Nominet UK Dispute Resolution Service

 
Nominet UK Dispute Resolution Service DRS 02352 Hayes & Jarvis (Travel) Limited –v– M Strong (trading as Fuz Pty Ltd) Decision of Independent Expert
1. Parties

Complainant:

Hayes & Jarvis (Travel) Limited

Respondent:

M Strong (trading as Fuz Pty Ltd)

Australia

2. Domain Name

HAYSANDJARVIS.CO.UK

3. Procedural Background

A Complaint in respect of (the "Domain Name") under Nominet UK's Dispute Resolution Service Policy (the "Policy") was received from the Complainant on 2 February 2005. Nominet forwarded the Complaint to the Respondent on 7 February 2005. No response was received. On 3 March 2005 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the "Procedure"). The applicable fees were received from the Complainant on 9 March 2005. I was appointed as Independent Expert as of 16 March 2005 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.

4. Formal/procedural issues

Paragraph 15b of the Procedure provides that if, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or Procedure, the Expert will proceed to a Decision on the Complaint. Nominet has taken the appropriate steps to serve the Complaint in accordance with the terms of the Procedure and I find that there are no exceptional circumstances. Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non-compliance with the Procedure as I consider appropriate.

5. The Facts

The Complainant was founded in 1952 and provides holiday services. Over the last 30 years its principal activity has been as a UK based long-haul operator, operating to over 60 destinations worldwide. It has a website at www.hayesandjarvis.co.uk.

According to the Nominet WhoIs database, the Domain Name was registered on 25 May 2004. It resolves to a web page provided by Sedo's Domain Parking program.

6. The Parties' Contentions

Complainant

(a) The Complainant became part of the First Choice Group of companies in August 1998 and trades under the names HAYES & JARVIS and HAYES AND JARVIS. The domain name was registered on 1 April 2000. A domain name is not permitted to include the ampersand character "&".

(b) As a result of its trading activities and marketing campaigns, HAYES AND JARVIS and HAYES & JARVIS are well known and respected brands and there is considerable goodwill associated with them.

(c) The Complainant was voted the Best Long Haul Tour Operator by Travel Agents 2004.

(d) The Complainant is the registered proprietor of a number of trade marks:

CTM 1803089 HAYES & JARVIS registered 10/8/2000 in classes 16, 39 and 42

CTM 1804780 HAYES and JARVIS registered 10/8/2000 in classes 16, 35, 36, 39 and 42

CTM 1837632 HAYES and JARVIS registered 22/2000 in classes 16, 39 and 42

(e) Accordingly, the Complainant asserts that it has rights, both as proprietor of the registered trade marks and at common law in the names HAYES & JARVIS and HAYES AND JARVIS. Those names are very similar to the Domain Name, ignoring the .co.uk suffix.

(f) One or more of the non-exhaustive list of factors set out in paragraph 3 of the Policy is satisfied in that:

(i) there are 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;

(ii) there are 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; and

(iii) the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern.

(g) The Respondent was also the respondent to complaints brought by Alliance & Leicester plc against Fuz Pty Ltd (DRS 1918/1919). In that case the complaint was that Fuz Pty Ltd had registered nine domain names all of which were common misspellings of the household name of the complainant, Alliance & Leicester plc. The expert found that the nine domain names, in the hands of the Respondent were abusive registrations. There was in that case a pattern by the Respondent of registering domain names incorporating common misspellings of the complainant's name Alliance & Leicester. In this case the same Respondent has registered a common misspelling of the Complainant's mark.

(h) The domain names in the Alliance & Leicester case were connected to the sedo.co.uk parking website. The Domain Name also points to a website provided by Sedo's Domain Parking Program. The Domain Name directs to a website which contains links to a number of the Complainant's competitors in the travel industry.

(i) The Complainant asserts that by using a common misspelling of the Complainant's household trade mark, which denotes the Complainant and nobody else, the Domain Name inherently misrepresents that it is registered to, operated or authorised by, or otherwise connected with the Complainant. Internet users wishing to access the Complainant's website, who mistakenly type www.haysandjarvis.co.uk will be confused into believing that they have access to a website connected to the Complainant and may visit the websites, and use the services of, those companies that have "sponsored" links, which are in fact the Complainant's competitors. In addition, members of the public looking for the Complainant may enter into a search engine the phonetically identical name "haysandjarvis" and will be confused into believing that the Domain Name is connected to the Complainant.

(j) The travel holiday services market is highly competitive. By providing links to the websites of the Complainant's competitors, the Respondent provides those competitors with opportunities that they would not otherwise have and denies those opportunities to the Complainant. This unfairly disrupts the Complainant's business.

(k) The Domain Name makes, or is liable to be perceived as making, a representation that there is something approved or official about the website (to which it resolves) that clearly constitutes unfair advantage being taken by the Respondent or unfair detriment caused to the Complainant.

(l) The Complainant wrote to the Respondent requesting that it cease to use the Domain Name and also wrote to the contact details given on a search of the registrar's WhoIs database but there was no response.

In support of the Complaint, the Complainant provided a number of documents including evidence of its business, the various trade mark registrations and correspondence.

Respondent

The Respondent did not submit any response to the Complaint.

7. Discussion and Findings

The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that:

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

ii the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant's Rights

"Rights" are defined in the Policy and in the Procedure. Rights "includes, but is not limited to, rights enforceable under English law." The Complainant is the registered proprietor of a Community Trade Mark in respect of the word mark HAYES & JARVIS and of two Community Trade Marks in respect of the stylised words and device HAYES and JARVIS. It has traded under the names HAYES AND JARVIS and HAYES & JARVIS since 1952. Ignoring the suffix ".co.uk" the Domain Name is identical to both those trade marks save only for the use of the ampersand instead of the word "and" in one case and for the omission of the letter "e" from the "Hayes" part of the mark. Given the Complainant's use of HAYES & JARVIS in both forms since 1952, it may well also have acquired common law rights in those names.

Accordingly, I find that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.

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 3 of the Policy. These include:

3aii 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; and

3aiii The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern.

The Respondent did not answer the Complainant's cease and desist letter or the Complaint. There is therefore no explanation from the Respondent as to the circumstances in which the Domain Name was registered or as to how it has been used. There is no challenge to the Complainant's submissions as to its substantial use of its trading name over many years. It is difficult to imagine what legitimate purpose the Respondent may have had in registering the Domain Name.

The Domain Name is linked to Sedo's Domain Parking service. As Sedo makes clear on its website at www.sedo.com, its domain parking service is powered by Google and generates sponsored links provided by Google AdWords.

According to Sedo's answers to Frequently Asked Questions about its service:

"The advertising keyword selected for each domain determines which advertising banners will be displayed on your Domain Parking. The advertising keyword is automatically assessed and optimized by Sedo to maximize click-through and per-click rates."

As the Complainant has shown and as is confirmed by a visit to the website to which the Domain Name resolves at the date of this decision, the keyword selected by the Sedo domain park system interprets "haysandjarvis" as being associated with the travel industry and, as a consequence, generates 10 sponsored links all of which are to travel operators or those associated with the travel industry. In many instances, therefore, they are competitors of the Complainant. The obvious inference is that the process has identified "haysandjarvis" with the Complainant and therefore with its reputation in the travel industry.

The Sedo domain park service generates a payment, to domain name holders using the service, of per-click commission each time a visitor to the website accessed through the domain name clicks on one of the sponsored links. The click-rates vary from €0.03 to nearly €2.00 per click.

I consider that it is most likely that almost all visitors to the web site at the domain name will be those who have mistyped the Complainant's name or who have been confused (whether following an Internet search or otherwise) into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant.

In my view, the use of a typo-squatting technique involving the registration of a domain name almost identical to a well known mark such as the Complainant's, with a view to commercial gain through a domain park service, not only takes unfair advantage of the Complainant's Rights but is also unfairly detrimental to those rights. It takes unfair advantage through the commercial gain accruing from the per-click payments resulting from visitors being drawn to the parked domain by the attractive force of the Complainant's reputation in its well-known name. It is unfairly detrimental in that visitors who had intended to visit the Complainant's website may instead be drawn to a competitor's site.

Finally, I note that the Respondent has apparently been the subject of an earlier decision under the Policy (based on two complaints), which concerned the registration of nine domain names all of which represented slight misspellings of the household name of Alliance & Leicester plc. Although the Complainant has only been able to point to this one instance in which such a finding was made against the Respondent, I consider that the Respondent's involvement in nine abusive registrations in that case and the present case is at least indicative of a pattern of registrations of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights.

In all the circumstances, I consider that the Domain Name was registered and has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights in the names HAYES & JARVIS and HAYES AND JARVIS and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.

8. Decision

Accordingly, I find that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration. I therefore determine that the Domain Name be transferred to the Complainant Hayes & Jarvis (Travel) Limited.

……………………………….

Ian Lowe

21 March 2005