WST Charters Ltd v. Ligang Sup
DRS 2631
Decision of Independent Expert

Parties:

Complainant:		WST CHARTERS LTD
Country:		GB

Respondent:		LIGANG SUP
Country:		SG

Domain Name
1.	issta.co.uk ("the Domain Name"). 
Procedural Background

2.	Capitalized terms used in this decision have the meaning given to them in the Nominet Dispute Resolution Service ("DRS") Policy and Procedure, Version 2 of September 2004 ("the Policy" and "the Procedure" respectively). 

3.	Nominet received the Complaint on 17 May 2005, validated it and sent it on to the Respondent on the same day, advising the Respondent he had 15 working days, until 9 June 2005, to submit a Response.  The Respondent submitted a Response on 18 May 2005, which was forwarded to the Complainant on the 19th with the advice that any Reply must be filed by 26 May 2005. A Reply was submitted on 25 May 2005 and sent on to the Respondent on the 26th.  The parties were informed on 20 June 2005 that if the Complainant paid the requisite fees by 4 July 2005, the dispute would be referred to an independent expert and the fees were paid.  
4.	After confirming that there was no reason why the appointment could not be accepted, and on providing a declaration of impartiality and independence, I, Victoria McEvedy, was appointed as an independent expert in this dispute on 4 July 2005. 

Outstanding Formal/Procedural Issues

Identity of Respondent 
5.	The Respondent describes itself in its Response as ligang.net although the WHOIS search shows that the Registrant is Ligang Sup.  Both the Policy and the Procedure define the Respondent as “the person (including a legal person) in whose name or on whose behalf a Domain Name is registered and against whom the Complainant makes a complaint.”   No evidence of an assignment or licence or other relationship between Ligang Sup and ligang.net has been submitted and I will therefore treat the Respondent as Ligang Sup.  
	The Facts
6.	The Domain Name was registered to the Respondent on 22 January 2005, as recorded in the Register and WHOIS reports supplied to me by Nominet.  I was also provided with a printed page showing that as at 17 May 2005, the Domain Name led to a website which appears to be a type of travel portal, with vertical and horizontal lines of links, the horizontal line of which includes “Weekend Break Scotland,” “Weekend Break Dublin”, “London Break,” etc.  The vertical line includes “Holiday Ideas,” “Short Break Holiday,” “City Break,”  “Weekend Break” etc.  The site included graphics, photographs of various cities, including London, and other common features such as a search facility etc.        

7.	When I attempted to replicate this result on 14 July 2005, the Domain Name took me to a website, which, although it had almost the identical layout, was concerned with employment related matters.  On this site the horizontal line of links reads “Career Change,” “Career Development,” “Career Education” etc and the vertical line “Job Search,” “Job Fair,” “Head Hunter,” “Part Time Job,” etc.  It also had new photographs suggestive of job related matters.         

8.	The Complainant, WST Charters Ltd, says in the Complaint that it is a UK company and part of a Group with an Israeli parent company.  It trades under the names Issta, Issta Direct, Issta Lines and owns issta.com, isstadirect.com, isstadirect.co.uk, issta.co.il. It has retail outlets in London, Manchester, Paris, Amsterdam and Israel and has been using the name since 1971.                

The Parties' Contentions
Complainant’s Case 
9.	The Complainant says (and I have largely retained its own words here): 

9.1. The Complainant has rights in the Domain Name because: 

a. 	It trades under the name Issta, Issta Direct and Issta Lines and has done so since 1971 as Issta Lines student travel company PLC, registered in Israel, (sic) the parent company of WST Charters Ltd, registered in Companies house.  It also owns issta.com, isstadirect.com, isstadirect.co.uk, issta.co.il.  We also have 63 retail outlets with shop fronts in London, Manchester, Paris, and Amsterdam and all over Israel branded with the Issta logo. 

b. 	It has advertised, and still does, using the name Issta since 1971 and spends about £150,000 per year on such advertisements. 

c. 	It provides goods and services under the name Issta as evidenced by its brochures. 

d.        It has the following names registered as trademarks with ABTA-The Association of British travel agents, IATA-International Air transport association and CAA ATOL-Civil Aviation Air travel organisers licence. 

9.2. There is no relationship between the Complainant and the Respondent. 

9.3. The Domain Name in the hands of the Respondent is Abusive because it is: 

a. 	Primarily registered to unfairly disrupt the Complainant’s business because we trade online using the name issta.com and isstadirect.co.uk selling travel related services such as flights, hotels, car rental and insurance and the Domain Name offers travel related links to other travel related websites which gives the impression that it is the real Issta travel company when in fact it is not. 

b. 	Used by the Respondent in a way which already has confused people into thinking that it was controlled by the Complainant.  The Respondent has no right to offer the travel related links under the Complainant’s reputable name, misleading customers to other operators' sites, away from the Complainant’s travel business. The Respondent is misleading the Complainant’s potential customers for which the Complainant invests thousands of pounds in advertising to attract them to the Complainant’s site.  A copy of the main and home pages of the issta.co.uk website are enclosed with the Complaint.  It seems that the Respondent is awaiting an offer from the Complainant and there is also a link at the top stating 'to contact the registrant of this domain click here' and offers to send an email to the owner with an offer. 

c. 	One of a series of registrations that the Respondent has made, which because of the name proves that the Respondent is in the habit of making registrations of domain names which correspond to trade makes or other well known names in which the Respondent has no apparent interest. Registration disputes that have been filed with Nominet and been successful are DRS 02317 The Colt Car Company Ltd -v- Ligang Sup. 

d. 	The registration is abusive and the Respondent has had other DRS cases against him in which experts have found abusive registration, case number: DRS 02317 The Colt Car Company Ltd -v- Ligang Sup.

10.	In support of its Complaint, the Complainant submitted: 

a)	Its UK letterhead; 
b)	Its Israeli letterhead; 
c)	A page from www/issta.co.il; 
d)	A page from www.issta.com; 
e)	A page from www.isstadirect.com;
f)	An ABTAnet Search of the Complainant giving its ATOL number and listing the additional trading names registered with ABTA as: Issta lines; Issta Direct; WST Travel; WST Holidays; 
g)	An ATOL Search of the Complainant showing the trading names Issta Direct, Issta Lines, WST Charters and WST Holidays. 
h)	3 Newspaper advertisements for www.isstadirect.com, one of which is identifiable as from the Jewish Chronicle of January 7, 2005;
i)	An Issta Direct.com baggage tag; 
j)	An Issta Direct.com passenger ticket; 
k)	An Issta Direct.com passenger ticket cover. 

       

Respondent’s Case
11.	 The Response says as follows: 
“We bought this Domain Name in good faith for business use not having your client in mind (but the generic combination of issta (Information Systems Skills Training Agency). The redirection to the domain park is temporary until the web site we are working on will be ready (that includes Training Information regarding Employment & Skills).”
	Complainant’s Reply 
12.	 In the Reply, the Complainant says: 
“We have reviewed the Respondent’s Response and find no such company nor trading name …[as that claimed by the Respondent] trading in the UK.  We feel that this is a [further].. misrepresentation in order for us to eventually purchase the name from the Respondent.  If ne[cessary] we shall pursue our claim as far as required through the legal system to bring this abuser to justice.”
Discussion and Findings
General 
13.	Domain names are registered on a first come, first served, basis and a registration will only be disturbed if it’s an Abusive Registration, as defined in the Policy—paragraph 2(a) of which requires the Complainant to prove 2 elements: 
"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."
The Complainant bears the burden of proof and must prove both elements on the balance of probabilities. 
Rights in an identical or similar mark
14.	Rights are defined by the Policy as including, but not limited to, rights enforceable under English law. It includes rights to registered and unregistered trade marks, as well as contractual and other rights.  It also extends to rights enforceable in other countries such as foreign registered and unregistered marks, which are given equivalent protection and treatment under the Policy.    

15.	Surprisingly, the Complainant does not rely on any registered trade mark, either in the UK, Israel or elsewhere.  It does refer to registration with ABTA, IATA and ATOL (at paragraph 9.1d above) but registered marks in this context mean those registered by the Registrar of Trade Marks or the foreign equivalent, and not the Complainant’s status with trade and self-regulatory bodies.     

16.	However, the Complainant can rely on its actual use of the name as creating a reputation or goodwill protected by the common law cause of action for passing off, see Warnick (Erven) Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd [1980] RPC 31 HL; Reckitt & Colman Products Limited v. Borden Inc [1990] 1 All ER 873 and IRC v. Muller & Co.'s Margarine Ltd [1901] AC 217, 223 HL. This reputation is known as an unregistered mark.  The Complainant relies on its use of the name in its business since 1971, and I note from the company search of the Complainant provided to me by Nominet, that was the date of the Complainant’s incorporation in the UK. Its use is also demonstrated by the advertising and other promotional materials submitted in evidence, and listed in paragraph 10 above.    

17.	I find that the Complainant has proved on the balance of probabilities, that by its use of the name in the UK, both on and offline, it has a reputation or goodwill protected at common law by passing-off.  Although it is not necessary to rely on its use abroad, if it were, that would be given similar recognition.     

18.	The Complainant therefore has Rights in the name Issta, as well as the variations; Issta Lines and Issta Direct.  

Identical or Similar

19.	 Paragraph 2(a)(i) of the Policy requires that the name or mark in which the Complainant has Rights "is identical or similar to the Domain Name." In determining this, the www. prefix is ignored, as are suffixes, here ".co.uk", see the decision of the Appeal Panel in Consorio Del Prosciutto Di Parma v Vital Domains Ltd DRS 00359.  In relation to Issta, we are therefore comparing like with like, as the names are identical and in relation to Issta Lines and Issta Direct, they are similar.     

Abusive Registration
20.	The second element the Complainant must prove under paragraph 2(a) of the Policy, is that the Domain Name is an Abusive Registration, defined in paragraph 1, as follows: 
"Abusive Registration means 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"

Paragraph 3 of the Policy provides a non-exhaustive, illustrative, list of factors, which may evidence an Abusive Registration.  

21.	The Complainant relies on a variety of these factors as set out in paragraph 9.3 a-d above.  

22.	 The first is factor 3aiC, circumstances indicating that the Respondent has registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant.  The focus on primarily means that it does not have to be the sole, but a main or dominant, motive.  Unfair disruption has no special meaning and can often be inferred when a respondent adopts a name which is exclusively or primarily referable to a complainant and the respondent is using it in the same trade or business and in the same market.  

23.	 Applying this here, the Complainant sells travel services online and it is not a great leap from the Respondent’s deliberate selection of the identical name for a travel portal, to infer the Respondent intended to pass itself off as the Complainant, or as associated with the Complainant, to take advantage of the Complainant’s good reputation.  Of course, following receipt of the Complaint, the Respondent changed the content of the site to a job portal, which rather conveniently dovetails with its Response—that it chose the name to mean Information Systems Skills Training Agency and that its employment related site was under construction.  I am afraid I do not find that remotely persuasive.  I have no doubt if this decision enabled the Respondent’s registration to stand, the site would revert to a travel portal.                 

24.	I note that even if I had not found that the registration was unfairly detrimental, I would have found that the Respondent has used the Domain Name in an unfairly detrimental manner.  In its incarnation as a travel portal, there was an obvious likelihood of confusion of the Complainant’s customers (note that factor 3aii deals with actual confusion—as to which no evidence was submitted—but likelihood can be relied upon, as the list is non exhaustive).  I do not, however, think that the Complainant has been able to discharge the burden of proof on factor 3aiii (one of a pattern of abusive registrations) and 3c (presumption of abusive registration if 3 adverse DRS findings in the preceding 2 years) as it was able to rely only on Colt Car DRS 02317 and one finding is not enough.      

Decision

25.	Taking all the circumstances of this dispute into account, I find that the Complainant has Rights in a name identical to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration and direct that the Domain Name be transferred to the Complainant.  

Victoria McEvedy 
15 July 2005