[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> HotelConnect Ltd v Domain Administration Ltd [2007] DRS 4646 (17 June 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4646.html Cite as: [2007] DRS 4646

[New search] [Printable RTF version] [Help]

 
Nominet UK Dispute Resolution Service DRS 04646 HotelConnect Limited –v- Domain Administration Limited Decision of Independent Expert

1. Parties:

Complainant: HotelConnect Limited

Country UK

Respondent: Domain Administration Limited

Country: NZ

Together "the Parties".

2. Domain Name in dispute:

hotelconect.co.uk
("the Domain Name")

3. Procedural Background:

Summary of DRS activities

24/04/2007 Dispute entered into system

25/04/2007 Complaint hardcopies received in full

25/04/2007 Complaint documents sent to Respondent

21/05/2007 No Response received in time

21/05/2007 "No response" notification sent to Complainant

05/06/2007 Expert decision fees received from Complainant

05/06/2007 Conflict check sent to Iain Tolmie

05/06/2007 Mr Iain M Tolmie selected as Expert

11/06/2007 Procedure §13a Direction by the Expert sent to Complainant (with copy to the Respondent) to be complied with on or by 18^th June 2007.

14/06/2007 Complainant's response to Procedure §13a Direction received.

Appointment of Expert

3.1. On the 5^th June 2007, I (Iain M. Tolmie, the undersigned, "the Expert") was contacted by the Nominet Dispute Resolution Service and I confirmed to them that:

"I am independent of each of the parties. To the best of my knowledge and belief, there are no facts or circumstances, past or present, or that could arise in the foreseeable future, that need be disclosed as they might be of a such a nature as to call in to question my independence in the eyes of one or both of the parties."

3.2. I was appointed as the independent Expert for this Case as from 12^th June 2007 to respond on or before 26^th June 2007, and I signed the necessary declaration of impartiality and independence on 5^th June 2007. The process which I must follow is set out in the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure") and the Dispute Resolution Service Policy ("the Policy"). Both of these documents have been provided to the Parties and are also freely available for consultation, together with advice, on the Nominet UK website (http://www.nominet.org.uk/disputes/drs).

4. Outstanding Formal/Procedural Issues:

Validity of the Complaint

4.1. A representative, an employee of the Domain Name Registrar for the Domain Name, had apparently submitted the Complaint on behalf of the Complainant. The Complaint was signed by the representative and not by the Complainant, hence it was not clear that the Complainant had initiated the Complaint or that the material used in the Complaint was authorised or accurate.

4.2. Using a representative to submit a complaint is quite permissible; some use the services of a solicitor, but there is no requirement to do so.

4.3. In order to establish the authenticity of the Complaint, I requested the DRS to issue the following Direction to the Complainant and its representative, using the powers given in the Procedure §13a:

I am Iain M Tolmie the expert appointed by Nominet in Domain Name Dispute - DRS 04646. I make this Direction under paragraph 13a of the DRS Procedure.

I am not satisfied that the Complaint is valid in its current form, having been created and signed by a person who is not the owner of the Domain Name or a director or responsible officer of the organisation which owns the Domain Name.

Please provide a letter (addressed to the DRS at Nominet) in the following terms on company headed notepaper and signed by a director of the company:

"On behalf of the company I hereby appoint Miss. Prudence Malinki of Safenames Ltd to represent this company in Domain Name Dispute DRS 04646 and I confirm that the contents of the Complaint submitted by her on our behalf to Nominet and the supporting evidence are accurate."

You have five (5) working days in which to do this, if you do not comply I will have to use my powers under paragraph 12b of the DRS Procedure to strike out your Complaint.

This communication is copied to the Respondent for information.

4.4. The required response validating the Complaint was received on 14^th June 2007 and I proceeded with my consideration of the Complaint.

Absence of Response

4.5. The Respondent has not entered a Response. The Respondent accepted the Nominet Dispute Resolution Procedure at the time of the registration of the Domain Name. The Respondent is not obliged to make any formal response and the Procedure does not permit a Decision by default.

4.6. From the records sent to me, I can see that Nominet have taken all necessary steps under the Procedure to contact the Respondent and to allow it to respond to the Complaint. Accordingly I will now proceed to a decision on the Complaint notwithstanding the absence of a Response, as is provided for in the Procedure §15b:

"If in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a Decision on the complaint."

4.7. Furthermore, since I am not aware of any exceptional circumstances in this case, I will act in accordance with the Procedure §15c which provides that:

"If, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure […], the Expert will draw such inferences from the Party's non-compliance as he or she considers appropriate."

5. The Facts:

5.1. I accept the following as facts:

5.2. The Complainant has been a registered UK company since 1993, and has traded under the HotelConnect brand since that date. It holds a European Trademark for the name "HOTELCONNECT" (number 000981761 dated February 8^th 2000) and a European Trademark for the name "hotelconnect" with a graphic representation (number 002379469 dated January 23rd 2003). It also holds a US Service Mark for "HOTELCONNECT" (number 76408417 dated 19^th August 2002).

5.3. The Complainant provides a hotel room booking service and its business revolves around its website, although it also offers a telephone service where required.

5.4. The Respondent has been found to have made Abusive Registrations on a number of occasions in the past.

6. The Parties' Contentions:

Complainant

6.1. I have accepted as fact that the Complainant is an established company specialising in hotel room bookings.

6.2. The Complainant's further submissions (made on its behalf by an authorised representative) were as follows:

6.2.1. 2. As such there has been no established contact between the Respondent and the Complainant concerning the domain names. At no point was the Respondent licensed to or permitted to use the Complainant's service marks or trademarks for the registration of the domain names nor did either party share a relationship that would give rise to such permission. The Respondent has no affiliation with Hotel Connect Ltd.

6.2.2. 3. Domain Name in the hands of the Respondent is abusive because it was:

6.2.3. (a) primarily registered to unfairly disrupt my business because the contents of the websites consist of links for many competitors and organisations that provide a highly similar service to the Complainant. Please find attached a "screen shot" supporting this argument within Exhibit 5. This falls within the scope of paragraph 3(a)(i)(C) of the Policy.

6.2.4. (b) used by the Respondent in a way that which has already confused people into thinking that is was controlled by me, specifically through the means of "typo-squatting". The Respondent has registered the domain names with a deliberate misspelling to use the reputation of the trademark HOTELCONNECT and to illegitimately trade on its fame, for commercial gain and profit. The Respondent is not widely known as either Hotelconect and the web site is currently resolving to a "click through revenue" or "pay-per-click" website. Please find a copy of a "screen shot" for the domain name provided as Exhibit 6. The use of a click through revenue website cannot constitute a genuine offering of goods or services or legitimate non commercial or fair use.

6.2.5. (c) The Claimant have traded under the name HotelConnect for over a decade, and have utilised their trade marks, acquiring goodwill associated with their mark. The Respondent possessed knowledge of HotelConnect's registered rights when registering the domain name hotelconect.co.uk and is involved in providing "initial interest confusion" where they are using the Claimant's trade mark to divert users to Respondent's website. The users may believe that the Respondent's website is affiliated or associated with the Claimant, which it isn't.

6.2.6. (d) The registration of the domain name hotelconect.co.uk by the Respondent is part of a series, pattern or habit of registrations which correspond to trade marks of other well known trade marks, brand names or companies in which the Respondent has no apparent interest, or overt interest. Upon a Search on the Nominet PRSS database provided a list of nearly 4000 domain names registered under .uk suffix by the Respondent. A copy of the results of the database is provided as Exhibit 7. Within this list of registrations include the domain names; Domain Name Trademark European TM Number Googleeart.co.uk GOOGLE 005263868 dineylandparis.co.uk DISNEYLAND 000661025 viginradio.co.uk VIRGINRADIO 003422193 vodadfone.co.uk VODAFONE 000134890 All of these domain names include the misspelling or complete trademark or well-known brands or various organisations. Please find attached copies of Whois results of the aforementioned domains as Exhibit 8. This behaviour by the Respondent falls within the ambit of "Evidence of Abusive Registration" of paragraph 3(a)(iii) of the Policy.

6.2.7. (e) In addition to these arguments the Respondent's registrations fall within the scope of 3(c) of the Policy. The Respondent has amassed a number of Dispute Resolution Cases up against them and has been found to have made an abusive registration on more than 3 occasions. In support of this I a have a copy of the "3 cases Respondent table" as Exhibit 9. This table shows the Respondent to have been involved in a number of cases. In furthers support of this I would like to cite the following cases; DRS 04293 Mattel, Inc. v Domain Administration Limited (2nd February 2007); DRS 04415 Robert Dyas Holdings Limited and Domain Administration Limited (21st March 2007); and DRS 04389 The Electoral Commission v Domain Administration Limited (23rd March 2007). Copies of these cases are provided within Exhibit 10.

Respondent

6.3. The Respondent has not submitted a response in time or at all.

7. Discussion and Findings:

Burden of Proof

7.1. In order for the Complainant to succeed it must (Policy §2) prove to the Expert, on the balance of probabilities, both:

i that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

ii that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

7.2. Rights are defined in the Policy as:

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;

Complainant's Rights

7.3. The Complainant by making its Complaint has agreed to be bound by the Procedure, and its authorised representative has signed a statement of truth in respect of the Complaint and the associated documentation supplied.

7.4. In order to establish that it has Rights, the Complainant relies upon its long-standing registration and operation as a limited company and its registered trademarks: these I have accepted as fact.

7.5. In examining the Domain Name I need to exclude the ".co.uk" suffix (which is generic and is usual to ignore). It is also important to recognise that, in rendering company names into domain names, there are technical restrictions, in particular domain names are usually expressed as lower case letters only.

7.6. The Domain Name (excluding the ".co.uk") is "hotelconect", which I find is similar to the Complainant's business name (HotelConnect), its registered trademarks and its own domain name (hotelconnect.co.uk).

7.7. I therefore find that the Complainant has established to my satisfaction that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

7.8. Having found that the Complainant has established to my satisfaction that it has Rights, I must now examine its allegations of an Abusive Registration by the Respondent.

7.9. An Abusive Registration is defined in the Policy as follows:

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;

7.10. The Complainant has clearly stated that it has no connection with the Respondent and that the respondent is not authorised by the Complainant to make use of its name.

7.11. There is no direct evidence that the Respondent knew of the Claimant at the time it registered the Domain Name, however it is clear from its subsequent use of the Domain Name that it has traded on the confusion between the Domain Name and the name of the Complainant as a basis for obtaining revenue.

7.12. The Respondent has created a website at the Domain Name that offers services which are similar or identical to those of the Complainant and from which the Respondent obtains income from visitors to the website "clicking through" the links on the site to service providers who are in the same or similar markets as the Complainant. I agree with the Complainant that this does not constitute "legitimate non-commercial or fair use of the Domain Name".

7.13. I find that this is "unfairly disrupting the business of the Complainant" in contravention of Policy §3aiC.

7.14. In the absence of any explanation from the Respondent, I will exercise my discretion to draw such inferences as I find appropriate. I can see no rational explanation for the registration of the Domain Name other than that it was a deliberate act intended to mislead Internet users into believing that the Respondent was in some way connected with or authorised by the Complainant, and as a vehicle to create income for the Respondent at the expense of the Complainant. Since the Complainant denies any authorisation of, or connection with the Respondent, and there is no contrary evidence from the Respondent, then I can only draw the conclusion that the registration is abusive.

7.15. I find that the Respondent has used 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", which is in contravention of Policy §3aiii,

7.16. Both of the above breaches on the Policy mean that the Domain Name has been "used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights".

7.17. In addition, the Complainant has produced evidence that the Respondent is in breach of the Policy §3c "There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed. This presumption can be rebutted (see paragraph 4 (c))". In addition to the cases cited by the Complainant, there have been another six such findings since January 2007.

7.18. Hence, in addition to my finding of breaches of the Policy in this case, I find that there is a presumption of Abusive Registration that the Respondent (by his decision not to file a Response) has chosen not to rebut.

7.19. I see no need to examine the remaining parts of the Complaint.

7.20. I therefore find that the Complainant has established to my satisfaction that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

8. Decision:

8.1. For the reasons set out in detail above, I find that the Complainant has established that it has Rights in respect of a name or mark which is identical or similar to the Domain Name and I find that the Domain Name in the hands of the Respondent is an Abusive Registration.

8.2. I therefore determine that the Domain Name should be transferred to the Complainant.

______________________ Dated: 17^th June 2007

Iain M. Tolmie ("the Expert")