Holiday-rentals.com Limited v. Tim Hall

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Holiday-rentals.com Limited v. Timothy Hall

Case No: D2002-0200

1. The Parties

The Complainant in this administrative proceeding is Holiday-rentals.com Limited,

a limited company whose registered address and principal place of business

is Westpoint, 34 Warple Way, London W3 0RG, United Kingdom.

The Respondent is Timothy Hall of the HolidayRentals.Company, at 4 Eaton Grange

Barns, Eaton Upon Tern, Nr. Market Drayton, North Shropshire

TF9 2BX, United Kingdom.

2. The Domain Name and Registrar

The domain name in issue is <holidayrentals.com> ("the Domain

Name").

The Registrar is Network Solutions, Inc. (now Verisign Inc.) of 505 Huntmar Park Drive,

Herndon, VA 20170, United States of America ("Verisign").

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received

on February 28, 2002, a hard copy of the Complaint and accompanying

documents and on March 11, 2002, an electronic version of the

same. The Center verified that the Complaint satisfies the formal requirements

of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"),

and the Rules for Uniform Domain Name Dispute Resolution Policy ("the

Rules"). The Complainant made the required payment to the Center. On

March 12, 2002, the Center formally notified the Respondent that

this administrative proceeding had been commenced, and that date is the

formal date of the commencement of this administrative proceeding.

On March 7, 2002, the Center transmitted via e-mail a request for registrar

verification in connection with this case. On March 8, 2002, Verisign

transmitted via e-mail to the Center its Verification Response, stating

that the registrant is Tim Hall, at the above stated address and that the

Administrative and Billing Contacts are Domain Names.com Ltd. of The Solar

Building, Duxford International, Sunderland, Tyne & Wear SR3 3XW, United

Kingdom.

A Response was filed on March 28, 2002. On April 18, 2002, the

Complainant lodged a Supplemental Filing, requesting that it be placed before

the Panel.

On April 22, 2002 this Panelist was appointed by the Center. The Panelist

has filed a Statement of Acceptance and Declaration of Impartiality, and

his decision was scheduled to be forwarded to the Center by May 6, 2002.

On April 29, 2002 the Panel issued a Procedural Order, affording the Respondent

an opportunity of reply to the Supplemental Filing. Pursuant to the same

Order, the Panelist is due to forward his decision to the Center by May 13, 2002.

4. Factual Background

(a) The Complainant owns no relevant registered trade or service marks.

(b) The Domain Name was registered with the Registrar

in question on April 8, 1998.

(c) The Complainant has registered the following domain

names on the dates stated:-

Domain NameDate of registration by Complainant

<holiday-rentals.co.uk>March 1996

<holidayrentals.co.uk> November 25,1996

<holiday-rentals.com>June 4, 1996

<holidayrentals.net> May 8, 1998

<holidayrental.co.uk>December 21, 1998

(d) The Complainant was incorporated as Internet Holiday Rentals Limited on

January 30, 1966, and changed its name to Holiday-rentals.com Limited

on September 22, 2000.

5. Parties’ Contentions

A. Complainant

The Complainant asserts, inter alia, as follows:-

(i) The marks on which the Complaint is based are "HolidayRentals"

and "Holiday-Rentals" (the Marks). The Marks and the domain

names listed in paragraph 4(c) above have been used by the Complainant

in connection with bringing together, for the benefit of others, properties

available for short term rental, enabling customers to conveniently view

and book those properties by means of an internet web site and details

provided thereon. Further, the Complainant has used the Marks and domain

names in connection with the provision of advertising space on the said

website to persons wishing to rent their properties.

(ii) Each of the domain names listed in paragraph 4(c) above went

live at or soon after registration and pointed to the Complainant’s website

<www.holiday-rentals.co.uk>. The Domain Name was registered by a

third party at the time the Complainant commenced business but to the

best of the Complainant’s knowledge and belief remained unused until the

registration of the Domain Name lapsed in about March 1998.

(iii) In March 1996, the Complainant’s web site went live and since

launch the Complainant’s business carried out under and by reference to

the Marks and domain names has grown consistently. The following data

are provided:

(a) Gross Revenues for years ending January 31.

1997 £29,593

1998 £73,545

1999 £141,000

2000 £203,000

2001 £701,000

2002 (forecast) £1,479,000

(b) Number of properties available on site:

April 28, 1996 49

January 31, 1997 296

April 4, 1998 754

April 28, 1999 1115

May 13, 2001 2434

September 26, 2001 2899

(c) Number of Countries on site in which properties are available:

199619

199732

1998 39

1999 46

2000 51

2001 55

(d) The Complainant has entered into branded content supply partnership

arrangements (no payment by Complainant) with a number of other significant

web based businesses including:

Expedia UK

Approached Complainant to put Complainant’s content on their site

in September 1997. Remained on their site until February 2000,

after Expedia had bought Vacationspot.

I-circle (Freeserve)

Approached Complainant for co-branded content which went live in

Autumn 2000, and remains so.

Yell.com

Approached Complainant for co-branded content which went live in

Autumn 2000 and remained live until September 2001.

(iv) From commencing business until the present time the Complainant

has used the Marks in its logo on its website and on its stationery.

The Complainant’s invoices have printed on them:

(a) the Complainant’s logo with the mark "HolidayRentals"

in the top right corner; and

(b) the sentence "Thank you advertising with HolidayRentals

on the Internet" at the bottom left.

The Complainant’s printed A4 envelopes which have been used since 1998,

until the present time carry the Complainant’s logo and mark "Holiday

Rentals".

(v) The Respondent is a professional photographer. In December 1997,

the Respondent approached the Complainant and requested that his property

be placed on the Complainant’s web site. The Respondent’s property appeared

on the Complainant’s web site from January 7, 1998, to April 28, 1998.

(vi) At the time the Complainant started its business (January 1996)

the Domain Name was registered to a third party, but not used. The Complainant

was aware that the registration of the Domain Name was due to lapse in

about March 1998, and intended to acquire it in the event that this

happened. Shortly before the registration lapsed the principals of the

Complainant were wholly preoccupied with urgent internal matters regarding

the Complainant’s business. However, in early May 1998, the Complainant

inspected the "whois" register and discovered that the Respondent

had become listed as the owner of the Domain Name.

(vii) The Complainant made searches and discovered that the Domain

Name now pointed to a basic web page <www.wkweb5.cableinet.co.uk/tim_hall_photographer/frontdoor1.htm>

(the Respondent’s site) on which was advertised a single property (his

own, the one which was advertised on the Complainant’s site).

(viii) On further inspection, the Complainant discovered that the

Respondent’s site replicated all the HTML between the HEAD tags on the

Complainant’s site. The metatag description of the Respondent’s site was

also identical and directly reproduced from the Complainant’s site: "HolidayRentals

advertises ski chalets to rent in Europe and North America. Every property

listed has colour photos and numbers to contact the owner direct".

(ix) Shortly after the Respondent’s registration of the Domain Name

there was communication and correspondence between the Complainant and

the Respondent directly and through legal representatives. The Complainant

requested transfer of the Domain Name and undertakings to refrain from

using the names "holidayrentals" or "holiday rentals".

When this was declined, the Complainant expressed an interest in purchasing

the Domain Name from the Respondent for GBP1000 but the Respondent claimed

he was not interested in selling the Domain Name.

(x) To the best of the Complainant’s knowledge and belief, there have

been no more than three properties on the Respondent’s web site since

May 1998, (the Respondent’s own property being one of them throughout).

B. Respondent

The Respondent admits most of the Complainant’s assertions concerning the

parties’ activities, but asserts:

(i) The Marks are descriptive and generic. The Respondent exhibits

lists of some 40 .com names incorporating HOLIDAY RENTALS, either as a

prefix or suffix (e.g. UKHOLIDAYRENTALS.com) and also 8 examples of how

the words "Holiday Rentals" feature on web pages of different

advertisers (including <holidayrentals.gr> and <holidayrentals.com.au>).

(ii) While admitting the allegations referred to in paragraph 5A.(viii)

above he states:

"My naivety in early 1998, while experimenting with building a web

site led me to make this error in so far as I did replicate these header

tags for a short period of time. Being new to web design and the complexities

of search engines I at the time had no reason to believe that I was doing

anything wrong and had I known then I'd not have copied these HEAD tags.

When I later realised that this was potentially a breach of copyright

I removed the HEAD tags from my site and wrote my own."

(iii) The Complainant has harassed the Respondent and his family.

He views this administrative proceeding as "just the latest form

of harassment of me". He says:

"I am in no doubt that the Complainant has chosen only to pursue

[the Domain Name] as it is a .com TLD and is perceived to be ‘top dog’

and therefore a better URL to use than his own .co.uk domain name which

he has used to run his web-site since 1997. Following Internet naming

protocols his own TLD holiday-rentals.com is also 'second best' to the

disputed name so he will view the acquisition, by whatever means, of the

[Domain Name] name as a commercial advantage."

(iv) Given that the Complainant started to use the URL <holiday-rentals.com>

as well as <holiday-rentals.co.uk> it has itself initiated any perceived

confusion. It has further compounded this by changing the name of the

company from INTERNET HOLIDAY RENTALS LIMITED to HOLIDAY-RENTALS.COM LIMITED.

Prior to the Respondent’s registration of the Domain Name the Complainant's

business was only marketed using its ‘.co.uk’ domain name. It has clearly

only started to use its own .com TLD, and redesigned its site using <holiday-rentals.com>

and renamed the company so as to attempt to build a case against the Respondent.

C. Complainant’s Supplemental Submission

This document has been considered by the Panel, but he finds it of little

assistance. It is largely argumentative.

D. Respondent’s Response to Procedural Order

No further submission has been filed by the Respondent.

6. Discussion

The onus is on the Complainant to prove each of the three elements set

out in paragraph 4(a) of the ICANN policy, as follows:

(i) the domain name is identical or confusingly similar to a trade

mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect

of the domain name; and

(iii) the domain name has been registered and is being used in bad

faith.

The fundamental problem for the Complainant in this administrative proceeding

lies in establishing that it has any rights in the Marks (i.e. in "HolidayRentals"

and "Holiday-Rentals"). Whatever the precise juxtaposition of

the words "holiday" and "rentals" they are wholly descriptive

of properties available to rent for holiday purposes. While the Complainant

appears to have built up a reasonably successful business, there is no evidence

before the Panelist to suggest that the Marks have become identified in

the minds of the public with the Complainant to a sufficient extent to confer

on it "rights" within the meaning of paragraph 4(a)(i) of the

Policy. The examples given above merely underline how necessary the expression

"holiday rentals" is for the business of letting holiday properties

and how inevitable it is that that expression will be incorporated into

domain names. In such circumstances, it is the Complainant’s misfortune

that it failed to secure the Domain Name before the Respondent, because

once the original registration lapsed it was open to anyone to secure it

for himself.

The Domain Name is undoubtedly confusingly similar (if not identical) to

the Marks, but the Panelist must dismiss this case because of the Complainant’s

inability to establish that it has the necessary "rights".

In these circumstances it is not necessary for the Panelist to make any

findings in relation to elements (ii) and (iii) of paragraph 4(a) of the

Policy, and since the Complainant’s only other recourse against the Respondent

is through a court of law, it would be wiser not to. However, neither party

should assume how this Panelist would have decided either of these issues

– the conduct of each of the parties is open to criticism.

7. Decision

In the light of the findings in paragraph 6 above, the Panelist dismisses

the Complaint.

Christopher Tootal

Sole Panelist

Dated: May 14, 2002

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