The Complainant is The Old Course Limited of St. Andrews, Scotland, United Kingdom of Great Britain and Northern Ireland (“UK”) represented by Greenberg Traurig, LLP, United States of America (“USA”).
The Respondent is Patrick Woods of St. Andrews, Scotland, UK.
The disputed domain name <thehamiltongrand.com> (the “Domain Name”) is registered with NetNames (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 29, 2010.
The Center transmitted its request for registrar verification to the Registrar on April 30, 2010. The Registrar replied on May 5, 2010, following a reminder, confirming that it was the registrar and the Respondent was the registrant of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name was registered on March 14, 2010, and would expire on March 14, 2012, that it had been locked, and that the registration agreement was in English. The Registrar provided the contact details held on its WhoIs database in respect of the Domain Name and stated that it had not yet received a copy of the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the UDRP, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2010. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 26, 2010. The Response was filed with the Center on May 26, 2010, attached to an email which made an additional comment. Although the Response does not appear to have been transmitted directly to the Complainant in accordance with paragraph 5(b)(vii) of the Rules, it was forwarded by the Center to the Complainant on May 27, 2010.
The Complainant transmitted a request to file an additional submission on May 28, 2010. The Respondent replied by email the same day.
The Center appointed Jonathan Turner as the sole panelist in this matter on June 3, 2010. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
The Response does not comply with paragraph 5(b) of the Rules in that it does not respond specifically to the statements and allegations in the Complaint, does not provide the name, postal and email addresses and telephone and fax numbers of the Respondent, does not specify a preferred method for communications, does not state that a copy has been transmitted to the Complainant, does not conclude with a statement certifying its accuracy, and does not annex any evidence.
Despite these deficiencies, the Panel has decided to exercise its discretion to admit the Response under paragraph 10 of the Rules in the interest of affording the Respondent a fair opportunity to present his case without prolonging the proceedings by inviting him to submit a compliant Response. The Panel has, however, taken into account the deficiencies of the Response where relevant in assessing the weight to be attached to the contentions in it.
Whether supplemental submissions can and should be admitted in proceedings under the UDRP has been considered in many cases. In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, the Panel summarised the position as follows:
“The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
In this case, as in many other cases, the supplemental submission which the Complainant seeks to file consists primarily of a repetition of matters which are already in evidence. In accordance with the principles cited above, the Panel declines to admit the supplemental submission, with the exception of one point, namely the correction of an error in the Complaint which had wrongly stated that the Complainant owned the St. Andrews golf course.
The Complainant owns The Old Course Hotel in St. Andrews, Scotland. The Complainant purchased Hamilton Hall in St. Andrews and announced plans to renovate it and rename it “The Hamilton Grand” at an exhibition on March 11 and 12, 2010. The Complainant's announcement was covered in a local newspaper. The announcement of the proposed change of name was made by Herb Kohler, Chairman of the Complainant's parent company, Kohler Co.
The Complainant has applied to register HAMILTON GRAND as a trademark in the Benelux trademark office and the Office for Harmonisation in the Internal Market (“OHIM”). The Complainant has also applied to register “HAMILTON HALL” at OHIM.
The Respondent carries on a taxi business in St. Andrews called St. Andrews Taxis.
On or about February 15, 2010, the Respondent registered the domain names <theoldcoursegrand.co.uk>, <grandhotelstandrews.co.uk>, <standrewsgrand.co.uk> and <standrewsgrandhotel.co.uk>.
On March 14, 2010, the Respondent registered the Domain Name and also the domain name <thehamiltongrand.co.uk>.
On April 19, 2010, the Respondent wrote by email to the Complainant, referring to earlier telephone calls, and stating that he owned the website domains <thehamiltongrand.com> and <thehamiltongrand.co.uk>, which (he said) Kohler Group should really own on the basis that the new Hamilton building in St. Andrews was going to be called “The Hamilton Grand”. The email continued: “I have stated previously I do not want money for handing over these websites to you but would like to discuss how Kohler can help me to build my business in St Andrews”.
References in subsequent emails from the Complainant's representatives to a proposal to transfer these two domain names to the Complainant in return for a commitment by the Complainant to provide the Respondent with 10 airport runs per year from The Old Course Hotel were not contradicted by the Respondent.
A further email from the Respondent stated that he just wanted “to know in principle that passing on the domain names in return for the opportunity to offer a service to Kohler Company is going to happen” and continued: “If Kohler have any other suggestions I would be pleased to discuss, who knows with the huge project of renovating The Hamilton Grand they may need a Project Manager in St. Andrews which is where my real skills lie!”
The Complainant contends that the Domain Name is identical or confusingly similar to its HAMILTON HALL and HAMILTON GRAND marks in which it claims to have rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name in that he has never operated any bona fide or legitimate business under it and is not making a protected noncommercial or fair use of it. The Complainant alleges that the Respondent was using the Domain Name to drive Internet traffic to a website providing advertising links and a search engine. According to the Complainant this does not constitute use in connection with a bona fide offering of goods or services. The Complainant adds that the Respondent's correspondence soliciting business in return for transferring the Domain Name (and the corresponding “.co.uk” domain name) provides further evidence of his lack of rights or legitimate interests in respect of the Domain Name.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant points out that the Respondent's own correspondence shows that he knew that the Complainant had rights in the mark HAMILTON GRAND. The Complainant also draws attention to the timing of the registration of the Domain Name and the corresponding “.co.uk” domain name. The Complainant contends that the Respondent registered the Domain Name in order to coerce the Complainant into doing business with him, that the Respondent was using it to attract consumers to pay-per-click advertisements for various goods and services, and that he registered it in order to prevent the Complainant from registering it as part of a pattern of such conduct. According to the Complainant, the Respondent admitted in a telephone conversation with the Complainant that he had registered a range of domain names which he thought might correspond to a name which the Complainant might choose for the renovated Hamilton Hall.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent states that he runs a small business called St. Andrews Taxis which he purchased earlier this year; that he employed a company to create a website at “www.standrewstaxis.com” which had an immediate impact resulting in a steady flow of enquiries and orders; and that this prompted him to be creative in registering domain names, some of which he planned to use to attract more business.
The Respondent acknowledges that he made contact with Kohler some time in March of this year and entered into discussions as he had decided not to use the domain names but to build his business more as a private hire company using the domain name <standrewsprivatehire.co.uk>.
The Respondent states that he contacted Kohler by telephone and email in March of this year and said that he had purchased and owned domain names. According to the Respondent, he offered the domain names to Kohler but made the point at all times that he did not want to receive money for them and did not tell Kohler that he was planning to use them.
The Respondent says that he registered creative names using a mix of historical landmarks in St. Andrews with a view to creating websites which would attract business for its company; that when he decided that he would not use them he contacted Kohler whose representatives asked him by email how Kohler Group could assist him to build his business; and that in a subsequent telephone conversation he explained that he mainly did airport transfers and that in exchange for transferring the domain names he would welcome some airport transfer business from The Old Course Hotel.
The Respondent states that Hamilton Hall and Grand Hotel are names embedded in the history of St. Andrews. He points out that the famous golf course is owned publicly, and not by the Complainant as wrongly stated at one point in the Complaint and a complaint to Nominet about the corresponding “.co.uk” domain name. The Respondent says that he created the domain names to embrace historical aspects of two former names. He comments that Kohler have been very slow out of the starting blocks and questions why such a large global company did not register the domain names but now wants them. He denies that he has a pay-per-click website.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (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. The Panel will consider these requirements in turn.
The Panel notes that it is well-established that a high profile announcement of a new corporate name can generate goodwill in that name which is protected by the UK law of passing off: see Glaxo Plc v. Glaxowellcome Ltd [1996] FSR 388. The acquisition of rights in a mark in this way has also been recognised as sufficient for the purposes of the first element of the UDRP: see Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, WIPO Case No. D2003-0112, and cases cited therein.
In this case the Complainant announced at a public exhibition that it would rename Hamilton Hall as “The Hamilton Grand” and this announcement was covered in the local newspaper. The Panel also notes that the building is situated next to the 18th green of the Old Course of St. Andrews. The Panel infers that the Complainant's plans for the building must be of considerable interest to residents of St. Andrews and people interested in golf throughout the world.
In these circumstances, the Panel finds that the Complainant has acquired rights in the mark THE HAMILTON GRAND within the meaning of paragraph 4(a)(i) of the UDRP.
The Domain Name is identical to this mark apart from the addition of the generic top level domain suffix, which should be discounted as a distinction for the purpose of this requirement of the UDRP.
The Panel finds that the first requirement of the UDRP is satisfied.
The Panel accepts the Respondent's statement that he has not used the Domain Name for sponsored links. It is apparent that he has not made any other commercial use of the Domain Name. The Panel therefore finds that the Respondent has not used the Domain Name in connection with a bona fide offering of goods or services prior to notice of this dispute.
It is evident that the Respondent is not commonly known by the Domain Name and that he has not made any legitimate noncommercial or fair use of it. It also appears from the file that there are no other circumstances which might have conferred any right or legitimate interest on the Respondent in respect of the Domain Name.
The Panel finds that the second requirement of the UDRP is satisfied.
The Panel notes that the Respondent registered the Domain Name and the corresponding “.co.uk” domain name the day after the exhibition at which the Complainant announced its intention to renovate Hamilton Hall and rename it “The Hamilton Grand”. The Panel further notes that shortly thereafter the Respondent acknowledged that these domain names should be owned by the Complainant's group in view of its decision to use this name and offered to transfer them to the Complainant in return for the Complainant helping him with his taxi business, in particular by providing him with a minimum number of airport hotel transfers.
In the circumstances, the Panel finds that the Respondent registered the Domain Name primarily for the purpose of transferring it to the Complainant in return for valuable consideration in excess of his documented out of pocket expenses directly related to the Domain Name. The Panel regards the proposed help for the Respondent's business, such as providing a minimum number of airport transfers, as constituting valuable consideration, which is bound to be in excess of the minimal costs of registering the Domain Name.
This constitutes evidence of bad faith registration and use of the Domain Name in accordance with paragraph 4(b)(i) of the UDRP.
The Panel also notes that the Respondent registered the Domain Name and the corresponding “.co.uk” domain name, as well as other domain names corresponding to names which the Complainant might adopt for Hamilton Hall; and that the Respondent has not disputed the Complainant's allegation that he told its representative in a telephone conversation that he had registered various domain names which he thought might correspond to a name which it might adopt for Hamilton Hall.
In the circumstances, the Panel finds that the Respondent registered the Domain Name to prevent the Complainant from reflecting its mark THE HAMILTON GRAND in a corresponding domain name (unless it acquired domain names from him for valuable consideration) and that he has engaged in a pattern of such conduct.
This constitutes evidence of bad faith registration and use of the Domain Name in accordance with paragraph 4(b)(ii) of the UDRP.
The Panel further finds that these presumptions are not displaced by other evidence on the file. In particular, the Panel rejects the Respondent's assertion that he registered the Domain Name and other domain names reflecting well-known St. Andrews landmarks for use in his taxi business. As well as being far-fetched and unsubstantiated, the Panel considers that it does not credibly explain the Respondent's registration of domain names containing the combination “The Hamilton Grand” and that it is also contradicted by the correspondence.
In the circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
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, <thehamiltongrand.com>, be transferred to the Complainant.
Jonathan Turner
Sole Panelist
Dated: June 6, 2010