Nominet UK Dispute Resolution Service

 


Nominet UK Dispute Resolution Service

DRS Number 04316

B E T W E E N:

SEABOURN CRUISE LIMITED

Complainant

- and -

FIRST HOSTING

Respondent

Decision of Independent Expert

1. Parties

Complainant: Seabourn Cruise Line Limited

Country: GB

Respondent: First Hosting

Country: GB

2. Domain Name

seabourn.co.uk

3. Procedural Background

3.1.1 The Complaint, which is a complaint of Abusive Registration under the Dispute Resolution Procedure ("the DRS") of Nominet UK ("Nominet"), and is dated 18 December 2006, was posted by Nominet to the Respondent under cover of a letter dated 20 December 2006. The covering letter, which was posted to an address which appears to have been correct, included the following paragraphs:-

"A copy of the full complaint (including evidence if any has been provided) is enclosed (if the evidence was sent to us as paper, it will only come with the paper copy). …

You do not have to respond to the complaint, but any decision made about your domain(s) name will apply to you even if you do not respond. If you want to respond (and we would encourage you to do so) we must receive the response on or before 16 January 2007."

3.1.2 In an e-mail dated 5 January 2006 a Mr Walmsley, apparently acting on behalf of the Respondent, wrote to Nominet:

"I agree that the domain name is transferred to the complainant."

The same day Nominet responded by email:

"Dear Mr Walmsley

Thank you for your email confirming your willingness to transfer the domain name to the complainant, Please could you confirm that this is your official response, if it is we can arrange to send transfer forms to both parties for completion."

Again on the same day, by e-mail, Mr Walmsley gave the confirmation requested, and Nominet responded:-

"Thank you for your confirmation.

To help you with the transfer process, please find attached the transfer form for you to sign and fax to 01865 332282."

3.1.3 In the event, the transfer forms were never completed and, the Complainant opted to pay for the dispute to be referred to an independent expert for a decision.

3.1.4 By letter dated 7 March 2007 I was appointed with effect on 12 March 2007, to provide a Decision under Nominet UK's Dispute Resolution Policy ("the Policy"). I am required to send my decision to Nominet no later than 26 March 2007.

3.1.5 I have been provided with the following materials:-

Dispute History

Complaint

Non standard Response

Standard correspondence between Nominet and the parties

Non standard correspondence between Nominet and the parties.

Register entry for seabourn.co.uk.

Nominet WHOIS query result for seabourn.co.uk.

Printout of website at www.seabourn.co.uk.

Copy of Nominet UK's Policy and Procedures.

4. Outstanding Formal Procedural Issues

4.1 There are no outstanding formal or procedural issues.

5. The Facts

5.1 The domain name was registered by the Respondent on 14 April 2004.

6. The Parties' Contentions

Complainant

6.1 The Complaint of Abusive Registration is in the following terms:-

The Complaint

I confirm that Domain Name(s) in dispute are identical or similar to a name or mark in which I have Rights.

I confirm that Domain Name(s) in the hands of the Respondent is an Abusive Registration.

The Complainant's Rights

1. The Complainant is a substantial company based in the United States operating in the ultra-luxury cruise market. It is part of the Carnival group, its parent company being the dual-listed company Carnival Corporation and plc.

2. The Complainant first started using the "SEABOURN" trade mark in 1987 in relation to cruise ship holidays. Over the years, an increasing range of goods and services have been sold, advertised and promoted under and by reference to the trade mark "SEABOURN". Exhibit 1 hereto contains copies of some brochures and other publications produced by the Complainant showing various services promoted by the Complainant. Seabourn has won a number of prestigious awards in the UK such as "Best Cruise Company" - The Daily Telegraph Annual Travel Awards and in the US - "World's Best Cruise Ship" 2006 Conde Nast Traveller Readers' Poll for two consecutive years. The Berlitz Complete Guide to Cruising and Cruise Ships has given Seabourn 5 stars for 12 consecutive years.

3. The Complainant is part of Carnival Corporation and plc, whose revenue was some USD$11,000,000,000 as shown by its most recent published accounts in Exhibit 2. Three of Carnival Corporation and plc's 79 ships sail under the "SEABOURN" brand.

4. The Complainant's US-based group company, Seabourn Cruise Line Limited, is the proprietor of the domain name seabourn.com. This domain name was registered on 22 May 1997 and has been used continually since this date.

5. The Complainant's US-based group company, Seabourn Cruise Line Limited, is the proprietor of the following registered trade mark: Country Trade Mark Number Trade Mark EU (CTM) 283668 SEABOURN Full details of this registration are attached at Exhibit 3.

6. The Complainant's agent, Carnival plc, via their solicitors Bond Pearce LLP, wrote to the Respondent's agent on 8 December 2005 in relation to another domain held by the Respondent, hollandamerica.co.uk, highlighting their rights in the trade mark "HOLLAND AMERICA". The complainant offered to reimburse the Respondent's reasonable expenses in connection with the registration. The Respondent's agent did not acknowledge or respond to this letter. The complainant, via their solicitors Bond Pearce LLP, wrote again on the 30 January 2006. No response was received from the Respondent or from their agent. It was only once ADR proceedings were commenced that the Respondent acknowledged the original correspondence. Unfortunately however, despite numerous assurances that the domain name would be transferred the respondent repeatedly failed to take any action so the complainant had to proceed with the complaint. Due to the respondents conduct, the complainant incurred a significant amount of unnecessary expenditure and wasted a significant period of time. Given this previous conduct, the complainant is driven to the conclusion that corresponding with the Respondent before filing a complaint will not have any benefit. The Complainant sets out details of the previous matter at Exhibit 4. [Abusive Registration].

7. The Complainant contends that the Respondent has no legitimate interests in the Domain Name. There is currently no active site under the Domain Name. As far as the Complainant is aware, there has not been an active site under the Domain Name since it was registered by the Respondent on 14 April 2004. Exhibit 5 hereto shows a print out taken at 17 October 2006 confirming the above.

8. Paragraph 3(a)(iii) of the Nominet Dispute Resolution Service Policy (Version 2 September 2004) states that a factor which may constitute evidence that the Domain Name is an abusive registration is if the "Complainant can demonstrate that 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". Investigations have revealed that First Hosting has registered some 79 UK domain names including 2008olympic.co.uk, 2008olympics.co.uk, 4sale.org.uk, cruisebooker.co.uk, royalolympic.co.

uk, hollandamerica.co.uk and disneycruises.co.uk. Exhibit 6 hereto sets out full details of all 79 domains.

9. The next Olympic Games take place in Beijing in 2008. It is unarguable that the Olympic name is one of the world's most well known. The Complainant contends that the Respondent has no connection whatsoever with the Olympic Movement and therefore the Respondent has no rights to the domain names 2008olympic.co.uk, 2008olympics.co.uk and royalolympic.co.uk. The Complainant contends that the Registrant's registration of these domain names demonstrates, under Paragraph 3(a)(iii) of the Nominet Dispute Resolution Service Policy (Version 2 September 2004), that the Respondent is engaged in a pattern of registrations which correspond to well known names in which they have no apparent rights. The Complainant contends that the Domain Name is part of that pattern and therefore that the Domain Name is an abusive registration.

10. "Holland America" is also a well known name in the luxury cruise market. The brand is owned by Carnival Corporation and plc which has no connection to the Respondent. The Complainant refers to the complaint in respect of hollandamerica.co.uk. The Complainant contends that the Registrant's registration of this domain name demonstrates, under Paragraph 3(a)(iii) of the Nominet Dispute Resolution Service Policy (Version 2 September 2004), that the Respondent is engaged in a pattern of registrations which correspond to well known names in which they have no apparent rights. The Complainant contends that the Domain Name is part of that pattern and therefore that the Domain Name is an abusive registration.

11. "Disney" is a world famous brand that needs no introduction. The Walt Disney Company has interests in cruises promoted under the name "Disney Cruise Line". The Complainant contends that the Respondent has no connection with The Walt Disney Company and has no rights to the domain name disneycruises.co.uk. The Complainant contends that the Registrant's registration of this domain name demonstrates, under Paragraph 3(a) (iii) of the Nominet Dispute Resolution Service Policy (Version 2 September 2004), that the Respondent is engaged in a pattern of registrations which correspond to well known names in which they have no apparent rights. The Complainant contends that the Domain Name is part of that pattern and therefore that the Domain Name is an abusive registration.

12. In addition, the Complainant contends that the Domain Name constitutes a blocking registration under paragraph 3(a)(i)(B) of the Nominet Dispute Resolution Service Policy (Version 2 September 2004). It is very clear from a cursory search of the internet that the Complainant, and the Complainant's parent company, have valuable rights in the "Seabourn" brand. A search using the search engine Google makes this extremely clear (the first page of "hits" relates virtually exclusively to the Complainant's business). The Complainant contends that the Respondent was opportunistic in registering the Domain Name and has no legitimate interests in it.

13. As illustrated by the Expert's decision in DRS number 03911 Hal Beheer BV v Ian Walmsley t/a First Hosting, the Respondent has already been found to have filed one Abusive Registration. The Complainant contends that, as set out above, the Respondent does not have any legitimate rights or interests in the Domain Name and that it too is an Abusive Registration.

6.2 The Complainant requests the transfer of the Domain Name.

Response

6.3 As stated above, the Respondent has not submitted any Response.

7. Discussion and Findings:

General

7.1 Under paragraph 2a of the Policy the Respondent is required to submit to proceedings if a Complainant asserts to Nominet in accordance with the DRS Procedure 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."

7.2 Under paragraph 2b of the Policy a Complainant is required to prove both these elements on the balance of probabilities.

7.3 Paragraph 1 of the Policy defines "Rights" as including but not being "limited to, rights enforceable under English law". This definition is subject to a qualification which is not material.

Complainant's Rights

7.4 The rights of other companies in the group to which the Complainant belongs are immaterial for the purposes of this question of whether the Complainant has "rights", and I leave them out of account.

7.5 The Complaint (which is signed and includes a statement of truth and to which there is no challenge) and the documentation provided with it, in my opinion establishes, on the balance of probabilities, that before the date of registration of the domain name the Complainant had acquired common law rights in the name "seabourn".

7.6 I consider and find as a fact that, but for the ".co.uk" suffix, the name in which the Complainant has rights is identical to the Domain Name "seabourn.co.uk". Accordingly, I am satisfied that the conditions of paragraph 2a of the Policy are satisfied.

Abusive Registration

7.7 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."

7.8 The Policy provides:

"3 Evidence of Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is as follows:

i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A 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 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 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;

iv It is independently verified that the Respondent has given false contact details to us; or

v The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

A has been using the domain name registration exclusively; and

B paid for the registration and/or renewal of the domain name registration.

b Failure on the Respondent's part to use the Domain Name for the purposes of e-mail or a website is not in itself evidence that the Domain Name is an Abusive Registration.

c 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)).

4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration

a A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

i Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has

A 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;

B been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name; or

C made legitimate non-commercial or fair use of the Domain Name; or

ii The Domain Name is generic or descriptive and the Respondent is making fair use of it.

iii In relation to paragraph 3(a)(v); that the Registrant's holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or

iv In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.

b Fair use may include sites operated solely in tribute to or criticism of a person or business.

c If paragraph 3(c) applies to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.

7.9      The facts asserted and contentions advanced in paragraphs 6 to 11 of the Complaint are not challenged. There is no reason to doubt the accuracy of those assertions of fact, and accordingly I accept them as being factually correct.
7.10      It is apparent from paragraphs 9 and 12 of the Complaint that the Complainant seeks to rely upon paragraphs 3 a (iii) and 3 a ( i ) B of the Policy.
7.11      The unchallenged evidence does support the contention that the Respondent has been (and in the absence of evidence to the contrary still is) engaged in a pattern of registration where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which it has no apparent rights, and the Domain Name is part of that pattern. There is however no evidence of "use" by the Respondent of the Domain Name.
7.12      In the terms of paragraph 1 of the Policy I am satisfied and find that the Domain Name was registered in a manner which at the time when the registration took place was unfairly detrimental to the Complainant's Rights, which were in existence prior to and at the time of the registration.
7.13      In those circumstances, it is unnecessary for me to consider whether the Complainant would also be entitled to succeed upon the other ground which it advances.
7. Decision
8.1      For the reasons given above, I find that the Domain Name was registered in a manner which at the time when the acquisition took place was unfairly detrimental to the Complainant's Rights and, in the hands of the Respondent, is an Abusive Registration.
8.2      The Complainant has requested the transfer of the Domain Name. On the basis of the material before me I consider that that is an appropriate remedy and accordingly that the Domain Name should now be transferred to the Complainant as it requests.

Signed…

David Blunt QC

21 March 2007