Med Playa Management SL & Anor v Barrington, Court of Appeal - Nominet UK Dispute Resolution Service, August 25, 2006, [2006] DRS 3713

Resolution Date:August 25, 2006
Issuing Organization:Nominet UK Dispute Resolution Service
Actores:Med Playa Management SL & Anor v Barrington
 
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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 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...

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