WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Holiday-rentals.com Limited v. Timothy Hall

Case No: D2002-0200

The Complainant in this administrative proceeding is Holiday-rentals.com Limited, a limited company whose registered address and principal place of business is Westpoint, 34 Warple Way, London W3 0RG, United Kingdom.

The Respondent is Timothy Hall of the HolidayRentals.Company, at 4 Eaton Grange Barns, Eaton Upon Tern, Nr. Market Drayton, North Shropshire TF9 2BX, United Kingdom.

The domain name in issue is <holidayrentals.com> ("the Domain Name").

The Registrar is Network Solutions, Inc. (now Verisign Inc.) of 505 Huntmar Park Drive, Herndon, VA 20170, United States of America ("Verisign").

The WIPO Arbitration and Mediation Center ("the Center") received on February 28, 2002, a hard copy of the Complaint and accompanying documents and on March 11, 2002, an electronic version of the same. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On March 12, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On March 7, 2002, the Center transmitted via e-mail a request for registrar verification in connection with this case. On March 8, 2002, Verisign transmitted via e-mail to the Center its Verification Response, stating that the registrant is Tim Hall, at the above stated address and that the Administrative and Billing Contacts are Domain Names.com Ltd. of The Solar Building, Duxford International, Sunderland, Tyne & Wear SR3 3XW, United Kingdom.

A Response was filed on March 28, 2002. On April 18, 2002, the Complainant lodged a Supplemental Filing, requesting that it be placed before the Panel.

On April 22, 2002 this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision was scheduled to be forwarded to the Center by May 6, 2002.

On April 29, 2002 the Panel issued a Procedural Order, affording the Respondent an opportunity of reply to the Supplemental Filing. Pursuant to the same Order, the Panelist is due to forward his decision to the Center by May 13, 2002.

(a) The Complainant owns no relevant registered trade or service marks.

(b) The Domain Name was registered with the Registrar in question on April 8, 1998.

(c) The Complainant has registered the following domain names on the dates stated:-

<holiday-rentals.co.uk>March 1996
<holidayrentals.co.uk> November 25,1996
<holiday-rentals.com>June 4, 1996
<holidayrentals.net> May 8, 1998
<holidayrental.co.uk>December 21, 1998

(d) The Complainant was incorporated as Internet Holiday Rentals Limited on January 30, 1966, and changed its name to Holiday-rentals.com Limited on September 22, 2000.

The Complainant asserts, inter alia, as follows:-

(i) The marks on which the Complaint is based are "HolidayRentals" and "Holiday-Rentals" (the Marks). The Marks and the domain names listed in paragraph 4(c) above have been used by the Complainant in connection with bringing together, for the benefit of others, properties available for short term rental, enabling customers to conveniently view and book those properties by means of an internet web site and details provided thereon. Further, the Complainant has used the Marks and domain names in connection with the provision of advertising space on the said website to persons wishing to rent their properties.

(ii) Each of the domain names listed in paragraph 4(c) above went live at or soon after registration and pointed to the Complainant’s website <www.holiday-rentals.co.uk>. The Domain Name was registered by a third party at the time the Complainant commenced business but to the best of the Complainant’s knowledge and belief remained unused until the registration of the Domain Name lapsed in about March 1998.

(iii) In March 1996, the Complainant’s web site went live and since launch the Complainant’s business carried out under and by reference to the Marks and domain names has grown consistently. The following data are provided:

(a) Gross Revenues for years ending January 31.

1997 £29,593
1998 £73,545
1999 £141,000
2000 £203,000
2001 £701,000
2002 (forecast) £1,479,000

(b) Number of properties available on site:

April 28, 1996 49
January 31, 1997 296
April 4, 1998 754
April 28, 1999 1115
May 13, 2001 2434
September 26, 2001 2899

(c) Number of Countries on site in which properties are available:

199619
199732
1998 39
1999 46
2000 51
2001 55

(d) The Complainant has entered into branded content supply partnership arrangements (no payment by Complainant) with a number of other significant web based businesses including:

Expedia UK

Approached Complainant to put Complainant’s content on their site in September 1997. Remained on their site until February 2000, after Expedia had bought Vacationspot.

Approached Complainant for co-branded content which went live in Autumn 2000, and remains so.

Yell.com

Approached Complainant for co-branded content which went live in Autumn 2000 and remained live until September 2001.

(iv) From commencing business until the present time the Complainant has used the Marks in its logo on its website and on its stationery.

The Complainant’s invoices have printed on them:

(a) the Complainant’s logo with the mark "HolidayRentals" in the top right corner; and

(b) the sentence "Thank you advertising with HolidayRentals on the Internet" at the bottom left.

The Complainant’s printed A4 envelopes which have been used since 1998, until the present time carry the Complainant’s logo and mark "Holiday Rentals".

(v) The Respondent is a professional photographer. In December 1997, the Respondent approached the Complainant and requested that his property be placed on the Complainant’s web site. The Respondent’s property appeared on the Complainant’s web site from January 7, 1998, to April 28, 1998.

(vi) At the time the Complainant started its business (January 1996) the Domain Name was registered to a third party, but not used. The Complainant was aware that the registration of the Domain Name was due to lapse in about March 1998, and intended to acquire it in the event that this happened. Shortly before the registration lapsed the principals of the Complainant were wholly preoccupied with urgent internal matters regarding the Complainant’s business. However, in early May 1998, the Complainant inspected the "whois" register and discovered that the Respondent had become listed as the owner of the Domain Name.

(vii) The Complainant made searches and discovered that the Domain Name now pointed to a basic web page <www.wkweb5.cableinet.co.uk/tim_hall_photographer/frontdoor1.htm> (the Respondent’s site) on which was advertised a single property (his own, the one which was advertised on the Complainant’s site).

(viii) On further inspection, the Complainant discovered that the Respondent’s site replicated all the HTML between the HEAD tags on the Complainant’s site. The metatag description of the Respondent’s site was also identical and directly reproduced from the Complainant’s site: "HolidayRentals advertises ski chalets to rent in Europe and North America. Every property listed has colour photos and numbers to contact the owner direct".

(ix) Shortly after the Respondent’s registration of the Domain Name there was communication and correspondence between the Complainant and the Respondent directly and through legal representatives. The Complainant requested transfer of the Domain Name and undertakings to refrain from using the names "holidayrentals" or "holiday rentals". When this was declined, the Complainant expressed an interest in purchasing the Domain Name from the Respondent for GBP1000 but the Respondent claimed he was not interested in selling the Domain Name.

(x) To the best of the Complainant’s knowledge and belief, there have been no more than three properties on the Respondent’s web site since May 1998, (the Respondent’s own property being one of them throughout).

The Respondent admits most of the Complainant’s assertions concerning the parties’ activities, but asserts:

(i) The Marks are descriptive and generic. The Respondent exhibits lists of some 40 .com names incorporating HOLIDAY RENTALS, either as a prefix or suffix (e.g. UKHOLIDAYRENTALS.com) and also 8 examples of how the words "Holiday Rentals" feature on web pages of different advertisers (including <holidayrentals.gr> and <holidayrentals.com.au>).

(ii) While admitting the allegations referred to in paragraph 5A.(viii) above he states:

"My naivety in early 1998, while experimenting with building a web site led me to make this error in so far as I did replicate these header tags for a short period of time. Being new to web design and the complexities of search engines I at the time had no reason to believe that I was doing anything wrong and had I known then I'd not have copied these HEAD tags. When I later realised that this was potentially a breach of copyright I removed the HEAD tags from my site and wrote my own."

(iii) The Complainant has harassed the Respondent and his family. He views this administrative proceeding as "just the latest form of harassment of me". He says:

"I am in no doubt that the Complainant has chosen only to pursue [the Domain Name] as it is a .com TLD and is perceived to be ‘top dog’ and therefore a better URL to use than his own .co.uk domain name which he has used to run his web-site since 1997. Following Internet naming protocols his own TLD holiday-rentals.com is also 'second best' to the disputed name so he will view the acquisition, by whatever means, of the [Domain Name] name as a commercial advantage."

(iv) Given that the Complainant started to use the URL <holiday-rentals.com> as well as <holiday-rentals.co.uk> it has itself initiated any perceived confusion. It has further compounded this by changing the name of the company from INTERNET HOLIDAY RENTALS LIMITED to HOLIDAY-RENTALS.COM LIMITED. Prior to the Respondent’s registration of the Domain Name the Complainant's business was only marketed using its ‘.co.uk’ domain name. It has clearly only started to use its own .com TLD, and redesigned its site using <holiday-rentals.com> and renamed the company so as to attempt to build a case against the Respondent.

This document has been considered by the Panel, but he finds it of little assistance. It is largely argumentative.

No further submission has been filed by the Respondent.

The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The fundamental problem for the Complainant in this administrative proceeding lies in establishing that it has any rights in the Marks (i.e. in "HolidayRentals" and "Holiday-Rentals"). Whatever the precise juxtaposition of the words "holiday" and "rentals" they are wholly descriptive of properties available to rent for holiday purposes. While the Complainant appears to have built up a reasonably successful business, there is no evidence before the Panelist to suggest that the Marks have become identified in the minds of the public with the Complainant to a sufficient extent to confer on it "rights" within the meaning of paragraph 4(a)(i) of the Policy. The examples given above merely underline how necessary the expression "holiday rentals" is for the business of letting holiday properties and how inevitable it is that that expression will be incorporated into domain names. In such circumstances, it is the Complainant’s misfortune that it failed to secure the Domain Name before the Respondent, because once the original registration lapsed it was open to anyone to secure it for himself.

The Domain Name is undoubtedly confusingly similar (if not identical) to the Marks, but the Panelist must dismiss this case because of the Complainant’s inability to establish that it has the necessary "rights".

In these circumstances it is not necessary for the Panelist to make any findings in relation to elements (ii) and (iii) of paragraph 4(a) of the Policy, and since the Complainant’s only other recourse against the Respondent is through a court of law, it would be wiser not to. However, neither party should assume how this Panelist would have decided either of these issues – the conduct of each of the parties is open to criticism.

In the light of the findings in paragraph 6 above, the Panelist dismisses the Complaint.