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Essential Travel Ltd v. essentialtravel.com and Underground Digital Media Ltd. [2004] GENDND 933 (7 July 2004)

1. The Parties

The Complainant is Essential Travel Ltd, South-on-Sea, Essex, United Kingdom of Great Britain and Northern Ireland, represented by D L Legal, LLP, London, United Kingdom of Great Britain and Northern Ireland.

The Respondents are essentialtravel.com and Underground Digital Media Ltd., both of Braintree, Essex, United Kingdom of Great Britain and Northern Ireland, represented by Adlex Solicitors, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <essentialtravel.com> is registered with TierraNet d/b/a DomainDiscover.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2004. On March 18 and March 25, 2004, the Center transmitted by email to TierraNet d/b/a DomainDiscover requests for registrar verification in connection with the domain name at issue. On March 19 and March 26, 2004, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming in the response of March 26, 2004, that the Second Respondent, Underground Digital Media Ltd is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to notifications by the Center that the Complaint was administratively deficient, the Complainant filed two amendments to the Complaint the first on April 7, 2004, and the second on April 21, 2004. The Center verified that the Complaint, as amended by the Re-Amended Complaint dated April 21, 2004, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2004. The Response was duly filed with the Center on May 17, 2004.

The Center appointed David Perkins, M. Scott Donahey and Mark Partridge as panelists in this matter on June 17, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

4.A The Complainant

4.A.1 The Complainant, Essential Travel Ltd., was incorporated on November 29, 2001. The domain name, <essentialtravel.co.uk> was registered by Mr. Stuart Bensusan on February 1, 2001. Mr. Bensusan is named as the Complainant’s authorised representative in this administrative proceeding.

4.A.2 The Complaint states that the Complainant began trading in January 2002 using the <essentialtravel.co.uk> domain name and trading as “Essential Travel.” The Complainant’s business is the provision of low-cost travel and other insurance services.

4.A.3 According to the Respondents, on April 8, 2004, the Complainant applied to register ESSENTIAL TRAVEL in stylised form as a trademark with, presumably, the United Kingdom Trademarks Registry.

4.B. The Respondent

4.B.1 The Respondent Company (Underground Digital Media Limited) was incorporated under the name Sevco 1182 Limited on August 21, 2000, (Company No. 04056767). It changed name to Insureandgo.com Limited on September 11, 2000. It further changed name to its present name, Underground Digital Media Limited, on February 11, 2004.

4.B.2 The domain name in issue, <essentialtravel.com> was created on May 9, 2002, by BuyDomains.com. That domain name was acquired by the Respondent from BuyDomains.com.

4.B.3 Another company (Insure & Go Insurance Services Limited) was incorporated under the name Sevco 1181 Limited also on August 21, 2000, (Company No. 04056769). It changed name to its present name, Insure & Go Insurance Services Limited [IGISL] on September 11, 2000.

4.B.4 Both IGISL [No. 04056769] and the Respondent [formerly, known as Insureandgo.com Limited – No. 04056767] have the same address at Warners Mill, Silks Way, Braintree, Essex. Both companies are stated to have similar shareholders.

4.B.5 The Respondent has used the domain name in issue, <essentialtravel.com> as a travel portal website since February 2004 including travel safety information, travel insurance advice, travel tips and links to car hire, travel insurance and airport parking.

4.B.6 IGISL has carried on the business of providing travel insurance using <insureandgo.com> and related sites since at least 2001. An archive print out of the <insureandgo.com> website dated 2001 is exhibited to the Response. That print out is headed “Essential Travel Information and Advice for Travellers.” Also, exhibited to the Response is the following evidence of trading by IGISL:

Year to August 31, 2001 turnover £585,186.00

Year to August 31, 2002 turnover £5,434,219.00

Year to December 31, 2003 turnover £11.49 million

Year to December 31, 2004 est. turnover £22.53 million

4.B.7 The Respondent states its belief that IGISL is by far the United Kingdom’s largest provider of B2C travel insurance, online and offline. IGISL is also said to be a major B2B supplier of travel insurance software and underwriting capacity to third party insurers and branders such as Norwich Union, Admiral, Freeserve and MSN.

5. Parties’ Contentions

5.A The Complainant

5.A.1 The Complainant’s case is that it has rights in the ESSENTIAL TRAVEL trademark, that the domain name in issue is identical to that trademark, that the Respondents have no rights or legitimate interests in respect of that domain name, which was registered and is being used by the Respondents in bad faith.

5.A.2 The Complainant contends that on or before May 1, 2003, it had acquired common law trademark and service mark rights in ESSENTIAL TRAVEL for the provision of travel and insurance services by reason of its trading activities under its corporate name Essential Travel Limited (incorporated on November 29, 1002) and its use of the domain name <essentialtravel.co.uk> (registered on February 1, 2001) since it began trading in January 2002. No other evidence is provided of acquired distinctiveness to support the assertion of common law right, save for a statement by a Mr. Nick Lockett, (a solicitor with DL Legal) that the Complainant “... has the exclusive right in England and Wales to trade under the name Essential Travel Ltd and that it trades under a trading style of “Essential Travel”.”

5.A.3 Mr. Lockett goes on to state:

“I am informed that, and have no reason to doubt that, the company has traded since at least January 2002 under the unregistered trademark, trade name and service mark Essential Travel and that any other travel company trading as “Essential Travel” in England and Wales is likely to infringe the rights of Essential Travel Limited and be found liable for passing off.”

5.A.4 As to the Respondent’s lack of legitimate rights and interests, the Complainant relies upon the assertion that its common law trademark rights in ESSENTIAL TRAVEL have been acquired between about January 2002 (when the Complainant commenced trading) and May 1, 2002 (the domain name in issue being registered on May 9, 2002).

5.A.5 As to registration in bad faith, the Complainant asserts that the original registrant (BuyDomains.com) is “... established to be a cybersquatter” who refused to sell the domain name in issue to the Complainant except for “... a significantly inflated sum ...”

5.A.6 As to use in bad faith, the Complainant says that as at May 9, 2002, IGISL knew of its existence as a competitor and purchased the domain name in issue from BuyDomains.com in order to confuse the Complainant’s potential customers trying to access its website at “www.essentialtravel.co.uk,” to divert traffic to IGISL’s competitor website, and to permit IGISL to trade off the Complainant’s reputation and infringe its rights.

5.A.7 The Complainant also refers to telephone conversations on March 9, 2004, between its Mr. Stuart Bensusan and a Mr. James Richardson of IGISL wherein Mr. Bensusan requested Mr. Richardson to cease using the domain name in issue but Mr. Richardson refused. The Complainant believes that this refusal was the result of Mr. Bensusan having cancelled meetings with Mr. Richardson in 2003.

5.A.8 Because they operate from the same premises and by reason of Mr. Richardson’s activities with both companies, the Complainant asserts that the Respondent and IGISL are connected companies who are acting in concert to use the domain name in issue to harm the Complainant’s business in the way set out in paragraph 5.A.6 above.

5.A.9 Furthermore, the Complainant asserts that the change of corporate name of the Respondent on February 11, 2004, from Inmsureandgo.com Ltd to Underground Digital Media Ltd was an apparent attempt to hide the connection between the Respondent and IGISL.

5.B. The Respondent

5.B.1 The Respondent’s case is that the Complainant has no common law rights as a trademark, service mark or trading name – in ESSENTIAL TRAVEL. This is for the following reasons.

5.B.2 First, ESSENTIAL TRAVEL is a descriptive / generic phrase in common use in the travel industry denoting important and other matters related to travel, including insurance. By way of example, the Respondent refers to:

a. Drop down menu from “www.norwichunion.com” linking to “Essential travel”; webpage “www.norwichunion.com/essential_travel...” saying “Essential Travel is no longer available on this site” and linking to “www.happytotravel.co.uk” which refers to “Your Essential Travel Guide.”

b. Yell.com listing UK businesses apparently unconnected with the Complainant: “The Essential Travel Group,” “Essential Travel Consultants Limited” and “Holiday Travel Essentials Limited.”

c. Whois for <essential-travel.com>, <essential-travel.co.uk> and <essential-travel.org.uk> showing UK registrants “Essential Travel,” “Essential Travel Consultants Limited” and “Essential Travel Group” respectively.

d. Amazon.co.uk listing of various editions of the well-known “AA Essential Travel Guides.”

e. Nina Ricci “Essential Travel Kit” at “www.escentual.co.uk.”

f. “Essential Travel Services” offered at “www.essentialtravel.org” by Essential Health Ltd (“one of the UK’s leading independent healthcare brokers”).

g. “Essential Travel insurance through Norwich Union” referred to at “www.financesearch.co.uk.”

h. Four UK websites offering (1) “Essential Travel Services” / “Essential Travel Accessories” (2) “Essential Travel Items” (3) and (4) “Travel Essentials.”

i. Travel accessories offered at UK website “www.essentials4travel.com.”

j. References to “Holiday Essentials Selector” and “travel essentials” at “www.boots.com.”

k. Australian website offering “Essential Travel Insurance Policy.”

l. Three UK websites referring to “Essential travel documents” and “Essential Travel Information.”

m. Yahoo UK search numerous showing references to the standard form UK Foreign Office and other warnings against all but the most “essential travel” to certain countries.

n. UK website referring to similar warning by World Health Organisation.

5.B.3 Second, its own use of the words “Essential Travel” in the title of its 2001 webpage on the “insureandgo.com” website [paragraph 4.B.6 above].

5.B.4 Third, it is fanciful to suggest that in about four months trading – from January 2002 when the Complainant began trading and May 9, 2002, when the domain name in issue was registered - the Complainant had acquired a distinctive and sufficiently well-known reputation in its industry in the name / mark ESSENTIAL TRAVEL.

5.B.5 Fourth, under English law where the trademark asserted comprises words in common use, some risk of confusion must be permitted, otherwise the Plaintiff would be allowed unfairly to monopolise use of those words in common [the Office Cleaning case (1946) 63 RP at 43 (H.L.)].

5.B.6 Fifth, there is no evidence which demonstrates acquired secondary meaning in the mark ESSENTIAL TRAVEL as that requirement has been formulated by cases decided under the Policy. The Respondent cites in that respect <snowboardsforsale.com> (WIPO Case No. D2002-1167); <barcodediscount.com> (WIPO Case No. D2001-0405); <petwarehouse.com> (WIPO Case No. D2000-0105); <backgroundfacts.com> (WIPO Case No. D2001-0083); and <arizonagolfproperties.com> (WIPO Case No. D2003-0571).

5.B.7 For example, no evidence has been provided by the Complainant evidencing turnover / expenditure by reference to the ESSENTIAL TRAVEL mark; examples of advertising and recognition by the public; the amount of sales under the mark over the period in question (here, January to May 2002); consumer surveys and media recognition. The statements by the Complainant’s solicitor Mr. Lockett (paragraphs 5.A.2 and 5.A.3 above) are made without providing any support. What he says is hearsay and of no evidential value.

5.B.8 Sixth, the Complainant’s application for a registered trademark (see, paragraph 4.A.3 above) indicates the weakness of the ESSENTIAL TRAVEL mark, in that it is not for the word mark simpliciter but for the words in stylised form. This, the Respondent says, is because even after two (2) years’ trading the Complainant is, obviously, unable to produce adequate evidence of distinctiveness to obtain registration of the word mark.

5.B.9 Seventh, registration of the company name Essential Travel Ltd., confers no exclusive trading rights in the words ESSENTIAL TRAVEL.

5.B.10 Quite apart from the Complainant’s total failure to establish trademark or service mark rights in ESSENTIAL TRAVEL, there is no likelihood of confusion in the light of the different businesses being conducted by the parties.

5.B.11 As to legitimate rights and interests, the Respondent relies on its bona fide use of the domain name in issue since February 2004 as a travel portal website before it had any notice of the Complainant’s assertion of exclusive rights to the ESSENTIAL TRAVEL name and mark (paragraph 4.B.5 above). The first intimation of complaint was Mr. Bensusan’s telephone call on March 9, 2004, (paragraph 5.A.7).

5.B.12 As to registration and use in bad faith, the Respondent explains – that before any notice of this dispute – it had changed from Insureandgo.com Ltd to its present name Underground Digital Media Ltd in February 2004 because it was to be used for non-insurance travel ventures (paragraph 4.B.1 and 4.B.5 above).

5.B.13 Further, the party from whom the domain name in issue was acquired, BuyDomains.com, is not a cybersquatter as the Complaint asserts. Exhibited to the Response is evidence of a list of domain names including the word “travel” offered for sale by BuyDomains.com, which is a well-known domain name dealer.

5.B.14 The Respondent explains the bona fide genesis of its travel portal website and how it came to purchase the domain name in issue from BuyDomains.com for that purpose. It never had any intention to damage the Complainant’s business. If the Complainant is a competitor of IGISL, then it is not regarded as such by IGISL which, as stated (paragraph 5.B.7 above), is the largest provider of B2C travel insurance in the United Kingdom. What motive could it have for trying to confuse its business with that of the Complainant, which is only one of some 300 competitors IGISL has in that business? In any event, the Complainant’s business is officially identified in the UK Travel Insurance Directory by the suffix “Insurance,” being listed in that Directory as “Essential Travel Insurance.”

5.B.15 As to the motive ascribed to Mr. Richardson for refusing to cease use of the domain name in issue (paragraph 5.A.7 above), Mr. Richardson has no recollection.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

• that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

• that the Respondent has no rights or legitimate interests in respect of the domain name; and

• that the domain name has been registered and is being used in bad faith.

6.2 Trademark or Service Mark Rights in ESSENTIAL TRAVEL

6.2.1 To acquire common law trademark rights, both under English law and under the case law which has developed under the Policy, a Complainant must establish evidence of acquired distinctiveness. The burden in this respect is particularly high where the mark asserted comprises words in common usage – namely, ESSENTIAL TRAVEL – as it does in this case.

6.2.2 Here the Complainant has totally failed to establish such rights, whether at the date when the domain name in issue was registered (May 9, 2002) or currently. There is absolutely no evidence before this Panel to justify the assertions by the Complainant’s solicitor paragraph 5.A.3 above. Indeed, it is incredible to suppose that a new venture could establish such rights in four (4) or five (5) months trading – January to May 2002.

6.2.3 The Complaint, therefore, falls at the first hurdle and it is unnecessary to consider whether the domain name at issue is identical or confusingly similar, whether the Respondent has rights or legitimate interests in that domain name, or whether it was registered and is being used in bad faith. However, the case on registration and use in bad faith is, in the Panel’s opinion, so utterly lacking that – even had the Complaint succeeded in establishing a case under paragraphs 4(a)(i) and (ii) of the Policy – it would have failed under paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, the Complaint is denied.

David Perkins
Presiding Panelist

M. Scott Donahey
Panelist

Mark Partridge
Panelist

Date: July 7, 2004