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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> itravel Individual Travel GmbH v R & M Development Ltd [2008] DRS 5676 (15 May 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5676.html Cite as: [2008] DRS 5676

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Nominet UK Dispute Resolution Service

DRS Number 05676

Decision of Independent Expert

1. Parties

Complainant: itravel Individual Travel GmbH

Country: DE

Respondent: R & M Development Limited

Country: GB

2. Domain Name

(the "Domain Name")

3. Procedural Background

The Complaint of the Complainant was entered in the Nominet system on 25 April 2008. Nominet validated the Complaint and transmitted a copy to the Respondent. A Response from the Respondent was entered in the Nominet system on 28 May 2008, and a Reply from the Complainant was entered on 3 June 2008. On 25 July 2008 the Complainant completed payment to Nominet of the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy (the "Policy").

The undersigned (the "Expert") has confirmed to Nominet that I know of no reason why I cannot properly accept the invitation to act as Expert in this case and has further confirmed that I know 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. The undersigned, Christopher Gibson, was appointed as Expert in this case on 25 July 2008.

The Expert observes that English does not appear to be the native language for either party in this dispute (the Complainant is from Germany and the Respondent appears to be originally from Poland, although now located in the United Kingdom). The Expert, therefore, has had to review the submissions of the parties carefully, in order to comprehend what they have meant to say. Perhaps both parties would have been better served by having their submissions reviewed beforehand by a native English speaker, if not a lawyer.

4. The Facts

The Complainant, itravel Individual Travel GmbH, is a German company and registered owner of the trade mark, ITRAVEL. Complainant holds trademark registrations for ITRAVEL in Germany (priority date of 10 November 2006), the United Kingdom and other countries in the European Union (dating from 5 March 2007), the United States, and Switzerland. The Complainant operates a website at <www.iTravel.de>, which provides travel related services.

The Respondent is R & M Development Limited, which according to its website at is a "professional Web Development Agency, provid[ing] a wide range of Database Driven Websites, Website Design Services, Ecommerce Solutions, Search Engine Optimisation (SEO) and IT solutions."

From the WHOIS records, the Domain Name was first registered on 4 December 1998, but Nominet has confirmed that the Respondent was not the original registrant of the Domain Name. Nominet's records indicate that Respondent obtained the Domain Name during the year 2007 (at the latest in November).

Both the Complainant and Nominet have submitted a copy of the website page at www.iTravel.co.uk, which until recently was blank except for the words:

"Server 2

UNDER MAINTENANCE"

When the Expert recently visited the webpage to which this URL resolves, the following page was posted, which must have been added by the Respondent at some time after the filing of the Complaint:


5. The Parties' Contentions

Complainant's Complaint

The Complainant contends that the Domain Name in dispute is identical to registered trade mark rights for its mark, ITRAVEL, and that the Domain Name in the hands of the Respondent is an Abusive Registration.

Complainant Rights:

The Complainant has said very little about its own business, but has submitted documentary evidence to demonstrate that it has Rights in the ITRAVEL mark (as noted above), which is identical to the Domain Name. The earliest of the Complainant's relevant trade mark registrations carries a priority date of November 2006.

Abusive Registration:

The Complainant states that there is no relationship between the parties and places primary emphasis in its Complaint on prior correspondence between the parties. The Complainant wrote to the Respondent via e-mail in April 2008, inquiring whether the Domain Name was available. This e-mail contained a reference to the Complainant's trade mark rights and advised that the Complainant would be willing to the Respondent its out-of-pocket costs (i.e., registration and maintenance) for the Domain Name. The Respondent answered with an email indicating that the Domain Name "is for sale and we are eager to sell it for £5000 + VAT." The Complainant replied that this price was "far above regular registration costs" and repeated the offer to pay Respondent's for its out-of-pocket costs. The Respondent replied with a second email, which again indicated that its initial price (£5000 + VAT) "is the price and the nearest offer will be taken into account." Finally, the Complainant responded that it was interested in finding a "quick fix" and thus offered "to pay £,1000 + VAT, although we do know that this should be much more than your registration costs." The Respondent did not respond to this last offer.

Based on this exchange, Complainant first contends that the Domain Name in the hands of the Respondent is abusive because the circumstances indicate Respondent has registered or otherwise acquired the Domain Name 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 (citing DRS ¶ 3(a)(i)(A)). Complainant argues that

"the Respondent sought to obtain a financial benefit which was more than the direct cost of acquiring and using the Domain Name. The only purpose of being the owner of the Domain Name "itravel.co.uk" for the Respondent is to sell it to somebody who needs this Domain Name. He doesn't really have an…interest in using it. The Respondent is only interested in making as much money as he can get regardless [of] the Trade Mark ownership of the Complainant. The Respondent [is] eager to sell the Domain Name to somebody who has a right or special interest in "itravel".

Second, the Complainant contends that the Domain Name in the hands of the Respondent is abusive because there are circumstances indicating that Respondent has registered or otherwise acquired it primarily as a blocking registration against a trade mark in which the Complainant has Rights. Here, Complainant asserts that "itravel" is a very popular name and refers to various registrations (including its own) of this mark with the UK Intellectual Property Office. Complainant argues that "the Respondent was just waiting for that moment [when] somebody with a special right in "itravel" needs the Domain Name," and although Respondent is now aware of the Complainant's rights in the ITRAVEL mark, Respondent retains the Domain Name to block the Complainant.

Third and finally, Complainant contends that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. Complainant indicates that Respondent has not used the Domain Name for the purposes of email or a website. While this in itself is not evidence of an abusive registration, the Complainant argues that these circumstances, in combination with the demand for £5000, should be considered sufficient.

"[T]he Respondent is only interested in selling the Domain Name for as much money as he can get; although he was confronted with the Trade Mark rights of the Complainant. This behaviour constitutes strong evidence that the Respondent's primary purpose was to sell the Domain Name at an unjustifiable premium to the Complainant."

Respondent's Response

The Respondent has set forth nine points in its Response to deny the Complainant's contentions. The Respondent has submitted no evidence in support of any of its points.

Respondent states that the Domain Name "itravel.co.uk has never been for sale and has not been registered for any purpose of selling." Respondent emphasizes in this regard that "[w]e have never been, are not and never will be interested in selling this domain."

Respondent urges that the Domain Name "was registered years before the Complainant's trademark was registered." Respondent contends that Complainant "purposely registered their trademark to start complain[t] procedures against all domain holders in order to gain or better yet deprive other domain holders property."

Respondent states that as the owner of on-line businesses, it does not treat a domain name as merely an isolated word with extension, but as a fully functioning business representing the investment of substantial resources (i.e., financial and marketing).

Respondent claims that it is well-known by the name of and advertises its website on major search engines including paid and pay-per-click advertisements.

Respondent contends that the website does not indicate any connections between the parties, yet the Complainant must have been in possession of information that this Domain Name was already registered and unavailable.

Respondent repeats that all actions taken by the Complainant have been deliberately leading to the filing of its Complaint so as to take unfair advantage of the DRS procedures.

Respondent asserts that the information in the Complaint about the Respondent is inadequate and not based on any publications. Respondent contends that website development is only a small part of the activities it performs.

Respondent repeats that it "is not, in any way, interested or involved in obtaining domain names and selling them to third parties." Instead, all domain names owned by Respondent registered only for its own purposes.

Finally, Respondent concludes that the Complaint is unfounded and Respondent is prepared to "defend our rights in [a] court of justice, [where] we would demand a full financial compensation for the time of our solicitors…."

Complainant's Reply

The Complainant has submitted a Reply that proceeds point-by-point to reply to the Respondent's assertions in its Response:

Although the Respondent claimed in its Response that the Domain Name has never been for sale, this is untrue as demonstrated by the evidence submitted with the Complaint.

In response to the argument that Complainant has commenced DRS procedures against "all domain holders in order to gain domain holders property," Complainant states that it only want its rights to be accepted in relation to this Domain Name and has no intention to sue all domain holders. Complainant adds that this is the first time it has had to rely on legal procedures. Complainant further contends that it is unimportant that the Domain Name was registered before the Complainant registered it trade mark, because Complainant started its business years before it had registered the trade mark, and there are other long-time holders of ITRAVEL mark registrations. As stated in the Complaint, there is no evidence that Respondent used the Domain Name other than to offer it for sale at a price of £5000. Complainant argues that the Respondent was planning this since the beginning.

Complainant agrees with Respondent's third assertion and adds that the importance of a domain name is the reason why the Complainant, as owner of the ITRAVEL mark and doing business under this name, is interested in the Domain Name.

Complainant denies that Respondent is well-known by the name . Complainant contends that this assertion by Respondent does not make any sense and is "remarkable," especially because only a short time before, the Respondent had confirmed by email that it was eager to sell the Domain Name for £5000.

As to Respondent's point that there is no connection or relationship between the two companies, Complainant states this is not relevant for the abusive registration.

As to Respondent's assertion that Complainant wants to take unfair advantage of the DRS procedure, Complainant states that, as the owner of the ITRAVEL mark, it wants to have rights in its trade mark accepted.

With respect to Respondent's charge that the information in the Complaint about the Respondent's company is false or inadequate, Complainant replies that it obtained this information from Respondent's website and provides further evidence to show the same.

Respondent's point No. 8 is just a repetition

Complainant has no comments on Respondent's point No. 9.

6. Discussion and Findings:

General

In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present:

i. the Complainant 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.

Complainant's Rights

The Complainant has submitted evidence to establish that it has Rights in the ITRAVEL name and trade mark. In fact, there is no dispute between the parties that the Complainant has Rights in respect of a name or mark (i.e. ITRAVEL), which is identical or similar to the Domain Name. The Domain Name contains the Complainant's mark in its entirety. The Domain Name is therefore identical to a mark in which the Complainant has Rights. The Complainant has established the first element of the test in paragraph 2(a) of the DRS Policy.

Accordingly, the Panel merely has to focus its attention on whether or not the Domain Name is an Abusive Registration in the hands of the Respondent.

Abusive Registration

As to whether the Domain Name registration is abusive in the hands of the Respondent, paragraph 1 of the DRS 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."

As indicated above, a domain name can be an Abusive Registration either because it was registered with abusive intent or because it has been used in an abusive manner. The Complainant has asserted that the Respondent's Domain Name is abusive on both of these grounds. With respect to two of its claims, Complainant asserts that the Domain Name was registered with abusive intent: (i) 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; and (ii) as a blocking registration against a name or mark in which the Complainant has Rights. Complainant has also submitted that the Domain Name has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

The Expert should take into account all relevant facts and circumstances in determining whether the Domain Name is an Abusive Registration. As noted above, the Complainant must prove this element on the balance of probabilities.

In this case, there is evidence that raises several concerns for the Expert. The Expert is troubled by evidence indicating that the Respondent has falsely stated the Domain Name "has never been for sale" and "[w]e have never been, are not and never will be interested in selling this domain." In contrast to these claims, the Complainant has provided documentary evidence of the exchange of emails between the parties in which the Respondent stated that the Domain Name "is for sale and we are eager to sell it for £5000 + VAT." Further, although the Complainant and Nominet submitted evidence to demonstrate that there was no website to which the Domain Name resolved at the time when the Complaint was filed, the Respondent asserts in its Response (without any evidentiary support whatsoever) that it is well-known by the name of and advertises its website on major search engines including paid and pay-per-click advertisements. Respondent provides no rational explanation for any of these contradictions. The Respondent claims that Complainant's description of Respondent's business in the Complainant is inadequate or unfair, yet Complainant merely acquired the description from the Respondent's own website at . There is now a website associated with the Domain Name, which purports to focus on "Business," "Accommodations" and "Buy & Sell," and which must have been posted by the Respondent at some time after the filing of the Complaint.

Under paragraph 12(b) of the DRS Procedure, the Expert "shall determine the admissibility, relevance, materiality and weight of the evidence." The Respondent's statements appear to be contradicted by the evidence that has been submitted by Complainant, while Respondent has submitted no evidence in support of its Response. The Expert's most appropriate recourse is to draw strong inferences against the assertions of fact made by the Respondent. In contrast to the Respondent's claim, the evidence shows that the Respondent willingly offered to sell the Domain Name in response to a query from the Complainant. The evidence also shows that the Domain Name was not in use at the relevant time, but that more recent postings by the Respondent may be considered an expedient manoeuvre. The Expert does not accept that Respondent was or is well-known by the name of . To the contrary, the Expert finds that the Respondent has shown no legitimate rights in the Domain Name.

The Expert must still ask, however, whether these findings direct that the Domain Name should be considered an Abusive Registration either because it was registered with abusive intent or because it has been used in an abusive manner. Looking first to the time of registration, while the credibility of the Respondent is not to be given great weight, the Complainant has provided little evidence about its own business and the related the goodwill and reputation in its ITRAVEL name and mark, and whether such aspects would possibly have been known to the Respondent. Simply because the Respondent might have hypothetically been aware that some party, somewhere, had registered "iTravel" as a trade mark is insufficient to show the Respondent's requisite knowledge and/or intent as to the Complainant. There is simply not enough evidence to show that, at the time of registration of the Domain Name, the Respondent targeted the Complainant, or had the intention of registering the Domain Name as a blocking registration against a name or mark in which the Complainant has Rights, or for the purposes of selling the Domain Name to the Complainant or to a competitor of the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs.

The Expert must thus turn to whether or not the Domain Name has been used in an abusive manner. The Complainant has already acknowledged that failure on the Respondent's part to use the Domain Name for the purposes of email or a website is not in itself evidence that a domain name is an Abusive Registration. However, does the Respondent's demand for £5000 change this analysis? Does the Respondent's posting of a website as an expedient manoeuvre after the filing of the Complaint, when coupled with the demand for £5000, the several false statements made by the Respondent in this case, and Respondent's complete lack of evidentiary support for its claims change the analysis? The Expert is of the view that this combination of factors leads to a conclusion, on the balance of the probabilities, that the Domain Name has been used in an abusive manner once Respondent had knowledge of the Complainant. While a registrant that acquires a domain name in advance of the coming into existence of the complainant's rights may be entitled, in principle, to hold onto the domain name and to use it, notwithstanding that confusion of the 'initial interest' variety may be inevitable, in this case the Expert does not accept that the posting of a new website associated with the Domain Name is a legitimate initiative by the Respondent. Similarly, while it is not of itself abusive for the registrant to demand a high price from the complainant for transfer of the domain name in recognition of its enhanced value, here the Respondent has actively taken steps to take unfair advantage of its position.

When considered in view of all the circumstances discussed above, the Expert finds that the Domain Name is an Abusive Registration.

7. Decision

The Expert finds that the Complainant has Rights in respect of a name or mark which is similar or identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the Domain Name be TRANSFERRED to the Complainant.

Christopher Gibson

15 May 2008