The Complainant is The Pensions Advisory Service Ltd, London, United Kingdom of Great Britain and Northern Ireland, represented by Lovells LLP, France.
The Respondent is Labitrav, Fort Lauderdale, Florida, United States of America, represented by Silver Law PA, United States of America.
The disputed domain name <pensionsadvisoryservice.travel> is registered with Namesbeyond.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2008. On July 31, 2008, the Center transmitted by email to Namesbeyond.com a request for registrar verification in connection with the domain name at issue. On August 5, 2008, Namesbeyond.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 proceedings commenced on August 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2008. The Response was filed with the Center on August 27, 2008.
The Center appointed Warwick A. Rothnie, David H. Bernstein and Richard G. Lyon as panelists in this matter on September 24, 2008. The Panel finds that it was properly constituted. Each member of 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.
The Complainant is a corporation based in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). It provides members of the public in the United Kingdom with information and guidance in relation to their pension arrangements and disputes. Its services are provided by a network of volunteers and a London based technical and administrative staff. Though a private entity, its operations are subsidized by the United Kingdom government.
According to the Complaint, the Complainant originally operated under the name the “Occupational Pensions Advisory Service” from around 1990. It changed its name to its present name in 2004.
The Complaint contains some limited evidence of use of the name “The Pensions Advisory Service” prior to that date.
Nonetheless, with its adoption of the corporate name in 2004, it established a website to promote its services at “http://www.pensionsadvisoryservice.org.uk”. The domain name <pensionsadvisoryservice.org.uk> also resolves to that website.
The print-outs of the website and brochures included in, in particular, Annex 13 to the Complaint demonstrate clear use of the name “The Pensions Advisory Service” in a trademark sense, i.e., as an identifier of the services that it offers to the public.
During 2007-2008, the Complainant handled nearly 60,000 calls to its helpline, received more than half a million visitors to its website and helped more than 7,000 people with their pension disputes. The Complainant has spent more than £60,000 in 2006 and £80,000 in 2007 on promotional materials. Its projected expenditure in 2008 is £114,000.
The domain name was registered on December, 20, 2007.
Although the WhoIs details as confirmed by the registrar show that the domain name was registered in the name of Labitrav, Annex 1 to the Response shows that the Respondent has in fact changed its corporate name from Labitrav LLC to Labigroup Holdings LLC.
Annex 5 to the Complaint includes a print of the website to which the domain name resolved as at April 23 and July 29, 2008. At the time of preparing this decision, the domain name did not resolve to an active website. Each of the print-outs is headed:
“pensionsadvisory service: Travel guides, Deals and Reviews
“For more travel ideas, tips, and deals, sign up for the Pensions “Advisory Service newsletter here.”
Then follows a series of “search” type results; some with links to information about, or services run by, the Complainant, but others with links to other persons providing advice about pensions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The 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.
There are two parts to this inquiry: does the Complainant have trademark rights in a mark and, if so, is the disputed domain name identical or confusingly similar to that mark?
The Complainant does not hold any registered trademarks. It seeks to rely on common law rights arising from its use of the designation “The Pensions Advisory Service”.
The Respondent denies that the Complainant has sufficiently demonstrated such rights. The Respondent points out the terms comprising the claimed trademark are “generic”. They are certainly plain English words and in combination can be descriptive. That does not, however, preclude a claim to common law rights if the designation has been used sufficiently extensively as to have developed secondary meaning amongst an identifiable and sufficiently substantial section of the public. See e.g., Edward G. Linskey Jr. v. Brian Valentine, WIPO Case No. D2006-0706.
The Respondent contends that the Complainant has not provided sufficient evidence to satisfy this burden. It notes that the Complainant uses a number of designations including, it claims, “Occupational Pensions Advisory Service”, “TPAS” and “Stakeholder Helpline”. It also relies on cases holding that simply operating under a business name does not, per se, give rise to trademark rights.
The fact that the Complainant does appear to use other designations does not necessarily detract from its claim to trademark rights in “The Pensions Advisory Service” if it demonstrates sufficient usage of that designation also.
The Respondent points out that the Complainant has not submitted survey results to support its claim to a common law trademark. The Respondent also notes that the Complainant has not used its claimed trademark with notices asserting its trademark status. The Respondent notes that the Complainant's expenditure on advertising and promotion is only three per cent of its total income.
Each of these factors can be relevant to determination of the question at issue. Their presence or absence in any given case, however, is not determinative. The question is an evaluative determination based on the evidence submitted.
The Respondent's contentions fail to grapple with the materials in Annex 13 to the Complaint demonstrating clear usage of “The Pensions Advisory Service” as a trademark. In addition, the materials submitted by the Complainant demonstrate substantial expenditures on advertising and promotion in absolute terms and direct dealings with a very substantial proportion of the public in the United Kingdom. In the concrete circumstances outlined in section 4 above, the Panel concludes that the Complainant has demonstrated sufficiently substantial use of its claimed trademark since at least 2004 to support a finding that the Complainant has common law trademark rights in “The Pensions Advisory Service” in the United Kingdom.
The Respondent further contends that the Complainant's rights are limited to the United Kingdom. Accepting that to be the case here, however, does not assist the Respondent under this part of the Policy. The question is whether or not the Complainant has demonstrated trademark rights, not whether it has demonstrated rights in a particular jurisdiction. That issue may be relevant, however, to the inquiry under the other heads of the Policy.
The domain name is not precisely identical to the Complainant's trademark; omitting the word “the” and having added the gTLD “.travel”. The gTLD, being functional, may be disregarded in this context. The omission of the definite article “the” does not remove the risk of confusion.
Accordingly, the Panel finds that the domain name is confusingly similar to the Complainant's proved trademark.
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three non-exhaustive examples of rights or legitimate interests for the purposes of the Policy. They are:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor, and then an evidential burden shifts to the Respondent to rebut that prima facie case. For convenience, the Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
The Complainant points out that the domain name does not correspond to, nor is it derived from, the Respondent's name (Labitrav, subsequently changed to Labigroup). The Complainant also has not authorized the Respondent to use the Complainant's trademark, nor are the parties affiliated in any way.
The Respondent does not dispute any of these matters. Rather, it invokes the protection afforded by paragraph 4(c)(i) or (iii), contending that it has used the domain name in connection with a bona fide offering of goods and services before notice of the dispute or, alternatively, that it is making a legitimate noncommercial use of the domain name. More particularly, the Respondent contends that it uses the domain name as a noncommercial directory to help Internet users, looking for help with pensions, to find information on the Complainant and others. The Respondent further contends that there is no possibility that anyone navigating to its site could be confused into thinking he or she was at the Complainant's website.
In this connection, as already noted, the Respondent's website (before the Respondent took it down) consisted of a number of links in a search engine type format; some being to or about the Complainant and its services, others being to wholly unrelated entities. The Respondent denies the charge that these links operate on the now familiar click-through or pay-per-click basis. It submits source code for another of its sites intended to corroborate this claim.
The Respondent's contention that it is not operating a “click-though” website is not a complete answer, however. The presence of “click-through” links in certain circumstances can controvert a claim to rights or legitimate interests under this head of the Policy. The absence of such links, however, does not conclusively resolve the matter in the Respondent's favour.
The Respondent contends that other Panels have held that a connection between the directory links and the domain name is proof of bona fide services, citing Bayerische Motoren Werke AG v. (This Domain For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787; Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827; and Caja de Ahorros Municipal de Burgos v. Web Advertising Corp., WIPO Case No. D2007-1547.
These cases do not assist the Respondent. In each, the domain name was ordered to be transferred and the absence of legitimacy was in part predicated on the use of “click- through” advertising. The positive proposition contended for by the Respondent was not the basis of the respective decisions. In any event, each case falls to be decided on its own facts.
In the present case, it is significant that the domain name is in the “.travel” gTLD. Appendix S to the “.travel” Sponsored TLD Registry Agreement states that the scope of the gTLD “.travel” shall be limited to businesses or operations whose primary area of activity is in the travel industry, notably in one or more of the 18 following industry segments:
a. Airlines
b. Attractions/Theme Parks
c. Bed & Breakfast Houses
d. Bus/Taxi/Limousine Operators
e. Camp Facility Operators
f. Car Rental Companies
g. Computer Reservation/Travel Technology Provider
h. Convention & Visitor's Bureaus
i. Cruise Lines
j. Ferries
k. Hotels/Resorts/Casinos
l. National Tourism Offices
m. Passenger Rail Lines
n. Restaurants
o. Tour Operators
p. Travel Agents
q. Travel Media
r. Travel-Consumer and Market Research Organizations
None of these categories covers providing information related to advisory services in relation to pensions. Further, whether or not a Respondent can claim rights or legitimate interests under the Policy can be influenced by the issue of bad faith registration and use. The examples given in paragraph 4(c) of the Policy, for instance, emphasise bona fide conduct.
In this connection, it would appear that the Respondent has agreed with the .travel Registry, Tralliance, to buy 25,000 “.travel” domain names within one year with a view to turning them to profit. Moreover, as discussed below, many of the domain names it has registered are well-known trademarks, thus evidencing a clear pattern of abusive domain name registration.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the domain name.
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides
(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
Both parties are in agreement that the overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another: Match.com LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In summary, the Complainant contends that registration and use in bad faith can be inferred from the Respondent's business model coupled with its contention that the Respondent must have known of the Complainant's trademark when it registered the domain name. On the other hand, the Respondent contends that it purchased in good faith a domain name made of generic terms for bona fide and noncommercial purposes without any knowledge of the Complainant.
The Respondent contends that “pensions advisory services” is generic when applied to services of that description and can be attributed to any number of entities who advise on pensions. Even if that were true as a general proposition (and in this case the Panel concludes that, while the expression can be descriptive, the Complainant has demonstrated in this case that the expression has acquired secondary meaning for purposes of the Policy), in any event, it does not address the fact that the Respondent has registered the domain name in the “.travel” gTLD, which has nothing to do with pension advisory services. This is a significant distinguishing factor from PwC Business Trust .v Ultimate Search, WIPO Case No. D2002-0087 which concerned a registration of “pwc” in the “.com” gTLD. Standing alone, the Panel might give credence to the Respondent's bald assertion that it had no knowledge of the Complainant. As the Complainant points out, however, the inclusion of links to or about the Complainant in the Respondent's website casts doubt on that claim. See, Factory Mutual Insurance Company v. Valuable Web Names, WIPO Case No. D2008-1014.
Secondly, the Panel has already mentioned the Respondent's arrangement with Tralliance to register 25,000 names in the “.travel” gTLD within one year. Annex 10 to the Complaint contains a non-exhaustive listing of names which the Respondent has in fact registered in the “.travel” gTLD. Some of them are clearly travel oriented; some could, if used in a particular way, arguably have a travel orientation. It is very difficult, however, to characterize many, or the sheer volume of names, in this way. For example, the names include <barbie.travel>, <beatles.travel>, <beckham.travel>, <britneyspears.travel>, <facebook.travel>, <ferrari.travel>, <iphone.travel>, <ipod.travel> and <toysrus.travel>.
The Respondent claims it is unreasonable to saddle it with a burden of investigating whether or not a name it registers is someone's trademark. The Policy, however, does in fact throw that burden on everyone who registers a domain name. Thus, paragraph 2 of the Policy concludes:
“It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”
The volume of names registered by the Respondent, and the character of many of them as discussed above, adds particular force to the Respondent's obligations in this regard: Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; mVisible Technologies Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
While the present case arguably has some difference to those cases which involved “click-through” arrangements, the Respondent's agreement with Trailliance clearly states in recital 4:
“[the Respondent] desires to purchase large blocks of ‘travel' domain names under Tralliance's Bulk Purchasing Program and to develop websites containing contextually relevant information about the domains on which they reside for the purposes of generating advertising revenue from third parties;
and in recital 6:
“the Parties wish to enter into a mutually beneficial cost and revenue sharing arrangement ….
(italicized emphasis supplied). Thus, the Respondent's objective, like the more typical class of domainers, is to register and build websites for the purposes of generating advertising revenues. Moreover, the Respondent does not point to any good faith attempt to ascertain whether or not it was registering and using someone else's trademark.
In these circumstances, the Panel finds that the domain name has been registered and used in bad faith.
In light of the Panel's findings above, the Respondent's submission that the Complainant should be sanctioned for reverse domain name hijacking under paragraph 15(e) of the Policy must fail.
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, <pensionsadvisoryservice.travel> be transferred to the Complainant.
Warwick A. Rothnie | |
David H. Bernstein | Richard G. Lyon |
Date: October 8, 2008