Domain name virtually identical to trademark - Likelihood of confusion - Bad faith use and registration - ICANN's Rules for Uniform Domain Name Dispute Resolution Policy - Survey as evidence of mark - Failure to file response with WIPO - Recognition of mark.

Complainant, the Association of British Travel Agents Limited [ABTA] has some 2,300 member businesses in the United Kingdom, Ireland and the European Union and its ABTA mark is used by them in connection with the advertising and sale of travel, accommodation and transport services to both businesses and members of the public. 

As evidence of recognition of trademark, complainant exhibits an extract from a survey whereunder 88% of those interviewed in the United Kingdom indicated awareness of ABTA. Authorised use of that name by member businesses provides members of the public with an assurance that member businesses are conducted in accordance with ABTA's Code of Conduct and are supported by its schemes of financial protection. 

Respondent is a private limited company, whose directors are hoteliers. Respondent filed no response with the WIPO Arbitration and Mediation Centre, but did send copies of correspondence to the WIPO Centre, indicating no intention to contest the disputed domain name. 

Held, Name Transferred to Complainant.

Respondent's domain name abta.net is identical to Complainant's United Kingdom registrations for the word mark ABTA and is in all material respects also identical to Complainant's United Kingdom registrations for the word mark ABTA and device. Complainant has not licensed or otherwise permitted Respondent to use its trade marks or service mark, or to apply for or use any domain name incorporating those marks. Respondent has no legitimate interests in respect of the domain name in issue. The domain name is not used in relation to an active web site. 

Respondent registered and used the domain name in bad faith. The concept of a domain name being used in bath faith is not limited to positive action, lack of action with respect to the domain name also may be regarded as evidence of bad faith use of the domain name. 

1. The Parties
Complainant is the Association of British Travel Agents Ltd [ABTA] of 68-71 Newman Street, London W1P 4AH. Respondent is Sterling Hotel Group Ltd of The Royal Hotel, Woolacombe, Devon EX34 7AD. 

2. The Domain Name(s) and Registrar(s)
The domain name at issue is: 

abta.net 

and the Registrar is Network Solutions, Inc. 

3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on February 21, 2000, [electronic version] and February 25, 2000, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform domain name Dispute Resolution Policy [the Rules of Uniform domain name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform domain name Dispute Resolution Policy [the Supplemental Rules]. Complainant made the required payment to the Center. 

The formal date of the commencement of this administrative proceeding is February 28, 2000. 

On February 25, 2000, the Center transmitted via email to Network Solutions, Inc a request for registrar verification in connection with this case. On February 25, 2000, Network Solutions, Inc transmitted via email to the Center Network Solutions' verification response confirming that registrant is Sterling Hotel Group and the contact for both administrative and billing purposes is Mr. Parminder Singh. 

Having verified that Complainant satisfied the formal requirements of the Policy and the Rules, the Center transmitted on February 28, 2000, to p-singh@btconnect.com and postmaster@abta.net the Notification of Complaint and Commencement of the Administrative Proceedings. The Center advised that the Response was due by March 18, 2000. On the same day the Center transmitted by fax and by mail copies of the forgoing documents to: 

Sterling Hotel Group
The Royal Hotel
Woolacombe
Devon EX34 7AB 

Subject as set out under paragraph 5 below, no Response was received from the Respondent by the due date of March 18, 2000. On March 20, 2000, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by Respondent to the Notification of Respondent Default was received. 

Having received on March 28, 2000, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was April 5, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with Rules and Supplemental Rules. 

Having reviewed the communication records in the case file, the Administrative Panel find that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complainant, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from Respondent save as set out in paragraph 5 below. 

4. Factual Background

4.1 The Complainant 

The Complainant, the Association of British Travel Agents Limited [ABTA] has some 2,300 member businesses in the United Kingdom, Ireland and the European Union and its ABTA mark is used by them in connection with the advertising and sale of travel, accommodation and transport services to both businesses and members of the public. Authorised use of that name by member businesses provides members of the public with an assurance that member businesses are conducted in accordance with ABTA's Code of Conduct and are supported by its schemes of financial protection. 

4.2 The Respondent 

The Respondent is a private limited company, whose registered office is The Royal Hotel, Beach Road, Woolacombe, Devon. The Company was incorporated on May 5, 1998. Its Directors are Gurjinder Singh: Dalbit Singh: and Purjinder Singh. Mr. Purjinder Singh and Dalbit Singh are described as Hoteliers [Annex A to the Complaint]. 

4.3 The Complainant's Trade Marks 

4.3.1 The United Kingdom Trade Mark Registrations
 

Copies of the Certificates of Registration and Renewal Notices for the above trade marks and service marks are contained in Annex C to the Complaint. 

4.3.2 The Complaint states that the Complainant "… has EU wide trade mark applications in the final stages of registration in Class … " 9: 16: 35-39: and 41-42. The Panel assumes that this refers to applications for a Community Trade Mark in those classes for the ABTA mark pursuant to Council Regulation [EC No. 40/94 of 20 December 1993 on the Community Trade Mark]. 

4.3.3 Recognition of the Complainant's ABTA mark 

At Annex D to the Complaint Complainant exhibits an extract from a MORI Survey in 1998 whereunder 88% of those interviewed in the United Kingdom indicated awareness of ABTA when shown a card including the mark ABTA and 10 abbreviations/acronyms for other organisations in response to the question: 

"Which of these organisations have you heard of, regardless of whether you know anything about them or not?" 

4.4 In the absence of a Response, there is no challenge by Respondent to Complainant's assertions as to ownership, use and reputation of its ABTA mark. 

5. Parties' Contentions

A. Complainant 

B. Respondent 

"Further to your facsimile message and documents which we received earlier today, we attach copies of letters we have sent to ABTA in relation to this matter. You will note from the correspondence that it is not the intention of Gurjinder Singh or The Sterling Hotel Group to contest this dispute and Mr. Nardi of ABTA has already been informed accordingly that any use of the domain name in question has been relinquished. 

Mr. Gurjinder Singh has been overseas for a considerable period of time and Mr. Nardi has been aware of this. Mr. Nardi would appear to have been somewhat hasty in bringing this case to your attention and presumably will be contacting you in due course to cease any action."

The letter is signed on behalf of Respondent by a Miss J L Britnell, Group Accountant. With that letter was enclosed a letter dated February 24, 2000, from Respondent to Complainant to which reference will be made in paragraph 6 below.

6. Discussion and Findings
6.1 The Policy para. 4a provides that Complainant must prove each of the following:

that Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and that Respondent has no legitimate interest in respect of the domain name; and the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

6.2 Respondent's domain name abta.net is identical to Complainant's United Kingdom registrations for the word mark ABTA and is in all material respects also identical to Complainant's United Kingdom registrations for the word mark ABTA and device. The Panel, therefore, finds Complainant succeeds in establishing the requirement of para. 4a(i) of the Policy. 

Rights or Legitimate Interest

6.3 Para 4c of the Policy provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's right of legitimate interest to the domain name for purposes of para. 4a(ii).

(i) before any Notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.

6.4 Respondent fails to satisfy any of the above requirements. The Respondent's web site for http://www.abta.net/ is shown as being "currently under construction" as at October 6, 1999 [Annex A to the Complaint].

Respondent's letter to Complainant of October 7, 1999 states, in relation to the domain name at issue:

"At this moment in time we are not sure exactly how we will be proceeding with the above site."

[Annex E to the Complaint].

Further, Complainant has not licensed or otherwise permitted Respondent to use its trade marks or service marks or to apply for or use any domain name incorporating those marks. Indeed, in Respondent's letter to Complainants of February 24, 2000, it is stated:

"Presumably, Mr. Singh was not aware that the name was held under trade mark and it would not have been his intention to cause any dispute."

6.5 In the circumstances, the Panel can find no evidence that would tend to establish that Respondent has legitimate interests in respect of the domain name in issue. The Complainant succeeds in establishing the requirement of para. 4a(ii) of the Policy.

Bad Faith

6.6 Para 4a(iii) of the Policy requires that Respondent's domain name must both have been registered and be being used in bad faith.

Both requirements must be met. Para 4b of the Policy sets out circumstances which, if found by the Panel to be present "… shall be evidence of the registration and use of a domain name in bad faith.". The Policy goes on to state that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.

Registered in Bad Faith

6.7 Despite the statement quoted above in Respondent's letter to Complainant of February 24, 2000, this conflicts with Mr. Gurjinder Singh's earlier letter on behalf of Respondent to Complainant of October 7, 1999. Complainant first put Respondent on notice of its claims and requested transfer of the domain name in issue by letter dated June 29, 1999. No reply having been received, reminder letters were sent by Complainant on August 3 and October 5, 1999. These letters are contained in Annex E to the Complaint. In Respondent's reply to Complainant of October 7, 1999 Mr. Gurjinder Singh states:

"At this moment in time we are not sure exactly how we will be proceeding with the above site. We may consider selling the site if an attractive offer was made." [Emphasis added]

Although in Respondent's subsequent letter of February 24, 2000, to Complainant [referred to above] Respondent requests reimbursement of its costs relating to registration of the domain name at issue, the Panel is not convinced by Respondent's latter protestation of good faith in relation to registration of the domain name in issue and Complainant, therefore, succeeds in establishing the first part of the requirement of para. 4a(iii) of the Policy.

Use in Bath Faith

6.8 From the foregoing, it appears that the domain name is not used in relation to an active web site. The concept of a domain name being used in bath faith is not limited to positive action: in action is within the concept [see, Decision D 2000-003]. The Panel may have regard any rules and principles of law that it deems applicable [para. 15(a) of the Rules]. The parties both being domiciled in the United Kingdom the Panel refers to a Decision of the English Court of Appeal in British Telecommunications & Others .v. One in a Million Limited (1999) FSR 1 wherein it was held that a threat to infringe Plaintiffs' well known trade marks by Defendant registering them as domain names was sufficient use for the purposes of the UK Trade Marks Act 1994.

6.9 Taking into account the circumstances of this case, the Panel finds that Complainant succeeds in establishing the second part of the requirement of para. 4a(iii) of the Policy.

7. Decision
For all the foregoing reasons, the Panel decides that Complainant has proved each of the three elements of para. 4 of the Policy. Accordingly, the Panel requires that the registration of the domain name abta.net be transferred to Complainant.

David Perkins
Sole Panelist
Dated : March 29, 2000