1009
Nominet UK Dispute Resolution Service
DRS 01009
HUMBERSIDE INTERNATIONAL AIRPORT LIMITED v. LINCOLNSHIRE TRADING COMPANY LIMITED
Decision of Independent Expert
1. Parties:
Complainant: Humberside International Airport Limited
Country: GB
Represented by: Irwin Mitchell, Solicitors of Leeds
Respondent: Lincolnshire Trading Company Limited
Country: GB
2. Domain Names:
humbersideairport.co.uk; humbersideinternationalairport.co.uk (“the Domain Names”)
3. Procedural Background:
The complaint was received by Nominet in full with hardcopies on 21 May, 2003. Nominet validated the complaint and informed the Respondent, by both letter and by e-mail (which was bounced as “host unknown”) on 23 May, 2003, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 17 June, 2003) to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 19 June, 2003, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly paid on 30 June, 2003 and received by Nominet 2 July, 2003.
On 2 July, 2003, Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, 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, Nominet duly appointed the undersigned as Expert on the 3 July, 2003.
4. Outstanding Formal/Procedural Issues (if any):
None.
5. The Facts:
The Complainant was evidently incorporated in its present name in 1987. It operates the Humberside International Airport and has an established web site at www.humberside-airport.co.uk (the domain name humberside-airport.co.uk was registered to Humberside International Airport Limited on 6 April, 1998). It appears that the Complainant has no UK trade mark registrations itself for the names Humberside Airport or Humberside International Airport.
The Respondent, Lincolnshire Trading Company Limited, was incorporated on 26 March, 1998.
From the WHOIS records, the Domain Names humbersideairport.co.uk and humbersideinternationalairport.co.uk were registered for Lincolnshire Trading Company Ltd. Trading As “Lincolnshire Trading Company Ltd” on , 10 March, 2000 and 31 March, 2000 respectively, with the Registrant’s Address as indicated for the Respondent above.
6. The Parties’ Contentions:
Complainant:
The Complainant has asserted that, for each Domain Name at issue:
i) The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and
ii) The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).
In support of its case, the Complainant submits that:
1. The Complainant is, and has at all material times been, the sole owner of the reputation and valuable goodwill associated with the marks "HUMBERSIDE AIRPORT" and “HUMBERSIDE INTERNATIONAL AIRPORT” ("the Marks"). The domain names www.humbersideairport.co.uk and www.humbersideinternationalairport.co.uk ("the Domain Names") have been acquired by Lincolnshire Trading Company Limited ("the Respondent") in direct infringement of rights in the goodwill and reputation attaching to the Marks and belonging to the Complainant.
2. The Complainant has accrued a substantial reputation and valuable goodwill in the UK (and internationally) associated with the Marks by offering air transport and associated services under and in relation to the Marks and each of them. Particulars Financial year Number of Passengers 1996/97 288,480 1997/98 339,735 1998/99 362,447 1999/00 436,030 2000/01 456,692 2001/02 440,126 2002/03 502,691
3. Further, the Complainant's business has been extensively advertised and promoted under the Marks and each of them by or on behalf of the Complainant. Particulars In the last 3 years, the Complainant has spent approximately half a million pounds on advertising/marketing/promotional activities, including (approx) £166,000 on radio, outdoor, newspaper and magazine advertisements, £200,000 on direct mail and printed materials and £130,000 on trade activity/promotion.
4. In the premises the Marks have acquired a valuable goodwill and reputation in the UK and internationally. The Marks and associated goodwill have come to be associated with the Complainant and no other. The Complainant is the owner, and has exclusive rights to, the reputation and valuable goodwill associated with the Marks and any similar marks.
5. The Domain Names were registered by the Respondent with EasySpace Limited: (i) on 10 March 2000 for the Domain Name www.humbersideairport.co.uk; and (ii) on 31 March 2000 for the Domain Name www.humbersideinternationalairport.co.uk. The Respondent does not have any bona fide interest in, or association with, the Marks or either of them. The Domain Names do not have associated with them any active website. The Domain Names are identical or similar to the Marks and each of them.
6. The Domain Names are, and/or may in future be used as, a representation to the public that the Domain Names are owned, operated, approved by or otherwise connected with the Complainant. Further or in the alternative, the Domain Names may in future be used to represent that the Respondent's business is that of the Complainant or is owned or otherwise associated with the Complainant. Such representations are false and are likely to cause confusion and deception amongst the public. By reason of such representations, the Claimant's have and/or may in future suffer loss and damage.
7. In the premises, and at the time of registration and all material times since, the Domain Names and each of them: (i) take unfair advantage of the Complainant's valuable goodwill and reputation in the Marks and each of them; and/or (ii) are unfairly detrimental to the Complainant's valuable goodwill and reputation in the Marks and each of them.
8. Further, the registration by the Respondent of the Domain Names amounts to an Abusive Registration for the following reasons: (i) Respondent registered the Domain Names with the sole or primary purpose of selling the Domain Names to the Complainant for monies in excess of the Respondent's out of pocket expenses. Correspondence between the Respondent’s representatives and the Complainant’s representatives [annexed as appendices to the hardcopy Complaint] demonstrates the bad faith and intentions of the Respondent in obtaining the Domain Names. (ii) The Respondent has engaged in a pattern of making abusive registrations as evidenced by its wrongful registration of the domain names www.humbersideairport.com on 10 March 2000 and of www.humbersideinternationalairport.com on 25 November 2002. The latter domain name was registered by the Respondent after being informed of the Complainant’s rights. Particulars (i) Letter from Metcalfe Copeman & Pettefar Solicitors on behalf of the Respondent dated 13 November 2003. Letter contains a demand for £2000 for transfer of the Domain Names. (ii) Letter from Metcalfe Copeman & Pettefar Solicitors on behalf of the Respondent dated 26 November 2003. Letter contains a demand for £2000 for transfer of the Domain Names and informs of Respondent’s purchase of www.humbersideinternationalairport.com; (iii) Letter from Metcalfe Copeman & Pettefar Solicitors on behalf of the Respondent dated 18 December 2003. Letter contains a demand for £4000 for transfer of the Domain Names.
9. Further or in the alternative, the Respondent registered the Domain Names with the sole or primary purpose of the same being a blocking registration against the Complainant’s rights in the valuable goodwill and reputation associated with the Marks and each of them. Paragraphs 2 to 6 herein are repeated.
10. Further or in the alternative, the Respondent registered the Domain Names with the sole or primary purpose of unfairly disrupting the Complainant’s business. Paragraphs 2 to 6 herein are repeated. The Domain Names may be used to divert business from the Complainant and/or by wrongfully holding the Domain Names the Respondent is preventing the Complainant expanding into internet-based trading and promotion.
RELIEF SOUGHT
1. Paragraphs 8 and 9 above are repeated. By reason of the same the Domain Names, and each of them: (i) are identical or similar to a mark in which the Complainant has rights; and/or (ii) in the hands of the Respondent are Abusive Registrations within the meaning of Nominet’s Dispute Resolution Policy. The Complainant therefore requests that the Domain Names be transferred to the Complainant.
2. Costs on an indemnity basis to be paid to the Complainant by the Respondent.
3. Interest on any sums due.
Respondent:
The Respondent made no Response to, and raised no challenge to, any of the facts and evidence submitted by the Complainant.
7. Discussion and Findings:
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to each Domain Name at issue; and that each Domain Name in this case, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
Complainant’s Rights
The Complainant in this case has asserted that it has rights in the names and marks HUMBERSIDE AIRPORT and HUMBERSIDE INTERNATIONAL AIRPORT and that these names are each identical or similar to the Domain Names at issue.
The Complainant has no trade mark registration for HUMBERSIDE AIRPORT or for HUMBERSIDE INTERNATIONAL AIRPORT itself.
However, as the Complainant has stated, it is clear that it has used the HUMBERSIDE INTERNATIONAL AIRPORT name at least since 1987 in general and it has provided commercial figures as evidence of the extent of that use since at least 1996/97. It has also evidently used the name “HUMBERSIDE AIRPORT” in relation to the internet (e.g. by use of its domain name Humberside-airport.co.uk” since at least 1998. Its name is used directly in relation to its airport services and on its website. It is apparent that such use predates the registration of the Domain Names at issue by the Respondent.
The Respondent has not challenged any of the submissions made by the Complainant regarding the Complainants rights and reputation in the names HUMBERSIDE AIRPORT and HUMBERSIDE INTERNATIONAL AIRPORT. In the Expert’s view, in these circumstances, the Complainant’s submissions are sufficient to establish a basic claim to the existence of common law rights in the name HUMBERSIDE INTERNATIONAL AIRPORT as a company name and as an unregistered trade mark, and in HUMBERSIDE AIRPORT as an unregistered trade mark through its use on the company’s website, and otherwise.
Accordingly, for the purposes of the Policy, the Expert concludes that the Complainant does have Rights in this case in respect of names or marks, which are similar to each of the Domain Names at issue in this case.
Abusive Registration
The Complainant also has to show that each Domain Name is an Abusive Registration. 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 Complainant’s Rights.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. 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;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly 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;
iii. In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or
iv. It is independently verified that the Respondent has given false contact details to [Nominet].
Paragraph 3b of the Policy states expressly that:
Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.
However, ultimately, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.
The evidence in this case, which has not been contradicted directly by the Respondent, suggests that the Respondent knowingly took the Complainant’s name(s) and registered them in the Domain Names in anticipation and expectation that it might eventually make a profit out of selling them back to the Complainant.
The Complainant would indeed appear to have some grounds for asserting that the Respondent’s actions amount to passing-off and that the Domain Names might each be used as an “instrument of fraud”, as contemplated by the Court of Appeal in its judgment in the “One In A Million” case (British Telecommunications plc & Others v. One In A Million Limited & Others, [1999] FSR 1), although in the Expert’s view the Court’s conclusions in that case were applied to marks which were “household names”. HUMBERSIDE AIRPORT and HUMBERSIDE INTERNATIONAL AIRPORT might arguably not qualify in that respect.
However, the Respondent has plainly acted to misappropriate the Complainant’s property – their goodwill in the names in this case – and having registered those names in the Domain Names has sought to extract disproportionate recompense from, and to take unfair advantage of, the Complainant’s established rights and reputation in the names.
It is to be observed that the correspondence between the parties respective solicitors, which was annexed in support of the Complaint in this case, might ordinarily be considered privileged, at least in part. The initial substantive response from the Respondent’s solicitors, for example, was expressly marked “without prejudice”. The DRS, as a private administrative proceeding, does not necessarily exclude consideration of such correspondence. Nonetheless, in the present Expert’s view, as previously expressed in the concluding observations in the Decision in DRS Case 00058 [nokiaringtones.co.uk], and for the same reasons as would apply in Court proceedings, caution should be shown in considering evidence which might otherwise be privileged in Court proceedings.
In WH Smith Ltd v. Peter Colman [2001] FSR 9, the Court of Appeal, considering the circumstances in which "without prejudice" privilege might be waived, held specifically that:
"To fall outside the protection of the "without prejudice" rule, [a] communication had to disclose "unambiguous impropriety". Other Experts have suggested that a less restrictive approach may be justified in DRS proceedings.
However, in the present case, the Expert is satisfied that the letter sent on behalf of the Respondent, dated 26 November, 2002, in particular, provides evidence of ample impropriety by the Respondent to justify its consideration.
In this letter, the Respondent’s solicitors stated:
“…Our client, yesterday, carried out a search to find out what domain names were registered to your client. It was astonished to discover that humbersideinternationalairport.com was for sale on the internet. Accordingly, to safeguard your client’s interests, it purchased that domain name…”
The letter concluded:
“…Our client is willing to transfer all four names to your client for the same sum as previously offered, namely £2,000. Given what has transpired it considers that offer more than reasonable.”
The Respondent’s actions in this respect are surely breathtaking in their presumptuousness, or stupidity. Knowing that the Complainant had objected to the Respondent’s opportunistic (mis)appropriation of its name and marks in the Domain Names “humbersideairport.co.uk” and “humbersideinternationalairport.co.uk”, and also having previously registered the domain name “humbersideairport.com” (the WHOIS record shows this was done on 10 March, 2000, which was the same day the Respondent registered “humbersideairport.co.uk”), and knowing that it had no authority whatsoever to act for the Complainant, it proceeded to register the domain name “humbersideinternationalairport.com” as well (the WHOIS record shows this was done in the Respondent’s name, and not in the Complainant’s name), and then had the brazen effrontery to present this as safeguarding the Complainant’s interests. The Expert notes that the WHOIS record for “humbersideinternationalairport.com” shows that this domain name was created on 25 November, 2002 (the day before the Respondent’s solicitor’s letter) and so the Expert believes that it is likely that the statement that this domain name was “for sale” (impliedly by some undisclosed third party) at that time is another misrepresentation. The reality is most probably that this domain name was not previously registered, and that the Respondent itself caused it to be registered in the expectation that it might strengthen its perceived bargaining position with the Complainant.
The Expert also considers that the Respondent’s demand for £2,000 is indeed “more than reasonable”, but not in the sense apparently intended by the Respondent’s solicitors. Rather, it is support for the contention that the Respondent did clearly register the Domain Names in this case “primarily for the purposes of selling, renting or otherwise transferring the Domain Name(s) 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 evidence further supports the conclusion that the Respondent “is engaged in a pattern of making Abusive Registrations” – and that it is reasonable to conclude that registration of the two Domain Names directly at issue amounts to a sufficient “pattern” in this case.
Consequently, the Expert concludes that the Domain Names have each manifestly been 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, and that each is an Abusive Registration for the purposes of the Policy.
8. Decision:
Having concluded that the Complainant has Rights in respect of names or marks which are similar to each of the Domain Names and that each Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert determines that the Domain Names, humbersideairport.co.uk and humbersideinternationalairport.co.uk, should both be transferred to the Complainant as requested.
With respect to the Complainant’s second and third requests for relief in terms of payment of indemnity costs and interest, the Expert notes that the Policy (Paragraph 10) provides only for implementation of a Decision “that a Domain Name should be cancelled, suspended, transferred or otherwise amended”. There is no provision for making or enforcing any Decision beyond this. Consequently, the Expert declines the Complainant’s requests for additional relief beyond transfer of the Domain Names as above.
Keith Gymer
Date: 10 July 2003