HomeAway, Inc. of Austin, Texas lost its bid to grab the generic domain name holidayrentals.com in a UDRP.

The domain name HolidayRentals.com was saved in a UDRP back in 2002.

The domain holder Timothy Hall of the United Kingdom was represented by UDRP POLICE DBS, United Kingdom and was the domain holder for the 2002 UDRP decision as well

Here are the highlights of the three panel decision of Nicholas Smith, Tony Willoughby and Adam Taylor:

The Complainant is a US company, incorporated in Delaware and based in Texas, that has a number of related entities, including HomeAway Deutschland GmbH (f/k/a Vacation Villas International GmbH) and HomeAway UK Ltd. (f/k/a Holiday-Rentals.com Ltd.) (hereafter “the Related Companies”). The Related Companies own and operate a portfolio of websites that connect property owners and managers with travelers seeking accommodation. The Complainant states that it has an intercompany license agreement with HomeAway UK Ltd (which acquired HomeAway Deutschland GmbH in 2005) to use and enforce HomeAway UK Ltd’s trade mark rights.

The Related Companies operate websites from numerous domain names including , and . The Related Companies own registered trade marks for the word mark “holidayrentals” (the “HOLIDAYRENTALS Mark”) in Germany and France, with the HOLIDAYRENTALS Mark first being registered from December 9, 2004 in Germany. The Related Companies have also registered other variants of the HOLIDAYRENTALS Mark in Europe and the US.

The Domain Name was created on April 8, 1998, although there is a question, discussed in section 6F below, as to whether the Domain Name was subsequently deleted and re-registered by the Respondent on April 6, 2013.

The Domain Name currently resolves to a website (the “Respondent’s Website”), which offers holiday rental services for various locations in Europe and around the world.

The Respondent’s Website is currently operated by a third party pursuant to an agreement entered into between the Respondent and an entity that operates a website at “www.vacationrentalplanners.com” (hereafter “Vacation Rental Planners”) to use the Domain Name.

The Domain Name was the subject of a decision under the Policy issued on May 14, 2002 involving the Respondent and one of the Related Companies.

In Holiday-rentals.com Limited v. Timothy Hall, WIPO Case No. D2002-0200, the panel denied the then-complainant’s claim on the basis that it had not shown any rights in the marks “HolidayRentals” and “Holiday-Rentals” upon which the then-complainant sought to base its complaint.

In order for a complaint to succeed a complainant must show rights in a trade mark or service mark. The (named) Complainant asserts rights in the HOLIDAYRENTALS Mark registered to Vacation Villas International GmbH and common law rights in the HOLIDAYRENTALS Mark arising from the use of various domain names registered to Homeaway UK Limited, Holiday-Rentals.com Limited and Holiday-Rentals.co.uk, Ltd. In respect of these marks the Complainant asserts that:

“HomeAway has several related companies that own registered trademarks and/or domain names worldwide, including HomeAway Deutschland GmbH (f/k/a Vacation Villas International GmbH) and HomeAway UK Ltd. (f/k/a Holiday-Rentals.com Ltd.) (which collectively, along with HomeAway, Inc., shall be referred to herein as ‘Complainants’ or ‘Complainant’). Internet Holiday Rentals Limited was incorporated on or around January 30, 1966, and changed its name to Holiday-rentals.com Ltd. on or around September 22, 2000. Holiday-Rentals.com Ltd. is a limited liability company incorporated under the laws of the United Kingdom, which changed its name to HomeAway UK on or about July 6, 2009. Holiday-Rentals.com Ltd. acquired Vacation Villas International GmbH on or around December 3, 2005. HomeAway has an intercompany license agreement with HomeAway UK Limited to use and enforce the HOLIDAY-RENTALS trademarks.”

The Complaint includes no evidence of any intercompany license agreement with HomeAway UK Limited to use and enforce the HOLIDAY-RENTALS trademarks, nor does it provide any evidence beyond the paragraph referred to above relating to the ownership of the various related companies.

Following the filing of the Complaint, the Complainant was asked to clarify the identity of the Complainant(s) in the proceeding and, in response, it confirmed that:

“Any reference to the plural ‘Complainants’ in the Complaint is intended solely to indicate that HomeAway Inc.’s related companies, such as HomeAway UK and Vacation Villas International GmbH, are the target of common conduct and have a similar interest. As set forth in the Complaint, HomeAway Inc. has the authority through express and implied licenses and other agreements written or otherwise with the remaining Complainants, HomeAway UK and Vacation Villas International GmbH, to use and enforce the HOLIDAYRENTALS and HOLIDAY-RENTALS trademarks/service marks.”

As such, it appears that the Complaint is brought by the Complainant (and not by the Related Companies) and the Complainant relies on an intercompany license agreement with the Related Companies to show rights in the HOLIDAYRENTALS Mark.

It provides no documentary evidence of this license agreement.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), provides, in response to the question “1.8 Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case?” that:

“Consensus view: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants.”

The question of whether the Panel is prepared to infer the existence of a license and/or authorization from the Complainant’s related companies is considered in section 6C below.

However, the Panel considers that in the absence of express evidence of a license agreement or facts upon which the Panel can infer the existence of a license/authorization, the entities that own the registered HOLIDAYRENTALS Mark or the domain names, the use of which the Complainant relies upon to establish common law rights, should be the complainant(s) in the present proceedings.

Refiled Complaint

The Domain Name was the subject of a decision under the Policy issued on May 14, 2002 (Holiday-rentals.com Limited v. Timothy Hall, supra). This decision related to the same Domain Name and same Respondent as the present proceedings.

The Complainant purports to have an intercompany license agreement with HomeAway UK Limited (formerly known as Holiday-Rentals.com Limited, the complainant in the earlier decision) to use and enforce any rights HomeAway UK Limited has in the HOLIDAYRENTALS Mark. As the present Complainant is related to the earlier complainant, and the Respondent and subject matter are identical, the present proceeding is best characterised as a refiled complaint.

The WIPO Overview 2.0, provides, in response to the question “4.4 Under what circumstances can a refiled case be accepted?” that:

“… A refiled case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct in the original case (such as perjured evidence). A refiled complaint would usually also be accepted if it includes newly presented evidence that was reasonably unavailable to the complainant during the original case.
…
A re-filing complainant must clearly indicate the grounds allegedly justifying the refiling of the complaint. The provider with which such refiled complaint has been filed has responsibility for determining if, prima facie, the refiling complainant has indeed pleaded grounds which might justify entertaining the refiled complaint. An affirmative determination is a precondition for provider acceptance of the refiled complaint, and for panel determination of the refiling request and any decision on the merits. A re-filing complainant’s failure to clearly identify that its complaint is a re-filing of an earlier UDRP complaint may constitute a material omission for the purpose of any panel assessment of reverse domain name hijacking.”

In the present case the Complaint clearly identified that the Domain Name had been the subject of an earlier UDRP Complainant. It also set out potentially significant relevant new actions that had occurred since the earlier decision, namely;

a) the Complainant has acquired registered trade marks for the HOLIDAYRENTALS Mark;

b) the Complainant and the Respondent had entered into a Memorandum of Understanding, which the Respondent had allegedly breached;

c) The Respondent had allegedly re-registered the Domain Name; and

d) The Respondent had licensed the Domain Name to Vacation Rental Planners which had resulted in significant changes to the content of the Respondent’s Website.

The Panel, without reaching a factual conclusion on the matters above, considers that these allegations indicate that potentially relevant new actions have occurred since the earlier decision and justify the Center and Panel accepting the refiled Complaint.

C. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant asserts that it holds rights to the HOLIDAYRENTALS Mark because the HOLIDAYRENTALS Mark is registered as a trade mark in various countries and because there are various domain names, including , that correspond or are closely related to the HOLIDAYRENTALS Mark and have been used since 1996, giving rise to common-law rights.

However the HOLIDAYRENTALS Mark registrations are in the name of Vacation Villas International GmbH and the domain names that correspond or are closely related to the HOLIDAYRENTALS Mark are registered to Homeaway UK Limited, Holiday-Rentals.com Limited and Holiday-Rentals.co.uk, Ltd.

With respect to any claims for common-law rights in the HOLIDAYRENTALS Mark, the Panel notes the finding made in Holiday-rentals.com Limited v. Timothy Hall,supra, that

“The fundamental problem for the Complainant in this administrative proceeding lies in establishing that it has any rights in the Marks (i.e. in ‘HolidayRentals’ and ‘Holiday-Rentals’). Whatever the precise juxtaposition of the words ‘holiday’ and ‘rentals’ they are wholly descriptive of properties available to rent for holiday purposes. While the Complainant appears to have built up a reasonably successful business, there is no evidence before the Panelist to suggest that the Marks have become identified in the minds of the public with the Complainant to a sufficient extent to confer on it ‘rights’ within the meaning of paragraph 4(a)(i) of the Policy. The examples given above merely underline how necessary the expression ‘holiday rentals’ is for the business of letting holiday properties and how inevitable it is that that expression will be incorporated into domain names.”

The Panel considers that there is no evidence in the Complaint that would suggest that the Complainant or any of the Related Companies have acquired common-law rights in the descriptive term “holiday rentals”.

The Complainant has failed to supply any documentary evidence of the relationships between it and the Related Companies or any license or authorization from the Related Companies for the Complainant to use and/or enforce any registered rights that the Related Companies may have in the HOLIDAYRENTALS Mark.

Given the Panel’s finding that the Respondent has not registered the Domain Name in bad faith (see below), the Panel considers that in these circumstances it is not necessary to reach a conclusion as to whether the Complaint provides sufficient facts for the Panel to infer the existence of a license and/or authorization from the Related Companies and therefore whether the Complainant has trade mark rights in the HOLIDAYRENTALS Mark.

The Panel notes that the system of domain name registration is, in general terms, a “first come, first served system” and, absent pre-existing rights which may be applicable to impugn a registration, the first person in time to register a domain name would normally be entitled to use the domain name for any legitimate purpose it wishes.

There is no evidence at all before the Panel to suggest that, at the time the Domain Name was first registered (in 1998), the Respondent registered it in contemplation of the Complainant. The Complainant had no registered mark and there is no evidence that, at the time of registration, the Complainant had common law rights to HOLIDAYRENTALS; indeed the decision of Holiday-rentals.com Limited v. Timothy Hall, supra, expressly found otherwise.

Furthermore, there is no evidence that the Complainant’s reputation in “holidayrentals” in 1998 was such that the Respondent registered the Domain Name in contemplation of the Complainant rather than for the descriptive qualities of the Domain Name. Indeed the Complaint notes that “Starting on or around 1998, Respondent Tim Hall used the website at the Domain Name to promote the rental of several properties (approximately three) that Tim Hall or his friends or family owned and rented.” Such use would suggest that the Respondent was using the Domain Name in connection with a bona fide offering of goods or services, being the offering of holiday rentals.

However, the Complaint does raise a number of allegations regarding the use of the Domain Name since 2013, following the claimed re-registration of the Domain Name.

These allegations relate to Vacation Rental Planners, who operate the Respondent’s Website, scraping information from the Complainant’s website and directly contacting the Complainant’s customers, owners and managers of rental properties in an effort to trade off the similarity between the Domain Name and the HOLIDAYRENTALS Mark.

The Respondent, as the holder of the Domain Name, is responsible for its operation and such allegations, if proven (whether under the Policy or in a court of competent jurisdiction), would raise questions about whether the Respondent was using the Domain Name in connection with a bona fide offering of goods or services.

However, given the Panel’s finding that the Respondent has not registered the Domain Name in bad faith (see below), the Panel considers that it is not necessary to make a finding under this element of the Policy.

“There is a factual dispute between the parties as to whether the Domain Name was registered in 1998, as asserted by the Respondent, or registered in 1998, de-registered and re-registered in 2013, as asserted by the Complainant.”

“The Complaint attaches a WhoIs record from WHOis.net which purports to show that the Domain Name was created on April 6, 2013.

“The Response attaches a WhoIs record that purports to show that the Domain Name was created on April 8, 1998 and merely transferred between registrars on April 6, 2013.”

“A search of this WhoIs site now indicates that the Domain Name was created on April 8, 1998. ”

The Panel notes that the burden to prove each of the grounds of the Policy rests with the Complainant and that, based on the evidence of record and the Panel’s limited factual public research, the Complainant has not satisfied its burden to show that the Domain Name was re-registered on April 6, 2013.

At the time the Domain Name was registered in 1998, the Complainant did not have any registrations for the HOLIDAYRENTALS Mark, nor is there evidence that it had established common law rights in the HOLIDAYRENTALS Mark. The panel in Holiday-rentals.com Limited v. Timothy Hall, supra expressly found otherwise.

The WIPO Overview 2.0, states in response to the question “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?” that:

“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date…when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the 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.”

While there have been cases where bad faith has been found when the registration took place prior to the acquisition of trade mark rights, such cases involve situations where, at the time of registration the respondent is likely to be aware of the complainant, and it is sufficiently clear that the aim of the registration was an attempt to take advantage of the confusion between the domain name and any potential complainant rights. This is not such a matter.

The Panel finds that the Complainant has not established that the Respondent was aware of it at the time it registered the Domain Name. There is no evidence before the Panel that the Respondent was aware of the Complainant in 1998, such as extracts from the Respondent’s Website close to the time of registration that refer to the Complainant or communications from the Respondent. Nor has the Complainant established that it was so well known that the Respondent must have been aware of it and registered the Domain Name in contemplation of it.

In certain cases UDRP panels have inferred that a domain name was registered in bad faith if there is no explanation, or other logical reason for the registration of the domain name other than to take account of any confusion with the complainant. Such cases can arise, e.g., if the complainant’s trade mark is a coined word.

However in the present case the Domain Name consists of the descriptive term “holiday rentals” with the space between “holiday” and “rentals” removed.

According to the Complaint, the Respondent initially used the Domain Name to promote the rental of several properties the Respondent or his friends or family owned and rented. Such admitted use does not leave much scope for the Panel to infer that the Domain Name was registered in bad faith.

The Complainant has submitted that the act of the Respondent in entering into an agreement with Vacation Rental Planners in 2013, and the subsequent use of the Domain Name, are evidence that the Domain Name was registered and used in bad faith.

Regardless of whether the acts of the Respondent or Vacation Rental Planners during or subsequent to 2013 are evidence that the Domain Name is presently being used in bad faith (and the Panel does not reach a conclusion on this point), the Panel is not prepared to infer the Respondent’s state of mind in 1998 based upon acts that occurred 15 years later.

Accordingly, the Panel finds that the Respondent did not register the Domain Name in bad faith.

Reverse Domain Name Hijacking

In the view of the Panel this is a Complaint which has raised a number of significant issues.

The Complaint provides little evidence of trade mark ownership, limited evidence of the Respondent’s state of mind in 1998 and is replete with assertions that the Respondent registered the Domain Name to take advantage of the Complainant despite the fact that the Domain Name consists of two descriptive words.

In particular, the Complainant fails to provide any evidence that it had any reputation in 1998, at the time of the registration of the Domain Name, let alone that the Complainant was so well-known that the Respondent’s registration must have been made with the Complainant in mind, rather than for the descriptive qualities of the Domain Name.

While noting that the Complainant’s case has significant weaknesses the Panel does not make a formal finding of Reverse Domain Name Hijacking for the following reasons:

a) The Complaint contains sufficient additional facts and circumstances to justify the re-filing. The complaint in 2002 was denied on the basis that the Panel found that the then-complainant lacked common-law rights in the HOLIDAYRENTALS Mark. Since 2002, the Related Companies have acquired registered trade marks in HOLIDAYRENTALS.

b) The Complainant does contain some evidence relating to the conduct of Vacation Rental Planners that, if accepted, may indicate that the Domain Name may currently be in use to take advantage of the similarity between the Domain Name and the HOLIDAYRENTALS Mark. For the reasons set out in the decision above, it was not necessary to reach a conclusion on those allegations but those allegations, if established, may have provided the Complainant with a basis to bring such an action.

c) It is well-established that when a domain name is registered by the respondent before the complainant’s relied-upon trade mark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith. A complainant bringing a complainant in such circumstances runs a risk of having a finding of Reverse Domain Name Hijacking made against it as it should have appreciated at the outset that its complaint has no chance of success.

However, the present Complaint does contain evidence to suggest that the Domain Name might have been re-registered in 2013, after the Complainant’s rights had been established. Had this fact been proved to the Panel’s satisfaction, then the recent use of the Domain Name may have been relevant in inferring whether or not the registration was made in bad faith.

The Complainant’s evidence of a re-registration was not accepted by the Panel.

The confusion or misunderstanding as to the date the Domain Name was registered appears to have arisen from an error in the WhoIs data that reported the date of transfer of the Domain Name from one registrar to another as the creation date of the Domain Name. The Panel does not consider that a finding of Reverse Domain Name Hijacking should be made when the decision to commence proceedings arose following an error in WhoIs data provided for the Domain Name that did not arise as a result of the Complainant’s conduct.

The Panel does not find that the Complaint was brought in bad faith.