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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> VRL International Ltd -v- Hedonism (Club) [2004] DRS 1649 (21 June 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1649.html Cite as: [2004] DRS 1649 |
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DRS 01649
VRL International Limited –v- Hedonism (Club)
and
DRS 01651
VRL International Limited –v- Hedonism
CONSOLIDATED DECISION OF INDEPENDENT EXPERT
1. The Parties
The Complainant
1.1 The Complainant is VRL International Limited of Ansbacher House, Jeanette Street, Georgetown, Grand Cayman, Cayman Islands represented by Messrs Willoughby & Partners.
The Respondent
1.2 The Respondent is referred to as both Hedonism and Hedonism (Club). Both appear to be trading names of Derek Bromwich, 38 Downing Drive, Greenford, Middlesex, UB6 8BE, United Kingdom. The Respondent is not represented.
2. The Domain Names
2.1 The domain names in dispute are <hedonism.org.uk> (“the First Domain Name”) and <hedonism-swing-club.co.uk> (“the Second Domain Name”).
3. Procedural Background
3.1 This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure (‘the Procedure’) and the Nominet UK Dispute Resolution Service Policy (‘the Policy’).
3.2 The Complaint originally constituted two separate Complaints which were subsequently consolidated. Separate Complaints were submitted because the names of the Respondents in the two cases were slightly different. However, Nominet indicated that the Complaints could later be combined if the Respondents proved in due course to be the same. This was the case and both parties are agreed to the consolidation of the Complaints and to a single Decision being given.
3.3 The original two Complaints entered Nominet’s system on 24 March 2004. They were validated and sent to their respective Respondents on 26 March 2004. On 31 March 2004 the Respondents confirmed that they were one and the same. A consolidated Response was received on 22 April 2004 and a consolidated Reply was served by the Complainant on 6 May 2004. Mediation not being possible and the Complainant having paid the relevant fee, the Complaint was referred to me on 7 June 2004 for a Decision. On that date, I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.
4. Outstanding Formal/Procedural Issues
4.1 There are no such issues in this case.
5. The Facts
5.1 The Complainant is the operator of vacation resorts named Hedonism II and Hedonism III which are located in Jamaica, and resorts named Superclub which are located in the Bahamas and elsewhere.
5.2 The Respondent is the operator of a ‘swingers and fetish’ club named Hedonism UK. It organises sex-related events and activities including houseparties, clubnights and holidays.
5.3 The Respondent registered the First Domain Name on 9 February 1999 and the Second Domain Name on 24 February 2000.
6. The Parties’ Contentions
The Complaints
6.1 The principal submissions made by the Complainant in the two Complaints may be summarised as follows.
Rights
6.1.1 The Complainant states that it and its affiliated company, Village Resorts Limited, own and operate numerous world famous vacations resorts. (For the purposes of this Decision, I propose to treat both entities as comprising the Complainant.) The resorts are operated under the trade marks HEDONISM and SUPERCLUBS. The Hedonism resorts are located in Jamaica and the Superclubs resorts in the Bahamas, the Dominican Republic, Curacao and Brazil. They have a multinational clientele with strong European representation. The Complainant exhibits publicity materials about its Hedonism and Superclubs resorts.
6.1.2 The Complainant submits that it first used the mark HEDONISM in 1981. It used HEDONISM II in the US in that year in connection with both resort hotel services and clothing. Its first registration of the mark HEDONISM was in 1985 in Jamaica. It owns numerous trade mark registrations worldwide for HEDONISM and related marks. Details of the registrations are exhibited. They include US registrations dated August 1999 and April 2000 for the mark HEDONISM for resort hotel and restaurant services, and Mexico registrations dated 2002 for the mark HEDONISM for resort hotel and travel reservation services. The numerous remaining registrations are predominantly for the mark HEDONISM II. This mark is registered in the UK, Brazil, the EU, Jamaica, Mexico and Canada in a wide range of classes, the registrations being dated between 1985 and 2002. The Complainant has further US and Jamaica registrations for the marks HEDONISM III and US registrations for the mark HEDO.
6.1.3 The Complainant states that its UK and EU marks are the ‘most relevant’ and it relies in particular upon the following marks, both of which it states were registered prior to the registration of the Domain Names:
6.1.3.1 UK trade mark number 2012507 for HEDONISM II registered in Class 42 on 27 February 1995.
6.1.3.2 Community Trade Mark number 376095 registered on 8 November 1996 for the following figurative mark:
6.1.4 There is some confusion about the CTM position. Together with the certificates relating to the above, the Complainant includes (without comment) a CTM application dated 17 June 2003 for the word mark HEDONISM. However, this is clearly an application and not a registration. Further, the Complainant claims to have a CTM registration for the mark HEDONISM II in ‘plain script’, but the only registration exhibited for a mark of this nature is for the device mark referred to above.
6.1.5 The Complainant also relies upon a significant number of domain name registrations, a list of which it exhibits. It states that it is the beneficial owner of these names, which are registered to its US licensee. The names include, for example, <hedonismII.org>, <ehedonismIII.com> and <hedonismcruise.net>. The Complainant states that many of the domain names, including for example <hedonism1.com> and <hedonismvacations.com>, resolve to its Hedonism branded websites.
6.1.6 The Complainant also relies on trade mark registrations for the mark SUPERCLUBS which it states it has used since 1986. It exhibits trade mark registrations and also a list of domain names using the Superclubs brand. It states that it often uses the term Superclubs alongside the term Hedonism and refers to the publicity material that it exhibits.
6.1.7 The Complainant refers to its marketing activities under the mark HEDONISM and in particular to its website at:
www.superclubs.com/brand_hedonism/index.asp
where it promotes its Hedonism II and Hedonism III resorts. It states that the mark SUPERCLUBS is often used in close proximity. The Complainant states that it has created enormous monetary value in the HEDONISM marks which have become well-known throughout the world and are synonymous with the Complainant. Its resorts have received high acclaim. They were the subject of a documentary on the Sky One TV channel and the resorts regularly receive phone calls from people wishing to buy their branded clothing.
6.1.8 In these circumstances, the Complainant submits that it has Rights for the purposes of paragraph 2(a)(i) of the Policy. The Complainant’s mark HEDONISM is identical with the First Domain Name (ignoring the formal suffix) and its mark HEDONISM II is similar. With regard to the Second Domain Name, the suffix ‘swing-club’ is descriptive of the Respondent’s activities and does not render the domain name dissimilar. Further, the Complainant uses HEDONISM and SUPERCLUBS in close proximity and such use is not materially different from the term Hedonism Swing Club.
Abusive Registration
6.1.9 The Complainant states that, according to the Respondent’s website at www.hedonism.org.uk, the Respondent describes itself as a ‘swingers club’ and organises parties, clubnights and holidays for couples and singles who wish to ‘make love amongst others’ or swap partners. It charges an annual fee ranging from £30 to £75 and also sells advertising.
6.1.10 The Complainant asserts that the Respondent’s logo, used throughout its website, is remarkably similar to the Complainant’s figurative trade mark. People aware of the Complainant’s brand who visit the Respondent’s website will be confused into believing that the Respondent and the Complainant are connected. The Complainant exhibits a copy of the Respondent’s logo as below:
6.1.11 The Complainant further states that on the home page of the Respondent's website, under the heading Single Gents, the Respondent makes reference to holidays at ‘the Hedonism resort in Jamaica’. It relies on this as evidence that the Complainant’s resorts must be well known throughout the UK and that the Respondent was aware of them. It contends that members of the public reading this passage could well believe that the Hedonism resorts are operated by the Respondent, or that the Respondent’s website is operated or endorsed by, or connected with, the Complainant.
6.1.12 The Complainant complains of the following further references to its resorts on the Respondent’s website:
6.1.12.1 References to Hedonism II and Hedonism III in the Holidays section.
6.1.12.2 This section also refers to the ‘HEDONISM HOLIDAY in Jamaica’ and draws special attention to the Complainant’s resorts by its use of capital letters. They are also the first mentioned. There is nothing to make it clear that the resorts are not connected with the Respondent and if anything, because the destination is distinguished, people are likely to believe that there is a special link.
6.1.12.3 References to Hedo II and Hedo III to identify the Complainant’s resorts, which abbreviations are often used by the Complainant and are indeed registered marks.
6.1.12.4 Further references to the Complainant’s resorts in the Venues section of the Respondent’s website. Here the Complainant’s resorts are the only destinations mentioned by name, all other references being to geographical locations.
6.1.12.5 The Complainant also exhibits a page from the Respondent’s website advertising an event in August 2003. (It points out that the page no longer appears.) The page states: ‘Our members have access to holidays in…’ and then lists ‘Hedonism II & III, Jamaica’ in addition to a number of other destinations.
6.1.13 In the circumstances, the Complainant submits: ‘It is obvious that the Respondent is deliberately seeking to deceive visitors to its website into believing there is a connection between the Respondent and the Complainants. The Domain Name is therefore being used in a way which has confused or is likely to confuse people into believing that the Domain Name is registered to, operated or authorised by or connected to the Complainants.’
6.1.14 The Complainant further submits that the only contact details provided by the Respondent on registering the Domain Names were a PO Box in London and an email address, info@hedonism.org.uk. The Complainant claims to have learned from other websites that the operators of the Respondent’s website are ‘Derek and Louise’, and to have identified ‘Derek’ as Derek Bromwich from further investigations. The Complainant says that: ‘the scant details provided by the Respondent when registering the Domain Name[s] is an attempt to hide the identity of those behind the website and thwart any efforts by interested parties to bring legal proceedings’.
6.1.15 In addition, the Complainant complains that the Respondent’s website contains pornographic material. It states that this is damaging to the Complainant given the connection that the Respondent seeks to make. It could deter potential guests from visiting the Complainant’s resorts and therefore harm and disrupt the Complainant’s business.
6.1.16 The Complainant also asserts that the Respondent ‘enjoys making mischief’. Anyone accessing the Respondent’s site who enters their age as under 19 is diverted to the Disney website.
6.1.17 Finally, the Complainant submits that the Respondent is engaged in a pattern of making Abusive Registrations. In addition to the two Domain Names, it relies on the names <hedonism-club.co.uk>, <hedonismswingclub.co.uk>, <hedonismuk.co.uk> and, in particular, <hedonismholidays.co.uk>, all of which its says the Respondent has owned in the past, but are now detagged.
Remedy
6.1.18 The Complainant seeks the transfer of the Domain Names.
The Response
6.2 The Respondent has filed a consolidated Response to the two Complaints. Its principal submissions are as follows:
Rights
6.2.1 Village Resorts Limited is not a Co-complainant and no proper evidence is provided of the affiliation between VRL International Limited and that company.
6.2.2 The Complainant’s only relevant trade marks are the UK and Community marks. These are for HEDONISM II and not for HEDONISM.
6.2.3 Although the marks pre-date the registration of the Domain Names, they post-date the Respondent’s trading under the mark HEDONISM.
6.2.4 The registration of the domain names does not create any rights. In any event, the majority of the domain names cited by the Complainant comprise ‘hedonism’ plus a number.
6.2.5 The Complainant does not give satisfactory evidence concerning the period or extent of its trading in the UK.
6.2.6 The term ‘hedonism’ is wholly descriptive of the Complainant’s business. The dictionary definition is ‘pursuit of pleasure, sensual self-indulgence…’. The Complainant’s own materials state: ‘Hedonism is... nourishment for the mind, body, spirit and soul. Pleasure comes in many forms…’.
6.2.7 The mark HEDONISM alone is generic and descriptive. The Roman numerals in the mark HEDONISM II renders it dissimilar from that mark.
Abusive Registration
6.2.8 The Respondent states that it has, through Derek Bromwich, legitimately traded as a swingers’ club under the names Hedonism (UK) and Hedonism Club since 10 June 1994. While it states that much early material has been disposed of, it exhibits:
6.2.8.1 National Westminster Bank statements dated July 1994 and April 1996 for, respectively, ‘Mr Thomas Dereck Bromwich trading as Hedonism’ and ‘Hedonism Club’.
6.2.8.2 A ‘membership graph’ showing statistics from April 1994 to December 1996.
6.2.8.3 Records from August 1994 which appear to show details of individual events, including the name of event, type of event, date, address, names of hosts and comments.
6.2.8.4 An undated advertising flyer for ‘Hedonism – the alternative social, fetish and couples scene club for real party animals’, which the Respondent states is from the period 1994 to 1996.
6.2.9 The Respondent states that the above items evidence its activities prior to the registration of the Complainant’s UK and Community trade marks and, so far the Respondent is aware, any active UK presence or connection on the Complainant’s part.
6.2.10 The name was chosen, without any knowledge of the Complainant’s resorts, as a generic name of Greek origin which captured the essence of the swingers’ scene.
6.2.11 There are at least 242 domain names that include the term ‘hedonism’, some adult, some mainstream, many of which with have no connection with the Complainant. Those linking to websites include <hedonism.com>, a porn site, and <clubhedonism.com>. Numerous UK businesses trade under the name Hedonism (the Respondent exhibits examples) including the Hedonism Nightclub in Barnsley. A Google search against ‘hedonism’ brings up 344,000 results and a range of swinging/adult businesses have sponsored searches against that term.
6.2.12 The Respondent registered a number of domain names in 1999 which included the term ‘hedonism’, being the main part of the trading name that it had used for the previous five years. It was by that time established as the UK’s number one swingers’ club. It is now recognised as an umbrella organisation for the whole UK swinging scene. The Respondent has had widespread publicity including advertising and media coverage (the Respondent exhibits examples).
6.2.13 As to the allegation of inadequate contact details, the Respondent states that the registrations were carried out by an agent, Cygnet, and the Respondent was not responsible for the details supplied to Nominet. There was nothing underhand about this and the Respondent could easily be contacted through Cygnet or via its site. The Complainant’s allegations that the Respondent is seeking to evade process are absurd. The Complaint arrived at the PO Box address without any problem. The Respondent is run from a home address and a PO Box is used to protect privacy. This is normal in the case of adult sites. The telephone number on the Respondent’s site is a directory-listed landline. Any letter, e-mail or phone call from a reputable source is replied to promptly.
6.2.14 The Respondent states that its ‘Hedonism UK’ logo was independently commissioned and is significantly different from the Complainant’s logo. The Respondent exhibits both an invoice from a web designer and documents illustrating the differences between the two logos.
6.2.15 The Respondent denies that the few references on its website to the Complainant’s resorts could confuse anyone into thinking the Respondent owned the Complainant’s resorts or was connected with them. In particular:
6.2.15.1 The Respondent is clearly a UK swingers’ club and 99% of its website relates to its core activities of house parties, club nights and scene events.
6.2.15.2 The Complainant has been selective in the parts of the website it has exhibited. Only 1% relates to holidays, for which the Respondent is a coordinating source. The Respondent exhibits additional pages from its site, including one which it states makes clear it is distinguishing itself from the Complainant.
6.2.15.3 References to the Complainant’s resorts, including those in capital letters and those using the abbreviations Hedo II and Hedo III, do not suggest that the Complainant’s resorts are connected with the Respondent.
6.2.15.4 The web page from 2003 offering ‘access to’ holiday destinations did not imply any special connection with the Complainant. The term ‘access to’ would have been understood to mean ‘information about’.
6.2.16 The Respondent has not sought to confuse visitors to its website and would have no reason to do so. The Complainant has suggested no such reason.
6.2.17 The Complainant has produced no evidence of actual confusion and there is no likelihood of confusion. Even if there were, that would be the consequence of two legitimate businesses (in different countries) having similar names. That is the risk run by the Complainant in choosing a term in common usage for its trading name (the Respondent relies on the Decision in DRS 753 <datingagency.co.uk>.)
6.2.18 The Respondent’s website does not contain pornography ‘by today’s European standards’. There is no illegal content. The Complainant’s submission is surprising given that it runs resorts dedicated to customers seeking sex holidays. The Respondent quotes the Complainant’s publicity: ‘wicked for a week, that famous uninhibited spirit where just about anything goes, to take off your bathing suit or someone else’s – if it feels good do it, Hedonism II the world’s most notorious resort’. Furthermore, the Complainant advertises in pornographic magazines. It also owns the domain names <hedonismsex.com> (and other top level domain suffixes) and <hedonismsuck.com>.
6.2.19 The Respondent no longer diverts under-18s to the Disney website, but makes no apology for having a sense of humour.
6.2.20 The Respondent has 14 domain names that point to its main website and has detagged others that it considered superfluous to its business needs. All were registered in connection with the Respondent’s business and none was registered abusively. <hedonismholidays.co.uk> was intended for a swingers’ holiday venture in association with a major UK or European tour operator, but the plan did not proceed and the name was detagged. The name has ‘now been snapped up for free’ by the Complainant along with other domain names detagged by the Respondent.
Reverse Domain Name Hijacking
6.2.21 The Respondent submits that the Complainant cannot seriously expect to win this case. It knew from the Respondent’s website that it had traded under the name Hedonism since 1994, before the Complainant had any connection with, or trade mark relevant to, the UK. The Complainant has also presented evidence selectively.
The Reply
6.3 The Complainant disputes the principal contentions made by the Respondent. Its further submissions of particular significance are as follows:
6.3.1 The Complainant reiterates that it has registered and common law marks similar to the Domain Name. Rights for the purposes of the Policy are not restricted to UK rights. The Complainant’s rights dated from 1985 and predate any alleged trading by the Respondent.
6.3.2 The mark HEDONISM is not wholly descriptive of the Complainant’s business. The term does not necessarily imply holiday resorts. The Complainant does not use its mark in a descriptive sense, but rather in a trade mark sense.
6.3.3 The Respondent’s evidence of its activities since 1994 is extremely limited, and the items exhibited do not demonstrate any reputation in the name Hedonism.
6.3.4 Even if the Respondent registered the Domain Names with no thought of the Complainant’s mark, its subsequent use of the Domain Names constitutes bad faith.
6.3.5 With regard to confusion:
6.3.5.1 The fact that the Respondent’s logo was independently commissioned does not exclude the possibility it was commissioned to look as close to the Complainant’s logo as possible without copying it identically.
6.3.5.2 The Respondent does not use the names of the Complainant’s resorts only for information. One of the Respondent’s main purposes is to facilitate events, including holidays, for swingers and fetish fans. Without any statement to the contrary, visitors to the Respondent’s site are bound to think that the Hedonism resorts are connected with the Respondent.
6.3.5.3 The Respondent’s reference to ‘access’ does not imply ‘information’. ‘Access’ means ‘the means or opportunity to approach or enter a place’.
6.3.5.4 The further page that the Respondent exhibits states that ‘holiday details arrive with membership’. This adds to the likelihood that visitors will think there is a special connection with the Complainant’s resorts.
6.3.6 The Respondent’s motivation for causing confusion is that its prospective customers will believe that by paying to become a member of the Respondent they will obtain ‘some special access or details about the HEDONISM resorts’.
6.3.7 The Complainant is not required under the policy to provide any evidence of actual confusion.
6.3.8 The <hedonismsex.com> and <hedonismsuck.com> domain names were obtained in order to prevent third parties from registering them in order to damage the Complainant.
7. Discussion and Findings
7.1 Under paragraph 2 of the Policy:
‘(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, 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.
(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.’
7.2 Under paragraph 1 of the Policy the term ‘Rights’:
‘includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business’.
7.3 The term ‘Abusive Registration’ is defined in paragraph 1 of the Policy as referring to 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.’
7.4 Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.
Rights
7.5 I am satisfied that, by virtue of its registered trade marks and its trading activities, the Complainant has rights in the name or mark ‘hedonism’.
7.6 I agree with the Respondent’s submission that the term ‘hedonism’ is generic and descriptive in nature. However, I find that the term has gained a secondary meaning that is distinctive of the Complainant so far as holiday resorts are concerned. The Complainant also has rights in the registered trade mark HEDONISM, albeit that the majority of its rights relate to the narrower marks HEDONISM II and HEDONISM III.
7.7 I do not agree that the term ‘hedonism’ is wholly descriptive of the Complainant’s business for the purposes of the Policy. The term ‘hedonism’ may describe the object of the Complainant’s activities, but the activities themselves comprise the provision of holiday resort and related services.
7.8 The question, therefore, is whether the name or mark in which the Complainant has rights is identical or similar to the Domain Names. In the case of the First Domain Name, <hedonism.org.uk> it is clear that it is. It is identical but for the formal suffix. With regard to the Second Domain Name, <hedonism-swing-club.co.uk>, the issue is whether the addition of ‘swing-club’ is sufficient to render the name dissimilar. In my view it is not. The term ‘hedonism’ is sufficiently distinctive to remain the dominant part of the Second Domain Name and I accept the Complainant’s submission that the addition ‘swing-club’ is descriptive of the Respondent’s activities.
7.9 I therefore accept that the Complainant has Rights for the purposes of the Policy in respect of both of the Domain Names.
Abusive Registration
7.10 While I have found that the Complainant has Rights in the mark HEDONISM, the threshold for such a finding is low. The fact that the Complainant has Rights does not imply anything about the extent of those rights or, in particular, the degree of exclusivity that the Complainant enjoys. In this case, the mark HEDONISM is generic and descriptive in nature. The Complainant’s rights in the mark are limited, both by the territories in which that mark (as opposed to HEDONISM II or HEDONISM III) are registered and by the classes of business covered. Nor is a high degree of exclusivity afforded by the Complainant’s unregistered trade mark rights. This is not a case, therefore, in which the mark relied on can be argued to refer only to the Complainant. The Complainant has no monopoly in domain names that contain the term ‘hedonism’ and there is no presumption that a domain name registration which is identical or similar to that mark will be seeking to take unfair advantage of it.
7.11 Under paragraph 4 of the Policy, the factors that may be evidence that a domain name registration is not abusive include the following:
‘(i) Before being informed of the Complainant’s dispute, the Respondent has:
(A) used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;
(B) been commonly known by the name or legitimately connected with the mark which is identical or similar to the Domain Name.’
7.12 On the basis of the evidence that has been submitted, I am satisfied that the Respondent has traded as a swingers’ club under the name Hedonism or Hedonism UK since the mid-1990s, and that it has enjoyed reputation and goodwill associated with that name entirely independently of any activities of the Complainant. Its registration of the two Domain Names in 1999 and 2000 respectively were legitimate activities undertaken in connection with that business.
7.13 As the Complainant points out, however, a registration may still be abusive if the name has subsequently been used in a manner which took unfair advantage of, or was unfairly detrimental to, the Complainant’s rights.
7.14 In this regard, the Complainant’s primary case is based upon confusion. Paragraph 3(a)(ii) of the Policy refers to:
‘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.’
7.15 First, the Complainant relies upon the alleged similarity between its Community Trade Mark for its HEDONISM II device and the Respondent’s Hedonism UK logo Because the device is for HEDONISM II and not HEDONISM or HEDONISM UK, it is clear that any use by the Respondent cannot be identical. As to whether the Respondent’s mark is similar, ignoring the Roman numerals II, there are similarities between the two marks but there are also differences. I do not conclude that there was obvious reproduction. Further, nowhere in the publicity materials exhibited by the Complainant can I find any actual use by the Complainant of the device mark in question. Instead the Complainant widely uses a significantly different font, featuring an extended letter ‘S’. In all the circumstances, I do not consider that the Respondent’s use of its ‘Hedonism UK’ logo gives rise to any real likelihood of confusion with the Complainant.
7.16 The Complainant also relies on the references to its Hedonism II and Hedonism III resorts that appear on the Respondent’s website. However, on the basis of the materials exhibited, it appears to me that any references to holidays, and to the Complainant’s resorts in connection with those holidays, constitute a very minimal part of the Respondent’s website. It is clear from the website that the Respondent is principally a membership organisation aimed at providing house parties and other events, principally in the UK, for those interested in the swinging and fetish scene. I do not agree that the Respondent’s references to the Complainant’s resorts constitute trade mark use, nor do I conclude on the evidence that they are likely to lead members of the public to be believe that the Respondent is connected with the Complainant.
7.17 However, even if the use of the logo and the references to the resorts were to confuse some members of the public, that would not automatically lead to a finding that the registrations of the Domain Names were abusive. First, as the Respondent points out, by selecting a trading name that is generic and descriptive in character, and is widely used by a variety of other businesses, the Complainant must accept some risk of confusion. Secondly, in order to succeed in its Complaint the Complainant must show that the Respondent is using the Domain Name in a way that has caused confusion, not merely that there may be items on the Respondent’s website to which the Complainant may take objection. In this case, the use of the logo and its references to the Complainant’s resorts are merely incidental to the Respondent’s use of the Domain Names, which is for the purposes of its own legitimate business. While the Complainant may explore other legal remedies if so advised, I do not believe that the Policy is intended to deprive a Respondent of a domain name in those circumstances.
7.18 The Complainant also relies on the Respondent’s past or present registration of numerous other domain names containing the term ‘hedonism’ and submits that the Respondent is engaged in making a pattern of abusive registrations. However, none of the registrations in question has been found to be abusive. Furthermore, the Complainant is not entitled to exclusivity in domain names containing the term ‘hedonism’ and there is therefore no presumption that the registrations in question are abusive.
7.19 Finally, on the evidence, I do not accept the Complainant’s contention that the Respondent has sought to conceal its contact details with a view to avoiding these or any other proceedings.
7.20 In the circumstances, the Complainant has failed to establish that either Domain Name was registered, or has subsequently been used, in a manner that took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
8. Decision
8.1 The Complainant has demonstrated on the balance of probabilities that it has Rights in respect of a name or mark which is identical or similar to each of the Domain Names. However, it has failed to demonstrate that either of the Domain Names, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Complaint be dismissed and that no action be taken in respect of either of the Domain Names.
8.2 Paragraph 16(d) of the Procedure provides:
‘If the Expert concludes that the dispute is not within the scope of paragraph 2 of the Policy, he or she shall state that this is the case. If, after considering the submissions, the Expert finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking, the Expert shall state this finding in the Decision.’
8.3 While I consider that the Complainant’s case is significantly overstated, I am not prepared to conclude that the Complaint was brought in bad faith. The Complainant has Rights in a mark that is identical or similar to the Domain Names and has relied on the Respondent’s logo, and references to its resorts on the Respondent’s websites, as evidencing a likelihood of confusion. The Complainant’s case is misconceived for the reasons set out above, but it would be wrong to conclude that it was commenced dishonestly.
Steven A. Maier
Date: 21 June 2004