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Arbitration and Mediation Center
Harvey World Travel Limited v. GamCo
Case No. D2003-1023
1. The Parties
The Complainant is Harvey World Travel Limited, Kogarah, New South Wales, Australia, represented by Kenneth Chin of the same address.
The Respondent is GamCo, C/O Sean Bezuidenhout, Edenvale, Gauteng, South Africa.
2. The Domain Name and Registrar
The disputed domain name is <harveyworldtravel.com> ("the domain name"). The domain name is registered with eNom Inc. ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 23, 2003. The Registrar does not provide verification of the particulars of domain names registered with it, so on January 6, 2004, the Center itself checked the registered particulars of the domain name on the <easywhois.com> website, and confirmed that the domain name is registered with the Registrar and that the Respondent is the registrant. That search confirmed that the domain name was then on "registrar-lock", and also provided contact details for the administrative, technical, and billing contacts for the domain name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on January 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2004.
The Center appointed Warwick Smith as the sole panelist in this matter, on February 5, 2004. 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.
In the absence of any response from the Respondent, the Panel has considered whether the Center has discharged its responsibility to forward the Complaint to the Respondent (paragraph 2(a) of the Rules). The Panel is satisfied that it has. The Complaint was forwarded by DHL Courier to the correct Post Office Box, and (apparently successfully) faxed to the fax number for the Respondent provided in the easywhois printout. The Complaint was also emailed to the appropriate email addresses. Overall, the Panel is satisfied that the Center has discharged its responsibility "to employ reasonably available means calculated to achieve actual notice [of the Complaint] to Respondent" (Rule 2(a) of the Rules).
In the course of the Panel’s preliminary consideration of the Complaint, the
Panel came to the view that the Complaint did not contain adequate evidence
that the Complainant (as opposed to some other company or companies within
the group of companies of which the Complainant is a member) was the owner of
at least one of the trade or service marks on which the Complaint was based.
However, it appeared to the Panel that, if the Complainant were permitted to
submit further evidence, it was highly likely that the Complainant could
provide proof of ownership of one or more of those marks. Accordingly, the Panel
followed the procedure adopted by the learned panelists in WIPO
Case No. D2000-1490 (Creo Products Inc v Website in Development)
and WIPO Case No. D2001-0592 (Brown
Thomas and Company Ltd v Domain Reservations), and invited the Complainant
to provide a supplementary statement clarifying what it claimed were its "rights"
within the meaning of that word in Paragraph 4(a)(i) of the Policy.
That supplementary statement was to be filed with the Center (and copied to the Respondent) by February 23, 2004. The Respondent was given until March 1, 2004, to make any Response it might wish to make. The time for the Panel to forward its decision on the Complaint was extended under paragraph 15(b) of the Rules, to March 8, 2004.
The Complainant submitted its supplementary statement on February 18, 2004, and that supplementary statement has been considered by the Panel. The Respondent did not file any response.
4. Factual Background
As its name suggest, the Complainant is a provider of travel services. It is a public company listed on the Australian Stock Exchange, and was formerly known as Harvey World Travel Group Holdings Pty Limited. The (uncontested) complaint asserts that "Harvey World Travel" has developed strong brand recognition and considerable goodwill affiliated with its provision of travel services.
The Complainant’s Annual Report for the year ended June 30, 2003, describes the group’s principal activities during the financial year as being the franchising of retail travel agents in Australia, New Zealand, Southern Africa, and other countries around the world, the operation of retail travel agencies in Australia and New Zealand, and the operation of a travel insurance claims handling business.
The Complainant’s Trademarks
The Complainant is the registered proprietor of a number of trademarks or service marks incorporating the words "Harvey World Travel". In Australia, the Complainant is the proprietor (as from February 10, 2003) of a device mark incorporating those words prominently in two places with two globe devices, each with a large letter "H" superimposed over the globe. This mark was registered on November 2, 1998, in international classes 39 and 42. The class 39 registration was for "travel services being services offered by travel agents in this class being services in class 39", and the class 42 registration was for "services rendered in procuring lodgings, rooms and meals, by hotels, boarding houses, dude ranches, sanatoria, rest homes and convalescence homes being services in class 42".
This mark was originally registered to Harvey World Travel Franchise Holdings Pty Limited, but in July 1999, the registrations were transferred to Harvey World Travel Group Holdings Pty Limited. This latter company is the Complainant – a change of name to Harvey World Travel Limited was effected in September 1999.
The words "Harvey World Travel, beneath a large stylized letter "H", were registered as service marks in New Zealand in international classes 39 and 42, by the company now known as Harvey World Travel New Zealand Limited. Both New Zealand registrations were effected in January 1993. The class 39 registration is for "travel services", while the class 42 registration is for services rendered in procuring lodgings, rooms and meals by hotels, motels, boarding houses, dude ranches, rest homes and convalescent homes. Harvey World Travel New Zealand Limited is a wholly-owned subsidiary of the Complainant.
It appears from the Complaint that applications were made to register logo marks incorporating the words "Harvey World Travel" in South Africa, on November 6, 1998. These applications covered two separate device marks, both incorporating the words "Harvey World Travel" with a white stylized letter "H" superimposed over a dark globe. The applications were in international classes 39 and 42, generally for travel-related services. These applications were assigned to the Complainant in July 1999.
An application by the Complainant to register a "Harvey World Travel" logo device was filed in the United States Patent and Trade Mark Office, in March 2002.
The Complainant has also produced a copy of a European Community trademark registration certificate, showing that a "Harvey World Travel" logo mark, featuring the same stylized white letter "H", was registered on May 5, 1998, in the European Community.
The Complainant says that one of its wholly-owned subsidiaries, Harvey World Travel Franchises Pty Limited, operates as a franchisor of travel agencies operating under the Harvey World Travel banner, and that each franchisee is licensed by the Complainant to use and sub-license the HARVEY WORLD TRAVEL logo mark.
The Complainant’s Domain Names
The Complainant is the owner of the following domain names: <harveyworld.com>, <harveyworldtravel.com.au>, <harveyworld.com.au>, <harveyworld.co.za> and <harveyworld.co.nz>
The Respondent and the Domain Name
The domain name was registered on December 1, 1998.
The Complainant says that the Respondent engages in trade or commerce on the Internet, providing Internet solutions including virtual hosting and domain registration through a website at "www.gam.co.za". The Complainant produced a copy of a web page from the website at "www.gam.co.za", downloaded on December 1, 2003. The web page is headed "GamCo Dynamic Internet Solutions", and it offers web mail and domain searching services, domain registration services, website design, and various other services.
The Complainant says that, in or about August 2000, "the Respondent agreed to rent the domain name to Harvey World Travel Randburg". While it is not made clear in the Complaint, it appears that Harvey World Travel Randburg is or was one of the Complainant’s franchisees – the Complainant says that "the Franchisee" paid rental to the Respondent for the domain name, at a cost which exceeded the Respondent’s out-of-pocket costs directly related to the domain. It appears that this rental arrangement lasted for about a year – the Complainant says that on or about August 15, 2001, "the franchisee agreed to terminate the use of the "www.harveyworldtravel.com" domain name. The site was terminated on 30 August 2001".
Meanwhile, on December 23, 2000, the Respondent had sent an email to the Complainant’s representative, advising that the Respondent owned the domain name and wished to sell it. The email asked who would be the correct person to speak to. The Complainant has not produced any other correspondence from the Respondent at about this time, and nor has it produced a copy of any reply it may have sent to the Respondent. Nevertheless, in the body of the Complaint, the Complainant says that at or about this time the Respondent offered to sell the domain name to it, for a price which exceeded the Respondent’s out-of-pocket costs directly related to the domain name. Whatever that price may have been, it appears that the Complainant refused to pay it.
In or about late August 2001, the Respondent through Mr. Bezuidenhout approached one of the Complainant’s competitors, Flight Centre, expressing a wish to sell the domain name to Flight Centre. In his email, Mr. Bezuidenhout advised that he would be pointing the domain name to <flightcentre.com.au> during the course of the forthcoming weekend. Flight Centre passed this email on to the Complainant, with advice that it would be declining Mr. Bezuidenhout’s offer.
An email from the General Manager of Harvey World Travel Southern Africa (Pty) Limited (a Mr. Lutman) to Mr. Barry Mayo of the Complainant, dated September 13, 2001, records a discussion on September 12, 2001, between Mr. Lutman and Mr. Bezuidenhout. Mr. Bezuidenhout told Mr. Lutman in the course of that discussion that he had registered the domain name before Harvey World Travel entered South Africa. He also told Mr. Lutman that he wanted US$20,000 for the site, but Mr. Lutman told him that that was out of the question.
A September 13, 2001, email from Mr. Lutman refers to obtaining an affidavit from a Mr. Craig Cowgill, relating to the "tempory issue". The Panel is left to guess what the "temporary issue" might have been, and in particular whether Mr. Cowgill may have been the franchisee who at that time had apparently just agreed to terminate the use of the domain name. In any event, Mr. Lutman wrote to the Respondent on September 25, 2001, asserting that Harvey World Travel Southern Africa Pty Limited was the owner of a number of trademarks, including one incorporating the words "Harvey World Travel". The letter asserted that the Respondent had registered the domain name without the prior knowledge or consent of Mr. Lutman’s company, and it recorded Mr. Bezuidenhout’s offer to sell the domain name for US$20,000. The letter went on to offer the sum of 2000 South African rand for the transfer of the domain name, and it gave Mr. Bezuidenhout until September 28, 2001, to accept the offer, failing which Harvey World Travel Southern Africa Pty Limited would take whatever legal action it deemed fit.
The Complainant does not say whether it received any response to Mr. Lutman’s letter of September 25, 2001. The next step in the narrative as described by the Complainant, was a letter dated March 4, 2002, from the Complainant’s solicitors to Mr. Bezuidenhout. The letter demanded a transfer of ownership of the domain name to the Complainant, together with written confirmation that Mr. Bezuidenhout would not register or use the domain name or any domain name which included the words "Harvey World Travel", or any other name or words resembling "Harvey World Travel" that would be likely to deceive or cause confusion. In default of those demands being met, the Complainant’s solicitors advised that the Complainant would pursue its rights under the Policy.
The Panel is not told whether Mr. Bezuidenhout made any reply to the letter dated March 4, 2002, from the Complainant’s solicitors, and for reasons which are not explained by the Complainant, this proceeding was not commenced until December 23, 2003.
5. Parties’ Contentions
1. The domain name is identical or confusingly similar to the words "Harvey World Travel" or "Harvey World", which form important parts of the service marks owned by the Complainant.
2. The Respondent has no rights or legitimate interests in respect of the domain name:
(i) The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks, and has not licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks.
(ii) The Respondent is not making a legitimate, non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
(iii) At no stage has the Respondent used, nor, prior to the notification of the dispute, has it made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Any attempts by the Respondent to make such non-commercial or fair use of the domain name would seem to have only occurred after the Respondent was put on notice by the Complainant that it intended disputing rights to the domain name (referring to the letter from the Complainant’s solicitors dated March 4, 2002).
3. The domain name was registered and is being used in bad faith:
(i) The domain name was registered by the Respondent primarily for the purpose of selling, renting, or otherwise transferring the domain name to the Complainant or a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. The Complainant refers in this context to Mr. Lutman’s letter of September 25, 2001, rejecting Mr. Bezuidenhout’s offer of US$20,000 to sell the domain name, and countering with an offer to purchase of R2000.
(ii) When the Respondent agreed to rent the domain name to Harvey World Travel Randburg, the cost of the rental paid by the franchisee to the Respondent exceeded the Respondent’s out-of-pocket costs directly related to the domain name.
(iii) By directing web traffic from the domain name to Flight Centre, the Respondent attempted to attract financial gain by attempting to extort a higher price for the domain name from the Complainant.
(iv) Customers unaware of the correct Harvey World Travel website could easily be directed to the site at the domain name whilst searching for the correct site.
(v) The Respondent has attempted to create confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Flight Center’s website.
(vi) On December 23, 2000, the Respondent offered to sell the domain name to the Complainant for a price which exceeded the Respondent’s out-of-pocket costs directly related to the domain name. When the Complainant refused to pay the price requested by the Respondent, the Respondent demonstrated an intention to sell the domain name to Flight Centre.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 15(a) of the Rules requires the Panel to:
"… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable".
Paragraph 5(e) of the Rules provides that, if a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint. By Paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of the Rules.
A. Identical or Confusingly Similar
The Panel has no difficulty in finding this part of the Complaint proved. The Complainant is the registered proprietor of a device mark registered in Australia on November 2, 1998, which very prominently features the words "Harvey World Travel". Those words are identical with the domain name (apart from the generic "dot.com"), and of course the device featuring two globes and the large letter "H" could not have been incorporated in a domain name. The words "Harvey World Travel" appear twice in this registered mark, so there can be no doubt that they provide the dominant "impression" created by the mark. The Panel therefore concludes, without difficulty, that the domain name is confusingly similar to the Australian-registered service marks to which the Panel has just referred.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise permitted the Respondent to use its service marks, or to register or use any domain name which incorporates the predominant features of those marks. In itself, that factor would be regarded by many panelists as sufficient to move the evidentiary burden to the Respondent to show that it comes within one of the examples of a right or legitimate interest set out in paragraph 4(c) of the Policy (or that it otherwise enjoys some right or legitimate interest in the domain name). In this case, the Respondent has not submitted any response, and the Panel is entitled to draw such inferences from that failure to respond as the Panel considers appropriate.
But there is no need for the Panel to rely solely on the Respondent’s failure to respond for the Panel to conclude that the Respondent has no right or legitimate interest in respect of the domain name. The following matters all strongly support that conclusion.
The evidence produced by the Complainant suggests that the Respondent does not operate, and never has operated, any business under the name "Harvey World Travel". The respondent is not even in the travel industry: it appears to be a provider of Internet solutions and related services.
The Respondent has no registered trademark anywhere in the world incorporating the words "Harvey World Travel", or "Harvey World".
The Panel can think of no reason why the Respondent would have chosen the domain name if it did not intend to sell it to the Complainant or to a competitor of the Complainant (indeed, the Respondent appears to have attempted to do both of those things).
The only matter of concern to the Panel under this heading, is the fact that the Respondent was apparently able to rent, or lease, the domain name to one of the Complainant’s franchisees, for a period of approximately 1 year, between August 2000 and August 2001. The Panel notes that the Complainant’s franchisees are licensed to use (and sublicense) the use of the HARVEY WORLD TRAVEL logo mark, and that the arrangement entered into between the Respondent and the franchisee appears to have been made in August 2000. The correspondence produced by the Complainant suggests that the Respondent’s ownership of the domain name may not have been drawn to the Complainant’s attention until December 23, 2000, when Mr. Bezuidenhout sent an email to Mr. Chin advising: "I own the above name and wish to sell it. Who would be the correct person to speak to?"
So it appears that the transaction under which the domain name was rented to
one of the Complainant’s franchisees, was entered into without the knowledge
or consent of the Complainant. Quite apart from the wording of Mr. Bezuidenhout’s
email of December 23, 2000, if that were not the case, one would have
expected the Respondent to file a response setting out the true position. The
Respondent has not done so. Nor is there sufficient (in the absence of a response
from the Respondent) for the Panel to conclude that the franchisee, in agreeing
to pay rental to the Respondent, was expressly or impliedly licensing the Respondent
to use the domain name. On what little evidence there is on this point, the
likelihood is that the franchisee was faced with a fait accompli, and had to
deal with the actual registrant of the domain name if the franchisee wanted
to establish a website at the domain name. In those circumstances the Panel
would not be prepared to regard the renting of the domain name by the Respondent
as a "bona fide", or "legitimate", or "fair" use
of the domain name, as those expressions are used in Paragraph 4(c)(i) and (iii)
of the Policy. The use itself must be bona fide – it is not just the
(connected) offering of goods or services which has to be bona fide under
that paragraph – see for example, WIPO Case
D2001-1373: Cattlecare Limited v Wairua Holdings Pty Ltd. The use
in this case (if "use" is an apt word to describe the passive renting
of a domain name to a third party) could not have been bona fide, because,
for the reasons set out below, the Panel is of the view that the Respondent
was acting in bad faith.
The evidence is overwhelmingly in support of the Complainant, and the Panel concludes that the Respondent has no right or legitimate interest in the domain name.
C. Registered and Used in Bad Faith
The Panel also finds this part of the Complaint proved.
The Respondent had no right or legitimate interest in the domain name (for the reasons set out above) and there is unchallenged evidence that the Respondent offered to sell the domain name to the Complainant for US$20,000. In the absence of any response, the Panel infers that that sum is considerably in excess of any documented out-of-pocket costs which the Respondent might have incurred directly in relation to the domain name.
There being no evidence of any bona fide, fair, or legitimate use of the domain name by the Respondent, nor any reason offered for the selection of the words "Harvey World Travel" to form a domain name, the Panel infers that the domain name could only have been registered with the intention of selling it to the Complainant (or to a competitor of the Complainant) within the circumstances described in paragraph 4(b)(i) of the Policy.
The Panel notes that, in the course of a telephone discussion with Mr. Lutman on September 12, 2001, Mr. Bezuidenhout apparently claimed that he had registered the domain name before Harvey World Travel entered South Africa. However, the Panel notes that the application to register the Harvey World Travel logo mark in South Africa was made on November 6, 1998, a little over 3 weeks before the Respondent registered the domain name. Furthermore, it is hard to imagine why the Respondent would have chosen "Harvey World Travel" as a domain name, unless he was aware of the (international) travel company operating under that brand. In the absence of any Response, the Panel infers that the Respondent did know of the Complainant and its marks, but proceeded to register the domain name with the bad faith purpose of selling at a profit to the Complainant or a competitor of the Complainant.
The overall impression of bad faith is reinforced by the Respondent’s actions in pointing the domain name to a website operated by one of the Complainant’s major competitors, and the Respondent’s attempt to sell the domain name to that competitor.
The Panel is therefore satisfied that the domain name was registered and is being used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <harveyworldtravel.com> be transferred to the Complainant.
Date: March 8, 2004