WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gold Medal Travel Group plc v. Damir Kruzicevic
Case No. D2007-1902
1. The Parties
Complainant is Gold Medal Travel Group plc, Preston, United Kingdom of Great Britain and Northern Ireland, represented by Shipley Solicitors Limited, United Kingdom of Great Britain and Northern Ireland.
Respondent is Damir Kruzicevic, Croatia, Croatia, represented by ESQ Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with F.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2007. On December 21, 2007, the Center transmitted by email to F a request for registrar verification in connection with the domain name at issue. On January 3, 2008, F transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced January 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2008. The Response was filed with the Center January 27, 2008.
The Center appointed Ross Carson, David H. Bernstein and David E. Sorkin as panelists in this matter on February 20, 2008. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant has been registered as a company in the United Kingdom since 1978 and has been using the mark GOLD MEDAL TRAVEL as its primary brand name and “Gold Medal” as the main element of registered trade marks within the travel industry since then.
Complainant is the owner of three trade mark registrations for design marks in the United Kingdom registered before the registration date of the domain name in dispute.
Complainant’s first registered trade mark is United Kingdom Trade Mark Registration No.2045247 registered September 20, 1996. The trade mark is comprised of the representation of a medal surrounded by a ribbon of laurel leaves with the words “Gold Medal” across the medal and the word “Hotelbank” prominently displayed across and extending well beyond both sides of the medal. The trade mark is registered in Class 35 in relation to the services “advertising via: viewdatasystems (satellite and terrestrial), newspapers, magazines and other publications, direct mail, internet systems, radio, television and other such media.”
Complainant’s second registered trade mark is UK Trade Mark Registration No. 2045249, registered September 20, 1996. The trade mark is comprised of the representation of a medal surrounded by a ribbon of laurel leaves with the words “Gold Medal” across the medal and the word “Farebank” prominently displayed across and extending well beyond both sides of the medal. The trade mark is registered in Class 35 in relation to “Promotional services; distribution of brochures, stationery, inhouse publications all being advertising matter; advertising services by means of viewdatasystems (satellite and terrestrial), newspapers, magazines, direct mail, internet, radio and television; arranging of exhibition stands for advertising purposes.”
Complainant’s third registered trade mark is UK Trade Mark Registration No.2045250, registered September 6, 1996. The trade mark is comprised of the representation of a medal with laurel leaves extending around the upper and lower exterior of the medal. The words “Gold” and “Medal” extend outwardly medially from the left and right sides of the medal. The words “Travel Group” are located below the medal with the letters PLC below the words “Travel Group”. The trade mark is registered in Class 35 in relation to “Promotional services; distribution of brochures, stationery, inhouse publications all being advertising matter; advertising matter; advertising services by means of viewdatasystems (satellite and terrestrial), newspapers, magazines, direct mail, international computer network systems, radio and television; arranging of exhibition stands for advertising purposes.”
Respondent is the registered owner of the domain name which Respondent registered on August 29, 2001.
Complainant is also the owner of numerous design trademarks featuring a golden disc as part of the trade mark. Complainant applied to register the modern version of the design marks in the United Kingdom in 2006. Particulars of the design mark applications and words associated with the design are as follows: Application Number Mark Text Filing Date 2437360A GOLD MEDAL GROUP 1st November 2006 2437360B GOLD MEDAL Luxury 1st November 2006 2437360C GOLD MEDAL 1st November 2006 GOLD MEDAL CAR HIRE GOLD MEDAL CRUISES GOLD MEDAL FLIGHTS GOLD MEDAL HOLIDAYS GOLD MEDAL HOTELS GOLD MEDAL INSURANCE GOLD MEDAL TOURS GOLD MEDAL TRANSFERS GOLD MEDAL TRAVEL
Complainant is also the owner of the following word marks filed in 2006. Application Number Mark Text Filing Date 2437362A GoldM 1st November 2006 2437362B GOLDMEDAL.CO.UK 1st November 2006 Goldm goldm
Many of the above trade mark applications have proceeded to registration in the UK since the filing of the Complaint.
5. Parties’ Contentions
A. Complainant
A.1 Identical or Confusingly Similar
Complainant is the owner of the registered design trade marks referred to in paragraph 4 immediately above each of which include the term “Gold Medal”.
Complainant submits that it has built significant goodwill in its business as a travel company, offering various travel related services including access to car hire, flights, hotels etc. To date Complainant states that it has spent in excess of �100 million on advertising and promoting its registered trade marks and its common law trade marks “Gold Medal Travel” and “goldm”.
Complainant further submits that its investment in advertising and quality of the services provided has generated substantial goodwill which currently places the Complainant as the UK’s sixth largest travel company (by passengers carried), dealing with over 500,000 customers in 2006 and with gross sales of �290 million in 2007. Complainant won three categories (and was a runner up in another two categories) in the 2006 British Travel Awards, including Best Customer Service.
Complainant submits that under the common law in England and Wales, Complainant has such trade recognition (i.e. goodwill) in its common law trade marks “goldm” and “Gold Medal Travel” that any offering of travel services using those marks would be recognized as being offered by Complainant. In other words, Complainant has rights in those marks. Furthermore, because the use of “Gold Medal” in relation to any goods of the kind dealt in by Complainant would be understood by the trade (i.e. the travel industry) as meaning that the goods are Complainant’s goods, Complainant also has rights in the name “Gold Medal”.
Complainant states that the domain name in dispute is identical to Complainant’s “Gold Medal” common law trade mark and confusingly similar to Complainant’s GOLD MEDAL TRAVEL common law trade mark and is effectively identical to Complainant’s “goldm” common law trade mark.
Complainant further states that the domain name in dispute also incorporates the most distinctive elements of Complainant’s registered trade marks and is also, therefore, confusingly similar to Complainant’s registered trade marks.
A.2. No Rights or Legitimate Interests in respect of the Domain Name
On the issue of the burden of proof with respect to proving that Respondent has no rights or legitimate interests in respect of the domain name in dispute, Complainant submits that the majority of panels in UDRP proceedings require complainants to make a prima facie showing that respondent has no rights or legitimate interests in the domain name in dispute, following which the evidentiary burden of proof of respondent’s rights or legitimate interests in the domain name in dispute switches to respondent. Complainant submits that this Panel should follow the precedent of the majority of previous panels stated immediately above.
Complainant states that it has never granted Respondent any rights, whether implied or otherwise, to use any of its marks in any capacity.
Complainant states that Respondent did on April 18, 2007 and June 17, 2007 include links on the website associated with the domain name in dispute which links including the term “Gold Medal Travel Agency Online” and “Gold Medal Travel” has been voted the best scheduled consolidator five years in a row ” above Complainant’s domain name . Complainant states that Respondent’s site was in use as a “pay-per-click portal site” or “parking page” provided by Hitfarm, a company which specializes in producing such pages. Complainant states that the use of domain names to forward visitors to pay-per-click sites or other sites not operated by Respondent are not bona fide offerings of goods and services will not give rise to any rights or legitimate interests. (Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304).
Complainant further submits that Respondent deleted the links to Complainant’s business on the website associated with the domain name in dispute after receipt of a cease and desist letter from Complainant’s attorney. Complainant submits that paragraph 4(c)(i) of the Policy makes clear, a respondent may not alter the use to which it puts a disputed domain name after receiving notice of a dispute in order to argue that it has rights or legitimate interests in that disputed domain name. Complainant states that, in the context of “bad faith”, several panels have found that changing the use to which the disputed domain is put will not avoid a finding of bad faith. (Howard B. Stevens, Inc., dba PC Professor v. The PC Professor,WIPO Case No. D2001-1282).
Complainant submits that the failure of Respondent to take good-faith efforts to avoid registering and using the domain name in dispute prevents Respondent from claiming that it has a legitimate interest in the domain name in dispute. Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. The links on the web pages associated with the domain name in dispute referencing Complainant’s web site in June 2007 discloses that it was reasonably likely that Respondent was aware that the domain name in dispute was identical and confusingly similar to Complainant’s registered and unregistered trade marks.
Complainant further states that with panel decisions against respondent in related markets, American Airlines, Inc. v. Damir Kruzicevic, NAF Case No.15779; Southwest Airlines Co. v. Damir Kruzicevic, WIPO Case No. D2003-0249; Red Lion Hotels Corporation v. Damir Kruzicevic, WIPO Case No. D2006-1051; The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137; there is a strong chance that Respondent had actual knowledge of Complainant. This is supported by the fact that, in the first two of those decisions, the complainant had no presence outside of the USA, which demonstrates that Respondent has knowledge of travel-related markets outside of Croatia.
Complainant further states that Respondent has a history of registering and using domain names that are identical or confusingly similar to marks held by others which clearly demonstrates Respondent’s mala fides in his approach to the registration of domain names. (American Airlines, Inc. v. Damir Kruzicevic, NAF Case No. 15779; Global Media Group, Ltd. v Damir Kruzicevic, NAF Case No. 96558; La Quinta Worldwide, LLC v. Damir Kruzicevic, NAF Case No. 528474; Nora Baumberger v. SAND WebNames – For Sale, WIPO Case No. D2001-0502; Oly Holigan, L.P. v. Damir Kruzicevic, NAF Case No. 97353; Patricia Ford and Online Creations Inc. v. Damir Kruzicevic,WIPO Case No. D2001-0059; Red Lion Hotels Corporation v. Damir Kruzicevic,WIPO Case No. D2006-1051; Six Continents Hotels, Inc. v. Damir Kruzicevic,WIPO Case No. D2002-0674; Southwest Airlines Co. v. Damir Kruzicevic,WIPO Case No. D2003-0249; The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137; The Sportsman’s Guide, Inc. v. Damir Kruzicevic, WIPO Case No. D2002-1127; V&S Vin & Sprit Aktiebolag v. Damir Kruzicevic, NAF Case No. 98459; Victoria's Secret et al v. Damir Kruzicevic, NAF Case No. 96537).
Complainant submits that Respondents profiting from customers inadvertently arriving at the sites associated with the domain name in dispute and gaining money when they click-through to Complainant’s site is, in this case, not “good faith use”. It should not be open to Respondent to profit but avoid responsibility for the content of his site merely by contracting out its use to a third party when he knows the use to which it will be put.
Complainant states that it has been unable to find any evidence that Respondent regularly engages in the business of registering and reselling domain names or using them to display advertising links. Therefore, although it does not necessarily follow that Respondent is not involved in such a business, it does raise a presumption that Respondent’s business is only concerned with registering domain names that are confusingly similar to those in which others have rights and, accordingly, this reduces the likelihood that Respondent has rights or legitimate interests in the domain name in dispute. See (Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964).
A.3 Registered and Used in Bad Faith
Complainant states that Respondent has previously obtained domain names that were identical/confusingly similar to marks owned by companies in markets outside of the USA that are related to Complainant’s type of services. A non-exhaustive list of previous UDRP decisions against Respondent is found above. Respondent’s knowledge of related markets and his history of abusive registrations, in addition to Complainant’s brand reputation and the large amount of advertising it has undertaken, demonstrate that it is more likely than not that Respondent was aware of Complainant’s trade marks. Respondent has therefore registered and used the domain name in dispute in bad faith by preventing Complainant reflecting its trade marks in a corresponding domain name.
Complainant states that Respondent’s web page associated with the domain name in dispute on April 18, 2007 featured a link to “Gold Medal Travel Agency Online” associated with Complainant’s domain name . Respondent’s web page associated with the domain name in dispute on June 17, 2007, featured links to “Gold Medal Travel Agency Online” associated with Complainant’s domain name . In addition Respondent’s web page included a second link “Gold Medal On eBay” associated with eBay’s domain name .
Complainant submits that with eBay’s worldwide reputation in the English speaking world, it seems highly unlikely that someone looking to buy gold medals would visit the domain name in dispute and follow a link to eBay rather than simply visiting eBay directly. It is therefore clear that Respondent has relied on confusion with Complainant’s trade marks to attract users for commercial gain through the referral of users to Complainant’s site and that the Respondent, for all intents, made money solely through revenue generated by visitors searching for Complainant. Thus, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [his]…website…by creating a likelihood of confusion with the complainant’s mark as to the source of…[his]…website.”
Complainant further states that the use of the heading “For resources and information on Wigs and Black and Hairstyles” appearing on the home pages associated with the domain name in dispute on April 18, 2007 and June 17, 2007 and Respondent’s attorney’s contention that Respondent’s site was being used for the same does not suggest bona fide use, it illustrates the opposite; if the purpose of Respondent’s site (as developed by H) was to provide hair products it would not provide a link to Complainant’s site in the most conspicuous position. As such, the words merely represent an attempt to add a veneer of legitimacy to Respondent’s use of the domain name in dispute.
B. Respondent
B.1 Identical or Confusingly Similar
Respondent states that Complainant’s trade marks that were the subject of applications for registration as a trade mark after the date of registration of the domain name in dispute on August 29, 2001 are unenforceable. Of Complainant’s identified registered trademarks, only three were applied for before the domain name in dispute was registered on August 29, 2001. They are GOLD MEDAL HOTELBANK; GOLD MEDAL FAREBANK; and GOLD MEDAL TRAVEL GROUP PLC. The other marks are, thus, all unenforceable in this proceeding. To be enforceable under the Policy, a trade mark must predate the registration date of a disputed domain. See, Business Architecture Group, Inc. v. Reflex Publishing, NAF Case No. 97051.
Respondent further submits that the domain name in dispute is not confusingly similar to Complainant’s registered trade marks. Where a trademark incorporates a common word term, as in the present case, minor differences – even a single letter – between a mark and a domain name are sufficient to eliminate a finding of confusing similarity. In Tire Discounters, Inc. v. TireD, NAF Case No. 679485 (“consumers are aware that domain names for different websites are often quite similar and that small differences matter”). Here, the differences between Complainant’s mark and the domain name in dispute are pronounced because Complainant’s only enforceable marks are stylized design-plus-words marks.
Stylized or design trademarks that also contain text, as with the above marks, do not provide the owner of the mark with exclusive rights to the words contained in the mark. See Porto Chico Stores, Inc. v. Zambon,WIPO Case No. D2000-1270, WIPO (stylized mark did “not entitle the owner of the mark to prevent use of those words by others.”) See also Weil Lifestyle, LLC v. Vertical Axis, Inc., NAF Case No. 926455 (registered trademark “applies only to a design plus word mark and not to a word mark alone.”). Accordingly, the Panel should find that the domain name in dispute is not confusingly similar to Complainant’s trade marks and, accordingly, deny the Complaint.
Respondent submits that Complainant has no rights in GOLD MEDAL. “Gold medal” is a common dictionary term. Respondent obviously does not have exclusive rights to this highly common term. An advanced Google search for “gold medal,” excluding “goldm” and “travel” yielded 1.94 million results. The first 100 Google search results annexed include: Gold Medal Models; Gold Medal Fishing; Gold Medal Schools; Gold Medal Gymnastics Center; Gold Medal Math; Gold Medal Plants. There are over 100 third party registered trademarks in the U.S. alone which incorporate “gold medal”, and at least 197 companies operating in the United States with “gold medal” in their name.
B.2 Respondents Rights or Legitimate Interests in respect of the Domain Name
Respondent submits that the registration of domain names, like , that contain common dictionary terms subject to third party use ipso facto establishes the Respondent’s legitimate interest. Energy Source Inc. v. Your Energy Source, NAF Case No. 96364; C et al. v. ASM Bioventure, NAF Case No. 568743 (large number of competing businesses using variation of terms). “Gold Medal” is as common as they come, and it’s a very laudatory term as well. Everyone wants to refer to their business as being the best of the competition – which gold medal suggests. Complainant does not have exclusive rights to the term, and Respondent is thus, entitled to retain the domain name in dispute based on its legitimate interest established by registering it.
Respondent further submits that its legitimate interest is bolstered by the fact that it has used the domain name in dispute for over six years since it registered it to post generic advertising links. This long-term pay-per-click (“PPC”) use, begun years before Complainant initiated this Complaint, clearly establishes Respondent’s legitimate interest. As the panel explained in Roderick W. Accetta v. Domain Admin et al., NAF Case No. 826565 (“Respondent’s use of the domain name to operate a pay-per-click search engine is a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i)”; See also Williams, Babbitt & Weisman, Inc. v. Ultimate Search, NAF Case No. 98813.)
Respondent denies Complainant’s submission that Respondent changed the home page associated with the domain name in dispute to remove links to Complainant’s “gold medal travel” site shortly after the receipt of the cease and desist letter from Complainant’s attorney dated June 14, 2007. Respondent states that he has made many changes over the years to his web site, using different applications and Domain Parking Services, so this was hardly unusual. Respondent simply switched parking service providers because Dotzup offered it a better deal. Respondent moved more than 20 domain names to Dotzup, so the move was not isolated to . Moreover, the move did not take place until almost two months after Complainant’s attorney’s letter. Second, there was no reason to make a change. There were only a few travel links out of numerous links on the HitF web page mainly related to wigs and fashion. Respondent submits that if it really wanted to change the site to ward off Complainant it could have contacted HitFarm to simply remove the travel links and keep it as a wig site. In any event, HitF’s links are auto-generated and do not in any way make Respondent’s interest illegitimate. As noted in the recent decision of Mariah Media Inc. v. First Place Internet Inc,WIPO Case No. D2006-1275, the appearance of links created by a third party domain monetization service cannot constitute bad faith on the part of the domain owner if the domain owner had no input in selection of the links. As the 3-member panel there explained: “Panel is unwilling to attribute bad faith to this search software. And it does not feel warranted in presuming bad faith on the part of a company using such software when the “keywords” it provides are merely dictionary words.” See also Admiral Insurance Services v. Dicker,WIPO Case No. D2005-0241. See also Aquascape Designs, Inc. v. Vertical Axis, Inc. et al., NAF Case No. 629222.
B.3 Registered and Used in Bad Faith
Respondent submits that Complainant has not demonstrated that the domain name in dispute was registered in bad faith. Respondent states that he had absolutely no knowledge of Complainant’s alleged trade mark when he registered the domain name in dispute. Respondent simply registered it because it incorporated a common term. The prior registrant of the domain name failed to renew it. As a result, the domain name expired, was deleted, and became available for anyone to register. This is a signal that any trademark claim to the domain name was abandoned and that the domain name could be registered in good faith. Corbis Corporation v. Zest, NAF Case No. 98441.
Respondent states that Complainant suggests that bad faith registration should be based on the appearance of the web site associated with the domain name in use in June 2007, and on the theory that Respondent subsequently changed the site to change the facts. The fact is that the domain name in dispute had an existence for six years prior to Complainant’s attorney’s letter in June 2007. Respondent annexed as exhibits to the Response representative publicly archived pages from the A “Wayback Machine” that present copies of the web pages that have appeared at the domain name in dispute at various times. For most of the period between September 2001 and December 2005, Respondent redirected Internet visitors to the domain name in dispute along with several other domain names owned by him to his web site, which had links to his own web sites such as CheapR, ChatR, and SportC, as well as various generic PPC links, such as flowers, loans, and insurance from which he earned a revenue share. Respondent submits that the Panel has six years of continued use of the domain name in dispute prior to April 2007 from which to infer Respondent’s intentions at the date of registration of the domain name in dispute. Any actions that occurred in June 2007 are so long after the Domain was registered that they are irrelevant in determining Respondent’s mindset in August 2001. See Intuit Inc. v. Nett Corp.,WIPO Case No. D2005-1206. (“The earliest evidence that could possibly amount to bad faith use is so long after registration that it cannot outweigh the evidence tending to show good faith registration”).
Respondent further submits that the fact that the domain name in dispute is composed solely of a common dictionary term also weighs heavily against a finding of bad faith. In order to prove bad faith registration of a common word domain like , Complainant must prove it was registered “specifically to sell” to Complainant, or that its value is “derived exclusively” from the fame of Complainant’s mark. Ultrafem, Inc. v. Warren Royal, NAF Case No. 97682. Complainant has proffered no such evidence. There is no evidence that contradicts Respondent’s uncontroverted testimony that the reason it registered the domain name is because it contains the common dictionary term “gold medal.”
Respondent further submits that Complainant has not proven that the domain name in dispute was registered in bad faith. Complainant’s argument that Respondent intentionally placed travel links on its web site is easily disposed of because the same exact links were included on web pages for Respondent’s other domain names, such as , , and . As noted above, the links appearing on were auto-generated by Domain Parking Services and, thus, do not constitute evidence that Respondent acted in bad faith. Mariah Media Inc. v. First Place Internet Inc., supra., (“panel is unwilling to attribute bad faith to this search software”); Admiral Insurance Services v. Dicker,WIPO Case No. D2005-0241 (“the panel accepts that the terms under which Google makes its Adsense advertisements available do not permit the Respondent to control them . . .”).
Even if, Respondent says, as Complainant argues, Respondent changed the web page based on Complainant’s cease and desist letter (he did not), it would not constitute bad faith. In Mariah Media, supra, Respondent changed its web site following receipt of a cease and desist letter. The panel did “not construe this as an admission of bad faith,” seeing it “as a rational effort to avoid a costly dispute.”
Respondent further submits that other decisions in which Respondent was a party decided against Respondent are irrelevant as they were based on different facts. Complainant has cited other decisions that have been decided against Respondent. It is well-established that a panel must decide a case based on the facts of that case, and not be guided by decisions regarding other domain names. See EPLAN Software & Service GmbH & Co K.G. v. Chad Folkening, ECORP.com, Inc E-PLAN, and ECAST,WIPO Case No. D2000-0806.
Respondent further submits that the fact that Complainant waited more than six years to bring this Complaint, without any excuse for the delay, raises the inference that Complainant did not truly believe Respondent was engaged in bad faith or, at least, that the registration was not causing any harm to Complainant. Twindent AB v. T, NAF No. 391308; Meat and Livestock Comm'n v. Pearce,WIPO Case No. D2003-0645 (“absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem”).
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly prove that the domain name in dispute is confusingly similar to the trademarks in which Complainant has rights.
Complainant has established that it is the registered owner of UK Trade Mark Registration Nos.2045247, 2045249, and 2045250 for design marks featuring a medal with a laurel leaf border and respectively including the words “Gold Medal Hotelbank”; “Gold Medal Farebank”; and “Gold Medal Travel Group Plc”. The trade marks were registered in 1996 in relation to services in Class 35.
The Panel is also satisfied that Complainant is the owner of common law service mark rights in the service marks GOLD MEDAL TRAVEL and GOLDMEDAL.CO.UK by reason of use of the service marks in advertising its travel services commencing in 1978 and August, 1996 the date of registration of GOLDMEDAL.CO.UK respectively. Complainant has been registered as a company in the United Kingdom since 1978 and has been using the mark GOLD MEDAL TRAVEL as its primary brand name and “Gold Medal” as the main element of its registered trade marks within the travel industry since 1978. Complainant has built goodwill in its business as a travel company, offering various travel related services, having to date spent in excess of �100 million on advertising and promoting its registered trade marks and its common law trade marks GOLD MEDAL TRAVEL and GOLDMEDAL.CO.UK. Complainant’s investment in advertising and quality of the services provided has generated goodwill which currently places Complainant as the UK’s sixth largest travel company (by passengers carried), dealing with over 500,000 customers in 2006 and with gross sales of �290 million in 2007. Complainant won three categories (and was a runner up in another two categories) in the 2006 British Travel Awards, including Best Customer Service.
There is no requirement in the Policy or Rules requiring that a complainant rely on a registered trade mark or service mark under the UDRP first element. The WIPO Overview of WIPO Panel Views On Selected UDRP Questions discloses a consensus view that a complainant may rely upon a unregistered trade mark right provided the complainant establishes that the trade mark has become distinctive of complainant’s goods or services in the country in which it has established distinctiveness.
Respondent has failed to submit evidence showing that Complainant’s service marks have not acquired distinctiveness in the United Kingdom in relation to travel services. The fact that others have registered GOLD MEDAL in other jurisdictions for other goods or services or the fact that the phrase is sometimes used descriptively by others does not prevent Complainant from establishing distinctiveness of its common law service marks in relation to travel services in the United Kingdom.
The addition of a generic top-level domain name such as “.org,” “.net,” or “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Aous Uweyda v. Abdallah Sheet, NAF Case No. 165119.
The domain name in dispute includes the entire distinctive element of Complainants service mark “GOLDMEDAL.CO.UK”. Numerous UDRP panels have held that a domain name is confusingly similar to a trademark when the domain name incorporates the mark in its entirety. See, e.g., Am. Online, Inc., v. , NAF Case No. 117319 (noting that “aolgirlsgonewild” incorporated complainant’s “entire mark” and implied “an affiliation that simply does not exist”).
The domain name in dispute and Complainant’s service mark “GOLD MEDAL TRAVEL” are identical with the exception of the descriptive word “travel” which describes the nature of Complainant’s business. The absence of the descriptive word “travel” in the domain name in dispute is not sufficient to avoid confusing similarity.
The Panel finds that Complainant has proven that the domain name in dispute
is confusingly similar to the Complainant’s unregistered trademarks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks or any trademarks confusingly similar thereto.
Prior to notice to Respondent of the dispute Respondent acted in bad faith on April 18, 2007 and June 17, 2007 by permitting links on the website associated with the domain name in dispute, which links including the term “Gold Medal Travel Agency Online” and “Gold Medal Travel have been voted the best scheduled consolidater five years in a row”. Complainant’s domain name also appeared as part of a link. Respondent’s site was in use as a “pay-per-click portal site” or “parking page” provided by Hitfarm, a company which specializes in producing such pages. The Panel finds that before any notice to Respondent of the dispute, Respondent was using the domain name in dispute in bad faith as described immediately above to intentionally attempt to attract for commercial gain, internet users to the web site associated with the domain name in dispute, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.
The Panel has considered Respondent’s submission that he is not responsible for the material appearing on the webpage associated with the domain name in dispute developed by parking service providers hired by Respondent to optimize the content of the webpage. The Panel is of the view that the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute. The Panel agrees with the Panelist in Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448 who prior to quoting the findings of a number of earlier decisions on the responsibility of a domain owner for the content appearing on the webpages associated with his domain name, whether auto generated or otherwise, stated, “ The Panel does not accept that the Respondent can disclaim responsibility for the various links on the Respondent’s website which are concerned either with the Complainant or with the field of commercial activity in which the Complainant is a major player”.
The use of links on the web page associated with the domain name in dispute which links include Complainant’s service marks and domain name are not bona fide offerings of goods and services which will give rise to any rights or legitimate interests. (Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304).
Complainant has made a prima facie case showing that Respondent has used the domain name in dispute in bad faith by featuring links on the website associated with the domain name in dispute that incorporate Complainant’s service mark GOLD MEDAL TRAVEL and Complainant’s domain name .
Once such a prima facie case is made the burden of production switches to respondent to demonstrate his rights to and legitimate interests in the domain name in dispute, but the burden of proof remains with Complainant (WIPO Overview of WIPO Panel Views on Selected UDRP Questions). Respondent filed as evidence copies of web pages which had been associated with the domain name in dispute commencing as early as September 26, 2001 and ending on November 4, 2006. The webpages were generated by Respondent using “The Internet Archive Wayback Machine”. The copies of the web pages associated with the domain name in dispute submitted in evidence by Respondent show links to Respondent’s own domain name , a website associated with the same field of activity as Complainant, namely, the travel industry. The web pages which were associated with the domain name in dispute submitted by Respondent cover the period between September 26, 2001 and August 10, 2005. All the webpages included in the upper left hand corner of the display portion of the webpage the representation of a bed, an airplane, and the words “for all your travel needs visit CheapR” with “CheapR” in boldface presumably representing a live link. Appearing in a ribbon immediately below are the words “CheapR travel: HOTELS CARS FLIGHTS”. Respondent’s web pages also included a variety of general links related to numerous products and services. Considering that the best located links on Respondent’s webpages associated with the domain name in dispute relate to travel services, the links on the webpages relating to travel services may confuse or initially confuse Internet users familiar with Complainants business or service marks who mistakenly enter the domain name in dispute when seeking Complainant’s travel services.
The Panel has considered Respondent’s contention that Respondent effected the same changes to other websites associated with other domain names owned by Respondent as those made to the webpages associated with the domain name in dispute. Even if that were true, it would not affect the Panel’s consideration of whether the Respondent has a legitimate interest in this domain name for this website. Because the website to which the domain name resolved contained advertising that competed with the services offered by Complainant, the Panel finds the use was not legitimate. Whether the same ads also were offered on Respondent's other websites is irrelevant; the Panel does not propose to consider Respondent’s other domain names as they are beyond the scope of this summary proceeding.
The Panel finds on a balance of probability, that Respondent has not demonstrated his rights to or legitimate interests in the domain name in dispute. Previous panels have recognized that the mere registration of a domain name does not of itself give rise to rights or legitimate interests in that domain name for the purpose of paragraph 4(a)(ii) of the Policy. See e.g. Educational Testing Service v. TOEFL,WIPO Case No. D2000-0044, Pharmacia & Upjohn Company v. Peoples Revolutionary Suicide Jazz Band,WIPO Case No. D2000-0816, and AT&T Corp. v. Swarthmore Associates LLC,WIPO Case No. DBIZ2002-00077.
The Panel finds that Complainant has proven that Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered in bad faith and used in bad faith
Registered in Bad Faith
Respondent registered the domain name in dispute on August 28, 2001 more than six years prior to date on which this proceeding was commenced.
Complainant submitted that it is more likely than not that Respondent was aware of Complainant’s service marks when Respondent registered the domain name in dispute in 2001. Complainant did not file evidence relating to the distinctiveness of its service marks prior to August 28, 2001.
The submission of Respondent is that he had no knowledge of Complainant’s alleged trade mark when he registered the domain name in dispute. The exhibits filed by Respondent disclose that he operated a website relating to the travel industry prior to date of registration of the domain name in dispute. Respondent states that he registered the domain name in dispute because it incorporated a common term. A prior registrant of the domain name failed to renew it. The domain name expired, was deleted, and became available for anyone to register and Respondent acquired the domain name in dispute. Complainant did not file any evidence stating when it first became aware of Respondent or his domain name . The earliest evidence filed by Complainant showing use of Complainant’s service mark and domain name on Respondent’s webpage associated with the domain name in dispute is April 18, 2007.
Complainant has established that Respondent has previously registered domain names that were found identical/confusingly similar to trade marks owned by trade mark owners outside of the United States of America. Some of the disputes involved hotels and the like which have a connection to the travel industry. Respondent does not deny these previous UDRP decisions, but submits that each case must be decided on its particular facts. Many of the cases referred to by Complainant relate to events occurring after August 28, 2001, the date on which Respondent registered the domain name in dispute and those cases are not relevant.
Even if Respondent knew of Complainant’s trade mark and other “gold medal” trade marks at the time of registration of the domain name in dispute, there is insufficient evidence in this record to conclude that Respondent targeted Complainant’s trade mark with this particular domain name registration. Instead, though Respondent’s use for a landing page is hardly a bona fide good faith use, Respondent’s explanation of registering the domain name in dispute because of its common meaning seems credible here, despite Respondent’s history of other bad faith registrations.
The Panel finds that Complainant has not established on a balance of probabilities that Respondent registered the domain name in dispute in bad faith as set out in paragraphs 4(b), 4(b)(i), 4(b)(ii), and 4(b)(iii) of the Policy. Respondent’s recent bad faith use under paragraph 4(b)(iv) of the Policy is not probative as to his much earlier intentions in registering the domain name.
Use in Bad Faith
For the reasons stated in paragraph 4 B. above the Panel finds that while Complainant may have proven that Respondent has used the domain name in dispute in bad faith, it has not succeeded in proving registration in bad faith, and as the requirements of paragraph 4(a)(iii) are conjunctive, the Complaint must fail.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Ross Carson
Presiding Panelist
David H. Bernstein
Panelist
David E. Sorkin
Panelist
Dated: March 12, 2008
Full & Egal Universal Law Academy