The domain had been registered by Bob Larkin of Worcester in
1996 and used by him to run an internet directory of the Gatwick
area. But in July this year BAA, which operates seven large
airports in the UK, including Gatwick Airport, objected to his
domain name registration.
The airport operator made arguments to the domain name dispute
service of the World Intellectual Property Organisation (WIPO),
accusing Larkin of infringing on its registered trade mark rights
in the name "BAA Gatwick" and "BAA London Gatwick" and its
unregistered trade mark rights in the word "Gatwick".
The dispute took some time to come before the three-member
panel, following challenges to the make up of the panel by Mr
Larkin who, according to reports, was concerned that the President
of the panel was to be chosen from a list of candidates most of
whom, he alleged, had seemed to favour complainants in past
disputes.
The dispute was further marred by Larkin's allegations of
misconduct and deception by BAA. The panel decided to ignore most
of these allegations.
One allegation related to the date of registration of the
domain. Larkin claimed that he had originally registered it in 1996
using his "alter ego", a company known as New Way Limited, before
transferring the domain into his own name in 2000. The panel ruled
that the domain register had to be taken at face value, and "can
show no trusts, nor disclose beneficial interests as distinct from
legal owners. Consequently, the Panel concludes that the Respondent
registered the disputed domain name in 2000 and not in 1996."
In the course of the adjudication, BAA argued that "Gatwick.com"
is confusingly similar to its registered mark, and that the
addition of the letters "BAA" into the mark merely reinforced the
ownership of the mark rather than acting as an additional factor in
assessing similarity.
There is no town or village called Gatwick, explained BAA, and
the name relates to a 14th Century family who owned the land on
which the airport is built. Accordingly it is not descriptive of a
geographical area – a factor that sometimes mitigates against the
creation of a trade mark.
Furthermore, said BAA, its long-established use of the name
"Gatwick", used in reference to the airport since 1936, had given
it an unregistered trade mark in the name – a name that is
identical to the disputed domain.
In addition, BAA accused Larkin of passing-off – misrepresenting
his business in a way that could damage BAA's goodwill and
reputation – in his use of the name Gatwick, and acting in bad
faith in registering the domain, either to disrupt BAA's business
or to divert traffic to his own site.
In response, Larkin argued that his use of the domain had been
unchallenged for eight years, and that other companies had
registered the word "Gatwick" as a trade mark – such as Gatwick
Fusion Limited and Gatwick Express.
The fact that many other third parties in the local area used
the word "Gatwick" means that the term cannot have the status of an
unregistered trade mark, said Larkin.
Furthermore, he argued, there is evidence that Gatwick is a
regional area, and under the Trademarks Act 1994, trade marks which
consist mainly of geographical terms should not be registered as a
trade mark if this will create a monopoly effect.
Larkin also disputed the passing off claim. His site, he argued,
relates to a directory of services for the area, and is run as a
business from which he receives income. He does not claim to be the
operator of an airport, and there is no risk of consumers being
misled into thinking that the site is related to BAA, he said.
Larkin then requested that the panel find BAA guilty of reverse
domain name hijacking – where the arbitration proceedings are used
"in bad faith to attempt to deprive a registered domain-name holder
of a domain name."
The Ruling
The panel found that the domain was not confusingly similar to
BAA's trade marks, in that "the distinguishing feature of the
registered marks is the conjunction of the word 'Gatwick' with the
word 'BAA' (well known as denoting an airport authority) plus the
image of an aircraft taking off".
Nor did the panel find that Gatwick denoted a geographical area,
commenting, "The name of the locality of 'Gatwick' would not be
generally known, other than in a small geographical area, were it
not for Gatwick airport. The name would certainly not have any
universal connotation without the airport."
But the panel did find that BAA had an unregistered trade mark
in the term "Gatwick", as "Most of the world must know of Gatwick
as one of London's two major airports." The question, therefore,
was whether Larkin breached this unregistered trade mark right?
The panel said no. It accepted that Larkin was operating a
legitimate business, from which he received an income, and that he
did not mislead consumers into believing that the site was
connected to BAA. Accordingly he was not infringing on BAA's rights
as set out in the Uniform Domain Name Dispute Resolution
Policy.
But the panel added that it could not comment on whether the
situation would be different if BAA brought an action for passing
off in a court of law.
"This is a case where the panel considers that the respective
rights of the parties are better dealt with in a Court than through
the procedures under the Policy," said the panel. It dismissed
Larkin's claim for reverse domain name hijacking.
