Nominet UK Dispute Resolution Service

DRS 4487

The Saddleworth Hotel v. The White Hart Inn

Decision of Independent Expert

1.	Parties

Complainant:		The Saddleworth Hotel
Country:		GB

Respondent:		The White Hart Inn
Country:		GB

2.	Domain Name

The domain name in dispute is thesaddleworthhotel.co.uk (“the Domain Name”).

3.	Procedural Background

3.1	The Complaint was received in full (including annexes) by Nominet on 26 February 2007. Nominet validated the Complaint and sent a copy to the Respondent on 27 February 2007, informing the Respondent that it had until 21 March 2007 to lodge a Response.  

3.2	The Respondent’s Response was received on 21 March 2007 and was forwarded to the Complainant the same day. The Complainant did not submit a Reply. The dispute then proceeded to Informal Mediation, starting on 3 April 2007, but this was unsuccessful. 

3.3	On 18 April 2007 the Complainant paid Nominet the required fee to obtain a decision of an Expert pursuant to paragraph 7(a) of the Nominet UK Dispute Resolution Service (“DRS”) Policy ("the Policy"). On the same day, Nominet received from the Complainant a non-standard submission. This was not passed on to the Respondent, pending the Expert’s decision on whether to admit it into the procedure.

3.4	Nominet invited me, Anna Carboni, to provide a decision on this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality, Nominet appointed me as Expert on 25 April 2007. 

4.	Outstanding Formal/Procedural Issues 

4.1	In accordance with paragraph 13(b) of the DRS Procedure, Nominet has passed to me the Complainant’s explanation for the non-standard submission sent in after completion of the usual exchange of submissions. This states the following:

“We The Saddleworth Hotel feel that this further submission is relevant as it shows knowledgeable intent by the respondent to use the disputed domain name www.thesaddleworthhotel.co.uk to pass of (sic.) as The Saddleworth Hotel and to use the name to divert business to themselves.”

4.2	If there is substance to the non-standard submission, it is reasonably likely that I would have to permit the Respondent to make a further submission in response, thus delaying the process, which I am reluctant to do unless the submission is likely to make a difference to the outcome. Having read the formal Complaint and Response, I have decided that an additional submission to support the Complainant’s position would not change the decision that I am able to reach without it and therefore I proceed without having seen it.  

5.	The Facts

5.1	Both the Complainant and the Respondent are hotels situated in villages within the area in England known as Saddleworth, – the Complainant in Delph and the Respondent in Lydgate. The Complainant has traded under the name “The Saddleworth Hotel” (sometimes shortened to The Saddleworth) since September 1988, through a company called The Saddleworth Hotel Limited. The Respondent trades as The White Hart Inn (or The White Hart).  

5.2	The Complainant uses the name “The Saddleworth Hotel” to market itself in a number of ways, including on signage at the premises itself, in promotional material such as a hotel brochure and a website which is found at www.saddleworthhotel.co.uk, and in advertising in local magazines.

5.3	The Domain Name was registered by the Respondent on 18 March 2006. The Domain Name currently resolves to a website at the web address www.saddleworth.org.uk, which contains a variety of information about Saddleworth. But, in the run up to the Complaint, it resolved to the Respondent’s website through which The White Hart is promoted, at www.thewhitehart.co.uk.

5.4	Before the Complaint, a representative of the Complainant had contacted a representative of the Respondent by telephone to ask the Respondent to stop using the title “The White Hart Inn – SADDLEWORTH HOTEL” in its Google listing. Without any admission as to the justification for the complaint, the Respondent changed the listing to say “The White Hart Inn – a HOTEL IN SADDLEWORTH”. There was also a conversation about the Respondent’s registration of the Domain Name. The exact content of the conversation is not agreed, but it is clear that the Complainant expressed dissatisfaction about this.

6.	The Parties’ Contentions

Complainant

6.1	The Complainant states that it has rights in the Domain Name because:

(a)	it has been registered at Companies House under the name The Saddleworth Hotel Limited since 20 September 1988;

(b)	it has traded under the name “The Saddleworth Hotel” since 20 September 1988;

(c)	it has advertised using the name “The Saddleworth Hotel” since 20 September 1988 and has spent about £250,000 on such advertising; 

(d)	it provides goods and services under the name “The Saddleworth Hotel”.

6.2	The Complainant has provided copies of documents to back up its assertions, including a copy of its Certificate of Incorporation from the Companies Registration Office, a hotel brochure, an extract from Yellow Pages, sample advertising in a free glossy magazine called Around Saddleworth, and a letter dated 21 February 2007 from that magazine stating that The Saddleworth Hotel has advertised in the magazine regularly for the last 15 years.

6.3	All of these materials show use of the name “The Saddleworth Hotel”, as claimed by the Complainant. Some of them also promote the Complainant’s website at www.saddleworthhotel.co.uk, which uses the names “The Saddleworth Hotel” and “The Saddleworth” interchangeably in its content.

6.4	The Complainant makes the following factual complaints against the Respondent:

“the white hart inn directors have been contacted on three occasions on the first occasion they were asked to cease passing off as the saddleworth hotel as their google title name was shown as " The White Hart Inn - SADDLEWORTH HOTEL" this took approximately three weeks to be changed to " The White Hart Inn - a HOTEL in SADDLEWORTH " and were also made aware that we knew that they had bought www.thesaddleworthhotel.co.uk and were lead to believe that they would not be renewing ownership of this domain. subsequently they have started to use the domain name to lead directly to the white hart inn web pages, this has been done in a sneeky manner. If you type www.thesaddleworthhotel.co.uk into the google address bar it says that the name is not in use , however if you type the domain name into the main address bar at the top of the screen you are directed to the white hart web pages. both telephone conversations to alter this have led nowhere with the white hart refusing to release the domain name www.thesaddleworthhotel.co.uk to ourselves.”  (sic.)

6.5	The Complainant states that the Domain Name in the hands of the Respondent is abusive because it was registered to unfairly disrupt the Complainant’s business by leading people to believe that The White Hart is The Saddleworth Hotel. The Complainant asserts that on one occasion the Respondent’s receptionist checked some guests for The Saddleworth Hotel into a room at The White Hart after they had been directed there by the internet. The guests were meant to be meeting a wedding party and subsequently had to check out and drive to the Complainant and check in again there. The Complainant says that this story can be verified by the groom of the wedding, a Mr David Wyatt, and a copy of his form booking the event is provided.

6.6	The Complainant also claims that a number of wedding enquires have shown that potential guests have been led to believe that The White Hart was The Saddleworth Hotel and almost to book there until they were advised by a friend that they were not booking with The Saddleworth Hotel. A Mrs Judith Hulme is mentioned, and her hotel record is produced, but it is not clear if she was one of the confused guests or the person who put them right.

6.7	The Complainant says that “how much business has been poached in this manner is an unknown quantum but believed to be vast”.

Respondent

6.8	The Respondent denies that the Domain Name is an abusive registration and states that it was never intended to be an abusive registration nor has it been used as an abusive registration. It also denies passing off The White Hart as The Saddleworth Hotel (as in the Complainant’s hotel in Delph), stating that to do so would be damaging to the Respondent’s business since the two hotels have very different reputations. However, the Respondent does concede that it promotes The White Hart as “a” Saddleworth Hotel or “The” (as in the best) Saddleworth Hotel.

6.9	The Respondent’s explanation for registering and using the Domain Name can be summarised as follows: 

(a)	The Respondent’s overall aim was to ensure that The White Hart’s website was likely to be found easily by internet users looking for hotels in the Saddleworth area, which is a popular tourist destination with four hotels and over 26 bed and breakfast establishments. 

(b)	If you conduct a Google search for UK listings in respect of ‘Saddleworth hotels’, 46,200 websites are listed, and for ‘Saddleworth hotel’ (without the ‘s’), 37,700 websites are listed. Early in 2006, neither the Respondent’s nor the Complainant’s hotel websites turned up when such a search was made. The Respondent felt that it was therefore missing out on potential bookings by internet users.

(c)	People using the internet to find an establishment in an area are likely to use search phrases containing the product they are looking for (i.e. ‘hotel’ in this instance) and the relevant area (i.e. ‘Saddleworth’ in this instance). It is an unfortunate coincidence, for which the Respondent is not responsible, that the Complainant’s name is the same as the combined search phrase that people are likely to use when searching on the internet for a local hotel.

(d)	One way of ensuring that a website gets a high rating in a search engine is by increasing the number of links to the website, including by using a domain name to link directly to the website. The Respondent has put this into practice by registering the domain names a-restaurant-in-manchester.co.uk, the-conference-venue.co.uk, wedding-venue-in-lancashire.co.uk and wedding-venue-in-west-yorkshire.co.uk, each of which are used in web addresses which link directly to the Respondent’s website for The White Hart.

(e)	On the same basis, the Respondent registered the Domain Name in order to create a link in search engine searches using “Saddleworth” and “hotel” to The White Hart Inn website.

6.10	In relation to the Complainant’s approach to the Respondent to complain about the Google title, “The White Hart Inn – Saddleworth Hotel”, the director of The White Hart who deals with its website was away on holiday at the time, but he called a representative of the Complainant on his return and agreed to change the wording to “A Hotel in Saddleworth”, without any admission that the previous wording amounted to passing off.

6.11	In response to the Complainant’s telephone query as to the Respondent’s plans in relation to the Domain Name, the Respondent had responded at the time that it had no intention to use it to create a website, and it still has no such intention. The Respondent was not asked to release the Domain Name and therefore did not refuse to do so. (That fact has, of course, been superseded by the Complaint, which specifically requests the transfer of the Domain Name from the Respondent to the Complainant.)

6.12	The Respondent says that it has never used the Domain Name “in a sneeky (sic.) manner”, nor has it been used to poach business from the Complainant. It has merely been used “to develop a link between the White Hart Inn and the fact that it is a Saddleworth Hotel”. There have been less than 20 instances when the Domain Name has been typed in and linked to the Respondent’s website, and no doubt (the Respondent asserts) several of those have been by the owners of The Saddleworth Hotel.
 
6.13	The Respondent asserts generally that the registration of the Domain Name has never disrupted the Complainant’s business: it is clear from the Respondent’s website that it is called the White Hart Inn. The specific claim that someone was checked into the Respondent’s establishment when they intended to go to that of the Complainant is “highly unlikely”. On the day concerned, all of the Respondent’s rooms were fully booked and guaranteed by the bride of the day.

6.14	Finally, the Respondent asserts that anyone in Saddleworth knows the difference between the parties’ hotels, while anyone who does not know either establishment and who looks on the internet may find either establishment depending on what search phrases they use. “The one that gets the booking has probably marketed their establishment better than the other.”

7.	Discussion and Findings:

General

7.1	Paragraph 2(a) of the Policy provides that, to be successful, the Complainant must prove on the balance of probabilities that: 

i.	it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii.	the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant’s Rights

7.2	Under paragraph 1 of the Policy:

 “Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business.”

7.3	Previous cases have established that this broad definition extends to unregistered rights in names and marks, such as rights in passing off in the United Kingdom, as well as to registered trade mark rights.

7.4	The Complainant has not mentioned any registered trade mark rights in respect of any relevant name, but has given details of use of its trading name, “The Saddleworth Hotel”, in connection with its activities, as set out in section 6 above. 

7.5	The Respondent argues that the name “Saddleworth Hotel” cannot be monopolised by the Complainant since it consists of no more than the name of the local area, “Saddleworth”, combined with the purely descriptive term, “hotel”. Although the Respondent does not expressly challenge the Complainant’s claim to have Rights in the full name “The Saddleworth Hotel”, I need to consider whether this can be said to be “wholly descriptive” of the Complainant’s business and therefore to fall into the exception in the definition of “Rights”.

7.6	The use of the definite article, “The”, in the hotel name gives an indication to the public that “The Saddleworth Hotel” is a particular hotel in the Saddleworth area, rather than just any old hotel. While the Respondent says that the use of “The” can be used descriptively to indicate “the best” hotel in the area, it is unlikely that members of the public would understand this intention unless the word “The” were emphasised in some way, for example, by capitalising it or highlighting it in bold. Further, even if “The Saddleworth Hotel” were understood by the uninitiated to refer either to any old hotel in the Saddleworth area or to an advertising puff by a hotel claiming to be “the best” hotel in the area, this case involves a hotel that has traded and been marketed and advertised as “The Saddleworth Hotel” for nearly twenty years. As a result of that activity, the hotel name will inevitably have acquired a reputation and goodwill such that the local public and many people who have visited the area will be aware that “The Saddleworth Hotel” is not simply a descriptive term, but is a name referring specifically to the Complainant’s hotel.

7.7	I therefore conclude that “The Saddleworth Hotel” is not wholly descriptive of the Complainant’s business and that the Complainant will in appropriate circumstances be able to rely on the English tort of passing off to prevent a third party from using this name to refer to a hotel other than that of the Complainant, subject to the facts of the particular case. Accordingly, I find that the Complainant has Rights in the name “The Saddleworth Hotel” under paragraph 1 of the Policy. 

7.8	In comparing the name “The Saddleworth Hotel” with the Domain Name, I ignore the suffix .co.uk and the lack of a space between each of the three words, since the average internet user would do the same. For the purposes of paragraph 2(a)(i) of the Policy, I therefore regard the name “The Saddleworth Hotel” to be identical to the Domain Name.  

Abusive Registration

7.9	Paragraph 1 of the Policy defines an “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.”

7.10	I must take into account all relevant facts and circumstances which point to or away from the Domain Name being an Abusive Registration.

7.11	Paragraph 3 of the Policy sets out a non-exhaustive list of factors which may be evidence that a Domain Name is an Abusive Registration. Those which are brought into play by the Complainant are as follows:

 	“3(a)(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

	(A) …(B)…; or

	(C) 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;...”

7.12	Even if all of the facts asserted by the Complainant were found to be true, and even if some disruption has been caused to the Complainant’s business as a result of the Respondent’s registration and use of the Domain Name, the evidence is insufficient to persuade me that the Respondent’s primary purpose in registering (or using) the Domain Name was to disrupt the Complainant’s business. On the contrary, the Respondent has given a credible explanation that its primary purpose was to improve the chances that internet users looking for a hotel in the Saddleworth area would find The White Hart near the top of search engine listings.

7.13	However, in choosing a domain name that consists of the precise name of the Complainant’s hotel, nothing more and nothing less (ignoring the.co.uk suffix), and in linking that domain name to the Respondent’s website for the White Hart Inn, the Respondent was almost inevitably going to receive some internet traffic from users who intended to arrive at the Complainant’s website. Such users might type “Saddleworth Hotel” or “The Saddleworth Hotel” into a search engine, or they might alternatively type “www.thesaddleworthhotel.co.uk” into the address field. The Respondent’s own evidence is that up to 20 people have arrived on its website having typed in the web address incorporating the Domain Name. The evidence does not directly show whether these people were aiming for either the Complainant’s or the Respondent’s website, or simply were looking for a listing of hotels in Saddleworth, but the inclusion of the word “the” in the search term does indicate an intention to reach the Complainant’s website. 

7.14	Even without evidence of actual confusion, I would conclude that it is reasonably likely that a significant number of internet users would connect the Domain Name and/or the web address www.thesaddleworthhotel.co.uk with the Complainant. It is also reasonably likely that some people searching on the internet for the Complainant hotel would find themselves on the Respondent’s website. I accept that the Respondent’s website is clearly branded “The White Hart” and that it would be fairly unlikely that someone would continue to make a booking still believing that they were going to a hotel called “The Saddleworth Hotel”. However, they might still go ahead with a booking which would not have been made had the Respondent not used “The Saddleworth Hotel” in the Domain Name and pointed this to its website. In this way, the Respondent would gain and the Complainant would lose potential business.

7.15	Further, there is some evidence of actual confusion caused by the Respondent’s linking of the Domain Name to its website, including one example of wedding guests turning up to The White Hart Inn when they were supposed to be at a wedding at The Saddleworth Hotel. Although the Respondent asserts that this is highly unlikely to have happened, the Complainant is precise about names and the date, and there is no suggestion that the Complainant’s representative is lying. Whether or not this was a genuine case, it is not hard to believe that the Respondent’s use of the Domain Name might lead to such an occurrence in the future.  

7.16	I conclude that Respondent’s use of the Domain Name is likely to cause confusion and inconvenience to people who wish to use the Complainant’s website, with resultant potential lost business and disruption to the Complainant, whether or not intentional on the part of the Respondent.

7.17	Paragraph 4 of the Policy sets out a number of factors which the Respondent may rely on to demonstrate that the Domain Name is not an Abusive Registration. These include in particular that: 

 	“4(a)(i) Before being aware of the Complainant’s cause for complaint (not necessarily the ‘complaint’ under the DRS), 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; or

(B) ...; or

	(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;...”

7.18	In relation to paragraph 4(a)(i), it is highly unlikely that the Respondent was unaware of the Complainant’s interest in the name “The Saddleworth Hotel” before it registered the Domain Name, and the Respondent concedes that the Complainant raised express concerns about the Respondent’s plans with regard to the Domain Name before it had started to use it to direct internet users to the White Hart Inn website. Therefore the timing is such that the Respondent is not assisted by this provision.

7.19	The possible excuse under paragraph 4(a)(ii) has effectively been dealt with already. In summary, although the Domain Name does have some degree of descriptiveness, it has been turned into a distinctive name as a result of the Complainant’s use of the name “The Saddleworth Hotel” over the course of nearly 20 years, and it therefore cannot be said to be fair to use the full name of the hotel (and nothing but that name) in a Domain Name that is used to direct internet users to a competitor’s website. On the logic that the Respondent has applied to its descriptive domain name registrations referred to in paragraph 6.9(d) above (such as “wedding-venue-in-lancashire.co.uk”), it might have been expected to register “hotel-in-saddleworth.co.uk” or “hotels-in-saddleworth.co.uk”. In such a case, paragraph 4(a)(ii) would undoubtedly have been an answer to any complaint. But instead the Respondent chose to register a name that was already associated with the Complainant. 

7.20	The fact that (as I discovered myself) the Domain Name no longer points to the Respondent’s website, but directs internet users to an information site about Saddleworth, does not change anything. While the Respondent controls the Domain Name, there would be nothing to stop it reverting to the previous use.

7.21	In all the circumstances set out above, I conclude that the Domain Name was registered and has been used in a manner which took unfair advantage of and was unfairly detrimental to the Complainant’s Rights and is therefore an Abusive Registration.

8.	Decision

I find that the Complainant has Rights in respect of a name, “The Saddleworth Hotel”, which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Domain Name thesaddleworthhotel.co.uk should be transferred to the Complainant.

Anna Carboni

9th May 2007