The Complainants are Corsica Ferries- Sardinia Ferries of Bastia, France and Forship SPA - Tourship Italia SPA (hereafter referred to also as “the Complainant”) of Porto Vado, Italy, represented by Nameshield, France.
The Respondent is Prenotazioni 24 s.a.s., Enrico Cioni of Portoferraio, Italy, represented by Barzanò & Zanardo Roma SpA, Italy.
The disputed domain name <corsica-ferries.org>, <sardinia-ferries.com>, <sardinia-ferries.net> are registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2010. On August 23, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On August 23, 2010, Tucows Inc. 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” or “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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced September 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2010. The Response was filed with the Center September 21, 2010.
The Center appointed Alistair Payne, Isabelle Leroux and The Hon Neil Brown QC as panelists in this matter on December 10, 2010. The presently appointed 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 Complainants are members of a corporate group of companies in common ownership which has been involved in the ferry business between Corsica and Sardinia, various Mediterranean rim countries including Italy and France, since as early as 1968. Their ferry business now trades under the name or style "Corsica ferries-Sardinia Ferries" and the Complainants operate their business, in particular, through two key websites at “www.corsicaferries.com” and “www.sardiniaferries.com” and own numerous other domain name variants incorporating the names "corsica" and "sardinia" and the term "ferries". The Complainants own several combined word and device and word mark registrations for the marks CORSICA FERRIES or SARDINIA FERRIES dating from as early as 1996 and most notably Community Trademark registration 4645693 for the word mark CORSICA FERRIES and Community Trademark registration 5358163 for SARDINIA FERRIES dating from 2005 and 2006 respectively.
The Respondent operates on-line booking services for ferries. Its booking service was first targeted at Italian customers and it accordingly registered numerous domain names incorporating the Italian word for ferry and as its business developed subsequently registered numerous translations of its Italian language domain names as well as numerous others in a variety of first and second level domain name spaces, including 90 generic or descriptive domain names. Currently these domain names resolve to its main website at <ok-ferry.com> and <ok-ferry.de> where the Respondent offers booking services for numerous ferry companies, including for the Complainants and many of the Complainants’ competitors.
In this regard, the Respondent has had a business relationship with the Complainants since 2002. This relationship developed quite quickly to the extent that even after the first two years of this arrangement the Respondent's bookings made up more than 10% of the Complainants’ annual turnover. The business relationship between the parties continued until at least 2007.
The Respondent registered <corsica-ferries.org> and <sardinia-ferries.com> in 2004 and <sardinia-ferries.net> in 2008.
The Complainant submits that the Disputed Domain Names are identical or confusingly similar to their registered trademarks and in particular to Community Trademark registration 4645693 for the word mark CORSICA FERRIES and Community Trademark registration 5358163 for SARDINIA FERRIES and are wholly contained within its trading name Corsica Ferries – Sardinia Ferries.
The Complainant says that the Respondent, as a re-seller or booking agent for the Complainant’s ferries since signing a co-operation agreement in 2002, knowingly registered the Disputed Domain Names in full knowledge of the Complainant’s business and trademarks and without the Complainant’s authorization. Further, the Complainant says that the Respondent operates in the same field of activity and has purposefully registered or used the Disputed Domain Names to attract Internet users to its website in bad faith. The Complainant says that evidence of the Respondent’s willingness to sell the Disputed Domain Names to the Complainant is consistent with the Respondent having no rights or legitimate interests in the Disputed Domain Names.
As far as registration and use in bad faith is concerned, the Complainant says that the Respondent purposefully registered the Disputed Domain Names for the purpose of causing Internet users to confuse the Complainant’s domain names with the Respondent’s and as a consequence to drive traffic to the Respondent’s website which features links to many of the Complainant’s competitors. Finally, the Complainant says that the Respondent’s refusal to entertain the Complainant’s offer to buy the Disputed Domain Names for 4500 euro and its counter-offer for 32,500 euro, failing acceptance of which the Respondent threatened to sell the Disputed Domain Names to third parties is additional evidence of bad faith under paragraph 4(b)(i) of the Policy.
The Respondent says that the Disputed Domain Names contain common, generic or geographical terms that any trader is entitled to use and that in fact two of the Complainants’ competitors do so use in a descriptive manner.
It argues that it has rights or legitimate interests in the Disputed Domain Names which are merely translations of the more than 90 generic and descriptive domain names that it first registered when its business was solely targeted at Italian customers. It says that this is consistent with its argument that under paragraph 4(c)(i) of the Policy the Respondent has only used the Disputed Domain Names, in relation to a bona fide offering of goods or services, being its ferry ticket booking service, that it offered well prior to the commencement of these proceedings. The Respondent says that it has used generic or geographically descriptive terms and never intended to misleadingly divert Internet users or to tarnish the Complainants’ trademarks and that its website makes it very clear to Internet users that it is only a booking service for the individual ferry companies and therefore Internet users are not confused into thinking that they are at the Complainants’ websites.
The Respondent also submits that it was an authorised reseller of the Complainant’s products, that the Complainant was aware of the Respondent’s registration of the Disputed Domain names throughout and that the Complainant never complained in the intervening period and only chose to bring this Complaint some 6 years later. The Respondent says that in summary it does have rights or legitimate interests in the Disputed Domain Names, that it is not a cybersquatter and that accordingly this is an inappropriate forum for the resolution of the Complainant’s dispute.
The Respondent submits that the Complainant has not demonstrated that the Respondent has registered or used the Disputed Domain Names in bad faith. In essence the Respondent says that as an authorised reseller for the Complainant the Disputed Domain Names in fact bring business to the Complainant. It says that there is no confusion both as a consequence of the generic nature of the Disputed Domain Names and because it is clear on the Respondent’s website that it is a reseller of various ferry companies’ tickets.
The Respondent maintains that it did not register the Disputed Domain Names for profit. Firstly, it never approached the Complainant to sell the Disputed Domain Names and secondly, its counter-offer to the Complainant was based on what it perceived to be the proper value of the Disputed Domain Names and it disputes that it ever threatened to sell them to third parties if it did not receive this price. Finally, the Respondent says that it registered and used the Disputed Domain Names for the reasons and consistently with its business strategy and at all times acted in good faith.
The Panel finds, based on the evidence before it, that the Complainant companies and their related subsidiary entities all form part of the same corporate group for the purposes of bringing this Complaint.
The Panel notes that it will accept the supplemental filing of the Complainant.
Under paragraph 4(a)(i) of the Policy, it is enough that a Disputed Domain Name is confusingly similar to a mark in which the Complainant ‘has rights’. The consensus under the Policy is that if a complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights, registered marks being entitled to a presumption of validity (See item 1.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions.).
The Panel finds that the Complainants, or members of their corporate group, own relevant trademark registrations and in particular, Community Trademark registration 4645693 for the word mark CORSICA FERRIES and Community Trademark registration 5358163 for SARDINIA FERRIES. Apart from their domain name root indicators, which are commonly accepted as not being material for the purposes of this analysis, the Disputed Domain Names each differ from the most closely corresponding trademark only by the addition of a hyphen. The Panel therefore finds that each of the Disputed Domain Names is confusingly similar to a word mark registration owned by the Complainants.
Accordingly, the Complainant succeeds in relation to the first element of the Policy.
The second element of the Policy requires that the Panel considers whether the Respondent has no rights or legitimate interests in the Disputed Domain Names. This test focuses on the nature of the Respondent’s interest in the Disputed Domain Names, regardless of the Panel’s finding under the first element that the Complainant has relevant registered trademark rights.
Previous panels have found that where a domain name is a geographic name or is purely descriptive, even where it is part of a registered trademark, then a respondent will have a right or legitimate interest, unless there is evidence that the respondent is targeting the complainant. The panel in Neusiedler Aktiengesellschaft v. Vinyak Kulkarni, WIPO Case No. D2000 -1769 said:
“The trademark- as well as the company name- “Neusiedler” of Complainant cannot grant a right of exclusive use of the geographic term. Geographic names cannot be monopolized by registering a trademark or company name. The use of geographic terms as such in domain names or otherwise by third parties is generally possible despite a trademark registration. The Panel finds that “Neusiedler” is a geographic term. The identical trademark and company name of Complainant does not have an exclusive effect with regard to the use of the geographic term as such in domain names or otherwise by third parties. Thus, Complainant’s trademark or company name does not exclude rights in the Domain Name of Respondent”.
In the instant case the Panel finds that each of the Disputed Domain Names is descriptive of ferry travel to Sardinia or Corsica as the case may be and contains a generic and a geographic element with no more distinctive element. As a consequence, the Respondent cannot be said to have no rights or legitimate interests in the Disputed Domain Names unless it was actively targeting the Complainant in bad faith.
The evidence before the Panel indicates that the Respondent operates a legitimate website for its ferry booking service at <ok-ferry.com> and <ok-ferry.de> which was first aimed at Italian customers and was subsequently expanded to target foreign customers. With this change in approach the Respondent sought to increase its Internet penetration by registering a range of equivalent domain names in English and other languages to the many descriptive domain names that it had first registered in Italian.
The Respondent acted as an authorised reseller or booking agent for the Complainant’s service from as early as 2002 and the Respondent’s evidence suggests that the Complainant gained substantial amounts of its business from this arrangement. Two of the Disputed Domain Names (<corsica-ferries.org> and <sardinia-ferries.com>) were registered in 2004 and yet there is nothing to suggest that prior to bringing this Complaint the Complainant objected to these registrations while still profiting from its business relationship with the Respondent.
Further the Panel does not consider that the Respondent’s conduct in response to the Complainant’s offer to purchase the Disputed Domain Names was in any way illegitimate or indicative of bad faith. Considering the descriptive and generic nature of the Disputed Domain Names and the legitimate basis on which these were registered by the Respondent as set out above, the Respondent was in the Panel’s view entitled to refuse the offer altogether or to seek what it considered to be a proper market value for the Disputed Domain Names.
In all of these circumstances and particularly considering the descriptive nature of the Disputed Domain Names, the beneficial business relationship between the parties over many years and the length of time that elapsed before the Complainant objected to the Respondent’s registration of the Disputed Domain Names, the Panel has considerable difficulty in accepting the Complainant’s submissions that the Respondent actively targeted it. As a consequence the Panel finds that the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the Complaint fails under the second element of the Policy.
Based on its finding under the second element of the Policy there is no requirement for the Panel to make a finding under the third element of the Policy. However, the Panel notes that as described under the second element above it fails to see evidence of the Respondent’s bad faith in circumstances that the Disputed Domain Names are descriptive or generic, that two of the Disputed Domain Names were used by the Respondent, as the Complainant’s authorised reseller, for 6 years without complaint by the Complainant and also in circumstances that the Complainant benefited very substantially from its relationship with the Respondent. It further seems to the Panel that the Complainant’s delay in bringing the Complaint and its failed attempt to purchase the Disputed Domain Names from the Respondent, followed by the filing of this Complaint is at least supportive of the contrived nature of this Complaint and possibly indicates that the Complainant was not very confident of its success in going down this path.
Based on the Complainant’s failure to take the opportunity in its supplementary filing to explain or rebut the Respondent’s evidence, the Panel accepts the Respondent’s evidence in this regard and finds that the Complainant has not demonstrated that the Respondent registered and used the Disputed Domain Names in bad faith.
The Panel notes that previous panels have endorsed the principle of laches (for example The New York Times Company v. Name Administration Inc. (BVI), NAF Case No. FA1009001349045 (November 17, 2010) but except in so far as delay is one of a number of circumstances supporting the Respondent’s case, the Panel makes no finding concerning the application of this doctrine in this case.
Accordingly the Complaint also fails under the third element of the Policy.
For all the foregoing reasons, the Complaint is denied.
The Panel notes the Respondent’s request that it make a finding of reverse domain name hijacking but declines to do so in the unusual circumstances of this case that the Complainant owned trademark registrations which are confusingly similar to purely descriptive or generic domain names. In this case the Panel considers that the Complainant was entitled to argue its claim by commencing these proceedings.
Alistair Payne
Presiding Panelist
Isabelle Leroux
Panelist
The Hon Neil Brown QC
Panelist
Date: December 27, 2010