The Complainant is Barbara Williams of Guia de Isora, Santa Cruz de Tenerife, Spain, represented by John Williams, Spain.
The Respondents are Canaries Seaschool SLU of Las Galletas, Santa Cruz de Tenerife, Spain (the “First Respondent”) and Janet Wills of Las Galletas, Santa Cruz de Tenerife, Spain (the “Second Respondent”) both represented by Waterfront Solicitors LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Names and Registrars
The disputed domain name is registered with BigRock Solutions Pyt Ltd. The disputed domain names and are registered with EuroDNS S.A. (collectively the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2014. On September 19, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 19, 2014 the Registrar EuroDNS S.A. transmitted by email to the Center its verification response confirming that the Second Respondent is listed as the registrant and providing the contact details. On September 20, 2014, the Registrar BigRock Solutions Pyt Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 26, 2014.
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 Respondents of the Complaint, and the proceedings commenced on September 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 19, 2014. The Response was filed with the Center on October 18, 2014.
The Complainant filed a Supplemental Filing with the Center on October 22, 2014.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 24, 2014. The Panel finds that it was properly constituted. 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.
The Respondent filed a Supplemental Filing with the Center on November 4, 2014. 4. Admissibility of Supplemental Filings
In accordance with paragraphs 10 and 12 of the Rules, it is for the Panel to decide on the admissibility of any evidence and whether any further statements or documents should be requested from either of the parties. In this case, the Panel has decided to admit the Complainant’s Supplemental Filing but, having reviewed that filing, does not consider it necessary to admit any further submission from the Respondents. Accordingly the Panel will disregard the Respondents’ Supplemental Filing. 5. Factual Background
The Complainant operates a marine leisure business based in Tenerife. She is the owner of the following registered trademarks:
- United Kingdom trademark number 2576083 for a figurative mark comprised of three pictorial elements, namely a black “club”, a yellow sail and a grey propeller, together with the words “Club Sail” in a stylized font below; filed on March 16, 2011 and registered on June 24, 2011 in International Class 39 for transport; packaging and storage of goods; travel arrangements and in International Class 4 for education; providing of training; entertainment; sporting and cultural activities.
- Community Trade Mark number 6342539 for a figurative mark as described above, filed on October 8, 2007 and registered on August 30, 2102 in International Class 39 for boat rental; marine transport; pleasure boat transport; shipbrokerage and in International Class 41 for education; providing of training.
The First Respondent is a company registered in Spain. The Second Respondent is the sole director and 100% shareholder of the First Respondent. The Respondents also operate a marine leisure business based in Tenerife.
The disputed domain name was first registered on August 6, 1998. The current registrant is the First Respondent.
The disputed domain names and were both registered on May 23, 2010 by the Second Respondent, who remains the current registrant. 6. Identity of Domain Name Registrants
A preliminary question arises of whether the present Complaint can properly be brought in respect of all three of the disputes domain names, given that the registrant of the domain name differs from that of and . Paragraph 3(c) of the Rules provides that the complaint may relate to more than one domain name, provided that the domain names are registered by “the same domain-name holder.” In the view of the Panel, while the First and Second Respondents are technically different legal entities, the fact that the Second Respondent is the sole director and 100% shareholder of the First Respondent is sufficient to satisfy the requirement of paragraph 3(c). Alternatively, the Panel finds, in accordance with paragraph 10(e) of the Rules, that it is proper to consolidate the domain name disputes within the present proceeding. 7. Consent to Transfer
In their Response, under the heading “Consent to Remedy”, the Respondents state:
“…the first Respondent consents to transfer the disputed domain name on the basis of the Complainant’s agreement, without need for a decision being rendered by the Administrative Panel.”
In her Supplemental Filing, the Complainant states:
“The Complainant is pleased to note that the Respondent has consented to the transfer of the domain name, and requests that the Panel make an order to this effect.”
Under paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
“Where the parties to a UDRP dispute have not succeeded in settling a case between themselves prior to the rendering of a panel decision, but the respondent has given its unilateral and unambiguous consent on the record to the remedy sought by the complainant, a panel may at its discretion order transfer (or cancellation) of the domain name on that basis alone.”
In the light of the Respondents’ unambiguous consent to transfer and the Complainant’s reply, the Panel considers it appropriate to order a transfer of the domain name without the need for a substantive determination of the merits of the case.
In the circumstances, the Panel’s further consideration of the matter below will relate only to the disputed domain names and . 8. Parties’ Contentions A. The Complaint
The Complainant describes a longstanding and acrimonious dispute between the parties. The dispute relates principally to the goodwill of a business originally named “Club Sail Sea School” that was founded by the Complainant and her husband in around 1986. The Complainant alleges that the goodwill and other property of that business, including the disputed domain name , were misappropriated by her son and the Second Respondent in 2006 and that the Respondents continue even now to benefit unfairly from that misappropriation.
The Complainant submits evidence that in 2007 the First Respondent applied to register a United Kingdom trademark in the form of the figurative mark described above, but that application was successfully opposed by the Complainant and her husband on the basis of their prior rights in the mark. In this regard, Geoffrey Hobbs QC found (on appeal from the decision of the hearing officer) that the First Respondent’s evidence was “both implausible and unavailing” and held that the application for registration had been brought in bad faith.
The Complainant contends that, even after this decision, the Respondents have continued to take unfair advantage of the goodwill in the “Club Sail” name and business. In particular, they continued to use the “Club Sail” name, device and website until 2009. While they changed the name of their website to “Club Yachting” at that time, they continued to use the domain name to point to the website and continued to optimize it by the use of “club sail” as keyword terms. The direct access to the website via continued until late 2011 when a message appeared stating that it was being redirected to . Furthermore, the Respondents’ website continued to convey the impression that it was in fact “Club Sail” or a successor to that business. In particular, the Respondents selected the name “Club Yachting” for that reason and, further, adopted a logo comprising a yellow sail and a propeller which was very similar to the Complainant’s trademark. The propeller is even shown on the Respondent’s website as rotating, which was a device previously used by the Complainant. In addition, the Respondents continued to use “@” email addresses even on the “Club Yachting” website.
For the purposes of paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain names are identical or confusingly similar to the “Club Sail” trademark owned by the Complainant and to marks used by the Complainant for years. The Complainant submits that the combination of the initial term “Club” with the generic term “yachting” makes the disputed domain names confusingly similar to the Complainant’s trademark, particularly to any user of the Internet. The Complainant states that, when conducting a search for “Club Sail” on three leading search engines, the Complainant’s website is the first result returned and the Respondent’s “Club Yachting” website is the second or third. The Complainant states that the Respondents chose the disputed domain names deliberately in order to deceive member of the public into believing they were still dealing with the “Club Sail” business.
The Complainant submits that the Respondents have no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy). The Complainant also submits that the domain names have been registered and are being used in bad faith (paragraph 4(a)(iii) of the Policy). The Complainant’s specific submissions in these respects derive from its allegations against the Respondents as outlined above, but for reasons which will become clear below, it is unnecessary to set out these allegations in further detail in this Decision. B. The Response
The Respondents take issue with the Complainant’s description of the history of the dispute between the parties and state that they have “collaborated, competed and co-existed” with the Complainant and her husband for a period of almost 30 years.
The Respondents state that, following the trademark appeal decision referred to by the Complainant, they decided to rebrand their business. They state that they showed their proposed new logo to the Complainant and her husband and exhibit an email from the Complainant’s husband dated March 22, 2010 stating “we like the logo” but objecting to the name “Club Sail” that appeared below it at that time. The Respondents claim that the Complainants also saw but did not object to other content of their “Club Yachting” website including the “About Us” section.
The Respondents accept that they used “@” email addresses while setting up the “clubyachting” domains and state that there were no other email addresses they could use at that time. They state that they used the “clubyachting” domains for emails from July 2010 onwards.
With regard to their choice of the “clubyachting” domain names, the Respondents state that they chose the “clubyachting” domains because their customers had commented that their establishment felt more like a club than a business. The Respondents state that they considered changing their company and their Royal Yachting Association (“RYA”) registration so that they are, for the purposes of the RYA, a “club”, which has a specific meaning to the RYA. They state that they were, accordingly, keen to reflect the idea of a “club” in their name, with the result that in 2010, they brainstormed names including “Yacht Club”, “Club Barco”, “Club Yacht” and finally settled on “Club Yachting”.
The Respondents state that their intention in choosing the name was to choose one that differed to names in which the Complainants claimed rights and which was not already identical to another RYA registered business. They state that it was necessary for them to obtain RYA approval of their change of trading name, and that under the relevant RYA rules:
“… recognition will normally be refused to a center applying under a name that is the same or likely to be confused with an existing organization…”
The Respondents state that they applied for recognition of the “Club Yachting” name on August 24, 2010 and that this was immediately approved (although the exchange of emails that the Respondents exhibit appears to suggest that some form of “compromise” was discussed).
The Respondents deny that the disputed domain names and are confusingly similar to the Complainant’s trademarks.
The Respondents contend that the Complainant’s trademarks are composite marks, comprising a figurative element which depicts a “club” in black, a sail in yellow and a propeller on grey. The additional words “club” and “sail” relate to the services of a sailing club and are therefore descriptive of services under the Complainant’s trademark. The Complainant has not argued that the descriptive term “Club Sail” has developed any secondary meaning.
The Respondents exhibit a list which they say comprises all the training centres listed by the RYA and the International Yacht Association (“IYA”). They submit that of the 1,933 centres listed, 534 (26.63%) use the word “Club” in their name and 1,239 (over 67%) use either “Sail” or “Sailing” in their name. This demonstrates that the terms “club” and “sail” are overwhelmingly common and descriptive and that the Complainant would not have been permitted to register the words “club sail” alone. By contrast, only 56 centres (2.9%) use the word “Yachting” in their name.
The Respondents rely on the observation of Lord Simonds in Office Cleaning Services v Westminster Window and General Cleaners (1946) 63 RPC 39, as cited with approval in Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE,WIPO Case No. D2003-0645, that where names consist of descriptive elements then small differences suffice to distinguish. The Respondents add that the word “club” is used extensively in the marine leisure services industry and that members of the public who are users of those services will be experienced in distinguishing between different organizations using the word “club”.
The Respondents exhibit Google search results for “Club Sail”. They state that while the website “www.” is one of the results returned, there is no mention of “Club Sail” in the text and nothing to suggest that an Internet user would consider the website to be that of the Complainant.
The Respondents dispute the Complainant’s contentions that they have no rights or legitimate interests in respect of the disputed domain names and that the disputed domain names were registered and have been used in bad faith. Again, it is unnecessary to set out the Respondents’ detailed submissions in respect of these matters. C. The Complainant’s Supplemental Filing
The Complainant makes further extensive submissions in response to the Respondents’ submissions.
The Complainant rejects the Respondents’ explanation for their choice of the disputed domain names. The Complainant states that it was “Club Sail” that had club members and that identity cards were even issued to these members. She states that the Respondents’ explanation is no more than an effort to justify stealing her and her husband’s ideas.
The Complainant also takes issue with the Respondents’ reference to the RYA approval of the “Club Yachting” name. She states that the RYA is purely a private company which does not take account of trademark rights. She submits that the Respondents chose the name knowing that it was similar to the Complainant’s mark and with the intention of retaining the Complainant’s goodwill.
The Complainant refers to the Respondents’ argument that 25% of RYA or IYT (International Yacht Training Worldwide) establishments have the term “club” in their name. She states that these organizations are in fact non-commercial enterprises which have the term “club” appended to their name purely in order to indicate their nature. In the case of the Complainant’s trademark, the term “club” is the predominant feature and the term “sail” is subsidiary, describing what the Complainant does. The term “yachting” is also a subsidiary term, meaning the same as “sail”, and the disputed domain names are therefore confusingly similar to the Complainant’s trademark, especially to a person whose first language is not English. The Complainant submits that the Office Cleaning Services case as cited in the Meat and Livestock Commission case is wholly different to the present case as the marks in those cases did not have a distinctive element, in contrast with the “Club Sail” mark.
The Complainant maintains that that the Respondents have no rights or legitimate interests in respect of the disputed domain names and that the disputed domain names were registered and have been used in bad faith. Once again, it is unnecessary to set out the Complainant’s detailed submissions concerning these matters. 9. Discussion and Findings
In order to succeed in the Complaint concerning the disputed domain names and , the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names and
(iii) that the disputed domain names have been registered and are being used in bad faith. Identical or Confusingly Similar
The Complainant has established that she has registered trademark rights in respect of the United Kingdom and Community trademarks described earlier in this Decision.
The disputed domain names are and .
The test for confusing similarity between a disputed domain name and a trademark is discussed in paragraph 1.2 of the WIPO Overview 2.0. This includes the following guidance:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms… typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
The test for confusing similarity is, therefore, an objective one which requires a straightforward comparison of the disputed domain names with the Complainant’s trademark. Factors including the Respondent’s reasons for choosing the disputed domain names and the use which the Respondent has made of the names, are not typically relevant to this initial “threshold” comparison. While these matters may well be relevant to the second and third elements set out under paragraph 4(a), these elements do not come into play unless it has first been found that the disputed domain names are identical or confusingly similar to the Complainant’s trademark.
In this case, the Panel does not consider that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks described above. While the figurative mark includes the initial term “Club” and a subsequent term that references a marine activity, there are significant pictorial components of the Complainant’s trademarks that are obviously not present in the disputed domain names.
Furthermore, even if the Panel were to take the view that the only relevant part of the Complainant’s trademark is the term “Club Sail” (in which it is possible that the Complainant has some level of unregistered rights by virtue of use of that term in business) the Panel would still not consider the disputed domain names to be confusingly similar to this mark. The Panel accepts that the use of the term “Club” at the beginning of the name “Club Sail” makes that name more distinctive than if the terms were inverted, i.e. “Sail Club”, but nevertheless, the term “club” is generic in nature. The use of the term “club” as a prefix is not the exclusive province of the Complainant, even in the leisure industry, and the Panel does not accept that Internet users would be likely to assume that goods or services offered by “Club Yachting” originate from the same source as “Club Sail”. While the Panel notes that an Internet search for “Club Sail” will return “Club Yachting” as an early result, this does not suggest to the Panel that an Internet user will assume the two businesses to have a common origin, any more than that user may believe them to be competitors or to be completely unconnected.
In the circumstances, the Complainant has failed to establish that the disputed domain names and are identical or confusingly similar to a trademark or service mark in which the Complainant has rights and her claim in respect of those disputed domain names fails.
In the light of the Panel’s findings above, it is unnecessary to consider the second and third elements of the test under paragraph 4(a) of the Policy, namely rights or legitimate interests and registration and use in bad faith. 10. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant. The Complaint in respect of the disputed domain names and is denied.
Steven A. Maier
Sole Panelist
Date: November 5, 2014
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