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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Thomas Cook UK Ltd -v- Whitley Bay Uncovered [2002] DRS B3 (27 October 2002) URL: http://www.bailii.org/uk/cases/DRS/2003/B3.html Cite as: [2002] DRS B3 |
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NOMINET UK DISPUTE RESOLUTION SERVICE
BETWEEN:
THOMAS COOK UK LIMITED
Complainant
-and-
WHITLEY BAY UNCOVERED
Respondent
______________________________
DECISION OF INDEPENDENT EXPERT
______________________________
Appointment
I was appointed on the 14th October 2002 to decide, under the DRS Procedure, a complaint of Abusive Registration. I am required to give my decision by the 28th October 2002.
TerminologyThe Complainant asserts that the Domain Names in the hands of the Respondent are "abusive Registrations".
The substance of the Complaint, which is dated the 29th August 2002, and which is made on behalf of the Complainant by its solicitors, Decherts, is as follows:
Even if the Respondent's alleged intended use for the domain names is correct, the Respondent can only have been intending to capitalise on the numerous events organised by the Complainant and on the Complainant's trade mark and goodwill in CLUB 18-30 as promoted at these events. It is therefore submitted that the Respondent purchased the domain names to attract for financial gain Internet users to the Respondent's website and other websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's web site or web sites. Such registration takes unfair advantage of or is unfairly detrimental to the Complainant's rights.
The word "uncovered", in the context of television programmes or newspaper or magazine articles, is often used to denote an expose or behind-the-scenes documentary, often of a salacious nature. In recent years, UK television programmes such as "Ibiza Uncovered" and "Greece Uncovered" have attracted large viewing figures for their "fly-on-the-wall" documentaries on the nightlife of these holiday resorts. The word "Uncovered" has become synonymous with such types of documentaries and television programmes. The Respondent itself maintains a site "whitleybayuncovered.com" which provides a photo-diary of the "legendary nightlife of Whitley Bay". It is submitted that the intention of the Respondent can only have been to produce a similar style of documentary, capitalising on the Complainant's goodwill in the mark and/or as a result of filming or taking photographs at the Complainant's resorts.
Moreover, in the UK, there is a very popular television programme called "Club Reps", broadcast by the national terrestrial broadcaster ITV, which details, in a "fly-on-the-wall" style documentary similar to that of the various "Uncovered" programmes mentioned above, the lives of young representatives and agents of the Complainant's business at various holiday resorts. The programme has been a huge success and the first programme in the latest series, broadcast in January 2002, attracted an audience of 4.7 million viewers, a 31% audience share. The Complainant has attracted sufficient goodwill in the mark "Club Reps" as a result of this programme that a registration of this name has now been applied for as a trade mark in the United Kingdom. It is submitted that this is further evidence that the intention of the Respondent, in registering the Domain Names, can only have been to produce a similar or identical product to that in which the Complainant already had trade marks, or to create a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's web site or web sites. Such use takes unfair advantage of or is unfairly detrimental to the Complainant's rights.
In addition, the registration of the Domain Names by the Respondent prevents the Complainant, the legitimate owner of rights in the name CLUB 18-30 UNCOVERED, from registering and using these domain names. The Respondent must have been aware of the success of the "Club Reps" programme and the "Uncovered" programmes as detailed above, and decided to block registration of the domain names which were likely to become desirable for use by the Complainant as a result. The reasons given by the Respondent for registration are not, it is submitted, legitimate reasons. The Complainant relies on the definition of a "blocking registration" as given by the Nominet Expert in Peoplesoft UK Limited v Kane (DRS 120).
The Complainant has been successful in administrative proceedings under the Internet Corporation for Assigned Names and Numbers' Domain Name Dispute Resolution Policy (UDRP) in respect of a complaint against the Respondent for the domain names and
It is submitted that the Domain Names should be transferred to the Complainant.
In their letter to the Respondent dated the 27th April 2001 Decherts asserted:-
"The Domain Names in which you do not appear to have any legitimate interest are conceptually, visually and orally confusingly similar to the CLUB 18-30 trade marks and the above domain name.
On any reasonable interpretation, the Domain Names can only have been registered with a view:
(a) to sell them to our client or to a third party for consideration in excess of your costs of registration; and/or
(b) to prevent our client from reflecting its rights in a corresponding domain name; and/or
(c) to disrupt our client's business; and/or
(d) deliberately to attract internet users for commercial gain to a web site operated by you at the Domain Names by creating a likelihood of confusion with the names and marks in which our client has legitimate international rights.
It is therefore our view that the Domain Names have been registered and are being used in bad faith."
In an e-mail dated the 21st May 2001 the Respondent responded:-
"I have read through your letter several times and I am slightly confused as to why you wish me to surrender my domain names over to your clients. May I take this opportunity to point out to you that in no way were these names purchased:
1. To make any attempts to sell them to your clients or a third party.
2. To disrupt your clients business.
3. To use any of your clients trade marks.
4. To retail holidays.
5. To confuse visitors to our site that we are Club 18-30 Holidays.
I feel we do have a legitimate use for the domain names we have purchased and our plans are honourable and legitimate. As you are probably aware we operate another highly successful website that uncovers people out clubbing in the party town of Whitley Bay.
Our plans for club 18-30 uncovered are to uncover worldwide the nightlife antics of the 18 to 30 year old market whilst out clubbing. We do not have any plans to emulate your clients website neither do we plan to sell holidays on club 18-30 uncovered."
In a further e-mail dated the 23rd August 2001 the Respondent stated:
"As far as we are aware we are not infringing upon your clients trade mark. As stated in our previous email our intentions have been wholly honourable. At present the club1830uncovered domain names lie dormant until this matter is appropriately dealt with.
As regards to your client offering us reasonable transfer costs up to a maximum of two hundred pounds. This in no way would cover the time and expenses that we have incurred during the development period of the setting up of these websites.
We have been abroad now for over four months researching and developing the uncovered websites and have incurred obvious expenses. It would be financially unviable for us to simply pass the domain names over to your client without seeking further legal advice.
We would like to stress again that these domain names were never purchased with the intention of causing any detriment to your client. If your client feels they have no alternative but to consider proceedings against us then this may have to be the case."
In the absence of any challenge by the Respondent to matters of fact I am entitled to, and will, assume that the primary facts asserted in the complaint are true. Indeed there is no reason to doubt the veracity of those asserted facts. However, there is no basis for making any assumption of validity in respect of assertions which are inference or contention rather than primary fact.
JurisdictionUnder paragraph 2a of the Policy a Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure that
Under paragraph 2b of the Policy a Complainant is required to prove, on the balance of probabilities, the assertions referred to in paragraph 2a i.e. those set out in paragraph 11 above.
RightsParagraph 1 of the Policy defines "Rights" as including "rights enforceable under English law". This definition is subject to a qualification which is not material.
As stated in paragraph 5(2) above the Complainant has rights in its registered domain names. The Complainant has also registered a portfolio of trade marks related to CLUB 18-30. In terms of the UK the Complainant has the benefit of the following registrations: Trade Mark Number Date CLUB 18-30 1285877 01.10.86 CLUB 18-30 (badge logo) 2169954 18.06.98 CLUB 18-20 (brick device) 1427422 10.4.99 CLUB 18-30 (logo) 2159643A 28.02.98. The Complainant has also registered its trade mark in other countries. Documentary evidence substantiating this has been provided.
Accordingly, there is no doubt and I find as a fact that the Complainant has rights in respect of a name which is similar to the Domain Names.
As stated in paragraph 5(11) above, the Complainant asserts that it has also applied to register the mark "Club Reps". Even if the Complainant has rights in this name or mark, in my judgment it is not similar to the Domain Names.
The Complainant also asserts that it "is the legitimate owner of rights in the name CLUB 18-30 UNCOVERED" - see paragraph 5(12) above. However, it is not suggested that it has registered that name as a trade mark, and there is no evidence before me that it has any rights in that name except in so far as they may be derived from its ownership of the Club 18-30 name.
Abusive RegistrationParagraph 1 of the Policy defines "Abusive Registration" as: "a Domain Name which either
i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights;"
The Policy provides:
"3.2 Evidence of Abusive Registration
a A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B as a blocking registration against a name or mark in which the Complainant has Rights; or
C primarily for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii. in combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. it is independently verified that the Respondent has given false contact details to us.
b. Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.
4 How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration
a A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:
i. Before being informed of the Complainant's dispute, the Respondent has:
A used or made demonstrable preparations to use the Domain Name or a Domain name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C made legitimate non-commercial or fair use of the Domain Name; or
ii. The Domain Name is generic or descriptive and the Respondent is making fair use of it.
b. Fair use may include sites operated solely in tribute to or criticism of a person or business, provided that if:
i. the Domain Name (not including the first and second level suffixes) is identical to the name in which the Complainant asserts Rights, without any addition; and
ii. the Respondent is using or intends to use the Domain Name for the purposes of a tribute or criticism site without the Complainant's authorisation.
then the burden will shift to the Respondent to show that the Domain Name is not an Abusive Registration".
On the material before me, none of the non-exhaustive list of factors which may be evidence that a domain name is not an Abusive Registration are established:-
Some of the factors referred to in paragraph 3.2a of the Policy are plainly not made out, in that there is no material before me which would establish the factors in (iii) or (iv). Nor do I consider that this is a case falling within paragraph 3.2(a)(i)A of the Policy. The Respondent has not made any request to the Complainant for payment, and, as has been seen, when the Complainant made an offer to compensate the Respondent in return for the transfer of the Domain Names the Respondent did not respond with a counter-offer naming a higher figure than that contained in the Complainant's offer. The remaining items in the non-exhaustive list of factors in paragraph 3.2 of the Policy require more detailed consideration, and accordingly each one will be addressed below.
Blocking RegistrationA "blocking registration" was defined in Peoplesoft UK Limited v Kane (DRS 120) in the following terms:
"A blocking registration is not clearly defined in the policy. A blocking registration is a registration that is unwarranted at the time of registration. It is a domain registration that is:
I do not altogether agree with the way in which this definition is worded, because it could be taken to be implying that there is a burden on the Respondent to demonstrate either a prima-facie right in the name or a valid reason for making the registration, whereas it is clear that the burden of proving that a registration is abusive rests fairly and squarely on a complainant - see paragraph 12 above. In my judgment, if a complainant relies upon one of the "non-exhaustive list of factors" it accepts the burden of establishing it. Thus, even if one accepted the underlying thrust of the definition referred to in the last paragraph, sub-paragraph (b) would need to be rewritten to read "carried out in circumstances in which it is shown, on the balance of probabilities, that the Respondent has no right in the name and no valid reason to make the registration."
It seems to me that there are two critical features of a "blocking registration". The first is that it must be against a name or mark in which the Complainant has rights. The second is one of motivation. Where a registration is alleged to be a "blocking registration" a complainant, if it is to succeed, must prove on the balance of probabilities that a respondent's principal objective in registering or retaining the disputed domain name was to prevent the complainant from doing so. The absence of any use of the site by the respondent for a legitimate business or other purpose of its own may assist in establishing that motivation, but the absence of any such use does not necessarily rule out a legitimate interest. The definition of "Abusive Registration" in paragraph 1 of the Policy (see paragraph 18 above) indicates that the date of registration may not be the only date at which a respondent's motivation may needs to be examined.
I am not satisfied that these are "blocking registrations". Firstly, the Complainant has not established that it has rights in the Domain Names. Secondly, the Complainant has not established that the Respondent's principal objective in registering or disputing those names was or is to prevent the Complainant from so doing.
As to the first point, it is to be observed that paragraph a(i)B of paragraph 3.2 of the Policy requires the Complainant to have Rights in the name or mark in question. Whilst the Complainant undoubtedly has rights in the name Club 18-30 or Club 1830 I am not satisfied that it has any Rights in the name CLUB 18-30 UNCOVERED.
I turn now to the question of motivation. As stated above in paragraph 5(13), the Complainant alleges that the Respondent would have appreciated that the Domain Names were likely to be desirable for use by the Complainant. In its Response to my request for further information the Complainant asserted: "the Respondent ... registered the Domain Names to capitalise both on the success of the "Uncovered" concept and on the Complainant's legitimate rights in its mark "Club18-30". It would have been aware that the Complainant might well, in the light of the success of "uncovered" style documentaries, be intending to use this concept itself in relation to its activities under the Club18-30 mark and decided to capitalise on this and get in first."
The uncovered "concept" is described in paragraph 5(11) above. The Complainant in response to my request for further information stated:-
"... the word "Uncovered" has been repeatedly applied to a style of documentary focusing on the activities of young people abroad in such places as Greece, Spain and Ibiza. These documentaries have attracted large viewing figures and their core audience is exactly the Complainant's core audience: young, fun-loving 18 to 30 year olds who enjoy overseas holidays in the Mediterranean devoted to "sea, sun and sex". ... Therefore, any site offering "club1830uncovered" would, it is submitted, be expected by any visitor to such a site, to be offering images and text about the Complainant's Club 18-30 activities in an 'expose' or documentary style."The Complainant relies on the Respondent's own web-site as evidence that the Respondent is fully aware of the "uncovered" concept, and alleges that the Respondent would have appreciated that the Domain Names were likely to become desirable for use by the Complainant because:
I am not satisfied that the Respondent would have appreciated that the Domain Names were likely to be or become desirable for use by the Complainant. According to the Complainant, the "uncovered" term has come to be associated with "exposes". Media exposes of titillating subjects are usually accompanied by at least a veneer of commentary and criticism. I do not think it is established that the Respondent would have been aware that the Complainant would want to establish a web-site of that nature about its activities. Indeed, it would appear that the Complainant does not have any present intention to do so. The Response to my request for further information includes the following passages:-
"The Complainant has no plans to use the Domain Names at the present time, but would, if they were transferred, hold them to prevent any further abusive registrations of the Domain Names and point them to its web site at www.club1830.co.uk and/or to operate a web site in accordance with paragraph 3 ..."i
[paragraph 3 refers to a site "club1830uncovered" offering images and text about the Complainant's Club 18-30 activities in an expose or documentary style].
"The Complainant "desires to use" the Domain Names in the sense not that it has active plans for the Domain Names but rather because in light of the success of the "Uncovered" documentaries, it wishes to have the option to marry this style of documentary (which is perfectly represented by the "Uncovered" concept) with its own trade mark Club18-30."
Notwithstanding the Respondent's e-mail dated the 21st May 2001, it is not clear to me what the Respondent's objectives were or are in relation to its existing web-site or in registering the Domain Names. In particular it is not clear whether the existing web-site has a commercial purpose or some other purpose, or commercial and other purposes combined. It may well be that the use of the words club 18-30 was and is intended to focus upon the Complainant's activities rather than the clubbing activities of persons in that age group but the Respondent could have a legitimate purpose in so doing, just as, for example, a journalist might have a legitimate purpose in writing about those activities. In any event, I am not satisfied that the Respondent has been motivated by a desire to prevent the Complainant from registering the Domain Name and has no alternative legitimate purpose of its own.
Intent to Unfairly DisruptIn Decherts' letter dated the 27th April 2002 (see paragraph 7 above) the Complainant alleged that the Domain Names were registered by the Respondent with a view to disrupting the Complainant's business. As has been seen (see paragraph 8 above), the Respondent roundly denied this. Although the Complaint does not in terms make the same allegation, it does include repeated statements to the effect that the registrations are detrimental to the Complainant's Rights.
If the Complainant does still allege that the Respondent registered the names "primarily for the purpose of unfairly disrupting the business of the Complainant", then I have no doubt that that allegation is not made out. The Complainant has no existing business based on the "uncovered concept". The Complainant itself does not regard "uncovered" type exposes or documentaries of its existing business as being harmful to that business, and accordingly there is no reason to suppose that the Respondent would have held a contrary view. Furthermore, following Decherts' letter of the 27th April 2001, the Respondent indicated that the Domain Names were dormant and would remain so "until this matter is appropriately dealt with". There is no evidence before me to suggest that the Domain Names have not remained dormant. Had the Respondent been intent on disrupting the business of the Complainant it would have been likely to have activated the sites, and the fact that apparently it has not done so is suggestive of the absence of any such intent.
Confusing UseThe Decherts letter dated the 27th April 2001 referred to the Domain Names as being "conceptually, visually and orally confusingly similar" to the Club 18-30 trade marks and the Complainant's registered domain name, and alleged that the Domain Names must have been registered with a view "deliberately to attract internet users for commercial gain to a web site operated ... at the Domain Names by creating a likelihood of confusion with the names and marks in which our client has legitimate international rights." This, the Respondent denied, stating (see paragraph 8 above) that the names were not purchased "to confuse visitors to our site that we are Club 18-30 Holidays".
The allegation of "confusing similarity" is repeated in the Complaint before me [see paragraphs 5(5), 5(10) and 5(12) above]. In particular the Complainant refers to an intent "to create a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or web sites".
However, paragraph 3.2(a)(i)C(ii) of the Policy only applies where a respondent "is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;". The Complainant has presented no evidence that the Domain Names have actually been used and not remained dormant or that any person or business has been confused into believing that the Domain Names were registered to, operated or authorised by, or otherwise connected with the Complainant. It follows that this requirement of the Policy has not been established.
The list of factors which may be evidence of Abusive Registration is, of course, non-exhaustive, and I consider that the registration of a Domain Name which is intended to confuse people or businesses into believing that that name was registered to or operated or authorised by, or otherwise connected with a complainant, may, in circumstances where the similarities are such as to create a risk of confusion, be an Abusive Registration even though no actual confusion is proved - see my Decision in Came Automation Limited and Cameo Electric Gates Limited DRS 414. However, I consider that the risk of confusion must be such as to amount to a likelihood of confusion. I am not satisfied that the Respondent had any intention to confuse, nor do I consider that there is any substantial risk or likelihood of confusion. I agree with the Complainant that the omission of the hyphen from one of the Domain Names is immaterial, but the use of the word "uncovered" is a feature which distinguishes the Domain Names from the Club 18-30 name which "belongs" to the Complainant. The Complainant does not have any existing business utilising the "uncovered" name or "concept". People or businesses would not expect the Complainant to be operating "exposes" of itself. The use of the word "uncovered", in the context described in the Complaint is immediately suggestive of authorship by someone other than those whose activities are being uncovered,and negates any impression of any link,business affiliation,or special relationship between the Complainant and the operator of the website.
Other GroundsSo far, except in paragraph 37, I have confined my analysis to the "non-exhaustive factors" listed in paragraphs 3.2 and 4 of the Policy. But, as already stated, these lists are not exhaustive. A registration may be abusive notwithstanding the fact that the factors listed as evidence of an Abusive Registration are absent if, on any other grounds, the criteria set out in paragraph 1 of the Policy (see paragraph 18 above) are satisfied. The question of whether or not any such other grounds are established in the present case is considered in the paragraphs following this one.
The Complainant's products are goods and leisure services. It does not claim to be a producer of documentaries or exposes. The Respondent has denied that it has any intention of emulating the Complainant's web site or selling holidays. There is no evidence that the Respondent has produced goods or services of the type provided by the Complainant. Therefore it seems to me that the complaint referred to in paragraph 39(1) above is unsubstantiated as a matter of fact.
As has been seen, in correspondence the Respondent has stated that it did intend to use the new web sites which it had obtained for purposes similar to those for which it used its existing web site. It could be argued, as the Respondent did in correspondence, that "club 18-30" referred to clubbing activities involving a specific age group rather than activities organised by the Complainant, and that it was capable of being so understood. However, if one assumes the contrary, namely that "club 18-30" would be understood by most Internet users as referring to the goods or services provided by the Complainant, it is necessary to consider whether a web-site acquired to uncover "the nightlife antics" of 18 to 30 year olds would be an Abusive Registration if it in fact portrayed:
(a) only events organised by the Complainant; or
(b) events aimed at the 18-30 year old market irrespective of whom the organisers were.
It does not seem to me that the Registrations would be abusive even in the case of hypothesis (a). A person or business which organizes events (including holidays) in which members of the public are invited to participate does not have the exclusive right to profit from the happening of that event. If a person attends the event and writes an article about it which is sold to a newspaper that person cannot sensibly be described as having taken "unfair advantage" of the organisers of the event. The same reasoning would apply to photographs or films. If the organiser of the event wants to reserve the right to exploit the event by such means it must take steps to do so e.g.entering into appropriate contractually binding terms upon all those permitted to participate in or attend the event, and excluding any persons not bound by those terms. Nor do I consider that a website devoted entirely to events organized by the Complainant would necessarily be "unfairly detrimental" to the Complainant. It is apparent that the Complainant regards the "uncovered" programme which it refers in the Complaint as having been beneficial to the Complainant. In the case of hypothesis (b) the position would be a fortiori, unless there were an intent to misrepresent as the Complainant`s events in fact organized by others, but there is no evidence of any such intent. Accordingly, I do not consider that in either hypothesis the Domain Names could be fairly characterised as "registered ... in a manner which, at the time when registration took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights" within the terms of paragraph 19(i) of the Policy.
Paragraph 1a(ii) of the Policy only applies to cases where a "Domain name has been used in a manner which took unfair advantage or was unfairly detrimental to "(a)" Complaint's Rights." In this case there appears to have been no actual use. However, even if the websites had been used in the manner contemplated in paragraph 41 above, I do not consider that the registrations would have amounted to Abusive Registrations, for the same reasons as that intended use would not have been - as to which, see paragraph 42 above.
DecisionFor the reasons given above, therefore, I find that the Domain Names, in the hands of the Respondent, are not Abusive Registrations. Accordingly I have no jurisdiction to order that the Domain Names should transferred to the Complainant, as it requests.
David Blunt QC
Date: 27 October 2002