Your Golf Travel Limited v Hardelot Holidays Limited

Report Headline
This WIPO decision shows that, even in cases where a complainant can clearly show that its intellectual property rights have been infringed by the registration and use of a confusingly similar domain name, the complainant will only succeed where the offending domain name has been registered and used in bad faith.

The Parties
Your Golf Travel Limited v Hardelot Holidays Limited

The Citation
Case No: D2007-1058

The Tribunal
WIPO Arbitration and Mediation Center; Administrative Panel Decision.
Sole panellist: Tony Willoughby

The Context
Under Paragrpah 4(a) of WIPO's Uniform Dispute Resolution Policy a person (the "claimant") that wishes to have a domain name registered in the name of a third party (the "defendant") transferred to the claimant must show that:

(i) the defendant's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the defendant has no rights or legitimate interests in respect of the domain name; and
(iii) the defendant domain name has been registered and is being used in bad faith.

The Facts
Your Golf Holidays Limited (the "Complainant") was incorporated on 5 October 2004 and registered its domain name <yourgolftravel.com> on 29 November 2004. It is engaged in the business of selling golfing holidays and has traded under the names YOURGOLFTRAVEL and yourgolftravel.com since 1 December 2004 (the "Complainant's Marks"). In the period from 1 December 2004 to 31 March 2006 the Complainant has a turnover of just under £400,000 and now has a turnover of £1,000,000 per quarter. On 18 May 2007 the Complainant applied to register the Complainant's Marks as Community Trade Marks in respect of golf related goods and services.

Hardelot Holidays Limited (the "Respondent") was incorporated on 9 October 1990 (although the incorporated business that it acquired had been trading since 1981). Up until 2005 the Respondent had traded under a number of different names, but in 2005 it decided to rebrand as Your Golf Holidays. It registered <yourgolfholiday.com> on 28 November 2005 and <yourgolfholidays.com> on 7 February 2005 (the "Domain Names").

At some stage in early 2007 the Respondent ran a TV advertising campaign under the Your Golf Holidays name and as a result of this campaign the Complainant received a number of misdirected enquiries. The Complainant also had other evidence of confusion on the part of the public arising out of the similarity out of the parties' trading name.

Accordingly, on 18 July 2007, the Complainant launched a claim under WIPO's dispute resolution procedure claiming that the Respondent's registration of the Domain Names were abusive registrations within the meaning of paragraph 4 of the UDRP as a result of the unregistered trade mark rights that the Complainant had accrued in the Complainant's Marks .

The Respondent argued that the Complaint had not accrued any protectable goodwill in the Complainant's Marks on the grounds that the Complainant's Marks were inherently descriptive. Further, the Respondent operated at the top end of the market and the Complainant at the other end and so there was no likelihood of confusion. Crucially though, the Respondent argued that it did not register and is not now using the Domain Names in bad faith as it was unaware of the Complainant at the time that it registered the Domain Names.

The decision
Dealing with each limb of paragraph 4 in turn:

Identical or Confusingly Similar
As a result of the evidence submitted by the Complainant, the Panel had no difficulty in finding that there was a likelihood of confusion on the part of the public between the Complainant's Marks on the one hand and the Domain Names on the other. Further, with the sole panellist relying on his own experience as a golfer of some longevity, the Panel found that the Complainant's Marks were not wholly descriptive as the combination of words in the Complainant's Marks was not an ordinary combination. Accordingly, the Panel was of the view that a Court would have no difficulty in granting the Complainant injunctive relief against the Respondent in a passing off action. The Panel also pointed out that, contrary to the Respondent's submissions, just because a mark is incapable of protection as a registered trade mark, it does not follow that protectable goodwill cannot accrue in that mark (the Panel cited the case of Phones4u Limited anor v phone4u.co.uk Limited & ors [2006 EWHC Civ. 244} as authority).

Rights or Legitimate Interests
The Panel held that the question of whether the Respondent had rights or legitimate interests in the Domain Names would depend on whether use of the Domain Names amounted to passing off. However, the Panel did not make a finding on this limb as there was no need for it to do so as a result of its finding on the final limb.

Registered and Used in Bad Faith
The Panel pointed out that the Domain Names must have been registered AND used in bad faith if the Complainant is to be successful. The Complainant provided significant evidence to show that the Respondent was using the Domain Names in bad faith (by showing that the Respondent had known about the Complainant's business for some time prior to commencement of this action). However, the Complainant had failed to prove that the Respondent had registered the Domain Names in bad faith.

The Complainant had put forward a number of arguments as to why the Panel should infer that the Respondent must have been aware of the Complainant's business at the time that it registered the Domain Names:

the golf tourism industry is relatively small and, bearing in mind that the Complainant had launched its business almost 12 months prior to registration of the Domain Names, the Respondent must have been aware of the Complainant;
one of the Complainant's directors had been registered on the Respondent's newsletter with an email address ending "@yourgolftravel.com"
prior to registration of the Domain Names, the Complainant made a booking through the Respondent in which it identified itself as Your Golf Travel;
the source text behind the Respondent's site included the phrase "your golf travel" in the meta-tag.

Of these, the Panel found that only the first argument has any merit. The Panel though it inconceivable that the Respondent would not have carried out some basic searches prior to registering the Domain Names, but no evidence was provided as to what those searches would have revealed on 28 November 2005. Accordingly the Panel could not find that the Domain Names had been registered in bad faith and so the complaint must fail.

Comment
This case highlights the differences between the law of passing off and the operation of the UDRP. The Panel was of the view that the Complainant had a good prima facie case under the law of passing off sufficient to justify the granting of an injunction (although it noted that a Court would have the benefit of full disclosure and witness evidence at full trial). However, the UDRP requires that as well as infringing a complainant's rights, a domain name must be registered and be used in bad faith to amount to a bad faith registration.

Although the UDRP procedure is generally quicker and cheaper than commencing litigation through the Court, this additional requirement to prove bad faith shows that success under the UDRP is not guaranteed and should be considered carefully even in cases where use of the offending domain name clearly amounts to passing off or registered trade mark infringement.