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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Carnival Plc, Trading As P&O Cruises v Bernsteiner [2008] DRS 5666 (20 June 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5666.html Cite as: [2008] DRS 5666 |
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Nominet UK Dispute Resolution Service
DRS : 05666
CARNIVAL PLC, TRADING AS P&O CRUISES –v- STEFAN BERNSTEINER
Decision of Independent Expert
Complainant
Complainant Type: Business
Complainant: Carnival plc, trading as P&O Cruises
Country: GB
Respondent
Respondent: Stefan Bernsteiner
Country: AT
Disputed Domain Name
The domain name in dispute is:.
On 22 April 2008 the Complaint was lodged with Nominet UK in accordance with the Nominet UK DRS Policy and hard copies of the Complaint were received 25 April 2008.
On 25 April 2008 Nominet UK validated the Complaint.
On 7 May 2008, Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service had been invoked and allowed the Respondent 15 working days to respond to the Complaint to file a Response to the Complaint.
On 2 June 2008, as no Response had been filed Nominet UK generated "no response to Complaint documents".
On 10 June 2008 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.
On 11 June 2008 James Bridgeman was selected as Expert.
On 17 June 2008 following a conflicts check, Nominet UK duly appointed James Bridgeman to act as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure.
The Complainant is a company based in the United Kingdom and United States operating 85 ships in the luxury cruise market.
The Complainant's portfolio of sea cruise brands includes Carnival Cruise Lines, Holland America Line, Princess Cruises and Seabourn Cruise Line in North America; P&O Cruises, Cunard Line and Ocean Village in the United Kingdom; AIDA in Germany; Costa Cruises in southern Europe; Iberocruceros in Spain; and P&O Cruises in Australia.
The Complainant's revenue was USD$13,000,000,000 in 2007. That part of the Complainant's business carried on under the P&O CRUISES brand had a turnover of USD $5,227,000,000 in the year ended 30 November 2007. Copies of the Complainant's most recent published accounts have been furnished annexed to the Complaint.
The Respondent did not file a Response. There is no information regarding the Respondent on the file except for the information furnished by the Respondent when registering the domain name at issue and available from the WHOIS.
The domain name in dispute was registered on 25 July 2006.
Complainant's Submissions
The Complainant submits that the Peninsular and Oriental Steam Navigation Company (POSN) is the owner of the "P&O" brand and owns numerous registered trade marks details of which have been furnished as an annex to the Complaint viz.
Community Trade Mark P&O CRUISES, registration number 4840302, registered on 15 January 2007 in Classes 39, 41 and 43 with a filing date of 17 January 2006;
UK Registered Trade Mark P&O, registration number 1328204, registered on 10 December 1993 in Class 37 with a filing date of 27 November 1987;
UK Registered Trade Mark P&O, registration number 1328205, registered on 17 December 1993 in Class 39 with a filing date of 27 November 1987;
UK Registered Trade Mark P&O, registration number 1328207, registered on 10 December 1993 in Class 41 with a filing date of 27 November 1987; and
UK Registered Trade Mark P&O, registration number 1328208, registered on 10 December 1993 in Class 42 with a filing date of 27 November 1987.
The P&O mark was first used in 1837 and was first used in relation to cruise ship holidays in 1843. Over the years, an increasing range of goods and services have been sold, advertised and promoted under and by reference to the trade mark.
In 2008 the Complainant's P&O CRUISES fleet of six luxury cruise ships will between them sail to 225 destinations in 90 countries. The Complainant has furnished copies of brochures and other publications produced by the Complainant showing various services promoted by the Complainant identified by the P&O mark.
The Complainant's business was formerly part of POSN. Under the terms of a "de-merger" of the cruises business from POSN, the Complainant was granted an exclusive perpetual licence to use the name P&O and all derivations of the brand in the cruises field, including inter alia, in respect of domain names.
A wholly owned subsidiary of the Complainant, P & O Cruises Ltd, is the owner of the domain nameand the web site relating to the Complainant's cruise business under the P&O brand is established at that address.
The Complainant submits that the Respondent's registration of the domain nameis an Abusive Registration
The Complainant contends that the Respondent has no legitimate interest in the domain name. The domain name in dispute currently resolves to a directory site and the Complainant contends that the Respondent's only interest in the domain name in dispute is that it generates revenue through the sponsored links on the Respondent's site. The Complainant has submitted a print out of the Respondent's web site taken at 9 April 2008.
The Complainant submits that there can be no possible legitimate basis for the Respondent owning or using the domain namegiven the world famous nature of the Complainant's P&O CRUISES brand.
As far as the Complainant is aware, the Respondent has no trade mark or other rights to the domain name.
The Complainant submits that it is to be inferred that the domain name at issue was registered with the intent that it would, at some stage, be sold or transferred to the Complainant for a sum considerably in excess of the Respondent's out of pocket costs related to the domain name.
Paragraph 3(a)(iii) of the Nominet DRS Policy (Version 2 September 2004) states that a factor which may constitute evidence that the domain name is an Abusive Registration is 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's investigations have revealed that the Registrant has registered 1122 .uk domain names including, , , , , , , , , , and . The Complainant has furnished details of the1122 domain name registrations as an annex to the Complaint.
The Complainant submits that the domain names set out above correspond to well known names or trade marks in which the Registrant has no apparent rights. For example, the domain names, , and , correspond to well known names and brands owned by the Honda Motor Co., the Hyundai Motor Company, Jaguar Cars Limited and Apple Inc., respectively. The Complainant contends that the Respondent has no connection with these organisations and no rights to these names.
Further, given the nature of the domain names in question, the Complainant contends that it is inconceivable that the Respondent has legitimate interests in all of the domain names listed. The Complainant contends that the Respondent's registration of these domain names demonstrates, under Paragraph 3(a)(iii) of the Nominet DRS Policy (Version 2 September 2004), that the Respondent is engaged in a pattern of registrations which correspond to well known names in which he has no apparent rights.
The Complainant argues that the Respondent's registration of the domain name in issue in this Complaint is part of that pattern and therefore the domain name in the hands of the Respondent is an Abusive Registration.
The Complainant contacted the Respondent on 27 October 2006 asserting rights in the domain nameand asking that the domain name be transferred to the Complainant. The Respondent did not respond to that contact.
In addition, the Complainant contends that the Respondent's registration of the domain nameconstitutes a blocking registration as contemplated by paragraph 3(a)(i)(B) of the Nominet DRS Policy (Version 2 September 2004).
The Complainant furthermore submits that is very clear from a cursory search of the Internet that the Complainant has valuable rights in the P&O CRUISES brand. The Complainant submits that the Respondent was opportunistic in registering the domain name in dispute and has no legitimate interests in it.
Respondent's Submissions
No Response was received.
In order to succeed in these proceedings, paragraph 2(b) of the Nominet UK DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. 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
The Complainant claims to have Rights as the exclusive licensee of the Community Trade Mark and UK registered trade marks P&O CRUISES and P&O respectively.
While the Complainant has not furnished a copy of the licence, this Expert accepts that on the balance of probabilities the Complainant has the exclusive licence as claimed. In this regard this Expert notes the brochures and copies of the accounts furnished with the Complaint.
The domain nameis clearly confusingly similar to the abovementioned Community Trade Mark P&O CRUISES and the UK registered trade marks P&O relied upon by the Complainant. The ampersand ("&") being the symbol for the conjunction "and".
The Complainant has therefore satisfied the first element of the test as set out in paragraph 2(a)(i) of the Nominet UK DRS Policy in respect of the domain name in dispute.
Abusive Registration
As defined in paragraph 1 of the DRS Policy, the concept "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;"
The Complainant's P&O cruise business is long established, with the P&O mark first used in the year 1837 and first used in relation to cruise ship holidays as far back as the year 1843.
At present the Complainant has a substantial cruise line business with six luxury ships sailing to 255 destinations in 90 countries and that part of the Complainant's business carried on under the P and O brand had an annual turnover of $5,227,000,000 in the year ended 30 November 2007.
Given such substantial goodwill and the international reputation of the Complainant's business is most unlikely that the Respondent was unaware of the P&O mark and its substantial reputation in the cruise line business when the domain name at issue was registered.
The P&O mark is very distinctive and the "cruise" element of the domain name is both descriptive of the Complainant's business and an element in the Community Trade Mark relied upon by the Complainant.
The Respondent has not filed any Response or provided any explanation as to the reason why he chose and registered such a distinctive mark in combination with the word "cruises". On the evidence submitted and the assertions made by the Complainant, the Respondent has no connection with the Complainant or its licensor and has not been authorised by the Complainant or it licensor to use the mark P&O or P&O CRUISES or the domain name at issue.
On the evidence submitted in the Complaint, the domain name at issue is being used for commercial gain by the Respondent as the address of a directory website that generates revenue through the sponsored links on the site.
Given the substantial reputation of the mark in which the Complainant has exclusive Rights as a licensee, and given the distinctive character of the P&O mark, this Expert accepts the Complainant's submissions that such use cannot in itself be the basis for the establishment of any entitlement to the domain name.
On the evidence submitted by the Complainant, the Respondent has registered a large portfolio of domain names that correspond to well known business names and trade marks on the .co.uk domain including, , , , , , , , , , and .
The Complainant has submitted that the Respondent has no connection with the owners of these marks and names. While the Complainant has not furnished any evidence from any of these companies or organisations, in the form of a letter for example, that the Respondent has no such connection, this Expert accepts that on the balance of probabilities the Complainant is correct and 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 at issue is part of that pattern.
In the absence of any explanation from the Respondent this Expert must conclude that such a pattern of registration indicates that the domain name at issue is in the hands of the Respondent an Abusive Registration.
The Complainant has submitted that the Respondent registered the domain name at issue intending that at some stage, the registration would be sold or transferred to the Complainant for a sum considerably in excess of the Respondent's out of pocket costs related to the domain name.
While this may be the case, it is more probable that the Respondent registered the domain name in dispute in order to take predatory advantage of the substantial goodwill of the Complainant and its licensor in the well known P&O mark in order to attract Internet users to its website and thereby generate revenue through sponsored links.
By making such predatory use of the Complainant's goodwill, it follows that the domain name in the hands of the Respondent is an Abusive Registration.
The Complainant has therefore also satisfied the second element of the test as set out in paragraph 2(a)(ii) of the Nominet UK DRS Policy and is entitled to succeed in its application.
This Expert therefore directs that because the Complainant has established both elements of the tests set out in paragraph 2(a) of the Nominet UK DRS Policy in respect of the domain name, the Complainant is entitled to succeed in its application.
This Expert directs that the domain namebe transferred to the Complainant.
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James Bridgeman Date: 20 June 2008