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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Med Playa Management SL v Armstrong [2007] DRS 3974 (15 January 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/3974.html Cite as: [2007] DRS 3974

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Nominet UK Dispute Resolution Service DRS Number 03974 Med Playa Management, S.L and Mr Jack Armstrong Decision of Independent Expert
1. Parties:

Complainant: Med Playa Management, S.L.

Country: Spain

Respondent: Mr Jack Armstrong

Country: GB

2. Domain Name:

riopark.co.uk

3. Procedural Background:

The complaint was filed with Nominet on 07/09/2006 and hardcopies received on 13/09/2006. An electronic Response was received on 09/10/2006 with the hard copy annexes received on 16/10/2006. A Reply was made by the Complainant on 24/10/2006. However, the hard copy of the Reply was not received until 27/10/2006, beyond the 5 day deadline of 25/10/2006. Mediation failed to resolve the dispute and the Complainant paid the fee for a determination by an Expert. On 22/12/2006 Mr. Chris Tulley was selected as the Expert.

4. Outstanding Formal/Procedural Issues (if any):

The only procedural issue relates to the filing of the Complainant's Reply. Although the electronic version was filed within the deadline, the hard copy was two days late. I have a discretion whether or not to accept it. The Reply did not include any additional documents and the electronic version was received within the time limit and sent to the Respondent on 24/10/2006. No detriment has been suffered by the Respondent by the fact that the hard copy of the Reply, which had to be sent from Spain, was a couple of days late. It added nothing to the electronic version that had already been received. In the circumstances I will allow the Reply to stand and take it into account, so far as it is relevant.

5. The Facts:

The Domain Name was registered by the Respondent on 5 January 2006. So far, its only use seems to have been to resolve to a website holding page hosted by "123-reg", a registration agent and domain name business used by the Respondent to register the Domain Name. Apart from advertising the services of 123-reg, the webpage also contains a search engine facility and some links to other websites or website links grouped under various headings and sub-headings.

At the time of the Complaint, there were six headings each with various sub-headings as shown by the printouts exhibited by the Complainant. Four of the headings were the names of models of Kia motor car with sub-headings relevant to those cars. One of the headings was "Vacation" with sub-headings of Cruise; Hotel; Cheap Flight; Travel Agent; and Golf Vacations. The last heading was "Technology" with sub-headings of Digital Camera; Plasma Television; Mobile Phones; Laptop; and Web Hosting.

The Complainant points to the "Hotel" sub-heading in support of its case. That is because the Complainant operates a number of hotels in Spain, including one called "Rio Park" in Benidorm. That hotel has been open since 1971. The Benidorm area, and it seems the Rio Park hotel, is popular with English holiday makers and tourists.

There is also a golf and apartment/villa resort called "Gran Mirador" situated in Rio Park, Muchamiel, Alicante. This is only 23 miles from the Rio Park hotel in Benidorm. It is not in any way related to the Complainant's business.

6. The Parties' Contentions:

Complainant:

In summary the Complainant says that:

•    The Complainant is a Spanish company that manages a chain of twelve hotels in Spain, including the "Rio Park" hotel in Benidorm which was opened in 1971.

•    The Complainant owns two Spanish trade mark registrations, namely RIO PARK MED PLAYA HOTEL registered on 1 September 1991 and covering "Providing of food and drink; temporary accommodation"; and RIO-PARK registered on 1 July 2005 covering various goods and services including "Restaurant services (food); temporary accommodation".

•    The Complainant also has a pending application for a Community trade mark for RIO-PARK, filed on 31 July 2006, and again covering various goods and services including "Restaurant services (food); temporary accommodation".

•    The Complainant started advertising its hotels on the internet in 1997 via its website at www.medplaya.com. It recently decided to develop individual websites for each of its hotels using co.uk domain names to focus on UK travellers which are the most frequent visitor. It then discovered that the Domain Name had already been registered by the Respondent.

•    The Respondent has no relationship with or permission from the Complainant to use its trade marks registrations or anything confusingly similar.

•    The Respondent has never had any evident connection to the temporary accommodation, hotel or restaurant services industries.

•    The Respondent has not been and is not currently commonly known by the name Rio Park nor has he acquired any trade mark rights in the name.

•    The Domain Name in the hands of Respondent is abusive because:

The Domain Name was primarily registered to stop the Complainant registering it.

The Domain Name is re-directed to a website which shows general categories e.g. "Vacation" and specific categories e.g. "Hotels". It says that this proves that when registering the disputed Domain Name the Respondent was aware of the Complainant's chain of hotels and of the Hotel Rio Park otherwise he would have never chosen "Hotels" as a specific category.

The Domain Name was primarily registered to unfairly disrupt the Complainant's business.

The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.

The Respondent does not make any legitimate non-commercial or fair use of the Domain Name.

The Respondent unfairly trades on the Complainant's name for commercial gain by misleadingly consumers by using the Domain Name for a website that includes a search engine and links that include an "hotels" category. This, as in the WIPO decision in Societé des Hôtels Méridien v Hank, shows that the Respondent's motivation was to divert the Complainant's customers to the Respondent's website for the purpose of gaining profit by exploiting typical Internet economies, such as number of "hits" or "eyeballs".

The Domain Name was primarily registered for the purposes of selling, renting or otherwise transferring it to Complainant or its competitor at a price greater than his costs. The Complainant says that the Domain Name has not been and is not used by the Respondent for website nor e-mail purposes and this indicates that the Respondent's main interest is transferring it.

The Domain Name was registered with incorrect address and/or registrant type.

It can be inferred that the Respondent registered the Domain Name for a purpose that was abusive as in Chivas Bros. Ltd –v- D. W. Plenderleith, DRS 00658.

Respondent:

In summary the Respondent says that:

•    It is pure coincidence that the Domain Name redirects to a website showing general categories which include hotels, among many other things.

•    He had no knowledge of the Complainant's hotels until he received this Complaint.

•    He did not register the Domain Name for any purpose other than his own private requirements.

•    The Domain Name is dormant.

•    The Complainant may have found another Jack Armstrong living 300 miles away and there will be many more Jack Armstrongs that are also not the Respondent.

•    Just over 3 years ago he purchased two apartments, off plan, near Muchamiel, Alicante in Spain to be used both privately and commercially. To enhance the commercial possibilities he purchased several domain names intending to build a website.

•    The development can be seen on www.sanjuanurbana.com and several names were being used to describe the development, including Gran Mirador and Rio Park. In addition to the Domain Name he also purchased golfgranmirador.co.uk, rioparkgolf.com, golfriopark.co.uk, golfriopark.com, and rioparkgolf.co.uk.

•    The reason his plans to promote the properties have not matured is because he has not taken possession of the apartments due to a dispute with the developer which is ongoing.

•    He has no interest in the hotel or catering trade, either now or in the past.

7. Discussion and Findings:

General

In order to succeed the Complainant must prove, on the balance of probabilities, two matters, i.e. that:

8. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
9. The Domain Name, in the hands of the Respondent, is an Abusive Registration.

These terms are defined in the Nominet DRS Policy as follows:

•    Rights includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business.

•    Abusive Registration means 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 Complainant's Rights.

Complainant's Rights

The Complainant has two Spanish trade marks (for RIO PARK MED PLAYA HOTEL and RIO-PARK) and a pending application for a Community trade mark for RIO-PARK. The Community trade mark application has not yet been granted and as such gives no registered trade mark rights that apply to the UK. It might be questioned whether the Complainant's national Spanish trade mark registrations count as "Rights" for the purposes of the Nominet DRS, although I note that the definition of Rights specifically is not limited to rights enforceable under English law.

However, and in any event, the Complainant has also provided other evidence of its reputation and goodwill in the UK in relation to its Rio Park hotel in Benidorm. Spain is a popular destination for UK holiday makers and tourists and the Complainant exhibits pages from its website advertising the Rio Park hotel. Those pages are in English not Spanish. The hotel has been open since 1971 and has an average of 45,000 customers from the UK each year staying at the hotel, which is more than from any other country. The Complainant also exhibits pages from the tripadvsior.com website of reviews of the Rio Park hotel posted by UK visitors.

In the circumstances I find that the Complainant does have Rights in the name "Rio Park" being a name or mark which is identical to the Domain Name, ignoring the .co.uk suffix.

Abusive Registration

From the matters relied on by the parties in their submissions the following parts of paragraph 3 and 4 of the Policy (being factors which, respectively, may be evidence that the Domain Name is or is not an Abusive Registration) are potentially relevant:

Paragraph 3 a. i. A "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

The Complainant relies here on its contention that the Domain Name "has not been and is not used by the Respondent for website or e-mail purposes". Whilst it acknowledged that such lack of use is not of itself necessarily evidence of an Abusive Registration, it says that "it seems clear" on the balance of probabilities that the Respondent's main interest is transferring it.

I find the logic of the Complainant difficult to follow. Its starting point that the Domain Name has not been used flies in the face of its other arguments based on the contention that it has been and is being used unfairly. This was reinforced by the Complainant in its Reply in answer to the Respondent's claim that the Domain Name was dormant.

I can see no basis for concluding that that the Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, whether or not for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name.

Paragraph 3 a. i. B "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights;"

Paragraph 3 a. i. C "Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant."

Paragraph 3 a. 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."

Paragraph 4 a i A "Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;"

Paragraph 4 a i B "Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;"

At the heart of the Complainant's case is the fact that the holding website to which the Domain Name resolves has a search engine and links that include an "hotels" category. However, this was just one of a number of diverse categories. The Respondent says it is coincidence, but the Complainant does not accept that and says that in any event someone is choosing those categories and making money from "hits" or "eyeballs" and the Respondent is at least indirectly responsible for it. I have no doubt that a domain name that resolves to a holding website that advertises a domain name agent's business and includes a search engine facility and various categories of links is not dormant and is being used, and used commercially.

However, whilst the holding website to which the Domain Name resolves has links that include an "hotels" category this is just one amongst a number of diverse categories. On its own, and without more, I do not believe it justifies the conclusion that it is being used abusively, particularly if the Respondent puts forward a credible explanation for having registered the Domain Name. It may well be different if all, or at least a substantial proportion of the categories of links were related to hotels. In that scenario, a claim of coincidence may start to ring rather hollow. But that is not the case here. "Hotels" was just one of the sub-headings of one of the six categories. By far the majority of the category links related to Kia motor cars and were nothing to do with the Complainant's line of business.

The Respondent says he had never heard of the Respondent's hotel before receiving the complaint but the Complainant believes that the Respondent must have known of its Rio Park hotel in Benidorm when choosing to register the Domain Name. The Complainant's hotel Rio Park does appear to enjoy a good reputation in the UK, and Spain is a very popular holiday destination for the UK public. However, that does not mean that everyone, or even most people in the UK in general and the Respondent in particular, will be aware of the hotel Rio Park in Benidorm.

The Complainant also relies on the fact that the website has a search engine facility. It has exhibited the results of searches for "Rio Park", "RioPark" and "Rio Park Hotel". The Complainant says the results are "sponsored links" but it is not clear from the exhibited results if they are sponsored or non-sponsored links. Each one produces links to the same 10 websites under the heading "Related Links". Two of the links (number 1 and number 7) refer to the Complainant's Rio Park hotel. Number 6 is in Spanish but appears to relate to an apartment/chalet in the Rio Park/Muchamiel area of Alicante.

I do not believe this evidence assists the Complainant. The fact that the website to which the Domain Name resolves has a search engine facility that can be used to search for "Rio Park" or "Rio Park Hotel" does not make the Domain Name an Abusive Registration. The search facility on the website, like any other search engine, can be used to search for anything. It would be surprising if it did not locate any references to the Complainant's hotel when searching for "Rio Park" or "Rio Park Hotel". I used it to search against my name "Chris Tulley" and it came up with links to 10 different websites under the heading "Related Links", the first of which was a link to my profile on the Experts section of Nominet's website. That is not a sponsored link.

The Complainant relies on the Nominet Expert's decision in Chivas Bros. Ltd –v- D. W. Plenderleith, DRS 00658, which suggested a 4 part test which the Complainant says can be usefully applied here i.e. where a Respondent registers a Domain Name: 1) identical to a name in respect of which a Complainant has rights; 2) that name is exclusively referable to the Complainant; 3) there is no obvious justification for the Respondent having adopted that name; and 4) the Respondent has come forward with no explanation for having selected the Domain Name, it will ordinarily be reasonable to infer that the Respondent registered the Domain Name for a purpose and that that purpose was abusive.

However, this does not assist the Complainant in this case. The name Rio Park is not exclusively referable to the Complainant. It appears also to be the name of a locality in Spain that is only 23 miles from the Complainant's hotel Rio Park in Benidorm. In addition, the Respondent has put forward an explanation for having adopted the name. He points out that when registering the Domain Name he was is in the process of purchasing two apartments at the golf and apartment/villa resort called "Gran Mirador" situated in Rio Park, Muchamiel, Alicante. He exhibits the back cover of the developer's brochure that shows a map of the location with the legend "Entrada Entrance Gran Mirador/Rio Park".

The Complainant points out in its Reply that the Respondent is not the developer of the resort but I cannot see that this is in anyway decisive of whether or not the Respondent has a legitimate reason for registering and/or using the Domain Name. The Respondent says he was intending to use the apartments both for private and for commercial use. He would usually be perfectly entitled to have a website to advertise his apartments to rent, whether or not he was the developer of the resort or otherwise connected to the developer's business. The Respondent points out that he also registered other domain names at the same time which all relate to this resort, and not to the Complainant's hotel.

The Respondent has put forward a credible explanation for having registered the Domain Name. It may or may not be the case that its subsequent intended use to advertise apartments at the Gran Mirador resort in Rio Park, Muchamiel, Alicante would infringe either of the Complainant's Spanish trade mark registrations for RIO PARK MED PLAYA HOTEL and RIO-PARK, or its Community trade mark for RIO-PARK should it ever be granted. That may well depend upon exactly how it was used and the particular content of the website, but in any event I do not believe that the Nominet DRS is an appropriate forum to attempt to decide such an issue.

On the evidence before me I am not persuaded, on the balance of probabilities, that the Respondent had registered or otherwise acquired the Domain Name primarily as a blocking registration against a name or mark in which the Complainant has Rights nor that he had registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant. Further, on the evidence before me I am not persuaded, on the balance of probabilities, 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, or otherwise has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

Paragraph 3 a. iv. "It is independently verified that the Respondent has given false contact details to Nominet UK".

The Complainant exhibits a Companies House search for a company called "Jack Armstrong & Co Limited" with a registered offices at 61 London Road, Maidstone, Kent ME16 8TX (Company No. 02777353). The Complainant points out that this is not the address provided by the Respondent when registering the Domain Name. The Respondent answers this by pointing out that "Jack Armstrong" is a very common name and that the company the Complainant identified is not him.

I do not believe anything turns on this point. The Complainant acknowledges that it could be that the Respondent was registered wrongly as a "UK Entity" rather than as an individual and that is what appears to have happened here. In any event, it is incorrect contact details that are potentially relevant not an incorrect "Registrant Type" and there is nothing to indicate that the Respondent's contact details were incorrect. On the contrary, those contact details were used to inform the Respondent of the Complainant's complaint which appears to have reached him without any problem.

10. Decision:

For the reasons outlined above I find that the Complainant has proved, on the balance of probabilities, that it has Rights in respect of the name Rio Park, being a name or mark which is identical or similar to the Domain Name.

However, for the reasons outlined above I find that the Complainant has not proved, on the balance of probabilities, that the Domain Name 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 that it has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

Therefore, I find that the Domain Name, in the hands of the Respondent, is not an Abusive Registration.

In the circumstances I order that the Domain Name should not be transferred to the Complainant.

Chris Tulley

15 January 2007