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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Travel Counsellors plc and Travel Counsellors (Ireland) Ltd v. Portlaoise Travel Limited

Case No. DIE2006-0001

1. The Parties

The Complainants are Travel Counsellors plc of Bolton, Lancashire, UK and Travel Counsellors (Ireland) Limited of Dublin, Ireland.

The Registrant is Portlaoise Travel Limited, County Laoise, Ireland.

2. The Domain Name and Registrar

The disputed domain name <travelcounsellors.ie> is registered with IE Domain Registry Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2006. On March 24, 2006, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the domain name at issue. On March 30, 2006, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Registrant is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on April 3, 2006. The Center verified that the amended Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on April 6, 2006. In accordance with the Rules, paragraph 5.1, the due date for Response was April 26, 2006. The Registrant did not submit any response. Accordingly, the Center notified the Registrant’s default on April 28, 2006.

The Center appointed Adam Taylor as the sole panelist in this matter on May 5, 2006. 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.

4. Preliminary Issue

The Complainants have produced emails between the parties which were clearly written for the purpose of settlement and indeed one of the emails is marked “without prejudice”. This raises the issue as to whether the common law “without prejudice rule” (i.e. that documents are privileged and inadmissible in evidence if and insofar as they were written for the dominant purpose of attempting settlement of a dispute) should be applied here.

Paragraph 9.4 of the Rules states: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” Neither the Policy nor the Rules specifically address the issue of “without prejudice”.

The majority of UDRP decisions on the issue have come down against the application of privilege. For a comprehensive analysis of the cases and of the varying reasons given for admitting such material, see The Vanguard Group, Inc. v. Emilio Sa, WIPO Case No. D2001-1453 and McMullan Bros., Limited and others Limited v. Web Names Ltd, WIPO Case No. D2004-0078. While not all of the factors mentioned in those cases are relevant here (e.g. the fact that the without prejudice rule may be completely foreign to the jurisdiction of some panelists), most are applicable and the Panel finds them compelling. These include the fact that an offer to sell the name in such correspondence may go to the heart of the issue which a panel has to decide and exclusion of the correspondence would severely undermine the relevant policy; parties are not precluded from litigating the same disputes where the rule would apply; and panels are fully capable of assessing whether an offer of sale reflects a good faith effort to compromise or a bad faith effort to extort.

Furthermore the Registrant has not appeared in this case to object to the admissibility of the correspondence.

For these reasons, the Panel declines to apply the without prejudice rule and admits the correspondence.

5. Factual Background

The First Complainant is an English company which started trading in about 1994 and describes itself as one of the UK’s largest independent travel agencies with turnover of Ј128 million in its financial year to October 2004.

The First Complainant owns a Community Trade Mark (“CTM”) No 3328762 dated August 28, 2003, comprising the stylized words “travel counsellors” in a box-type device in classes 16, 18, 35, 36, 39, 41.

The Second Complainant was incorporated in the Republic of Ireland on January 10, 2005, and is part of the First Complainant’s group.

On January 14, 2005, an article appeared in the Travel Trade Gazette (with circulation in Ireland) indicating that the First Complainant intended to expand its operations into Northern Ireland and, possibly, the Republic of Ireland.

The Registrant registered the disputed domain name on about January 15, 2005. The domain name has never been used as an active website.

On November 21, 2005, a representative of the First Complainant emailed the Registrant noting that the disputed domain was registered around the time of its promotional campaign in the Republic of Ireland and describing the disputed domain name as a “hostile purchase” and “passing off”. The email invited an amicable agreement.

The Registrant replied on November 24, 2005, as follows: “I have been in contact with our MD and legal department and have been asked to request exactly what you are proposing? Are your clients making an offer to buy our internet domain name <travelcounsellors.ie>? If I could just ascertain exactly what your clients’ proposal is I can hasten a reply from our company and hopefully avoid any unnecessary legal proceedings???”

The First Complainant’s representative replied the same day stating that its offer was to pay the registration and transfer fees in return for transfer of the disputed domain name.

6. Parties’ Contentions

A. Complainants

The disputed domain name is misleadingly similar to the First Complainant’s CTM which covers Ireland as well as to the Second Complainant’s registered company name.

The Registrant has no legitimate rights in respect of the name given the registration of the Second Complainant’s company name in the Republic of Ireland and the First Complainant’s registered trade mark.

The Registrant’s travel services are misleadingly similar to the Complainants’ services.

This Registrant’s failure to use the disputed domain name for a website supports the Complainants’ case that it has registered the domain primarily for the purpose of interfering with or disrupting the Complainant’s business.

The correspondence with the Registrant also shows that it has registered the domain in bad faith.

B. Registrant

The Registrant did not reply to the Complainant’s contentions.

7. Discussion and Findings

Paragraph 1.4 of the Policy states: “the Complainant carries the burden of proving, prima facie, that the three conditions specified in paragraph 1.1 are met”.

The Registrant has defaulted. Paragraph 13.2 of the Rules states: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.”

The Panel considers that the Registrant’s default does not automatically result in a decision for the Complainant, which must still prove its case to the required standard. See Department of Arts, Sport and Tourism v. Odyssey Internet Portal Limited, WIPO Case No. DIE2005-0002.

A. Identical or Misleadingly Similar

The first condition in paragraph 1.1 of the Policy is that the domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights.

Under paragraph 1.3.1 of the Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”.

The Complainants rely on the First Complainant’s CTM. This applies in both parts of Ireland. The words “travel counsellors” are the most prominent feature of this trade mark. The domain suffix can be disregarded for the purpose of the comparison. The Panel concludes that the disputed domain name is misleadingly similar to the First Complainant’s CTM.

The Panel makes no finding in relation to common law rights as the Complainants have supplied no information or evidence about the extent of their trading activities in Ireland.

The Panel concludes that the disputed domain name is misleadingly similar to a protected identifier in which the First Complainant has rights.

B. Rights or Legitimate Interests

The second condition in paragraph 1.1 of the Policy is that the Registrant has no rights in law or legitimate interests in respect of the domain name.

Paragraph 3.1 of the Policy specifies three non-exhaustive factors which may be considered as evidence of rights or legitimate interests.

In respect of the equivalent UDRP provision, UDRP panels have recognized that - while the overall burden of proof rests with a complainant - this could result in the frequently impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Accordingly, the approach taken is that the complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.

The Panel proposes to apply the same principle here as the three factors in paragraph 3.1 of the Policy (albeit that they differ from the UDRP factors in some significant respects) all concern matters which are primarily within a registrant’s knowledge.

Here, the Complainants have not licensed or otherwise authorized the Registrant to use their trade mark.

Paragraph 3.1.1 does not apply as there is no evidence of good faith preparation to use the domain name in connection with a good faith offering of goods or services or operation of a business.

Paragraph 3.1.2 does not apply as there is no evidence that the domain name corresponds to the personal name or pseudonym of the Registrant.

Paragraph 3.1.3 does not apply as there is no evidence of any use of the domain name by the Registrant and the domain name is not a geographical indication.

The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Registrant.

The Panel concludes that the Registrant has no rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

The third condition in paragraph 1.1 of the Policy is that the domain name has been registered or is being used in bad faith.

The Panel considers that the following points are significant.

First, although little is known of the Registrant, it is obvious from its name that it is also in the travel business and therefore likely to have been aware of the Complainants’ name / trade mark when it registered the disputed domain name.

Second, the Registrant registered the disputed domain name at exactly the time that some publicity appeared in travel trade press concerning the First Complainant’s plans to expand into both parts of Ireland.

Third, when first confronted by the Complainants, the Registrant did not suggest that it was unaware of the Complainants when it registered the disputed domain name. Nor did the Registrant reject the assertion that the purchase was “hostile” and “passing off” let alone attempt to explain or justify its registration of the disputed domain name.

Fourth, the Registrant has not used the disputed domain name for a website since its registration some 16 months ago.

Fifth, the Registrant had not appeared in these proceedings to contest the Complainant’s allegations.

While the term “TRAVEL COUNSELLORS” is to some degree descriptive, the Panel thinks it highly unlikely that the Respondent registered the disputed domain name for its descriptive qualities or for some other genuine reason independently of the Complainants. On the contrary, taking all of the above matters together, the Panel concludes that the Registrant became aware of the Complainants following the publicity in the trade press in January 2005, or was previously aware of them and that the Registrant registered the disputed domain name to capitalise on the Complainants’ rights and on the likelihood that they would want that domain name for the part of their business in Ireland.

The Panel concludes that the disputed domain name was registered in bad faith.

Paragraph 2.1 of the Policy specifies six non-exhaustive factors which may be considered as evidence of registration or use in bad faith. Insofar as it is necessary to have regard to these, the Panel considers that paragraphs 2.1.2 and 2.1.3 of the Policy apply here:

“2.1.2 where the domain name has been registered or is used primarily in order to prevent the complainant from reflecting a Protected Identifier in which it has rights in a corresponding domain name; or

2.1.3 where the registrant has registered or is using the domain name primarily for the purpose of interfering with or disrupting the business of the complainant;…”

8. Decision

For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the domain name <travelcounsellors.ie> be transferred to the First Complainant.

Adam Taylor
Sole Panelist

Dated: May 19, 2006