WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Matthew James Spratt v. Stephen Dainty, HHB Holidays & Travel Ltd
Case No. D2016-0306
1. The Parties
The Complainant is Matthew James Spratt of Kent, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), self-represented.
The Respondent is Stephen Dainty, HHB Holidays & Travel Ltd of Varna, Bulgaria, self-represented.
2. The Domain Name and Registrar
The Disputed Domain Name <banskoexpresstransfer.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 15, 2016. On February 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 16, 2016, 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 proceedings commenced on February 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2016. The Respondent submitted an informal communication on March 1, 2016 and requested the extension of the Response due date for four calendar days. In accordance with paragraph 5(b) of the Rules, the Center extended the Response due date until March 17, 2016.
The Response was filed with the Center on March 16, 2016.
The Center appointed Charné Le Roux as the sole panelist in this matter on April 1, 2016. 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 a Procedural Order on April 13, 2016 requesting the Respondent to submit proof of the registration of the company Bansko Express Transfers Limited in Bulgaria. On April 13, 2016 the Center received a communication from the Complainant requesting an opportunity to reply to any response of the Respondent. It received a second communication from the Complainant on April 14, 2016 with a copy of the registration details of the Bulgarian company referred to. On April 14, 2016 the Center received a response from the Respondent confirming the information of the Bulgarian company as supplied by the Complainant.
4. Factual Background
The Complainant is an individual, resident in the United Kingdom and conducting an online business that allows passengers to book and pay for transfers from airports in Bulgaria and Greece to the Bulgarian ski resort of Bansko. The Complainant registered the domain name <banskoexpress.com> on April 2, 2008 for this purpose. The website, and trade that the Complainant conducted on it gave rise to the establishment of the BANSKO EXPRESS trade mark, which also became the trading name of the Complainant's business. The Complainant's first booking was made in September 2008 and 6173 bookings followed subsequently.
The Disputed Domain Name was registered by the Respondent on July 22, 2015. The website linked to the Disputed Domain Name offers services similar to those offered by the Complainant, namely transfer services to Bansko from various airports. The Respondent has registered and is the only shareholder of a Bulgarian company named Bansko Express Transfers Limited, which he incorporated on March 7, 2016.
5. Parties' Contentions
The Complainant states that he has used the BANSKO EXPRESS trade mark since April 2008, when he registered the domain name <banskoexpress.com>, for the purpose of allowing passengers to book and pay for airport transfers to Bansko, that the first booking was made in September 2008 and that, to date, 6,173 more bookings followed. The Complainant argues that BANSKO EXPRESS is known as one the best and lowest cost transfer providers for Bansko.
The Complainant contends that the Disputed Domain Name is confusingly similar to his trade mark and also that the Respondent lacks rights or legitimate interest in the Disputed Domain Name, in that:
a. The Respondent is not commonly known by the Disputed Domain Name and in fact operates under the trading style HHB Holidays;
b. The parties have been competing in the Bansko airport transfer business since 2008 and that the Respondent's only interest in the Disputed Domain Name is to confuse and divert customers from the Complainant to the Respondent;
c. The website associated with the Disputed Domain Name has a nearly identical look and feel to the website associated with the Complainant's domain name <banskoexpress.com>, which supports the notion that the Respondent has no real or legitimate interest in the Disputed Domain Name.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. He states that the Respondent registered the Disputed Domain Name and created a nearly identical website associated with it in a deliberate attempt to confuse customers and divert them from the established BANSKO EXPRESS trade mark. The Complainant states that this has already resulted in two customers accidently booking transfers with the Respondent, thinking that they were booking with the established BANSKO EXPRESS service. The Complainant provides one example of such confusion.
The Complainant expresses concern about the likely further damage to the Complainant's business in view of negative public comments that the Respondent has already received in respect of his airport transfers to and from Bansko. The Complainant provides an example of such negative publicity that was featured on TripAdvisor in January 2016.
The Complainant requests that the Disputed Domain Name be transferred to him.
The Respondent replied to the Complainant's contentions, indicating that the Disputed Domain Name represents his Bulgarian company BANSKO EXPRESS TRANSFERS LIMITED, which he registered under number 201192324 and which is listed on the Bulgarian State Companies Register. The Respondent states that he owns 100 percent of the company.
The Respondent also provides a string of emails between the Complainant and the Respondent's hosting company, that commenced in January 2016 with an objection from the Complainant in connection with the website associated with the Disputed Domain Name, namely that it incorporated material copied from the Complainant's website at "www.banskoexpress.com". The string of emails also shows the Respondent's reply, where he refers to his registered Bulgarian company and requests the Complainant to indicate specifically what he would like to change on the website. The Respondent also indicated that he placed, as a temporary measure, a note on the landing page of the contentious website that the business was not the same as the Complainant's. This query was closed by the Respondent's hosting company in January 2016 following a lack of response from the Complainant.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it 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.
6.1. The Panel's Procedural Order of April 13, 2016
In response to the Procedural Order of the Panel, directed only to the Respondent, the Complainant submitted proof of the registration of the company BANSKO EXPRESS TRANSFERS LIMITED with the Bulgarian State Companies Register, indicating that the company was registered on March 7, 2016. The Respondent subsequently acknowledged the proof that the Complainant provided. The Respondent also stated that BANSKO EXPRESS TRANSFER is a trading name that has been used by HHB Holidays and Travel Limited since 2007 and before that was used by HHB Holidays Limited. No evidence of such use was, however, provided.
6.2. Substantial Issues
A. Identical or Confusingly Similar
The Complainant claims common law rights in the trade mark BANSKO EXPRESS and that the Disputed Domain Name is confusingly similar to it. While a good argument can be made that the Disputed Domain Name is confusingly similar to this trade mark, the issue for the Panel is whether BANSKO EXPRESS is a trade mark in which the Complainant has demonstrated the existence of unregistered trade mark rights.
In order to succeed with his claim in this regard, the Complainant must show that the BANSKO EXPRESS trade mark has become distinctive of the Complainant or his business and that it has acquired a secondary meaning. In doing so, the Complainant must provide evidence in support of this acquired distinctiveness, which may include the production of sales and advertising expenditure, examples of advertising and business literature, evidence of third party use of the trade mark, such as correspondences from suppliers or customers, press cuttings, consumer surveys and the like. This is particularly important where a trade mark is not inherently distinctive. In this case, the trade mark BANSKO EXPRESS incorporates very descriptive matter and, as a whole, is not particularly distinctive. The word "bansko" refers to a Bulgarian ski resort named "bansko" and the word "express", according to the Miriam Webster dictionary, means travelling at high speed and more specifically "travelling with few or no stops along the way". As a whole, the phrase is descriptive of the services provided by the Complainant. Many panels have held that in instances where rights are claimed in common law trade marks that are not inherently distinctive, there is a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. See WIPO Overview of WIPO Panel Views on Selected UDRP questions, Second Edition ("WIPO Overview 2.0") paragraph 1.7 and the cases referred to there.
The evidence before the Panel in connection with the Complainant's common law rights comprises:
a. registration of the domain name <banskoexpress.com> in April 2008;
b. a statement by the Complainant that has since April 2008 made 6,174 bookings on the website at "www.banskoexpress.com"; and
c. an argument by the Complainant that BANSKO EXPRESS is one of the best and lowest cost providers for Bansko.
The Complainant has produced no evidence in support of the claims above other than the registration of the domain name <banskoexpress.com> and reference to the website associated with it. The Complainant has not provided information such as advertising figures to show the reach or extent of his business, the income derived from the trade that he has conducted under the trade mark BANSKO EXPRESS, or support from members of the public or persons involved in his trade to prove the existence of a secondary meaning associated with his trade mark. Given the descriptive nature of the Complainant's business name, this is a high hurdle to overcome.
In these circumstances, the Panel finds that the Complainant has failed to prove that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights, and for this reason the Complaint must fail.
B. Rights or Legitimate Interests and Registered and Used in Bad Faith
In light of the Panel's finding under the heading A above, it is not necessary to address the two remaining elements of the dispute enquiry. However, there are unsatisfactory aspects regarding the Respondent's conduct in registering the Disputed Domain Name some years after the Complainant's registration of his domain name and the Respondent's use of the Disputed Domain Name in connection with near identical website content. A clear attempt to seek to divert customers from the Complainant to the Respondent accordingly seems present. However, the descriptiveness of the terms "bansko express" and "bansko express transfers" cannot be ignored. Adopting descriptive words for trade names or trade marks always presents a risk of market confusion to traders who will be unable to distinguish their goods and services from those of others. The present decision does not however prevent the Complainant from availing itself of the courts (e.g., for an action for passing off).
For the foregoing reasons, the Complaint is denied.
Charné Le Roux
Date: April 20, 2016