internet users automatically to thetrainline.com website, in both cases with a view to generating commission. The Complainant contends that this does not in any sense demonstrate rights or legitimate interests in the Domain Name. On the contrary, it argues that this amounts to bad faith use since the Respondent has clearly intended to derive commercial advantage from confusion with the Complainant’s trademark as to the source of the Respondent’s website. The pointing of the Domain Name to the website at “www.cyclescotland.co.uk” only happened after the Complainant sent a cease and desist letter to the Respondent and, in any event, using the Domain Name to draw Internet users to the Cycle Scotland business also constitutes bad faith use.
The Complainant further contends that even if the Respondent is entitled to take into account the period since the original registration of the Domain Name in 2000, the Respondent cannot rely on any of the uses of the Domain Name prior to 2008 to establish rights or legitimate interests in the Domain Name or good faith use of the Domain Name. It submits that no use by Cycle Scotland or by the Scottish Trail Company justified the use of the Domain Name, since neither business was in fact known as “Sco Trail” and any use of that mark would have been an infringement of the SCOTRAIL registered trademark.
The Respondent claims that he is an associate of Peter Butterworth, whose name is included in the WhoIs record for the first registration of the Domain Name in February 2000, and that it was “they” who registered the Domain Name in the name of “Scottish Trail Company (Sco Trail)” at that time. He refers to the Scottish Trail Company as "our business" and asserts that at that time the Domain Name and the <scotrek.com> domain name pointed to a website featuring their cycle tour business. He does not state in terms what that business was called. He further considers that the uses of the Domain Name since its original registration through to the present time have all been in good faith. He confirms that the “www.scotrail.com” website was approved by Google for its AdSense programme in 2007. He does not regard the use of the Domain Name for a web page including links to thetrainline.com or to redirect Internet users to thetrainline.com website through the TradeDoubler affiliate programme or the Google AdSense programme as in any way amounting to bad faith use.
The Respondent also contends that the failure to renew the registration of the Domain Name by the original registrant during the period between around May 2007 and February 2008 (when the WhoIs records show its having been registered in the name of Registercom) is evidence of their good faith in allowing any interested parties such as the Complainant to register the name at that time. He claims that at the end of that period they "took it back fairly and squarely".
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is 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 Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that, as a result of the contractual and statutory arrangements put in place when the Complainant was awarded the ScotRail franchise in 2004, it is the exclusive licensee of UK Registered Trade Mark no. 1528473 for the mark “SCOTRAIL”. Ignoring the ".com" suffix the Domain Name is identical to the mark.
In addition, the Panel is satisfied that as a result of the very substantial business carried on by the Complainant and its predecessors in respect of railway services in Scotland since 1983 the Complainant is presently entitled to the benefit of well-established unregistered trademark rights in respect of the SCOTRAIL name.
Accordingly, the Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
There is no question of the Complainant (or the Scottish Ministers, the proprietors of the SCOTRAIL UK registered trademark) having authorised the Respondent to use the Domain Name.
The Respondent does not explicitly indicate why he may have rights or legitimate interests in the Domain Name. It appears that he claims that he, or he and Mr Butterworth, have a legitimate interest in the Domain Name because they originally used the name "ScoTrail" for a business carried on by them from some time before 2000 when the Domain Name was originally registered by Mr Butterworth (on behalf, he claims, of him and the Respondent).
The Panel notes that the Respondent has adduced no evidence whatsoever either that he was in any way an associate of Mr Butterworth either in 2000 or at any time since, or of any business in fact having been carried on either under the name “Sco Trail” or “Sco Trek”. The Respondent produces what he says is a copy of a web page dating back to 2000 that includes the following image, although there is nothing to indicate that this in fact existed as a web page at that time:
In the view of the Panel it is inherently unconvincing that a genuine business would be carried on under the name "Sco Trail". The Panel considers that this is a quite unnatural and unnecessary abbreviation for "Scottish Trail". Furthermore, the Respondent does not in any event adduce any evidence at all of a business having been carried on under the name "Scottish Trail" or “Sco Trail” whether in 2000 or subsequently, or from 2008. The Domain Name resolved at the time of the Complaint to the “www.scotrek.com” website which is headed “Cycle Scotland – Scottish Cycle Safaris” and refers to the “www.cyclescotland.co.uk” website. There is no suggestion and no evidence whatsoever that this business has ever been known as or referred to as “SCO TRAIL”.
Accordingly, the use of the Domain Name prior to the registration of the Domain Name by the Respondent in 2008 does not indicate any legitimate interest in the name on the part of the Respondent. Since registration by the Respondent, apart from a brief period when the Domain Name resolved directly to thetrainline.com website, the Domain Name has been used for a basic website with some limited information on the railway industry and links to thetrainline.com through the TradeDoubler and/or Google AdSense affiliate programmes. In the view of the Panel, none of this activity could give rise to rights or legitimate interests in the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interest in the Domain Name.
C. Registered and Used in Bad Faith
The Panel is satisfied that the relevant registration of the Domain Name, for consideration of the question whether the Domain Name was registered in bad faith, is the registration by the Respondent in around May 2008. The Domain Name had previously been registered in the names of two other entities and the registration by the Respondent therefore clearly amounted to an act of registration for the purposes of paragraph 4(a)(iii) of the Policy. It was in no sense a renewal of an existing registration.
Although the Respondent appears unabashed about this use of the Domain Name, the Panel considers that it amounts to classic bad faith use. During the period of automatic redirection, Internet users making a search to purchase tickets for travel on ScotRail and being presented with a link to “www.scotrail.com”, would not be aware that their landing on the “www.thetrainline.com” website had anything to do with the Respondent. The use of the Domain Name by the Respondent, whether for the “www.scotrail.com” website with links to thetrainline.com, or for the automatic redirection, has taken advantage of the Complainant's very well-known mark to confuse Internet users into believing that the use of the Domain Name was approved or authorized by the Complainant with a view to commercial gain on the part of the Respondent by earning commission on ticket sales.
In the circumstances, the Panel finds that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <scotrail.com> be transferred to the Complainant.
Date: November 29, 2013