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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thomas Cook UK Limited v. Whitleybayuncovered
Case No. D2002-0416
1. The Parties
The Complainant in this proceeding is Thomas Cook UK Limited, a public company incorporated in England and Wales of The Thomas Cook Business Park, Coningsby Road, Peterborough, Cambridgeshire, United Kingdom.
The Respondent in this proceeding is a business called Whitleybayuncovered which is owned by Geoff Waterston of Whitley Bay, Tyne & Wear, United Kingdom.
2. The Domain Names and Registrar
This dispute concerns the domain names <club1830uncovered.com> and <club18-30uncovered.com> (the "Domain Names").
The registrar with whom the Domain Names are registered is Tucows, Inc.
The domain name <club1830uncovered.com> was initially registered on January 31, 2001. The Respondent renewed its registration on March 17, 2002.
The domain name <club18-30uncovered.com> was initially registered on January 31, 2001. The Respondent renewed its registration on March 20, 2002.
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were adopted by ICANN on October 24, 1999, was received by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") by facsimile on May 2, 2002, and in hardcopy on May 3, 2002. Payment in the required amount to the Center has been made by the Complainant.
On May 5, 2002, a request for registrar verification was sent to the Registrar requesting (among other things) confirmation that it had received a copy of the complaint from the Complainant, that the Domain Names were registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Names and advice as to the current status of the Domain Names. Following verification by the Registrar, on May 8, 2002, a notification of complaint and commencement of administrative proceeding was sent to the Respondent, setting May 28, 2002, as the due date for response.
On May 29, 2002, a response was received from the Respondent. From the circumstances, it appears that the response was transmitted to the Center on the due date.
On June 12, 2002, a notification of appointment of administrative panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of a single panelist, Clive Elliott.
On June 26, 2002, a decision was submitted to the Center.
4. Factual Background
The Complainant is the owner of the trade mark rights in the name CLUB18-30. Details of registrations in, inter alia, the United Kingdom, European Community, United States of America and Canada have been supplied.
The Complainant trades from a website at <club18-30.co.uk> using its CLUB18-30 trade mark.
The Respondent operates a business taking photographs of young adults in bars and clubs. It is their intention to host all of their "Uncovered sites" under the one name of "club1830uncovered".
The Respondent claims that its registration of the Domain Names is an accurate reflection of its intended use in uncovering the clubbing antics of the 18 to 30 year old young adult market. The Uncovered sites are devoted to the age group of 18 to 30 year olds who frequent bars and clubs. The phrase 18 to 30 or 18-30 defines the boundaries of young adulthood and is also the main target age group of most bars and clubs across the United Kingdom.
5. Parties’ Contentions
The Complainant alleges that the trade mark CLUB18-30 was first used in Spain and the United Kingdom in 1965 and that the turnover of goods and services provided under the trade mark internationally in 2001 was over Ј30 million. Since that time, the Complainant claims that Club 18-30 has established a significant and considerable reputation in the youth holiday market. Services provided under the trade mark CLUB18-30 are extensively advertised on television, at the cinema, on the radio and in national publications. The Complainant says that there are approximately 400 nightclub events promoting the trade mark held annually throughout the United Kingdom. The amount spent annually on advertising goods and services provided under the trade mark internationally in 2001 was over Ј1 million.
The Complainant claims that the Domain Names are confusingly similar to the name and trade marks which the Complainant owns. The Domain Names incorporate the Complainant’s trade mark together with the prefix "uncovered". One Domain Name removes the hyphen between "18" and "30" but it is submitted that this is of no effect as the hyphen operates only as a space and not as a character of the Complainant’s trade marks.
The Complainant’s solicitors wrote to the Respondent on April 27, 2001, requesting that the Respondent cease all use of the Domain Names. The Respondent replied by email on May 21, 2001, and said that their plans for sites at the Domain Names were to "uncover worldwide the nightlife antics of the 18 to 30 year old. . . whilst out clubbing".
In a further email dated August 23, 2001, the Respondent indicated that if it were to transfer the Domain Names to the Complainant, it would not do so for "reasonable transfer costs up to a maximum of two hundred pounds". The Respondent said that this would not "cover the time and expenses (they) have incurred during the development period of the setting up of these websites." The Respondent added that they feared that the Complainant would infringe upon "(their) own intellectual property. . .".
The Complainant states that the word "uncovered", in the context of television programme or newspaper or magazine article, is often used to denote an exposé or behind-the-scenes documentary. 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, at <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.
The Respondent claims the Domain Names were not registered in bad faith as submitted by the Complainant.
The Respondent claims that 18 to 30 is a descriptive name for the boundaries of young adulthood and is commonly used outside the boundaries of "package holidays". The Respondent believes the name "club1830uncovered" is completely descriptive of its intended use.
The Respondent states that it has operated a highly successful website named "whitleybayuncovered" for nearly 2 years now and currently receives in the region of 130,000 hits each month. It claims to have built up "good faith" (sic) in the "uncovered" name and to have a very loyal following. The Respondent says it actively targets the 18 to 30 age group via extensive use of promotional flyers within the bars and clubs of the North East of England and has had links with mainstream radio stations (both of whom target the 18 to 30 year old market).
The Respondent states that it never had any intention of capitalising on the 400 events that the Complainant claims to operate in the United Kingdom and that they have no constructive or actual knowledge that these events even took place, contrary to what the Complainant has implied.
The Respondent also claims that it does not intend to photograph people on Thomas Cook package holidays and has no intention of confusing visitors to any of its websites, nor are they in any way associated with Club 1830 package holidays. Neither does it intend to retail package holidays or direct customers to other websites regarding package holidays.
The Respondent admits that the Complainant offered them Ј200 for the Domain Names. The Respondent is concerned that the Complainant is going to replicate their concept and capitalise on the so called "good faith" the Respondent has built up with its readership over the past two years.
The Respondent states that at no time have any Internet users been confused or led to believe the Domain Names were associated with the Complainant.
The Respondent's main concern regarding this complaint is that the Complainant intends to emulate their format and concept by using the "Uncovered" name, in which the Respondent claims to have spent nearly two years building up a reputation and "good faith".
6. Discussion and Findings
Para. 4(a) of the Policy requires that the Complainant must prove each of the following:
- The Domain Names are identical or confusingly similar to the trade mark in which the Complainant has rights (para. 4(a)(i)); and
- The Respondent has no right or legitimate interest in respect of the Domain Names (para. 4(a)(ii)); and
- The Domain Names have been registered and are being used in bad faith (para. 4(a)(iii)).
Para. 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by para. 4(a)(iii) referred to above.
Para. 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in para. 4(a)(ii) referred to above.
Domain Names Identical or Similar
The first requirement is that the Complainant is able to show that the Domain Names are either identical or confusingly similar to a trade mark or service mark in which it has rights. It appears from the evidence that the Complainant has trade mark rights in the trade mark/name CLUB18-30. There is evidence that the trade mark is registered in a number of European countries and that it has been used as a trade mark/name for a number of years.
It is apparent that the descriptor "18-30" is used by various entities to identify and describe a certain age group. For example, a search of the World Wide Web indicates that this designation is used by the organisations "18-30.com" and "Brussels18-30.com". Both these entities are obviously using the term to describe their target market. Where the Complainant differs however is that its trade mark/name is "CLUB18-30" not "18-30" simpliciter.
The Respondent would, arguably, be entitled to use the descriptor "18-30" as others do. However, the Respondent has instead used the term "club18-30", in which the Complainant has established at least a prima facie right. The addition of the descriptive term "uncovered" (the description for a popular current genre of expose type programmes) does little to distinguish the Domain Names from the Complainant's trade mark/name.
Admittedly the Domain Names are not identical to the Complainant's trade mark/name. However, the addition of descriptive matter does not sufficiently distinguish the respective names. Accordingly, it is found that the Domain Names and the "CLUB18-30" trade mark/name are confusingly similar.
Accordingly, the first ground is made out.
Respondent has no Right or Legitimate Interest
For the reason identified above, it is found that the Respondent would arguably have a legitimate interest in using the descriptor "18-30". Others do so and the Complainant could hardly object to such use. However, that is not to say that the Respondent has a right or legitimate interest to use the trade mark/name "CLUB18-30". The Complainant has alleged that it has widespread use of and a reputation associated with this trade mark/name and the Respondent has not disputed this contention. Both the Complainant and Respondent are targeting their services at the "18-30" age group and even if the services are not identical the target market is.
On the evidence to hand, it does not appear that the Respondent has a legitimate interest or right to use, as a key part of its domain name, the Complainant's trade mark/name.
Accordingly, this ground is made out.
Domain Names Registered and Being Used in Bad Faith
The Respondent indicates in its response that it purchased the Domain Names in good faith and wishes to use them in good faith. The point however seems to be that at the date the Domain Names were registered the Complainant's "CLUB18-30" business was very well known in Europe, particularly in the target market identified by the Respondent. The Complainant relies not just on its trade mark registrations but also on its common law rights and these are certainly sufficient to suggest that at the material date, the Respondent was or should have been aware of the Complainant's interest in the trade mark/name "CLUB18-30".
The Respondent does not appear, on the evidence, to have sought to procure and then sell the Domain Names for a windfall profit. Further, the Respondent does not seem to have recently used the Domain Names in a manner which might be found to be confusingly similar. Nevertheless, at the date the Domain Names were either first registered or purchased, it is unarguable that the Respondent either knew or should have known of the Complainant's rights in the "CLUB18-30" concept and trade mark/name. The fact that the Domain Names have not been used recently does not suggest that the exercise was a good faith one.
Accordingly it is found that the Domain Names were registered and/or purchased in bad faith and are being used in bad faith, albeit by way of holding the Domain Names at present.
Accordingly, this ground is made out.
Therefore, and in consideration to the Complaint’s compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii), and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraph 15(a) of the Rules, it is found:
(1) that the Domain Names are confusingly similar to the Complainant’s "CLUB18-30" trade mark and name;
(2) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(3) that the Domain Names have been registered and are being used in bad faith by the Respondent.
Therefore, the Panel requires, pursuant to what is provided for under Paragraphs 3(c) and 4(i) of the Policy, that the Domain Names be transferred to the Complainant.
Clive L. Elliott
Dated: June 26, 2002