emirates.co.uk (2011): A domain name which may appear to be geographical, and to be used in reference to that geographical area, may nonetheless be an abusive registration under the Nominet UK Dispute Resolution Service.
Background
The Complainant was "Emirates", the official airline of the United Arab Emirates.
The Respondent was an individual who owned over 2,000 domain names. He registered the domain name in dispute - emirates.co.uk - on 4 April 2002 and used it for a website branded "The United Arab Emirates Resource Guide". The home page was divided into sections with headings such as "Hotels in Dubai", "Car Hire", "Emirates Holidays", "Flights to the Emirates", "Property Buying" and "Facts and Figures". These sections linked to more detailed content which included sponsored links.
The arguments
The gist of the Complainant's case was that the Respondent must have been aware of the Complainant when it registered the domain name emirates.co.uk and that it must have chosen this name in order to create the impression that it was connected with the Complainant. The Complainant similarly complained that the Respondent was using the domain name for a website which was likely to confuse people.
The Respondent disagreed. He claimed that, while due to the passage of time he could not be sure, he did not think that he was aware of the Complainant when registering the disputed domain name. He was clear, however, that he registered the domain name because it was commonly used "in the vernacular" to refer to the "United Arab Emirates". He said that his website was designed as a genuine information site concerning the United Arab Emirates.
Rights
It was not in dispute that the Complainant had "rights" in the name EMIRATES as at the date of the complaint (which is the date when this assessment is made). These rights comprised both registered trade marks (consisting of the prominent stylised term "Emirates" plus Arabic characters) and also "unregistered" rights resulting from extensive trading in the UK as well as other parts of the world.
Respondent's website
On the question of abusive registration (the second element which the Complainant had to establish), the Nominet appeal panel looked first at the Respondent's website at emirates.co.uk. The appeal panel pointed out that it was very similar to other geographic websites operated by the Respondent and suggested that it had little value of as a source of current, accurate information about the United Arab Emirates. Rather it was primarily a vehicle for click-through traffic.
Meaning of "Emirates"
The Nominet appeal panel said that people going on holiday would not naturally say that they were going to "Emirates" on holiday. They were far more likely to refer to one of the components of the United Arab Emirates, say Dubai.
In any case, in the view of the panel, given the Complainant's extensive trading and marketing activities, the word "Emirates" has acquired a "secondary meaning" referable to the Complainant. Unless it was clear that word was being used generically – which was rare – Emirates would be taken as referring to the Complainant, especially when talking about travel and holidays.
Abusive registration
The panel considered that, combining this meaning of "Emirates" and also the nature of the website, the evidence of abuse by the Respondent was persuasive.
The Respondent probably designed his website in light of knowledge of the Complainant. Or at least he continued to use it because of benefit resulting from increasing recognition of the Emirates airline.
Initial interest confusion
The appeal panel said that traffic to the Respondent's site was more likely to have been looking for the Complainant's own website instead of a general information site concerning the United Arab Emirates. These visitors were probably guessing wrongly as to the URL of the UK website of the Complainant.
Even if they realised, when they reached the site, that it was nothing to do with the Complainant, they had nonetheless been sucked in or deceived by the domain name. This was the concept of "initial interest confusion", which is a basis for a finding of abusive registration under Nominet's Dispute Resolution Service (DRS).
Accordingly the domain name was used in a manner which took unfair advantage of the Complainant's rights.
Delay
Finally, the panel considered that a six year delay was not a basis to reject the case, as the Respondent had argued.
The general view of panellists under Nominet's DRS (and also under the different Uniform Dispute Resolution Policy or UDRP – applicable to gTLDs such as .com) is that delay is not of itself a reason to bar a complaint, although recent cases have raised the possibility of such a defence.
The appeal panel concluded that, while there may be a case for delay or acquiescence amounting to a defence under the DRS Policy, this was not such a case. The delay hadn't affected or prejudiced proper consideration of the issues in dispute. Further, even if the Respondent could properly claim to have assumed that the Complainant didn't object to his activities, he hadn't been unfairly prejudiced as a result. The Respondent had only used the domain name for click through traffic and hadn't in reality developed a business at the domain name in the belief that the Complainant had no objection to his using it.
Outcome
The appeal was allowed and the domain name was transferred to the Complainant.
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