WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Thomas Cook UK Limited .v. CHS Tech Services Limited

Case No. D2002-0882

The Complainant is Thomas Cook UK Ltd of Thomas Cook Business Park, Coningsby Road, Peterborough, Cambridgeshire, United Kingdom.

The Respondent is CHS Tech Services Limited, Edinburgh, United Kingdom.

The disputed domain name <club1830s.com> is registered with Verisign, Inc of 487 E Middlefield Road, Mountain View, CA 94043, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center [the Center] on September 23, 2002. On September 25, 2002, the Center transmitted by email to Verisign a request for registrar verification in connection with the domain name at issue. On September 27, 2002, Verisign transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contract-details for the administrative, billing and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 2, 2002.

The Center verified that the Complaint together with the amendment to 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 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 proceedings commenced on October 3, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2002. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on October 25, 2002.

The Center appointed David Perkins as the sole panellist in this matter on November 6, 2002. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainant is a well known tour operator which operates, inter alia, youth holidays under the CLUB 18-30 brand.

The Complainant's trademark CLUB 18-30 was first used in Spain and in the United Kingdom in 1965. It has since then established a significant reputation under that trademark in the youth holiday market. The Complainant's 2001 turnover of goods and services provided internationally under the CLUB 18-30 mark was in excess of £30 million. This was supported by extensive advertising under that mark on television, at the cinema, on the radio and in national publications at a cost of over £1 million.

In 2002, CLUB 18-30 is carrying some 105,000 United Kingdom holiday makers on vacation, generating a turnover of some £35 million. An article in the Guardian newspaper on August 10, 2002, entitled "King of the Club Reps" reads:

"In the holiday industry, Club 18-30 was one of the success stories of the 1990's …."

and describes the business as

"… Britain's most successful youth tour operator."

CLUB 18-30 has also been the subject of a nationally successful television program entitled "Club Reps", which attracted an audience of 4.7 million viewers for the first program in the latest series broadcast in January 2002. This is an audience share of 31%.

The Complainant is the registered proprietor of the following registered trademarks and trademark application.

The Complainant trades from a website at www.club18-30.co.uk. The extract from that website annexed to the Complaint makes prominent use of the CLUB 18-20 trademark.

The Respondent is a limited company with an address in Edinburgh, Scotland. In the absence of a Response, little is known of the Respondent. The Complaint does, however, exhibit an extract from the Respondent's website at www.chsnet.co.uk. From this it appears that the Respondent is a provider of Internet-related services, including domain name registration, website construction and search engine registration.

The domain name in issue was registered by the Respondent on September 10, 2001. It does not apparently resolve to an active website. No reply was received from the Respondent to a cease and desist letter from the Complainant's lawyers dated July 10, 2002.

The domain name in issue differs from the CLUB 18-30 trademark only by addition of the plural (club1830s) and the omission of a hyphen between "18" and "30". It is, to all intents and purposes, identical.

The Complainant has not licensed or otherwise authorised the Respondent to use the CLUB 18-30 trademark or to apply for a domain name incorporating that trademark,

• It is inconceivable, given the notoriety of the Complainant's CLUB 18-30 business, that at the time the domain name in issue was registered [September 2001], the Respondent was not aware of that business and trademark under which it operates.

• There can be no honest use by the Respondent of the CLUB 18-30 trademark, since any such use would inevitably lead members of the public to believe that there was some affiliation or special relationship with the business of the Complainant.

• The Respondent's failure either to respond to the Complainant's cease and desist letter of July 10, 2002, [paragraph 4.5 above] or to file a Response in this administrative proceeding is further evidence of bad faith.

• The Complainant relies on the concept of initial interest confusion, citing decisions of the US Court of Appeal for the Ninth Circuit in Brookfield Communications Inc .v. West Coast Entertainment Corp and of the Danish Maritime and Commercial Court of August 8, 2000, in relation to the ROLEX trademark for watches. This concept is that, even if an Internet user who visits a website through unauthorised use of a trademark owner's mark [for example, rolex.dk] will then realise that it is not related to the trademark owner, it is sufficient to establish bad faith on the part of the Respondent that the user was attracted to that website in the first place. In other words, it is sufficient if there has been initial - even if only momentary- confusion.

• Taking all the facts into account, the inescapable conclusion is that the Respondent could only have registered the club1830s domain name for the purpose of trying to sell it to a third party for a valuable consideration in excess of its out-of-pocket expenses.

• Alternatively, by registering the domain name in issue, the Respondent was clearly intending to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's CLUB 18-30 trademark as to affiliation of that website with the Complainant. Put shortly, the Respondent could have had no legitimate reason to register the domain name. Nor is it possible to conceive of any use by the Respondent of the domain name which could be bona fide / legitimate.

No Response has been filed

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following:

(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) 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.

6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.

6.3 Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel agrees that elimination of a hyphen and the addition of an "s" to the Complainant's CLUB 18-30 trademark is neither here nor there. The Complainant's mark and the domain name in issue are, to all intents and purposes, identical. Accordingly, the Complaint satisfies the requirements of paragraph 4(a)(i) of the Policy.

In the absence of a Response, there is nothing to indicate that the Respondent has any rights or legitimate interest in the domain name in issue. Indeed, in the light of the facts and matters set out in Section 4 above, it is in the Panel's opinion inconceivable that the Respondent could have established any of the circumstances set out in paragraph 4(c) of the Policy. It follows that the Complaint also satisfies the requirements of paragraph 4(a)(ii) of the Policy.

On the facts, the Panel considers it is legitimate to imply intention by the Respondent to use the domain name in issue either for the circumstances of paragraph 4(b)(i) of the Policy or for the circumstances of paragraph 4(b)(iv). Given the notoriety of the Complainant's CLUB 18-30 mark, the Panel agrees that it is impossible to conceive that the domain in issue could have been registered in good faith. As to use, the Panel refers to the indicia of bad faith use additional to the circumstances prescribed in paragraph 4(b) of the Policy which are set out in the Telstra case [WIPO Case D2000-0003]. Those applicable to the facts in this administrative proceeding are:

• the Complainant's CLUB 18-30 trademark has a strong reputation and is very well known in at least the United Kingdom;

• the Respondent - in the absence of a Response - has provided no evidence of any actual or contemplated good faith use by it of the domain name; and

• taking all the circumstances into account it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent which would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.

It is not, in the Panel's opinion, necessary in the circumstances of this case to explore the co-called concept of initial interest confusion [see, paragraph 5.1.3 above] , as to which the Panel expresses no view. The Complaint meets the twin requirements of paragraph 4(a)(iii) of the Policy.

For all the foregoing reasons, the Panel finds that the Complaint satisfies the requirements of paragraph 4(a)(i) to (iii) of the Policy. Accordingly, the Panel directs that the domain name in issue, <club1830s.com>, be transferred to the Complainant.