WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Awesome Events Limited v. Ben Loyd Holmes
Case No. D2017-0517
1. The Parties
The Complainant is Awesome Events Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stone King LLP, United Kingdom.
The Respondent is Ben Loyd Holmes of Staines, United Kingdom, self-represented.
2. The Domain Name and Registrar
The disputed domain name <awesome-events.com> is registered with 123-Reg Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 14, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2017. The Respondent sent an email to the Center on March 20, 2017. The Respondent did not submit a formal Response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on April 10, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on April 12, 2017. 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 Panel issued an Administrative Procedural Order No.1 on April 12, 2017, requiring that the Complainant submit a further statement concerning the reputation and goodwill alleged to attach to its unregistered trademark, and that the Respondent be at liberty to submit a further statement in response. Following extensions of time granted by the Panel, the Complainant submitted a further statement on April 26, 2017. The Respondent did not submit a response to the Complainant's further statement.
4. Factual Background
The Complainant is a limited company registered in England and Wales. It was incorporated on November 1, 1996 and is located in the Greater London area.
The Complainant is not the owner of any relevant registered trademark rights. However, it submits that it has traded under the name and mark AWESOME EVENTS since November 11, 1996 and provides evidence of trading under that name by way of brochures and other promotional materials dating from 1998.
The Complainant operates a website at "www.awesome-events.co.uk". The Complainant has produced evidence of the use of that URL in connection with its business since at least 2000.
The Respondent operates a business offering the hire of dinosaurs, robots, gorillas and other large size models primarily for use at events and parties.
The Respondent registered the disputed domain name <awesome-events.com> on June 2, 2015.
The Complainant has submitted evidence by way of screen prints showing that the Respondent operated a website linked to the disputed domain name headed "Awesome Events" and "Awesome Events Entertainment". The website stated that the Respondent's business was "based in London" and that the Respondent was "the UK and Europe's premier event entertainment and event service provider and a world leader in our field."
It appears from the evidence that, following customer confusion between the businesses of the Complainant and the Respondent, the Respondent rebranded his business as "Creature Events" and subsequently operated from a website at "www.creatureevents.com". However the Respondent has maintained a web page linked to the disputed domain name, stating: "We have moved! If you are looking for our Dinosaurs, Robots, Lions or Apes you are nearly in the right place!" The web page then directs Internet users to the Respondent's new URL, together with a discount offer.
5. Parties' Contentions
The Complainant submits that, as a result of its trading activities under the name and mark AWESOME EVENTS for over 20 years, it has built up enormous reputation and goodwill in that mark. The Complainant states that it has operated across the event management and entertainment sectors, including corporate events, production, venues, event theming, special effects, conferences, private parties, catering and transport. In response to the Procedural Order requiring a further statement, the Complainant furnished evidence of its promotional and publicity materials since 1998. It also stated that its turnover grew from approximately GBP 2.6 million in 2012 to approximately GBP 5.5 million in 2016. The Complainant states that at has spent over GBP 300,000 on Google AdWords campaigns since 2009 in relation to the mark AWESOME EVENTS and a further GBP 200,000 on other marketing activities. The Complainant also provides examples of its clients and refers to industry recognition of its business including its nomination over the years for a number of industry awards.
The Complainant submits that, as a result of the above matters, it has obtained unregistered trademark rights in the name and mark AWESOME EVENTS such as would entitle it to prevent other traders from using a similar mark for similar services in the United Kingdom.
The Complainant submits that the disputed domain name <awesome-events.com> is identical to a trademark in which it has rights. In particular, the Complainant contends that the disputed domain name incorporates the Complainant's mark AWESOME EVENTS and has no other distinguishing elements.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant repeats that the disputed domain name incorporates the Complainant's trademark and submits that it has been used for a website at a URL, which is virtually identical to the Complainant's URL at "www.awesome-events.co.uk", to offer services which are identical to those of the Complainant, namely event management and entertainment services. The Complainant states that it has not licensed the Respondent to use its trademark, and submits that since the Respondent's activities would amount to passing off in the United Kingdom, the Respondent cannot have rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant repeats the contentions referred to above concerning the Respondent's choice and use of the disputed domain name. The Complainant states that the Respondent's website used the terms "Awesome Events" and "Awesome" numerous times and stated that the Respondent was based in London. The Complainant submits that, given the Complainant's reputation in the field of entertainment and event management, it was inevitable that Internet users would wrongly assume that the Respondent was in some way connected with the Complainant.
The Complainant further submits that the Respondent's use of the disputed domain name has caused actual confusion to the Complainant's customers and suppliers. The Complainant cites several instances of such confusion, including at a "Confex" trade fair at which individual approached the Respondent believing it to be the Complainant; where the Complainant's suppliers and customers asked why it was now exhibiting dinosaurs; and where a testimonial provided by the trade fair mistakenly referred to the Respondent's business in conjunction with the Complainant's corporate logo. The Complainant also refers to a telephone call which it received in June 2016 seeking information about the Respondent's services.
The Complainant submits that the Respondent has admitted the likelihood of confusion with the Complainant's trademark and exhibits an email from the Respondent dated March 4, 2016 in which the Respondent confirmed that individuals had mistakenly approached the Respondent's stand at the trade fair and apologized for any confusion. The Respondent stated that he was "pretty keen on the name" but had no intention of affecting or competing with the Complainant's brand. The Respondent proposed that the parties should respectively redirect relevant emails and telephone calls to one another and that the Respondent would place an appropriate link on his website.
The Complainant contends that the Respondent's continuing use of the disputed domain name to redirect Internet users to his current website both takes unfair advantage of the goodwill in the Complainant's trademark and continues to misrepresent that the Respondent is in some way connected with the Complainant.
The Complainant submits that it was the Respondent's intention to take unfair advantage of the Complainant's trademark at the time the Respondent acquired the disputed domain name and that the disputed domain name continues to represent an "instrument of fraud" in the hands of the Respondent.
The Panel deems the Respondent's email to the Center dated March 20, 2017 to constitute its formal Response in this administrative proceeding.
The Respondent submits that he was not aware of the Complainant's business when he registered the disputed domain name. The Respondent states that his reason for the choice of the disputed domain name was that he was expanding his business from dinosaurs to offer multiple creatures and the name was appropriate to that rebranding. The Respondent states that the disputed domain name was shown as available upon a "quick domain search" and that he purchased it on that basis.
The Respondent states that he did not become aware of the Complainant's business until the Complainant approached him in connection with the trade show referred to above. The Respondent states that, as a result of that approach, he rebranded again at great cost to himself in order to ensure that there was no possibility of further confusion.
The Respondent also submits that Parties' respective business are entirely different, in that the Respondent offers dinosaurs and other creatures for hire while the Complainant organizes Christmas and other parties.
The Respondent states that he retained the disputed domain name in order to pick up clients emailing the Respondent on that domain name. The Respondent submits that it has clearly identified the rebranding upon the web page linked to the disputed domain name and that the page redirects Internet users accordingly.
The Respondent denies having acted improperly or in bad faith and states that the Complainant is attempting to bully and harass him. The Respondent states that the Complainant does not have a trademark reflected by the disputed domain name and that the disputed domain name was freely available for registration.
The Respondent states that it is happy to negotiate a sale of the disputed domain name to the Complainant "at a fair price reflective of its value".
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
While the Complainant does not rely on any trademark registration, it claims to have acquired unregistered trademark rights in the name and mark AWESOME EVENTS by virtue of its business activities under that name for over 20 years in the manner described in its submissions. While the Panel notes that both the words "awesome" and "events" are "dictionary" terms, the Panel is of the view that the words used together in business by a particular party are capable of acquiring a secondary meaning distinctive of that party. Furthermore, the Panel is satisfied on the evidence put forward by the Complainant that, by reason of the Complainant's business activities in the events sector over an extended period, the name and mark AWESOME EVENTS has become distinctive of the Complainant's business in that sector in the United Kingdom to a sufficient degree to give rise to unregistered trademark rights.
The disputed domain name is <awesome-events.com> which is effectively identical to the Complainant's unregistered trademark. The Panel finds accordingly that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent states that he registered the disputed domain name in connection with an expansion of his business from dinosaurs to the hire of a range of other creatures. However, he makes no claim to have used the name AWESOME EVENTS (or any other name including the term "awesome") prior to his registration of the disputed domain name, or that he had any prior trademark rights in a name corresponding to the disputed domain name.
The Respondent submits that he was not aware of the Complainant's business when he registered the disputed domain name and that the disputed domain name was freely available for registration. However, in the view of the Panel, the Respondent will not obtain rights or legitimate interests in a domain name which he knows or ought to know is likely to take unfair advantage of the rights of another party. In this case, for the reasons set out below, the Panel finds that the Respondent knew or ought to have known that the disputed domain name would take unfair advantage of the Complainant's rights. For that reason, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
As a general rule, the registrant of a domain name cannot be found to have registered the domain name in bad faith unless he had prior knowledge of the trademark corresponding to the domain name. However, a number of UDRP panels have found registrations to be in bad faith even where the registrant's actual knowledge of the relevant trademark could not be demonstrated. In some such cases panels have found that the registrant's lack of knowledge was highly improbable, and in some other cases that the registrant should have been aware of the Complainant's trademark. Examples of cases in the latter category include those where the parties operate in the same business sector and/or in a similar geographical location.
In this case, the Panel takes account of the following matters:
1. The Complainant has been trading under the name and mark AWESOME EVENTS for approximately 20 years prior to the Respondent's registration of the disputed domain name. Moreover the Complainant had operated a website at "www.awesome-events.co.uk" since at least the year 2000.
2. The Respondent operates in the same business sector as the Complainant. While the Respondent submits that he hires out dinosaurs and other creatures while the Complainant arranges parties, both are active in the events sector, as is evident from the confusion caused at the "Confex" events industry trade fair referred to above. It is also notable that the Respondent retained the term "events" as part of his new name following its latest rebranding.
3. Both business operate in the United Kingdom and are based in the London area.
The Respondent states that, upon expanding his business beyond dinosaurs, he carried out a "quick domain search" before registering the disputed domain name and that he was not aware of the Complainant's business at the date of registration. However, in the light of the circumstances set out above, the Panel finds it difficult to accept that the Respondent was not, or did not at that time become, aware of the Complainant's existing trademark and URL. But even if the Respondent was not so aware, it is the view of the Panel that he clearly should have been so aware in all the circumstances of the present case, and that any failure to be so aware would amount to recklessness on his part.
The Panel further finds that the Respondent's registration and initial use of the disputed domain name for his commercial website took unfair advantage of, and/or was unfairly detrimental to, the Complainant's goodwill in its unregistered trademark AWESOME EVENTS by causing substantial and inevitable confusion within the United Kingdom events sector. The Panel is also of the view that the Respondent's use of the disputed domain name following his latest rebranding has continued to take unfair advantage of the Complainant's trademark, in that the existing web page not only redirects Internet users but also continues actively to promote the Respondent's business.
Finally, the Panel notes the Respondent's offer to negotiate a sale of the disputed domain name to the Complainant "at a fair price reflective of its value", which the Panel interprets to imply consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name.
In all the circumstances set out above, the Panel finds that the disputed 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, <awesome-events.com>, be transferred to the Complainant.
Steven A. Maier
Date: May 5, 2017