1188
NOMINET UK Dispute Resolution Service
DRS 1188
John Catt Educational Ltd -v- Peter Pedrick / The Gapyear Company Limited
Decision of Independent Expert
1. Parties:
Complainant: John Catt Education Limited
Country: GB
Respondent: (1) Peter Pedrick (2) The Gapyear
Company Limited
Country: GB GB
2. Domain Names:
GAP-YEARGUIDEBOOK.CO.UK; GAP-YEARGUIDE.CO.UK
3. Procedural Background:
The Complaint was lodged with Nominet on 26 August 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 1September 2003 and informed the first Respondent that it had 15 days within which to lodge a response.
On 12 September 2003, a response was received from solicitors acting for the first and second Respondents and this was sent to the Complainant’s solicitors.
On 25 September 2003 a reply was received from the Complainant’s solicitors.
Medication was unsuccessful and, on 17 October 2003, the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).
David Flint, the undersigned, (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew 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.
4. Outstanding Formal / Procedural Issues (if any):
On 26 September a letter was received from the Respondents’ solicitors seeking to respond to the Complainant’s reply of 25 September. Whilst there is no requirement under the DRS Procedure for such a letter to be taken into account, the expert may do so. In the circumstances of this case, given that the letter of 26 September deals solely with rebuttal of statements first made in the Complainant’s reply, the Expert has determined not to exclude such letter from his consideration.
5. The Facts:
Complainant:
The Domain Names in issue are GAP-YEARGUIDEBOOK.CO.UK; GAP-YEARGUIDE.CO.UK.
The Complainant was incorporated on 7 January 1972 and is involved with the ownership and management of schools and the publication of various education guides and directories. The Complainant publishes annually “The Gap-Year Guidebook” (ISBN 0-901577-81-2). Peridot Press Limited, whom the Complainant acquired on 31 October 2001, first published this in 1992.
The Complainant also owns and operates a website at the address “www.gap-year.com”. The previous owner of Peridot Press Limited registered this domain name with Internic in 1999.
[The first Respondent] registered the domain names www.gap-yearguide.co.uk and www.gap-yearguidebook.co.uk on 19 June 2003. The addresses do not ling to any active web page. The [first Respondent] is one of the founding members of The Gapyear Company Limited [(the second Respondent)], which was formed in 1998 and, which owns and runs the website www.gapyear.com.
Although the first Respondent’s company operates in the same field as the Complainant, this company has never published travel guides and has never used the name “gap-year guidebook” in any of its activities. Peridot Press Limited and (since 31 October 2001) the Complainant have since 1992 consistently used the name “The Gap-Year Guidebook” as the title for its publication and have acquired substantial reputation in the name “Gap Year Guidebook” through advertising and promotion.
The names “Gap-Year” and “The Gap-Years Guidebook” are linked to each other and to the Complainant through advertising and marketing. The website is advertised in the book and vice versa. The Complainant is well known in the market place because of the hyphenated spelling of Gap-Year for both the website and for the guidebook it publishes. Persons searching for the Complainant’s website or book would be confused by the domain names now registered, as the specific hyphenated spelling is only used by the Complainant in the market place.
The registration of the two domain names by the Respondent is an abusive registration.
The [Respondents are] not using the domain names to operate websites and it is the Complainant’s opinion that the registration has been made for the primary purpose of unfairly disrupting the Complainant’s business and confusing the public who are searching for the Complainant’s book / website so that they may thing that the domain names are operated by the Complainant.
A plan for the Complainant’s website development was being worked on prior to a meeting on 17 June where it was presented. In attendance were senior managers and technical staff. AT this meeting it was agreed in principal to register a list of website domains, these names were on the document enclosed as annex 3. On Friday, 11 July the document was distributed to all personnel (although hard copies were floating around the Complainant’s offices).
Respondent:
The named Respondent is a director of The Gapyear Company Limited (“TGCL”) and registered the Domain Names in the capacity of director and agent on TGCL’s behalf. It is to be inferred from the Complaint that the above facts are accepted by the Complainant. In the circumstances, it is submitted that TGCL is the proper Respondent, or a proper second Respondent, in this matter. Further references to TGCL in this Response should be deemed to include the named Respondent where the context admits.
TGCL is a company registered in England and Wales which was incorporated on 13 July 1998. From that date until its change of name to its current name on 17 July 2002, it was named and traded as The Gap Year Company Limited.
TGCL is, and has been since its inception, in the business of providing information, advice and assistance to individuals seeking to organise their gap year. It offers guidance on a broad range of gap year related matters including travel, finance, work, voluntary activities, sports, subsistence and accommodation. It is an established independent umbrella organisation in the gap year marketplace and an acknowledged market leader. Its co-founder, Tom Griffiths, has been a media spokesman in the field since 1997 and advises several government departments. TGCL’s publication, Gapyear Magazine, has been endorsed by the Independent Schools Council and distributed to every school in the UK since May/June 2000.
A major part of TGCL’s business is, and has at all material times been, the publishing of guide books aimed at the gap year market. In particular, TGCL is the published of the following guide books:-
(a) Before You Go: The Ultimate Guide to Planning Your Gapyear, published since 1997 and;
(b) The Virgin Travellers’ Handbook: The Definitive Guide for Students and Careers Gap Travellers Planning a Gapyear, published since 1999.
TGCL’s guide books are available not only from the company directly but also from retail outlets and online suppliers such as Amazon.com. Prints of the relevant pages from Amazon.com appear as Annex 1 hereto. TGCL’s publications are established and well known guide books in the gap year market.
TGCL operates a website at http://www.gapyear.com where its activities, services and products, including the guide books referred to above, are promoted. One of the items featured on the website page is entitled “Gapyear Guides”, which connects to ten individual guides on topics including travel, budgeting and insurance.
Since July 2000, TGCL has built a portfolio of internet domain names corresponding to its name, trading activities and market sectors. It holds a portfolio of some 155 domain names commencing “gap*”, “gapyear*”, “gap-year*”, “gy*” and “thegap*”. Examples of these names include:-
<gapyearadvice.co.uk>
<gapcookbook.com>
<gapyearcreditcard.co.uk>
<gap-yearbank.co.uk> (registered in September 2000)
<gapyearski.com>
The completion of relevant domain names in this manner is a normal and wholly legitimate activity for any business concerned to build and protect a portfolio of relevant intellectual property rights. TGCL intends to use the domain names as it may consider appropriate in the future in conjunction with the development and expansion of its business, range of services and methods of service delivery. The Domain Names were legitimately registered by TGCL in June 2003 in accordance with its policy referred to above.
TGCL registered the domain names <gap-year.net> and <gap-year.org> as early as July 2000. At no time has it been contended by the Complainant (or its predecessor) that these registrations were anything other than legitimate.
6. The Parties’ Contentions:
Complainant:
The substance of each Complaint is short and reads as follows:-
The Domain Name in dispute is identical or similar to a name or mark in which the Complainant has Rights.
The Complainant confirms that the Domain Name in the hands of the Respondent is an Abusive Registration.
Respondent:
The Respondents submit that the Complainant has failed to make out either limb of the test set out in paragraph 2 of the Policy, namely, that the Complainant has Rights in either of the Domain Names or that either of the Domain Names is, in the hands of the Respondents, an abusive registration.
The Respondents therefore respectfully submit that the complain should be dismissed.
7. Discussion and Findings:
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant’s Rights
In this case the first limb of that task is straightforward. The Complainant is the proprietor of rights in the name Gap-Year. The Domain Names comprise the name Gap-Year together with “Guidebook” or “Guide” combined with the suffix <.co.uk>.
In assessing whether or not a name or mark is identified or similar to a domain name, it is appropriate to discount the domain suffix, which is of no relevant significance and wholly generic.
In the opinion of the expert, the words “Gap Year” and “Gap-Year” are to be treated as interchangeable for the purpose of identifying rights. Indeed, although the Complainant makes great play in its complaint of its hyphenated use of the words, it itself refers to the Complainant having “substantial reputation in the name “Gap Year Guidebook” – i.e. without the hyphen. In the expert’s opinion, if the Complainant does not make the differential in presentation, users should not do otherwise.
The Complainant has produced evidence of substantial use of, and thereby, substantial goodwill in, the name “Gap-Year Guidebook” (or “Gap Year Guidebook”) as evidenced by its marketing activities and book publishing.
Accordingly, the Expert finds that the Complainant has rights in respect of a name or mark which is identical or similar to each Domain Name.
Abusive Registration
This leaves the second limb. Is the Domain Name, in the hands of the Respondent, and 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 is set out in paragraph 3a of the Policy.
The only potentially relevant “factors” in paragraph 3a are to be found in sub-paragraphs i and ii, which read as follows:-
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.
The Expert interprets “as” in sub-paragraph i. B as being synonymous with “for the purpose of”. Were it to be interpreted otherwise, all domain name registrations would inevitably constitute “blocking registrations” for any later arrival wishing to use the name in question.
There are no circumstances or evidence in this case to suggest that either Domain Name was obtained as a blocking registration. The fact that the Domain Name does not appear to have been sued does not indicated that at the time it was acquired it was obtained as a blocking registration (or that the Domain Name is an Abusive Registration) – Policy, paragraph 3(b).
Accordingly, the Expert finds that neither Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was not registered in a manner which, at the time when the relevant registration took place, took unfair advantage of the Complainant’s rights.
8. Decision:
In light of the foregoing findings, namely that, in each case, the Domain Name is not an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was not registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant’s rights, the Expert refuses the request for transfer of Domain Names Gap-yearguidebook.co.uk and gap-yearguide.co.uk.
David Flint
Date: 6 November 2003