On 11 November 2004 the WIPO Arbitration and Mediation Center produced its decision on BAA plc v. Bob Larkin (case D2004-0555).

BAA claimed that gatwick.com was confusingly similar to two registered trade marks (BAA GATWICK and BAA LONDON GATWICK), and identical to the common law mark established as a consequence of the activities taking place at Gatwick airport.

BAA stated that the respondent was not known by the name Gatwick and could have used a different domain name to run its commercial activities. Moreover, the domain name was used to host links to a number of services in the Gatwick area. Therefore it could have gained commercial advantage from diverted traffic. It was also argued that these facts, together with the respondent’s willingness to sell or rent the website for valuable consideration, represented evidence of bad faith.

The respondent claimed that he started gatwick.com in 1996, even if not explicitly under his name, and this was before the registration of the UK trade marks by BAA. Larkin also submitted a list of third parties using "Gatwick" as a part of their commercial names. Moreover, he argued that his website never pretended to officially represent the airport. Finally, in relation to the allegation of cybersquatting, the respondent counterclaimed he was the victim of deception and conspiracy orchestrated by intermediaries possibly linked to BAA.

The panel acknowledged the registration of from 2000 rather than 1996 in agreement with the registrar. It found that lack of visual or phonetic similarity excluded the domain name from being declared confusingly similar to registered trade marks (see BAA pcl & Aberdeen Airport Limited v Hashimi case 2004-0717). However, the word "Gatwick" was widely known, due of its association with the airport , and was sufficiently distinctive to be recognised as a common law mark. The panel therefore determined there was a risk of confusion. On the other hand, the panel stated that the respondent was operating a legitimate business, offering links related to the airport, without displaying BAA marks or otherwise misleading the diverted traffic. The decision did not comment on the issue of bad faith, since legitimate interest had been proven and the claim was dismissed.

This case resolved three key issues;

  • Gatwick is a geographical area, but has acquired universal recognition. For this reason a common law mark was documented and the consequent risk of confusion caused the claim of "reverse domain name hijacking" to be unsuccessful.
  • The panel did not consider all the correspondence between the complainant, intermediaries and respondent, in which the former tried to get an offer to buy or to rent from Larkin. The respondent stressed that such deceiving behaviour could constitute evidence of the claimant’s bad faith. The panel did not start an investigation and suggested the matter to be processed by a court or a tribunal.
  • In relation to the claimant’s allegations of passing off, the decision lacked a deeper understanding of this kind of tort, and simply stated that the respective rights of the parties are better dealt with in a court than through the procedures under the policy.

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