BAA plc's claim for 'gatwick.com' put to flight
In BAA plc v Larkin, a World Intellectual Property Organization (WIPO) panel has refused to order the transfer of the domain name 'gatwick.com' to BAA plc - the owner of Gatwick airport near London.
The registrant, an individual named Bob Larkin, was using the disputed domain name for a website that links to third-party businesses providing services in the Gatwick area. In its complaint, BAA contended that 'gatwick.com' was confusingly similar to its registered trademarks BAA GATWICK and BAA LONDON GATWICK, both combined with an aeroplane design, as well as the unregistered word mark GATWICK. It uses all the marks in connection with airport services.
The WIPO panel first considered Larkin's contention that because he registered the domain name prior to the date the applications were filed to register the two trademarks, the Uniform Domain Name Dispute Resolution Policy (UDRP) did not apply. It rejected this argument, finding that "if the disputed domain name is confusingly similar to a registered trademark (no matter when registered) then a complainant can succeed under the first criterion of the policy".
In analyzing the registered marks, the panel found that the combination of GATWICK with BAA is the "distinguishing feature" of those marks and that the disputed domain name was not confusingly similar to either registered mark. Relying on an earlier decision involving the same complainant, which involved the domain name 'aberdeenairport.com', the panel held that the absence of visual similarity, the fact that the only shared component was the name of a city and the lack of sufficient aural or phonetic similarity were fatal to the claim against 'gatwick.com'.
With respect to the common law mark GATWICK, it reasoned that BAA did own trademark rights in that unregistered term with respect to airport services. However, the panel also noted that Larkin had shown that his use of his domain name was in connection with a bona fide offering of services under Paragraph 4(c)(i) of the UDRP. He offered a legitimate directory of service providers located in the vicinity of the "Gatwick sub-regional area" and it was, according to the panel, "difficult" to see how anyone could be misled into thinking his site was an official BAA site. It also noted that:
- the name Gatwick was used "extensively" as part of third-party business names;
- there were 321 registered domain names that included that name; and
- Larkin has earned revenue from his service.
It is noteworthy that the panel found no bad faith despite (i) Larkin's negotiation on the possible sale of the name to representatives of BAA, and (ii) his ownership of the domain names 'bankofengland.com' and 'amey.com', both of which contain famous marks. It appeared from the record that neither of these trademark owners had insisted that Larkin give up these domain names.
The panel also denied a reverse domain name hijacking claim by Larkin for the reasons that he had failed to show that BAA knew of his (i) "unassailable right" in the domain name, or (ii) "clear lack of bad faith". The panel found no malicious intent or recklessness on BAA's part.
Larkin made strenuous efforts to show BAA's bad faith, including claims that BAA had:
- tampered with documents;
- engaged in deceit;
- changed the context of the bodies of messages; and
- failed to disclose relevant information.
He also stated that because there is no right to cross-examine under the UDRP process, that process is undermined when material is not disclosed. The panel found that it would be unsuitable for it to resolve such factual issues because there is no mechanism under the UDRP to resolve "hotly contended" fact disputes and declined to draw any inferences against either party on these points.
Russell H Falconer, Baker Botts LLP, New York
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