Thomas Cook UK Ltd -v- Whitley Bay Uncovered

Factual and Procedural Background

The dispute involves two domain names registered on 31st January 2001 on behalf of the Respondent by an Internet Service Provider. The domain names currently link to the ISP's homepage and have not been actively used by the Respondent since registration. The Complainant, owner of trade marks incorporating the name CLUB18-30, claimed that the Respondent's domain names infringed its rights and were registered in bad faith. Initial correspondence between the parties included demands for transfer and offers to cover reasonable transfer costs, which the Respondent rejected citing legitimate planned use and incurred expenses.

The Complainant filed a complaint with the UK domain name dispute service in September 2002 after an earlier complaint with an international arbitration service resulted in a decision favoring the Complainant. The Respondent did not respond to the UK complaint or the subsequent appeal. An Expert was appointed and issued a decision rejecting the complaint. The Complainant appealed, and a Panel of Appeal was appointed to review the matter.

Legal Issues Presented

1. Whether the Complainant has rights in a name or mark identical or similar to the disputed domain names.
2. Whether the domain names, in the hands of the Respondent, constitute an Abusive Registration under the Nominet UK Dispute Resolution Service Policy.
3. Whether the Respondent had legitimate interests or rights in the domain names.
4. Whether the registration was made in bad faith, including as a blocking registration or for unfairly disrupting the Complainant's business.
5. Whether the Expert's decision rejecting the Complaint should be upheld or overturned on appeal.

Arguments of the Parties

Complainant's Arguments

• The Complainant owns goodwill, reputation, and registered trade marks in the name CLUB18-30, used since 1965, and operates multiple related websites.
• The disputed domain names are confusingly similar to the Complainant’s trade marks, incorporating the mark with the descriptive suffix "uncovered".
• The Respondent has no rights or legitimate interests in the domain names and was aware of the Complainant's goodwill when registering them.
• The Respondent’s registration constitutes an Abusive Registration as it was intended to take unfair advantage of or cause detriment to the Complainant's rights.
• The addition of "uncovered" is descriptive and insufficient to distinguish the domain names from the Complainant's marks.
• The Respondent’s registration is also a blocking registration, intended to prevent the Complainant’s use of the domain names.
• The Respondent’s intended use would cause confusion or suggest a commercial connection with the Complainant, contrary to fact.
• The domain names should be transferred to the Complainant.

Respondent's Arguments

• The Respondent did not intend to sell the domain names or disrupt the Complainant’s business.
• The Respondent did not intend to use the Complainant’s trade marks or retail holidays using the domain names.
• The Respondent’s planned use was legitimate: to run a website uncovering nightlife antics of 18 to 30 year olds, unrelated to the Complainant’s business.
• The Respondent rejected the Complainant’s offer to cover transfer costs, citing expenses incurred developing the websites.
• The Respondent denied any intention to confuse visitors or to emulate the Complainant’s website.

Table of Precedents Cited

Court's Reasoning and Analysis

The Panel agreed that the Complainant has rights in a name similar to the domain names, noting that the presence or absence of a hyphen is immaterial and that "uncovered" is primarily descriptive. The Panel examined the Policy’s definitions of Abusive Registration, considering factors that might demonstrate abuse or legitimate interest.

There was no evidence the Respondent used the domain names prior to the dispute or that the domain names were generic or descriptive in a way that would confer fair use. The Panel found no evidence of a blocking registration because the Complainant had no rights in the combined "CLUB18-30 UNCOVERED" name, nor was there sufficient evidence of the Respondent’s motivation to block the Complainant.

The Panel found no evidence that the registration was primarily for sale or to disrupt the Complainant’s business, preferring not to speculate beyond the evidence. The Respondent’s lack of response to proceedings and failure to provide a formal explanation weakened its position.

Considering the Respondent’s stated intention to use the domain names to uncover nightlife activities of the 18 to 30 demographic, the Panel found that given the Complainant’s well-known trade mark, it was highly likely the Respondent was aware of the mark and chose the domain names to take advantage of the goodwill. The Panel concluded that any use of the domain names in this context would likely cause confusion or suggest a connection with the Complainant, which would be unfair and detrimental.

The Panel disagreed with the Expert’s view that use of the domain names for events aimed at the 18-30 market but not organised by the Complainant would not be unfair, finding such use likely to cause confusion and take unfair advantage of the Complainant’s rights.

Holding and Implications

The Panel's final decision is to UPHOLD THE COMPLAINT IN PART by vacating the Expert's original decision and ordering cancellation of the disputed domain names rather than transfer.

This decision means the domain names will be cancelled rather than transferred to the Complainant, reflecting the Panel's conclusion that the Complainant did not establish rights in the full combined name including "uncovered". The ruling does not establish new precedent but clarifies application of the Policy regarding Abusive Registration and blocking registrations in the context of domain names incorporating known trade marks with descriptive additions.