The Complainant is Sportbreak Limited of Westerham, Kent, United Kingdom of Great Britain and Northern Ireland, represented by Hallmark IP Limited, United Kingdom.
The Respondent is S Limited of Farringdon, London, United Kingdom, represented by Keystone Law Corporation, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2013. On March 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 21, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 15, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Respondent of the Complaint, and the proceedings commenced April 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response May 6, 2013.
On April 29 and 30, 2013, the Complainant sent an email to the Center about the identity of the Respondent.
Upon request of the Respondent and agreement of the Complainant, the Response due date was extended to May 13, 2013. The Response was filed with the Center on May 13, 2013.
On May 20, 2013, the Complainant sent an email communication to the Center, to which the Respondent replied on May 21, 2013. On June 10, 2013, the Complainant sent a Supplemental Filing by email to the Center.
The Center appointed Nick J. Gardner, Isabel Davies and Tony Willoughby as panelists in this matter on June 17, 2013. 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.
On June 25, 2013 the Panel issued Administrative Panel Procedural Order No. 1 reserving its decision as to whether to admit any material filed by either party subsequent to the Complaint and the Response. The Respondent was however granted until July 13, 2013 to file a Supplemental Response not to exceed 4,500 words in length, dealing only with matters raised in the Complainant’s supplemental filing of June 10, 2013 entitled “Additional Submissions in Reply to the Response”. The Panel indicated it would then consider all additional material filed by both Parties and decide what material to admit. The time for the Panel’s decision was extended until July 28, 2013.
On July 13, 2013 the Respondent filed a Supplemental Filing. On July 16, 2013 the Complainant’s representatives indicated by email that they considered there were inaccuracies in the Respondent’s Supplemental Filing and were prepared to file further material dealing with these inaccuracies if the Panel wished. The same email indicated the Complainant felt no need to modify its own submissions. 4. Factual Background
There are substantial disputes about many factual matters. So far as the Panel can determine the following matters are not disputed.
Both the Complainant and the Respondent trade via web sites which advertise and sell a range of short holidays at spas, and various similar or related products and services.
The word “break” in English is commonly used to refer to a short holiday.
The Domain Name was first registered on June 24, 2002.
The history of the ownership of the Domain Name is not entirely clear to the Panel from the material that has been filed, but it does not appear to be disputed that its ownership has passed between several companies. So far as the Panel can determine the Domain Name was originally used by a company called Morgan Travel Limited (although it may have been registered by a related non-trading company called Morgan Travel Worldwide Limited). Use of the Domain Name commenced at some stage after it was registered, possibly in 2002, or in any case in 2003, to promote breaks at spas as part of Morgan Travel Limited’s overall business. In September or October 2007 a company called Your Golf Travel Limited (which the Respondent says is a sister company and has the same shareholders as the Respondent) acquired the Domain Name together with all the goodwill associated with the Domain Name from Morgan Travel Worldwide Limited. The shareholders of Your Golf Travel Limited then incorporated a separate company, the Respondent, on October 26, 2007 and either then or at some date thereafter transferred ownership of the Domain Name to the Respondent. For present purposes it is convenient to refer simply to the Respondent’s predecessors in title and to note that the Domain Name has been in continuous use since either 2002 or 2003 in connection with the marketing of breaks at spas.
The Complainant is the registered proprietor of the European Community Trade Mark (“CTM”) no. 6466106 for the word “spabreak” in classes 35 and 43 which was applied for on November 26, 2007 and granted on February 19, 2013. This trade mark was opposed by the Respondent but that opposition was not successful. 5. Parties’ Contentions A. Complainant
The Complainant says it has used the trademark SPABREAK continuously since shortly after it registered the domain names and on November 13, 2002. It provides figures which it says are its turnover for this business, for example GBP 3,201,973 in 2007.
It says the Respondent did not start trading as “s” until 2008 and that before that date it had already notified the Respondent of its prior rights in the term “spabreak”.
It says the Respondent’s use of is an infringement of its CTM SPABREAK and is use of a domain name which is similar to its trade mark.
It says the Respondent’s use of the Domain Name is intended to disrupt the Complainant’s business and to divert customers who are trying to find the Complainant’s web site.
The Complainant says that the Respondent has registered and used the Domain Name in bad faith.
The Complainant seeks a transfer of the Domain Name to the Complainant. B. Respondent
The Respondent says it is a substantial company and part of a larger group, and that its current annual turnover relating to its “spabreaks” business is GBP 10 million and involves 40 employees.
It says its predecessor in title registered before the Complainant registered and and the Domain Name was used to sell holidays for four years before the Complainant applied for its CTM for “spabreak”.
It says it has UK and CTM trade marks for a device including the word “spabreaks”.
It says its registration and use is not in bad faith.
It says the Complainant’s trade mark inherently lacks distinctiveness and is wholly descriptive, describing the service which the Complainant sells, namely a holiday or “break” visiting a spa. It says it has applied to cancel the Complainant’s CTM on this ground. It provides a large number of examples of the term “spa break” being used by other parties both in other domain names and more generally.
It also says that the Complainant at various dates has traded under the names “spabreak uk”, and
“spabreak direct” rather than just “spabreak”.
It disputes the Complainant’s turnover figures and the methodology used in calculating them.
It says that in 2007 and 2008 the Complainant threatened to bring passing off proceedings against it but did not do so.
It relies upon the English case of “Office Cleaning Services Limited v Westminster Office Cleaning Association” HL [1946] 1 ALL ER 320, where the Court held that where a cleaning company had dropped the word “Westminster” from its name so that it was called “Office Cleaning Association” this would not amount to passing off in respect of another cleaning company “Office Cleaning Services”. The Court said that where businesses choose descriptive terms as their names then they must accept a certain amount of
confusion and that the public were able to distinguish between such names even where there were only minor differences, such as between “Services” and “Association”.
The Respondent says in any event there is no evidence of any confusion. 6. Discussion and Findings Procedural Matters
The Panel has first to determine the admissibility of the supplemental filings each party has lodged. This material contains a large quantity of complex facts and an inordinate amount of detail, including allegations and counter-allegations where substantial disputes exist. Much of this material is irrelevant to the decision the Panel has to reach. Having reviewed this material the Panel declines to admit each of the Supplemental Filings. It does on the following grounds. There is no provision in the Rules for such filings. The Panel nevertheless has a discretion to admit such filings but in this case it declines to exercise that discretion. It does so because (a) no compelling reasons have been shown by the Complainant as to why much of the material contained in its Supplemental filing could not have been contained in the original Complaint; and (b) in any event having considered all of the further material the Panel considers that nothing in it would alter the Panel’s conclusions based upon the content of the Complaint and the Response. It is therefore unnecessary to consider this material and no injustice results from its exclusion. Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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
The Complainant is the proprietor of a CTM which is for the word “spabreak”. The Respondent opposed that trade mark when it was applied for, although that opposition did not succeed, though the Panel does not know why that was or what reasoning the Community Trade Mark Office adopted in deciding to reject the opposition and grant the CTM. The Respondent says it is now seeking to invalidate that CTM although it is not clear to the Panel what procedure it is adopting to do this or what status any such proceedings currently have. In these circumstances the Panel accepts that the Complainant does have rights in the trade mark SPABREAK. The Panel finds that the Domain Name is confusingly similar to this trade mark – the addition of the letter “s” to “break” simply replaces the singular with the plural and is a very minor difference. B. Rights or Legitimate Interests
The Panel does not accept the Complainant’s contentions that the Respondent has no rights or legitimate interests in the Domain Name. Both parties in this case are carrying out significant online businesses using terms that are highly descriptive of the business in question. They each market breaks at spas. In the Complainant’s case it uses “spabreak” as its trading name, whilst the Respondent uses “spabreaks”. The fact that the term “spabreak” is descriptive seems self evident to the Panel but if examples are required a visit to the Complainant’s web site immediately reveals the descriptive nature of its name with examples on its home page such as “Great value spa breaks for groups at some of the very best health spas and spa hotels in the UK” and “Seasonal special offers and discounted rates on spa breaks and spa days are available at many of our spa hotels and health spas” and “Late Availability Spa Breaks At Weekends!”. Conjoining the words “spa” and “break” does nothing to remove this descriptive nature.
It is not for the Panel to determine how it was that the Complainant succeeded in obtaining a CTM in respect of such a descriptive term or why the Respondent’s opposition failed. The Panel does however consider that where an extremely descriptive term is used as a trading name it is not surprising to find other traders who are in the same line of business also adopting similar trading names. Whilst the detailed history of the Domain Name and its ownership is not fully clear to the Panel the Complainant does not dispute that the Domain Name was first registered by the Respondent’s predecessors in title long before the Complainant’s CTM was applied for. It could nevertheless be the case that prior to the registration of the CTM the Complainant had acquired common law rights at the date the Domain Name was registered. However given the highly descriptive nature of the Complainant’s trading name strong evidence to support this would be required, and none is provided. In any event the Complainant’s own case is that its business commenced shortly after it registered its domain names on November 13, 2002, whilst the Domain Name was registered on June 24, 2002. Accordingly it is the case that the Respondent’s predecessors in title registered this descriptive Domain Name before the Complainant’s business commenced. It appears clear that the Respondent’s predecessors in title did so regarding it as an adjunct to their existing travel related business, although the extent to which it was then immediately actually used is disputed, but that does not seem to the Panel to be important. Paragraph 4(c) of the Policy provides that rights or a legitimate interest in a domain name can be demonstrated if “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”. In the present case it seems clear that the Domain Name was registered by the Respondent’s predecessors in title with an intention at some stage in the future to use it for a spa related travel business. There is no evidence to suggest that there was any knowledge of the Complainant or its future business plans (if such existed) at this stage. In these circumstances the Panel declines to find that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
It follows for the reasons explained above that the Panel also declines to find that the Domain Name was registered in bad faith. On the Complainant’s own case the Domain Name was registered by the Respondent’s predecessors in title before the Complainant’s business commenced and there is no evidence at all to suggest any bad faith at that time. The Panel also declines to find the Domain Name has been used in bad faith. The Respondent has used the Domain Name in exactly the same way as the Complainant uses its domain names – as a descriptive indicator of the type of services it is selling. There does not seem to the Panel to be any convincing evidence that the Respondent is seeking to misrepresent itself as being the Complainant, or to attract customers who are looking for the Complainant. The Complainant has produced a limited amount of evidence of confusion – this appears to be entirely from spa operators chasing accounting queries, rather than customers seeking to buy spa breaks, and is in the Panel’s view of little relevance. In any event the amount of this confusion seems to the Panel to be minimal given the size of the relevant businesses, and only to be expected if you chose to trade under a highly descriptive name and others also do so. What the Respondent is doing is not seeking to misrepresent itself as being (or being connected with) the Complainant, but simply aiming to attract customers who want to book a break at a spa.
It is true that the Respondent has been on notice since 2007 that the Complainant objected to the Respondent’s name, and threatened passing off proceedings. It was also aware of the Complainant’s CTM application for “spabreak” and opposed that application, and its opposition failed. It presumably became aware of the Complainant’s CTM once it was granted. It has nevertheless continued to trade under its name. Does this amount to use in bad faith? The Respondent has produced correspondence between solicitors that took place in 2007. Solicitors acting for the Respondent’s predecessors in title rejected allegations of passing off, indicating that they considered the name in question was entirely descriptive. Further correspondence followed but it is clear that the Complainant’s allegations of passing off continued to be rejected. The Complainant did not take any legal action. It is not for the Panel to determine whether or not any legal action that the Complainant might take would succeed, but it is clear to the Panel that the Respondent has available to it and will seek to rely on various defences to such an action. Whether such defences succeed is for the court to determine but in these circumstances the Panel declines to find that the continued use of the term “spabreaks” by the Respondent is use in bad faith. The Complainant has adopted a highly descriptive name. Whether it can use such a name to preclude others from trading under a similar, equally descriptive name is a matter for the court but the Panel declines to find that continued use of a similar equally descriptive name as a domain name by a third party amounts to bad faith, at least unless there is also evidence of other matters which establish bad faith. No such evidence exists in the present case. 7. Decision
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Presiding Panelist
Isabel Davies
Panelist
Tony Willoughby
Panelist
Date: July 23, 2013
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