Nominet UK Dispute Resolution Service

DRS 03911

Hal Beheer BV -v- Ian Walmsley t/a First Hosting

Decision of Independent Expert

a.	Parties

Complainant:	Hal Beheer B.V.
Country:	GB

Respondent:	Ian Walmsley trading as First Hosting
Country:	GB

b.	Domain Name

hollandamerica.co.uk (the “Domain Name”)

c.	Procedural Background

Nominet received the Complaint in full on 11 August 2006 and notified the Respondent of the validated Complaint by letter and e-mail dated 11 August 2006.  The Respondent failed to reply by the deadline of 5 September 2006.  Informal mediation not being possible in these circumstances, the Complainant paid Nominet the appropriate fee on 20 September 2006 for a decision of an Expert pursuant to §7 of the Nominet UK Dispute Resolution Service Policy Version 2 September 2004 (the “Policy”).  

Steve Ormand, the undersigned, (the “Expert”) confirmed to Nominet on 20 September 2006, that he knew of no reason why he could not properly accept the invitation to act as expert in this case and that he knew of no matters which ought to be drawn to the attention of the parties that might appear to call into question his independence and/or impartiality.  Nominet appointed the Expert with effect from 27 September 2006.

Nominet informed the Expert on 2 October 2006 that the Complainant had submitted a non-standard submission in accordance with §13b of the Nominet UK Dispute Resolution Procedure Version 2 September 2004 (the “Procedure”).  The Expert, having considered the Complainant’s explanation of the exceptional need for the non-standard submission, requested and received the full submission on 2 October 2006. 

d.	Procedural Issues

The Complaint names the Respondent as First Hosting.  It appears from the information provided to the Expert by Nominet that First Hosting is a trading name of Mr Ian Walmsley.

Nominet corresponded with the Respondent by letter to the registrant’s registered address and by e-mail to the registered administration contact e-mail address and to postmaster@hollandamerica.co.uk.  The e-mail address at postmaster@hollandamerica.co.uk returned a delivery failure report on both occasions it was used.  However, there is no evidence before the Expert to indicate that the Respondent did not receive the e-mails sent to the registered administration address nor the letters sent to the registered address.

In the absence of evidence of exceptional circumstances that prevented the Respondent from submitting a response to Nominet within the required time period, the Expert will now proceed to a Decision on the Complaint in accordance with §15b and c of the Procedure.

e.	The Facts

Complainant

The Complainant is a substantial company based in the Netherlands operating in the luxury cruise market and is part of the Carnival group.  Its parent company is the dual-listed company Carnival Corporation and plc whose revenue was some USD$11,000,000,000 as shown by its most recent published accounts.  Twelve of Carnival Corporation and plc’s 79 ships sail under the “HOLLAND AMERICA” brand.

Respondent

The Respondent registered the Domain Name on 14 April 2004.  

f.	The Parties’ Contentions

The Complaint

In summary, the Complainant’s assertions are:

1.	That the Domain Name is identical to the name “HOLLAND AMERICA” in which the Complainant has Rights (as defined in §1 of the Policy) because:

a.	The Complainant first started using the “HOLLAND AMERICA” and “HOLLAND AMERICA LINE” trade mark over 100 years ago in relation to cruise ship holidays.
b.	Over the years, an increasing range of goods and services have been sold, advertised and promoted under and by reference to the trade mark “HOLLAND AMERICA”.  The Complainant provided copies of brochures and other publications showing various services promoted by the Complainant.
c.	The Complainant’s US-based group company, Holland America Line Inc, is the proprietor of the domain name hollandamerica.com.  This domain name was registered on 12 December 1995 and has been used continually since this date.
d.	The Complainant is the proprietor of Community trade mark registration number 108753 for "HOLLAND AMERICA LINE" (copy of registration details provided).
e.	In or around September 2005, the Complainant’s representative (at P&O Travel) tried to contact the Respondent’s agent (the Registrant had opted to have their name and address omitted from the WHOIS service).  The Respondent’s agent failed to provide the owner’s name for over a month and eventually declined to divulge who owned the Domain Name.
f.	 The Complainant’s solicitors wrote to the Respondent’s agent on 8 December 2005 and highlighted the Complainant’s rights in the trade mark “HOLLAND AMERICA”.  The Complainant offered to reimburse the Respondent’s reasonable expenses in connection with the registration.  The Respondent’s agent did not acknowledge or respond to this letter.  The Complainant’s solicitors wrote again on the 30 January 2006.  To date, no response has been received from the Respondent or from his agent.

2.	That the Domain Name in the hands of the Respondent is an Abusive Registration (as defined in §1 of the Policy) because:

a.	The Respondent has no legitimate interests in the Domain Name.  There is currently no active site under the Domain Name (copy of a screen dump dated 08 August 2006 supplied).  As far as the Complainant is aware, there has not been an active site under the Domain Name since it was registered by the Respondent. 
b.	The Complainant’s investigations have revealed that the Respondent has registered some 79 UK domain names (full details provided) including:

		2008olympic.co.uk
		2008olympics.co.uk
		4sale.org.uk
		cruisebooker.co.uk
		royalolympic.co.uk
		seabourn.co.uk
		disneycruises.co.uk

c.	The next Olympic Games take place in Beijing in 2008.  It is unarguable that the Olympic name is one of the world’s most well known.  The Respondent has no connection whatsoever with the Olympic Movement and therefore the Respondent has no rights to the domain names 2008olympic.co.uk, 2008olympics.co.uk and royalolympic.co.uk. 
d.	“Seabourn” is also a well known name in the luxury cruise market.  The brand is owned by Seabourn Cruise Line Limited, a company registered in Bermuda with no connection to the Respondent.  Entering the name “Seabourn” into the search engine “Google” shows the widespread use of this name in relation to Seabourn Cruise Line Limited’s cruises (Google print out supplied).  The Respondent has no connection with Seabourn Cruise Line Limited and therefore has no right to the domain name seabourn.co.uk. 
e.	“Disney” is a world famous brand that needs no introduction.  The Walt Disney Company has interests in cruises promoted under the name “Disney Cruise Line”.  The Respondent has no connection with The Walt Disney Company and has no rights to the domain name disneycruises.co.uk. 
f.	The Respondent’s registration of these domain names demonstrates, under Paragraph 3(a)(iii) of the Policy, that the Respondent is engaged in a pattern of registrations which corresponds to well known names in which the Respondent has no apparent rights.  The Domain Name is part of that pattern and therefore the Domain Name is an Abusive Registration.
g.	The Domain Name constitutes a blocking registration under paragraph 3(a)(i)(B) of the Policy.  It is very clear from a cursory search of the internet that the Complainant, and the Complainant’s parent company, have valuable rights in the “HOLLAND AMERICA” brand (a Google search provided shows that the first page of “hits” relates exclusively to the Complainant’s business).  The Respondent was opportunistic in registering the Domain Name and has no legitimate interests in it.

The Complainant’s non-standard submission

The Complainant’s non-standard submission sets out the following sequence of events which occurred between the submission of the Complaint and the payment of the fee for a decision by an expert:

a.	On 11 August 2006 the Respondent confirmed to the Complainant’s solicitors by e-mail that he had received a copy of the Complaint (copy e-mail supplied).  The Respondent stated that he worked for and with a leading cruise agent in London and their intention was to use the Domain Name to assist members of the public to find cruises offered by the Complainant 
b.	On 17 August 2006 the Complainant’s solicitors wrote to the Respondent (copy supplied) stating that the proposed use of the Domain Name was likely to lead to confusion in the marketplace by suggesting there was some formal connection between the Respondent and the Complainant and falsely suggesting that the Complainant was endorsing the Respondent as an authorised agent, which the Complainant asserts is an Abusive Registration.  The Complainant’s solicitors reiterated the Complainant’s offer to reimburse the Respondent’s registration expenses (up to £200) if the Domain Name was transferred to the Complainant.
c.	On 18 August the Respondent confirmed by e-mail that he accepted the offer of £200 in reimbursement of costs (copy e-mail provided).  
d.	The Complainant’s solicitors asked the Respondent to inform Nominet that the Domain Name was to be transferred, which the Respondent failed to do.  The Complainant’s solicitors contacted the Respondent again to stress that the matter must be resolved by 20 September (the deadline for payment of the fee for a decision by an expert).  The Respondent confirmed on 7 September that he would deal with the matter.
e.	On 13 September the Complainant spoke to the Respondent.  The Respondent agreed to contact Nominet within 24 hours to transfer the Domain Name and also reiterated that the purpose of his registration of the Domain Name was to drive traffic to the Domain Name to offer cruises from the Complainant.
f.	On 18 September the Respondent confirmed verbally that he agreed to the transfer and would execute the required documentation that day.  The Complainant’s solicitors prepared draft transfer documentation for the Respondent to sign and return.
g.	The Respondent did not execute the transfer documentation.  The Complaint’s solicitors contacted Nominet to ask whether, in order to conclude the matter, it would be possible to obtain an extension to the deadline for payment of the fee for a decision by an expert.  Nominet confirmed this was not possible and so the Complainant paid the fee.

The Response

The Respondent has not submitted a Response.

g.	Discussion and Findings

General

To succeed in this Complaint, the Complainant has to prove to the Expert on the balance of probabilities, pursuant to §2 of the Policy, both limbs of the test that:

1.	it has Rights in respect of a name or mark identical or similar to the Domain Name; and
2.	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

The wholly generic domain suffix “.co.uk” is discounted for the purposes of establishing whether the Complainant has Rights in a name or mark which is identical or similar to the Domain Name.

Rights is defined in §1 of the Policy as including, but not limited to, rights enforceable under English law, but a Complainant may not rely on rights in a name or term that is wholly descriptive of the Complainant’s business.

The Complainant relies on Community trade mark in the name “HOLLAND AMERICA LINE” registered on 5 November 1999 and substantial rights in the brand “HOLLAND AMERICA” established by use of the brand in connection with the Complainant’s cruise liners.

In the Expert’s opinion the name is not wholly descriptive of the Complainant's business.  

The Complainant has, for the purposes of the first limb of the test pursuant to §2 of the Policy, established rights in a name, “HOLLAND AMERICA”, that is identical to the Domain Name.

Abusive Registration

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in §3 of the Policy.  The Complainant refers in the Complaint and its non-standard submission to the factors set out below.

§3a i B of the Policy

It may be evidence of Abusive Registration if the Respondent has registered or otherwise acquired the Domain Name primarily as a blocking registration against a name in which the Complainant has Rights.

The Complainant contends that it is very clear that the Complainant, and the Complainant’s parent company, have valuable rights in the “HOLLAND AMERICA” brand and thus the Respondent was opportunistic in registering the Domain Name and has no legitimate interests in it.  The Complainant presents no evidence that the Respondent’s purpose in registering the Domain Name was as a blocking registration.

§3a i C of the Policy

It may be evidence of Abusive Registration if the Respondent has registered or otherwise acquired the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.

Evidence of the Respondent’s purpose in registering the Domain Name is presented in the Complainant’s non-standard submission.  The Respondent states that his purpose in registering the Domain Name was to assist the public to find cruises offered by the Complainant under its brand “HOLLAND AMERICA”.  Clearly, the Respondent had the Complainant firmly in mind when registering the Domain Name and such use of the Domain Name would very likely lead some users to believe the Domain Name to be connected with the Complainant and would cause actual confusion. 

§3a iii of the Policy

It may also be evidence of Abusive Registration if the Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern.

The Complainant has presented such evidence in respect of 2008olympic.co.uk, 2008olympics.co.uk, seabourn.co.uk and disneycruises.co.uk.

Conclusion

The Expert finds, on the balance of probabilities, that the Respondent has registered the Domain Name in a manner consistent with §3a.i.C of the Policy, and that the Respondent’s registration of the Domain Name is part of a pattern of registrations consistent with §3a.iii of the Policy, which is an Abusive Registration in contravention of the Policy.

h.	Decision

In light of the foregoing findings, namely that the Complainant has Rights in respect of a name which is identical to the Domain Name and the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, hollandamerica.co.uk, be transferred to the Complainant.

Signed:	
Date: 	9 October 2006	
Steve Ormand