The disputed domain names were clubsail.com; clubyachting.com and clubyachting.org however in the case of clubsail.com the domain holder agreed to transfer the domain leaving only the other two domains at issue
Here are the relevant facts and finding:
The Complainant operates a marine leisure business based in Tenerife. She is the owner of the following registered trademarks:
The disputed domain names clubyachting.com and clubyachting.org were both registered on May 23, 2010 by the Second Respondent, who remains the current registrant.
The Complainant describes a longstanding and acrimonious dispute between the parties. The dispute relates principally to the goodwill of a business originally named “Club Sail Sea School” that was founded by the Complainant and her husband in around 1986. The Complainant alleges that the goodwill and other property of that business, including the disputed domain name <clubsail.com>, were misappropriated by her son and the Second Respondent in 2006 and that the Respondents continue even now to benefit unfairly from that misappropriation.
The Complainant contends that, even after this decision, the Respondents have continued to take unfair advantage of the goodwill in the “Club Sail” name and business. In particular, they continued to use the “Club Sail” name, device and website until 2009. While they changed the name of their website to “Club Yachting” at that time, they continued to use the domain name <clubsail.com> to point to the website and continued to optimize it by the use of “club sail” as keyword terms.
The direct access to the website via <clubsail.com> continued until late 2011 when a message appeared stating that it was being redirected to <clubyachting.com>.
Furthermore, the Respondents’ website continued to convey the impression that it was in fact “Club Sail” or a successor to that business. In particular, the Respondents selected the name “Club Yachting” for that reason and, further, adopted a logo comprising a yellow sail and a propeller which was very similar to the Complainant’s trademark. The propeller is even shown on the Respondent’s website as rotating, which was a device previously used by the Complainant. In addition, the Respondents continued to use “@clubsail.com” email addresses even on the “Club Yachting” website.
For the purposes of paragraph 4(a)(i) of the Policy, the Complainant submits that the disputed domain names are identical or confusingly similar to the “Club Sail” trademark owned by the Complainant and to marks used by the Complainant for years. The Complainant submits that the combination of the initial term “Club” with the generic term “yachting” makes the disputed domain names confusingly similar to the Complainant’s trademark, particularly to any user of the Internet. The Complainant states that, when conducting a search for “Club Sail” on three leading search engines, the Complainant’s website is the first result returned and the Respondent’s “Club Yachting” website is the second or third. The Complainant states that the Respondents chose the disputed domain names deliberately in order to deceive member of the public into believing they were still dealing with the “Club Sail” business.
The test for confusing similarity between a disputed domain name and a trademark is discussed in paragraph 1.2 of the WIPO Overview 2.0. This includes the following guidance:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms… typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
The test for confusing similarity is, therefore, an objective one which requires a straightforward comparison of the disputed domain names with the Complainant’s trademark. Factors including the Respondent’s reasons for choosing the disputed domain names and the use which the Respondent has made of the names, are not typically relevant to this initial “threshold” comparison. While these matters may well be relevant to the second and third elements set out under paragraph 4(a), these elements do not come into play unless it has first been found that the disputed domain names are identical or confusingly similar to the Complainant’s trademark.
In this case, the Panel does not consider that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks described above.
While the figurative mark includes the initial term “Club” and a subsequent term that references a marine activity, there are significant pictorial components of the Complainant’s trademarks that are obviously not present in the disputed domain names.
Furthermore, even if the Panel were to take the view that the only relevant part of the Complainant’s trademark is the term “Club Sail” (in which it is possible that the Complainant has some level of unregistered rights by virtue of use of that term in business) the Panel would still not consider the disputed domain names to be confusingly similar to this mark.
The Panel accepts that the use of the term “Club” at the beginning of the name “Club Sail” makes that name more distinctive than if the terms were inverted, i.e. “Sail Club”, but nevertheless, the term “club” is generic in nature.
The use of the term “club” as a prefix is not the exclusive province of the Complainant, even in the leisure industry, and the Panel does not accept that Internet users would be likely to assume that goods or services offered by “Club Yachting” originate from the same source as “Club Sail”. While the Panel notes that an Internet search for “Club Sail” will return “Club Yachting” as an early result, this does not suggest to the Panel that an Internet user will assume the two businesses to have a common origin, any more than that user may believe them to be competitors or to be completely unconnected.
In the circumstances, the Complainant has failed to establish that the disputed domain names <clubyachting.com> and <clubyachting.org> are identical or confusingly similar to a trademark or service mark in which the Complainant has rights and her claim in respect of those disputed domain names fails.
In the light of the Panel’s findings above, it is unnecessary to consider the second and third elements of the test under paragraph 4(a) of the Policy, namely rights or legitimate interests and registration and use in bad faith