Globepost Ltd -v- Saico Investments [2003] DRS B5 (12 August 2003)

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4. The Complaint was submitted to Nominet on 17 June 2003. The Complaint was validated on 24 June and was sent by Nominet to the Respondent on that date. Nominet informed the Respondent that it had 15 working days, i.e until 16 July 2003, to respond to the Complaint.

5. By 18 July 2003, no Response having been received from the Respondent, Nominet wrote to the Complainant confirming that no Response had been filed and inviting the Complainant to request an Expert Decision.

6. The Complainant duly paid the fee within the relevant time limit and the matter was duly referred to Nick Rose, the undersigned, (“the Expert”) for an Expert Decision following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

7. I am satisfied that all outstanding procedural issues have been dealt with satisfactorily.

8. Globepost Limited (“Globepost”), the Complainant, is a wholly-owned subsidiary of Lastminute.com Plc. Globepost has specialised in providing travel services, particularly flights, to businesses and travel agents for over 19 years. Globepost operates under the trade mark GLOBEPOST. It is based in London and has long standing relationships with over 90 major airlines, as well as many hotel groups and car hire companies. Globepost operates at a website at www.travelselect.com since 1997.

9. On 26 May 2000 the Respondents registered the Domain Name, globepost.co.uk. There is no evidence filed by the Complainant as to the use made of the Domain Name between the registration date and February 2003.

10. On or about 21 February 2003 the Domain Name was used to direct Internet traffic to the website “Expedia.co.uk” and on or about 4 March 2003 the Domain Name was used to direct Internet traffic to the website First Choice at www.firstchoice.co.uk. Expedia.co.uk is an online travel company which sells holidays, hotels, car hire and other travel products. First Choice is an online travel company that sells holidays and flights.

11. The Complainant contends that the Domain Name is identical or similar to a name or mark in which it has Rights, namely its trade mark GLOBEPOST.

12. The Complainant asserts that the Domain Name in the hands of the Respondent is an Abusive Registration. The Complainant asserts that the Respondent is using the Domain Name in a manner which takes unfair advantage of or is unfairly detrimental to the Rights of Globepost. The Complainant asserts that the Domain Name has been used in a way “….. to confuse people as both Expedia.co.uk and First Choice are in competition with Globepost as well as being in direct competition with its parent company Last Minute.com Plc”.

13. The Complainant also asserts that “in addition, Globepost believes that the pointing of the Domain Name to the competitors of Globepost was done to incite Globepost to make an offer to purchase the Domain Name from the Respondent, thereby preventing the ongoing flow of Internet traffic to Globepost’s competitors, being Expedia.co.uk and First Choice”.
Respondent

15. To succeed in this Complaint, the Complainant must, in accordance with paragraph 2 of the Policy, prove to the Expert on the balance of probabilities that:
(i) it has Rights (as defined in paragraph 1 of the Policy) in respect of the name or mark identical or similar to the Domain Name; and
(ii) the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).

16. The Complainant has registered trade mark rights in GLOBEPOST. The Complainant has also asserted that it has substantial reputation and goodwill in the GLOBEPOST mark and these assertions have not been contradicted by the Respondent.

17. Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:
(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or
(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainants Rights.

18. A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy. The potentially relevant “factors” in this case, are as follows:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name;
(C) primarily for the purpose of unfair disrupting the business of the Complainant.
(ii) Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

19. The Expert will now consider each of these factors in turn.
Unfairly disrupting the Complainant’s business

20. Although the Complainant has not asserted that the Domain Name was registered “primarily for the purpose of unfairly disrupting the business of the Complainant”, the Complainant does allege that the Domain Name has been used in a way to confuse people, and it has been used to direct Internet traffic to the websites of two competitors of the Complainant.

21. The Respondent has not submitted any evidence that it has any rights in or connection with, the trade mark GLOBEPOST in the Domain Name. The Respondent must have realised that using the trade mark GLOBEPOST to direct Internet traffic to the websites, Expedia.co.uk and Firstchoice.co.uk would disrupt the Complainant’s business unfairly.

22. In the absence of any valid explanation from the Respondent the Expert cannot draw the inference that the Domain Name was registered by the Respondent primarily for the purpose of unfairly disrupting the business of the Complainant. However, it has been used to unfairly disrupt the Complainant’s business whatever the Respondent’s intention when he registered it. As paragraph 3 is a non exhaustive list of factors, the Expert finds that this use is evidence of this being an Abusive Registration.

23. The evidence required under paragraph 3.a.ii of the Policy is actual confusion. The Complainant has not filed evidence showing that the Respondent has used the Domain Name in a way which has confused people or businesses.

24. Whether an Expert can rely upon the likelihood of confusion and the potential for disruption or detriment to a Complainant’s business arising out of the use of a Domain Name as being capable of amounting to an Abusive Registration, even though the strict criteria of paragraph 3.a.ii do not in terms apply, has been previously considered in Jackson-Stops and Staff –v- Michael Jackson Stops Fanzine (17/12/2001). In that dispute the appointed Expert concluded that the use of the Domain Name was unfairly detrimental to the Complainant’s Rights, due to the content of the website being such that a person who was not familiar with the Complainant’s business would have an erroneous view of the nature of the Complainant’s business and may desist from any further attempt to find the Complainant’s website. In this case the Expert has reached the same conclusion, and agrees with the conclusion reached by the appointed Expert in that case. The likelihood of confusion and the potential for disruption or detriment to the Complainant’s business arising out of the Respondent’s use of the Domain Name is capable of amounting to an Abusive Registration notwithstanding that the Complainant has shown no actual confusion. It is overwhelmingly likely that there would be confusion because the Domain Name is directed to the website of two competitors of the Complainant and it seems inevitable that the public will believe that there is an economic connection between the Complainant and its competitors Expedia and First Choice. Any Internet browser typing in the Domain Name would be looking for information about the Complainant and, having been directed to the competitor’s website, would be confused into thinking that the Complainant business and that website were connected in some way.

25. It is possible that the Respondent intended to incite the Complainant to make an offer to purchase the Domain Name, when the Respondent used the Domain Name to direct Internet traffic to the websites of two competitors. However, there are also many other explanations for such use of the Domain Name. It is possible that the Respondent has an arrangement with one or other of such competitors and has obtained other financial benefits from such use of the Domain Name. The Expert does not believe that it is of any great value to speculate as to the intentions of the Respondent when making this use of the Domain Name. The Expert concludes that it was unlikely that the primary purpose of making such use of the Domain Name was to incite Globepost to make an offer to purchase the Domain Name. The Expert is not aware that the Respondent has made any approach to the Complainant inviting an offer to purchase the Domain Name.

26. The Expert has also noted that the Respondent has provided no evidence that it has made any genuine attempt to provide goods or services using the Domain Name, other than merely using the Domain Name as a link to divert internet users to other websites.

27. The Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1.ii of the Policy on the basis that it has been used in a manner which was taken unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

28. For the reasons set out above, namely the Complainant has Rights in respect of a name or mark which is similar or identical to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Globepost Ltd -v- Saico Investments [2003] DRS B5 (12 August 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/B5.html Cite as: [2003] DRS B5

Nominet UK Dispute Resolution Service