Nominet UK Dispute Resolution Service

DRS 04663

HOMELIDAYS SA
v.
Digi Real Estate Foundation

Decision of Independent Expert

1.	Parties: 

Complainant:		HOMELIDAYS SA
Country:		FR

Respondent:		Digi Real Estate Foundation
			Panama 

2.	Domain Name:

homelidays.co.uk (“the Domain Name”)

3.	Procedural Background:

The Complaint was received by Nominet electronically on 1 May, 2007 and in hardcopy on 23 May, 2007.  Nominet validated the complaint and informed the Respondent, (at the registrant’s recorded address in Panama) on 23 May, 2007, noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 15 June, 2007) to submit a Response. No substantive Response or other reply of any sort was received. Nominet informed the Complainant accordingly on 18 June, 2007, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”). The fee was duly received by Nominet on 3 July, 2007.

Nominet invited the undersigned, Keith Gymer (“the Expert”), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert as of 10 July, 2007.

4.	Outstanding Formal/Procedural Issues (if any):

None.

5.	The Facts:

The Complainant, originally named “F2Y” changed its name in November 2000 to HOMELIDAYS.  It has a French Trademark Registration 003062930 for “Homelidays” (with a minor device element dating from 7 November, 2000 and subsequent registrations in various jurisdictions for the mark in plain text..  It has the domain name homelidays.com (dating from 4 September, 2000) and numerous other “homelidays” domains in various top-level and country code domains.  It provides services for holiday accommodation in many countries via its website at www.homelidays.com, which has been operating since at least April, 2001.

From the WHOIS records, the Domain Name homelidays.co.uk was first registered on 28 August, 2004 for the Respondent, Digi Real Estate Foundation, identified purportedly as a “Non-UK Corporation” with an address in Panama.

6.	The Parties’ Contentions:

Complainant:

The Complainant has asserted that:

1.	The Complainant has Rights in respect of a names or marks which are identical or similar to each of the Domain Names (Policy Paragraph 2a(i)); and 
2.	Each of the Domain Names, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).

The Complainant made supporting submissions (edited) as follows:

“Previously known as F2Y, the name of the company changed to HOMELIDAYS on November 3, 2000. The Company Homelidays has been registered with the «Registre du commerce», the French equivalent of the «Companies House» and has been since 19 July 2000. KBIS – Registre du commerce et des sociétés – 432 287 209 R.C.S Paris [KBIS and statutes and articles for Homelidays SA were attached as Exhibits to the Complaint]. 

“It has the following registered French, European and international trademarks:

French National Registration number: 003062930 November 7, 2000 
French National Registration number: 0403318120 October 13, 2004 
International Registration number : 867999 April 12, 2005, designating Croatia, Monaco, Morocco, Switzerland & USA
European Community Registration no: 004087532 January 1, 2006 
Canadian National Application March 9, 2006 File number 1253832 Awaiting approval 

[Copies of Trademark registration certificates were attached as Exhibits to the Complaint].

“Homelidays has the following domain names registered: 

www.homelidays.com registered: September 9, 2000 
www.homelidays.net registered September 9, 2000 
www.homelidays.eu registered April 2007 
www.homelidays.org registered October 14, 2004 
www.homelidays.biz registered October 14, 2004 
www.homelidays.at changed May 3, 2005 
www.homelidays.be registered October 14, 2004 
www.homelidays.ch registered date not available 
www.homelidays.de changed January 01, 2007 
www.homelidays.es registered September 13, 2005 
www.homelidays.fr registered January 08, 2001 
www.homelidays.nl registered August 29, 2005 
www.homelidays.pt registered September 9, 2005 

[Details of WHOIS records showing ownership of Homelidays for the above domain names were attached as Exhibits to the Complaint]. 

“Homelidays, originally known as F2Y, provides an online service for the publication of self catering accommodation offers to rent directly from the owners via the internet. There are 30,000 adverts online, in 90 countries and in 7 different languages. The website Homelidays first went online April 13, 2001 and potential renters were able to become members and access advertisements with information on properties for rental from April 27, 2001. English version of the website launched November 27, 2001. [Examples of the website pages were provided as Exhibits]. 

“It has advertised using the name Homelidays offline and online since May 2004 and although we are unable to give the exact figures as these are confidential, considerable investment has been placed in promoting Homelidays in Europe including the retention of 5 press agencies in the UK, France, Spain, Italy and Germany. Online, Homelidays has engaged in natural referencing since the launch of Homelidays in 2001 and buying of keywords since 2004 on search engines such as Yahoo and Google. Homelidays equally regularly sends mailings to all of it’s members and has in the past bought mailing lists for prospection. 
[Exhibits were provided, with examples of Homelidays advertising; feedback from Homelidays members; English press releases for Homelidays; a report showing results for keyword buying on Google; and mailings sent to members].

Abusive Registration 

“Homelidays is a young and fast growing company, however as an online company growth in the UK market is being significantly held back through the lack of ownership of the .co.uk domain name. Equally the investment that Homelidays is currently making to build the UK market is in part helping profit the Respondent a known cyber squatter. 

Paragraph 3 (a) (ii) of the Policy. - confusion 

“The registration of Homelidays is one in a series of registration of domain names made by the Respondent. The Respondent registered the Homelidays Domain Name on 28 August, 2004. [As shown by the evidence in the accompanying Exhibits] when the respondent registered the Domain name, there were already 8 000 adverts online [on the Complainant’s site], and by end 2005, 732,052 members. Homelidays at this point was already investing in the building of its trademark through the purchase of keywords on Google. 

“The Respondent is using the Domain Name to confuse consumers into thinking that the Domain Name is registered by or connected to Homelidays. The evidence of this is that the Homelidays Domain Name is being used to list sponsored links to web sites distributing competing brands of holiday rental web sites (including Homelidays two key UK competitors holidayrentals.co.uk and holidaylettings.co.uk and various other services, including financial, dating, people search etc. 

“Equally as mentioned in DRS case 04127 Marriott International Inc, v Digi Real Estate Foundation section 6, paragraph 6 (Exhibit 19): “It may also be unfairly detrimental in that visitors who intended to visit the complainants website may be drawn instead to a competitor’s site. For example, by clicking on some of the links on the homepages at the websites linked with the Domain Names it is possible to visit websites directly run by competitors of the Complainant.” 

“Equally as mentioned in paragraph 6.12 of Case DRS 03054, it seems to be clear that the links on the Respondents webpages are selected or listed with the Respondents full knowledge and it is not certain that visitors to the website will immediately be aware that it is not the Homelidays website or one associated to Homelidays. It is then highly possible that the visitor not realizing that it is not the Homelidays website or associated with Homelidays, clicks on one of the competitors links. Although there is no independent evidence of confusion as mentioned in paragraph 6.17 of case DRS 03054 “…it seems natural to conclude that the Respondent, in registering the Domain Names, intended there to be confusion, because there is no other reason for the webpages to exist and for people to visit them, and furthermore that confusion is bound to have arisen... ...it is in any event likely in the majority of cases that the Complainant would not become aware of confusion which occurs.” 

Paragraph 3 (a) (iii) of the Policy – multiple registrations 

“There are a number of cases where the Respondent has been shown to register well known brand names .co.uk or otherwise and there are numerous cases where the domain name in question has been transferred from the Respondent to the Complainant: 

“In the case DRS 03054 –Morgan Stanley –v- Digi Real Estate Foundation– evidence was provided by the complainant and it was mentioned in paragraph 6.9 that the Respondent had registered 368 .uk domain names. [In an attached Exhibit] we have provided some examples of other registrations made by the Respondent, equally all of the websites have a similar format and the same tagline. 

Paragraph 3 (a) (iv) of the Policy – False details 

“Although we do not have independent proof of this being the case, it is believed that the address details given by the respondent are incorrect. The telephone number does not work and emails are returned. Equally, in nearly all cases against the Respondent, the Complainant is unable to contact the Respondent and the Respondent does not respond. In the DRS case 2177 paragraph 7.12 the Expert found “(i) the Respondent gives as its address P.O. Box number in Panama, not withstanding that the Respondent’s website appears directed to persons in the UK, and (ii) the postal code provided appears to be incorrectly formatted for Panama and instead follows a format used in parts of the Holloway Road, North London, in the United Kingdom. In addition I note that Nominet’s submission of the complaint to the Postmaster at the Domain Name was met with a delivery failure report.” 

“Equally in the WIPO cases no. D2005-0952 Volkswagen AG v. Digi Real Estate Foundation in paragraph 5: “The Complainant attempted to redress the issue by sending Cease and Desist letters to the Respondent by registered post on February 9 and March 17, 2005 and by email on March 2 and March 17, 2005. There has been no response. The contact details provided by the Respondent appear to be incomplete and obviously wrong, including a non-Panama area code.” 

Paragraph 3 (c) of the Policy – Abusive Registration 

“According to 3 (c) of the Policy, there is a presumption of Abusive Registration as the Respondent has been found to have made an Abusive Registration in 3 Dispute Resolution Service cases in the last two years: 

DRS 04165 Grundfos A/S v Digi Real Estate Foundation 01/11/2006
DRS 04127 Marriott International, Inc. v Digi Real Estate Foundation 23/10/2006 
DRS 03054 Morgan Stanley v Digi Real Estate Foundation 19/10/2005 

And in 2004: 
DRS 2177 Robert Half International Inc v Digi Real Estate Foundation 11/11/2004 

“The National Arbitration Forum lists 33 cases of abusive registration by the Respondent where the domain name was transferred to the Complainant [list Exhibited]. 

“The WIPO Arbitration and Mediation Centre lists 18 cases of abusive registration by the Respondent where the domain name was transferred to the Complainant {list Exhibited].

“In the case NAF 637811, Whitney National Bank v Digi Real Estate Foundation it was found: “The present case is the latest manifestation of Respondents’s cybersquatting activity. In short, the facts of the present case demonstrate the Respondent is a blatant cybersquatter, typosquatter, and a common cyberbandit.” 

Further articles on the Respondent and its reputation for Cybosquatting and Typosquatting were also provided as Exhibits.

The Complainant requests the remedy of transfer of the Domain Name.

Respondent:

The Respondent made no Response to, and raised no challenge to, any of the facts and claims asserted by the Complainant.

7.	Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to each of the Domain Names; and that each of the Domain Names, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.

Complainant’s Rights

The Complainant in this case has asserted that it has rights in the name HOMELIDAYS, and that this name is identical or similar to the Domain Name homelidays.co.uk.

The Complainant has provided ample evidence of company name registration, trade mark and domain name registrations and use of its HOMELIDAYS name. 

The Expert is satisfied that the Complainant has rights in the name HOMELIDAYS. The distinctive element of the Domain Name, “homelidays.co.uk”, is identical to the Complainant’s name. Consequently, the Expert concludes that the Complainant does have Rights in respect of a name or mark, which is identical to the Domain Name.

Abusive Registration

The Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines “Abusive Registration” as 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.

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy.  Potentially applicable in the present case in particular are the examples in Paragraph 3a(ii), (iii) and (iv):

ii	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.”

iii	The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent  is the registrant of domain names (under .uk or otherwise) 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;

iv	It is independently verified that the Respondent has given false contact details to us [Nominet]; 

However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative.  They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.

The Complainant has also asserted that the Respondent, having been previously cited as the losing Respondent in at least three previous DRS Decisions within the last two years, is subject to the presumption under Paragraph 3 (c) of the Policy. 

Paragraph 3 (c) of the Policy states that: 

“There shall be a presumption of Abusive Registration if the Complainant proves that Respondent has been found to have made an Abusive Registration in three (3) or more Dispute Resolution Service cases in the two (2) years before the Complaint was filed.  This presumption can be rebutted (see paragraph 4 (c)).” [Paragraph 4 (c) puts the onus on the Respondent to prove that the registration of the Domain Name is not an Abusive Registration.].

At the time of the Complaint, has been named as the losing Respondent in four previous DRS cases in all of which the relevant domain names were held to have been Abusive Registrations.  Three of these fall within the relevant 2 year period preceding the filing of the present Complaint:

DRS 04165 grunfos.co.uk – 21 December, 2006; 
DRS 04127 marriottrewards.co.uk, marriottcourtyard.co.uk – 18 December, 2006;
DRS 03054 morgenstanley.co.uk, moganstanley.co.uk – 29 November, 2005; and
DRS 02177 accounttemps.co.uk – 24 December, 2004

The Expert is therefore prepared to accept that Paragraph 3 (c) of the Policy does apply and the Domain Name at issue in the present case is presumed to be an Abusive Registration in the absence of any rebuttal by the Respondent.

Even if the presumption in Paragraph 3 (c) were not to be applicable, the Expert is satisfied that the evidence demonstrates that the Domain Name has been used to misdirect those potentially seeking the Complainant’s website and services to websites with links, which, if clicked through, would in all probability simply generate “click-through” income for the Respondent, with no reference to, and no connection with, the Complainant or its business.

The Respondent has offered no explanation for its adoption and use of the Domain Name.  As is typically the case in such circumstances, the Respondent has simply misappropriated the Complainant’s property – their goodwill in the HOMELIDAYS name, with the undisguised intention of unfairly profiting from use of the Domain Name with characteristic disregard for the rights of the Complainant.

In the Expert’s view, this evidence is also sufficient to substantiate the Complainant’s assertion that the Domain Name is an Abusive Registration for the purposes of the Policy. 

In this and the previous DRS cases involving the present Respondent, the evidence – returned post and bounced emails, disconnected telephones - does show that the contact details on the Nominet register for the domain names held in the name of “Digi Real Estate Foundation” are demonstrably incorrect and have been for at least 2 years.  They are arguably “false” now and may well have always been.  Whether this evidence is sufficient for Paragraph 3a(iv) of the Policy to be applied is unnecessary to consider in this case.  However, the Expert suggests that there is surely sufficient cause for concern for Nominet to act of its own motion to seek appropriate confirmation of the contact details for “Digi Real Estate Foundation”, particularly in relation to any other .uk domain names for which it is the named registrant and, in the absence of satisfaction as to the accuracy of those details, should consider invoking sanctions under Paragraph 16 of Nominet’s Terms and Conditions (on the grounds that Respondent has provided “significantly inaccurate, not correct, unreliable or false contact details (including names), failed to keep [his] contact details up to date, or failed to give [Nominet] those details at all”).

In the Expert’s submission, as has been previously suggested, in circumstances like these where a registrant is found to have made multiple Abusive Registrations, Nominet might consider some future amendment to the DRS to allow a reversal of the costs burden, such that, where the same Respondent has lost in three preceding cases, it would be for the Respondent to pay the fee for a Decision if it wanted to defend any subsequent case, otherwise the Decision should go by default with no need to appoint an Expert and with the Complainant’s fee being refunded. 

For the reasons previously given above, the Expert concludes that the Domain Name may be held to be an Abusive Registration, both under Paragraph 3(c), in the absence of any rebuttal, and because the evidence shows to the Expert’s satisfaction that the Domain Name was originally registered or otherwise acquired, and has been used by the Respondent, in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

8.	Decision:

Having concluded that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert orders that the Domain Name, homelidays.co.uk, should be transferred to the Complainant.

Date  July 23, 2007
         Keith Gymer