A three panel UDRP decision rejected the complaint of Como Holdings USA, Inc. on the 15 year old domain name ParrotCay.com as well as ParrotCay.co which was registered on the first day of general availability by the owner of the .com, Sybaris LLC
The decision was handed down by the Asian Domain Name Dispute Resolution Centre (Kuala Lumpur Office) (the “Centre”).
Its another case where in my opinion a finding of Reverse Domain Name Hijacking (RDNH) should have been found.
The domain name is 15 years old and pre-dates the trademarks of the Complainant by 7 years.
While its the name of a hotel owned by the Complainant is named “Parrot Cay Hotel & Resort” since 1998, Parrot Cay is one of the Turks & Caicos Islands and therefore is a place.
The official Turks & Caicos Islands’ government Tourist Board map shows Parrot Cay as one of the Turks & Caicos Islands.
Parrotcay.com was registered on December 3, 1999 and parrotcay.co was registered on July 20th, 2010
The Respondent uses the Domain Names and the Complainants’ Marks to advertise his services in booking reservations for various hotels and resorts.
The Respondent operates a bona fide travel agency using to promote the Complainant and has generated nearly $1.5 million in sales for Complainant, with the full knowledge and approval of Complainant.
Currently, the Complainant’s own website, consistently refers to the hotel as, “Parrot Cay by COMO”, and describes it as “a Caribbean private island resort in the Turks and Caicos -an archipelago of eight principal islands and more than 40 smaller cays, of which Parrot Cay is one”. Furthermore, the Complainant’s own map on its own website depicts Parrot Cay’s geographic location, including the Parrot Cay Channel.
Here are the highlights of the decision
The Respondent registered on December 3, 1999. The Respondent registered the domain name, , on July 20, 2010; on the first day of general availability of this new extension to the public, in order to support and protect Respondent’s longstanding registration and use of ParrotCay.com and to avoid typos.
Accordingly, if Respondent has rights in the primary Domain Name, Respondent is also entitled to this secondary domain name.
The Respondent is a licensed travel agent and operates a licensed travel agency operating as Sybaris, LLC (State of Florida travel agency Registration No. ST36971) under the Sybaritic Concierge USPTO-registered trademark.
Since at least May 21, 2004, and long prior to any notice of dispute, Mr. Simms, through his company (referred to herein collectively as the “Respondent”) has built and maintained a robust website business using ParrotCay.com.
The Respondent has to-date, spent tens of thousands of dollars on website development and maintenance costs for the Website Business.
Between 2007 and October, 2014, Respondent spent $47,252.42 on advertising and promoting the Website Business and these advertisements were displayed millions of times on the Internet.
The Respondent has received hundreds of thousands of visitors to the Website Business.
Since 2006, Respondent has booked nearly USD $1.5 million of hotel room and villa nights at Parrot Cay by Como on behalf of clients, as shown by the below approximate gross sale figures, which in turn generated hundreds of thousands of dollars’ worth of additional accommodation, food, beverage, and services fees for Complainant:
The Complainant had no pre-existing rights in PARROT CAY at the time was registered.
Its rights were only acquired in 2008 as a result of the 2(1) registration as aforesaid, and Complainant has provided no evidence of any prior common law trademark rights based upon secondary meaning.
For more than 15 years, the Complainant has not objected to the use of the Domain Names by the Respondent, who has a legitimate interest prior to the registration of the Complainant’s marks as a travel agent in promoting the island called Parrot Cay and the resort run by the Complainant. The Respondent has also provided evidence of the Complainant actively encouraging the Respondent’s promotional activities, through the use of the Domain Names, long before the present complaint was submitted.
Accordingly, the Panel arrives at the conclusion that Complainant has not satisfied Paragraph 4(a)(ii) of the Policy.
The Panel has considered the Complainant’s allegations that the Respondent’s use of the Domain Names has caused confusion among its customers. It is noted, however, that Paragraph 4(b)(iv) requires an intention to confuse. There is a severe lack of evidence from the Complainant to show that there is such intention on the Respondent’s part, and, in fact, any confusion at all in the first place.
In fact, the Complainant did not expressly address this third criterion.
Additional, as previously noted, WIPO Overview 2.0 is of the view that the fact that the Domain Names were registered prior to any trademark rights held by the Complainant makes it difficult for the Complainant to prove bad faith.
Indeed, it is stated in Section 3.1 of WIPO Consensus View that, “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown fa have been first established (whether on a registered or unregistered basis), (he registration of the domain name would not have been in bad faith because the registrant could not have contemplated (the complainant’s then non-existent right”.
Accordingly, the Panel arrives at the conclusion that Complainant has not satisfied Paragraph 4(a)(iii) of the Policy.”
So why no Reverse Domain Name Hijacking?
The domain was registered 15 years ago, 7 years before the trademark and term is an island part of the Turks & Caicos.
Nothing but an out and out attempt to take a domain away from a legitimate website.
The three panelist were:
Peggy Cheung
Syed Naqiz Shahabuddin
Alan Limbury
