Nominet UK Dispute Resolution Service

DRS 5634

On the Beach Limited v Realm Solutions, Inc

Decision of Independent Expert

1.	Parties
 
Complainant:
 
On the Beach Limited
Manchester
 
Respondent: 
 
Realm Solutions, Inc
Alberta
 
2.	Domain Name
 
<otbeach.co.uk>
 
3.	Procedural Background
 
A Complaint in respect of <otbeach.co.uk> (the “Domain Name”) under Nominet UK's Dispute Resolution Service Policy ("the Policy") was received from the Complainant and forwarded to the Respondent by Nominet on 16 April 2008.  No Response was received from the Respondent.
 
On 13 May 2008 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”).  The Complaint was referred for a decision by an Independent Expert following payment by the Complainant of the required fee on 14 May 2008.  I was appointed as Independent Expert as of 21 May 2008 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
 
4.	Outstanding Formal/Procedural Issues (if any)
 
There are no outstanding formal or procedural issues.
 
5.	The Facts
 
The Complainant is a UK company that provides travel arrangement and holiday accommodation services, particularly through its website at www.otbeach.com.  It is the registered proprietor of UK trade mark no. 2459586 OTBEACH registered as of 27 June 2007.  

According to the Nominet WhoIs database, the Domain Name was registered on 21 May 2006.  At the date of the Complaint the Domain Name resolved to a domain parking web site with links to other websites under various headings including “All Inclusive Resorts”, “Bargain Holiday” and “Beach Vacation”.  
 
6.	The Parties’ Contentions
 
Complainant
 
A summary of the submissions by the Complainant is as follows:

a)	The Complainant was incorporated under the name On the Piste Travel Limited in February 1996.  It traded under the name On the Piste.  In May 2004, the Complainant opened a new division trading as On the Beach.  Between May and July 2004 (when it registered the domain name <otbeach.com>), it decided to contract the trading name to OTBeach.  The Complainant has operated a website at www.otbeach.com continuously since early 2005, advertising and promoting travel arrangements and the arranging of holiday accommodation;

b)	The Complainant has spent considerable sums promoting its website and business under the name OTBEACH over the years since 2005, rising from £250,000 to £3,250,000 in 2007;

c)	The Complainant’s turnover for the year to 30 September 2007 was £77,160,000 of which £75,670,000 was attributable to the OTBEACH/On The Beach business;

d)	The Complainant is the registered proprietor of UK trade mark no. 2459586 OTBEACH registered as of 27 June 2007 in classes 39 and 43 in respect of services including travel arrangement and arranging holiday accommodation;

e)	The name OTBEACH was invented by the Complainant in response to its business needs and the chances of the Respondent having an independent explanation for using it are miniscule.  It is most likely that the Respondent adopted the Domain Name because it knew of the Complainant’s use of OTBEACH and registered the Domain Name in order to confuse people into believing that there is an association between the Complainant and the Respondent and to divert Internet users from the Complainant to the Respondent’s website at www.otbeach.co.uk.

Respondent
 
The Respondent has not filed any response to the Complaint.  

7.	Discussion and Findings:
 
General
 
Although the Respondent failed to submit a Response to the Complaint, there is no scope for a decision in default under the Policy and Procedure.  Under Paragraph 15c of the Procedure, the Complainant is still required under clause 2b of the Policy to prove to the Expert on the balance of probabilities that:
 
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.
 
Complainant’s Rights
 
“Rights” are defined in the Policy and in the Procedure.  Rights “includes, but is not limited to, rights enforceable under English law”.  
 
The Complainant has adduced uncontroverted evidence of its registration of the UK trade mark OTBEACH and of its use of the mark OTBEACH in connection with its business of providing travel arrangement and holiday accommodation services since early 2005.

Ignoring the suffix “.co.uk” the Domain Name is identical to OTBEACH.  Accordingly, I am satisfied that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.
 
Abusive Registration
 
Paragraph 1 of the Policy defines “Abusive Registration” as 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.
 
A non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3 of the Policy.  These include:
 
3ai	Circumstances indicating that the Registrant has registered or otherwise acquired the Domain Name primarily:

C.	for the purpose of unfairly disrupting the business of the Complainant; and

3aii	Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant; and

The Respondent has not answered the Complaint and there is, therefore, no explanation as to the circumstances in which the Domain Name was registered.  The Domain Name resolves to a domain parking web page that uses a search engine to draw up a list of links to websites that includes a number of third parties offering a variety of travel and holiday services.

The name OTBEACH is a meaningless, invented word and, in the absence of any explanation from the Respondent, I find it overwhelmingly likely that the Respondent selected and registered the Domain Name with the Complainant’s mark in mind.  Furthermore, it is self‑evident that the Respondent has set up the website with a view to commercial gain from per-click payments resulting from visitors visiting the website.  

The Complainant has provided a witness statement by its finance director, verified by a statement of truth, giving evidence of its very substantial expenditure on promoting the OTBEACH name through Internet advertising programmes over the period since 2005.  This amounted to £3,250,000 in 2007.  Its turnover in the year to September 2007 attributable to the OTBEACH/On The Beach business was £75,670,000.  The levels of marketing and sales activity indicated by these sums is bound to have established very considerable goodwill and reputation in the name OTBEACH.  

I am satisfied that the Domain Name was registered and is being used in order to take unfair advantage of the attractive force of the Complainant’s mark for financial gain, by confusing people into believing that the Domain Name is registered by or is in some way connected with the Complainant.  Such activity is also likely unfairly to disrupt the business of the Complainant, particularly if visitors to the Respondent’s website are led to websites offering products of the Complainant’s competitors.  

In the circumstances, I consider that the Domain Name was registered and has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights in the name OTBEACH and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.

8.	Decision
 
Accordingly, I find that the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration.  I therefore determine that the Domain Name be transferred to the Complainant On The Beach Limited.

Ian Lowe
3 June 2008