Nominet UK Dispute Resolution Service

DRS 03713

Med Playa Management, SL and Another v. Emma Barrington

Decision of Independent Expert

1.	Parties:

Complainant 1:	Med Playa Management SL
Country:		SPAIN

Complainant 2:	Viajes Holidaysinspain.com.SA 
Country:		SPAIN

Respondent:	Emma Barrington
Country:		GB

2.	Domain Name
holidaysinspain.co.uk ("the Domain Name"). 
3.	Procedural Background
3.1	Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively).

3.2	Nominet received the Complaint in full on 30 May 2006, validated it and sent it on to the Respondent on the next day, advising the Respondent he had 15 working days, from the date of deemed receipt, until 22 June 2006, to submit a Response.  The Respondent submitted a Response on 21 June 2006.  On 28 June 2006, the Reply was lodged.  The parties were informed on 21 July 2006 that if the Complainant paid the requisite fees by 4 August 2006, the dispute would be referred to an independent expert and the fees were paid.

3.3	After confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I, Victoria McEvedy, was appointed as an independent expert in this dispute on 11 August 2006. 

4.	The Facts
4.1	The Domain Name was registered by the Respondent on 5 November 1999, as recorded in the Register and WHOIS reports supplied to me by Nominet.

4.2	I was also provided with a printed page showing, that as at 31 May 2006, the Domain Name pointed to a website on which the introductory graphic resolved to a map of Spain which contained the words “Welcome to Holidays in Spain. Please feel free to browse around our website. We have a selection of privately owned properties in southern Spain…”  This was all in plain text.  The site had links and images for 3 properties, the third of them with 3 apartments.

4.3	The first Complainant is the owner of a Spanish hotel chain.  On 19 September 1998, it registered the domain name “holidaysinspain.com” and launched the website www.holidaysinspain.com.  The second Complainant is the assignee of the domain name and website created by the first Complainant. It subsequently registered two national Spanish trademarks, HIS HOLIDAYS IN SPAIN.COM and VIAJES HOLIDAYS IN SPAIN.COM (also its company name) and a Community figurative or logo mark for HOLIDAYSINSPAIN.COM with graphics and an illustration of a sun.     

5	The Parties' Contentions

5.1	Complainants’ Case 

5.1.1	The Complainants say the Domain Name is identical or similar to a name or mark in which they have Rights.  The Domain Name in the hands of the Respondent is an Abusive Registration.

5.1.2	The Complainants say they have Rights in the Domain Name because: 

5.1.2.1	The first Complainant, a Spanish limited liability company, has been engaged in the hotel business since 29 June 1984, managing a chain of hotels at beach resorts in Spain.  Certificates and the homepage of the first Complainant’s website at www.medplaya.com were provided as annexes.  

5.1.2.2	The first Complainant says it began to promote its business on the Internet when it registered the domain name <holidaysinspain.com> on 19 September 1998, and launched the website www.holidaysinspain.com. A WHOIS search was provided.  

5.1.2.3	The second Complainant says it was incorporated on 27 February 2004, and trades under the name VIAJES HOLIDAYSINSPAIN.COM.  It took an assignment of the .com domain name and website from the first Complainant.  The second Complainant is a licensed Tour Operator and Travel Agency offering tourist facilities in Spain.  There is some commonality in the shareholders and directors of the two Complainants.   

5.1.2.4	The second Complainant is the owner of three registered trademarks and one pending application. The two Spanish registered marks are M-2577343 HIS HOLIDAYSINSPAIN.COM, registered on 14 July 2004, and N-0260065, VIAJES HOLIDAYSINSPAIN.COM”, registered on 16 September 2005.  The Community mark, registration No. 004288321, HOLIDAYSINSPAIN.COM was filed on 11 March 2005 and registered on 13 April 2006.  The pending application for a Community mark is No. 003781283, for “HIS HOLIDAYSINSPAIN.COM”, filed on 30 April 2004.  All are in classes 39 (Travel) and 43 (Services for providing food and drink; temporary accommodation) Certificates etc were provided.     

5.1.2.5	The Complainants say they have invested about €300,000 on developing a presence on the internet to promote the hotel chain, including  designing and maintaining the website and registering the trademarks and almost forty domain names containing the words  “holidaysinspain” all of which point to the .com website, www.holidaysinspain.com. 

5.1.2.6	The Complainants says the Respondent has no relationship with them or permission from them to use the name and registered marks and/or any name confusingly similar thereto.  

5.1.3	The Complainants say the Domain Name in the hands of the Respondent is an Abusive Registration because: 

5.1.3.1	The Respondent has no evident connection to the temporary accommodation industry, nor is its business commonly known by the Domain Name nor has it acquired similar trade marks. 

5.1.3.2	The Respondent registered the Domain Name on 5 November 1999, after the first Complainant started e-business under the name and after the registration of the .com domain name on 19 September 1998 and the launch of the website www.holidaysinspain.com. The Complainants’ statutory and common law rights therefore pre-date the Domain Name registration.

5.1.3.3	Given the Complainants’ reputation and goodwill in the name “HOLIDAYSINSPAIN”, it is inevitable that the Respondent's registration and use of the Domain Name was intended to take unfair advantage of the Complainants’ reputation. The Respondent knew or should have known of the Complainants’ reputation in the hotel business when the Domain Name was registered. 

5.1.3.4	The Respondent’s website gives no information, eg. on the “About us” page, on the individual or legal entity operating the site and this shows the only reason for the Respondent's adoption of the Domain Name, was, and remains, to take advantage of the reputation and goodwill of the Complainants in the name.  By using the Domain Name, the Respondent is clearly trying to direct Internet traffic to her website. 

5.1.3.5	The test in Chivas Bros. Ltd –v- D. W. Plenderleith, DRS 00658, applies. 

5.2	Respondent’s Case 

5.2.1	As to the position when the registration was made: 

5.2.1.1	The Respondent says she registered the Domain Name in November 1999 as a suitable and appropriate name for a small villa and apartment rental business, a family business run by herself and her mother, Val Williams.  

5.2.1.2	The Respondent says the name 'Holidays in Spain' is a generic term chosen as it clearly described the product she was offering.

5.2.1.3	The Respondent says that at the time the name was apparently not linked to any business based on her inquiry with Companies House in the UK and notes that this remains the case to date.  

5.2.1.4	The Respondent believes, but says she cannot prove, the www.holidaysinspain.com website was not in operation at that time.  

5.2.1.5	The Respondent says as far as she could ascertain at the time, she was not breaching any trademarks, copyright or other rights.

5.2.1.6	The Respondent says that while the Complainant now claims to have purchased or acquired over 40 domain names containing 'holidaysinspain' or similar, at the time the Respondent registered the Domain Name, this was not the case. 

5.2.1.7	When the Respondent first became aware of the site, she realized that they were marketing a different product which did not appear to be aimed at the UK market so she did not anticipate any problems.  

5.2.1.8	She does not accept the assertion that she knew or ought to have known of the Complainants' reputation in the hotel business as she does not believe that the holidaysinspain.com name, brand or reputation is well known in the UK.

5.2.2	As to Abusive Registration:  

5.2.2.1	The Respondent says the Domain Name was not registered for the purposes of selling it to the Complainants or competitors for profit. 

5.2.2.2	The Respondent says the second Complainant approached her in 2005 with a view to purchasing the Domain Name but the proposal (which included the Respondent being entitled to select two domain names from a list of six) was too complex.  It appears from the emails annexed that the Complainants also offered to set up, design and run the website and offered the Respondent the chance to link to their site and earn commission on bookings coming from the link.  The Respondent says it appeared to represent a substantial commitment which was not one of her business objectives. The Respondent also says “the attitude of the second Complainant’s representative in telephone communication was somewhat different” , meaning unfriendly, and she did not feel sufficiently confident that her interests would be protected. The Respondent also notes that the domain names suggested were unsuitable as they were names containing the words 'hotels' or 'resort deals' which were not relevant to her business.  

5.2.2.3	The Domain Name was not intended as a blocking registration against a name or mark. 

5.2.2.4	The Respondent believes the Complainants did not acquire any Rights until 2004.

5.2.2.5	The Respondent says she has not, and never has had, any intention of unfairly disrupting the business of the second Complainant.  She also says there is no evidence of this.  

5.2.2.6	The Respondent says she is not using the Domain Name in a way which has confused people or businesses into believing the Domain Name is registered to, operated or authorised by, or otherwise connected with, the Complainants. 

5.2.2.7	As to both disruption and confusion, the Respondent says:  

5.2.2.7.1	She has never received any communications of any kind from potential or existing customers of the Complainants’ and even if she had, she would “direct them to the Complainants’ website as a matter of goodwill” and says she hopes the Complainants would do the same.  

5.2.2.7.2	The Complainants have not contacted her about confusion.  

5.2.2.7.3	The Complainants run a chain of hotels and she rents out a holiday villa and apartments. 

5.2.2.7.4	If there is a problem, this could have been resolved with reciprocal links and a short explanation on the sites to redirect anyone who may have inadvertently visited the wrong site. 

5.2.2.7.5	If there was any intention to confuse anyone into believing the Domain Name was in any way connected with the Complainants, some effort would have been made to copy the logo, branding, colours or design of the Complainants’ site and that is not the case.   

5.2.2.7.6	The Domain Name has been used in advertising and low key marketing of the service, but never in a way which might confuse a potential consumer of the Complainants’ businesses. 

5.2.2.7.7	The 'Rates and How to Book' page on the holidaysinspain.co.uk website clearly indicates the name, telephone number and email address for Mrs Williams, the contact point for bookings and Mrs Williams was contacted by the Complainant, in 2005 without any difficulty.

5.2.2.7.8	The Respondent’s website has been operational since registration in 1999 and the business has a loyal client base. She has never sought, nor would seek, to undermine, compete with or imitate any other business in the Spanish holiday market.   

5.2.2.7.9	The first Complainant traded as Med Playa Management, not holidaysinspain, since 1984, and is probably more likely known for that brand, than holidaysinspain. It only registered the business Viajes Holidays in Spain in 2004 and runs a chain of hotels and is not involved in holiday rental of apartments and villas.  

5.2.2.8	The Respondent says that at all times she has used the Domain Name for a genuine offering of goods and services, namely holiday rentals of a villa and apartments in Spain, being offered to a UK audience. The Respondent says she has made fair use of the Domain Name.

5.2.2.9	The Domain Name is generic and descriptive and cannot be deemed only suitable for the marketing of a hotel chain.

5.2.3	As to the allegation at §5.1.3.5 above:  

5.2.3.1	When the Respondent registered the name, there was no indication that the Complainant had any rights in the name and it appears that these rights were only granted in 2004, five years after she registered the Domain Name. 

5.2.3.2	The name is generic or descriptive and not exclusively referable to the Complainant.  There are a number of other businesses running websites with the Domain Name 'holidaysinspain' and details were annexed.

5.2.3.3	The name was chosen in good faith as an accurate and appropriate description of the business. 

5.2.3.4	As the name is a generic description and the Complainant had not registered any rights in the name or started using it as a brand on their website, there was no question of the purpose of the registration being abusive.  

5.3	The Complainants’ Reply

5.3.1	As to the allegation in §5.2.1.2 above, the Complainants say generic names cannot be trademarks and descriptive names are not registerable unless the name has become distinctive through extensive use in trade.  If therefore “holidaysinspain” was generic or descriptive, it would not have been registered as a trademark yet the second Complainant has registered two national marks and one Community mark of the name. 

5.3.2	As to the allegations in §5.2.1.3 -8 above, the Complainants say their site was operational when the Respondent registered the name as it has been in operation since 19 September 1998, almost a year and 2 months before the Respondent registered the Domain Name.  The Complainants refer to the ALEXA.COM search annexed which gives site statistics and says it has been online since 19 September 1998. The WHOIS search also gives the same date for the .com domain name. 

5.3.3	As to the allegations in §5.2.2.4 and 5.2.2.7.9 the Complainants deny they did not acquire any Rights until 2004. They rely on their trade under the name since 19 September 1998, when the .com domain name was registered and the site launched.  They have acquired a reputation and goodwill in the name “holidaysinspain” sufficient to mount an action for passing off.    

5.3.4	As to the allegation in §5.2.1.8 above, the Complainants say the Respondent’s villas and apartments are located in Costa del Sol, where the Complainants own and operate three hotels, and have done so since 1984.  The Respondent therefore likely knew of the Complainants and their reputation. 

6.	Discussion and Findings
	6.1	General 
6.1.1	Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it’s an Abusive Registration, as defined in the Policy—paragraph 2(a) of which requires a Complainant to prove 2 elements:
	"i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
	ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration."
6.1.2	A Complainant bears the burden of proof and must prove both elements on the balance of probabilities. 

	6.2	Complainants’ Rights 
	6.2.1	Rights are defined by the Policy as including, but not limited to, rights enforceable under English law. In English law it includes rights to registered and unregistered trade marks, as well as contractual and other rights. 

6.2.2	Not being limited to English law, Rights includes those arising under foreign law and therefore extends to the marks registered in Spain and rights similar to our unregistered marks which are given equivalent recognition and treatment under the Policy.  It appears from Bettinger, Domain Name Law and Practice 2005, at §ES.68 that Spain protects unregistered marks by the Act against Unfair Competition 1991.  In any event, the Community Mark has direct effect in the UK.

6.2.3	Rights protected by Spanish unfair competition law are however still relevant in this case since the Complainants say their rights arose from the date they established their internet presence in September 1998 – not from the dates on which the Community and national marks were registered.  

6.2.4	The Respondent says the first Complainant traded as Med Playa Management, not holidaysinspain, since 1984 –so that rights protected by unfair competition law do not arise in the name.  I am satisfied the .com name was also used at least since early 1999, based on the evidence discussed further below.  I also do not doubt that under Spanish law it is possible to assign a business, or part thereof, and the goodwill associated with that business and it was possible for the first Complainant to transfer that goodwill to the second Complainant.  Even if I am wrong, the first Complainant is also in this proceeding and in some way or another, one or both of the Complainants must have the rights protected under Spanish unfair competition law.

6.2.5	The Respondent also says the name is generic or descriptive and not exclusively referable to the Complainant.  The definition of Rights in the Policy provides that Complainants are unable to rely on Rights in names which are wholly descriptive of their businesses.  

6.2.6	Certainly the words Holidays in Spain are descriptive of travel arrangement services.  The Community mark would not be capable of distinguishing the Complainants’ services from those of other traders, which is the essential function of a trade mark, without the addition of the stylization and the illustration which render it a logo or figurative mark.  That is, the words alone would not be capable of distinguishing the services – without evidence of goodwill and reputation acquired from use –rendering the mark distinctive.  It is clear from the CTM-OnLine search that I was provided with, that no evidence of acquired distinctiveness was submitted in support of the registration.  The Complainants may also be unable to enforce that part of the mark that is descriptive – that is, the words alone, as by virtue of Article 12 of the Community Trade Mark Regulation, a Community mark does not entitle the proprietor to prohibit a third party from using in the course of trade:…. “(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practices in industrial or commercial matters.”

6.2.7	The English law of passing-off also imposes similar limits and in choosing a descriptive name, a trader takes the risk of confusion and small differences in the names will generally be accepted as adequate to avoid confusion, see Office Cleaning Services Ltd v. Office Cleaners Association (1946) 63 RPC 39 HL, although  where, through use, the name has acquired a secondary meaning, becoming so closely associated with a particular trader that the goodwill can be established, the name will be protected eg Parker & Son (Reading) Limited v. Parker [1965] RPC.  

6.2.8	No evidence has been submitted as to the position as to descriptiveness in the law of unfair competition in Spain.  Nor has sufficient or indeed any real evidence been submitted of reputation and goodwill –and therefore acquired distinctiveness –either in Spain or elsewhere.  

6.2.9	However, the standard required to make out Rights under the Policy is not a high one, see decision of the Appeal Panel in Seiko v. Designer Time DRS00248, and as I will have to revisit the issue of descriptiveness in relation to Abusive Registration, I am prepared to find at this stage that the Complainants have Rights in the name HolidaysinSpain.

6.2.10	Paragraph 2(a)(i) of the Policy requires that the name or mark in which a Complainant has Rights "is identical or similar to the Domain Name."  In determining this, the www. prefix is ignored, as are suffixes, here ".co.uk", see the decision of the Appeal Panel in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359.  Spaces, and use of upper or lower case, are immaterial. The suffix in the domain names are ignored but not in the name or mark –and in this case, the Community mark includes the “.com”.  That name is therefore similar, rather than identical to, the Domain Name.   

6.2.11	I find that the Complainants have proved, on the balance of probabilities, that they have Rights in a name which is similar to the Domain Name.
   
7.	Abusive Registration
	7.1	The second element a Complainant must prove under paragraph 2(a) of the Policy, is that the Domain Name is an Abusive Registration, defined in paragraph 1, as follows: 
	"Abusive Registration means a Domain Name which either:

i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; or

ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights".

7.1	Paragraph 3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration.  The Complainants rely on a variety of these factors.  Paragraph 4 of the Policy provides a non-exhaustive, illustrative, list of factors, by which Respondents may rebut an inference of Abusive Registration and again, the Respondent has raised a number of these.

7.2	The DRS does not decide issues of defamation, trade mark infringement or passing-off per se, which are matters for the courts.  I will not therefore make any finding as to those.  The DRS is concerned solely with Abusive Registrations under the Policy.   

8	Discussion 

8.1	The Complainants’ case centers on Chivas Bros. Ltd –v- D. W. Plenderleith, DRS 00658, and its 4 part test, namely that when a Respondent registers a Domain Name: 1) identical to a name in respect of which a Complainant has rights; 2) that name is exclusively referable to the Complainant; 3) there is no obvious justification for the Respondent having adopted that name; and 4) the Respondent has come forward with no explanation for having selected the Domain Name, it will ordinarily be reasonable to infer that the Respondent registered the Domain Name for a purpose and that purpose was abusive. In this case however, the Respondent has come forward with numerous explanations, dealt with in turn below. 

8.2	An important issue under Chivas is whether the name is exclusively referable to the Complainants.  The Respondent submitted evidence of two other domain names and their sites, www.holidaysinspain.org.uk and www.holidaysinspain.info.    Reference was also made to the Complainants having 40 other domain names employing the words, although neither party indicated what those names were.  I can see the second Complainant in its offer to buy the Domain Name, gave the Respondent a choice of a number of names including Spaincheapholidays.com, Lowcostspainaccomodation.com, Spainhotels.com.es, Spanishsummerdeals.com etc.  It is unclear to me from the evidence whether the name is exclusively referable to the Complainant.  I am entirely unable to determine this from the evidence submitted.  The Respondent asserts the Complainants did not and do not have a reputation in the UK that she should have been aware of.  The Complainants do not submit any evidence as to the number of their customers who are UK residents or their advertising or promotion in the UK.  What they say however is that they operate and have operated 3 hotels in the Costa del Sol which is where the Respondent operates and the Respondent likely knew of their reputation there.  An internet presence in English and directed at the English tourist market is akin to trading in the UK but I am unable to reach any conclusions due to the paucity of evidence.

8.3	This is related to the claim that the name is generic and descriptive, already referred to above and I find here that it is. I accept the Respondent registered the Domain Name as a suitable and appropriate name to describe her business.  If the Respondent was unaware of the Complainants’ use of it, then the registration will not be Abusive.   

8.4	The Respondent says when she registered the Domain Name, there was no indication that the Complainants had any rights in it.  The Respondent relies on her inquiry with Companies House and although we are not told what other steps she took to investigate, she says as far as she could ascertain at the time, she was not breaching any trademarks, copyright or other rights.  Central to this issue is the Respondent’s contention that the www.holidaysinspain.com website was not in operation at the time she registered the mark. Although not expressly stated, presumably she means that she carried out web searches and did not find it.  The Complainants however say that it was and had been in operation since September 1998 and rely on the CORE WHOIS search and the ALEXA.COM search.  It is clear from the WHOIS search the .com domain name was registered on 19 September 1998.  The ALEXA.com search – gives the same date. I was concerned that date might have been supplied to ALEXA by the Complainants at some point and not reflect the date of actual launch.  I therefore accessed the “waybackmachine” feature of ALEXA which enabled me to view the historical pages as far back as 1999. It showed the site had been updated on 27 April 1999.  It seems that the site was in operation under the .com name at that date at the latest.  The site content appears to have been branded Medplaya but I cannot tell this conclusively as the pixels did not open the images.  I find that the site was in operation in April 1999 –and therefore before November 1999 when the Respondent registered the Domain Name. It is entirely possible however that the name was not registered with the relevant search engines or that, for whatever reason, the Respondent was unable to locate it.  Because I cannot be certain, I find the Respondent was not aware of the Complainants’ use of the name at the point of registration.  Unless the use since registration has been abusive, I will find for the Respondent.     

8.5	 For the sake of completeness however, I note briefly, the Respondent is not correct that rights were only granted in 2004, five years after she registered the Domain Name as this ignores reputation and goodwill that English law protects in passing-off and Spanish law protects by the law of unfair competition.  I accept the Respondent’s reliance on factor 4aiA of the Policy, namely that before being aware of the Complainant’s cause for complaint, she had “used or made demonstrable preparations to use the Domain Name… in connection with a genuine offering of goods and services.”   The Respondent gives a lengthy explanation as to why she refused the Complainants’ offer to purchase the Domain Name but this is unnecessary as in my view, in this case, it does not imply anything as to her purpose at the point of registration.  

8.6	As to the evidence as to use after registration, firstly the Respondent says when she first became aware of the site, although she does not say when that was, she took the view that the Complainants were marketing a different product which did not appear to be aimed at the UK market.  Given the English name and content, and the extent to which the British patronize the Spanish tourist market that might not be a good distinction.  Both offer tourist accommodation at one level of generality.  I think the real nub of this is the Respondent’s statement that for these two reasons “she did not anticipate any problems.”     Turing to confusion and disruption, the Respondent says she has no intention of unfairly disrupting the business of the second Complainant and she has never sought, nor would seek, to undermine, compete with or imitate any other business in the Spanish holiday market.  This does not really advance matters.  More pertinently, she also points to the lack of any evidence of actual confusion.  However the Policy factors are non-exhaustive and a likelihood of confusion is also relevant and can arise from similarity, common field and mode of use.  The Respondent says if there was actual confusion, she would “direct the confused to the Complainants’ website as a matter of goodwill” and says she hopes the Complainants would do the same.  Again, this does not advance matters, nor does the suggestion of reciprocal links.  The Respondent also relies on the difference in the look and feel of the two sites as evidencing her lack of intent to confuse or disrupt and the contact details given for Mrs Williams on the booking page.  The Respondent says she has made fair use of the Domain Name. I think in this sense the term is used to mean honest and is not a reference to the non-commercial fair use in 4aiC of the Policy, which is not applicable.  The evidence does not suggest use in a manner which is abusive.  

9.	Decision

Taking all the circumstances of this dispute into account, I find that although the Complainants have Rights in a name similar to the Domain Name, the Domain Name in the hands of the Respondent is not an Abusive Registration 
and direct that no action be taken in relation to the Domain Name.   

Victoria McEvedy 
25 August 2006