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 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.